Euro-Pro Operation LLCv.Acorne Enterprises, LLC

Patent Trial and Appeal Board

Jul 9, 2015

10047678 (P.T.A.B. Jul. 9, 2015)

Trials@uspto.gov Paper 36
571.272.7822 Entered: July 9, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

EURO-PRO OPERATING LLC,
Petitioner,

v.

ACORNE ENTERPRISES, LLC,
Patent Owner.
____________

Case IPR2014-00352
Patent 6,624,392 B2
____________

Before MICHAEL J. FITZPATRICK, HYUN J. JUNG, and
SCOTT A. DANIELS, Administrative Patent Judges.

DANIELS, Administrative Patent Judge.

FINAL WRITTEN DECISION
35 U.S.C. § 318(a) and 37 C.F.R. § 42.73

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I. INTRODUCTION
A. Background
Euro-Pro Operating LLC (“Petitioner”) filed a corrected Petition to
institute an inter partes review of claims 1 and 12 of U.S. Patent No.
6,624,392 B2 (“the ’392 patent”). Paper 9 (“Pet.”). Acorne Enterprises,
LLC (“Patent Owner”) waived its preliminary response. Paper 16. We
instituted trial for claims 1 and 12 of the ’392 patent on certain grounds of
unpatentability asserted in the Petition. Paper 17 (“Decision to Institute” or
“Inst. Dec.”).
After institution of trial, Patent Owner filed a corrected Patent Owner
Response (“PO Resp.” Paper 27) on October 22, 2014, along with a Motion
to Amend the claims in this proceeding (“Mot. to Amend” Paper 28).
Subsequently, Petitioner filed a Reply (“Reply” Paper 29) on December 23,
2014, and an Opposition (“Opp. to Amend” Paper 30) the same day, and
Patent Owner filed a Reply (“Reply Opp. to Amend” Paper 32) to the
Opposition.
A hearing was not requested in this proceeding. See 37 C.F.R.
§ 42.73.
We have jurisdiction under 35 U.S.C. § 6(c). This final written
decision is issued pursuant to 35 U.S.C. § 318(a).
Petitioner has shown by a preponderance of the evidence that claims 1
and 12 of the ’392 patent are unpatentable.
B. The ’392 Patent
The ’392 patent (Ex. 1001), titled “Multifunctional Cooking System,”
generally relates to an electric cooking appliance, known as a deep well
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cooker, for preparing and serving hot foods. Ex. 1001, 1:13–36. Figure 1B
of the ’392 patent is reproduced below:

Figure 1B depicts a front view of deep well cooker 10 (shown in the figure
without a reference designator) in an open condition. Ex. 1001, 2:48–50.
The cooker includes housing 22 and lid 28. Id. at 3:22–24. As
depicted by Figure 1B of the ’392 patent, above, the cooker is shown with
lid 28 in an open position, and with deep well member 36, bottom heating
element 38, and wrap-around heating element 40 represented by dashed
lines. Food is heated in deep well member 36 within housing 22. Id. at
3:27–31. The deep well member can be made of stainless or enameled steel,
aluminum, or cast iron and, according to the ’392 patent, is heated by the
bottom heating element and the wrap-around heating element. Id. at 3:67–
4:7. Shown on the front of cooker 10 are temperature control switch 32 and
multifunction control switch 34, which regulate heating elements 38, 40. Id.
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at 3:55–62. According to the ’392 patent, the temperature control switch is
electrically interconnected to the multi-function control switch to pass
current to either the bottom heater, the wrap-around heater, or both. Id. at
4:18–21. In this way, heaters 38, 40 can be energized individually or in
combination, depending upon the desired cooking mode. Id. at 4:20–22.
Relevant to claim 12 of the ’392 patent, as discussed infra, one
embodiment of the claimed invention provides for the bottom heating
element to be hot plate heater 120, as shown in Figure 9. The hot plate
heater includes tubular heating element 121 contained in channels 125 of
heating plate 122, as best illustrated for example in Figure 10. Id. at 6:27–
35.
C. Illustrative Claims
Claim 1 of the ’392 patent is identical to claim 1 of U.S. Patent
No. 6,515,262 B1, which is the subject of Euro-Pro Operating LLC v.
Acorne Enterprises, LLC, Case IPR2014-00351. Claim 12 in this proceeding
depends from claim 1, both are reproduced below:
1. A deep well cooker comprising:
an outer housing having a lid member;
a deep well member residing within said housing, said
deep well member having a bottom surface with integrally
formed sidewalls and an open top;
heating means including a bottom heating element and a wrap-
around heating element radially disposed about said deep
well member and positioned intermediate said housing and
said deep well member;
temperature controlling means electrically interconnected to
said heating means for regulating the temperature of said
heating elements; and
function controlling means electrically interconnected to said
temperature controlling means and to said heating elements
enabling said bottom heating element and said wrap-around
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heating element to be selectively energized to provide
variable cooking modes.

12. The deep well cooker of claim 1 wherein said bottom
heating comprises a hot plate type heater including a heating
plate.
D. The Prior Art References Supporting Alleged Unpatentability
Petitioner relies upon the following prior art references:
Hlava et al., US 6,274,847 B1 (Aug. 14, 2001) (“Hlava,” Ex. 1004);
Nachumsohn, US 2,187,888 (Jan. 23, 1940) (“Nachumsohn,” Ex.
1005);
Thor Hegbom, Integrating Electrical Heating Elements in Appliance
Design, CRC PRESS (1997) (“Hegbom,” Ex. 1006);
Vallorani, US 2,778,914 (Jan. 22, 1957) (“Vallorani,” Ex. 1007);
Takikawa et al., US 5,512,733 (Apr. 30, 1996) (“Takikawa,” Ex.
1008);
Matsumoto, US 5,580,594 (Dec. 3, 1996) (“Matsumoto,” Ex. 1009);
Henke, US 4,024,377 (May 17, 1977) (“Henke,” Ex. 1010); and
Jepson et al., US 3,393,295 (July 16, 1968) (“Jepson,” Ex. 1011).
E. The Instituted Grounds of Unpatentability
Reference(s) Basis Claims challenged
Hlava and applicant
admitted prior art
§ 103(a) 1
Hlava and Nachumsohn § 103(a) 1
Hlava, applicant-
admitted prior art or
Nachumsohn, and
Hegbom
§ 103(a) 12
Nachumsohn § 103(a) 1
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Nachumsohn and
Vallorani
§ 103(a) 1
Nachumsohn, Hlava or
Vallorani, and Hegbom
§ 103(a) 12

Petitioner supports its challenge with a Declaration of Mr. Robert A.
Sherwood, BSEE, MSEE. Ex. 1019 (“Sherwood Decl.”).
II. CLAIM CONSTRUCTION
A. Legal Standard
Consistent with the statute and the legislative history of the Leahy-
Smith America Invents Act (“AIA”), Public Law 112-29, 125 Stat. 284
(September 16, 2011), the Board will interpret claims of an unexpired patent
using the broadest reasonable construction in light of the specification of the
patent. See Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,766
(Aug. 14, 2012); 37 C.F.R. § 42.100(b). Under the broadest reasonable
construction standard, claims are to be given their broadest reasonable
interpretation consistent with the specification, and the claim language
should be read in light of the specification as it would be interpreted by one
of ordinary skill in the art. In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d
1359, 1364 (Fed. Cir. 2004). Also, we must be careful not to read a
particular embodiment appearing in the written description into the claim, if
the claim language is broader than the embodiment. See In re Van Geuns,
988 F.2d 1181, 1184 (Fed. Cir. 1993) (“[L]imitations are not to be read into
the claims from the specification.”).
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B. Claim Construction in Decision to Institute
The table below summarizes the claim constructions from our
Decision to Institute, in which we determined that the following claim terms
invoke section 112 ¶ 6 because they specify a function but no structure for
performing that function. Inst. Dec. 7.

