Ex Parte Larsen

Board of Patent Appeals and Interferences

Sep 21, 2009

11085083 (B.P.A.I. Sep. 21, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte CHRISTOPHER A. LARSEN
____________

Appeal 2009-004487
Application 11/085,083
Technology Center 3700
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Decided: September 22, 2009
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Before: JENNIFER D. BAHR, STEVEN D.A. McCARTHY, and
MICHAEL W. O'NEILL, Administrative Patent Judges.

BAHR, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2009-004487
Application 11/085,083

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STATEMENT OF THE CASE
Christopher A. Larsen (Appellant) appeals under 35 U.S.C. § 134
(2002) from the Examiner's decision rejecting claims 1, 3-8, 10-15, and 17-
20. We have jurisdiction over this appeal under 35 U.S.C. § 6 (2002).

The Invention
Appellant's claimed invention is directed to a cooking appliance
mounted adjacent to kitchen cabinetry. Cooking appliance 2 includes oven
cavity 6, trim element 43, and door 50. Spec. 6:3-4, 23 to 7:6, fig. 1. Trim
element 43 provides a substantially smooth transition between appliance 2
and adjacent kitchen structure. Spec. 3:21-23.
Claim 1, reproduced below, is illustrative of the claimed invention.
1. A cooking appliance adapted to be mounted
adjacent kitchen cabinetry comprising:
an oven cavity including top, bottom, rear
and opposing side walls that collectively define a
frontal opening having a front face portion;
at least one trim element extending along the
oven cavity and having an outer surface projecting
forward of the front face portion to establish a
substantially smooth transition between the
cooking appliance and adjacent kitchen cabinetry;
and
a door pivotally mounted for movement
relative to the oven cavity for selectively closing
the frontal opening, said door including a main
body portion having a front surface, a rear surface
and a peripheral edge portion, said peripheral edge
portion including top, bottom and opposing side
edge sections, each of said opposing side edge
sections extending away from the front face
portion of the oven cavity adjacent the at lease one
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trim element, while including a laterally extended
region that overlaps, at least in part, the at least one
trim element, extends laterally outwardly of the
oven cavity and leads to the front surface portion
of the door, at least one of said extended regions
including a rounded portion and is hinged adjacent
the at least one trim element, with the rounded
portion enabling the door to shift between open
and closed positions while simultaneously
enabling the door to be thin, as judged by a
distance from the front surface of the door to the at
least one trim element.

The Rejections
The Examiner relies upon the following as evidence of
unpatentability:
Keil US 5,265,954 Nov. 30, 1993
Wenning US 6,224,179 B1 May 1, 2001

Appellant seeks review of the Examiner's rejections under 35 U.S.C.
§ 103(a) of claims 1, 3-8, 10-15, and 17-20 as unpatentable over Keil and
Wenning. The Examiner has withdrawn the rejections of claims 2, 9, and
16. Ans. 3.

SUMMARY OF DECISION
We REVERSE.

ISSUE
The Examiner rejected as a group independent claims 1, 7, and 15 as
unpatentable over a combination of the teachings of Keil, describing a
refrigerator having a particular door configuration, and Wenning, describing
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a recyclable liner useful in refrigerators and in ovens. Appellant argues that
the Examiner's proposed combination of the teachings of Keil and Wenning
fails to render obvious a cooking appliance having an oven cavity, because
the Examiner's combination describes a refrigerator, not an oven. Appeal
Br. 8-9; Reply Br. 3-4. Appellant presents substantially the same argument
for independent claims 7 and 15, which recite a substantially similar
limitation. Appeal Br. 12, 15. Therefore, the dispositive issue presented in
this appeal is whether Appellant has demonstrated that the Examiner erred in
concluding that Keil and Wenning render obvious a cooking appliance
having an oven cavity.

FACTS PERTINENT TO THE ISSUES
(FINDINGS-OF-FACT (FF))
FF1 The Examiner found that Keil describes a refrigerator cavity, not an
oven cavity. Ans. 4.
FF2 The Examiner found that Wenning describes an insulated housing 10
including a cavity 20 suitable for use in either an oven or a
refrigerator. Ans. 4.
FF3 Wenning describes a heat-insulating housing useful for household
ovens and refrigerators. Col. 1, ll. 16-18.
FF4 Wenning does not describe a device or method for converting
refrigerators to ovens, or vice versa.

