Ex Parte Garcia Jimenez et al

Patent Trial and Appeal Board

Sep 13, 2016

13131911 (P.T.A.B. Sep. 13, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/131,911 05/31/2011
46726 7590 09/15/2016
BSH Home Appliances Corporation
100 Bosch Boulevard
NEW BERN, NC 28562
FIRST NAMED INVENTOR
Jose-Ramon Garcia Jimenez
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
2008P02657WOUS 1180
EXAMINER
LAFLAME JR, MICHAEL A
ART UNIT PAPER NUMBER
3742
NOTIFICATION DATE DELIVERY MODE
09/15/2016 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address( es):
MBX-NBN-IntelProp@bshg.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JOSE-RAMON GARCIA JIMENEZ,
IGNACIO GARDE ARANDA, PABLO JESUS HERNANDEZ BLASCO,
FERNANDO MONTERDE AZNAR, DANIEL PALACIOS TOMAS, and
RAMON PEINADO ADIEGO
Appeal2014-007748
Application 13/131,911
Technology Center 3700
Before JAMES P. CAL VE, WILLIAM A. CAPP, and
GEORGE R. HOSKINS, Administrative Patent Judges.
HOSKINS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Jose-Ramon Garcia Jimenez et al. ("Appellants") 1 appeal under
35 U.S.C. § 134 from the Examiner's decision rejecting claims 8-24 in this
application. The Board has jurisdiction over the appeal under 35 U.S.C.
§ 6(b ).
We REVERSE.
1 The Appeal Brief identifies BSH Bosch und Siemens Hausgerate GmbH
as the real party in interest. Appeal Br. 3.
Appeal2014-007748
Application 13/131,911
CLAIMED SUBJECT MATTER
Claims 8 and 15 are independent. Claim 8 illustrates the subject
matter on appeal, and it recites:
8. A hob, comprising:
at least one inductor;
at least one inverter;
a switching apparatus arranged in a circuit between the
inductor and the inverter and switchable between a first switch
position in which a connection between the inverter and the
inductor is established and a second switch position in which the
connection between the inverter and the inductor is interrupted;
and
a detection circuit configured to detect a cooking utensil,
said switching apparatus being connected to the detection circuit
such that the switching apparatus connects the detection circuit
to the inductor when the switching apparatus is in the second
switch position and disconnects the detection circuit from the
inductor when the switching apparatus is in the first switch
position.
Appeal Br. 12 (Claims App.).
REJECTIONS ON APPEAL
Claim 14 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over Gaspard (EP 0 498 735 B2, pub. Apr. 21, 1999).
Claims 8, 10, 12-16, 18, and 20-23 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over Oates (US 4,112,287, iss. Sept. 5, 1978) and
Gaspard.
Claims 9 and 17 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Oates, Gaspard, and Larson (US 2004/0016747 Al, pub.
Jan. 29, 2004).
2
Appeal2014-007748
Application 13/131,911
Claims 11 and 19 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Oates, Gaspard, and Miyauchi (US 2007/0102420 Al,
pub. May 10, 2007).
Claim 24 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over Oates, Gaspard, and Steigerwald (US 4,426,564, iss. Jan. 17, 1984).
ANALYSIS
A. Obviousness based on Gaspard
The Final Office Action states: "Claim 14 is rejected under 35 U.S.C.
[§] 103(a) as being unpatentable over the translation of EP 0498735 to
Gaspard." Final Act. 4. However, no supporting analysis or further
explanation is provided. Id. Appellants "believe this to be an error brought
about by copying text from" a prior Office Action, and argue "[i]f this is
intended to be a rejection, it does not meet the requirements of 37 CPR
[§] 1.104(c)(2)." Appeal Br. 5, n.1. The Examiner's Answer does not
respond to ii,ppellants' argument, other than to state "[ e ]very ground of
rejection" in the Final Office Action is maintained. Ans. 3; see also id. at 3-
6 (not withdrawing any rejections).
We conclude the rejection of claim 14 as unpatentable over Gaspard
fails to set forth a primafacie case of obviousness. See In re Jung, 637 F.3d
1356, 1362 (Fed. Cir. 2011) (primafacie case requires notifying the
applicant of the reasons for the rejection with such information as may be
useful in judging the propriety of continuing prosecution, and is not met
"when a rejection is so uninformative that it prevents the applicant from
recognizing and seeking to counter the grounds for rejection") (citing
35 U.S.C. § 132 and Chester v. Miller, 906 F.2d 1574, 1578 (Fed. Cir.
3
Appeal2014-007748
Application 13/131,911
1990)). We therefore do not sustain the rejection of claim 14 as
unpatentable over Gaspard.
B. Obviousness based on Oates and Gaspard
The rejection of independent claim 8 is premised upon the
obviousness of modifying Oates's induction heating apparatus (Oates Fig. 1)
by replacing Oates's triac switches 7 with Gaspard's switching unit 5
(Gaspard Fig. 1). Final Act. 4--5, 10; Ans. 3--4.2 This would have been
obvious, according to the Examiner, as the "simple substitution of one
known [switching] element for another to obtain predictable results." Final
Act. 5, 10.