Construed Term(s) Claim Construction
Temperature
controlling means
The function of this means-plus-function term we
determined to be “regulating the temperature of
said heating elements,” and the structure to
include “a temperature control switch as shown in
Figures 1A–3, and its equivalents, which can be
manipulated from outside the housing of the deep
well cooker.” Inst. Dec. 6–7.
Function controlling
means
We determined the function for this means-plus-
function limitation we found to be “enabling [the]
bottom heating element and [the] wrap-around
heating element to be selectively energized to
provide variable cooking modes,” and the
corresponding structure we determined to be “the
device, and its equivalents, as reflected in Figures
1A–3 of the ’392 patent mounted in the outer
housing of the deep well cooker and manipulated
separately from the temperature control means by
a user, and as represented in the specification, can
pass current individually to either the bottom
heater or wrap-around heater, or in combination
to both.” Inst. Dec. 7.

C. Overview of the Parties’ Positions
Patent Owner does not dispute the Board’s construction of
“temperature controlling means,” but asserts that “function controlling
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means” should be understood to include “a conventional electro-mechanical
switch . . . or, alternatively, that the selection of the bottom heater 38 and the
wraparound heater 40 may be accomplished by digital or other electronic
circuits.” PO Resp. 14 (citing Ex. 1001, 4:27–34). Patent Owner apparently
agrees in principle with the Board’s construction, but asserts the construction
should include alternative structures for “function controlling means” such
as “digital or other electronic circuits” as described in the specification of
the ’392 patent. Id. As shown above, we determined the corresponding
structure to be “the device, and its equivalents, as reflected in Figures 1A–3
of the ’392 patent mounted in the outer housing of the deep well cooker and
manipulated separately from the temperature control means by a user, and as
represented in the specification, can pass current individually to either the
bottom heater or wrap-around heater, or in combination to both.” Inst. Dec.
7 (emphasis added). We are not convinced by Patent Owner’s assertions of
any reason to change our claim construction. To the extent that these
alternatives are described in the specification of the ’392 patent or are
equivalent to the electro-mechanical structure and circuit shown in Figure
1A–3, such alternatives are encompassed within the proper claim
construction. See 35 U.S.C. § 112 ¶ 6.
III. ANALYSIS
A. Alleged Obviousness of Claim 1 by Hlava and Admitted Prior Art
For the reasons given below, despite the arguments provided in the
Patent Owner’s Response, Petitioner has shown, by a preponderance of the
evidence, that claim 1 is unpatentable in view of Hlava and the admitted
prior art.
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1. Hlava
In conjunction with Figures 1–3, Hlava discloses cooking apparatus
10 having housing assembly 12, metallic cooking insert 14, and stoneware or
ceramic cooking insert 16, in which food is contained. Ex. 1004, 3:53–56.
The inserts are removable, and lid 18 is used to cover food contained in the
cooker. Id. at 3:60–65. To heat the cooking apparatus, heating device 30 is
provided extending around the circumference of an inner surface of the
housing assembly, and “preferably includes a plurality of resistance type
heating elements formed in a band wrapping around liner side wall 34.” Id.
at 4:13–15. Figure 5 of Hlava is reproduced below:

Figure 5 depicts a front view of the cooking apparatus. Id. at 3:27–29.
The cooking apparatus includes housing 22 and lid 18. Heating is controlled
via user actuated selector switch 52 with dial 56 for selecting off, low, high,
and roast cooking modes. Id. at 6:13–14, 23–25. Once the user selects a
desired cooking mode via dial 56, circuit 50 supplies current to one of
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heating elements 30a', 30b', and 30c', corresponding to the selected low,
high, and roast modes. Id. at 6:18–21, Figs. 7–9. Thermostat 58 having
user-adjustable dial 64 is also provided in the circuit. Id. at 6:46–49.
Temperature control circuit 50 is shown more specifically, for
example, in Figure 7. In one embodiment the thermostat controls only
heating element 30c to regulate temperature in the roasting mode. Id. at
6:34–40. In another embodiment shown in Figure 9, the thermostat is
positioned in the circuit between power source 66 and selector switch 52' to
regulate the temperature to each heating element 30a', 30b', and 30c'. Id. at
7:58–63, 8:26–30.
2. Discussion
Petitioner asserts that Hlava discloses each element of claim 1 with
the exception of a bottom heating element. Pet. 22–23. For example,
Petitioner contends that Hlava’s cooker 10 comprises outer housing 12, deep
well member 28, sidewall heating elements 30a', 30b', 30c', thermostat 58
for regulating temperature, and controller selector switch 52' for selectively
energizing different heating elements. Pet 22–25, 29–32 (citing Ex. 1004,
3:51–55, 3:63–64, 4:11–17, 6:22–32, 6:46–49, 7:48–50, 7:52–55, 7:57–62,
Figs. 1A–31B, 5, 9). Petitioner makes several arguments as to why one of
ordinary skill in the art would have found it obvious to have modified
Hlava’s cooker 10 to include the claimed bottom heating element. Id. at 24–
35. First, Petitioner argues that one of ordinary skill in the art would have
found it obvious to shift one of the three heating elements (30a', 30b', or
30c'), to the bottom of Hlava’s deep well cooker because it was known in the
art to provide such bottom heating elements, and to provide “proportioned
heat for browning a roast . . . and because roasting is a function for which
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Hlava’s heating element 30c' was designed.” Id. at 24–25 (citing Ex. 1004,
8:17–22). Next, Petitioner argues that it would have been logical to add a
bottom heating element in Hlava’s cooker because in the prior art, as
discussed in the Background of the Invention of the ’392 patent, bottom
heating elements were already used in deep well cookers and Hlava teaches
that other heating profiles, besides the disclosed side heating elements, could
be used to “accommodate ‘a wide variety of cooking situations.’” Id. at 27
(citing Ex. 1001, 1:12–15; Ex. 1004, 1:53–64).
Petitioner reasons that one of ordinary skill in the art would have
shifted one of heating elements 30a', 30b', and 30c', as shown in Figure 9 in
Hlava, to the bottom of the deep well cooker, or alternatively added a
heating element in the bottom of the cooker, to address the problem of an
insufficiently heated portion of the deep well member. Pet. 25–26 (citing
Ex. 1001, 1:13–32). Other reasons Petitioner asserts that one of ordinary
skill in the art would have provided a bottom heating element include:
quicker heating of the cooking apparatus, providing additional cooking
functionality, and cooking modes, for different cooking situations, and that
there are only a finite number of positions for such heating elements. Id. at
28–29. Additionally, Petitioner relies on Mr. Sherwood’s testimony as
evidence that shifting the largest wattage heating element 30c' of Hlava’s
heating elements to the bottom of the deep well cooker, or alternatively,
adding a further bottom heating element was mere common sense, requiring
“no more than the exercise of ordinary skill, and no change would be needed
to Hlava’s selector switch 52’ . . . or to Hlava’s thermostat 58.” Id. at 26–30
(citing Ex. 1019 ¶¶ 22, 27–29).
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Patent Owner does not provide any declarant testimony, but makes a
number of arguments refuting Petitioner’s obviousness contentions and
Mr. Sherwood’s testimony. PO Resp. 16–26. First, Patent Owner argues
that the absence of a bottom heating element in Hlava “mitigates against a
finding of obviousness under 35 U.S.C. 103(a).” Id. at 17. Patent Owner
also asserts that Petitioner has not provided an articulated reasoning with
rational evidentiary underpinnings to support the conclusion of obviousness.
Id. at 18. Patent Owner further contends that adding a bottom heating
element to Hlava “could not be accomplished by a person of ordinary skill in
the art,” and would require:
(1) a redesign and remanufacture of the original heating device
30 comprised of only two heating elements 30a, 30b (as
modified); (2) design and manufacture of the proposed bottom
new heating element including the highest wattage heating
element 30c and a protective sheath; (3) redesign and /or
deletion of the insert discriminating sensor 36 from the circuit;
(4) modification of the original selector switch; (5)
reconfiguration of the insulation to protect the new heating
element, redesigned sensor and the other electrical components
in the circuit; and (6) laboratory testing to ensure the safety of
the modified Hlava device for use by the consumer.

