12008925 (P.T.A.B. Apr. 28, 2014)

Ex Parte DeMirjian

Patent Trial and Appeal BoardApr 28, 2014

12008925 (P.T.A.B. Apr. 28, 2014)

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. 12/008,925 01/15/2008 George C. DeMirjian 6478 2709 34678 7590 04/28/2014 NORMAN E. LEHRER, P.C. 1205 NORTH KINGS HIGHWAY CHERRY HILL, NJ 08034 EXAMINER TRPISOVSKY, JOSEPH F ART UNIT PAPER NUMBER 3744 MAIL DATE DELIVERY MODE 04/28/2014 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 GEORGE C. DEMIRJIAN ____________________ Appeal 2012-001334 Application 12/008,925 Technology Center 3700 ____________________ Before: CHARLES N. GREENHUT, JAMES P. CALVE, and LYNNE H. BROWNE, Administrative Patent Judges. GREENHUT, Administrative Patent Judge. DECISION ON APPEAL Appeal 2012-001334 Application 12/008,925 2 STATEMENT OF CASE Appellant appeals under 35 U.S.C. § 134 from a rejection of claims 1- 8. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. The claims are directed to a refrigerated food server with interlocking inner and outer pans. Claim 1, reproduced below, is illustrative of the claimed subject matter: 1 A food serving system for cooling food and keeping it cool comprising: a generally rectangular inner pan and a generally rectangular outer pan, each of said inner and outer pans having a bottom wall and said outer pan having four sidewalls; said inner pan fitting within said outer pan and said bottom wall of said inner pan being raised above said bottom wall of said outer pan to form a space therebetween; said inner pan having a plurality of compartments located therein with spaces formed between said compartments; a plurality of baffles extending upwardly from said bottom wall of said outer pan and extending into the spaces between said compartments; and means for releasably locking said inner pan with said outer pan, wherein ice and a cooling liquid may be placed in the spaces between said compartments and between said bottom walls of said pans. REFERENCES The prior art relied upon by the Examiner in rejecting the claims on appeal is: Hallberg Kado US 5,048,707 US 5,218,835 Sep. 17, 1991 Jun. 15, 1993 Rapaz Wird US 2008/0087037 A1 DE 2726026 Apr. 17, 2008 Dec. 22, 1977 Appeal 2012-001334 Application 12/008,925 3 REJECTIONS Claims 1-3, 5, and 6 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Rapaz and Hallberg. Ans. 4. Claims 4 and 7 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Rapaz, Hallberg, and Wird. Ans. 8. Claim 8 is rejected under 35 U.S.C. § 103(a) as being unpatentable over Rapaz, Hallberg and Kado et al. Ans. 10. OPINION The sole contention made by Appellant in this appeal is that Rapaz should be disqualified as prior art because, despite Appellant being granted a filing date of January 15, 2008, Appellant has established a reduction to practice before the October 16, 2006 availability date of Rapaz under 35 U.S.C. § 102(e). App. Br. 3. It is clear from the record, and not disputed, that Rapaz is prima facie available as prior art due to Rapaz’s October 16, 2006 filing date, which antedates the January 15, 2008 filing date of Appellant’s application. Since Rapaz is prima facie available as a reference against Appellant, the burden is on Appellant to establish the facts necessary to demonstrate that the reference should not be considered prior art. Application of Facius, 408 F. 2d 1396, 1404 (CCPA 1969). That burden may be carried by an affidavit or declaration including a “showing of facts. . . in character and weight, as to establish reduction to practice prior to the effective date of the reference.” 37 C.F.R. 1.131. Appellant has entered two declarations and two exhibits, A and B, in an effort to carry the burden of disqualifying Rapaz as prior art. App. Br. Appeal 2012-001334 Application 12/008,925 4 Evi. Appx. Appellant admits Exhibit A does not show a prototype and Appellant makes no allegation that Exhibit A, alone, demonstrates reduction to practice prior to the effective date of Rapaz. Rather, Exhibit A is relied on only to show further detail of that which is allegedly depicted in Exhibit B. App. Br. 5. Both of the declarations aver the existence of the prototype depicted in Exhibit B prior to the October 16, 2006 filing date of Rapaz. Thus, in an effort to antedate Rapaz, Appellant relies entirely on the prototype depicted in Exhibit B to demonstrate reduction to practice prior to the effective date of Rapaz. App. Br. 3-7. The Examiner has consistently made it clear that the figures of Exhibit B “are not clear whatsoever” Ans. 11; Fin. Rej. 8. The official file wrapper of this case confirms the Examiner’s determination in this regard, and there are no artifacts of record. Appellant has acknowledged the fact that the Examiner has determined that the drawings are not clear and elected not to remedy this deficiency. App. Br. 5. Since Appellant’s argument hinges entirely on the content of Exhibit B, and no useful facts can be gleaned from that exhibit regarding features of the prototype allegedly depicted therein, Appellant has failed to carry the burden of demonstrating that Rapaz should be disqualified as prior art. See Ex Parte Daniels (PTAB 2009) (Informative) (Appeal No. 2008-0568) (discussing In re Borokowski, 505 F.2d 713 (CCPA 1974); In re Harry, 333 F.2d 920 (CCPA 1964); and In re Spiller, 500 F.2d 1170 (CCPA 1974); regarding the requirements imposed by 37 C.F.R. § 1.131 to antedate a prior art reference)) (available at http://www.uspto.gov/ip/boards/bpai/decisions/inform/fd080568.pdf). The misstatements by the Examiner, characterizing the declarations as “affidavits” and the alleged reduction to practice as “after,” as opposed to “before,” the effective date of Rapaz (App. Br. 4), do not remedy Appeal 2012-001334 Application 12/008,925 5 Appellant’s failure to submit legible evidence sufficient to establish Rapaz should be disqualified as prior art. DECISION The Examiner’s rejections are affirmed. 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 tkl