Ex Parte Burn

Patent Trial and Appeal Board

Oct 18, 2013

11784349 (P.T.A.B. Oct. 18, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
11/784,349 04/06/2007 Mark Burn 07-231 4963
20306 7590 10/18/2013
MCDONNELL BOEHNEN HULBERT & BERGHOFF LLP
300 S. WACKER DRIVE
32ND FLOOR
CHICAGO, IL 60606
EXAMINER
KOAGEL, JONATHAN BRYAN
ART UNIT PAPER NUMBER
3744
MAIL DATE DELIVERY MODE
10/18/2013 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte MARK BURN
____________________

Appeal 2011-009992
Application 11/784,349
Technology Center 3700
____________________

Before: PHILLIP J. KAUFFMAN, PATRICK R. SCANLON, and
BARRY L. GROSSMAN, Administrative Patent Judges.

KAUFFMAN, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134 from the Examiner’s
decision to reject claims 1, 2, 4-7, 9-14, 16-34, and 36-41. We have
jurisdiction under 35 U.S.C. § 6(b).
We affirm-in-part.

The Invention
Appellant’s claimed invention “relates generally to industrial and
commercial blast freezing systems for comestibles such as meat, seafood,
vegetables and baked products.” Spec. 1:3-4. Claim 1, reproduced below, is
illustrative of the claimed subject matter:
1. A freezing system for continuous production of frozen
comestibles, comprising:
a plurality of trays for carrying comestibles to be frozen;
an insulated enclosure having a first end and a second
end, an entrance for receiving trays into the enclosure, an exit
for output of trays from the enclosure carrying frozen
comestibles, and passive tray guides within the insulated
enclosure receiving and supporting the trays and defining a
multitude of levels for longitudinal travel of trays through the
enclosure between the first and second ends in an abutted
relationship, the multitude of levels including at least a first
level and a second level;
a refrigeration system providing cold air to the enclosure
to thereby freeze the comestibles;
a tray advancement mechanism inserting successive trays
into the enclosure and for advancing the successive trays
longitudinally through the enclosure along the passive tray
guides to thereby fill a first level of the enclosure with the trays
advanced through the enclosure in an abutted relationship, the
tray advancement mechanism further including a mechanism
for advancing trays longitudinally along each of the levels in
the multitude of levels; and
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one or more elevators at each of the first and second ends
of the enclosure for receiving a tray at a first level and
advancing the tray to an adjacent level in the multitude of
levels;
wherein the one or more elevators and the tray
advancement mechanism operate in a synchronized manner
such that additional trays are advanced into the entrance
opening after filling of the first level to thereby successively
and sequentially fill the multitude of levels of the enclosure
until the passive tray guides are substantially filled with trays in
an abutted relationship, and wherein thereafter for every tray
entering the entrance opening a tray exits the exit opening
carrying frozen comestibles, thereby providing a continuous
production of frozen comestibles.

Evidence Relied Upon
Wight
Van Den Bergh
Kuo
Burn
US Re 29,477
US 5,320,210
US 5,520,013
US 6,796,142 B2
Nov. 22, 1977
Jun. 14, 1994
May 28, 1996
Sep. 28, 2004

The Rejections
The following rejections are before us on appeal:
I. Claims 1, 2, 4-7, 9-13, 16-32, and 38-41 under 35 U.S.C. § 103(a) as
unpatentable over Van Den Bergh, Burn, and Kuo.
II. Claim 14 under 35 U.S.C. § 103(a) as unpatentable over Van Den
Bergh, Burn, Kuo, and Wight.
III. Claims 33, 36, and 37 under 35 U.S.C. § 103(a) as unpatentable over
Van Den Bergh and Kuo.
IV. Claim 34 under 35 U.S.C. § 103(a) as unpatentable over Van Den
Bergh, Kuo, and Burn.

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OPINION
I. Obviousness over Van Den Bergh, Burn, and Kuo1
Claims 1, 2, 4-7, 9-13, 16, and 282
Appellant presents numerous arguments against the rejection of
independent claim 1.
Appellant argues that contrary to the Examiner’s finding, Van Den
Bergh is not a continuous production freezer system. App. Br. 16-17; Ans.
4. Rather, according to Appellant, Van Den Bergh is better characterized as
a batch system that fills to capacity, treats, and then empties, while in
contrast the claimed system continuously introduces and removes frozen
comestibles. Reply Br. 3 (citing Burn Dec’l, para. 73); see also App. Br. 7.
For the reasons that follow, Appellant’s characterization is not adequately
supported by the reference.
Van Den Bergh does not explicitly disclose batch production. Van
Den Bergh, passim. Rather, Van Den Bergh discloses a conveying and
storage system suitable for treatment (e.g., a cool or chilled region in a
product processing sequence) or storage (e.g., a buffering function) of food
products. Van Den Bergh, col. 1, ll. 10-17; col. 7, ll. 3-4; col. 14, ll. 16-33.
Further, in Van Den Bergh’s system, as an additional tray is pushed into a
level already accommodating a plurality of trays, all the trays are pushed

