Ex Parte Cohen et al

Patent Trial and Appeal Board

Apr 6, 2015

12809602 (P.T.A.B. Apr. 6, 2015)

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.
12/809,602 06/24/2010 Paul Cohen BRE0908U 9620
33372 7590 04/07/2015
MICHAEL MOLINS
MOLINS & CO.
SUITE 5, LEVEL 6
139 MACQUARIE ST
SYDNEY NSW, 2000
AUSTRALIA
EXAMINER
BOOTH, RICHARD A
ART UNIT PAPER NUMBER
2812
MAIL DATE DELIVERY MODE
04/07/2015 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 PAUL COHEN, VYVYAN ROSE, and NICHOLAS EDMONDS1
____________

Appeal 2013-007113
Application 12/809,602
Technology Center 2800
____________

Before GEORGE C. BEST, WESLEY B. DERRICK, and
MICHELLE N. ANKENBRAND, Administrative Patent Judges.

DERRICK, Administrative Patent Judge.

DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
decision under 35 U.S.C. § 103(a) rejecting: claims 27 and 29–46 over
Taylor,2 in view of Philips3 and Crain;4 and claim 28 over Taylor in view of
Philips, Crain, and STRIX U67. We have jurisdiction under 35 U.S.C.
§ 6(b).
We AFFIRM.
1 Appellants identify Breville Pty, Limited as the Real Party in Interest.
App. Br. 3.
2 Taylor et al., WO 01/28294 A2, published April 19, 2001.
3 The status of both “Philips HD4686, HD4685” and STRIX U67 as prior art
is not disputed by Appellants.
4 Crain, AU 8812768A, published September 8, 1988 (Abstract and Figure).

