Ex Parte Schultz et al

Patent Trial and Appeal Board

Jan 29, 2018

13808222 (P.T.A.B. Jan. 29, 2018)

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.
13/808,222 01/03/2013 Horst Schultz SCHULTZ-2 4778
20151 7590 01/31/2018
HENRY M FEIEREISEN, LLC
HENRY M FEIEREISEN
708 THIRD AVENUE
SUITE 1501
NEW YORK, NY 10017
EXAMINER
LAUX, DAVID J
ART UNIT PAPER NUMBER
3743
NOTIFICATION DATE DELIVERY MODE
01/31/2018 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):
INFO @ FEIEREISENLLC.COM
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte HORST SCHULTZ and SIEGFRIED LAPAWA
Appeal 2017-003166
Application 13/808,222
Technology Center 3700
Before MICHAEL L. HOELTER, THOMAS F. SMEGAL, and
JEFFREY A. STEPHENS, Administrative Patent Judges.
SMEGAL, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Horst Schultz and Siegfried Lapawa (Appellants)1 seek our review
under 35 U.S.C. § 134 of the Examiner’s rejection2 under 35 U.S.C. § 103(a)
of claims 17, 26, 31, and 40 as unpatentable over von der Becke (US
4,627,417, iss. Dec. 9, 1986) and Miki (US 4,148,250, iss. Apr. 10, 1979).3
We have jurisdiction under 35 U.S.C. § 6(b).
1 According to Appellants, the real party in interest is SILAG Handel
AG. Appeal Br. 2.
2 Appeal is taken from the adverse decision of the Examiner as set forth in
the Final Office Action, dated November 27, 2015 (“Final Act.”).
3Claims 1—16 have been canceled. Claims 18, 19, 22, 24, 25, 27, 30, 32, 33,
36, 38, 39, and 42^44 were withdrawn from consideration by Appellants.
Amendment filed November 5, 2015. Claims 20, 21, 23, 28, 29, 34, 35, and
37 are objected to as being dependent on a rejected base claim. See Final
Act. 3. The status of claims 41—43 is somewhat unclear. Claim 41 is not
Appeal 2017-003166
Application 13/808,222
We REVERSE and enter a NEW GROUND OF REJECTION of
claim 17 pursuant to our authority under 37 C.F.R. § 41.50(b).
CLAIMED SUBJECT MATTER
Claims 17 and 31 are independent. Claim 17 is reproduced below and
illustrates the claimed subject matter, with disputed limitations emphasized.
17. A lid for a pressure cooking pot, comprising:
a lower lid module including an edged lid fitted on a
pouring edge of the pressure cooking pot, and a seal sealing the
lower lid module when fitted on the pouring edge; and
an upper lid module including a closure unit movable
between a first position in which the upper and lower lid modules
are locked to one another and a second position in which the
upper module is separable from the lower module, and fixing
claws coupled to the closure unit and engaging under the pouring
edge of the pressure cooking pot, when the closure unit is in the
first position.
ANALYSIS
Obviousness of Claims 17, 26, 31, and 40 over von der Becke and
Miki
We are persuaded by Appellants’ arguments that the Examiner failed
to establish a prima facie showing of obviousness in rejecting claims 17, 26,
31, and 40 over von der Becke and Miki.
addressed in the Final Action, but was perhaps intended to be objected to
with claim 35, from which claim 41 depends. Claims 42 and 43, although
previously withdrawn by Appellants, have consistently been objected to as
being dependent on a rejected base claim. See, e.g., Final Act. 2. Because
there is no rejection of claims 41—43 before us, we leave to the Examiner
and Appellants to clarity the status of these claims should there be further
prosecution.
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Application 13/808,222
Regarding claim 17, the Examiner finds that von der Becke discloses
a lid for a pressure cooking pot, including upper and lower lid modules, and
that Miki teaches “an upper lid module (15) including a closure unit (19, 20)
movable between a first position in which the upper (15) and lower (11) lid
modules are locked to one another and a second position in which the upper
module (15) is separable from the lower module (11).” Final Act. 2—3.
From the foregoing, the Examiner determines that it would have been
obvious “to combine the pressure cooker of von der Becke with the
separable lid modules of Miki because such a combination would have had
the added benefit of making the lids easier to clean by allowing a user to
have better access to the lids when they are separated.” Id. at 3.
In taking issue with the Examiner’s findings and conclusions,
Appellants contend, “the principle of operation of the lid of van der Becke
relies on the presence of the swivel mechanism 12 arranged between and
connecting the inner and outer lid 6, 7 to each other ... for implementing the
functional principle of the lid of von der Becke,” while “[modifying von der
Becke with the teaching of Miki would mean the removal of the swivel
mechanism 12,” and that “[wjithout the swivel mechanism the device of von
der Becke would no longer be capable to perform its intended purpose, i.e.,
enable swiveling of the outer lid relative to the inner lid while at the same
time causing separation of the half lids 7a and 7b.” Appeal Br. 4.
In response, the Examiner contends that “[bjecause modifying von der
Becke with the teaching of Miki would result in a steam pressure cooker