1 While each of the claims subject to Rejection I are rejected over the same
references, the Examiner combined these references in a variety of manners
to create proposed combinations directed at the varied claimed subject
matter.
2 Appellant argues claims 1, 2, 4-7, 9-13, 16, and 28 as a group, and we
select claim 1 as representative. App. Br. 15-21; see 37 C.F.R. §
41.37(c)(1)(vii) (2011).
3 Paragraph numbers are repeated in the Declaration, and here, it appears
Appellant refers to page 7, paragraph 7.
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forward towards the outfeed end of the conveyor. Van Den Bergh, col. 15,
ll. 5-10. Thus, the Examiner’s finding that Van Den Bergh is capable of
continuous production is supported by a preponderance of the evidence. See
Ans. 4, 25-26.
Appellant points out that Van Den Bergh’s system “does not operate
at all like the manner recited in claim 1” in that Van Den Bergh’s trays do
not travel through multiple levels as called for in claim 1. App. Br. 17. As
the Examiner correctly points out (Ans. 25-26), it is uncontested that in
some respects Van Den Bergh does not operate in the claimed manner, and
for that reason the Examiner proposes to modify Van Den Bergh in light of
the other references. See Ans. 4-6. Appellant’s argument does not address
the rejection as articulated by the Examiner.
Similarly, Appellant argues that the combination of Van Den Bergh
and Burn does not disclose the subject matter of claim 1. App. Br. 18. Such
contention is unpersuasive because, as the Examiner correctly points out, the
rejection relies upon Van Den Bergh, Burn, and Kuo. See Ans. 26-27.
Appellant argues that Burn teaches away from a passive system for
carrying trays since Burn utilizes a chain drive mechanism. App. Br. 18-19
(citing Burn, Fig. 19). Similarly, Appellant contends that Kuo teaches away
from use of passive tray guides because Kuo’s conveyors 60 are not
advanced longitudinally through the enclosure along a first level and
successive levels in an abutted relationship. App. Br. 19 (citing Kuo, col. 3,
ll. 31-56). Burn and Kuo are silent regarding use of a passive tray system;
rather, these references utilize alternative methods of advancing trays.
Appellant has not cogently explained, nor do we discern, how silence
regarding the claimed approach and alternative approaches would have lead
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a person of ordinary skill in the art away from the approach chosen by
Appellant. See In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004) (“The
prior art's mere disclosure of more than one alternative does not constitute a
teaching away from any of these alternatives because such disclosure does
not criticize, discredit, or otherwise discourage the solution claimed in the
'198 application.”); see also In re Haruna, 249 F.3d 1327, 1335 (Fed. Cir.
2001) (“A reference may be said to teach away when a person of ordinary
skill, upon reading the reference, would be led in a direction divergent from
the path that was taken by the applicant.”).
Appellant argues the Kuo’s guides 233 (horizontal angle bars 233) do
not correspond to passive tray guides as called for in claim 1. App. Br. 19.
However, the rejection relies upon Van Den Bergh for such disclosure. See
Ans. 27.
Appellant argues there is no motivation to combine Kuo and Van Den
Bergh
since the Kuo elevators are positioned within the insulated
enclosure to facilitate the travel in the inverted U-shaped path,
whereas in Van Den Bergh the inverted U-shaped path would
not be used since Van Den Bergh provides multiple levels
extending along the length of the enclosure in order to
maximize the storage capacity of the Van Den Bergh enclosure.
Storage capacity is poor in Kuo given the nature of the inverted
U-shaped design, and presence of elevators and other active
mechanical components in the Kuo freezer.
App. Br. 20.
Essentially, Appellant argues that the decrease of storage capacity
caused by adding Kuo’s elevators (lifting conveying mechanism 23) to Van
Den Bergh’s device would prevent a person of ordinary skill in the art from
making such a modification. The Examiner reasoned, inter alia, that the
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proposed modification would decrease energy loss. Ans. 6. Appellant’s
argument does not challenge the merits of that contention. Given that Kuo
discloses a food freezing conveyor that reduces energy loss, the Examiner’s
reasoning has a rational basis. Kuo, col. 1, ll. 54-57; col. 6, ll. 40. Further,
the Examiner correctly reasons that the proposed modification has the
benefit of increasing the length of the path followed by the tray through the
chilled enclosure. See Ans. 6. Appellant does not challenge the merits of
this assertion. Even if we accept that the proposed modification would
reduce storage space, as Appellant asserts, Appellant’s argument is
unconvincing because it does not weigh that detriment against the
unchallenged benefits identified by the Examiner. See Winner Int’l Royalty
Corp. v. Wang, 202 F.3d 1340, 1349 n.8 (Fed. Cir. 2000) (“The fact that the
motivating benefit comes at the expense of another benefit, however, should
not nullify its use as a basis to modify the disclosure of one reference with
the teachings of another. Instead, the benefits, both lost and gained, should
be weighed against one another.”). Therefore, we do not find this argument
persuasive.
Appellant argues that for Van Den Bergh to operate as called for in
claim 1, the elevators would have to be constructed to receive product on
multiple levels at the same time and synchronously timed at both ends to
transfer multiple trays off the guides on the multitude of levels of the
elevators at once. App. Br. 20-21; Reply Br. 4. According to Appellant,
such simultaneous transfer is completely foreign to Kuo, and further, Kuo
does not advance trays longitudinally through the enclosure along a first
level and successive levels in an abutted relationship. App. Br. 21; Reply
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Br. 4. Appellant elaborates that the Examiner has erred by ignoring this
functional language. Reply Br. 1-4.
The Examiner has not ignored this functional limitation of claim 1.
Rather, the Examiner found that Kuo’s device is capable of such function.
See Ans. 12, 26-28. Further, for the reasons that follow, Appellant’s
assertion is not commensurate in scope with claim 1.
Contrary to what Appellant’s argument implies, claim 1 does not
recite that a tray from the first level must transfer onto an elevator at the first
end of the enclosure at the same time as a tray is transferred onto an elevator
at the second end of the enclosure. Rather, claim 1 calls for the elevators4
and tray advancement mechanism to operate in a synchronized manner so
that the first level is filled, and then successively and sequentially the
multitude of levels are filled, until the passive tray guides are substantially
filed with trays in an abutted relationship, and once so filled, for every tray
entering the entrance opening a tray exits the exit opening. This limitation
could be met by filling the first level from an elevator at one end of the
enclosure and then filling a second level from an elevator at the first end of
the enclosure. Therefore, Appellant’s argument is unpersuasive because it is
not commensurate in scope with claim 1. See In re Self, 671 F.2d 1344,
1348 (CCPA 1982) (“[A]ppellant’s arguments fail from the outset because
. . . they are not based on limitations appearing in the claims.”).
Additionally, Appellant’s characterization that simultaneous transfer
is completely foreign to Kuo is inaccurate. Kuo discloses a freezing
conveyor system that includes a freezing chamber surrounding a conveying