PRINCIPLES OF LAW
“[A] claim preamble has the import that the claim as a whole suggests
for it.” Bell Commuc’ns Research, Inc. v. Vitalink Commuc’ns Corp.,
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55 F.3d 615, 620 (Fed. Cir. 1995). “[I]f the claim preamble is ‘necessary to
give life, meaning, and vitality’ to the claim, then the claim preamble should
be construed as if in the balance of the claim.” Pitney Bowes, Inc. v.
Hewlett-Packard Co., 182 F.3d 1298, 1305 (Fed. Cir. 1999); see also Kropa
v. Robie, 187 F.2d 150, 152 (CCPA 1951) (A preamble reciting “‘An
abrasive article’” was deemed essential to point out the invention defined by
claims to an article comprising abrasive grains and a hardened binder and
the process of making it. The court stated “it is only by that phrase that it
can be known that the subject matter defined by the claims is comprised as
an abrasive article. Every union of substances capable inter alia of use as
abrasive grains and a binder is not an ‘abrasive article.’” Therefore, the
preamble served to further define the structure of the article produced.).

ANALYSIS
The Examiner found, in relevant part, that Keil describes a refrigerator
cavity, not an oven cavity. FF1. However, the Examiner found that
Wenning describes an insulated housing (defining a cavity) useful in either a
refrigerator or an oven. FF2. Therefore, the Examiner concluded that it
would have been obvious to substitute the housing in Keil with the housing
in Wenning, in order to "utilize a housing that is easy to recycle." Ans. 4;
see also Wenning, col. 1, ll. 38-48, noting Wenning's insulation addresses
the issue of recycling the insulation in refrigerators and ovens.
Appellant argues that the refrigerator of Keil, modified with the
insulated housing of Wenning, is not a cooking appliance including an oven
cavity as recited claims 1, 7, and 15. Appeal Br. 9, 12, 15. To this, the
Examiner responds that the insulated housing of Wenning is suitable for use
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in either a refrigerator or an oven, and thus the housing itself is an "oven
cavity." Ans. 5. Presumably, the logic is that the insulated housing in
Wenning, installed in Keil's refrigerator is still, or at least at some time was,
capable of use as housing in an oven. Following this logic, Wenning's
insulation housing could be called "refrigerator housing" when installed in
an oven, or "oven housing" in a refrigerator, regardless of the use of the
insulation, because the insulation itself at some time could be called either.
However, the claimed "cooking appliance" having "an oven cavity"
requires a particular structure, and is not merely a recitation of intended use.
While the claims may not specifically require a heating element, as the
Examiner notes (Ans. 7), the claims do require that the oven cavity be part
of a “cooking apparatus.”
A person of ordinary skill in the art would know the difference
between a cooking appliance, such as an oven, and a refrigerator. Stated
differently, a “cooking appliance” or “oven” has an established meaning
which distinguishes it structurally from a refrigerator. One of ordinary skill
in the art would understand that an oven cavity, used in a cooking appliance,
is a cavity capable of withstanding repeated use while cooking at the high
temperatures often found in an oven. The preambles of claims 1, 7, and 15,
requiring a "cooking appliance," breathe life into the claims because they
distinguish the oven cavity to be a cavity in a device specifically designed
for cooking, as opposed to devices that are not specifically designed for
cooking (such as refrigerators). See Pitney Bowes, Inc. v. Hewlett-Packard
Co., 182 F.3d at 1305. Therefore, the claims actually require a device
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having an oven cavity that forms part of a cooking appliance and is capable
of withstanding repeated use while cooking at the high temperatures often
found in an oven.
The Examiner suggests that Wenning's disclosure that the insulation
housing is useful in either an oven or a refrigerator suggests that Wenning
teaches that Keil could be modified into an oven. See Ans. 6, see also FF3.
However, Wenning merely describes insulation for use as insulation in a
refrigerator or an oven. FF3. Wenning does not describe a device or
method for converting refrigerators to ovens, or vice versa. FF4. Therefore,
the disclosure in Wenning does not support the Examiner's suggestion that
the mere use of Wenning's recyclable insulation in the refrigerator of Keil
would necessarily allow the refrigerator to be used as an oven.
In the rejections of claims 1, 7, and 15, the Examiner concludes that it
would have been obvious to substitute Wenning's insulation defining a
cavity for Keil's refrigerator cavity for recycling purposes. See Ans. 4. The
Examiner has not made a showing that the insulation in Wenning converts
Keil's refrigerator into an oven. Therefore, the Examiner's proposed
combination of Keil and Wenning results in a refrigerator having insulated
housing that forms a refrigerator cavity. As such, the Examiner has not
shown a combination of Keil and Wenning that results in a cooking
appliance with an oven cavity, required by claims 1, 7, and 15.

CONCLUSIONS
Appellant has demonstrated that the Examiner's proposed combination
of Keil and Wenning does not render obvious a cooking appliance
comprising an oven cavity. Therefore, Appellant has demonstrated that the
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Examiner erred in concluding that the proposed combination of Keil and
Wenning renders obvious the subject matter of independent claims 1, 7, and
15. Likewise, the Examiner's rejection of dependent claims 3-6, 8, 10-14,
and 17-20 cannot be sustained.

DECISION
The Examiner's decision is reversed as to claims 1, 3-7, 8, 10-15, and
17-20.

REVERSED

hh

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