IN THE UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD THE BRINKMANN CORPORATION, Petitioner,

Transcription

1 IN THE UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD THE BRINKMANN CORPORATION, Petitioner, v. A&J MANUFACTURING, LLC Patent Owner. U.S. Patent No. 8,381,712 Issue Date: February 26, 2013 Title: SIMULTANEOUS MULTIPLE COOKING MODE BARBECUE GRILL Inter Partes Review No. IPR2014- Attorney Docket No. PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO. 8,381,712

2 TABLE OF CONTENTS I. INTRODUCTION II. MANDATORY NOTICES A. Real Party-In-Interest (37 C.F.R. 42.8(b)(1)) B. Related Matters (37 C.F.R. 42.8(b)(2)) C. Designation of Lead and Back-Up Counsel (37 C.F.R. 42.8(b)(3)) D. Service Information (37 C.F.R. 42.8(b)(4)) III. GROUNDS FOR STANDING IV. PAYMENT OF FEES V. STATEMENT OF RELIEF REQUESTED VI. ORDINARY SKILL IN THE ART VII. CLAIM CONSTRUCTION VIII. IDENTIFICATION OF CHALLENGE A. Ground 1: Claims 1, 4-10 & are Invalid as Obvious Over Koziol in View of Holland Independent claim Independent claim Dependent claims 4 & Dependent claims 5 & Dependent claim Dependent claims 7 & Dependent claim SMRH: i

3 8. Dependent claims 9 & B. Ground 2: Claims 2 & 11 are Invalid as Obvious Over Koziol in View of Holland and Ducate C. Ground 3: Claims 3 & 12 are Invalid as Obvious Over Koziol in View of Holland and Milloy D. Ground 4: Claims are Invalid as Obvious Over Koziol in View of Holland and Oliver Independent claim Dependent claim Dependent claim Dependent claim E. Ground 5: Claims 1, 4, 5, 7-9, 10 & are Invalid as Obvious Over Oliver in View of Holland Independent claim Independent claim Dependent claims 4 & Dependent claims 5 & Dependent claims 7 & Dependent claim Dependent claims 9 & Independent claim Dependent claim Dependent claim Dependent claim SMRH: ii

4 F. Ground 6: Claims 2, 6 & 11 are Invalid as Obvious Over Oliver in View of Holland and Ducate Dependent claims 2 & Dependent claim G. Ground 7: Claims 3 & 12 are Invalid as Obvious Over Oliver in View of Holland and Milloy Dependent claims 3 & H. Ground 8: Claims 1, 2, 4, 5, 7-11 & are Invalid as Obvious Over BGE Cooking Center Manual in View of Holland and BGE Manual Independent claim Independent claim Dependent claims 2 & Dependent claims 4 & Dependent claims 5 & Dependent claims 7 & Dependent claim Dependent claims 9 & I. Ground 9: Claims 3 & 12 are Invalid as Obvious Over BGE Cooking Center Manual in View of Holland, Milloy and Beller J. Ground 10: Claim 6 is Invalid as Obvious Over BGE Cooking Center Manual in View of Holland, BGE Manual and Ducate K. Ground 11: Claims are Invalid as Obvious Over BGE Cooking Center Manual in View of Holland, BGE Manual and Oliver Independent claim SMRH: iii

5 2. Dependent claim Dependent claim Dependent claim IX. CONCLUSION SMRH: iv

6 TABLE OF AUTHORITIES Cases Atlas Powder Co. v. Ireco Inc., 190 F.3d 1342 (Fed. Cir. 1999)... 19, 20 Boston Scientific Scimed, Inc. v. Cordis Corp., 554 F.3d 982 (Fed. Cir. 2009)... 34, 35, 40 Constant v. Adv. Micro-Devices, Inc., 848 F.2d 1560 (Fed. Cir. 1988)... 12, 14 In re Buszard, 504 F.3d 1364 (Fed. Cir. 2007) In re Johnston, 435 F.3d 1381 (Fed. Cir. 2006)... 16, 26, 29 In re Mouttet, 686 F.3d 1322 (Fed. Cir. 2012) KSR Int l Co. v. Teleflex, Inc., 550 U.S. 398 (2007)... passim LKQ Corp. v. Clearlamp, LLC, IPR , Paper 18 (Mar. 29, 2013) Macauto U.S.V. v. BOS GmbH & KG, IPR , Paper 18 (Jan. 24, 2013) Trimed v. Stryker Corp., 514 F.3d 1256 (Fed. Cir. 2008)... 20, 21, 24, 26 Statutes 35 U.S.C passim 35 U.S.C , 9 SMRH: v

7 EXHIBIT LIST (37 C.F.R (e)) EXHIBIT TBC 1001 DESCRIPTION U.S. Patent No. 8,381,712 to Simms TBC 1002 File History of U.S. Patent No. 8,381,712 TBC 1003 TBC 1004 TBC 1005 TBC 1006 TBC 1007 TBC 1008 TBC 1009 TBC 1010 TBC 1011 TBC 1012 TBC 1013 TBC 1014 U.S. Patent No. 5,632,265 to Koziol U.S. Patent Application Publication No. 2002/ to Holland et al. U.S. Patent No. 6,189,528 to Oliver U.S. Patent No. 4,886,045 to Ducate, Jr. et al. U.S. Patent No. 4,664,026 to Milloy Big Green Egg Cooking Center Manual Big Green Egg Cookbook and Manual Declaration of Glen Stevick, Ph.D., P.E. (including curriculum vitae attached as Exhibit A) McGraw-Hill Dictionary of Scientific and Technical Terms, 6th Ed., McGraw-Hill, 2003, p Excerpts of the ITC Hearing Transcript: In the Matter of Certain Multiple Mode Outdoor Grills and Parts Thereof, ITC Inv. No. 337-TA-895 U.S. Patent No. 5,195,423 to Beller U.S. Patent No. 3,447,445 to Koziol SMRH: vi

