Ex Parte White

Patent Trial and Appeal Board

Apr 27, 2016

11104473 (P.T.A.B. Apr. 27, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
111104,473 04/13/2005
24203 7590 04/29/2016
GRIFFIN & SZIPL, PC
SUITE 112
2300 NINTH STREET, SOUTH
ARLINGTON, VA 22204
FIRST NAMED INVENTOR
Gerard White
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www .uspto.gov
ATTORNEY DOCKET NO. CONFIRMATION NO.
MOLINS0015 1822
EXAMINER
STASHICK, ANTHONYD
ART UNIT PAPER NUMBER
3788
NOTIFICATION DATE DELIVERY MODE
04/29/2016 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address( es):
GandS@szipl.com
burke@szipl.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte GERARD WHITE
Appeal2013-010158
Application 11/104/473 1
Technology Center 3700
Before STEFAN STAICOVICI, ANNETTE R. REIMERS, and
JAMES J. MAYBERRY, Administrative Patent Judges.
ST AI CO VICI, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Gerard White (Appellant) appeals under 35 U.S.C. § 134(a) from the
Examiner's final decision rejecting claims 36-44 and 46-50 under 35 U.S.C.
§ 103(a) as being unpatentable over Obermaier (EP 1 161 911 Al, pub. Dec.
12, 2001)2 and Kim (US 2004/0178710 Al, pub. Sept. 16, 2004). 3
According to Appellant, the real party in interest is Breville PTY
Limited. Appeal Br. 2 (filed Feb. 27, 2013).
2 We derive our understanding of this reference from the translation
contained in the image file wrapper of this application. All references to the
text of this document are to portions of the translation.
3 Claims 1-35, 45, and 51 are cancelled. See Appeal Br., Claims App.
Appeal2013-010158
Application 11/104,4 73
Appellant's representative presented oral argument on April 21, 2016. We
have jurisdiction over this appeal under 35 U.S.C. § 6(b ).
SUMMARY OF DECISION
We REVERSE.
INVENTION
Appellant's invention relates to "a kettle with a lid damping
mechanism." Spec. 1, 1. 7.
Claims 36 and 48 are independent. Claim 36 is illustrative of the
claimed invention and reads as follows:
36. An electric kettle having a hinged lid, comprising:
a latching mechanism for securing the lid when the lid is
closed and for releasing the lid;
an actuator that releases the lid being located on a handle
of the vessel;
a resilient bias member acting on the lid to open the lid
when the actuator releases the lid;
a damping mechanism acting on the lid as the lid open;
the damping mechanism further comprising a part that
rotates with opening of the lid and which is mounted for
rotation within a cavity that contains a fluid for viscous
resistance to such rotation.
ANALYSIS
The Examiner finds that Obermaier discloses most of the limitations
of independent claims 36 and 48, but "does not disclose a damping
mechanism comprising a rotating part in a viscous fluid for damping the
rotation of the lid." Final Act. 2 (transmitted Oct. 26, 2012). Nonetheless,
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Appeal2013-010158
Application 11/104,4 73
the Examiner finds that "Kim teaches [that] it is known to provide a bistable
hinge with a damping mechanism." Id. The Examiner then concludes that,
It would have been obvious to one of ordinary skill in the art at
the time the invention was made to substitute the hinge
assembly of Obermaier for the spring biased hinge mechanism
46 of Lowry. Doing so prevents accidental burns caused by
splashing of hot liquid from a lid that opens too quickly.
Id. (emphasis added).
Appellant argues that the Examiner's reasoning for combining the
teachings of Obermaier and Kim, namely, to "prevent[] accidental bums
caused by splashing hot liquid form a lid that opens quickly," is improper
because it "is the teaching of the present application itself a damper on a
kettle lid prevents hot water from splashing on the user." Appeal Br. 10-11
(citing Spec. 1, 11. 10-21 ). Thus, according to Appellant, "the Examiner's
obviousness rejections are based on improper hindsight." Reply Br. 6.
We agree with Appellant that the Examiner does not provide an
adequate reason as to why it would have been obvious for a person of
ordinary skill in the art to modify Obermaier to include the damping
mechanism of Kim. Without an articulated rationale based on rational
underpinnings for modifying the reference as proposed, the Examiner's
rejection appears to be the result of hindsight analysis. See In re Kahn, 441
F.3d 977, 988 (Fed. Cir. 2006) (cited with approval in KSR Int'! Co. v.
Teleflex Inc., 550 U.S. 398, 418 (2007)) ("[R]ejections on obviousness
grounds cannot be sustained by mere conclusory statements; instead, there
must be some articulated reasoning with some rational underpinning to
support the legal conclusion of obviousness."). In this case, the Examiner's
rationale for modifying Obermaier's electric kettle to include the damping
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Appeal2013-010158
Application 11/104,4 73
mechanism of Kim, namely, to "prevent[] accidental bums cause by
splashing hot liquid form a lid that opens quickly," is a restatement of
Appellant's stated advantages. Appellant's Specification states that the
reason to provide a damping mechanism to a kettle with a lid is because
rapid and abrupt opening of the lid "has the potential to eject hot water from
the underside of the lid" as "[ s ]team may condense on the underside of the
lid to create droplets of hot water." Spec. 1, 11. 17-19. Hence, aside from
referring to the same reasoning Appellant's Specification provides for using
a damping mechanism, the Examiner has not provided rational
underpinnings for modifying Obermaier' s electric kettle to include the
damping mechanism of Kim.
Accordingly, based on the record presented, the Examiner's rationale
for modifying Obermaier' s electric kettle to include the damping mechanism
of Kim is based on impermissible hindsight. Therefore, we do not sustain
the rejection under 35 U.S.C. § 103(a) of independent claims 36 and 48, or
claims 37--44, 46, 47, and 49-50, dependent from claims 36 and 48, as being
unpatentable over Obermaier and Kim. 4
4 Because we have determined that the Examiner failed to articulate an
adequate reason with a rational underpinning to support the combination of
the teachings of the prior art in the manner claimed, we do not reach the
evidence of secondary considerations of non-obviousness submitted by
Appellant. See Appeal Br. 11-17.
4
Appeal2013-010158
Application 11/104,4 73
SUMMARY
The Examiner's decision to reject claims 36-44 and 46-50 is
reversed.
REVERSED
5