Ex Parte Barnes et al

Board of Patent Appeals and Interferences

Nov 28, 2006

10385520 (B.P.A.I. Nov. 28, 2006)

The opinion in support of the decision being entered today was not written
for publication and is not binding precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte SHELTON T. BARNES, EDDIE MAX BROCK, CHRISTOPHER A. LARSEN and
GERALD R. PLACE

Appeal No. 2006-2869
Application No. 10/385,520
Technology Center 3700
____________

ON BRIEF
____________

Before OWENS, LEVY, and FETTING, Administrative Patent Judges.
LEVY, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on appeal from the examiner's final rejection of claims 1-14, which are
all of the claims pending in this application.

We REVERSE.
Appeal Number 2006-2869
Application No. 10/385,520

2
BACKGROUND
The appellants’ invention relates to a low profile gas burner for a cooking appliance
(specification, page 1). In particular, the invention relates to an intermediate portion of the gas
burner maintaining a vertically spaced relationship between the inlet portion and the outlet
portion of .75 inch to about 2.5 inch (specification, page 3). More specifically, the intermediate
portion maintains a vertically spaced relationship between the inlet portion and the outlet portion
of at least one tubing diameter, and more preferably, two tubing diameters (id.).

Claim 1 is representative of the invention, and is reproduced as follows:
A cooking appliance comprising:
an oven cavity; and
a gas burner assembly positioned within the oven cavity, said gas burner assembly
including a first end, defining an inlet portion, interconnected with a second end, defining
an elongated outlet portion, through an intermediate portion, wherein said intermediate
portion maintains a vertically spaced relationship between the inlet portion and outlet
portion, said spaced relationship being from about 0.75 inches (1.91 cm) to about 2.5
inches (6.35cm).

The prior art reference of record relied upon by the examiner in rejecting the appealed
claims is:
Perry 3,422,809 Jan. 21, 1969

Claims 1-14 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Perry.
Rather than reiterate the conflicting viewpoints advanced by the examiner and the
appellants regarding the above-noted rejection, we make reference to the answer (mailed March
23, 2006) for the examiner's complete reasoning in support of the rejection, and to the brief (filed
January 23, 2006) and reply brief (filed May 24, 2006) for the appellants’ arguments
thereagainst.
Appeal Number 2006-2869
Application No. 10/385,520

3
Only those arguments actually made by appellants have been considered in this decision.
Arguments which appellants could have made but chose not to make in the brief have not been
considered. See 37 C.F.R. § 41.37(c)(1)(vii)(eff. Sept. 13, 2004).

OPINION
In reaching our decision in this appeal, we have carefully considered the subject matter
on appeal, the rejection advanced by the examiner, and the evidence of obviousness relied upon
by the examiner as support for the rejection. We have, likewise, reviewed and taken into
consideration, in reaching our decision, appellants' arguments set forth in the briefs along with
the examiner's rationale in support of the rejection and arguments in rebuttal set forth in the
examiner's answer. Upon consideration of the record before us, we make the determinations
which follow.
In rejecting claims under 35 U.S.C. § 103, it is incumbent upon the examiner to establish
a factual basis to support the legal conclusion of obviousness. See In re Fine, 837 F.2d 1071,
1073, 5 USPQ2d 1596, 1598 (Fed.Cir. 1988). In so doing, the examiner is expected to make the
factual determinations set forth in Graham v. John Deere Co., 383 U.S. 1, 17, 148 USPQ 459,
467 (1966), and to provide a reason why one having ordinary skill in the pertinent art would have
been led to modify the prior art or to combine prior art references to arrive at the claimed
invention. Such reason must stem from some teaching, suggestion or implication in the prior art
as a whole or knowledge generally available to one having ordinary skill in the art. Uniroyal,
Inc. v. Rudkin-Wiley Corp., 837 F.2d 1044, 1051, 5 USPQ2d 1434, 1438 (Fed. Cir. 1988);
Ashland Oil, Inc. v. Delta Resins & Refractories, Inc., 776 F.2d 281, 293, 227 USPQ 657, 664
(Fed. Cir. 1985); ACS Hosp. Sys., Inc. v. Montefiore Hosp., 732 F.2d 1572, 1577, 221 USPQ
929, 933 (Fed. Cir. 1984). These showings by the examiner are an essential part of complying
with the burden of presenting a prima facie case of obviousness. Note In re Oetiker, 977 F.2d
1443, 1445, 24 USPQ2d 1443, 1444 (Fed.Cir. 1992). If that burden is met, the burden then shifts
to the applicant to overcome the prima facie case with argument and/or evidence. Obviousness
is then determined on the basis of the evidence as a whole. See id.; In re Hedges, 783 F.2d 1038,
Appeal Number 2006-2869
Application No. 10/385,520

