Ex Parte Zelek et alDownload PDFPatent Trial and Appeal BoardFeb 27, 201310942731 (P.T.A.B. Feb. 27, 2013) Copy Citation 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. 10/942,731 09/16/2004 Leonard G. Zelek WEB-935-US 9751 61215 7590 02/27/2013 DAVID I. ROCHE BAKER & MCKENZIE LLP 300 EAST RANDOLPH STREET CHICAGO, IL 60601 EXAMINER BASICHAS, ALFRED ART UNIT PAPER NUMBER 3743 MAIL DATE DELIVERY MODE 02/27/2013 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ________________ Ex parte LEONARD G. ZELEK and ADRIAN A. BRUNO ________________ Appeal 2010-003857 Application 10/942,731 Technology Center 3700 ________________ Before JENNIFER D. BAHR, STEVEN D.A. McCARTHY and CHARLES N. GREENHUT, Administrative Patent Judges. McCARTHY, Administrative Patent Judge. DECISION ON APPEAL The Appellants1 appeal under 35 U.S.C. § 134 from the rejection of 1 claims 1-30. Claim 21 is cancelled. We have jurisdiction of the appeal 2 under 35 U.S.C. § 6(b). 3 We do not sustain the rejection of claims 1-24 and 26-30. We dismiss 4 the appeal as to claim 25. Pursuant to our authority under 37 C.F.R. 5 § 41.50(b), we enter NEW GROUNDS OF REJECTION against claim 16 1 The Appellants identify the real party in interest as Weber-Stephens Products Co. of Palatine, Illinois. Appeal 2010-003857 Application 10/942,731 2 under 35 U.S.C. § 103(a) as being unpatentable over Alden (US 6,705,307 1 B2, issued Mar. 16, 2004). 2 Claims 1, 20, 25 and 28 are independent. Claim 1 recites: 3 1. A support frame assembly for 4 supporting a barbecue firebox partially surrounded 5 by a work structure of a built-in gas barbecue grill 6 assembly supported on a floor member, 7 comprising: 8 a first, generally vertically oriented frame 9 member having a first end, a second end, and a 10 first mating portion for mating with the barbecue 11 firebox for the built-in gas barbecue grill, 12 the first end of the first frame 13 member being generally adjacent the 14 barbecue firebox, 15 the second end of the first 16 frame member being generally 17 adjacent the floor member, 18 the first mating portion of the 19 first frame member extending 20 transversely from the first end of the 21 first frame member thereby forming a 22 ledge for mating with the barbecue 23 firebox; 24 a second, generally vertically oriented frame 25 member having a first end, a second end, and a 26 first mating portion for mating with the barbecue 27 firebox for the built-in gas barbecue grill, 28 the first end of the second 29 frame member being adjacent the 30 barbecue firebox, 31 the second end of the second 32 frame member being generally 33 adjacent the floor member, 34 Appeal 2010-003857 Application 10/942,731 3 the first mating portion of the 1 second frame member extending 2 transversely from the first end of the 3 second frame member thereby 4 forming a ledge for mating with the 5 barbecue firebox; 6 wherein at least one of the first and second 7 frame members have a second mating portion for 8 mating with the work structure of the built-in gas 9 barbecue grill and for connecting the support 10 frame assembly to the built-in barbecue grill work 11 structure; and 12 a connection member joining the first and 13 second frame members. 14 The Examiner rejects under § 103(a) claims 1-8 and 14-30 as being 15 unpatentable over Alden and either Williams (US 2,787,260, issued April 2, 16 1957) or Muldoon (US 6,923,172 B2, issued Aug. 2, 2005); and claims 9-13 17 as being unpatentable over Alden; either Williams or Muldoon; and official 18 notice that: 19 It is well settled that stoves and burners require 20 appropriate venting for at least safety reasons, such 21 as avoiding fire hazards created by hotspots. The 22 specific placement of the vents is based on spatial 23 and relational orientation of the burner/stove 24 components in relation to other structures and 25 devices and potential fire hazards. It is well 26 known within the knowledge and ability of one 27 having ordinary skill in the art to determine the 28 appropriate placement of [the] vents. 29 (Ans. 6). 30 Appeal 2010-003857 Application 10/942,731 4 DISMISSAL OF THE APPEAL AS TO CLAIM 25 1 The Notice of Appeal filed June 27, 2008 states that the Appellants 2 “hereby [appeal] to the Board of Patent Appeals and Interferences [now the 3 Patent Trial and Appeal Board] from the last decision of the examiner.” 4 Page 3 of the Appeal Brief filed October 27, 2008 states that the “[t]he 5 Appellants are appealing the rejection of claims 1-20 and 22-24 and 26-30.” 6 The Appeal Brief as well as the Reply Brief filed March 6,2009 explicitly 7 states which claims are addressed by each argument (see, e.g., Br. 11-16) 8 and does not include any argument addressed to the rejection of claim 25. 