Ex Parte PestrueDownload PDFBoard of Patent Appeals and InterferencesMar 29, 200609971866 (B.P.A.I. Mar. 29, 2006) Copy Citation 1 The opinion in support of the decision being entered today was not written for publication and is not binding precedent of the Board. UNITED STATES PATENT AND TRADEMARK OFFICE _____________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES _____________ Ex parte JEFFREY A. PESTRUE _____________ Appeal No. 2006-0376 Application No. 09/971,866 ______________ ON BRIEF _______________ Before CRAWFORD, GROSS and NAPPI, Administrative Patent Judges. NAPPI, Administrative Patent Judge. DECISION ON APPEAL This is a decision on appeal under 35 U.S.C. § 134 of the final rejection of claims 1 through 20. For the reasons stated infra we affirm-in-part the examiner’s rejection of these claims. Appeal No. 2006-0376 Application No. 09/971,866 2 Invention The invention relates to a gas powered grill for cooking and warming food, which includes a side-mounted burner for placement at a lower height then the main grill burner. Claim 1 is representative of the invention and is reproduced below: 1. A grilling apparatus, comprising: a cart comprising guide structure for guiding movement of an auxiliary burner unit thereon; a grill housing attached to the cart; a grill disposed in the grill housing; a main grill burner unit in the grill housing below the grill, said main grill burner being substantially fixed in place in relation to the cart; and an auxiliary burner unit adjustably attached to the cart and placeable at a level below the main grill burner, said auxiliary burner unit comprising an auxiliary burner; wherein said auxiliary burner unit is selectively movable with respect to said cart, and wherein normal movement of said auxiliary burner unit, relative to said cart, is restricted by said guide structure to substantially linear movement. References The references relied upon by the examiner are: Harneit 6,293,272 September 25, 2001 (filed March 25, 2000) Reynolds 4,282,853 August 11, 1981 Rejections at Issue Claims 1 through 20 stand rejected under 35 U.S.C. § 103 as being unpatentable over Reynolds in view of Harneit. Appeal No. 2006-0376 Application No. 09/971,866 3 Opinion We have carefully considered the subject matter on appeal, the rejection advanced by the examiner and the evidence of obviousness relied upon by the examiner as support for the rejection. We have, likewise, reviewed and taken into consideration, in reaching our decision, appellant’s arguments set forth in the brief along with the examiner’s rationale in support of the rejection and arguments in rebuttal set forth in the examiner’s answer. With full consideration being given to the subject matter on appeal, the examiner’s rejection and the arguments of appellant and the examiner, and for the reasons stated infra we sustain the examiner’s rejections of claims 1 through 11, 13, 15 through 18 and 20 under 35 U.S.C. § 103. However, we will not sustain the examiner’s rejection of claims 12, 14 and 19 under 35 U.S.C. § 103. Rejection of claim 1 On pages 6 through 9 of the brief, appellant asserts that Reynolds teaches a front-opening cabinet used for commercially broiling meats and other foods. As such appellants argue, on page 7 of the brief, “it would not be practical to cook in a separate pot over either of the burners of Reynolds.” Appellant argues, “[t]he cooking apparatus of Reynolds is provided with leveling means such as floor engaging screws (Reynolds’853, col. 2, lines 47-50). Proper Appeal No. 2006-0376 Application No. 09/971,866 4 orientation of the Reynolds stove is important to control the flow of greases and fats therein, as discussed in column 4, lines 25-58 of Reynolds ‘870.”1 See, Brief page 6. Thus, appellant concludes, on page 8 of the brief: [T]he Reynolds ‘853 disclosure clearly and unequivocally teaches away from applicant’s claimed invention of a gas grilling apparatus having an adjustable auxiliary burner unit. A person skilled in the art of outdoor gas grilling apparatus, would not consider the claimed gas grilling apparatus with a height-adjustable auxiliary burner unit to be an obvious variation of the teaching of Reynolds ‘853 reference. Further, appellant argues on pages 11 and 12 of the brief, referring to Reynolds’ adjustable height burner “[t]his disclosed mechanism of Reynolds ‘853 is significantly different compared to that of the claimed invention, wherein the vertical linear movement of the auxiliary burner is