Id. at 18–19. Mr. Sherwood’s opinion, Patent Owner argues, “is an
oversimplification and is not within the level of ordinary skill in the art.” Id.
at 21. Patent Owner also argues that Hlava teaches away from a bottom
heating element because Hlava’s “stoneware insert 16 could not resist the
localized thermal stresses and cracking that would be caused by the
proposed new bottom heating device for the reasons disclosed in Hlava.” Id.
at 22 (emphasis omitted) (citing Ex. 1004, 4:23–34). Patent Owner further
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contends that modifying Hlava would destroy the intent, function and
purpose of Hlava’s cooking apparatus. Id. at 23–26.
Patent Owner’s first argument is not persuasive because the fact that
an element of claim 1, namely the bottom heating element, is missing from
the Hlava reference is essentially the basis upon which Petitioner has
asserted that claim 1 is obvious, as opposed to anticipated. See Pet. 24.
Moreover, we are aware of no case law, nor has Patent Owner directed us to
any, that all the features of a claim must be found in a prior art reference to
properly support an obviousness analysis, or that the absence of a feature in
the reference, “mitigates,” against a finding of obviousness. See 35 U.S.C §
103, see also In re O'Farrell, 853 F.2d 894, 902 (Fed. Cir. 1988) (claimed
invention would have been obvious over single reference or combination of
references). We are also not persuaded by Patent Owner’s contention that
Petitioner has failed to present an articulated reasoning with rational
underpinnings in support of its obviousness positions. Petitioner has
asserted several reasons why one of ordinary skill in the art would shift, or
add a bottom heating element to Hlava, one reason being that:
it was known in the prior art to use a bottom heating element in
addition to a side heating element to facilitate heat distribution
in roasting (see Nachumsohn at page 2, column 1, lines 61–71
(discussing properly proportioned heat for browning a roast,
which is part of roasting)), and because roasting is a function
for which Hlava’s heating element 30c' was designed.

Pet. 24–25 (citing Ex. 1004, 8:17–22). Petitioner additionally asserts that
although Hlava does not disclose expressly a bottom heating element, Hlava
teaches that heating elements for other cooking situations, besides those
shown in the reference itself, are contemplated:

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“the actual number of elements and wattage values could be
varied in order to obtain the desired heating profile” . . . to
accommodate “a wide variety of cooking situations,” [] which
an extra heating element would have helped to accomplish by
expanding the heating profiles of the Hlava cooking apparatus.

