Ex Parte McNeill

Board of Patent Appeals and Interferences

Aug 13, 2003

09564131 (B.P.A.I. Aug. 13, 2003)

The opinion in support of the decision being entered today was not written
for publication and is not binding precedent of the Board.
Paper No. 24
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte ALLEN R. MCNEILL
____________
Appeal No. 2003-0778
Application No. 09/564,131
____________
ON BRIEF
____________
Before FRANKFORT, NASE and BAHR, Administrative Patent Judges.
BAHR, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the examiner's final rejection of claims 1-13 .
Claims 14-26 have been indicated to be allowable. No other claims are pending in this
application.
BACKGROUND
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The appellant's invention relates to a barbecue grill accessory and, in particular,
to “a loop form divider wall that is placed in a conventional charcoal barbecue grill to
divide the heat chamber of the barbecue grill into inner and outer volumes, the outer
volume being a circular volume” (specification, page 1). The loop supports charcoal in
a piled ridge around the divider and controls the charcoal briquets so that they burn
slowly in a path along the outer periphery of the loop divider (specification, page 3). A
copy of the claims under appeal is set forth in the appendix to the appellant's brief.
The examiner relied upon the following prior art references of record in rejecting
the appealed claims:
Jones 793,379 Jun. 27, 1905
Sainsbury 5,074,279 Dec. 24, 1991
Lamkin (British patent specification) 2253 Jan. 13, 1910
The following rejections are before us for review.
Claims 1-13 stand rejected under 35 U.S.C. § 112, second paragraph, as being
indefinite for failing to particularly point out and distinctly claim the subject matter which
appellant regards as the invention.
Claims 1-4, 7 and 13 stand rejected under 35 U.S.C. § 102(b) as being
anticipated by Lamkin.
Claims 1-4 and 7-11 stand rejected under 35 U.S.C. § 102(b) as being
anticipated by Jones.
Claims 1-4, 7 and 13 stand rejected under 35 U.S.C. § 102(b) as being
anticipated by Sainsbury.
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Rather than reiterate the conflicting viewpoints advanced by the examiner and
the appellant regarding the above-noted rejections, we make reference to the answer
(Paper No. 20) for the examiner's complete reasoning in support of the rejections and to
the brief and reply brief (Paper Nos. 19 and 21) for the appellant's arguments
thereagainst.
OPINION
In reaching our decision in this appeal, we have given careful consideration to
the appellant's specification and claims, to the applied prior art references, and to the
respective positions articulated by the appellant and the examiner. As a consequence
of our review, we make the determinations which follow.
The indefiniteness rejection
The basis of the examiner’s rejection of claims 1-13 under the second paragraph
of 35 U.S.C. § 112 is that claim 1, and thus claims 2-13 which depend therefrom, recite
the same structure first by recitation of structure (i.e., “a divider in the form of a loop”)
and second by recitation of means plus function (i.e., “means for retaining charcoal ... to
control burning of the charcoal around the loop form of the divider ...”). According to the
examiner, this double recitation of a single structure creates an inconsistency which
renders the claims indefinite (see answer, pages 4-5).
Claim 1 recites “a divider in the form of a loop, the divider being dimensioned ...
to divide an interior volume of the heat chamber into an inner volume within the loop
form of the divider and an outer volume outside the loop form of the divider” and goes
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on to recite “the divider having means for retaining charcoal ... to control burning ...
when the divider is received inside the heat chamber and charcoal is positioned in the
heat chamber around the divider and burned.” The use of the terminology “the divider
having means” implies that the divider in the form of a loop has some particular
structure thereon or a part thereof which performs the function of retaining charcoal
outside the inner volume of the heat chamber. This recitation, however, is inconsistent
with appellant’s underlying disclosure, which indicates, on page 3 of the specification,
that
[t]he present invention provides a divider in the form of a
loop that is positioned in the heat chamber of the
conventional barbecue grill to support charcoal in a piled
ridge around the divider. The loop controls the charcoal
briquets so that they burn slowly in a path along the outer
periphery of the loop divider.
