Ex Parte Giacomel

Board of Patent Appeals and Interferences

May 30, 2006

09650335 (B.P.A.I. May. 30, 2006)

The opinion in support of the decision being entered today was not
written for publication and is not binding precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte JEFFREY A. GIACOMEL

____________

Appeal No. 2006-1173
Application No. 09/650,335
____________

ON BRIEF
____________

Before FRANKFORT, OWENS, and FETTING, Administrative Patent Judges.
OWENS, Administrative Patent Judge.

DECISION ON APPEAL
This appeal is from a rejection of claims 1, 2, 4, 6, 7, 9,
11, 20, 24-29, 31-33 and 35. Claims 30 and 34, which are all of
the other pending claims, stand objected to but allowable if
rewritten in independent form.
THE INVENTION
The appellant claims an apparatus for rapidly changing the
temperature of a mass of product such as a food product. Claim 1
is illustrative:
Claim 1. An apparatus for rapidly changing the temperature
of a mass of product, comprising:

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at least two input heat transfer elements for extending into
the mass of product, the input heat transfer elements being in
parallel spaced planes;
at least one output heat transfer element in thermal contact
with the input heat transfer elements and exposed to an ambient
temperature environment to transfer thermal energy between the
product mass and the ambient temperature environment, said at
least two input heat transfer elements having a coating to
facilitate cleaning.

THE REFERENCES

Linger 3,632,982 Jan. 4, 1972
Reed 3,996,847 Dec. 14, 1976
Snyder 5,488,897 Feb. 6, 1996
THE REJECTIONS
The claims stand rejected as follows: claim 9 under
35 U.S.C. § 112, first paragraph, enablement requirement;
claims 1, 4, 6, 7, 24, 31, 33 and 35 under 35 U.S.C. § 102(b) as
anticipated by Snyder; claims 25-27 under 35 U.S.C. § 103 as
obvious over Snyder; claim 9 under 35 U.S.C. § 103 as obvious
over Snyder in view of Linger; claim 11 under 35 U.S.C. § 102(b)
as anticipated by Reed; claims 28 and 29 under 35 U.S.C. § 103 as
obvious over Reed; and claims 2, 20 and 32 under 35 U.S.C. § 103
as obvious over Reed in view of Snyder.1

1 In the event of further prosecution the examiner should
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consider rejecting claim 1, from which claim 2 depends, over Reed
in view of Snyder.
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OPINION
The rejection of claim 9 under 35 U.S.C. § 112, first
paragraph, enablement requirement, is reversed. The rejection
of claims 1, 4, 6, 7, 24, 31, 33 and 35 under 35 U.S.C. § 102(b)
over Snyder is affirmed as to claims 1, 4, 6, 7, 24, 31 and 35,
and reversed as to claim 33. The rejection of claims 25-27 under
35 U.S.C. § 103 over Snyder is affirmed. The rejection of
claim 9 under 35 U.S.C. § 103 over Snyder in view of Linger is
reversed. The rejections of claim 11 under 35 U.S.C. § 102(b)
over Reed, claims 28 and 29 under 35 U.S.C. § 103 over Reed, and
claims 2, 20 and 32 under 35 U.S.C. § 103 over Reed in view of
Snyder, are affirmed.
Rejection under 35 U.S.C. § 112, first paragraph, enablement
requirement

The examiner argues (answer, pages 3-4):
The mass of product will typically have a
mean temperature, a bulk property that will
vary constantly, and would be difficult to
accurately measure except under controlled
circumstances with sophisticated equipment.
No disclosure is provided of the means
necessary (an insulated compartment to
isolate the apparatus, the pan, and the mass
of product from the environment in order to
permit it to reach a steady state, uniform
temperature), or of the technique required to
create such a thermodynamic “steady state” in
which the monitored temperature can be said
to “accurately” reflect the temperature of
the product.
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A specification complies with the 35 U.S.C. § 112, first
paragraph, enablement requirement if it allows those of ordinary
skill in the art to make and use the claimed invention without
undue experimentation. See In re Wright, 999 F.2d 1557, 1561,
27 USPQ2d 1510, 1513 (Fed. Cir. 1993); Atlas Powder Co. v. E.I.
du Pont De Nemours & Co., 750 F.2d 1569, 1576, 224 USPQ 409, 413
(Fed. Cir. 1984).
The appellant's claim 9 requires a temperature monitor for
monitoring a temperature of a heat transfer element, wherein the
temperature is an accurate measurement of the temperature of the
mass of product. Contrary to the examiner’s argument, the claim
does not require measurement of the mass of product’s mean
temperature. The examiner has not provided evidence or reasoning
which shows that the appellant's disclosure would not have
enabled one of ordinary skill in the art, without undue
experimentation, to make and use an apparatus having a
temperature probe for accurately measuring the temperature of a
mass of product at least in the region of the temperature probe.
Accordingly, we reverse the rejection under 35 U.S.C. § 112,
first paragraph, enablement requirement.