Pet. 27 (citing Ex. 1004, 1:53–64, 5:48–56). Petitioner has supported its
reasoning with evidence from the prior art references, such as Hlava and
Nachumsohn, which teach that it was well known in the art to use bottom
heating elements in deep well cooking apparatus for particular cooking
operations. Pet. 25–26 (citing Ex. 1004, 4:11–19, 8:17–22, Fig. 5). Indeed,
Petitioner points to the Background section of the ’392 patent itself,
discussing certain prior art cooking devices having bottom heating elements.
Pet. 7–8, 25 (citing Ex. 1001, 1:21–60). Mr. Sherwood testifies persuasively
that shifting or adding a bottom heating element to Hlava was well within
the ordinary skill in the art, and “would have yielded the predictable result of
quicker heating of the bottom of Hlava’s cooking insert and/or would have
resulted in providing Hlava’s cooking apparatus 10 associated with FIG. 9
with additional cooking modes.” Ex. 1019 ¶¶ 27–29. In view of such
reasons and evidence, we are satisfied that Petitioner’s explanations
constitute articulated reasoning with rational evidentiary underpinnings
sufficient to justify the legal conclusion of obviousness.
Next, Patent Owner argues that Mr. Sherwood’s explanation of how a
bottom heating element would be designed in light of Hlava’s disclosure “is
an oversimplification and merely conclusory without an underlying factual
basis.” PO Resp. 18. Patent Owner presents six enumerated design and
manufacturing steps that would have to occur in order to provide such a
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bottom heating element in Hlava and argues that “such a modification could
not be accomplished by a person of ordinary skill in the art.” Id. at 18–19.
Patent Owner’s argument is, however, conclusory and unsupported by
anything except attorney argument. Mr. Sherwood testifies that shifting
heating element 30c' in Hlava would require no more than the exercise of
ordinary skill with no change in the electromechanical operation of the
selector switch 52' or thermostat 58. Ex. 1019 ¶ 27. Mr. Sherwood also
testifies that adding a bottom heating element into the circuit, and
connecting the additional “heating element to thermostat 58 and selector
switch 52' of Hlava would have been a straightforward task for someone of
ordinary skill in the art, including if one combined the function of sensor 36
into selector switch 52'.” Id. ¶ 28. Mr. Sherwood provides further details
supporting these conclusions as to specific circuit design and component
arrangements in both the shifting, and adding scenarios, in his Declaration at
paragraphs 30–36. Patent Owner has provided no contradictory evidence, or
technical reasoning, besides calling Mr. Sherwood’s testimony an
“oversimplification.” PO Resp. 18. Patent Owner’s argument is simply not
persuasive because it does not explain or provide evidence that the circuits,
circuit modifications, and arrangements of electromechanical components
asserted by Petitioner and its Declarant would not have been understood, or
were beyond the ordinary skill of one in the art, at the time of the alleged
invention in the ’392 patent. Moreover, to the extent that the six enumerated
steps or conditions would have to take place in order to produce a deep well
cooker such as in Hlava having a bottom heating element shifted, or added
to it, Patent Owner does not explain why a person of ordinary skill in the art
could not accomplish these steps. See PO Resp. 18–19. This is attorney
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argument that is entitled to no weight. It is well settled by the Federal
Circuit that argument of counsel cannot take the place of evidence lacking in
the record. See, e.g., In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997); In
re De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984) (holding that arguments
and conclusory statements unsupported by factual evidence are entitled to
little probative value).
Patent Owner next argues that Hlava teaches away from a bottom
heating element because Hlava’s “stoneware insert 16 could not resist the
localized thermal stresses and cracking that would be caused by the
proposed new bottom heating device.” PO Resp. 22 (citing Ex. 1004, 4:23–
34). However, teaching away requires a reference to actually criticize,
discredit, or otherwise discourage investigation into the claimed solution.
In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004). The concern addressed
by Hlava is that localized hot spots can compromise stoneware inserts, and
therefore sensors are used to discriminate between a stoneware insert, and a
metallic insert better suited to higher heat settings. Ex. 1004, 4:23–41. The
passages in Hlava referred to by Patent Owner state that “when stoneware
insert 16 is placed within housing 12, the maximum heat output permitted by
heating device 30 is limited to prevent thermal shock and cracking of the
stoneware.” Id. at 4:46–49. Patent Owner’s argument fails to explain why
one of ordinary skill in the art would have been discouraged from providing
a bottom heating element even though Hlava specifically states that metallic
inserts were available that could handle higher heat stress. See id. at 4:49–
52. Indeed, Patent Owner’s argument fails to explain why such a bottom
heating element could not be regulated in temperature just like Hlava’s
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heating device 30, for any type of insert in such a deep well cooking
apparatus including a stoneware insert.
Patent Owner’s further contention that Hlava’s insert discriminating
sensor 36 somehow dissuades one of skill in the art from using a bottom
heating element is also unavailing. See PO Resp. 23–25. Even if a bottom
heating element shifted, or added to Hlava, theoretically could “result in
localized thermal stresses and cracking of the stoneware insert 16” (id. at
26), Hlava expressly teaches how to avoid such a result with sensor 36 to
limit the maximum heating temperature of the heating elements. See Ex.
1004, 4:46–49. Patent Owner’s conclusory argument, that shifting heating
element 30c' to the bottom of Hlava’s cooker would “destroy the intent,
purpose or function” of Hlava’s invention, does not explain persuasively
why the temperature of a bottom heating element, either shifted or added to
Hlava’s cooker, would not also be limited by operation of sensor 36, for
instance when a stoneware insert is used in the cooker. For the above
reasons, we conclude that a preponderance of the evidence demonstrates that
claim 1 is unpatentable based on Hlava and the admitted prior art.
B. Alleged Obviousness of Claim 1 over Nachumsohn
For the reasons given below, Petitioner has shown, by a
preponderance of the evidence, that claim 1 is unpatentable over
Nachumsohn.
1. Overview of Nachumsohn
Nachumsohn discloses cooking vessel 1 with lid 60 having inner
shell 6 supporting oval-shaped roast pan 1, and shell 6 having ribbon-type
resistance heating element 8 wrapped around the sidewall of the vessel.
Ex. 1005, 2:18–38, Fig. 1. Figure 2 of Nachumsohn is reproduced below:
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Figure 2 illustrates a cut-away view of Nachumsohn’s cooker. The cooker
includes side heating element 8, as well as flat resistance heating element
20/21 that is in close thermal relation to the bottom of the shell 6 “to
facilitate the distribution of heat to the food in the proper proportions.” Id.
at 3:21–22.
Nachumsohn also describes a thermostat (generally shown by glass
window 43) electrically connected between the current supply and the
heating elements 8 and 20 for controlling the temperature in the cooking
vessel. Id. at 3:3–18. The thermostat is controlled by manually adjustable
slide 37. Id. at 3:3–7, 14–46. A user may move slide 37 along scale 45 to
an appropriate desired cooking temperature for food preparation, and the
thermostat will maintain the set desired temperature. Id. at 4:52–66.
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2. Discussion
Petitioner alleges that Nachumsohn discloses the elements of claim 1
including shell 6 being the deep well member, which is heated by a wrap-
around heating element 8 and a bottom heating element 20. Pet. 39–40.
Petitioner contends that thermostat and manually adjustable slide 37 are
temperature controlling means electrically connected to, and controlling,
heating elements 8 and 20. Id. at 40. Petitioner argues that it would have
been obvious to an ordinary skilled artisan to include a “function controlling
means electrically interconnected to the temperature controlling means
(Nachumsohn’s thermostat)” to energize either the wrap-around heating
element 8, or alternatively, the bottom heating element 20 individually, or
both in combination. Id. at 40–41. Petitioner argues that one of ordinary
skill would provide variable cooking modes with separately energized
heating elements because “Nachumsohn expresses the desire to ‘provide an
improved cooking means capable of meeting the diversified phases in the
general art of cooking, such as baking, searing, scalloping, steaming,
stewing, and so forth.’” Pet. 41 (quoting Ex. 1005, 1 (1:15–19).
Petitioner relies upon Mr. Sherwood’s testimony that it would have
been routine for a person of ordinary skill in the art to have used a double
pole triple throw switch or a double pole four throw switch, and electrically
connect such a switch to Nachumsohn’s thermostat to energize selectively
heating elements 8 and 20 to provide such variable cooking modes or
“diversified phases.” Pet. 41–42 (citing Ex. 1019 ¶¶ 22, 36–39).
Patent Owner first argues that Nachumsohn does not disclose a
“function controlling means,” as recited in claim 1, to energize selectively
the wrap-around and bottom heating elements, and that this “mitigates”
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against a finding of obviousness. PO Resp. 29–30. This argument is similar
to that initially provided with respect to Hlava, and is not persuasive in
regards to Nachumsohn for similar reasons as set forth above.
Patent Owner next argues that Nachumsohn teaches away from the
claimed “function controlling means” because “the dimensional length of the
line wires 33, 34 within the heater circuit is predetermined and calculated to
balance the heat generating resistance of the heater circuit and the heating
elements 8, 20 are designed to function only in combination.” Id. at 32
(emphasis omitted). The fact that Nachumsohn’s circuit design discloses the
wrap-around and bottom heating elements operating in combination does not
explain why, or provide evidence, that the circuit could not be modified by
one of skill in the art to include a well-known double pole triple throw
switch, or a double pole four throw switch, as Petitioner alleges, to energize
selectively these heating elements. Patent Owner provides no opinion
testimony to contradict Mr. Sherwood, or other evidence, as to the level of
skill in the art or the technical difficulty of adding such a switch to
Nachumsohn’s circuit. Patent Owner’s conclusory reasoning that
Nachumsohn “‘teaches away’ from the ’392 patent by simultaneous
operation of both Nachumsohn’s heating elements 8, 20 to achieve the
predetermined cooking result for a given food item” (PO Resp. 34), is
artificially based on the lack of a “function controlling means” in
Nachumsohn and does not criticize, discredit, or otherwise explain why one
of ordinary skill in the art would be discouraged from investigating into a
circuit design which also provided selectively energizing one or the other of
the bottom and wrap-around heating elements. See In re Fulton, 391 F.3d at
1201.
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Patent Owner next argues that the person of ordinary skill in the art
“has not been able to advance this technology significantly in the seventy-
eight years since the issuance of the Nachumsohn patent,” and that this fact
also “mitigates” against a finding of obviousness. PO Resp. 35 (emphasis
omitted). This argument is essentially that Nachumsohn is an old reference,
and that apparently, at least until the ’392 patent, no one had ever achieved
selectively energizing the different heating elements in a deep well cooker.
However, it is undisputed by Patent Owner that Nachumsohn is prior art,
and not contradicted that at the time of the invention of the ’392 patent, one
of skill in the art would have known and understood the mechanics and
functioning of a double pole triple throw switch, and a double pole four
throw switch, to permit such selective energizing. See Ex. 1019 ¶¶ 25–26;
Reply 11–12. We are not persuaded by Patent Owner’s argument because it
provides no evidence that one of ordinary skill in the art would not have
been able to modify Nachumsohn’s circuit to include known switches to
selectively energize the wrap-around and bottom heating elements. PO
Resp. 35. “[W]hen a patent ‘simply arranges old elements with each
performing the same function it had been known to perform’ and yields no
more than one would expect from such an arrangement, the combination is
obvious.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007) (quoting
Sakraida v. Ag Pro, Inc., 425 U.S. 273, 282 (1976)).
Patent Owner alleges, as it did similarly for Hlava, that Petitioner has
not provided an articulated reasoning with rational underpinnings to support
obviousness of claim 1 over Nachumsohn. PO Resp. 35–38. Patent Owner
specifically contends that simply using a double pole triple (or four) throw
switch to selectively energize the wrap-around and bottom heat elements
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“cannot reasonably be accomplished by a person of ordinary skill in the
art following the teachings of the Nachumsohn invention.” Id. at 38. This
argument is not persuasive for at least two reasons. First, a person of
ordinary skill in the art is not limited to the teachings of Nachumsohn. One
of ordinary skill can use his or her ordinary skill, creativity, and common
sense to make the necessary adjustments and further modifications to result
in a properly functioning device. See KSR, 550 U.S. at 418 (“[T]he
[obviousness] analysis need not seek out precise teachings directed to the
specific subject matter of the challenged claim, for a court can take account
of the inferences and creative steps that a person of ordinary skill in the art
would employ.”). Second, Petitioner showed that one of ordinary skill in the
art would have been motivated to include such a function controlling means
“to provide variable cooking modes” that constitute the many different
cooking phases, such as, baking, searing, scalloping, stewing discussed in
Nachumsohn. Pet. 41 (citing Ex. 1005, pg. 1, 1:15–19). Petitioner reasoned
that these cooking modes could be achieved
by enabling multiple heating elements to be selectively
energized, and that electromechanical rotary switches—such as
a double pole triple throw switch, which would have enabled
Nachumsohn’s bottom and side heating elements to be
energized to provide cooking modes via the bottom heating
element only, the side heating element only, or both heating
elements; and such as a double pole four throw switch, which
would have included an “off” setting (where neither heating
element is energized) and enabled Nachumsohn’s bottom and
side heating elements to be energized to provide cooking modes
via the bottom heating element only, the side heating element
only, or both heating elements—were known means of
accomplishing same.