achieved with a mechanism having a vertical guide structure on which the auxiliary burner is mounted.” In response the examiner asserts appellant’s arguments regarding cooking in a pot are not commensurate with the scope of the claims. See answer page 8. Further, on page 7 of the answer, regarding the use of wheels, the examiner states: Appellant’s claimed grilling apparatus does [not] define [a] structural limitation or arrangement that would necessarily preclude or conflict with the use of leveling legs used of US4282853 (REYNOLDS). Nor does the fact that US4282853 (REYNOLDS) has leveling legs preclude or conflict 1 We note that Reynolds 4,144,870 (‘870) is relied upon by appellant to support their arguments. However, Reynolds ‘870 is not cited in the rejection, but is related to Reynolds 4,282,853, which is cited in the rejection. Appeal No. 2006-0376 Application No. 09/971,866 5 with the addition of wheels thereto, to make the cooking apparatus of US4282853 (REYNOLDS) to be in the form of a readily portable or movable “cart”. Further, on page 9 of the answer, the examiner states: [A]lthough Appellant’s claims characterize the invention as a “grilling apparatus”, including a “grill” disposed in a grill housing, Appellant’s claims lack any further limitations, or structure, which would distinguish the claimed invention from the cooking surfaces (G1, G2) of the cooking apparatus (i.e. - “broiler”) of US4282853 (REYNOLDS). A person having ordinary skill in the art of apparatus used for cooking would have, at the time of the invention, made no distinction between the broadly recited term “grill” of the claimed invention and the heated “broiling” surfaces (G1, G2) of US4282853 (REYNOLDS). The term “grill” meaning to “broil on a open grill or a griddle” (Webster’s Third New International ® Dictionary, Unabridged, Copyright © Merriam Webster) We first consider the scope of the claim. We concur with the examiner’s claim interpretation. In analyzing the scope of the claim, office personnel must rely on appellant’s disclosure to properly determine the meaning of the terms used in the claims. Markman v. Westview Instruments, Inc., 52 F.3d 967, 980, 34 USPQ2d 1321, 1330 (Fed. Cir. 1995). “[I]nterpreting what is meant by a word in a claim ‘is not to be confused with adding an extraneous limitation appearing in the specification, which is improper.’” (emphasis original) In re Cruciferous Sprout Litigation, 301 F.3d 1343, 1348, 64 USPQ2d 1202, 1205, (Fed. Cir. 2002) (citing Intervet America Inc v. Kee-Vet Laboratories Inc., 887 F.2d 1050, 1053, 12 USPQ2d 1474, 1476 (Fed. Cir. 1989). Claim 1 includes the Appeal No. 2006-0376 Application No. 09/971,866 6 limitation of “a grill”, “a main grill burner” and an “auxiliary burner.” Appellant’s specification provides no special definition for the term grill. Accordingly, we accept the examiner’s claim interpretation. Additionally, we note that claim 1 does not recite limitations directed to using a separate pot over either of the burners or that “movement of the auxiliary burner is achieved with a mechanism having a vertical guide structure” as argued by appellant. Having determined the scope of the disputed limitations in the claim we next consider the evidence relied upon by the examiner to support the finding of obviousness. Our reviewing court has stated “[T]he Board must not only assure that the requisite findings are made, based on evidence of record, but must also explain the reasoning by which the findings are deemed to support the agency’s conclusion.” In re Lee, 277 F.3d 1338, 1344, 61 USPQ2d 1430, 1434 (Fed. Cir. 2002). When determining obviousness, “[t]he factual inquiry whether to combine references must be thorough and searching.” Lee, 277 F.3d at 1343, 61 USPQ2d at 1433, citing McGinley v. Franklin Sports, Inc., 262 F.3d 1339, 1351-52, 60 USPQ2d 1001, 1008 (Fed. Cir. 2001). “It must be based on objective evidence of record.” Id. “Broad conclusory statements regarding the teaching of multiple references, standing alone, are not ‘evidence.’” In re Dembiczak, 175 F.3d 994, 999, 50 USPQ2d 1614, 1617 (Fed. Cir. 1999). “Mere denials and conclusory statements, however, are not sufficient to establish a Appeal No. 2006-0376 Application No. 09/971,866 7 genuine issue of material fact.” Dembiczak, 175 F.3d at 999, 50 USPQ2d at 1617, citing McElmurry v. Arkansas Power & Light Co., 995 F.2d 1576, 1578, 27 USPQ2d 1129, 1131 (Fed. Cir. 1993). The Federal Circuit states that, “[t]he mere fact that the