Ex Parte McPheron et al

Patent Trial and Appeal Board

Sep 26, 2016

12757216 (P.T.A.B. Sep. 26, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
121757,216 04/09/2010
26096 7590 09/28/2016
CARLSON, GASKEY & OLDS, P,C
400 WEST MAPLE ROAD
SUITE 350
BIRMINGHAM, MI 48009
FIRST NAMED INVENTOR
Alisa McPheron
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.
67408-001 PUSl 2251
EXAMINER
NGUYEN, PHUONG T
ART UNIT PAPER NUMBER
3742
NOTIFICATION DATE DELIVERY MODE
09/28/2016 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):
ptodocket@cgolaw.com
cgolaw@yahoo.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ALISA MCPHERON and AMANDA WRANIK
Appeal 2014-007 627
Application 12/757,216
Technology Center 3700
Before JILL D. HILL, LISA M. GUIJT, and ERIC C. JESCHKE,
Administrative Patent Judges.
JESCHKE, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Alisa McPheron and Amanda Wranik ("Appellants") seek review
under 35 U.S.C. § 134(a) of the Examiner's decision, as set forth in the Final
Office Action dated December 18, 2013 ("Final Act."), rejecting claims 1---6,
8-10, 21, 22, and 26-34. 1 We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
1 Appellants identify Alisa McPheron as the real party in interest. Br.
1.
Appeal2014-007627
Application 12/757,216
The disclosed subject matter "generally relates to a baking apparatus,
and more particularly to a sleeve for a baking apparatus." Spec. i-f 2. Claims
26 and 32 are independent. Claim 26 is reproduced below, with emphasis
added:
26. A baking apparatus, comprising:
an elastomeric sleeve that defines a reservoir;
a springform pan configured to receive a
batter and being nested within said reservoir, said
elastomeric sleeve flexibly conforming to a shape of
said springform pan to evenly distribute heat
throughout said batter; and
a container that is configured to hold a water
bath, wherein said sleeve and said springform pan
are at least partially submerged into said water bath
of said container.
EVIDENCE RELIED ON BY THE EXAtvfINER
De'Longhi
Miller
Tetreault
US 2005/0217497 Al
US 2005/0217498 Al
US 2008/0060530 Al
REJECTIONS
Oct. 6, 2005
Oct. 6, 2005
Mar. 13, 2008
1. Claim 34 stands rejected under 35 U.S.C. § 112, first paragraph,
as failing to comply with the written description requirement.
2. Claims 26-31, 33, and 34 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over Miller and Tetreault.
3. Claims 1---6, 8-10, 21, 22, and 32 stand rejected under
35 U.S.C. § 103(a) as unpatentable over Miller, Tetreault, and De'Longhi.
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Appeal2014-007627
Application 12/757,216
DISCUSSION
Rejection I -The rejection of claim 34 under 35 USC§ 112
Claim 34 depends from independent claim 26 and further recites
"wherein sidewalls of said springform pan and said elastomeric sleeve
extend to equivalent heights." Br. 10 (Claims App.). The Examiner rejected
claim 34, finding that the Specification lacks sufficient written description
support for this additional limitation. See Final Act. 2.
Appellants argue that "[t]he features of claim 34 are shown in at least
Figure 1 and Figure 5A, which demonstrates that [Appellants] had
possession of the claimed invention at the time the application was filed."
Br. 3. The Examiner responds that the Specification (including Figures 1
and 5A) does not sufficiently describe the limitation at issue. See Ans. 2.
The test for compliance with the written description requirement is
"whether the disclosure of the application relied upon reasonably conveys to
those skilled in the art that the inventor had possession of the claimed
subject matter as of the filing date." Ariad Pharm., Inc. v. Eli Lilly & Co.,
598 F.3d 1336, 1351 (Fed. Cir. 2010) (en bane). We find that the
Specification provides sufficient written description support for the subject
matter recited in claim 34. As noted by Appellants (Br. 3), Figures 1 and 5A
show the sidewalls of springform pan 12 and elastomeric sleeve 14
extending to "equivalent heights." Accordingly, we do not sustain the
rejection of claim 34 under 35 U.S.C. § 112, first paragraph.
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Appeal2014-007627
Application 12/757,216
Rejection 2- The rejection of claims 26-31,
33, and 34 under 35 US.C. § 103(a)
Independent claim 26 recites, among other limitations, an
"elastomeric sleeve flexibly conforming to a shape of said springform pan."