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Id. (citing Ex. 1019 ¶¶ 22, 36–39). Petitioner’s reasoning is supported by
evidence from Nachumsohn that different modes of heating and cooking
food were contemplated by those of skill in the cooking arts, and that
modifying Nachumsohn’s circuit with a double pole triple (or four) throw
switch to selectively energize, either, or both heating elements to achieve
these modes “would have been routine for one of ordinary skill in the art” at
the time the ’392 patent was filed. Id. Therefore, Petitioner has presented
an articulated reasoning with rational underpinning based on Nachumsohn.
Patent Owner also argues that modifying Nachumsohn with a function
controlling means would destroy the intent, purpose and function of the
reference. PO Resp. 38. Patent Owner asserts that Nachumsohn provides a
temperature control means that is essentially a built in cookbook with
cooking charts 53 so that “it is not essential that a user thereof have any
knowledge of cooking.” Id. at 39 (emphasis omitted) (citing Ex. 1005,
4:42–72). With this functionality, Patent Owner contends that the user
merely has to select the food as it is indexed and the temperature is set
automatically. Id. (citing Ex. 1005, 4:18–28). That the cooker itself has a
preset temperature that a user selects does not disprove that a known
electronic switch could be used to energize either the wrap-around heating
element, the bottom heating element, or both in combination and
correspondingly recalibrate the individual heating elements to maintain the
automatic temperature indexing function. Patent Owner’s argument does
not explain why such a circuit arrangement with a double pole triple (or
four) throw switch would “destroy” the preset, or automatic functionality of
Nachumsohn. Accordingly, we conclude that a preponderance of the
evidence shows claim 1 is unpatentable over Nachumsohn.
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C. Patent Owner’s Objections to Robert Sherwood’s Declaration
Patent Owner objects to Robert Sherwood’s Declaration testimony on
the basis of “information and belief” that (1) Mr. Sherwood did not opine
upon the level of ordinary skill in the art in the 2000-2001 time period
during which the ’392 patent was filed, and (2) that Mr. Sherwood has no
legal training and is not qualified as an expert.1 PO Resp. 26–27, 41–42.
Mr. Sherwood’s Declaration describes his professional background
and education as an electrical engineer with 50 years of product
development and design experience including electric cooking devices.
Ex. 1019¶¶ 3–14. Mr. Sherwood’s testimony is offered by Petitioner, not as
expert testimony on the specific legal criteria of obviousness, but as
evidence of what one of ordinary skill in the art of electric cooker design
would have understood at the time of the filing of the ’392 patent. Id. ¶ 22.
Mr. Sherwood’s legal principal statements are informative as to his
understanding of obviousness, but not expert testimony as to the specific
legal elements and requirements for obviousness. Id. ¶¶ 20–21.
Mr. Sherwood’s opinions and testimony as they relate specifically to the
prior art, and his knowledge of one of ordinary skill in the art at the time of