4 At least one elevator at the first and second ends of the enclosure. App. Br.
33-34, Claims App’x, Claim 1.
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device 20. Kuo, col. 1, ll. 7-8; col. 3, ll. 31-35. Conveying device 20 is
comprised of a lower horizontal conveying mechanism 22, a lifting
conveying mechanism 23, an upper horizontal conveying mechanism 21, a
dropping conveying mechanism 24, and a plurality of conveyors 60. Kuo,
col. 3, ll. 38-43. Trays (conveyors 60) travel through freezing chamber 10 in
an inverted-U shaped path, entering via lower horizontal conveying
mechanism 22, raised by lifting conveying mechanism 23, conveyed
horizontally by upper horizontal conveying mechanism 21, lowered by
dropping conveying mechanism 24, and conveyed horizontally out of
freezing chamber 10 by lower horizontal conveying mechanism 22. Kuo,
col. 3, ll. 31-35, 48-56; Fig. 5. During such operation, a tray (the conveyor
60 entering from the right side of freezing chamber 10 in Figure 1) is
received at the elevator (lifting conveying mechanism 23) from a first level
(lower horizontal conveying mechanism 22), and at the same time, another
tray (the upper most conveyor 60 in the right hand column of conveyors in
Figure 1) is advanced to an adjacent level (via upper horizontal conveying
mechanism 21).5
Appellant’s argument fail to apprise us of error in the rejection of
claim 1. Consequently, we sustain the rejection of claims 1, 2, 4-7, 9-13, 16,
and 28.
Claims 17-226
Appellant presents three arguments against the rejection of claim 17.

