Ex Parte Metaxatos et al

Patent Trial and Appeal Board

Sep 26, 2012

11391715 (P.T.A.B. Sep. 26, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte PAUL METAXATOS, BERNARD MAURER,
ANDY PADAWER, and DUANE KUTSCH
____________

Appeal 2010-009452
Application 11/391,715
Technology Center 3700
____________

Before STEVEN D.A. McCARTHY, MICHELLE R. OSINSKI, and JILL
D. HILL, Administrative Patent Judges.

HILL, Administrative Patent Judge

DECISION ON APPEAL

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STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134 from a final rejection of
claims 1-20. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART. Pursuant to our authority under 37 C.F.R.
§ 41.50(b)(2009), we designate our affirmance of the rejection of claims 3-
20 as a NEW GROUND OF REJECTION. We also enter a NEW
GROUND OF REJECTION against claims 1 and 2.

CLAIMED SUBJECT MATTER
The claimed subject matter relates to a handle for cookware, a
cookware piece, and an arrangement of cookware pieces. The handle
extends from a first end to a second end in a substantially horizontal
orientation, and has a slot disposed on its bottom side that is configured to
engage another cookware piece.
Claims 1, 3, and 9 are the independent claims on appeal. Claim 3 is
illustrative of the subject matter on appeal and is reproduced below with the
key disputed limitations emphasized:
3. A first cookware piece, comprising:
a fully closed lateral sidewall;
an upper edge disposed along the sidewall; and
a handle attached to the sidewall, wherein the handle
comprises a body having a first end and a second end, and a
support device for holding the first cookware piece in a
substantially horizontal position within a second cookware
piece during storage such that the upper edge of the cookware
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piece is at a height equal to or less than a height of an upper
edge of the second cookware piece, wherein the first cookware
piece is removed from within the second cookware piece during
use, and wherein the body extends from the first end to the
second end in a substantially horizontal orientation with
respect to the first cookware piece.

REJECTION
Appellants seek review of the Examiner’s rejection of claims 1 and 2
under 35 U.S.C. § 102(b) as anticipated by Wang (US 5,784,953, iss. July
28, 1998), Ans. 3; and the Examiner’s rejection of claims 3-20 under 35
U.S.C. § 103(a) as unpatentable over Wang in view of Frank (US 2,404,130,
iss. July 16, 1946), Ans. 4.1

ANALYSIS
The Examiner’s Rejection of Claims 1 and 2
The Examiner finds that Wang discloses all of the elements of claims
1 and 2 including a handle having a body that extends substantially
horizontally from a first end to a second end. The Examiner illustrates this

1 In the Final Rejection mailed February 17, 2009 (“Final Rejection”), the
Examiner initially rejected claims 1-15, 19, and 20 under 35 U.S.C. § 102(b)
as anticipated by Wang; and claims 16-18 under 35 U.S.C. § 103(a) as
unpatentable over Wang. Final Rejection, p. 2. Although the Examiner did
not expressly withdraw these rejections, we treat these rejections as having
been withdrawn because the Examiner does not list them in the Answer.
Ans. 3-7.
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with an annotated copy Figure 5 of Wang depicting a cross sectional view of
Wang’s egg separator with lines pointing to what the Examiner considers to
be the first end and the second end of the handle body. Ans. 5-6.
Appellants argue that Wang does not disclose a handle having a body
that extends substantially horizontally from a first end to a second end, and
that Wang instead discloses a “downwardly curved handle 12.” App. Br. 13-
15 (emphasis in original).
Neither the Examiner nor Appellants proffer a definition for the term
“end,” and Appellants’ Specification does not provide a formal definition of
the term “end.” In determining the ordinary and customary meaning of the
term “end” as viewed by a person of ordinary skill in the art, it is appropriate
to consult a general dictionary definition for guidance. Comaper Corp. v.
Antec, Inc., 596 F.3d 1343, 1348 (Fed. Cir. 2010). The ordinary meaning of
“end” includes: “the part of an area that lies at the boundary”; “a point that
marks the extent of something”; “the point where something ceases to exist”;
and “the extreme or last part lengthwise.” MERRIAM-WEBSTER DICTIONARY,
found at http://www.merriam-webster.com/dictionary/end (last visited
September 18, 2012). Nothing in the Specification is inconsistent with these
usages of the term “end.” Because the Examiner’s identified second end is
not an “end” within the ordinary and customary meaning of that term, the
Examiner has not shown that Wang discloses a handle having a body that
extends substantially horizontally from a first end to a second end.
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The Examiner also finds that Wang discloses the first cookware piece
having a fully closed lateral sidewall 13. Ans. 3. The Examiner explains
that Wang’s sidewall 13 anticipates this claim term because it is fully closed
above apertures 17 and 18. Final Rejection, p. 3. Appellants argue that
Wang clearly requires that the sidewall include a pair of circumferentially
extending slots 17 and 18 in the cup 11, and that “fully closed” is not
equivalent to “closed above the apertures.” App. Br. 16-17. Because the
Examiner’s identified sidewall is not a fully closed lateral sidewall under an
ordinary meaning of “fully closed” due to the presence of apertures 17 and
18, the Examiner has not shown that Wang discloses a fully closed lateral
sidewall.
Because the Examiner’s findings that Wang discloses a fully closed
lateral sidewall and a handle having a body that extends substantially
horizontally from a first end to a second end are in error, and these findings
form the basis of all pending rejections, we do not sustain the rejection of
claims 1 and 2 under 35 U.S.C. § 102(b).