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Rejection under 35 U.S.C. § 102(b) over Snyder
Snyder discloses a cooking grid (10) having a series of
upwardly extending peaks such as parallel rails (10R) separated
by a series of valleys constituted by parallel channels (10C)
(col. 5, lines 1-4).
The appellant argues, with respect to claim 1, that Snyder
discloses what the examiner refers to as parallel ridges, and
does not disclose elements in parallel spaced planes (reply
brief, page 3). As shown in Snyder’s figure 1, the parallel
rails are in parallel spaced planes.
Regarding claims 1 and 24, the appellant argues that
Snyder’s parallel rails cannot be placed in a mass of product
without the base of the grid below the rails, which the examiner
relies upon as corresponding to the appellant’s output heat
transfer element, also extending into the mass of product (reply
brief, page 3). A mass of product (30) in Snyder’s figure 1 can
be pushed downward so that the parallel rails, but not the base
of the grid, extend into the mass of product, such that the base
is capable of functioning as an output heat transfer element.
The appellant argues that claim 4 requires input heat
transfer elements having pan contacting surfaces which are not
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disclosed by Snyder (reply brief, page 3). The upper surfaces of
Snyder’s parallel rails in figure 1 are capable of being placed
in contact with a pan.
The appellant argues, with respect to claims 31 and 35, that
the appellant’s specification (page 12, lines 25-28) defines
“length” as the dimension of the input heat transfer elements
that extends away from the output heat transfer elements and into
the mass of product (reply brief, pages 3-4). That portion of
the specification describes an embodiment in which the input heat
transfer elements’ fins have lengths equal to the depth of a pan.
That portion, however, does not limit the term “length” to that
embodiment. Thus, the term “length”, given its broadest
reasonable meaning in view of the appellant’s specification, see
In re Zletz, 893 F.2d 319, 321, 13 USPQ2d 1320, 1322 (Fed. Cir.
1989); In re Sneed, 710 F.2d 1544, 1548, 218 USPQ 385, 388 (Fed.
Cir. 1983), encompasses the length along Snyder’s parallel rails.
We therefore are not convinced of reversible error in the
examiner’s rejection of claims 1, 4, 6, 7, 24, 31 and 35 under
35 U.S.C. § 102(b) over Snyder.
Claim 33 requires that the apparatus further comprises a
pan, and that the at least two heat transfer elements are for
extending into the mass of product within the pan. The examiner
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relies upon Snyder’s chamber 22 as corresponding to the
appellant’s pan (answer, page 4). The examiner argues that
claim 33 requires that the pan is for holding a mass of product,
not that the pan is holding a mass of product (answer, page 10).
The claim, however, also requires that the at least two heat
transfer elements are for extending into the mass of product
within the pan. The examiner has not explained how Snyder’s
parallel ridges are capable of extending into a mass of product
within the chamber. Hence, the examiner has not carried the
burden of establishing a prima facie case of obviousness of the
apparatus claimed in claim 33.
Rejection of claim 9 under 35 U.S.C. § 103
over Snyder in view of Linger
Linger discloses a temperature sensor (46) in the
griddle (28) of a cooktop (10) (col. 3, lines 12-13).
The examiner argues that it would have been obvious to one
of ordinary skill in the art to add Linger’s temperature sensor
to Snyder’s electrically heated cooking grid for better control
of the cooking temperature (answer, page 5). The examiner argues
that once the food and the cooking grid reach steady state, the
temperature of the grid presumably will be the same as the
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temperature of the food (answer, page 11). The examiner,
however, has not established that Snyder’s grid associated
with the widely distributed resistance heaters (116, 316) and
food placed on the grid so that certain of the parallel ridges
(10R) extend into the food item would reach steady state.
Consequently, the examiner has not established a prima facie
case of obviousness of the apparatus claimed in the appellant’s
claim 9.
Rejection of claims 25-27 under 35 U.S.C. § 103 over Snyder
The appellant argues that “length” in claims 25 and 26 is
the length extending into the mass of product (reply brief,
page 5). That argument is not persuasive for the reason given
above regarding the rejection of claims 31 and 35 under 35 U.S.C.
§ 102(b) over Snyder.
As for claim 27, the appellant argues that the tops of
Snyder’s parallel rails are the only cooking surfaces and,
therefore, cannot be considered leading edges extending into a
mass of product (reply brief, pages 5-6). Snyder’s parallel
rails are capable of extending into a mass of product. Hence,
the upper surfaces of the parallel rails are capable of being
leading edges that extend into a mass of product.
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We therefore are not convinced of reversible error in the
examiner’s rejection of claims 25-27 under 35 U.S.C. § 103 over
Snyder.
Rejection of claim 11 under 35 U.S.C. § 102(b) over Reed
Reed discloses a device (20) having a plurality of heat
conducting fins (21) in spaced rows and, extending downwardly
from each fin, rectangular, spaced-apart projecting grills (22)
for insertion into food (col. 5, lines 52-68; figures 4-9).
Another device (30) can engage the first device, move it above a
bun, and cause a hamburger held by the first device to be ejected
onto the bun (col. 7, lines 16-24).
The appellant argues that the handle (43) of Reed’s
device 30 is not removable (reply brief, page 4). The
appellant’s claim 11 requires a removable handle to move an
apparatus comprising input and output heat transfer elements.
Reed’s projecting grills and heat conducting fins correspond,
respectively, to the appellant’s input and output heat transfer
elements. Reed’s entire device 30, which can move device 20
having projection grills and heat conducting fins and is
removable from it, is a removable handle for device 20. See,
e.g., column 5, lines 11-19 and column 7, lines 16-29 of Reed.
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We therefore are not convinced of reversible error in the
examiner’s rejection of claim 11 under 35 U.S.C. § 102(b) over
Reed.
Rejection of claims 28 and 29
under 35 U.S.C. § 103 over Reed
The appellant argues that “length” in claims 28 and 29 is
the length extending into the mass of product (reply brief,
page 6). That argument is not persuasive for the reason given
above regarding the rejection of claims 31 and 35 under 35 U.S.C.
§ 102(b) over Snyder.
Rejection of claims 2, 20 and 32 under
35 U.S.C. § 103 over Reed in view of Snyder
The appellant argues that Snyder does not disclose air
contact fins (reply brief, page 4). Such fins are disclosed by
Reed (col. 5, lines 52-68).
The appellant argues that Reed’s lack of a disclosure of a
nonstick coating is a teaching away from such a coating (reply
brief, page 4). As stated by the Federal Circuit in In re
Gurley, 27 F.3de 551, 553, 31 USPQ2d 1130, 1131 (Fed. Cir. 1994):
A reference may be said to teach away when a
person of ordinary skill, upon reading the
reference, would be discouraged from
following the path set out in the reference,
or would be led in a direction divergent from
the path that was taken by the applicant.
The degree of teaching away will of course
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depend on the particular facts; in general, a
reference will teach away if it suggests that
the line of development flowing from the
reference’s disclosure is unlikely to be
productive of the result sought by the
applicant.