Br. 9 (Claims App.). For this limitation, the Examiner relied on Miller as
disclosing a "sleeve (20) flexibly conforming to a shape of said springform
pan ( 40)" (Final Act. 3) and on Tetreault as disclosing "a sleeve (200,
fig.2A) [that] is an elastomeric sleeve" (Final Act. 3 (citing Tetreault i-f 1)).
According to the Examiner, it would have been obvious "to utilize in
[Miller], an elastomeric sleeve, as taught by Tetreault, in order to allow the
food to be removed more easily." Final Act. 3.
Appellants argue that "the Examiner has offered only conclusory
statements that the proposed modification would allow food to be removed
more easily from the Miller device" and that "[ n Jo support is provided for
this assertion." Br. 5. Rejections based on obviousness must be supported
by "some articulated reasoning with some rational underpinning to support
the legal conclusion of obviousness." In re Kahn, 441F.3d977, 988 (Fed.
Cir. 2006), cited with approval in KSR Int 'l Co. v. Teleflex Inc., 550 U.S.
398, 418 (2007). We agree with Appellants that the reasoning provided to
modify inner pan 20 in Miller to be elastomeric-"to allow food to be
removed more easily" (Final Act. 3}-does not support the conclusion of
obviousness because the Examiner has not shown the relevance of that
rationale in the context of the modified device. Even after modifying Miller
to make inner pan 20 elastomeric, the "food" referenced by the Examiner
would remain in springform pan 40. See Miller i-f 22. Because food would
not directly contact inner pan 20, modifying that structure to be elastomeric
would not result in the benefit relied on by the Examiner.
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Appeal2014-007627
Application 12/757,216
In contrast, Tetreault describes bakeware 200 (relied on by the
Examiner (Final Act. 3)) as directly contacting food. See Tetreault i-f 20
("FIG. 2(a) depicts bakeware with one receptacle 201 for receiving food
products."), i-f 21 (discussing how "the bakeware will not collapse under the
weight of the food product located in the receptacle 201"). Given the
different uses of inner pan 20 in Miller and bakeware 200 in Tetreault, the
benefit described in Tetreault regarding the use of flexible materials would
not apply to the modified device. See, e.g., Tetreault i-f 2 ("Silicone
bakeware involve containers that are quite flexible which allow food to be
removed more easily than with traditional bakeware. ").
The Examiner does not appear to respond to the argument above, but
does state that "both the Miller and Tetreault references are the same
technical field [food cooking apparatus]; therefore it would have been
obvious to combine them." Ans. 3. Even assuming that Miller and Tetreault
are in the same field, that fact alone does not provide sufficient reasoning to
modify Miller based on Tetreault.
For these reasons, we do not sustain the rejection of claim 26, or the
rejection of claims 27-31, 33, and 34, which depend from claim 26.
Rejection 3 -The rejection of claim 1-6, 8-10,
21, 22, and 32 under 35 US.C. § 103(a)
A. Claim 3 2
As with claim 26, independent claim 32 recites an "elastomeric sleeve
flexibly conforming to a shape of said springform pan." Compare Br. 10
(Claims App.), with id. at 9. To address this limitation, the Examiner relies
on the same reason to modify Miller based on Tetreault as discussed above
with regard to claim 26---"to allow the food to be removed more easily."
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Appeal2014-007627
Application 12/757,216
Final Act. 7-8 (claim 32), 3 (claim 26). The Examiner's reliance on
De 'Longhi does not remedy the deficiencies discussed above. Thus, for the
reasons discussed above, we also do not sustain the rejection of claim 32.
B. Claims 1---6, 8-10, 21, and 22
Claims 1-6, 8-10, 21, and 22 depend from claim 26. Br. 8-9 (Claims
App.). The Examiner's added reliance on De'Longhi does not remedy the
deficiencies discussed above (see supra Rejection 2). Thus, for the reasons
discussed above, we do not sustain the rejection of claims 1---6, 8-10, 21, and
22.
DECISION
We REVERSE the decision to reject claim 34 under 35 U.S.C. § 112,
first paragraph, and REVERSE the decision to reject claims 1---6, 8-10, 21,
22, and 26-34 under 35 U.S.C. § 103(a).
REVERSED
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