5 Appellant partially acknowledges this operation. App. Br. 21 (“In Kuo, the
product is received from the conveyor 22 onto a single layer and then raised
up to the top level.”)
6 Appellant argues claims 17-22 as a group, and we select claim 17 as
representative. App. Br. 21-24; see 37 C.F.R. § 41.37(c)(1)(vii).
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First, Appellant contends that the teachings of Burn are not readily
adaptable to Van Den Bergh. App. Br. 22-23. Specifically, Appellant states
that
[a]s noted in the Burn declaration, ¶ 11, after many days of
working through several iterations of the chain driven design as
pictured in Burn Figure 19, 318 and 302, and as described in
the text therein (cited by the Office action), based on his new
field application experience Burn came to the conclusion that
that design was not workable from a practical standpoint.
App. Br. 23.
To the extent that Appellant’s contention can be seen as an argument
that the claimed subject matter filled a long felt need, such argument is
unpersuasive for several reasons. For example, Appellant’s submittal falls
short of demonstrating that an art recognized problem existed for a long
period of time without solution. See Newell Cos. v. Kenney Mfg. Co., 864
F.2d 757, 768 (Fed. Cir. 1988); Orthopedic Equip. Co. v. All Orthopedic
Appliances, Inc., 707 F.2d 1376, 1379 (Fed. Cir. 1983).
Further, the Burn Declaration does not directly address the difficultly
of making the proposed combination, and therefore does not support
Appellant’s assertion here. Rather, the Declaration provides evidence (in the
form of opinion) that the chain driven system of the Burn reference “was not
workable from a practical standpoint.” Burn Dec’l, p. 9, para. 11b. That is,
Appellant addresses the difficulty of Burn’s chain system, not the
combinability of Burns with the other references. Appellant’s have not
asserted, much less demonstrated, that that proposed modification would
have been beyond the level of skill in the art.
Second, Appellant argues that Van Den Bergh, Kuo, and Burn suggest
a different modification than that proposed by the Examiner. App. Br. 23.
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Even if true, such contention does not cogently explain how the modification
proposed by the Examiner is in error.
Third, paralleling an argument made for claim 1, Appellant argues
that in order for Van Den Bergh to operate as called for in claim 17, the lifts
of “Van Den Bergh would have to be constructed to receive product on
multiple levels at the same time and synchronously timed at both ends to
transfer multiple trays off the guides onto multiple levels of the elevators at
once in order to completely fill the Van Den Bergh enclosure.” App. Br. 23-
24. According to Appellant, there is no capacity in Kuo to simultaneously
transfer on and off trays at multiple levels. App. Br. 24.
Contrary to what Appellant’s argument implies, claim 17 does not
recite that the elevators at opposite ends of the enclosure must “transfer
multiple trays off the guides onto multiple levels of the elevators at once.”
See App. Br. 23. Claim 17 calls for trays to advance from an entrance along
the first level onto an elevator at the end opposite the entrance of the
enclosure, then be carried by that elevator to an adjacent second level, and to
advance along that level. Trays continue to advance in this manner until the
first and second levels are filled. Therefore, Appellant’s argument is
unpersuasive because it is not commensurate in scope with claim 17.
Further, as explained with regard to claim 1 supra, Appellant’s
characterization that Kuo does not disclose simultaneous transfer is
inaccurate.
Consequently, Appellant has not apprised us of error in the rejection
of claim 17. We sustain the rejection of claims 17-22.