prior art may be modified in the manner suggested by the Examiner does not make the modification obvious unless the prior art suggested the desirability of the modification.” In re Fritch, 972 F.2d 1260, 1266 n.14, 23 USPQ2d 1780, 1783-84 n.14 (Fed. Cir. 1992), citing In re Gordon, 733 F.2d 900, 902, 221 USPQ 1125, 1127 (Fed. Cir. 1984). In addition, our reviewing court stated, that when making an obviousness rejection based on combination, “there must be some motivation, suggestion or teaching of the desirability of making the specific combination that was made by Applicant” in Lee, 277 F.3d at 1343, 61 USPQ2d at 1433 (quoting In re Dance, 160 F.3d 1339, 1343, 48 USPQ2d 1635, 1637 (Fed. Cir. 1998)). The examiner has found that Reynolds teaches a main grill (G1), main burner (B1) and an auxiliary burner (B2), which is movable with respect to the housing for the grill. See page 4 of the answer. We concur with the examiner’s findings that these burners and grill meet the claimed burners and grills. We additionally note that Reynolds teaches that the burners are gas, see column 1, lines 66 through column 2, line 1. As such, we do not find that the reference teaches away from a gas grill, as appellant argues, rather we find that Reynolds Appeal No. 2006-0376 Application No. 09/971,866 8 teaches a gas grill. The examiner finds that Harneit teaches using wheels on a gas grill and that Harneit provides the suggestion to use the wheels on Reynolds “for the purpose of making the apparatus readily portable.” See page 5 of the answer. We agree with the examiner’s reasoning. Harneit teaches a portable gas grill. See abstract. Further, Harneit teaches using wheels on the legs of the grill cabinet “to allow the cabinet to be moved to any location desired.” See Harneit column 4, lines 6-7. Thus, we find that Harneit provides both teaching of using wheels on the cabinet, thereby making the cabinet a cart, and provides the suggestion to use the wheels. We are not persuaded by appellant’s argument that Reynolds’ use of leveling means detracts from modifying the device to use wheels. Leveling means and wheels serve two different functions (leveling and increased mobility), which are not contradictory. Thus, we do not find that one of ordinary skill in the art would consider a teaching that includes leveling means to preclude addition of wheels. Accordingly, we consider the examiner to have presented ample evidence of obviousness and sustain the examiner’s rejection of claim 1. Appeal No. 2006-0376 Application No. 09/971,866 9 Rejection of claim 4. On page 12 of the brief, appellant argues: Although Reynolds ‘853 and Harneit ‘272 disclose horizontal movement of an auxiliary burner, the combination used in the claimed invention substantially departs from the Reynolds ‘853 and Harneit ‘272 disclosures, in a sense that, in the claimed invention, normal movement of the auxiliary burner unit is restricted by the guide structure to substantially linear movement. We are not persuaded by appellant’s argument. Claim 4 includes the limitation “wherin the auxiliary burner housing is movable in a horizontal direction”, claim 1 upon which claim 4 ultimately depends recites “wherein normal movement of said auxiliary burner unit, relative to said cart, is restricted by said guide structure to substantially linear movement.” The examiner has found that Reynolds, item A, meets the claimed auxiliary burner housing unit and that Reynolds’ guide structure includes rails, items 18 and 19. See page 4 of the answer. We find that Reynolds teaches that the rails, items 18 and 19, are linear and limit the horizontal movement of the auxiliary burner to linear horizontal movement. Accordingly, we find ample evidence to sustain the examiner’s rejection of claim 4. Rejection of claim 5. Appellant argues on page 13 of the brief: “[a]lthough Reynolds ‘853 inferentially discloses vertical movement, of the bottom burner, based on Appeal No. 2006-0376 Application No. 09/971,866 10 horizontal movement of a carriage and attached inclined lift bar to which a bottom burner is attached, the vertical movement of the auxiliary burner of the claimed invention, associated with a guide structure, is not the same as disclosed by Reynolds ‘853.” We disagree with appellant’s characterization of Reynolds. Claim 5 includes the limitation “wherein the auxiliary burner housing is movable in a vertical direction” claim 1 upon which claim 4 ultimately depends recites “wherein normal movement of said auxiliary