As disclosed by appellant in the specification, the structure which performs the function
of retaining the charcoal outside the inner volume to control burning as recited in claim
1 is the entirety of the loop divider itself, not some structure thereon or part thereof. As
such, we agree with the examiner that there is an inconsistency between the language
of claim 1, and hence claims 2-13 which depend therefrom and thus incorporate this
inconsistency, and appellant’s underlying disclosure, thereby rendering the claims
indefinite under the second paragraph of 35 U.S.C. § 112. See In re Cohn, 438 F.2d
989, 993, 169 USPQ 95, 98 (CCPA 1971). It thus follows that we shall sustain the
examiner’s rejection of claims 1-13 under the second paragraph of 35 U.S.C. § 112.
The anticipation rejections
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We recognize the inconsistency implicit in our decision to sustain the rejection of
claims 1-13 under 35 U.S.C. § 112, second paragraph, as being indefinite for failing to
particularly point out and distinctly claim the invention with a determination that these
claims are anticipated under 35 U.S.C. § 102. Normally, when substantial confusion
exists as to the interpretation of a claim and no reasonably definite meaning can be
ascribed to the terms in a claim, a determination as to anticipation under 35 U.S.C.
§ 102 is not made. See In re Steele, 305 F.2d 859, 862, 134 USPQ 292, 295 (CCPA
1962) and In re Wilson, 424 F.2d 1382, 1385, 165 USPQ 494, 496 (CCPA 1970).
However, in this instance, we consider it to be desirable to avoid the inefficiency of
piecemeal appellate review. See Ex parte Ionescu, 222 USPQ 537, 540 (Bd. App.
1984). For the reasons outlined below, we interpret appellant’s claim 1 as requiring a
barbecue grill accessory comprising a divider in the form of a loop, the divider being
dimensioned to be received inside the heat chamber of the charcoal barbecue grill and
to divide an interior volume of the heat chamber into an inner volume within the loop
and an outer volume outside the loop, the divider being capable of retaining charcoal
outside the inner volume and outside the loop to control burning of the charcoal around
the loop when the divider is received inside the heat chamber and charcoal is
positioned in the heat chamber around the divider and burned.
Appellant (brief, pages 9-10) urges that the “means for ...” limitation of claim 1
should be interpreted as a recitation under the sixth paragraph of 35 U.S.C. § 112. We
note, however, that the sixth paragraph of 35 U.S.C. § 112 states:
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1 “The long-recognized problem with a single means claim is that it covers every conceivable
means for achieving the stated result, while the specification discloses at most only those means known to
the inventor.” Id.
An element in a claim for a combination may be expressed as a means or
step for performing a specified function without the recital of structure,
material, or acts in support thereof, and such claim shall be construed to
cover the corresponding structure, material, or acts described in the
specification and equivalents thereof.
As pointed out in In re Hyatt, 708 F2d 712, 714, 218 USPQ 195, 197 (Fed. Cir. 1983),
the sixth paragraph of 35 U.S.C. § 112 is directed specifically to combination claims
and does not address single means claims1. In the instant case, since the structure
which performs the function following the “means for ...” recitation in claim 1 is, in fact,
the divider in the form of a loop, the claim is directed solely to the divider in the form of
a loop and is thus not a claim for a combination. The provisions of the sixth paragraph
of 35 U.S.C. § 112 therefore do not apply to the claims before us.
Moreover, as aptly pointed out by the examiner on pages 7 and 8 of the answer,
claim 1 recites structure (i.e., a divider in the form of a loop) for performing the function
in the “means for ...” clause. Thus, the sixth paragraph of 35 U.S.C. § 112, which
addresses a claim for a combination “expressed as a means or step for performing a
specified function without the recital of structure” is, by its own terms, not applicable
thereto.