1 Fed. R. Evid. 702. Testimony by Expert Witnesses
A witness who is qualified as an expert by knowledge, skill, experience,
training, or education may testify in the form of an opinion or otherwise if:
(a) the expert’s scientific, technical, or other specialized knowledge will
help the trier of fact to understand the evidence or to determine a fact in
issue;
(b) the testimony is based on sufficient facts or data;
(c) the testimony is the product of reliable principles and methods; and
(d) the expert has reliably applied the principles and methods to the facts of
the case.
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filing of the ’392 patent, comport with the legal requirements for
obviousness as explained to him by Petitioner’s counsel. See Ex. 1019 ¶ 20.
Obviousness is a mixed question of law and fact and it is not necessary that
an expert be a “legal” expert on the question of obviousness. See Soverain
Software LLC, v. Newegg Inc., 705 F.3d 1333, 1341 (Fed. Cir. 2013)
(“precedent does not require ‘expert’ opinions on matters of law”).
Also, we are persuaded that Mr. Sherwood’s testimony was
undertaken with consideration as to the level of ordinary skill in the art
within the 2000-2001 time frame of the alleged invention and filing of the
’392 patent. Although Mr. Sherwood did not state, explicitly, what the level
of one of ordinary skill in the art would have been at the time of filing of the
’392 patent, it is reasonable to determine that a professional engineer having
a master’s degree in electrical engineering and 50 years of electronic product
design experience including extensive experience in the design of cooking
appliances and electronic temperature control systems including slow
cookers and crockpots, is qualified to testify as to what would have been
known by, and obvious, to one of ordinary skill in the art at the time of the
filing of the ’392 patent. Ex. 1019 ¶ 8. Mr. Sherwood specifically states
that his opinions are “based on my personal knowledge, experience, and the
materials I have reviewed, as to how someone of ordinary skill in the field of
cooking appliances would understand the challenged claims of . . .the ’262
patent and the ’392 patent as of at least July 2001.” Id. ¶ 22. We determine
that Mr. Sherwood’s opinions and testimony are entitled to weight, as they
embrace the requirement of one of skill in the art at the time of filing of the
’392 patent, and are adequately supported by his professional experience and
skill in the field of electronic cooking appliance design.
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D. Alleged Obviousness of Claim 1 over Hlava and Nachumsohn2
Patent Owner does not provide substantive rebuttal arguments to the
combination of Hlava and Nachumsohn. See PO Resp. 42–48. Patent
Owner relies specifically upon its arguments with respect to Hlava and
Nachumsohn individually, as previously set forth in its Patent Owner’s
Response:
Patent Owner respectfully submits that the arguments set
forth hereinabove in response to Petitioner's contentions that
Claim 1 is obvious over Nachumsohn (when standing alone),
also obviate Petitioner’s contentions that the combination of
such references, Nachumsohn in view of Hlava, and such
contentions are legally insufficient to establish a prima [facie]
case of obviousness under §103(a).

Id. at 45.
Petitioner argues that understanding Nachumsohn’s teaching of a
bottom heating element for roasting, one of ordinary skill in the art would
have shifted one of Hlava’s heating elements, for example the largest
wattage heating element 30c', to the bottom of the cooker for more
proportioned heat distribution for roasting. Pet. 24. Petitioner contends that
shifting a heating element in Hlava from the sidewall to the bottom of the
cooking pan as taught by Nachumsohn would have required no more than
the exercise of ordinary skill in the art and also would not change the
fundamental structure or function of Hlava’s selector switch 52 and

2 The order in which the references are combined, Hlava and Nachumsohn
or Nachumsohn and Hlava is immaterial to our Decision. The question is
“whether the claimed inventions are rendered obvious by the teachings of
the prior art as a whole.” See In re Etter, 756 F.2d 852, 859 (Fed. Cir.
1985); see also, e.g., In re Bush, 296 F.2d 491, 496 (CCPA 1961).
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thermostat 58, as they correspond respectively to the claimed heating means
and temperature controlling means recited in claim 1. Id. at 25 (citing Ex.
1019 ¶¶ 22, 27).
Petitioner further asserts that Nachumsohn discloses all the elements
of claim 1 with the exception of a function controlling means, but that it was
known in the art to provide different cooking modes by enabling multiple
heating elements to be energized selectively, such as described by Hlava.
Pet. 42 (citing Ex. 1004, 2:19–25 (“Summary of the Invention”)). Petitioner
reasons that one of ordinary skill in the art would have modified
Nachumsohn’s deep well cooker with Hlava’s selector switch 52 and 52' to
enable selected energizing of the wrap-around and bottom heating elements
to provide for more diversified cooking modes, and that Hlava’s selective
heating of different heating elements via selector switch 52 and 52' as a
function controlling means would provide such different cooking modes. Id.
at 43–44.
Petitioner supports this argument with Mr. Sherwood’s testimony that
it was known in the art to selectively energize different heating elements to
achieve various cooking modes and would have been routine for a person of
ordinary skill to have used a four position rotary switch, substantially the
same as disclosed by Hlava’s switch 52 and 52', to select different cooking
modes. Id. at 44 (citing Ex. 1019 ¶¶ 22, 36–39). Mr. Sherwood states that
such a four position rotary switch, (e.g., off, low, high, and roast), could be
electrically connected to Nachumsohn’s thermostat to selectively energize
the heating elements to provide variable cooking modes. Ex. 1019 ¶¶ 33–
34. We are persuaded by Petitioner’s arguments, reasoning, and evidence,
and credit Mr. Sherwood’s testimony, with respect to the combination of
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Hlava and Nachumsohn. According to Mr. Sherwood, a person of ordinary
skill in the art would have known that food cooking devices at the time of
the filing of the ’392 patent were provided having both bottom and side
heating elements as in Nachumsohn to provide for even heating of food in
the cooking device. Ex. 1019 ¶¶ 22, 36–39. Although Nachumsohn does
not disclose a specific function control that selectively energizes separate
heating elements, according to Mr. Sherwood, a person of ordinary skill in
the art would also have known of food cookers such as Hlava that have
different cooking modes and can separately energize different heating
elements. Ex. 1019 ¶¶ 34–36. The person of ordinary skill in the art also
would have known that such function and structure could be achieved with a
separate function switch in the heating circuit, such as disclosed in Hlava,
for selectively energizing different heating elements to provide discrete
cooking modes. Id. ¶ 34. Mr. Sherwood further testifies that a person of
ordinary skill would also have known to arrange a selector switch such as
disclosed by Hlava, in the heating circuit to provide for energizing the
heating elements separately or in combination to provide different modes of
cooking. Id. Accordingly, we conclude that a preponderance of the
evidence shows claim 1 is unpatentable over Nachumsohn and Hlava.
E. Alleged ObviousnessObviousness of Claim 1 over Nachumsohn
and Vallorani
Petitioner alleges that claim 1 is unpatentable under 35 U.S.C.
§ 103(a) over Nachumsohn and Vallorani. Pet. 44–45. Patent Owner
disputes Petitioner’s position, arguing that Vallorani is not analogous art and
that a person of ordinary skill in the art would not have had reason to
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combine the references in the manner proposed by Petitioner. PO Resp. 48–
52.
1. Overview of Vallorani
Vallorani relates to control circuits for an electric oven such as home
appliance electric ranges. Ex. 1007, 1:10–13. Vallorani discloses
specifically a heating control circuit with “a manually operable control
switch selectively operative to establish different electrical heating
connections between the heating elements and the source of current supply
so as selectively to set the oven to carry out different broiling and baking
operations.” Id. at 1:17–22. Figures 1 and 2 of Vallorani are reproduced
below:

Figure 1 is a fragmentary front view of an electric range, and Figure 2
is a diagram of a circuit control network incorporated in the range of Figure
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1. Id. at 2:23–31. As depicted in Figures 1 and 2 of Vallorani, above, a
circuit network is shown having heating elements 16, 17, and 18. Manual
control switch 19 is connected to the circuit network for selectively
controlling the heating elements. Id. at 3:37–39. The control switch
“includes four individual manually operable pushbuttons respectively
corresponding to the off, broil, regular bake and time bake positions
thereof.” Id. at 3:44–48, Fig. 2.
Vallorani describes operation of the control switch to undertake
different cooking or baking operations, such as broiling, where heating
elements 16 and 17 are energized to provide greater heat in the upper portion
of the oven cavity to facilitate broiling food. Id. at 5:21–55, Fig. 3. For a
regular baking operation on the other hand, heating elements 17 and 18 are
energized so as to develop a more uniform heating throughout the oven
cavity. Id. at 5:56–6:10, Fig. 4.
2. Discussion
“A reference qualifies as prior art for an obviousness determination
under § 103 only when it is analogous to the claimed invention.” In re
Klein, 647 F.3d 1343, 1348 (Fed. Cir. 2011) (citing Innovention Toys, LLC
v. MGA Entm’t, Inc., 637 F.3d 1314, 1321 (Fed. Cir. 2011); In re Bigio, 381
F.3d 1320, 1325 (Fed. Cir. 2004); In re Clay, 966 F.2d 656, 658 (Fed. Cir.
1992)). A reference is considered analogous prior art: (1) if the reference is
from the same field of endeavor as the claimed subjected matter, regardless
of the problem addressed, or (2) if “the reference still is reasonably pertinent
to the particular problem with which the inventor is involved,” even though
the reference is not within the field of the inventor’s endeavor. Bigio, 381
F.3d at 1325. The “field of endeavor” test asks if the structure and function
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of the prior art is such that it would be considered by a person of ordinary
skill in the art, because of the similarity to the structure and function of the
claimed invention as disclosed in the application. Id. at 1325–27.
Patent Owner concedes that both a deep well cooker and Vallorani’s
range are “home cooking appliances,” but argues that they are directed to
“substantially different fields.” PO Resp. 50. Apart from this assertion,
Patent Owner does not explain or provide any evidence that these two home
cooking apparatuses are actually in different fields of endeavor. Vallorani
does not specifically disclose a deep well cooking apparatus, however,
where an electric range and a deep well cooker perform various similar
domestic food cooking operations, it is reasonable that a person of ordinary
skill in the art would look to known electric food cooking devices such as an
electric cooking range with electric radiant heating elements that functions
for the same purpose, and in a similar way, to a deep well cooking apparatus,
that is, to heat and cook food in a variety of different phases or modes.
Compare Ex. 1007, 1:14–25, with Ex. 1005, 1:15–22. The scope of
analogous art is to be construed broadly. Wyers v. Master Lock Co.,
616 F.3d 1231, 1238 (Fed. Cir. 2010) (“The Supreme Court’s decision in
KSR . . . directs us to construe the scope of analogous art broadly . . . .”).
The fact that Vallorani addresses at one point a different problem from
Nachumsohn, e.g., too much top heat for evenly baking a cake, does not
mean, as Patent Owner contends, that the references are directed to different
fields of endeavor and therefore nonanalogous art. See PO Resp. 51 (citing
Ex. 1007, 1:37–55).
Patent Owner further argues that even if Nachumsohn and Vallorani
are properly combined under § 103(a), the combination does not meet all the
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limitations of claim 1 because Vallorani discloses that “heating elements 16,
17, 18 are energized only in combination (i.e. not individually).” PO Resp.
52. This argument is not commensurate in scope with the claims. Claim 1
recites “function controlling means . . . enabling said bottom heating element
and said wrap-around heating element to be selectively energized to provide
variable cooking modes” (emphasis added). As Patent Owner itself points
out, “at least two of Vallorani’s three heating elements 16, 17, 18 are
energized at all times during cooking operations.” Id. at 52. This is
consistent with claim 1 reciting that the heating elements are “selectively
energized.” Vallorani discloses, for example, that in a broil function heating
elements 16 and 17 are selectively energized, and element 18 is not
energized. See PO Resp. 52–53 (citing Ex. 1007, 5:21–40, Fig. 3).
We are persuaded that Vallorani is analogous art to Nachumsohn
because the references disclose similar apparatuses performing the same
food cooking functions, and, therefore, a person of skill in the art would
reasonably have looked to such similar cooking apparatus and heating
control circuits at the time of the invention of the ’392 patent to provide
control over the heating elements to achieve different heating modes. We
are also persuaded by Petitioner’s argument and evidence that Vallorani’s
control circuit for an electric oven discloses a circuit for selectively
energizing different heating elements to perform different heating operations
or modes. Pet. 42 (citing Ex. 1007, 1:14–29). We are further persuaded by
Petitioner’s evidence that it would have been a straight forward task for one
of ordinary skill in the art to incorporate Vallorani’s switch 19 with
Nachumsohn’s thermostat “to provide variable cooking modes” to
Nachumsohn’s cooker. Pet. 44–45 (citing Ex. 1019 ¶¶ 22, 36–39).
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Accordingly, we determine that Petitioner has demonstrated by a
preponderance of the evidence that claim 1 is unpatentable based on
Nachumsohn and Vallorani.
F. Alleged Obviousness of Claim 12 over Hlava, Nachumsohn, and
Hegbom, and over Nachumsohn, Vallorani, and Hegbom
1. Overview of Hegbom
Hegbom, titled “Integrating Electrical Heating Elements in Appliance
Design,” relates to the design and manufacture of heating elements such as
tubular heating elements for different purposes and appliances, such as
cooking ranges. Ex. 1006, 289, Fig. 6.18. Hegbom discloses, for example,
resistance tubular heating elements that have been cast into metal, such as
aluminum, to form plate-type elements for different appliances. Id. at 297–
99, Figs. 6.22–23. Figures 6.22–23 of Hegbom are reproduced below:

