Ex Parte McGowan

Patent Trial and Appeal Board

Nov 23, 2016

12873001 (P.T.A.B. Nov. 23, 2016)

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.
12/873,001 08/31/2010 Andrew R. McGowan 047177-9433-00 4481
23409 7590 11/28/2016
MICHAEL BEST & FRIEDRICH LLP (Mke)
100 E WISCONSIN AVENUE
Suite 3300
MILWAUKEE, WI 53202
EXAMINER
ARANT, HARRY E
ART UNIT PAPER NUMBER
3744
NOTIFICATION DATE DELIVERY MODE
11/28/2016 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):
mkeipdocket@michaelbest.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ANDREW R. MCGOWAN
Appeal 2015-000832
Application 12/873,001
Technology Center 3700
Before CHARLES N. GREENHUT, MICHAEL L. HOELTER, and
THOMAS F. SMEGAL, Administrative Patent Judges.
HOELTER, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
This is a decision on appeal, under 35 U.S.C. § 134(a), from a final
rejection of claims 1—20. App. Br. 14—18 (Claims Appendix). We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART, and we designate one of the rejections a
NEW GROUND OF REJECTION pursuant to our authority under 37 C.F.R.
§ 41.50(b).
THE CLAIMED SUBJECT MATTER
The disclosed subject matter “relates to a merchandiser including a
product display area, and more particularly, to a merchandiser including a
pan for supporting product.” Spec. 11. Claims 1, 7, and 15 are independent
Appeal 2015-000832
Application 12/873,001
claims. Claims 1 and 15 are illustrative of the claims on appeal and are
reproduced below.
1. A pan apparatus for a merchandiser, the merchandiser
including a case having a platform defining an opening, the pan
comprising:
a bottom wall;
a plurality of sidewalls cooperating with the bottom wall to
define a space for supporting product in the pan, at least two of
the sidewalls each including a frame engagement member
adjacent a top of the pan; and
a frame positioned adjacent a top of the sidewalls and
coupled to the frame engagement members, the frame
extending along at least three sidewalls of the pan and
configured to engage the platform adjacent the opening to
suspend the pan within the opening, and the frame having a
perimeter and defining a plurality of holes spaced along at least
a portion of the perimeter such that an airflow from below the
pan is directed upward along the sidewalls and discharged
outward through at least three sides of the frame via the holes
above a top of the platform to condition the product.
15. A merchandiser comprising:
a case defining a product display area, a lower passageway
in fluid communication with the product display area, a rear
passageway in fluid communication with the lower
passageway, and an upper passageway in fluid communication
with the rear passageway and the product display area, the case
including a base and a platform positioned above the base, the
platform defining an opening accessible from adjacent a top of
the case;
a pan coupled to the platform and disposed within the
opening, the pan defined by a plurality of sidewalls and a
bottom wall cooperating with the sidewalls to define a space for
supporting product therein;
a frame coupled to the platform adjacent a periphery of the
opening, the frame further coupled to the pan adjacent a top of
at least two of the sidewalls to support the pan within the
opening, and the frame including a perimeter and defining a
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Application 12/873,001
plurality of holes spaced along at least a portion of the
perimeter;
a dividing wall coupled to the case adjacent the platform to
separate the upper passageway from the pan, the dividing wall
including at least one aperture in fluid communication with one
of the rear passageway and the upper passageway, and the
dividing wall, the pan, and the frame cooperating to define an
airflow passageway along the sidewalls of the pan and in fluid
communication with the holes; and
an airflow generation device coupled to the case within at
least one of the lower passageway, the rear passageway, and the
upper passageway to direct an airflow through the lower
passageway, the rear passageway, and the upper passageway
toward the product display area, at least a portion of the airflow
from the airflow generation device configured to flow through
the airflow passageway and through the holes to condition the
product.
REFERENCES RELIED ON BY THE EXAMINER
Branz US 5,168,719 Dec. 8, 1992
Kennedy US 5,477,702 Dec. 26, 1995
Lee US 6,385,990 B1 May 14, 2002
THE REJECTIONS ON APPEAL
Claims 15 and 16 are rejected under 35 U.S.C. § 102(b) as anticipated
by Lee.
Claims 1—14 are rejected under 35 U.S.C. § 103(a) as obvious over
Lee, Kennedy, and Branz.
Claims 17—20 are rejected under 35 U.S.C. § 103(a) as obvious over
Lee and Kennedy.