Anticipation is established only when a single prior art reference discloses,
expressly or under the principles of inherency, each and every element of a claimed
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invention. RCA Corp. v. Applied Digital Data Sys., Inc., 730 F.2d 1440, 1444, 221
USPQ 385, 388 (Fed. Cir. 1984). In other words, there must be no difference between
the claimed invention and the reference disclosure, as viewed by a person of ordinary
skill in the field of the invention. Scripps Clinic & Research Found. v. Genentech Inc.,
927 F.2d 1565, 1576, 18 USPQ2d 1001, 1010 (Fed. Cir. 1991). It is not necessary that
the reference teach what the subject application teaches, but only that the claim read
on something disclosed in the reference, i.e., that all of the limitations in the claim be
found in or fully met by the reference. Kalman v. Kimberly Clark Corp., 713 F.2d 760,
772, 218 USPQ 781, 789 (Fed. Cir. 1983), cert. denied, 465 U.S. 1026 (1984).
Each of the references, Lamkin, Jones and Sainsbury, discloses a loop structure
which appears reasonably capable of being used in combination with a barbecue grill to
retain charcoal outside the inner volume and outside the loop form to control burning of
the charcoal in the manner recited in claim 1 and appellant has not explained why the
metal loop in any of these references is not capable of performing such function. The
Lamkin attachment is used to maintain a kettle raised from the burner or cooking
surface so as to form a heating chamber within the band; the Jones support consists of
a band or ring of metal for sustaining a plate, bowl, cup or other dish above the surface
of the top of a stove or range to prevent burning of the contents thereof and Sainsbury’s
draft controller confines charcoal to a restricted area (inside the loop as illustrated) of
the barbecue grill while at the same time providing draft control. None of the references
cited by the examiner teaches or suggests using the loop of metal material in
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2 Appellant refers to openings a1 (a slot a1 is provided in the alternative fastening arrangement
shown in Figure 3), but we also note that Lamkin’s band (Figure 1) is provided with a plurality of slots a1
and punch-outs to form lugs a3.
combination with a barbecue grill and charcoal briquets so as to retain the charcoal
briquets outside the loop to control burning. As pointed out by the examiner on page 9
of the answer, however, appellant’s claims are directed solely to the divider in the form
of a loop and not to the combination of the divider, barbecue grill and briquets. For the
reasons discussed above, we interpret claim 1 as merely requiring a divider in the form
of a loop which is capable of performing the function recited in claim 1. Accordingly,
we agree with the examiner that the subject matter of claim 1 is fully anticipated by the
loop structure disclosed in any of Lamkin, Jones and Sainsbury.
For the foregoing reasons, we shall sustain the rejections of claim 1 as being
anticipated by Lamkin, as being anticipated by Jones and as being anticipated by
Sainsbury. We shall also sustain the rejection of claims 2, 3, 7 and 13, which appellant
has grouped with claim 1, as being anticipated by Lamkin, the rejection of claims 2, 3
and 7, which appellant has grouped with claim 1, as being anticipated by Jones and the
rejection of claims 2, 3, 7 and 13, which appellant has grouped with claim 1, as being
anticipated by Sainsbury. See pages 6 and 7 of appellant’s brief.
With respect to the rejection of claim 4 as being anticipated by Lamkin, appellant
concedes on page 12 of the brief that the band of Lamkin comprises a plurality of
openings2, but argues that Lamkin lacks any disclosure that these openings function to
control charcoal burning around the attachment. First, as pointed out by the examiner
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3 As discussed above, claim 4 does not recite the combination of the divider, grill and charcoal
briquets.
on page 9 of the answer, claim 4 does not require the openings themselves to perform
the function of controlling charcoal burning. Rather, claim 4 merely recites that the
means for retaining charcoal to control burning includes a plurality of openings.
Second, for the reasons discussed above, we do not interpret the “means for ...”
language of the claims as a recitation under 35 U.S.C. § 112, sixth paragraph. The
slots a1 and the punchouts to form the lugs a3 both reasonably appear to be fully
capable of functioning to control burning by permitting passage of air therethrough
when used in combination with a barbecue grill and charcoal briquets.3 Accordingly, the
functional language of claim 4 does not in this instance serve to patentably distinguish
over the band of Lamkin. See, e.g., In re Swinehart, 439 F.2d 210, 212-13, 169 USPQ
226, 230-31 (CCPA 1971) and Ex parte Cordova, 10 USPQ2d 1949, 1950-51 (Bd. Pat.