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Figures 6.22––23 of Hegbom depict various plate-type heating elements that
apparently can be used, for example, for ironing devices (i.e., “flatirons”)
and similarly for food cooking devices such as “frying pans, deep fat fr[y]rs,
and rice cookers.” Id. at 298.
2. Discussion
Claim 12 depends directly from claim 1, adding the limitation
“wherein said bottom heating comprises a hot plate type heater including a
heating plate.” Petitioner persuasively argues that “[s]uch hot plate type
heaters, and their functions, were known in the art by at least July 11, 2001,”
and that “[a]n example of such a heater is shown in Figure 6.22 of Hegbom.”
Pet. 48 (citing Ex. 1006, 297–99). Petitioner reasons, for either
combination, that substituting Hegbom’s aluminum plate heating element
(Ex. 1006, Fig. 6.22) for Nachumsohn’s ribbon resistor “would have
amounted to nothing more than the simple substitution of one known
element for another to obtain the predictable result of heating the bottom of
Nachumsohn’s cooker, thus rendering it obvious to one of ordinary skill in
the art by at least July 11, 2001.” Pet. 48–49 (citing KSR, 550 U.S. at 416).
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Patent Owner does not address the further limitations added by
dependent claim 12, instead relying exclusively upon its arguments with
respect to Hlava and Nachumsohn, as well as Nachumsohn and Vallorani,
and claim 1. See PO Resp. 55–59. For the reasons discussed above, we are
persuaded that Petitioner has sustained its burden of showing that Hlava and
Nachumsohn, and Nachumsohn and Vallorani render claim 1 unpatentable
by a preponderance of the evidence. We are persuaded by Petitioner’s
reasoning and evidence supporting the combination of Hegbom and
Nachumsohn, and therefore, conclude that a preponderance of the evidence
demonstrates that claim 12 is also unpatentable based on Hlava,
Nachumsohn, and Hegbom, as well as Nachumsohn, Vallorani, and
Hegbom.
G. Motion to Amend Claims 1 and 12
Patent Owner moves to substitute claims 20 and 23 for challenged
claims 1 and 12, respectively, if we find original claims 1 and 12
unpatentable. Mot. to Amend 1. As stated above, we determine that
Petitioner has demonstrated by a preponderance of evidence that all of the
challenged claims are unpatentable. Therefore, Patent Owner’s Motion to
Amend is before us for consideration. For the reasons set forth below,
Patent Owner’s Contingent Motion to Amend is denied.
Proposed substitute claim 20 is shown below with underlining to
indicate additions as compared to original claim 1.
20. A deep well cooker comprising:
an outer housing having a lid member;
a deep well member residing within said housing, said
deep well member having a bottom surface with integrally
formed sidewalls and an open top;
heating means including a bottom heating element and a
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wrap-around heating element radially disposed about said deep
well member and positioned intermediate said housing and said
deep well member;
temperature controlling means electrically interconnected
to said heating means for regulating the temperature of said
heating elements; and
function controlling means including a multifunction
controller electrically interconnected to said temperature
controlling means and to said heating elements enabling said
bottom heating element and said wrap-around heating element
to be selectively energized individually or in combination to
provide variable cooking modes.

Mot. to Amend 2–3.
Proposed substitute claims may not enlarge the scope of original
patent claims. 35 U.S.C. § 316(d)(3); 37 C.F.R. § 42.121(a)(2)(ii).
Petitioner argues that the Motion to Amend should be denied because the
added limitations may not invoke 112 ¶ 6, leaving the claim limitation
potentially covering structures not described in the specification. Opp. to
Amend 1–2. Patent Owner contends that this amendment is a narrowing
amendment “by adding limitations to the ‘function controlling means.’”
Mot. to Amend 4; Reply Opp. to Amend 1.
We determined in our Decision to Institute that the structure
corresponding to the “function controlling means” is described in the
specification of the ’392 patent as a “multi-function controller,”
“multifunction control,” “function control switch 34,” and “multi-function
control switch 34.” See Inst. Dec. 6–7 & n.2 (citing Euro-Pro Operating
LLC v. Acorne Enters., LLC, Case IPR2014-00351, slip op. at 9–10 (PTAB
July 10, 2014) (Paper 19)). Our claim construction determined this means-
plus-function limitation to cover the corresponding structure:
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the device, and its equivalents, as reflected in Figures 1A–3 of
the ’392 patent mounted in the outer housing of the deep well
cooker and manipulated separately from the temperature control
means by a user, and as represented in the specification, can
pass current individually to either the bottom heater or wrap-
around heater, or in combination to both.

See Inst. Dec. 7. As so construed, the scope of this limitation, therefore,
encompasses a “multifunction controller,” as Patent Owner now provides in
substitute claim 20. We consider this amendment, therefore, to be neither
broadening nor narrowing to the scope of the original claim.
What is not definite from this proposed claim amendment, reading the
entire means-plus-function phrase “function controlling means including a
multifunction controller” in context, is whether the “multifunction
controller” is recited as the “function controlling means” itself, or, a required
portion or substructure of the “function controlling means,” or, if
“multifunction controller” is intended as an exemplary alternative structure
to the structures we identified from the specification as included under the
proper §112 ¶ 6 analysis. Patent Owner’s explanation for this amendment is
equally unhelpful, stating that “[a]s disclosed in the ’392 patent, the
multifunction controller may comprise a function control switch 34, and
equivalent structures, for selective control of the heating elements.” Mot. to
Amend 5 (emphasis in original omitted, emphasis added). This explanation
as to what the multifunction controller “may” provide is ambiguous as to
what structure or substructure is being claimed in the substitute claim. The
amendment is therefore indefinite. See 35 U.S.C. § 112 ¶ 2.
Moreover, Patent Owner fails to explain why this amendment renders
claim 1 patentable over Hlava in view of what was known to one of ordinary
skill in the art with regards to such controllers at the time of the alleged
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invention in the ’392 patent. Patent Owner asserts again, inter alia, that
Hlava does not disclose a bottom heating element, “which is a patentable
distinction of the ’392 patent and mitigates against a finding of obviousness
under 35 U.S.C. § 103(a).” Mot. to Amend 6–7. However, the Motion is
devoid of any explanation or discussion with respect to the proposed
amendment and Hlava. Patent Owner argues that Nachumsohn does not
disclose a “multifunction controller or function control switch that
selectively energizes Nachumsohn’s heating elements individually or in
combination, or any equivalent structure, to change the automatic index
setting.” Id. at 9–10. This argument is ineffective because Nachumsohn is
not relied upon for the multifunction controller. Petitioner’s grounds rely
upon Hlava, the common knowledge of an artisan of ordinary skill in the art,
and Vallorani as disclosing the claimed “function controlling means.” See
Pet. 32–35, 42–45. Further, the proposed limitation “individually or in
combination” maintains the energizing of the heating elements “in
combination” as an alternative in the claim and, thus, cannot distinguish over
Nachumsohn or Vallorani. See Mot. to Amend 11–14.
IV. CONCLUSION
Based on the complete record before us, we conclude that Petitioner
has demonstrated by a preponderance of the evidence that claim 1 of the
’392 patent is unpatentable as obvious over Hlava, or Nachumsohn. Also
that claim 1 is unpatentable as obvious over Hlava and Nachumsohn, as well
as, Nachumsohn and Vallorani. Further, that claim 12 is unpatentable as
obvious over Hlava, Nachumsohn, and Hegbom, and also, Nachumsohn,
Vallorani, and Hegbom.
IPR2014-00352
Patent 6,624,392 B2

39
V. ORDER
For the reasons given, it is
ORDERED that claims 1 and 12 of U.S. Patent No. 6,624,392 are
determined by a preponderance of the evidence to be unpatentable;
FURTHER ORDERED Patent Owner’s Motion to Amend is denied;
and
FURTHER ORDERED that because this is a final written decision,
parties to the proceeding seeking judicial review of the decision must
comply with the notice and service requirements of 37 C.F.R. § 90.2.
IPR2014-00352
Patent 6,624,392 B2

40
PETITIONER:
Mark T. Garrett
Brandon J. Karam
FULBRIGHT & JAWORSKI LLP
mark.garrett@nortonrosefulbright.com
brandon.karam@nortonrosefulbright.com

For PATENT OWNER:

Clifford F. Rey
Law Office of Clifford F. Rey
crlaw@mindspring.com