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Application 12/809,602

STATEMENT OF THE CASE
Appellants’ invention relates to a cordless kettle and base.
Independent claim 27 is illustrative of the claimed invention:
27. A device for heating a liquid that it contains, being a
combination of cordless kettle and base, the base having within
it a power supply and a processor for responding to information
originating from the kettle, the processor adapted to respond to
user inputs and to effect power control over the kettle, wherein:
the base has a plurality of discrete temperature selection control
switches and an on-off switch, an input from a temperature
control switch and then subsequently the on-off switch being
required to cause the power to be supplied to a heating element
in the kettle, wherein:
each temperature selection control switch is associated with a
single and specific final water temperature.
Appellants argue the patentability of the claims as groups based on
claim 27.5 App. Br. 6–10. We, therefore, decide this appeal based on claim
27. 37 C.F.R. § 41.37(c)(1)(iv) (2012).
OPINION
Upon consideration of the evidence and Appellants’ contentions in
this appeal, we find that the preponderance of the evidence supports the
Examiner’s conclusion that the subject matter of the appealed claims is
unpatentable over the applied prior art. We sustain the Examiner’s rejection
based on the Examiner’s findings of fact, conclusions of law, and rebuttals
5 Rather than reiterate all arguments of the Appellant and the Examiner, we
refer to the Final Office Action (mailed November 5, 2012), the Appeal
Brief (filed December 11, 2012; supplemented January 15, 2013), the
Answer (mailed March 22, 2013), and the Reply Brief (filed May 5, 2013).
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to Appellants’ arguments as expressed in the Answer except as expressly
modified in our opinion. We add the following primarily for emphasis.6
The Examiner finds Taylor discloses a cordless kettle with a base
having a power supply and processor within the base for power control over
the kettle. Ans. 5–6. As the Examiner finds, the heating element for the
kettle is included in the kettle (id. at 6) and there is a plurality of temperature
control switches included in the base (id.).
The Examiner finds Philips discloses an on-off switch to provide
power after a temperature setting has been selected. Id. at 6, 10 (citing
Philips 10). The Examiner concludes it would have been obvious to one of
ordinary skill in the art to modify the kettle of Taylor by including the
claimed on-off switch because by doing so “the temperature of the kettle can
be accurately controlled safely and precisely.” Id. at 6.
The Examiner finds Crain discloses a heating apparatus with a
plurality of temperature selection control switches where each is associated
with a single, specific temperature. Id. (citing Crain Fig. and Abstract). The
Examiner concludes it would have been obvious to one of ordinary skill in
the art at the time the invention was made to modify the combination of
Taylor and Philips to include the temperature selection control switches of
Crain because “the temperature control of the process performed in the
apparatus can be accurately controlled.” Id. at 6–7.
Taking official notice, the Examiner further finds that “it would have
been obvious to one of ordinary skill in the art to replace pressing a button
and scrolling through a variety of choices to select the correct temperature
6 We do not discuss STRIX U67, as it is relied on solely for the rejection of
dependent claim 28, which is not separately argued.
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with pressing individual buttons to achieve specific temperatures because
these are clearly functional equivalents of one another.” Final Action 4;
Ans. 7. Regarding the taking of official notice—which is challenged by
Appellants (Reply Br. 5–6)—the Examiner concludes that “the rejection of
record provides a prima facie case of obviousness even if the statement of
official notice is disregarded” (Ans. 11). We agree. Accordingly, we
sustain the Examiner’s rejection without reliance on the contested finding of
which the Examiner took official notice.
Having considered Appellants’ arguments, we find them without
merit and unsupported by persuasive evidence that the Examiner erred in
determining the claims are unpatentable for obviousness.
First, Appellants argue there is no prima facie case of obviousness
because the combined disclosures do not teach each and every claim
element. App. Br. 7. Appellants emphasize Crain relates to an oven and not
a kettle and argue how there are differences raising questions as to whether
the teachings can be combined with a reasonable expectation of success. Id.
Appellants particularly argue Crain fails to teach “that the on-off switch [is]
used after, and to confirm a temperature selection.” Id.
We find Appellants’ argument without merit. One cannot show non-
obviousness by attacking references individually when the rejection is based
on a combination of references. In re Keller, 642 F.2d 413, 425 (CCPA
1981) (“The test for obviousness is not whether the features of a secondary
reference can be bodily incorporated into the structure of the primary
reference. . . . [T]he test is what the combined teachings of [those]
references would have suggested to those of ordinary skill in the art.”)
Accordingly, Appellants’ argument as to what Crain does not teach is
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without merit where the Examiner relies on Philips for the teaching.
Ans. 10.
Further, while Appellants submit combining the switches of Crain
with the kettle of Taylor “would require extensive modification or redesign”
(App. Br. 7), Appellants have not asserted that the proposed modification
would have been beyond the capabilities of a person of ordinary skill in the
art. Absent such an assertion, we “take account of the inferences and
creative steps that a person of ordinary skill in the art would employ,” and
find a person of ordinary skill in the art would overcome those difficulties
within their level of skill. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418
(2007).
As to Appellants’ argument that Crain is non-analogous art (App. Br.
7; see also Reply Br. 6–7), we find no reversible error in the Examiner’s
determination that it is both in the Appellants’ field of endeavor and is also
reasonably pertinent to the particular problem to be solved (Ans. 9–10).
Second, Appellants argue the Examiner fails to provide the requisite
articulated reasoning to support a prima facie case of obviousness. App. Br.
8–9. Appellants argue the Examiner’s articulated rationale for incorporating
the on-off switch, namely, because “the temperature of the kettle can be
accurately controlled safely and precisely” is inadequate because there is no
suggestion the prior art is “unsafe or lacks precision” and the purpose of the
claimed on-off switch is not to provide additional safety or precision. Id. at
8. Appellants further argue in the Reply Brief that there is no evidence the
Examiner’s proffered motivation or reasoning originated in the prior art.
Reply Br. 3–4.
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We do not find Appellants’ argument persuasive. There is no
persuasive evidence on the record before us of error in the Examiner’s
proffered motivation for accurately, safely, and precisely controlling
temperature. See, e.g., In re Pearson, 494 F.2d 1399, 1405 (CCPA 1974)
(“Attorney’s argument . . . cannot take the place of evidence.”). There is no
basis for finding the Examiner erred because the motivation differs from that
of Appellants. Alcon Research, Ltd. v. Apotex Inc., 687 F.3d 1362, 1368
(Fed. Cir. 2012) (“We have repeatedly held that the motivation to modify a
prior art reference to arrive at the claimed invention need not be the same
motivation that the patentee had.”) Appellants’ argument “there is no
evidence [the Examiner’s proffered] motivation or reasoning originated in
the prior art” (Reply Br. 3–4) is also without persuasive merit because it is
not necessary that the requisite motivation be from the prior art. See, e.g.,
DyStar Textilfarben GmbH v. C.H. Patrick Co., 464 F.3d 1356, 1361 (Fed.
Cir. 2006) (stating motivation to modify the prior art “may be found in any
number of sources, including common knowledge, the prior art as a whole,
or the nature of the problem itself”) (cited with approval in Alcon, 687 F.3d
at 1368–69).
Third, Appellants argue the Examiner relied on impermissible
hindsight. App. Br. 9–10. Appellants argue “[a]bsent a reason or rationale
for making the [relied on] combination, it must be deduced that it was made
in hindsight.” Id. at 10; see also Reply Br. 7 (“the Examiner has relied on
the applicant’s [sic] specification”).
We do not find Appellants’ argument persuasive because we find the
Examiner has articulated a reason with rational underpinnings for making
the proposed combination based on the cited prior art and there is no
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persuasive evidence that the Examiner’s articulated reason is ineffective to
support the conclusion of obviousness. If the Examiner has articulated a
reason having rational underpinnings for making a proposed combination,
then that articulated reasoning demonstrates the combination is not based on
hindsight. See In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (requiring
“some articulated reasoning with some rational underpinning to support the
legal conclusion of obviousness” (cited with approval in KSR Int’l Co. v.
Teleflex Inc., 550 U.S. at 419)).
As to further arguments in the Reply Brief, we also find them
unpersuasive for reasons set forth above, e.g., they fail to address the proffered
combination of references and the Examiner’s rationale, or to have been
waived. In particular, we find Appellants’ arguments relating to distinctions
between an “oven cavity temperature” and “final water temperature” (Reply Br.
4–5) waived because they could have been raised in the Appeal Brief and
Appellants have not shown good cause explaining why the arguments could not
have been presented in the Appeal Brief. 37 C.F.R. § 41.41(b)(2) (2012).
Accordingly, on this record, we affirm the ground of rejection of claims
27 and 29–46 over Taylor, Philips, and Crain, and claim 28 over Taylor,
Philips, Crain, and STRIX U67 under 35 U.S.C. § 103(a).
DECISION
We AFFIRM the Examiner’s rejection under 35 U.S.C. § 103(a) of
claims 27–46.
No time period for taking any subsequent action in connection with this
appeal may be extended under 37 C.F.R. § 1.136(a)(1).

AFFIRMED
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