The Rejection of Claims 3-20
The Examiner’s rejection of claims 3-20 under 35 U.S.C. § 103(a) as
obvious over Wang and Frank relies on the same erroneous findings as
discussed hereinabove. Ans. 4. We nonetheless sustain the rejection of
claims 3-20 as unpatentable over Wang and Frank on grounds different from
those relied on by the Examiner as explained infra.
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Appellants argue all of the claims subject to this rejection as a group.
Reply Br. 4-13. We select claim 3 as representative. See 37 C.F.R.
§ 41.37(c)(1)(vii) (2011). Claims 4-20 stand or fall with claim 3.
Frank discloses a handle 12, 23 for cookware comprising a body
having a first end and a second end, the body configured to attach to a first
cookware piece 10, 20 and having a bottom side. Frank, figs. 1 and 4; col. 1,
ll. 34-42; col. 2, ll. 11-16. Frank also discloses U-shaped members 13 and
21 disposed along the bottom side of the handle body 12, 23, and configured
to engage a sidewall of a second cookware piece C to hold the first
cookware piece 10, 20 within the second cookware piece C. Frank, figs. 1
and 4, col. 1, ll. 34-52, and col. 2, ll. 11-16. Frank further discloses that an
upper edge of the first cookware piece 10, 20 does not extend substantially
beyond an upper edge of the second cookware piece C. Frank, figs. 1 and 4.
Frank discloses that the handle body 12, 23 is defined to extend from
the first end to the second end in a substantially horizontal orientation with
respect to the first cookware piece 10, 20. Frank, figs. 1 and 4. Frank also
discloses a cookware piece 20 having a fully closed lateral sidewall. Frank,
figs. 4 and 5. Frank further discloses the handle 12, 23 having a support
device beneath U-shaped members 13 and 21 for holding the first cookware
piece 10, 20 in a substantially horizontal position within the second
cookware piece C. Frank, figs. 1 and 4, col. 1, ll. 34-42, and col. 2, ll. 11-16.
Wang discloses a handle for cookware comprising a body 12 having a
first end and a second end, the body configured to attach to a first cookware
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piece 11 and having a bottom side 14. Wang, figs. 2 - 3 and col. 2, ll. 42-51.
Wang also discloses a slot/positioning device 29 disposed along the bottom
side of the handle body 12, the slot/positioning device 29 being configured
to engage a sidewall of a second cookware piece 32 to hold the first
cookware piece 11 within the second cookware piece 32. Wang, fig. 1 and
col. 3, ll. 39-59.
Frank and Wang are silent regarding whether the first cookware piece
is held within the second cookware piece during storage of the cookware.
Frank and Wang are also silent regarding whether the first cookware piece is
removed from within the second cookware piece during use. The limitations
“wherein the first cookware piece is removed from the second cookware
piece during use” and the first cookware piece being held within the second
cookware piece during storage are functional. Functional recitations limit
the structure defined by an apparatus claim. That is, the structure must be
capable of performing the recited function in order to satisfy the functional
limitation. However, where there is reason to conclude that the structure of
the prior art is inherently capable of performing the claimed function, the
burden shifts to the applicant to show that the claimed function patentably
distinguishes the claimed structure from the prior art structure. See In re
Schreiber, 128 F.3d 1473, 1478 (Fed. Cir. 1997). The Examiner correctly
finds that first cookware piece of Frank or Wang is capable of holding the
first cookware piece within the second cookware piece during storage, and is
capable of allowing the first cookware piece to be removed from within the
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second cookware piece during use. Appellants have not met the burden of
showing that these recited functions patentably distinguish the claimed
structure from the prior art structure.
Regarding a reason to combine the teachings of Frank and Wang, we
conclude that it would have been obvious to employ the slot 29 of Wang in
place of the U-shaped member 13 and corresponding lip 16 of Frank, or the
U-shaped member 21 and corresponding lip 25 of Frank, because the
illustrated combination would provide a more easily removable
strainer/separator. One of ordinary skill in the art would have recognized as
a matter of common sense that the strainer/separator would merely need to
be lifted from the second piece of cookware rather than requiring a clip 14,
24 to be pinched toward a handle 12, 23 prior to removal.
Regarding Appellants’ argument that Wang and Frank are non-
analogous art (App. Br. 9-10), there is a two-fold test for determining
whether art is analogous: “(1) whether the art is from the same field of
endeavor, regardless of the problem addressed, and (2) if the reference is not
within the field of the inventor’s endeavor, whether the reference still is
reasonably pertinent to the particular problem with which the inventor is
involved.” In re Klein, 647 F.3d 1343, 1348 (Fed. Cir. 2011)(quoting In re
Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004)). A reference is reasonably
pertinent if, even though it may be in a different field from that of the
inventor's endeavor, it is one which, because of the matter with which it
deals, logically would have commended itself to an inventor's attention in
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considering his problem. In re Clay, 966 F. 2d 656, 659 (Fed. Cir. 1992).
One problem with which Appellants were involved is nesting cookware.
Spec. 1, ll. 7-8. One of ordinary skill in the art seeking to nest cookware
would have had reason to look to other cookware with nesting capabilities.
Therefore, the teachings of Wang and Frank are reasonably pertinent to a
particular problem with which the Appellants were involved.
Regarding Appellants’ argument that impermissible hindsight was
required for the Examiner to combine Wang and Frank, while an examiner
must articulate a “reasoning with some rational underpinning to support the
legal conclusion of obviousness,” In re Kahn, 441 F.3d 977, 988 (Fed. Cir
2006), the apparent reason need not appear in one or more of the references
on which the examiner relies. Instead, an examiner when analyzing the
evidence may employ common sense consistent with the ordinary level of
knowledge and skill in the art at the time of the invention. Perfect Web
Techs. v. InfoUSA, Inc., 587 F.3d 1324, 1328-29 (Fed. Cir. 2009). Reliance
on common sense in support of a rejection under § 103(a) does not imply the
use of impermissible hindsight.
For these reasons, we sustain the rejection of claim 3 under 35 U.S.C.
§ 103(a) as unpatentable over Wang and Frank. Claims 4-20 fall with claim
3. We designate our decision to sustain this rejection as a NEW GROUND
OF REJECTION to afford Appellants a full and fair opportunity to react to
the thrust of the rejection. See In re Kronig, 539 F.2d 1300, 1302 (CCPA
1976) (“the ultimate criterion of whether a rejection is considered ‘new’ in a
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decision by the board is whether appellants have had [a] fair opportunity to
react to the thrust of the rejection.”).