4
1039, 228 USPQ 685, 686 (Fed. Cir. 1986); In re Piasecki, 745 F.2d 1468, 1472, 223 USPQ 785,
788 (Fed. Cir. 1984); and In re Rinehart, 531 F.2d 1048, 1052, 189 USPQ 143, 147 (CCPA
1976).
The examiner's position (answer, page 5) is that
Perry does not specifically recite the claimed ranges
and proportions for the intermediate portion. However,
it should be noted that the only mention vaguely
resembling any criticality for the claimed ranges
and proportions in the entire disclosure is a single
sentence that states that the disclosed arrangement
minimizes the height of the burner in order to enhance
the size of the oven cavity. There appears to be no
mention of any criticality for the specific ranges and
proportions recited in the claims. As such, these
limitations are simply design modifications based on
spatial considerations and have no apparent criticality.

The examiner adds (answer, pages 5 and 6) that
It would have been obvious to one having ordinary skill
in the art at the time the invention was made to have
incorporated the claimed range into the invention
disclosed by Perry, since it has been held that where the
general conditions of a claim are disclosed in the prior
art, discovering the optimum or workable ranges
involves only routine skill in the are. In re Aller, 105
USPQ 233; In re Swain, 156 F.2d 239.

Appellants' position (brief, page 7) is that in Perry, there is no attempt to establish a low profile
gas burner. Appellants assert (brief, page 8) that “conventional wisdom would indicate that
holding the intermediate or rising section to a minimal length would create problems with a
reverse density driven flow and ‘popping’ of the gas inside the burner tube. The inventor’s have
looked past this and developed the low profile burner of the invention.” It is argued (brief, page
9) that
There is no suggestion or motivation in Perry that would
indicate the obviousness of providing the specifically
claimed vertical spaced relationship between in inlet
portion and the outlet portion of a gas burner assembly to
Appeal Number 2006-2869
Application No. 10/385,520

5
overcome the negative effects of a reverse density driven
flow and enhance oven cavity size. This is particularly true
given that none of the art of record even remotely addresses
the problem solved by the invention.

With respect to the examiner’s reliance on In re Aller, 105 USPQ 233, appellants argue (brief,
page 8) that
In Aller, the prior art showed essentially the same process as
that recited in the claims, and the art suggested the possibility of
changing parameters of that process, i.e., a motivation
existed. In contrast, the prior art relied upon by the Examiner
does not even recognize the problem addressed by the inventors
of the present application, let alone suggest any of the claimed
range limitations.
From our review of the record, we find, for the reasons which follow, that the teachings
and suggestions of Perry would not have suggested to an artisan the invention set forth in claims
1-14. At the outset, we note the disclosure in appellants’ specification (page 2) that
conventionally, oven cavities are designed with a considerable amount of space allocated for the
gas burner assembly, and that specifically, a conventional gas burner assembly is designed such
that a vertical distance of at least 3 inches separates the inlet portion from the outlet portion.
This distance requirement has been seen as necessary to avoid the negative effects associated
with a reverse density driven flow which occurs when the cooking appliance is hot and gas flow
to the burner is off. It is further disclosed (specification, page 3) that “[p]articularly, there exists
a need for a low profile gas burner assembly having an inlet portion and an outlet position
separated by a distance less than the conventional 3 inches (7.62 cm) that does not suffer from
the effects of a reverse density driven flow.” As disclosed on pages 3 and 8 of the specification,
for a tubing diameter of .75 inches, vertical spacing of .75 inch to about 2.5 inches, which is
about 1 to 3.33 times the tubing diameter, provides a low profile burner arrangement which
avoids reverse driven energy flow.
From the disclosure, we do not agree with the examiner (answer, page 6) that appellants
have failed to satisfy their burden of establishing that such a problem exists. In our view, from
appellants’ disclosure (which was filed under oath or declaration) that the conventional wisdom
Appeal Number 2006-2869
Application No. 10/385,520