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Application 12/873,001
ANALYSIS
The rejection of claims 15 and 16 as anticipated by Lee
Independent claim 15 (and hence dependent claim 16) includes the
limitation that “the dividing wall, the pan, and the frame cooperating to
define an airflow passageway along the sidewalls of the pan and in fluid
communication with the holes.” For clarity, the claimed “holes” are recited
as being in the frame. Hence, the three components (i.e., dividing wall, the
pan, and the frame) cooperate to define an “airflow passageway” that is “in
fluid communication with the holes” located in the frame.
The Examiner provides an annotated version of Figure 2 of Lee and
indicates where this recited limitation can be found. Final Act. 4; see also
Ans. 21, 22. The Examiner correlates items 40, 12, 13, 113, and 31 to,
respectively, the claimed dividing wall, pan, frame, holes, and airflow
passageway. Final Act. 5—\\ see also Ans. 20-21. The Examiner
specifically finds that “air flowing through Lee’s cooling plenum will flow
through the openings” (i.e., “holes”). Ans. 21. Appellant disagrees and
contends that “the pan and the frame of Lee do not cooperate to define the
same airflow passageway. In addition, Lee’s cooling plenum 31 is not in
fluid communication with the air openings in the food container support”
(i.e., with the “holes” in the “frame”). App. Br. 7; see also Reply Br. 3^4.
Appellant’s contention has merit. As shown in Lee, the corresponding
airflow passageway 31 defined by Lee’s dividing wall 40, pan 12 and frame
13 discloses an exit opening, but this exit opening (i.e., item 122) is not the
exit opening of holes 113 relied on by the Examiner and which are in frame
13. See, e.g., Lee Figures 2 and 4. In other words, openings 122 through
which the air in passageway 31 exits is not in “frame” 13, but instead are
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Application 12/873,001
located in a different structure altogether. Additionally, addressing “holes”
113 identified by the Examiner (which are in frame 13), these holes 113
provide an exit for a passageway that does not involve pan 12. More
specifically, claim 15 defines the “airflow passageway” as being “along the
sidewalls of the pan” and yet the air exiting via holes 113 in Lee do not pass
“along the sidewalls of the pan” as recited.
The Examiner seeks to explain that “[t]he frame holds the pan a
certain height which directly impacts the dimensions of the airflow
passageway.” Ans. 20. Although admittedly true, this ability to change a
dimension of the airflow passageway does not change where it exits or what
structure it extends along.1
The Examiner also finds that “air flowing through Lee’s cooling
plenum will flow through the openings.” Ans. 21. However, this would
require the air in Lee’s passageway 31 to reverse course and flow upstream
against the force of fan 34. Perhaps, if the direction of Lee’s fan 34 were
reversed this might be the case, but then, both exits 113 and 122 would
become inlets, and there is no indication that any air from passageway 31
could be discharged via (now inlet) 113, i.e., against the flow of the
incoming air, as claimed. In short, the Examiner does not explain how this
might occur and as such, we agree with Appellant that this statement by the
Examiner “is only unsubstantiated opinion” and that “Lee does not teach or
1 Lee’s pan 12 is formed with a lip that rests on the frame’s ledge 213. Lee
2:48-49; see also Lee Pigs. 2 and 5. Any change in elevation of this ledge,
thereby changing the elevation of the pan and the dimensions of airflow
passageway 31 (as suggested by the Examiner), would not alter the exit of
airflow from passageway 31 through opening 122.
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Application 12/873,001
suggest that air may find its way to the openings 113 from an area under the
pan.” App. Br. 8; see also Reply Br. 3^4.
Accordingly, we agree with Appellant’s contentions to the extent that
“the pan and the frame of Lee do not cooperate to define the same airflow
passageway” and also that “Lee’s cooling plenum 31 is not in fluid
communication with the air openings in the food container support.” App.
Br. 7; see also Reply Br. 4. In short, the Examiner has not established by a
preponderance of the evidence that Lee anticipates the claimed apparatus.
We reverse the Examiner’s rejection of claims 15 and 16 as being
anticipated by Lee.
The rejection of claims 17—20 as obvious over Lee and Kennedy
Claims 17—20 depend, directly or indirectly, from claim 15. As
indicated supra, the Examiner identifies Lee’s item 13 as corresponding the
claimed “frame.” Final Act. 3. The Examiner relies on the teachings of
Kennedy for “providing holes around the perimeter” of this frame and that
“by providing holes around the perimeter of the frame, it would allow cold
air to be recirculated and thus create a more energy efficient apparatus.”