New Ground of Rejection against Claims 1 and 2
Further, we enter new grounds of rejection against claims 1 and 2
under 35 U.S.C. § 103(a) as unpatentable over Wang and Frank for the
reasons set forth in our discussion of claims 3-20.

DECISION
We reverse the Examiner’s rejection of claims 1 and 2 under 35
U.S.C. § 102(b) as anticipated by Wang.
We affirm the Examiner’s rejection of claims 3-20 under 35 U.S.C.
§ 103(a) as obvious over Wang and Frank, and designate the rejection a
NEW GROUND OF REJECTION.
We enter a NEW GROUND OF REJECTION of claims 1 and 2 under
35 U.S.C. § 103(a) as being unpatentable over Wang and Frank.

FINALITY OF THE DECISION
This decision contains new grounds of rejection pursuant to 37 C.F.R.
§ 41.50(b). 37 C.F.R. § 41.50(b) provides "[a] new ground of rejection
pursuant to this paragraph shall not be considered final for judicial review."
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37 C.F.R. § 41.50(b) also provides that Appellants, WITHIN TWO
MONTHS, must exercise one of the following two options with respect to
the new grounds of rejection to avoid termination of the appeal as to the
rejected claims:
(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. . . .

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).

AFFIRMED-IN-PART; 37 C.F.R. § 41.50(b)

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