9 Since the Appellants’ submissions unequivocally indicate that they do not 10 intend to pursue an appeal from the rejection of claim 25, we DISMISS the 11 appeal as to that claim. See Ex parte Ghuman, 88 USPQ2d 1478, 1480 12 (BPAI 2008)(precedential). We note that § 1215.03 of the MANUAL OF 13 PATENT EXAMINING PROCEDURE states that a “withdrawal of the appeal as to 14 some of the claims on appeal operates as an authorization to cancel those 15 claims from the application.” 16 17 FINDINGS OF FACT 18 Alden describes a barbecue grill 10 comprising a cooking vessel 12 19 secured to a portable cart 14. (Alden, col. 6, ll. 54-57). As depicted in 20 Figures 1 and 13 of Alden, the portable cart 14 appears to include first and 21 second generally vertically oriented frame members (that is, side walls not 22 identified by specific reference numerals) as well as a back wall (also not 23 identified by a specific reference numeral) joining the two side walls. 24 Although Alden’s drawing figures depict the structure 14 as a portable cart, 25 Alden teaches that “any grill support structure 14, including a stationary 26 Appeal 2010-003857 Application 10/942,731 5 support structure may be utilized.” (Alden, col. 6, ll. 54-57). Alden does 1 not appear to describe any frame members independent of the cooking vessel 2 12 and the portable cart 14 having mating portions for mating with both the 3 cooking vessel 12 and a work structure (that is, support structure) 4 independent of the portable cart 14. 5 Williams describes an outdoor fireplace (Williams, col. 1, ll. 16-18) 6 including a masonry part (Williams, col. 1, ll. 60-61) and a detachable metal 7 fire box (Williams, col. 2, l. 39). Horizontal support flanges 22, 23 support 8 the detachable metal fire box in an opening between two horizontal slabs 13, 9 14 which are placed on top of a body 11 of the masonry portion. (See 10 Williams, col. 1, ll. 71-72; col. 2, ll. 39-47; and fig. 4). Williams does not 11 appear to describe any frame members independent of the detachable metal 12 fire box and the masonry portion having mating portions for mating with 13 both the fire box and a work structure independent of the masonry portion. 14 Muldoon describes a barbecue island 10 including stacked courses 16 15 of masonry blocks 14. The barbecue island 10 also includes a grill insert 26 16 mounted into a firebox support structure integrated with the stacked courses 17 16. (Muldoon, col. 3, ll. 37-44). The grill insert 26 includes a firebox 30. 18 The grill insert also includes support rails 46 in the form of relatively flat 19 metal strips fixed horizontally to the outer front and rear surfaces of the 20 firebox 30. (Muldoon, col. 4, ll. 54-58). A plurality of standoff brackets 50 21 grasp the support rails 46 along upper portions of the standoff brackets 50. 22 (Muldoon, col. 5, ll. 3-10). As depicted in Figures 8 and 12 of Muldoon, 23 lower portions of the standoff brackets 50 rest on masonry blocks 14 of the 24 plurality of stacked courses 16 to mount the grill insert 26 on the stacked 25 courses 16. 26 Appeal 2010-003857 Application 10/942,731 6 THE EXAMINER’S REJECTION OF CLAIMS 1-20, 22-24 AND 27-30 1 Since claim 1 recites “wherein at least one of the first and second 2 frame members have a second mating portion for mating with the work 3 structure of the built-in gas barbecue grill,” the claim is limited to a frame 4 support assembly including first and second frame members capable of 5 mating with a work structure independent of the first and second frame 6 members. Likewise, since claim 20 recites a support assembly including “a 7 second mating portion for mating with a work structure of the built-in gas 8 barbecue grill,” the claim is limited to a support assembly capable of mating 9 with a work structure independent of the support frame. Claim 27 recites “a 10 work structure of the built-in grill supporting the support frame assembly.” 11 This recitation implies that claim 27 is limited to a built-in gas barbecue grill 12 assembly including a support frame assembly and a work structure 13 independent of the support frame assembly. Claim 28 recites a method 14 including the step of “connecting the assembled support frame assembly to 15 the built-in barbecue grill work structure.” 