Ex Parte Dailey et alDownload PDFPatent Trial and Appeal BoardDec 15, 201412539705 (P.T.A.B. Dec. 15, 2014) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte TOM DAILEY and TERRY DAILEY ____________ Appeal 2012-012675 Application 12/539,705 Technology Center 3600 ____________ Before ANNETTE R. REIMERS, THOMAS F. SMEGAL, and LEE L. STEPINA, Administrative Patent Judges. SMEGAL, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Tom Dailey and Terry Dailey (Appellants) seek our review under 35 U.S.C. § 134 of the Examiner’s final rejection of claims 20−22, the only claims pending in the application on appeal. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. Appeal 2012-012675 Application 12/539,705 2 CLAIMED SUBJECT MATTER An understanding of the invention can be derived from a reading of independent claim 20, which is reproduced below, with emphasis on the key disputed claim limitation. 20. An apparatus for supporting a pan at one of two different incline angles, comprising: a frame formed of a single rod, the frame includes two parallel-z shaped sides and at least one lateral member which connects said two parallel z-shaped sides, each of the two parallel z-shaped sides including a riser section, a horizontal section, and a retention section, the riser section being of a height greater than a height of said retention section, said horizontal section including an outwardly curved portion away from said horizontal section of another z-shaped side of said two parallel z-shaped sides, wherein said frame is configured to be oriented in a first position for supporting a pan at a first incline angle and said frame is configured to be oriented in a second position for supporting a pan at a second incline angle, wherein said first incline angle is greater than said second incline angle. Clms. App., Brief 7. REJECTIONS ON APPEAL The following Examiner’s rejections are before us for review. 1. Claim 20 is rejected under 35 U.S.C. 102(b) as being anticipated by Timberlake (US 869,995, iss. Nov. 5, 1907). 2. Claims 21 and 22 are rejected under 35 U.S.C. 103(a) as being unpatentable over Timberlake and Swinford (US 6,823,773 B2, iss. Nov. 30, 2004). Appeal 2012-012675 Application 12/539,705 3 ANALYSIS Anticipation of claim 20 by Timberlake. We have considered Appellants’ arguments raised in the Brief, but do not find them persuasive to demonstrate error in the Examiner’s rejection of claim 20 as being anticipated by Timberlake. “A reference anticipates a claim if it discloses the claimed invention ‘such that a skilled artisan could take its teachings in combination with his own knowledge of the particular art and be in possession of the invention.’” In re Graves, 69 F.3d 1147, 1152 (Fed. Cir. 1995) (quoting In re LeGrice, 301 F.2d 929, 936, In re Donohue, 766 F.2d 531, 533 (Fed. Cir. 1985)) (parallel citations omitted). Appellants argue that Timberlake fails to disclose, teach or suggest that [the] frame is configured to be oriented in a first position for supporting a pan at a first incline angle and said frame is configured to be oriented in a second position for supporting a pan at a second incline angle, wherein said first incline angle is greater than said second incline angle, as recited by claim 20. Brief 3. However, the Examiner finds the term “configured to” to have the same meaning as “adapted to” and it has been held that the recitation that an element is “adapted to” perform a function is not a positive limitation but only requires the ability to so perform. . . . The prior art device of Timberlake must only be “capable of” performing the recited limitations of being oriented in first and second positions for supporting a pan at first and second incline angles. The [E]xaminer considers “supporting a pan” to be equivalent to “supporting a dish or cup”, as shown in the prior art, since pans have a similar structure to a dish (or cup) with the exception of including a handle on the dish or a different type of handle on the cup. Appeal 2012-012675 Application 12/539,705 4 Answer 3. We agree with the Examiner that a functional limitation does not impose any structural limitation on the claimed apparatus that differentiates the claimed apparatus from a prior art reference otherwise disclosing the structural limitations of the claim. See In re Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997) (Appellants’ contention that the claimed structure will be used to perform a function not taught by the prior art reference does not have patentable weight if the structure is already known). Appellants also argue that “[i]f Timberlake was placed in any other orientation as shown in the Figures, the inclination would not be proper and the plates would not be inclined at a proper angle and would fall over, contrary to its intended purpose.” Brief 3. However, the Examiner points out at pages 5 to 6 of the Final Action (mailed September 30, 2011) that the frame as seen in Figures 2 and 5 of Timberlake is clearly capable of being oriented upside down, wherein portion (7) of the frame would be at a different inclination then the portion (7) as seen in the orientation of the frame in Figures 2 and 5. Furthermore, portion (7) could certainly “support a pan (wherein it is irrelevant as to how well portion (7) functions to support a pan, portion (7) merely needs to contact a pan)” in either orientation (upright or upside down) as required by the claim language of claim 20. In addition, the Examiner finds that “Timberlake teaches an apparatus clearly ‘configured to/capable of’ being oriented in two separate positions for supporting a pan at first and second incline angles, wherein the first incline angle is greater than the second incline angle”, and provides three (3) Appeal 2012-012675 Application 12/539,705 5 examples of how Timberlake discloses first and second positions for supporting a pan. See Answer 3−6. Appellants do not file a Reply Brief. It is clear from figures 2 and 5 of Timberlake that the Examiner is correct. The frame of Timberlake is capable of being oriented upside down as explained by the Examiner. For the foregoing reasons, Appellants do not apprise us of any error in the Examiner’s findings, and thus, we sustain the Examiner’s rejection of claim 20 as being anticipated by Timberlake. Obviousness of claims 21 and 22 over Timberlake and Swinford. Initially, we note that Appellants’ arguments hinge primarily on the assertion that “the Examiner has failed to show how Timberlake and Swinford teach or suggest all the claim limitations” and that “the Examiner has also failed to show an explicit reason, suggestion, or motivation to combine or modify the disclosure of Timberlake and the disclosure of Swinford.” Brief 5. Regarding the legal standard for the obviousness rejection as presented, a portion of Appellants’ position appears to be based on a rigid application of the TSM test and is simply obsolete. Rather, the proper inquiry is whether the Examiner has articulated adequate reasoning based on a rational underpinning to explain why a person of ordinary skill in the art would have been led to combine the teachings of the cited art as applied in the rejection. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (stating that “rejections on obviousness grounds cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness” (citing In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006))). Appeal 2012-012675 Application 12/539,705 6 Here, the Examiner has provided articulated reasoning with a rational underpinning for the combination of teachings used in the rejection, namely to modify the rack/apparatus of Timberlake to be made from a metal material and to be covered with a nonstick covering, as taught by Swinford, “for the purposes of having the holder apparatus made from an easy to find and manufacture material (metal) and for the purposes of protecting the rack from food items placed on the rack (via a nonstick coating).” See Final Act. 4; see also Answer 7–9; KSR, 550 U.S. at 421 (“A person of ordinary skill is also a person of ordinary creativity, not an automaton.”). Appellants do not apprise us of error in the Examiner’s provision of articulated reasoning with rational underpinning for the combination of Timberlake and Swinford. We note that any other arguments not specifically addressed in detail herein have been thoroughly considered by the panel but are not persuasive for the reasons discussed supra and those well expressed in the Examiner’s Answer. Accordingly, we sustain the rejection of claims 21 and 22 under 35 U.S.C. § 103(a) as being unpatentable over Timberlake and Swinford. DECISION We AFFIRM the Examiner’s rejections. 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 llw Copy with citationCopy as parenthetical citation