burner unit, relative to said cart, is restricted by said guide structure to substantially linear movement.” The examiner has found that Reynolds teaches that the auxiliary burner is mounted to be vertically and horizontally adjustable. We concur with the examiner. Further, we do not find that the vertical adjustment is based upon horizontal movement of the carriage. We find that Reynolds teaches the auxiliary burner is guided in the vertical direction by lift arms, item E, and held in place by detent means, item K. See figures 1 and 4. Reynolds’ figure 1 depicts the movement of the auxiliary burner as being linear. See vertical arrow bisecting G2 and B2. Further, we find no limitation in claim 5 or the claims upon which it depends which differentiate Reynolds’ guide from the claimed guide. Accordingly, we find ample evidence to sustain the examiner’s rejection of claim 5. Appeal No. 2006-0376 Application No. 09/971,866 11 Rejection of claim 6. Appellant argues on page 14 of the brief “[I]n the claimed invention, the movement of the auxiliary burner is achieved by using a mechanism which includes a vertical guide structure having a plurality of positioning means disposed thereon, and a spring-latch attached to the auxiliary burner for temporarily and disengagably fixing the position of the auxiliary burner, on the guide structure, in relation to the cart.” Further, appellant argues that Harneit does not disclose this feature. The examiner identifies on page 5 of the answer, that Reynolds teaches the spring-loaded latch as items 48 and 49 of figure 6. We concur with the examiner. Claim 6 includes the limitation “ a spring loaded latch connected to the auxiliary burner housing, for temporarily and disengagably fixing the position of the auxiliary burner unit in relation to the cart.” As identified supra with respect to claim 5, we find that Reynolds teaches that the auxiliary burner housing is movable in the vertical direction and that item K, in conjunction with items 48 and 49, limits the vertical movement of the burner. See figure 6 and column 5, lines 1-5. Accordingly, we find ample evidence to sustain the examiner’s rejection of claim 6. Appeal No. 2006-0376 Application No. 09/971,866 12 Rejection of claim 7. On page 14 of the brief, appellant asserts that claim 7 requires “ the combination, in a single grilling apparatus, of a cart comprising guide structure having at least one rail, for guiding substantially linear movement of an auxiliary burner thereon relative to the cart…” Appellant argues, on page 15 of the brief, that though Reynolds teaches a movable bottom burner it does not have the claimed guide structure, but rather a complicated structure for positioning the burner. We are not persuaded by appellant’s arguments. Claim 7 includes the limitations “an auxiliary burner unit which is adjustably attached to the cart, said auxiliary burner unit including an auxiliary burner, and being movable to a position below the main grill burner; wherein normal movement of said auxiliary burner unit, relative to said cart, is restricted by said guide structure to substantially linear movement.” As discussed supra with respect to claim 1, we find that Reynolds teaches a movable auxiliary burner unit, item B2 and as discussed with respect to claims 1, 4 and 5 we find that the movement of the burner is limited by guide structure to linear movement. Appellant has identified no feature of the claimed guide structure that differentiates it from the Reynolds’ guide structure. Accordingly, we find ample evidence to support the examiner’s rejection of claim 7. Appeal No. 2006-0376 Application No. 09/971,866 13 Rejection of claim 9. On page 15 of the brief, appellant argues with respect to claim 9 “[a]lthough Reynolds ‘853 and Harneit ‘272 disclose horizontal movement of an auxiliary burner, the combination used in the claimed invention substantially departs from Reynolds ‘853 and Harriet ‘272 disclosures.” Claim 9 is ultimately dependent upon claim 7 and contains the limitation “wherein the auxiliary burner housing is movable in a horizontal direction.” As stated supra we find that Reynolds teaches the limitations of claim 7. Further, we find that the limitations of claim 9 are similar to those of claim 4 which we also find are taught by Reynolds. Accordingly, we sustain the examiner’s rejection of claim 9 for the reasons stated supra with respect to claims 7 and 4. Rejection of claim 10. On page 16 of the brief appellant argues, with