16 The Examiner identifies the portable cart 14 of Alden as 17 corresponding to the support frame assembly recited in claim 1 and to the 18 support assembly recited in claim 20. The Examiner also identifies the 19 portable cart 14 of Alden as corresponding to the work structure recited in 20 both claim 1 and claim 20. (See Ans. 3, 5 and 9). The Examiner does not 21 clearly identify what portion of the portable cart 14 might correspond to the 22 recited support frame assembly or support assembly; and what separate 23 portion of the portable cart 14 might correspond to the recited work 24 structure. Hence, the Appellants are correct in pointing out that the 25 Examiner fails to explain how Alden describes a support frame assembly or 26 Appeal 2010-003857 Application 10/942,731 7 support assembly capable of mating with a work structure independent of the 1 support frame assembly or support assembly. (See App. Br. 13). The 2 Examiner’s reasoning that it would have been obvious “to incorporate the 3 claimed ‘built-in’ aspect taught by Williams or Muldoon into the invention 4 disclosed by Alden, so as to provide a more permanent structure” (Ans. 7) 5 fails to adequately explain why it would have been obvious to provide a 6 support frame assembly or support assembly capable of mating with an 7 independent work structure. 8 Therefore, we do not sustain the rejection of claims 1-8, 14-24 and 27-9 30 under § 103(a) as being unpatentable over Alden and either Williams or 10 Muldoon. Since the official notice set forth by the Examiner on page 8 of 11 the Answer does not remedy this deficiency in the combined teachings either 12 of Alden and Williams or of Alden and Muldoon, we do not sustain the 13 rejection of claims 9-13 under § 103(a) as being unpatentable over Alden; 14 either Williams or Muldoon; and the official notice. 15 16 NEW GROUND OF REJECTION OF CLAIM 1 17 The term “built-in gas barbecue grill” is recited in both the preamble 18 and the body of claim 1 as the object various portions of the claimed frame 19 assembly are for mating with, or connecting to. That is, the “built-in gas 20 barbecue grill” is consistently recited only as an object that the frame is 21 intended to be used with. Such recitations can, and in this case do, serve to 22 add limitations to claimed apparatus by describing something about its 23 structure. See K-2 Corp. v. Salomon S.A., 191 F.3d 1356, 1363 (Fed. Cir. 24 1999). However, reading claim 1 as a whole, it is clearly directed to only the 25 Appeal 2010-003857 Application 10/942,731 8 support frame and not the combination of the support frame and “built-in gas 1 barbeque grill.” 2 The Appellants do not formally define the term “built-in gas barbecue 3 grill assembly” in their Specification or provide any evidence concerning 4 how the term might commonly be used by one of ordinary skill in the art. 5 Absent such evidence, the broadest reasonable interpretation of the term 6 “built-in gas barbecue grill assembly” is sufficiently broad to encompass a 7 variety of structures to which the support frame can mate or connect. 8 Although Alden’s drawing figures depict the structure 14 as a portable cart, 9 Alden expressly suggests that “any grill support structure 14, including a 10 stationary support structure may be utilized.” (Alden, col. 6, ll. 54-57). 11 Therefore, one of ordinary skill in the art would have had reason to modify 12 Alden’s barbecue grill 10 so as to render the structure shown as the portable 13 cart 14 stationary, such as by removing the wheels. The resulting structure 14 would have satisfied all of the limitations of claim 1. 15 Alden describes a support frame for supporting a barbecue firebox or 16 cooking vessel 12. This support frame would have comprised the portion of 17 the portable cart 14 excluding a work surface (no reference numeral) and a 18 side burner assembly 102, which Figure 13 of Alden depicts as lying to the 19 left and right of the cooking vessel 12. Alden’s frame could support a 20 firebox partially surrounded by a work structure of a built-in gas barbeque 21 grill. 22 The left and right side walls of Alden’s portable cart 14 satisfy the 23 limitations reciting first and second generally vertically oriented frame 24 members. The upper portions of the left and right side walls would 25 correspond to the first ends of the recited first and second generally 26 Appeal 2010-003857 Application 10/942,731 9 vertically oriented frame members. Similarly, the lower portions of the of 1 the left and right side walls would correspond to the second ends of the 2 recited first and second generally vertically oriented frame members. As 3 depicted in Figure 13 of Alden, the top end portions of the left and right side 4 walls appear to include first mating portions defined by horizontally 5 extending ledges for receiving, and mating with, the sides of the firebox or 6 cooking vessel 12. Figure 13 also