The Examiner states: "The switch of Gaspard could be substituted for
the triac [7] of Oates with the stationary end of [Gaspard's] switch attached
to the induction coil [8]." Final Act. 10 (emphasis added). In this regard,
we understand the Examiner to be referring to Gaspard's switch 11 or
switch 12, which are both part of switching apparatus 5, as illustrated in
Gaspard's Figures 2 and 4. See Gaspard i-fi-f 18, 36-38. The Examiner
annotates Oates's Figure 1 to illustrate how switch 11 from Gaspard's
Figure 4 (for example) could be substituted for Oates's third triac 7, with the
stationary end of switch 11 attached to Oates's third induction coil 8.
Ans. 3--4. In the Examiner's view, such an arrangement would lead to the
invention of claim 8, because Gaspard's switch 11 would have a first
position (akin to either position A or Bin Gaspard's Figure 4) connecting
2 The Appeal Brief states: "[D]uring the brief telephone interview on
January 7, 2014, Examiner Laflame explained that it is actually the
switching block 5 alone that is being substituted for the triac 7." Appeal
Br. 5 (emphasis added). The Examiner's Answer does not refute, and
moreover is consistent with, that statement. Ans. 3--4.
4
Appeal2014-007748
Application 13/131,911
inverter 3 to induction coil 8 while disconnecting pan detection element 15
from induction coil 8, and a second position (akin to the other position A or
B) disconnecting inverter 3 from induction coil 8 while connecting pan
detection element 15 to induction coil 8. Id.
Appellants argue the Examiner errs, because there is no evidence to
suggest any purpose would be served by connecting induction coil 8 to triac
control signal path 9 in the second position of switch 11. Reply Br. 2-3.
We agree. The sole functionality described in Oates for connection
pathway 9 is to carry "triac gate drive signals" from control logic 13 to
triacs 7, in order to switch the triacs between conducting and non-conducting
conditions at appropriate times. See Oates, 3:52-57, 4:12--43. It is not clear
what purpose carrying such signals to induction coils 8 would serve when
Gaspard's switches 11 are connected to pathway 9 in the second position of
the Examiner's modification. The Examiner proposes replacing Oates's
triacs 7 with Gaspard's switches 11, so there are no longer any triacs to
control, and the Examiner has not provided any function to be served by
providing triac control signals to an induction coil 8. In short, there does not
appear to be any rational basis for modifying Oates to replace Oates's
triacs 7 with Gaspard's switches 11, as proposed by the Examiner.
Perhaps, although not stated in the rejection, the Examiner concludes
connection pathway 9 would serve to carry control signals to Gaspard's
switches 11, to move the switches to connect induction coils 8, alternately,
to pathway 6 (first position) or pathway 9 (second position). See Reply
Br. 3. In this way, pathway 9 would serve a somewhat similar purpose of
switch control as was served before replacement of Oates's triacs 7 with
Gaspard's switches 11. However, this notion is inconsistent with the
5
Appeal2014-007748
Application 13/131,911
Examiner's placement of Gaspard's switches 11 with their stationary ends
being connected to a corresponding induction coil 8. In such a
configuration, when switch 11 is in the first position connecting induction
coil 8 to pathway 6, pathway 9 would be disconnected from switch 11, and
thereby be unable to convey signals to switch 11 instructing switch 11 to
change positions.
For the foregoing reasons, we do not sustain the rejection of
independent claim 8 and its dependent claims 10 and 12-14 as unpatentable
over Oates and Gaspard. Independent claim 15 recites "a switch ... having
a first switch position which connects the inverter to the inductor and
disconnects the detector from the inductor and a second position which
connects the detector to the inductor and disconnects the inverter from the
inductor." Appeal Br. 13 (Claims App.). Thus, the deficiency noted as to
the rejection of claim 8 also applies to claim 15. See Reply Br. 2-3.
Therefore we do not sustain the rejection of claim 15 and its dependent
claims 16, 18, and 20-23 as unpatentable over Oates and Gaspard.
C. Obviousness based on Oates, Gaspard, and Larson, Miyauchi, or
Steigerwald
The Examiner's additional consideration of dependent claims 9, 11,
1 7, 19, and 24 in connection with Oates, Gaspard, and one of Larson,
Miyauchi, and Steigerwald, does not cure the deficiency noted above in
connection with independent claims 8 and 15. See Final Act. 8-10.
Therefore, we do not sustain the rejection of claims 9 and 17 as unpatentable
over Oates, Gaspard, and Larson, or the rejection of claims 11 and 19 as
obvious over Oates, Gaspard, and Miyauchi, or the rejection of claim 24 as
unpatentable over Oates, Gaspard, and Steigerwald.
6
Appeal2014-007748
Application 13/131,911
DECISION
The Examiner's decision to reject claims 8-24 is reversed.
REVERSED
7