Ans. 23—24; see also Lee 3:64—67 and Kennedy 5:22—24.
In this scenario, the analysis above regarding Lee anticipating the
limitations of parent claim 1 differs. For example, placing holes around the
frame’s perimeter as taught by Kennedy, rather than just along one side as in
Lee, would provide another exit for airflow passageway 31 via these
perimeter holes in Lee’s frame 13. Thus, in view of Kennedy’s teaching of
“providing holes around the perimeter of the frame,” Appellant’s contention
that “the pan and the frame of Lee do not cooperate to define the same
airflow passageway” and that “Lee’s cooling plenum 31 is not in fluid
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Application 12/873,001
communication with the air openings in the food container support” (App.
Br. 7; Reply Br. 4) are not persuasive.2 This is because the inclusion of
Kennedy’s perimeter holes in the frame would result in an air flow
passageway 31 (defined by the dividing wall, pan and frame) which both
extends “along the sidewalls of the pan” and also is “in fluid communication
with the holes” as claimed. In short, Appellant is not persuasive the
Examiner erred in combining Kennedy’s teaching of “holes around the
perimeter” with Lee’s frame for the reasons stated. Ans. 23—24.
Further, when addressing claims 17—20, Appellant generally contends
that “the combination would not teach or suggest Appellant’[s] claimed
invention.” App. Br. 8—9. We are not persuaded by this argument in view
of the discussion above. Appellant also contends that Kennedy’s cabinet
“lacks a dividing wall as claimed by” Appellant, but the Examiner did not
rely on Kennedy for teaching a dividing wall. App. Br. 9; Final Act. 12, 19;
Ans. 23. Accordingly, we sustain the Examiner’s rejection of claims 17—20.
2 When Appellant argues the rejection of claims 1—14 in view of Lee,
Kennedy, and Branz, Appellant specifically addresses the combination of
Lee and Kennedy. Reply Br. 5—6. Appellant’s argument is equally
applicable here, but is not persuasive of Examiner error. Appellant argues
that combining Kennedy’s teaching of perimeter holes “would at least
change the principle of operation of Lee and possibly render Lee’s table
unsatisfactory for its intended purpose.” Reply Br. 5—6. Appellant contends
that such combination would “decrease the temperature of foodstuff in the
containers.” Reply Br. 6. However, this argument is not persuasive because
Kennedy is also concerned with creating “an air curtain to insulate the
region about the tray 17 from the outside atmosphere.” Kennedy 5:22—24.
Appellant does not explain how Kennedy’s focus on an insulating air curtain
would change Lee’s principle by resulting in a “decrease [in] the
temperature of foodstuff in the containers.”
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Application 12/873,001
New Ground of Rejection
In summary, the Examiner’s rejection of parent claim 15 as being
anticipated by Lee has been reversed, yet the Examiner’s rejection of
dependent claims 17—20 as being obvious over Lee and Kennedy has been
sustained. Our reviewing court has instructed us that when a dependent
claim is “found to have been obvious, the broader claims . . . must also have
been obvious.” Ormco Corp. v. Align Tech., Inc., 498 F.3d 1307, 1319 (Fed.
Cir. 2007). To avoid any contradiction with these instructions, we enter a
New Ground of Rejection of parent claim 15 (dependent claim 16 was not
separately argued (see App. Br. 9) and hence stands or falls with parent
claim 15) as being obvious over the combination of Lee and Kennedy in
view of the analysis above.3 We do so to provide Appellant with a fair
opportunity to respond.
The rejection of claims 1—14 as obvious over Lee, Kennedy, and Branz
Both independent claims 1 and 7 include the limitation of air being
discharged through the frame via holes “above a top of the platform.” The
Examiner relies on the combined teachings of Lee, Kennedy, and Branz for
disclosing all the limitations of these claims but, regarding this “above a top
of the platform” limitation, the Examiner solely relies upon Branz. Final
Act. 5—7, 13—15. The Examiner provides an annotated version of Figure 2
of Branz where the “top” of platform 70 can be found. Final Act. 7, 15;
Ans. 23. This figure of Branz also identifies holes 90, 92 the Examiner is
relying upon. Final Act. 6, 14. Appellant disagrees that Branz’s holes “are
3 This action is also consistent with the Board’s decision in In re Letts, 88
USPQ2d 1854, 1859 (BPAI 2008)(informative).
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Application 12/873,001
positioned so that the airflow is discharged above a top of the platform.'1'’
Reply Br. 5; see also App. Br. 10.