App. & Int. 1987). It is also well settled that the recitation of an intended use for an old
product does not make a claim to that old product patentable. In re Schreiber, 128 F.3d
1473, 1477, 44 USPQ2d 1429, 1431 (Fed. Cir. 1997). Thus, we shall also sustain the
rejection of claim 4 as being anticipated by Lamkin.
Appellant makes a similar argument with respect to the rejection of claim 4 as
being anticipated by Jones. Specifically, appellant appears to concede that the band of
Jones comprises a plurality of openings (air holes 2). These air holes likewise appear
reasonably capable of functioning to control the burning when used in combination with
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a barbecue grill and charcoal briquets. For the same reasons set forth supra in our
discussion of the rejection of claim 4 as being anticipated by Lamkin, we find
appellant’s argument that claim 4 defines over Jones to be unpersuasive. We therefore
shall also sustain the rejection of claim 4 as being anticipated by Jones.
With respect to claim 8, appellant argues on page 14 of the brief that the
examiner has not identified the structure in Jones that responds to the holding tab
recited in claim 8 and points out that the key 4 of Jones is a separate element.
Consequently, according to appellant, the key 4 is not a part of the band and one skilled
in the art would not interpret Jones as comprising one end of a divider wall having a
holding tab, as recited in claim 8 (see brief, page 14). We disagree.
As noted by the examiner on page 12 of the answer, claim 8 does not require
that the holding tab be integral (or unitary) with the divider wall. We find reasonable the
examiner’s position that the key 4 is a “holding tab” as broadly recited in claim 8 and
that the end of Jones’ band through which the key 4 passes “has” said holding tab.
Thus, we shall sustain the examiner’s rejection of claim 8 as being anticipated by
Jones.
We shall also sustain the examiner’s rejection of claim 9 as being anticipated by
Jones. With the key 4 disposed in a slot 3 of one end of Jones’ band 1, the key forms a
“protruding rim, edge, rib or collar used to strengthen an object, hold the object in place,
or attach the object to another object” and thus meets the definition of “flange” offered
by appellant on page 15 of the brief.
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Appellant (brief, page 15) argues that claim 10 is not anticipated by Jones
because Jones’ band does not comprise a flange having a distal edge with a shape that
conforms to a shape of the bottom structural wall of the charcoal barbecue grill.
Inasmuch as claim 10 is directed only to the divider loop and does not recite a
barbecue grill, much less a barbecue grill having a particular shape of bottom structural
wall, the key 4 of Jones meets this limitation. Thus, we shall also sustain the rejection
of claim 10 as being anticipated by Jones.
Claim 11 merely calls for a flange projecting outwardly of the divider wall and
separating a beginning of a path of charcoal from an end of a path of charcoal around
the divider wall. Claim 11 does not require that the flange prevent passage of air or
flames between the recited beginning and end of the path. Thus, with respect to claim
11, we share the examiner’s view, as expressed on page 12 of the answer, that the
aperture 8 would not prevent the key 4 from performing the function recited in the claim.
It thus follows that we shall also sustain the rejection of claim 11 as being anticipated by
Jones.
Finally, with respect to the rejection of claim 4 as being anticipated by Sainsbury,
we conclude that the openings 54 of Sainsbury fully respond to the openings recited in
claim 4 for the same reasons discussed above with respect to the rejections of this
claim as being anticipated by Lamkin and by Jones. Thus, we shall also sustain the
rejection of claim 4 as being anticipated by Sainsbury.
CONCLUSION
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To summarize, each of the examiner’s rejections is sustained. The examiner’s
decision is affirmed.
No time period for taking any subsequent action in connection with this appeal
may be extended under 37 CFR § 1.136(a).
AFFIRMED
CHARLES E. FRANKFORT )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
JEFFREY V. NASE ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
JENNIFER D. BAHR )
Administrative Patent Judge )
JDB/ki
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