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Claims 23-27 and 29-32
Independent claim 23 is directed to a freezing system for continuous
production of comestibles that includes first and second multiple-level
elevators at opposite ends of the insulated enclosure, and each of these
elevators is “configured to receive trays at more than one level
simultaneously.” App. Br. 38-39, Claims App’x, Claim 23.
The Examiner found that each of Kuo’s elevators (lifting conveying
mechanisms 23) are capable of receiving trays at more than one level
simultaneously. Ans. 15-16, 30-31. Kuo’s elevators (lifting conveying
mechanism 23) receive a tray at one level (conveyor 60 entering from lower
horizontal conveying mechanism 22) while advancing a tray out of the
elevator at another level (conveyor 60 being advanced by upper horizontal
conveying mechanism 21 into dropping conveying mechanism 24). Kuo,
col. 3, ll. 30-56, Fig. 1. Therefore, Kuo’s elevator (lifting conveying
mechanism) is not capable of receiving trays at more than one level
simultaneously as called for in independent claim 23.
Consequently, we do not sustain the rejection of independent claim 23
and its dependent claims 24-27 and 29-32.
Claims 38-41
Independent claim 38 is similar to independent claim 23 in that it
recites, “at least one elevator adapted for receiving simultaneously at least
two trays at least two levels in the plurality of levels and transporting said at
least two trays vertically to adjacent levels in the plurality of levels.” App.
Br. 42-43, Claims App’x, Claim 38.
The Examiner found that Kuo’s elevator (lifting conveying
mechanisms 23) is capable of simultaneously pushing at least two trays
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(conveyors 60) out of the elevator (lifting conveying mechanism 23) at
adjacent levels. Ans. 20, 31. However, as explained in the analysis of claim
23 supra, Kuo’s elevator (lifting conveying mechanism 23) receives a tray at
one level (conveyor 60 entering from lower horizontal conveying
mechanism 22) while advancing a tray out of the elevator at another level
(conveyor 60 being advanced by upper horizontal conveying mechanism 21
into dropping conveying mechanism 24). Kuo, col. 3, ll. 30-56, Fig. 1.
Therefore, Kuo’s elevator (lifting conveying mechanism) is not capable of
receiving at least two trays at least two levels in the plurality of levels as
called for in independent claim 38.
Consequently, we do not sustain the rejection of independent claim 38
and its dependent claims 39-41.

II. Obviousness over Van Den Bergh, Burn, Kuo, and Wight
Claim 14 depends from claim 1, and recites, “wherein the entrance
and the exit openings are positioned at the same end of the insulated
enclosure.” App. Br. 36, Claims App’x, Claim 14.
Appellant argues that “Wight further reinforces the teachings of Burn
and Kuo in requiring active transport mechanism[s] for conveying the
comestibles through the enclosure.” App. Br. 28. This argument elaborates
on the teaching away arguments analyzed with regard to claim 1, supra.
Appellant does not identify, nor do we discern, any disclosure in Wight
regarding the use of passive tray guides. Therefore, we fail to see how
Wight teaches away from the subject matter of claim 14.
Appellant argues that Wight does not cure the deficiencies of the Van
Den Bergh, Burn, and Kuo combination utilized for the rejection of claim 1.
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App. Br. 28. However, as explained in our analysis of the rejection of claim
1 supra, there are not deficiencies to cure.
Appellant argues that Wight does not suggest modification of the lifts
of Van Den Bergh in a manner so that they operate in synchrony as called
for in claim 1. App. Br. 28. Such argument is unpersuasive because Wight
is not relied upon for this purpose. See Ans. 22, 32.
Consequently, we sustain the rejection of claim 14.

III. Obviousness over Van Den Bergh and Kuo
Independent claim 33 is similar to independent claim 23 in that each
of the elevators is “configured to receive trays at more than one level
simultaneously.” App. Br. 41, Claims App’x, claim 33.
The Examiner found that Kuo’s elevator (lifting conveying
mechanisms 23) is capable of simultaneously pushing at least two trays
(conveyors 60) out of the elevator (lifting conveying mechanism 23) at
adjacent levels. Ans. 23. Our analysis of claim 23 supra is applicable here.
See App. Br. 28-31.
Consequently, we do not sustain the rejection of claim 33 and its
dependent claims 36 and 37.

IV. Obviousness over Van Den Bergh, Kuo, and Burn
Claim 34 depends from independent claim 33. The Examiner relies
upon the same erroneous finding regarding Kuo explained in the analysis of
claim 33, supra. Consequently, we do not sustain the rejection of claim 34.

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DECISION
I. We affirm with regard to the Examiner’s decision to reject claims 1, 2,
4-7, 9-13, 16-22, and 28, and reverse with regard to claims 23-27, 29-32, and
38-41 under 35 U.S.C. § 103(a) as unpatentable over Van Den Bergh, Burn,
and Kuo.
II. We affirm the Examiner’s decision to reject claim 14 under 35 U.S.C.
§ 103(a) as unpatentable over Van Den Bergh, Burn, Kuo, and Wight.
III. We reverse the Examiner’s decision to reject claims 33, 36, and 37
under 35 U.S.C. § 103(a) as unpatentable over Van Den Bergh and Kuo.
IV. We reverse the Examiner’s decision to reject claim 34 under 35
U.S.C. § 103(a) as unpatentable over Van Den Bergh, Kuo, and Burn.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).

AFFIRMED-IN-PART

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