Hence, Reed’s mere lack of disclosure of a nonstick coating
clearly is not a teaching away from such a coating. Snyder would
have fairly suggested, to one of ordinary skill in the art,
coating Reed’s heat conducting fins with a nonstick coating to
obtain the benefit of doing so disclosed by Snyder, i.e., making
the fins easier to clean (col. 2, lines 19-20 and 41-43).
The appellant argues, regarding claim 20, that the examiner
does not give reasons for rejecting claim 20 with respect to its
recitation of rectangular input heat transfer fins (reply brief,
page 4). Rectangular input heat transfer fins are disclosed by
Reed (col. 5, lines 61-62).
Regarding claim 32 the appellant argues that 1) Reed’s
projecting grills 22 are not in parallel spaced planes but,
rather, are aligned along the same heat conducting fin 21, and
2) if grills 22 of adjacent fins 21 are spaced, the spaced grills
both are not in thermal contact with at least one output heat
transfer element (reply brief, pages 4-5). Claim 1, from which
claim 32 depends, requires that the at least one output heat
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transfer element is in thermal contact with the input heat
transfer elements. Neither claim 1 nor claim 32 requires that
the input and output heat transfer elements that are in thermal
contact also are in physical contact. Because heat transfer can
take place between Reed’s adjacent projecting grills and heat
conducting fins, those grills and fins are in thermal contact.
Therefore, we are not convinced of reversible error in the
examiner’s rejection of claims 2, 20 and 32 under 35 U.S.C. § 103
over Reed in view of Snyder.
DECISION
The rejection of claim 9 under 35 U.S.C. § 112, first
paragraph, enablement requirement, is reversed. The rejection of
claims 1, 4, 6, 7, 24, 31, 33 and 35 under 35 U.S.C. § 102(b)
over Snyder is affirmed as to claims 1, 4, 6, 7, 24, 31 and 35,
and reversed as to claim 33. The rejection of claims 25-27 under
35 U.S.C. § 103 over Snyder is affirmed. The rejection of
claim 9 under 35 U.S.C. § 103 over Snyder in view of Linger is
reversed. The rejections of claim 11 under 35 U.S.C. § 102(b)
over Reed, claims 28 and 29 under 35 U.S.C. § 103 over Reed, and
claims 2, 20 and 32 under 35 U.S.C. § 103 over Reed in view of
Snyder, are affirmed.

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No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
AFFIRMED-IN-PART

CHARLES E. FRANKFORT )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
TERRY J. OWENS ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
ANTON W. FETTING )
Administrative Patent Judge )

WILLIAM R. GUSTAVSON SUITE 1185 9330 LBJ FRWY. ALLAS, TX 75243 D

TJO/jrg

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