respect to claim 10, that he combination of Reynolds and Harneit does not disclose the structure of claim 10 where the auxiliary burner is guided by at least one rail to substantially linear movement in the vertical direction. We are not persuaded. Claim 10 is ultimately dependent upon claim 7 and contains the limitation “wherein the auxiliary burner housing is movable in a horizontal direction.” As stated supra, we find that Reynolds teaches the Appeal No. 2006-0376 Application No. 09/971,866 14 limitations of claim 7. Further, we find that the limitations of claim 10 are similar to those of claim 5 which we also find are taught by Reynolds. Accordingly, we sustain the examiner’s rejection of claim 9 for the reasons stated supra with respect to claims 7 and 5. Rejection of claims 12 and 14. Appellant argues, on pages 16 and 17 of the brief, that the examiner’s taking of Official Notice regarding the use of portable cooking appliance with a worktop adjacent the grill housing does not establish a prima facie case of obviousness. The examiner replies on pages 10 and 11 of the answer, that the prior office action establishes the level of ordinary skill in the art and clearly states that a person would be motivated to modify Reynolds to include a worktop for providing a convenient food preparation and staging area adjacent the cooking area. Claim 12 contains the limitation, “a worktop attached to the cart adjacent to the grill housing.” Claim 14 contains a similar limitation. The examiner does not present objective evidence and facts as to support the finding that one of ordinary skill would have been motivated to attach a work surface to the cart adjacent the grill housing of Reynolds. Accordingly, we will not sustain the Appeal No. 2006-0376 Application No. 09/971,866 15 examiner’s rejection of claims 12 and 14. Rejection of claim 13 On page 17 of the brief, appellant argues that claim 13 is similar in scope to claim 1 and includes the requirements that the auxiliary burner is height adjustable and is movable between a raised and lower position. We are not persuaded by appellant’s arguments concerning claim 13, as stated supra we find that Reynolds teaches the device of claim 1 and that Reynolds teaches that the auxiliary burner is movable linearly, in the vertical direction. We consider movement in the vertical direction to meet the claimed raising or lowering the auxiliary burner housing. Accordingly, we find ample evidence to support the examiner’s rejection of claim 13. Rejection of claim 16. Appellant argues on page 18 of the brief that claim 16 is similar in scope to claim 13 and includes the limitation of a spring loaded latch for temporarily and disengagably fixing the position of the auxiliary burner. We are not persuaded by appellant’s arguments concerning claim 16, as stated supra we find that Reynolds teaches the device of claim 13. Further, as discussed with respect to claim 6 we find that Reynolds teaches the claimed Appeal No. 2006-0376 Application No. 09/971,866 16 spring-loaded latch. Accordingly, we find ample evidence to support the examiner’s rejection of claim 16. Rejection of claim 17. Appellant argues on page 18 of the brief that claim 17 is similar in scope to claim 13 and also recites a wheeled cart. As stated supra we find that the examiner has provided ample evidence to support the rejection of claim 13 and ample evidence to support the finding of motivation to modify Reynolds to include wheels. Accordingly, we sustain the examiner’s rejection of claim 17. Rejection of claim 19. Appellant argues, on page 19 of the brief, claim 19 requires a releasing latch mechanism to free an auxiliary burner unit attached to the cart side wall that this is not taught or rendered obvious by Reynolds and Harneit. We concur with appellant. Claim 19 includes the limitation “ a releasing a latch mechanism to free an auxiliary burner unit attached to a cart side wall in a first operative position thereof, said auxiliary burner unit comprising said auxiliary burner.” On page 5 of the answer, the examiner finds that Reynolds teaches a spring-loaded latch in figure 6. As stated supra we find that this teaching meets Appeal No. 2006-0376 Application No. 09/971,866 17 the limitations directed to a spring-loaded latch in several of the claims. However, claim 19 requires a releasing mechanism on the sidewall of the cart. We do not find that Reynolds teaches the spring loaded latch in figure 6 is on the sidewall of the cart. As the examiner