Branz’s plenum wall 70 is illustrated as being stepped. See Branz
Figures 2 and 6. The lower step supports countertop 26 thereon while the
upper step supports louvers 90, 92 underneath. Branz Figures 2, 6. The
Examiner is clearly identifying the “top” as being the lower stepped region
of wall 70 where countertop 26 is found and as such, the Examiner is
comparing the elevated position of louvers 90, 92 (located adjacent the
higher stepped portion) to this lower portion of wall 70. See Final Act. 6—7,
14—15; Ans. 23. Thus the Examiner is not contrasting the position of
louvers 90, 92 to that portion of wall 70 that is most adjacent thereto (i.e.,
the upper stepped portion). Further, the Examiner does not provide a reason
why the lower stepped portion (where the louvers are not found) was
selected instead of the upper stepped portion (where the louvers are found).
On this point, Appellant contends that “the highest or loftiest point of the
front wall 70 is above the pan 80” (i.e., referencing the upper stepped
portion). Reply Br. 5; see also App. Br. 10.
Regarding the upper stepped portion of wall 70, Branz’s louvers are
clearly below this wall, and not above it as asserted by the Examiner or as
required by claims 1 and 7. The Examiner does not explain how one skilled
in the art, looking at Branz’s drawings, would reach the conclusion that
louvers 90, 92 are actually above that portion of wall 70 from which they
depend (other than by arbitrarily referencing a differently stepped portion of
wall 70). We are instructed that “[t]he Patent Office has the initial duty of
supplying the factual basis for its rejection. It may not, because it may doubt
that the invention is patentable, resort to speculation, unfounded assumptions
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Application 12/873,001
or hindsight reconstruction to supply deficiencies in its factual basis. . . .
Likewise, we may not resolve doubts in favor of the Patent Office
determination when there are deficiencies in the record as to the necessary
factual bases supporting its legal conclusion of obviousness.” In re Warner,
379 F.2d 1011, 1017 (CCPA 1967). Additionally, “[i]n rejecting claims
under 35 U.S.C. § 103, the examiner bears the initial burden of presenting a,
prima facie case of obviousness. . . . Only if that burden is met, does the
burden of coming forward with evidence or argument shift to the applicant.”
In re Rijckaert, 9 F.3d 1531, 1532 (Fed. Cir. 1993). In the matter before us,
the Examiner has not come forward with evidence or argument indicative
that one skilled in the art would ascertain louvers 90, 92 as being above that
portion of wall 70 they are associated with and supported therefrom. We
reverse the Examiner’s rejection of independent claims 1 and 7, and also
claims 2—6 and 8—14 that depend therefrom.
DECISION
The Examiner’s rejection of claims 15 and 16 as anticipated by Lee is
reversed, however, see infra.
The Examiner’s rejection of claims 1—14 as obvious over Lee,
Kennedy, and Branz is reversed.
The Examiner’s rejection of claims 17—20 as obvious over Lee and
Kennedy is affirmed.
We also enter a NEW GROUND of rejection regarding claim 15
under 35 U.S.C. § 103(a). This New Ground of Rejection is entered because
it relies on reasons different from and/or additional to those stated by the
Examiner and also to provide Appellants a fair opportunity to respond.
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Further, 37 C.F.R. § 41.50(b) provides that, “[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review.” 37 C.F.R. § 41.50(b) also provides that Appellants must, WITHIN
TWO MONTHS, exercise one of the following options:
(1) Reopen prosecution. Submit an appropriate amendment of the
claims so rejected or new evidence relating to the claims so rejected, or both,
and have the matter reconsidered by the examiner, in which event the
proceeding will be remanded to the examiner. . . .
(2) Request rehearing. Request that the proceeding be reheard under §
41.52 by the Board upon the same record.. . .
Should Appellants elect to prosecute further before the Examiner
pursuant to 37 C.F.R. § 41.50(b)(1), in order to preserve the right to seek
review under 35 U.S.C. §§ 141 or 145 with respect to the affirmed rejection,
the effective date of the affirmance is deferred until conclusion of the
prosecution before the Examiner unless the affirmed rejection is overcome.
If Appellants elect prosecution before the Examiner and this does not
result in allowance of the application, abandonment or a second appeal, this
case should be returned to the Patent Trial and Appeal Board for final action
on the affirmed rejection, including any timely request for rehearing thereof.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED-IN-PART; 37 C.F.R, $ 41.50(b)
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