depicts the portable cart 14 as including 7 second mating portions in the form of pairs of beams (no reference numeral) 8 extending horizontally from the two side walls of the portable cart 14 for 9 mating with, and connecting to, a work structure of the built-in gas barbeque 10 grill (such as the work surface or the side burner assembly 102). A 11 horizontal bar (no reference numeral) extending across the lower front edge 12 of the portable cart 14 corresponds to the recited connection member joining 13 the first and second frame members, that is, the left and right side walls of 14 the portable cart 14. The proposed modification to the barbecue grill 10 15 described by Alden so as to render the structure shown as the portable cart 16 14 stationary, such as by removing the wheels, would not have required 17 modification of these features. 18 Therefore, pursuant to our authority under 37 C.F.R. § 41.50(b), we 19 enter new grounds of rejection against claim 1 under § 103(a) as being 20 unpatentable over Alden. No inference should be drawn from the Board’s 21 22 Appeal 2010-003857 Application 10/942,731 10 failure to make a new ground of rejection for other claims.2 With regard to 1 appeals from adverse decisions of examiners, we are primarily a tribunal of 2 review, and, as such, we leave it to the Examiner to further consider the 3 patentability of the remaining claims in light of the prior art and this new 4 ground of rejection. 5 6 CLAIM 26 7 Claim 26 recites the “built-in gas barbecue grill assembly of claim 25, 8 further comprising a vent opening between a rear of the firebox and a back 9 panel of the support frame.” The Appellants’ use of the term “vent opening” 10 in claim 26 is confusing. The Specification appears to identify different 11 structure by the terms “vent opening” and “vent area.” (See, e.g., Spec., 12 para. 0040 and fig. 4). It appears that the Appellants intended to recite a 13 vent area between the rear of the firebox and a back panel of the support 14 frame, corresponding to the vent area 76 mentioned in the Specification. 15 (See Spec., para. 0039). In the event of continued prosecution, the 16 Appellants may wish to amend claim 26 to substitute the term “vent area” 17 for the term “vent opening.” 18 With respect to claim 26, the Examiner finds that “Alden clearly 19 shows vent openings on the back panel in figure 13, just above numbers 96 20 and 100.” (Ans. 9). While the finding appears correct, the Appellants also 21 are correct in pointing out that these vents are on the back panel as opposed 22 to between a rear of the firebox and the back panel. (See App. Br. 15). 23 2 See 37 C.F.R. § 41.50(b). See also MANUAL OF PATENT EXAMINING PROCEDURE, 8th ed., rev. Aug. 2012, § 1213.02 (“Since the exercise of authority under 37 CFR 41.50(b) is discretionary, no inference should be drawn from a failure to exercise that discretion.”) Appeal 2010-003857 Application 10/942,731 11 Since the Examiner provides no persuasive explanation why one of ordinary 1 skill in the art might have had reason to modify Alden’s barbecue grill 10 to 2 include a vent opening between a rear of the firebox and a back panel of the 3 support frame, we do not sustain the rejection of claim 26. 4 5 DECISION 6 We REVERSE the Examiner’s decision rejecting claims 1-24 and 26-7 30. 8 We DISMISS the appeal as to claim 25. 9 Pursuant to our authority under 37 C.F.R. § 41.50(b) (2008), we enter 10 NEW GROUNDS OF REJECTION against claim 1 under § 103(a) as being 11 unpatentable over Alden. 37 C.F.R. § 41.50(b) (2008) provides that, “[a] 12 new ground of rejection pursuant to this paragraph shall not be considered 13 final for judicial review.” 14 Regarding the new ground of rejection, the Appellants must, WITHIN 15 TWO MONTHS FROM THE DATE OF THE DECISION, exercise one of 16 the following options with respect to the new ground of rejection, in order to 17 avoid termination of the appeal as to the rejected claims: 18 (1) Reopen prosecution. Submit an 19 appropriate amendment of the claims so rejected or 20 new evidence relating to the claims so rejected, or 21 both, and have the matter reconsidered by the 22 examiner, in which event the proceeding will be 23 remanded to the examiner. . . . 24 (2) Request rehearing. Request that the 25 proceeding be reheard under § 41.52 by the Board 26 upon the same record. . . . 27 28 Appeal 2010-003857 Application 10/942,731 12 No time period for taking any subsequent action in connection with 1 this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv) (2008). 2 3 REVERSED; 37 C.F.R. § 41.50(b) 4 5 6 7 Klh 8 Copy with citationCopy as parenthetical citation