has not presented evidence of mounting a releasing mechanism on the sidewall of the cart, we will not sustain the examiner’s rejection of claim 19. Rejection of claim 20. On page 19 of the brief, appellant asserts that claim 20 is directed to a kit and “[a]lthough some of the components listed in claim 20 are disclosed in Reynolds ‘853 and Harneit ‘272, the total combination of kit components claimed in this claim 20 is not taught, suggested nor rendered obvious by the combination of Reynolds ‘853 and Harneit ‘272.” We are not persuaded. Appellant has not identified any feature of the kit in claim 20 that is not taught by the combination of the references. As stated above we find Reynolds teaches a gas-operated grill with a frame, a main burner, a main grill, guide structure for enabling linear movement of an auxiliary burner. Further, as stated supra we find that Harneit teaches and provides motivation to add wheels to Reynolds. Accordingly, we sustain the examiner’s rejection of claim 20. Appeal No. 2006-0376 Application No. 09/971,866 18 Rejection of claims 2, 3, 8, 11, 15 and 18. Appellant states on page 12 of the brief: Claim 2 depends from claim 1, and adds a limitation that the auxiliary burner unit comprises a burner housing wherein the auxiliary burner is housed. The total combination of claim 2, is not taught, described or suggested by Reynolds ‘853 and Harneit ‘272, considered either separately or in combination. Appellant makes similar statements regarding claims 3, 8, 11, 15 and 18. The rules in effect at the time the brief was filed specifically address the weight to be given to such statements and allegations presented by appellant. See 37 CFR § 41.37 (c) (1) (vii) (2005, which became effective September 13, 2004 (69 Fed. Reg. 49960 (Aug 12, 2004))): A statement which merely points out what a claim recites will not be considered an argument for separate patentability of the claim. Appellant has not discussed why the evidence would support a holding that claims 2, 3, 8, 11, 15 and 18 are patentable apart from claim 1. Therefore, we will sustain the examiner’s rejection of claims 2, 3, 8, 11, 15 and 18 under 35 U.S.C. § 103 as standing or falling with the patentability of claim 1. Further, with respect to claims 2, 8, and 15, the examiner has identified Reynolds' item A as the claimed auxiliary burner housing with the auxiliary burner housed therein. With respect to claim 3 the examiner has found that the auxiliary Appeal No. 2006-0376 Application No. 09/971,866 19 burner is vertically and horizontally adjustable. With respect to claim 11 the examiner has found the support frame (G2) as supporting a cooking utensil. With regard to claim 18, the examiner has found that in light of Harneit, it would have been obvious to provide covers over the grill. In the absence of appellant presenting evidence or arguments to rebut the examiner’s findings we consider the examiner to have established a prima facie case of obviousness. Conclusion Only those arguments actually made by appellant have been considered in this decision. Arguments which appellant could have made but chose not to make in the brief or by filing a reply brief have not been considered and are deemed waived by appellants (see 37 CFR § 41.37(c)(vii)). Support for this rule has been demonstrated by our reviewing court in In re Berger, 279 F.3d 975, 984, 61 USPQ2d 1523, 1528-1529 (Fed. Cir. 2002) wherein the Federal Circuit stated that because the appellant did not contest the merits of the rejections in his brief to the Federal Circuit, the issue is waived. See also In re Watts, 354 F.3d 1362, 1368, 69 USPQ2d 1453, 1458 (Fed. Cir. 2004). Appeal No. 2006-0376 Application No. 09/971,866 20 In summary, we sustain the examiner’s rejections of claims 1 through 11, 13, 15 through 18 and 20 under 35 U.S.C. § 103. However, we will not sustain the examiner’s rejection of claims 12, 14 and 19 under 35 U.S.C. §103. The decision of the examiner is affirmed-in-part. No time period for taking any subsequent action in connection with this appeal may be extended under 37 CFR § 1.136(a)(1)(iv). AFFIRMED-IN-PART MURRIEL E. CRAWFORD ) Administrative Patent Judge ) ) ) ) BOARD OF PATENT ANITA PELLMAN GROSS ) APPEALS AND Administrative Patent Judge ) INTERFERENCES ) ) ) ROBERT E. NAPPI ) Administrative Patent Judge ) REN/gjh Appeal No. 2006-0376 Application No. 09/971,866 21 CARRIER, BLACKMAN AND ASSOCIATES 24101 NOVI ROAD NOVI, MI 48375 Copy with citationCopy as parenthetical citation