having separable upper and lower lids operated by a handle instead of a
swivel mechanism, the principle operation of von der Becke would be
maintained.” Ans. 3.
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Application 13/808,222
However, we agree with Appellants that
[i]t is exactly the absence of the swivel mechanism, which the
Examiner's modification of von der Becke would require, that
would cause the loss of the operating principle that is intended
and relied upon in von der Becke, i. e., providing a cover unit
that behaves as a single lid that is simply engaged and released
from the pot by swiveling between the two positions without
having to reassemble the individual lid units every time.
Reply Br. 2.
We find that the Examiner does not explain how von der Becke’s lid,
separable as per Miki, would still retain its swivel mechanism between the
two lids. Thus the Examiner fails to provide a persuasive reason for
replacing the swivel mechanism of von der Becke with the handle of Miki
for separating the upper and lower lid modules of von der Becke. Absent
some articulated rationale for doing so, the Examiner’s conclusory assertion
is inadequate to support a conclusion of obviousness. See Tec Air Inc. v.
Denso Mfg. Michigan Inc., 192 F.3d 1353, 1360 (Fed. Cir. 1999) which
stands for the proposition that where the proposed modification would
render the prior art invention being modified inoperable for its intended
purpose, the proposed modification would not have been obvious. Similarly,
In re Ratti, 270 F.2d 810 (CCPA 1959) stands for the proposition that if a
proposed modification or combination of the prior art would change the
principle of operation of the prior art invention being modified, then the
teachings of the references are not sufficient to render the claims prima facie
obvious.
For the foregoing reasons, we do not sustain the Examiner’s rejection
of claims 17, 26, 31, and 40 over von der Becke and Miki.
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Application 13/808,222
NEW GROUND OF REJECTION
Anticipation of the subject matter of claim 17.
Pursuant to our authority under 37 C.F.R. § 41.50(b), we enter a NEW
GROUND OF REJECTION of independent claim 17 under 35 U.S.C.
§ 102(b) as being anticipated by von der Becke.
We find that von der Becke discloses each and every feature
limitation recited in claim 17, including an upper lid module having “a
second position in which the upper module is separable from the lower
module.” See Appeal Br. 7, Claims App.; see also von der Becke, col. 5,11.
56—60, disclosing that half lids 7a and 7b “can be shifted relative to the
lower lid (6).”
We determine the scope of the claims in a patent application by giving
claims “their broadest reasonable interpretation consistent with the
specification” and “in light of the specification as it would be interpreted by
one of ordinary skill in the art.” In re Am. Acad, of Sci. Tech Ctr., 367 F.3d
1359, 1364 (Fed. Cir. 2004). “Construing claims broadly during prosecution
is not unfair to the applicant. . . because the applicant has the opportunity to
amend the claims to obtain more precise claim coverage.” Id. Thus “[it] is
the [Appellants’] burden to precisely define the invention, not the PTO’s.”
In re Morris, 127 F.3d 1048, 1056 (Fed. Cir. 1997).
Appellants have not pointed to any lexicographic definition in the
Specification of the term “separable” or identified any other disclosure
therein that is inconsistent with their contention at page 5 of the Appeal
Brief, that “[a]s can be clearly seen in FIG. 4 of von der Becke the swivel
mechanism of the lids already enables separation of the upper and lower lid
6, 7 in a transverse direction and in addition the upper and lower lid move
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Application 13/808,222
apart from each other in the vertical direction” (citing von der Becke, col. 1,
1. 56).
Although we have exercised our discretion under 37 C.F.R. § 41.50(b)
in rejecting only claim 17 under this new ground, we leave claims 26, 31,
and 40 for the Examiner’s consideration in any further prosecution.
Although the Board is authorized to reject claims under 37 C.F.R.
§ 41.50(b), no inference should be drawn when the Board elects not to do so.
See MPEP 1213.03.
DECISION
The rejection of claims 17, 26, 31 and 40 as obvious over von der
Becke and Miki under 35 U.S.C. § 103(a) is REVERSED.
We enter a NEW GROUND OF REJECTION of claim 17 under 35
U.S.C. § 102(b) as anticipated by Becke.
This decision contains a new ground 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.” 37 C.F.R. § 41.50(b) also provides that the Appellants, WITHIN
TWO MONTHS FROM THE DATE OF THE DECISION, must exercise
one of the following two options with respect to the new ground 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
prosecution 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. . . .
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Further guidance on responding to a new ground of rejection can be
found in the Manual of Patent Examining Procedure § 1214.01.
REVERSED; 37 C.F.R, $ 41.50(b)
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