Ex Parte Viroli et alDownload PDFPatent Trials and Appeals BoardMay 22, 201914412078 - (D) (P.T.A.B. May. 22, 2019) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 14/412,078 12/30/2014 Alex Viroli 116 7590 05/24/2019 PEARNE & GORDON LLP 1801 EAST 9TH STREET SUITE 1200 CLEVELAND, OH 44114-3108 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. AEG-53775 6924 EXAMINER VAN,QUANGT ART UNIT PAPER NUMBER 3761 NOTIFICATION DATE DELIVERY MODE 05/24/2019 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): patdocket@peame.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte ALEX VIROLI, MASSIMO NOSTRO, LAURENT JEANNETEAU, and ANDREA ROSSI Appeal2018-005754 1 Application 14/412,078 Technology Center 3700 Before MURRIEL E. CRAWFORD, MICHAEL W. KIM, and PHILIP J. HOFFMANN, Administrative Patent Judges. CRAWFORD, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE This is an appeal from the Non-Final rejection of twice-rejected claims 1-17. We REVERSE. The invention relates to "[a] method for controlling an induction cooking hob with a pot detection system." Spec. 1, lines 3-5. 1 The Appellants identify Electrolux Home Products Corporation N.V. as the real party in interest. Appeal Br. 2. Appeal2018-005754 Application 14/412,078 Claim 1 is illustrative: 1. A method for controlling an induction cooking hob with a pot detection system and a user interface, wherein said method comprises the following steps: activating the induction cooking hob by touching a main switch by a user, starting automatically the pot detection system by a control unit of the induction cooking hob, detecting at least one pot and/ or pan on a cooking surface of the cooking hob, or detecting if no pot or pan is placed on said cooking surface, by the pot detection system, deactivating the pot detection system after a predetermined time interval if no pot or pan or if no further pot or pan, respectively, has been detected on the cooking surface within said time interval, activating a deactivation indicator showing to the user that the pot detection system is deactivated, and providing an opportunity to reactivate the pot detection system by the user. The Examiner rejected claims 1-17 under 35 U.S.C. § 112, first paragraph, as failing to comply with the enablement requirement. The Examiner rejected claims 1-10 and 12-17 under 35 U.S.C. § I03(a) as unpatentable over Hazan et al. (US 5,243,172, iss. Sept. 7, 1993) ("Hazan"), and Kulp, JR., et al. (US 2013/0200069 Al, pub. Aug. 8, 2013) ("Kulp"). The Examiner rejected claim 11 under 35 U.S.C. § I03(a) as unpatentable over Hazan, Kulp, and Sham (US 5,680,810, iss. Oct. 28, 1997). 2 Appeal2018-005754 Application 14/412,078 ANALYSIS Enablement Requirement Reiection We are persuaded by the Appellants' argument that the Examiner sets forth no analysis to demonstrate that undue experimentation would be required in order to practice the claimed invention. Appeal Br. 8; see also Reply Br. 2. The standard for determining whether the specification meets the enablement requirement was cast in the Supreme Court decision of Minerals Separation v. Hyde, 242 U.S. 261,270 (1916), which postured the question: is the experimentation needed to practice the invention undue or unreasonable? Determining enablement is a question of law based on underlying factual findings. In re Vaeck, 947 F.2d 488,495 (Fed. Cir. 1991). The determination that "undue experimentation" would have been needed to make and use the claimed invention is not a single, simple factual determination. Rather, it is a conclusion that may be reached by weighing the following factual considerations: (A) The breadth of the claims; (B) The nature of the invention; (C) The state of the prior art; (D) The level of one of ordinary skill; (E) The level of predictability in the art; (F) The amount of direction provided by the inventor; (G) The existence of working examples; and (H) The quantity of experimentation needed to make or use the invention based on the content of the disclosure. In re Wands, 858 F.2d 731, 737 (Fed. Cir. 1988). The Examiner finds that the Specification discloses a pot detection system as simply a black box with a method comprising the steps of starting automatically the black box, and detecting at least one pot and/or pan by the 3 Appeal2018-005754 Application 14/412,078 pot detection system, but is silent to how the actual detecting occurs. Non- Final Act. 2-3; see also Answer 3. However, in the Non-Final Action and Answer, the Examiner does not advance any analysis of undue experimentation under the Wands factors. Instead, confusingly, the Examiner states "there is insufficient indication in the specification that the Applicant had no possession of' the claimed invention. Non-Final Act. 3; see also Answer 3. The Examiner is confusing the enablement requirement with the written description requirement in 35 U.S.C. § 112, first paragraph, and fails to adequately support the enablement rejection with an analysis of the Wands factors. For this reason, we do not sustain the rejection of claims under 35 U.S.C. § 112. Obviousness Reiections We are persuaded by the Appellants' argument that Hazan fails to disclose "deactivating the pot detection system after a predetermined time interval if no pot or pan ... or if no further pot or pan, respectively, has been detected on the cooking surface ... within said time interval," and "providing an opportunity to reactivate the pot detection system by the user." Appeal Br. 15. Specifically, the Appellants assert that, in Hazan, at no point is the presence detector 20 deactivated. Id. at 13; see also Reply Br. 3. As evidence, the Appellants note, "in Hazan the presence detector 20 remains active even though Hazan's system will not allow power to be restored when that detector again detects the presence of a pot; e.g. at tl' after the expiration of time window F, in indirectly-cited Figure 2B. Id. Hazan discloses that "the presence of a utensil can be detected in a continuous process." Hazan, col. 2, lines 9-10 ( emphasis added). The cited 4 Appeal2018-005754 Application 14/412,078 portion of Hazan, describing Figure 2B, does not indicate that the presence detection 20 element is ever "deactivated," as claimed. See Hazan, col. 4, lines 6-35. The Examiner cited Hazan's column 4, lines 10-24 as disclosing the claimed "deactivating," and lines 25-35 as disclosing the claimed "opportunity to reactivate." Non-Final Act. 4; see also Answer 5. The cited section, however, does not disclose deactivating the continuously-operating presence detection system. It appears the Examiner does not think that "deactivate" means "shut off." Answer 6 ("Nowhere in the claims claimed that the presence detector has to be shut off when the pot detection system is became not activated (deactivated)."). However, "shut off' is a perfectly-good synonym for "deactivate." See MERRIAM-WEBSTER ONLINE DICTIONARY, https://www.merriam-webster.com/dictionary/deactivate (last retrieved on April 27, 2019). Thus, the Examiner does not support adequately the obviousness rejection of claims 1-10 and 12-17. 2 For these reasons, we do not sustain the obviousness rejection of claims 1-10 and 12-17. Because the Examiner does not establish on the record that Sham remedies the shortcomings in Hazan, we also do not sustain the obviousness rejection of claim 11. 2 Additionally, only claim 1 is addressed, though the rejection covers all these claims. See Appeal Br. 3--4. 5 Appeal2018-005754 Application 14/412,078 DECISION We reverse the rejection of claims 1-17 under 35 U.S.C. § 112. We reverse the rejections of claims 1-17 under 35 U.S.C. § 103(a). REVERSED 6 Copy with citationCopy as parenthetical citation