6
was to make the vertical spacing between the inlet and outlet at least three inches in length, we
find that to meet the need for an enhanced oven cavity size, appellants went against the
conventional wisdom and provided a low profile gas burner that will allow for an enlarged oven
cavity while preventing reverse density driven flow.
Turning to Perry, we find that the reference is directed to a self cleaning oven (col. 1, line
13). Although Perry discloses a gas burner 26 having an inlet, unnumbered, and holes 26a, we
find Perry to be silent as to the size of the vertical relationship between the inlet and outlet
portions, and the examiner has not pointed to any teaching or disclosure in Perry that would
suggest the size of the vertical relationship between the inlet and outlet portions, or any teaching
or suggestion that the vertical relationship between the inlet and outlet portions could be
modified. The examiner is speculating in the assertion (answer, page 6) that it is inherent in
Perry that the pipes have a preferred range of measurements, because there is nothing in the
reference to support the assertion by the examiner. Because the independent claims recite
specific ranges and Perry is silent as to any sizes or ranges, we do not agree with the examiner
that the claimed limitations are simply design modifications based on spatial considerations and
have no apparent criticality. The disclosed limitations regarding the vertical relationship
between the inlet and outlet portions as recited in independent claims 1 and 8 are asserted to
overcome the problem of reverse density driven flow, while establishing an enlarged oven
cavity. In the absence of any convincing evidence that the particular claimed dimensions would
have been an obvious optimization of workable ranges that would have been within the level of
skill in the art, we are not convinced that a prima facie case of obviousness has been established.
Where the general conditions of a claim are disclosed in the prior art, it is not inventive to
discover the optimum or workable ranges by routine experimentation. See In re Swain et al.,
156 F.2d 239, 240, 70 USPQ 412, 413 (C.C.P.A. 1946). However, because Perry is silent as to
the size or proportions of the vertical relationship between the inlet and outlet portions, and
merely shows a gas burner without any ranges, dimensions, etc., we find that the prior art applied
by the examiner does not show the general conditions from which the optimum or workable
ranges could be determined. In addition, we find the examiner’s arguments regarding In re
Appeal Number 2006-2869
Application No. 10/385,520

7
Aller,105 USPQ 233, 235, 220 F.2d 454, 456 (C.C.PA. 1955) to be misplaced, as correctly noted
by appellants (reply brief, page 5). In In re Aller, 105 USPQ at 235, the general concept and
ranges were disclosed, and the particular ranges were at issue. As noted supra, we have no
disclosure of any ranges or dimensions in Perry, but merely a disclosure of a gas burner. Thus,
we do not agree with the examiner (answer, page 5) that there was no criticality for the specific
ranges and proportions recited in the claims.
From all of the above, we hold that the examiner has failed to establish a prima
facie case of obviousness of claims 1-14. Accordingly, we cannot sustain the rejection of these
claims.

CONCLUSION
To summarize, the decision of the examiner to reject claims 1-14 under 35 U.S.C. § 103
is reversed.

Appeal Number 2006-2869
Application No. 10/385,520

8
REVERSED

TERRY J. OWENS )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
STUART S. LEVY ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
ANTON W. FETTING )
Administrative Patent Judge )
Appeal Number 2006-2869
Application No. 10/385,520

9
DIEDERIKS & WHITELAW, PLC
12471 DILLINGHAM SQUARE, #301
WOODBRIDGE, VA 22192

SSL/lg