8 I. INTRODUCTION The Brinkmann Corporation ( Brinkmann ) hereby petitions for inter partes review seeking cancellation of claims 1-20 of U.S. Patent No. 8,381,712 ( the '712 patent ) (TBC 1001), which is owned by A&J Manufacturing, LLC. The '712 patent claims a multi-mode barbecue grill such as shown in Fig. 1, comprising a gas grill and a charcoal grill mounted on the same stand or cart. The grills are the same, structurally and functionally, as two conventional standalone grills, and they maintain their independence from one another when mounted side-byside on the stand or cart. Similar multimode barbecue grills were known before the '712 patent. These facts render all of the claims invalid for obviousness. II. MANDATORY NOTICES A. Real Party-In-Interest (37 C.F.R. 42.8(b)(1)) The real party-in-interest is The Brinkmann Corporation, a Texas corporation with its principal place of business in Dallas, Texas. B. Related Matters (37 C.F.R. 42.8(b)(2)) The '712 patent is involved in the following International Trade Commission and district court proceedings: (1) In the Matter of Certain Multiple Mode Outdoor Grills and Parts Thereof, Inv. No. 337-TA-895; (2) A&J Mfg., LLC v.

9 Academy, Ltd., Case No. 2:13-cv LGW-JEG (S.D. Ga.); (3) A&J Mfg., LLC v. The Brinkmann Corp., Case No. 2:13-cv LGW-JEG (S.D. Ga.); (4) A&J Mfg., LLC v. W.C. Bradley Co., Case No. 2:13-cv LGW-JEG (S.D. Ga.); (5) A&J Mfg., LLC v. GHP Group, Inc., Case No. 2:13-cv LGW-JEG (S.D. Ga.); (6) A&J Mfg., LLC v. Sears Holdings Corp., Case No. 2:13-cv LGW- JEG (S.D. Ga.); (7) A&J Mfg., LLC v. Outdoor Leisure Products, Inc., Case No. 2:13-cv LGW-JEG (S.D. Ga.); (8) A&J Mfg., LLC v. Rankam Group, Case No. 2:13-cv LGW-JEG (S.D. Ga.); (9) A&J Mfg., LLC v. Tractor Supply Co., Case No. 2:13-cv LGW-JEG (S.D. Ga.); (10) Char-Broil, LLC v. A&J Mfg., LLC, Case No. 2:13-cv LGW-JEG (S.D. Ga.); and (11) Academy, Ltd. v. A&J Mfg., LLC, Case No. 4:14-cv (S.D. Tex.). C. Designation of Lead and Back-Up Counsel (37 C.F.R. 42.8(b)(3)) Lead Counsel Gary A. Clark (Reg. No ) Sheppard, Mullin, Richter & Hampton LLP 333 South Hope Street, 43rd Floor Los Angeles, California Tel: (213) Fax: (213) Back-Up Counsel Bridgette A. Agness (Reg. No ) Sheppard, Mullin, Richter & Hampton LLP 333 South Hope Street, 43rd Floor Los Angeles, California Tel: (213) Fax: (213) D. Service Information (37 C.F.R. 42.8(b)(4)) Please address all correspondence to the lead counsel at the address above. Petitioner consents to electronic service at the above addresses. SMRH:

10 III. GROUNDS FOR STANDING Petitioner certifies that (1) the '712 patent is eligible for inter partes review; (2) Petitioner is not barred or estopped from requesting inter partes review challenging the claims of the '712 patent on the grounds in this Petition; (3) this petition is filed within one year of the service of the original complaint against Petitioner in the litigation identified above; and (4) Petitioner has not filed a civil action challenging the validity of a claim of the '712 patent. IV. PAYMENT OF FEES The undersigned attorney for Petitioner authorizes the Patent and Trademark Office to charge Deposit Account No (Customer ID No ) for the fee required by 37 C.F.R (a) for this petition, and further authorizes payment of any additional fees to be charged to this Deposit Account. V. STATEMENT OF RELIEF REQUESTED Petitioner requests inter partes review and cancellation of claims 1-20 of the '712 patent based on the detailed statements presented in section VIII below. VI. ORDINARY SKILL IN THE ART Persons having ordinary skill in the art of barbecue grill design in July 2004 ( PHOSITA ) had an engineering degree or equivalent experience plus about two years of experience designing barbecue grills. TBC 1010, SMRH:

11 VII. CLAIM CONSTRUCTION The claims of the '712 patent define a multi-mode grill having a gas-fired cooking unit and a solid fuel-fired cooking unit mounted on a common support structure so as to be simultaneously and independently operable. Each cooking unit has an attached and openable cover with an exhaust. The dependent claims add conventional grill features such as a side burner, an offset firebox, and wheels. The terms used in the claims of the '712 patent were commonly understood words having widely accepted and ordinary meanings as of the earliest possible effective filing date of the application. TBC 1010, 41. PHOSITA would have understood the terms used in the claims as follows: a. barbeque grill an apparatus for cooking food held on an open grate for direct exposure to heat or flames. TBC 1010, 43. b. a first cooking unit configured to cook food using gas cooking fuel a gas-fired barbecue grill. Id., 44. c. a second cooking unit configured to cook food using solid cooking fuel a wood/charcoal-fired barbecue grill. Id., 45. d. first means for cooking food using gas cooking fuel the recited function is cooking food using gas cooking fuel, and the corresponding structure described in the specification of the '712 patent is a gas-fired barbecue grill, such as first cooking mode unit 110. TBC 1001, 2:28-32; TBC 1010, 46. SMRH:

12 e. second means for cooking food using solid cooking fuel the recited function is cooking food using solid cooking fuel, and the corresponding structure is a wood/charcoal-fired barbecue grill, such as second cooking mode unit 120. TBC 1001, 2:34-36; TBC 1010, 47. f. support structure an assembly, platform, base, frame or the like. TBC 1010, 48. g. structure means for supporting the first means for cooking and the second means for cooking the recited function is supporting the first means for cooking and the second means for cooking, and the corresponding structure is an assembly, platform, base, frame or the like, such as common supporting structure 130. TBC 1001, 2:38-40; TBC 1010, 49. h. grill a cooking grate with openings for holding food to directly expose it to a source of heat or flames for cooking. TBC 1010, 50. i. openable [first/second] cover a lid or hood for enclosing the cooking chamber of a barbecue grill that is movable between open and non-open positions relative to the fixed portions of the barbecue grill. Id., 51. j. openable [first/second] cover means for selectively covering the [first/second] grill same as cover ; not a 112 means clause, but if so construed the function would be selectively covering the [first/second] grill, and the corresponding structure would be a cover, lid or hood for enclosing the cooking SMRH:

13 chamber of a barbecue grill that is movable between open and non-open positions relative to the fixed portions of the barbecue grill, such as covers 111, 121, 211, 221, 311, 321. TBC 1001, 2:32-34 & 36-38; Figs. 1-3; TBC 1010, 52. l. selectively covers capable of covering or providing access to the cooking chamber of a barbecue grill at the user s discretion. TBC 1010, 53. m. exhaust a pipe, duct or similar structure that is attached to and extends from an openable cover, through which exhaust gases are expelled. Id., In the co-pending ITC proceeding, Patent Owner has argued that exhaust simply refers to an opening for venting exhaust gases and does not have to be on the openable part of the cover. TBC 1012, 3: As discussed below, Petitioner s invalidity position is unaffected by which interpretation is used. n. exhaust means same as exhaust ; not a 112 means clause, but if so construed the function would be exhaust, and the corresponding structure would be a pipe, duct or similar structure that is attached to and extends from an openable cover, through which exhaust gases are expelled, such as exhausts 112, 122, 212, 222, 312, 322. TBC 1001, 2:32-34, 3:6-7 & 3:36-37; Figs. 1-3; TBC 1010, o. simultaneously operable capable of operation at the same time. Id., 63. P. side burner an auxiliary burner located to the side of the main SMRH:

14 cooking unit. TBC 1010, 64. q. burner means for preparing food by radiating heat or emitting flames same as side burner ; not a 112 means clause, but if so construed the function would be preparing food by radiating heat or emitting flames, and the corresponding structure would be a part where flame or heat is produced, especially by combusting a gas, such as the third cooking mode unit 140 referred to above. TBC 1001, 2:57-62; Figs. 1-3; TBC 1010, 65. r. firebox a chamber in which gas or solid fuel is combusted to produce flame, smoke and/or heat. TBC 1010, 66. s. firebox means same as firebox ; not a 112 means clause, but if so construed the function would be providing heat or smoke to the second means for cooking, and the corresponding structure would be a chamber for combusting gas or solid fuel that is in communication with the second means for cooking (i.e., the wood/charcoal-fired barbecue grill), such as fourth cooking mode unit 324. TBC 1001, 3:45-52; Fig. 3; TBC 1010, 67. VIII. IDENTIFICATION OF CHALLENGE Petitioner seeks inter partes review on the grounds listed in the index below. Copies of the references listed in the index below are filed with this petition. In support, this petition is accompanied by the Declaration of Glen Stevick, Ph.D., P.E. (TBC 1010), an independent technical expert, who explains the disclosures of SMRH:

15 the prior art references; compares the claims to the disclosures of the references; and opines on the issue of obviousness. GROUND 35 U.S.C. INDEX OF REFERENCE(S) CLAIMS 1 103(a) U.S. Patent No. 5,632,265 to Koziol ( Koziol ) & U.S. Patent Publication No. 2002/ to Holland et al. ( Holland ) 2 103(a) Koziol, Holland, & U.S. Patent No. 4,886,045 to Ducate, Jr. et al. ( Ducate ) 3 103(a) Koziol, Holland & U.S. Patent No. 4,664,026 to Milloy ( Milloy ) 4 103(a) Koziol, Holland & U.S. Patent No. 6,189,528 to Oliver ( Oliver ) 1, 4-10 & & 11 3 & (a) Oliver & Holland 1, 4, 5, 7-9, 10 & (a) Oliver, Holland & Ducate 2, 6 & (a) Oliver, Holland & Milloy 3 & (a) Big Green Egg Cooking Center Manual ( BGE Cooking Center Manual ), Holland & Big Green Egg Cookbook And Manual ( BGE Manual ) 9 103(a) BGE Cooking Center Manual, Holland, BGE Manual, Milloy & U.S. Patent No. 5,195,423 to Beller ( Beller ) 1, 2, 4, 5, 7-11, & 12 SMRH:

16 10 103(a) BGE Cooking Center Manual, Holland, BGE Manual & Ducate (a) BGE Cooking Center Manual, Holland, BGE Manual & Oliver A. Ground 1: Claims 1, 4-10 & are Invalid as Obvious Over Koziol in View of Holland Koziol (TBC 1003) is entitled Grill Mounting Assembly. It issued May 27, 1997, making it prior art under 35 U.S.C. 102(b). Koziol was not a cited reference. It teaches conventional gas and charcoal grills mounted side-byside on a stand or cart and operable separately and independently of each other. Holland (TBC 1004) is entitled Barbecue Grill With Retractable Ventilation System. It was published on December 5, 2002, making it prior art under 35 U.S.C. 102(b). Holland also was not a cited reference. It teaches a barbecue grill with an openable cover attached by a hinge to a lower housing and two smoke exhaust vents on the openable cover. Koziol and Holland combine to render the claims obvious as follows. 1. Independent claim 1 A barbecue grill having multiple cooking units The preamble of claim 1, quoted in the heading above, 1 is not a limitation, but is satisfied by Koziol. Koziol discloses [a]n assembly for mounting a 1 The claim elements are set forth as bullet-point headings throughout this Petition. SMRH:

17 barbecue grill and a cooking related device such as an additional grill, burner or table top, to a support structure such as a post or cart. TBC 1003, Abstract. a support structure configured to support a plurality of cooking units A grill mounting assembly 10 ( support structure ) includes a support member 12 that is mounted on a post 14 or a movable cart apparatus 101 for supporting a barbecue grill and a cooking related device such as an additional grill, burner or table top. TBC 1003, 2:56-60 (post 14), 4:46-48 (movable cart apparatus 101), Figs. 3 & 11 (reproduced below). a first cooking unit configured to cook food using gas cooking fuel In each embodiment shown in Koziol s drawing figures, the grill is on the left and the cooking related device (which also may be a grill) is on the right. See TBC 1003, Figs. 3-6 & 11; TBC 1010, 82. The embodiments of Figs. 3 and 11 show gas barbecue grill units 20 and 21, either of which is a first cooking unit configured to use gas cooking fuel. Id., 83. SMRH:

18 the first cooking unit attached to the support structure As shown, grill units 20 and 21 are attached to the support member 12. TBC 1003, Fig. 3. the first cooking unit including at least one grill While Koziol does not specifically show or describe a grill or cooking grate in the gas cooking units of Figs. 3 and 11, PHOSITA would have understood that each one includes a grill. TBC 1010, 85. The gas cooking unit is called a grill, which means it has a grill in the form of a cooking grate. Id. Also, a grill/grate is shown in the charcoal grill embodiment of Fig. 5 of Koziol. Id. Even more, Koziol discloses cooking grills in at least as much detail as the '712 patent application as filed. Notably, the '712 patent application as filed did not show or discuss cooking grates/grills (TBC 1002, pp. 3-18), but Applicant was allowed to amend the claims to recite a grill without any new matter, written description or enablement rejections (id, pp , ). This is compelling evidence that both Applicant and the Examiner viewed the disclosure to be adequate to inform PHOSITA about this feature. In comparison, Koziol s Fig. 5 discloses more than the as-filed '712 patent application with regard to cooking grates/grills. If the '712 patent application s disclosure was adequate, it SMRH:

19 necessarily follows that Koziol s more complete disclosure is adequate as prior art. See Constant v. Adv. Micro-Devices, Inc., 848 F.2d 1560, 1569 (Fed. Cir. 1988) ( The disclosure in [the prior art reference] is at least at the same level of technical detail as the disclosure in the '491 patent. If disclosure of a computer program is essential for an anticipating reference, then the disclosure in the '491 patent would fail to satisfy the enablement requirement of 35 U.S.C. 112, First. ) If there is any question about Koziol s disclosure, Holland discloses a first metallic grid 16 for supporting meat and other foods during cooking on barbeque grill 10, and that the grill 10 may be gas- or charcoal-fired. TBC 1004, [0021], [0029], Fig. 2. Cooking grills/grates are essential in any barbecue grill gas or charcoal for supporting food above the heat source during cooking. TBC 1010, 85. PHOSITA would have understood based on the teachings of Koziol and Holland, and their own knowledge and experience, that the gas cooking units of Figs. 3 and 11 of Koziol include a cooking grill/grate. Id. the first cooking unit further including an openable first cover attached to the first cooking unit that selectively covers the first grill Koziol s grills each have covers shown with handles attached to their front portions (Figs. 3, 4, 5, 6, and 11). Although Koziol does not explicitly teach that the covers are attached and openable, he refers (at 1:14-17) to his own earlier patent (U.S. Patent No. 3,447,445, TBC 1014), which discloses (in Fig. 1) dual SMRH:

20 grill units having similar covers with handles that are hingedly attached to the rear of the cooking units. Moreover, PHOSITA would have understood that the covers need to be openable in order to use the grills to cook food (TBC 1010, 88), and PHOSITA also would have recognized given the size and shape of the covers, and the nature and location of the handles on the fronts of the covers in Figs. 3-6 and 11 that the covers would be hinged on the back side and pivot open in standard fashion (id.). While grills with covers that were not attached to the grill existed in 2004, they tended to be smaller, lighter weight grills, such as the well-known Weber kettle grills. TBC 1010, 90. These grills typically had handles on the tops of their covers, and the grills were mounted on relatively short legs or stands that placed the grills lower to the ground compared to the Koziol grills. Id. The smaller size and lighter weight construction, with a handle on top of the covers, and lower placement of the grill, all made it easier for the user to lift and remove the cover. Id. With the Weber grills, the cover could then be hooked to the side of the grill while the user tended to the charcoal and/or the food. Id. None of these factors apply to the Koziol grills, which are clearly of larger size, heavier weight construction, and mounted at counter height. Id. PHOSITA would not place a handle on the fronts of the covers, as in Koziol, if the covers were not hingedlyattached to the grills. Id. Such a handle location (even with another handle on the SMRH:

21 opposite side of the cover) would make lifting the cover physically awkward and potentially dangerous when the cover was hot. Id. Notably, the '712 patent application as filed also failed to make any mention of covers, much less that the covers are attached and openable (see TBC 1002, pp. 3-18), and here too Applicant was allowed to amend the claims to recite these features without any new matter, written description or enablement rejections (id., pp & 413). Koziol s disclosure as prior art must be deemed as adequate as the '712 patent application since Koziol discloses as much detail regarding these features. Constant, 848 F.2d at Any question about Koziol s covers is likewise mooted by Holland, which includes an openable hood 18 that is attached by hinge 18A to the body of the grill unit with a handle 20 in the front. TBC 1004, [0022], Figs PHOSITA would have been motivated to use such an arrangement in Koziol since it is easier and safer to lift a hingedlyattached cover when the cover is larger, heavier weight, mounted at or above counter-height, and potentially hot. TBC 1010, 91. Thus, it would have been understood or, alternatively, obvious in view of Holland for Koziol s covers to be hingedly-attached and openable. Id., 94. SMRH:

22 the first cover includes at least one exhaust Koziol does not specifically disclose that it has an exhaust on the cover to allow exhaust gases to pass out of the grills, but it does disclose cut outs 30, 31, 33 and 35 to provide combustion air. TBC 1003, 3: PHOSITA would have understood based on their own knowledge and experience that Koziol must have a vent to allow exhaust gases to escape, as it is necessary for combustion in all covered grills. TBC 1010, 95. Further, to achieve certification, gas grills must have a vent to avoid excessive build-up of carbon monoxide inside the grill. Id. Holland discloses two smoke exhaust vents 30 in the form of chimneys on the openable covers of his grills, which Holland teaches may be gas- or charcoalfired. TBC 1004, [0023], Figs Holland states that the purpose is to vent smoke created in the grill by grease droppings. Id., [0004]. It would have been obvious to add exhausts to Koziol s openable covers for the same purpose. TBC 1010, 97. The addition of smoke stack-style exhausts to the covers, as disclosed by Holland, results in the exhaust being located at the top of the lid, above the cooking surface, which is important for venting. Id. The function of, and motivation for including, exhausts on the openable covers in the '712 patent allowing combustion gases to escape was the same as for the prior art. Id., 96. The addition of exhausts to the openable covers of Koziol is simply the predictable use of prior art elements according to their SMRH:

23 established functions. KSR Int l Co. v. Teleflex, Inc., 550 U.S. 398, 417 (2007). The Federal Circuit has found it obvious to combine the teachings of prior art references where the teachings are in the same field of art and deal with related subject matter. See, e.g., In re Johnston, 435 F.3d 1381, 1386 (Fed. Cir. 2006). This conclusion would not change if exhaust were interpreted to mean a mere opening, not necessarily located on an openable cover, as the Patent Owner has urged. Both the '712 patent and Holland disclose smokestacks on openable covers and, thus, both disclose an exhaust regardless of how it is interpreted. a second cooking unit configured to cook food using solid cooking fuel As discussed above, Koziol discloses a grill and a cooking related device mounted side-by-side on a common support structure, in which the cooking related device may be an additional grill. TBC 1003, Abstract. Koziol makes clear, by statement and example, that both the main grill and the cooking related device grill may be either gas or charcoal. Specifically, Fig. 3 shows two gas-fired grills, a main grill 20 on the right and a cooking related device grill 21 on the left, while Fig. 5 shows a charcoal-fired main grill 81 on the left and a cooking related device table 82 on the right. Thus, Figs. 3 and 5 establish that the main grill may be gas or charcoal. Koziol also explains that the term cooking related device is meant to include additional barbecue grill units of various types. TBC 1003, 5: SMRH:

24 Since Koziol only discloses two types of grills gas and charcoal this teaches that the cooking-related-device grill also may be gas or charcoal. TBC 1010, 74. Koziol further teaches utilizing gas and charcoal units together on the same support structure. He states that [i]n an alternate embodiment, the support member supports barbecue grills, at least one of which is charcoal fired. TBC 1003, 2:8-9. This alternate embodiment thus has barbecue grills plural only one of which needs to be a charcoal grill. Since Koziol only discloses gas and charcoal grills, this teaches that the support member could support both a charcoal grill and a gas grill. TBC 1010, 75. This is consistent with a later disclosure in Koziol, stating that while a gas grill unit has been utilized in conjunction with an auxiliary unit, it is apparent that a charcoal grill unit such as indicated at 81, could likewise be employed. TBC 1003, 5: This refers to Fig. 6, with auxiliary unit referring to auxiliary burner unit 85. See id., Abstract; 1: This teaches PHOSITA that a charcoal grill could be substituted for auxiliary burner 85 in Fig. 6. TBC 1010, 76. This results in a gas grill 20 and a charcoal grill 81 mounted side-by-side on the same support SMRH:

25 structure, corresponding to Koziol s alternate embodiment discussed above. Id. the second cooking unit attached to the support structure Koziol shows and describes charcoal unit 81 attached to the support member 12. TBC 1003, 4:10-15, Fig. 5. the second cooking unit including at least one second grill As discussed above (at p. 11), Fig. 5 of Koziol shows that the charcoal cooking unit has a cooking grill. This is consistent with the fact that Fig. 5 is described as a barbecue grill. TBC 1003, 4:10. the second cooking unit further including an openable second cover attached to the second cooking unit that selectively covers the second grill For the reasons discussed above (at pp ), it would have been understood or, alternatively, obvious in view of Holland for Koziol s covers to be hingedly-attached and openable. TBC 1010, 101. the second cover includes at least one exhaust For the reasons discussed above (at pp ), it would have been obvious to add an exhaust to the openable covers of Koziol, as taught by Holland. TBC 1010, 102. the first cooking unit and the second cooking unit are simultaneously operable to cook food It would have been readily apparent to PHOSITA from the disclosure of Koziol, including its drawing figures, that the first and second cooking units are SMRH:

26 simultaneously operable to cook food. See, e.g., TBC 1003, 1:14-15 ( The use of two barbecue grill units together is well known. ); and TBC 1010, There is nothing in Koziol that would prevent the grills shown and described from operating simultaneously, and there would have been no reason for combining them on a single support if they were not operable simultaneously. TBC 1010, Accordingly, PHOSITA would have understood Koziol as teaching two cooking units that are simultaneously operable to cook food. Id. Even more, there are no structural differences between the grills disclosed in the '712 patent and those disclosed in Koziol that would allow the '712 patent grills, but not the Koziol grills, to operate simultaneously. Id. The only difference between the '712 patent and Koziol in this regard is that Applicant explicitly recognized that side-by-side, independent cooking units were simultaneously operable, while Koziol did not mention it. Id. However, mere recognition of an inherent characteristic of a prior art device cannot be the basis for patentability. Atlas Powder Co. v. Ireco Inc., 190 F.3d 1342, 1347 (Fed. Cir. 1999). the first grill and second grill are selectively and independently coverable The grills shown in Figs. 3, 4, 5, 6 and 11 of Koziol all have openable covers that are clearly independent from one another and would have been understood by PHOSITA to be capable of selectively covering and uncovering the separate cooking units. TBC 1010, Placing two grills (one gas and one SMRH:

27 charcoal) together on a common support structure would not affect the functions or advantages of the two grills as separate units, including the ability to independently open and close the grill covers. Id. Further, there is nothing in Koziol that would prevent the covers from opening and closing selectively and independently of each other. Id. There are also no structural differences between the covers disclosed in the '712 patent and those disclosed in Koziol that would allow the '712 patent covers, but not the Koziol covers, to open and close selectively and independently of each other. Id. Thus, PHOSITA would conclude that Koziol s first and second grills are selectively and independently coverable. Id. This is simply another inherent property of Koziol s disclosure. See Atlas Powder, supra. Accordingly, for all of the above reasons, claim 1 would have been obvious over Koziol in view of Holland. Id., Independent claim 10 Claim 10 is an independent claim that is similar to claim 1 of the '712 patent. The primary difference is that claim 10 recites several limitations in means clause format. TBC 1001, 5:40-59; TBC 1010, However, in some cases the claim terms already connote adequate structure (e.g., cover, exhaust) to perform their respective functions (e.g., covering, exhausting), and means clause analysis should not apply to those limitations. See Trimed v. Stryker Corp., SMRH:

28 514 F.3d 1256, 1259 (Fed. Cir. 2008) ( If the claim recites sufficient structure for performing the described functions in their entirety, the presumption of is overcome the limitation is not a means-plus-function limitation. ) And, while structure means and means for cooking are limitations that should be construed as means clauses, this does not materially change the construction of these terms compared to claim 1, as set forth in section VII, supra. TBC 1010, 112. Thus, the scope of claim 10 is not materially different from that of claim 1. Id. Accordingly, the invalidity analysis for claim 1 based on Koziol and Holland set forth in section VIII.A.1, supra, applies equally to claim 10. Id., Dependent claims 4 & 13 The barbeque grill of claim 1 [10], wherein the first cooking unit[means for cooking] and the second cooking unit [means for cooking] are operable independently of each other As discussed in section VIII.A.1, supra, Koziol teaches a support structure or stand for supporting both gas and charcoal cooking units. The cooking units shown in the embodiments of Koziol (e.g., Figs. 3, 4, & 11) are clearly independent from one another. And, as further discussed therein (at pp ), there are no structural differences between the grills disclosed in the '712 patent and those disclosed in Koziol that would allow the '712 patent grills, but not the Koziol grills, to operate independently and simultaneously. There is also nothing in Koziol that would prevent the gas and charcoal grills from operating SMRH:

29 independently of one another, nor would it make sense if they did not operate independently. TBC 1010, 137. Accordingly, it would have been apparent to PHOSITA that the two cooking units of Koziol are independently operable. Id. 4. Dependent claims 5 & 14 The barbeque grill of claim 1 [10], further comprising: at least one substantially vertical panel positioned between the first cooking unit [means for cooking] and the second cooking unit [means for cooking] The facing sidewalls of both the covers and bases of the gas grill units 20 and 21 in Figs. 3 and 11 of Koziol are substantially vertical panels positioned between the first and second cooking units. 5. Dependent claim 6 The barbeque grill of claim 1, wherein the support structure comprises at least two wheels Koziol discloses that the cart 101 shown in Figs has four wheels 103. TBC 1003, 4: Dependent claims 7 & 15 The barbeque grill of claim 1 [10], wherein the support structure [means] is configured to hold [comprises a means for holding] at least one fuel container Koziol discloses that floor 104 forms a portion of the base portion 102 and supports the usual propane tank 105 which is centrally located and surrounded on three sides by the wall panels 106. TBC 1003, 4: As shown in Figs , these doors 117 and 118 cover the side portions 120 and 121 and are slidable over SMRH:

30 the central portion 123 with tank 105. Id. at 5:7-10. Thus, Koziol discloses a support structure configured to hold at least one fuel container. 7. Dependent claim 8 The barbeque grill of claim 1, wherein the first and second cooking units are each configured to hold food over a flame As discussed in section VIII.A.1, supra, each grill unit 20 and 21 of Koziol necessarily includes a grill or cooking grate, consistent with the grill shown in the charcoal unit 81 of Fig. 5. PHOSITA would have understood that both the gas and charcoal grills cook food by holding the food over a flame. TBC 1010, Dependent claims 9 & 16 The barbecue grill of claim 1 [10], wherein the configuration of the at least one exhaust [means] of the first cover [means] includes a configuration of at least two exhausts As discussed in section VIII.A.1 (at pp ), supra, Holland discloses two smoke stack type exhausts for use on the cover of a grill of any type, including gas fueled, as shown in Fig. 1. The function and motivation for having two exhausts on the covers of the cooking units in the '712 patent was the same function and motivation for adding two exhausts to the covers in the prior art, i.e., to allow for a better airflow, better exhausting of the gas within the grill and allowing gases to escape. TBC 1010, 146. Thus, it would have been obvious to add two exhausts to the openable covers of Koziol. Id. SMRH:

31 B. Ground 2: Claims 2 & 11 are Invalid as Obvious Over Koziol in View of Holland and Ducate Ducate (TBC 1006) is entitled Side Burner Attachment For Gas-Fired Grill. It issued on December 12, 1989, making it prior art under 35 U.S.C. 102(b). Ducate was a cited reference. Dependent claim 11 is virtually identical to dependent claim 2, except that claim 11 recites a burner means instead of a burner. As discussed in section VII, supra, burner means should not be interpreted as a means plus function limitation because the word burner recites sufficiently definite structure (Trimed, 514 F.3d at 1259), and PHOSITA would have understood that it refers to a side burner on a grill (TBC 1010, 122). The barbeque grill of claim 1 [10], further comprising: a side burner[burner means] supported by the supporting structure [structure means] It was well known in the art to add side burners to barbecue grills. For example, Ducate shows a side cooker apparatus 80 or side burner attached or attachable to a barbecue grill 10. TBC 1006, 1:56-58; Figs the side burner comprising a component configured to prepare [burner means for preparing] food by radiating heat or emitting flames Ducate teaches that the side cooker apparatus 80 includes an auxiliary gas burner 94, which is lit by an igniter 96 which discharges a spark to burner 94. Id., 3: SMRH:

32 the side burner[burner means], the first cooking unit [means for cooking], and the second cooking unit [means for cooking] are simultaneously operable to cook food Ducate discloses that at the time of its filing, prior art grills [] provide [a] means for simultaneously carrying out both a grilling operation and a pot or pan cooking operation, and it is an object of Ducate s invention to provide an improved arrangement for attaching an auxiliary burner to a gas-fired grill. Id., 1: It would have been understood by PHOSITA that Ducate s side burner can be operated simultaneously as the main cooking grill. TBC 1010, 125. The motivation for adding a side burner to a grill to provide an additional mode for cooking was the same in the prior art as in the '712 patent. Id., 126. The '712 patent states that the multi-mode grill 100 may also include a third cooking mode unit 140, which can provide another mode for cooking with the grill 100. TBC 1001, 2: Ducate similarly describes his side burner as allowing another mode of cooking to that of a grill, stating TBC 1006, 1: Cooking methods which require heating foods in a container, such as a pot or pan, cannot practically be carried out using a conventional grill because efficient use of these methods require that the gas flame be close to or in contact with the pot or pan. It would have been obvious to add a side burner to the embodiments of Koziol that have two grill units on a single support structure, in order to provide an SMRH:

33 additional cooking mode, such that the side burner, first cooking unit, and second cooking unit are simultaneously operable. TBC 1010, 127. The prior art teaches that a side burner is a useful attachment to a portable barbeque, and whether that barbeque has one grill or two does not affect the functionality of the side burner. Id. In fact, Koziol discloses in the Fig. 6 embodiment an auxiliary burner unit 85 that is disposed to the side of grill 20 and supported by support member 12. TBC 1003, 4:17-41, Fig. 6. The addition of a side burner to a barbecue grill is an example of the predictable use of prior art elements according to their established functions. KSR, 550 U.S. at 417. Also, the teachings are in the same field of art and deal with related subject matter. Johnston, 435 F.3d at C. Ground 3: Claims 3 & 12 are Invalid as Obvious Over Koziol in View of Holland and Milloy Milloy (TBC 1007) is entitled Barbecue Cooking and Smoking Apparatus. It issued on May 12, 1987, making it prior art under 35 U.S.C. 102(b). Milloy was not a cited reference. Claim 12 is essentially the same as claim 3, except that it substitutes the word firebox means for firebox. As discussed in section VII, supra, firebox means should not be interpreted as a means plus function limitation because the word firebox recites sufficiently definite structure (Trimed, 514 F.3d at 1259), and PHOSITA would have understood that the term refers to a side or offset firebox on a grill. SMRH:

34 The barbeque grill of claim 2 [11], further comprising: a firebox [firebox means] supported by the supporting structure [structure means] While Koziol does not disclose an offset or side firebox, it was well known in the art to add side fireboxes to cooking units. For example, Milloy shows a side firebox 12 that is attached to a barbecue grill 10 having an oven 14 and supported by frame 16 having legs 18. TBC 1007, Figs. 1 & 2; 3:2-8. Id., 3: the firebox [firebox means] configured to provide heat or smoke to the second cooking unit when a fuel material is burned or combusted in the firebox [for providing heat or smoke to the second means for cooking] Milloy teaches that heat and smoke come into the oven from the firebox. the firebox [firebox means] simultaneously operable with the side burner [burner means], the first cooking unit [means for cooking], and the second cooking unit [means for cooking] Milloy further teaches that the side firebox is simultaneously operable with the oven. Id., 1:33-36 ( Once a good hot fire is started and going in the firebox the smoke is continuously directed into a smoking chamber which holds meat to be cooked and smoked simultaneously. ); and 8:7-11 ( The firebox is opened and a fire started on the grate in the enclosure therein which may be of charcoal or wood and usually involves the use of woods of the type that are normally used for smoking. ). The motivation for adding a side firebox to a grill providing the benefit of SMRH:

35 having a smoker was the same in the prior art as in the '712 patent. TBC 1010, 133. The '712 patent states that the fourth unit 324 may operate as a firebox (offset firebox, side firebox, smoker box, etc.) in which fuel materials can be burned or combusted to provide heat and/or smoke to the second cooking unit 320 through an interconnection of the two units 320, 324 to prepare smoked barbecue. Furthermore, the fourth cooking mode unit may operate in other cooking modes, such as a separate barbecue or smoker grill unit for example. TBC 1001, 3: Similarly, Milloy discloses that the firebox 12 is interconnected with the oven 14 to provide smoke and heat to the oven. TBC 1007, 4:20-38; Figs Milloy also states, as in the '712 patent, that firebox 12 has its own food supporting grill 67 across the firebox and spaced below the food supporting grill is a fire supporting grate 69, which PHOSITA would have understood to mean that the firebox may operate as a separate barbecue or smoker grill. Id., 4:1:3, Fig. 1. Accordingly, it would have been obvious to add a side firebox to the dual unit embodiments of Koziol, with the side firebox supported by the support structure and operating simultaneously with the barbecue grill units, in order to add the additional benefit of using the grill as a smoker. TBC 1010, 134. The addition of a side firebox was known to be a useful attachment to a barbecue, and SMRH:

36 whether that barbecue has one grill or two grills does not affect the functionality of the side firebox. Id. Again, it is an example of the predictable use of prior art elements according to their established functions, KSR, 550 U.S. at 417, and the prior art references are in the same field of art and deal with related subject matter, In re Johnston, 435 F.3d at D. Ground 4: Claims are Invalid as Obvious Over Koziol in View of Holland and Oliver Oliver (TBC 1005) is entitled Outdoor Cooking System. It issued on February 20, 2001, making it prior art under 35 U.S.C. 102(b). Oliver was a cited reference, but during prosecution it was mischaracterized by the Patent Owner and misinterpreted by the Examiner, as discussed in section VIII.E.1 (at p. 37), infra. Oliver discloses two cooking units on a single support structure that are each substantially cylindrical in shape. See, e.g., TBC 1005, Figs Independent claim 17 Claim 17 is an independent claim that is essentially identical to claim 1, except that claim 17 requires that the first and second cooking units have a substantially cylindrical shape. TBC 1001, 6:25-47; TBC 1010, For the reasons discussed in section VIII.A.1, supra, the common elements of claims 1 and 17 are disclosed in Koziol or would have been obvious to a person skilled in the art based on Koziol in view of Holland. Id., 116. With respect to this additional requirement of claim 17, the use of SMRH:

37 substantially cylindrical shapes for barbecue grills was well known to PHOSITA. TBC 1010, 117. It was common long before 2004 to take oil barrels, cut them in half, and build a barbecue grill. Id. It was also known that a substantially cylindrical shape has the advantages of simplicity in manufacture, strength, and low cost, and provides the artistic look of old steam boiler locomotives. Id. As discussed in section VIII.E (at pp ), infra, Oliver (TBC 1005) teaches gas and charcoal units on a single support structure in this configuration. It would have been obvious in view of Oliver for the grill units in Koziol to have a substantially cylindrical shape, if the advantages of cylindrically-shaped grills and/or the look was desired. TBC 1010, 120. Again, it is the predictable use of prior art elements according to their established functions. KSR, 550 U.S. at Dependent claim 18 The barbeque grill of claim 17, wherein the first and second cooking units are supported by the support structure such that the substantially cylindrical shape of the first cooking unit and the substantially cylindrical shape of the second cooking unit are aligned substantially coaxially As shown in Figs. 3, 4, and 11, Koziol s first and second cooking units are aligned substantially coaxially. TBC 1010, 148. While Koziol s cooking units are not substantially cylindrical in shape, it would have been obvious in view of Oliver to modify the cooking units of Koziol to have a substantially cylindrical shape, as discussed in section VIII.D.1, supra. SMRH:

38 3. Dependent claim 19 The barbeque grill of claim 18, wherein the first cover forms a portion of the substantially cylindrical shape of the first cooking unit and the second cover forms a portion of the substantially cylindrical shape of the second cooking unit As discussed in section VIII.D.1, supra, it would have been obvious to modify Koziol to have cooking units that are substantially cylindrical in shape. In such a configuration, the covers of both cooking units would form a portion of the substantially cylindrical shape, similar to Oliver. TBC 1010, Dependent claim 20 The barbecue grill of claim 17, wherein the configuration of the at least one exhaust of the first cover includes a configuration of at least two exhausts For the reasons discussed in section VIII.A.8, supra, it would have been obvious to add two exhausts to the openable covers of Koziol. E. Ground 5: Claims 1, 4, 5, 7-9, 10 & are Invalid as Obvious Over Oliver in View of Holland 1. Independent claim 1 A barbecue grill having multiple cooking units As discussed in section VIII.A.1, supra, the preamble of claim 1 is not a limitation, but if so construed it is satisfied by Oliver. As shown in Figs. 19, 20, 21 and 23, Oliver discloses double-width cookers having multiple cooking units. a support structure configured to support a plurality of cooking units Each of the double-width cooker embodiments of Oliver disclose leg SMRH:

39 stands 24 and 26 for supporting the cooking units of the grill. See, e.g., TBC 1005, 4:53-54, Figs & 23. a first cooking unit configured to cook food using gas cooking fuel In the embodiment of Fig. 20, Oliver discloses a first cooking unit (left side) configured to cook food using gas cooking fuel, and a second cooking unit (right side) configured to cook with charcoal. Oliver explains that FIG. 20 is a perspective view of the cooking system of FIG. 19 wherein top reflectors are open and a container of fuel is positioned along one end thereof for cooking on a griddle on one side of the cooking system, and a charcoal grill is used on the other side. TBC 1005, 2: Claim 1 does not require a divider to separate the cooking system into first and second cooking units. TBC 1010, 160. Because Figs. 19 and 20 show gaps between the two ends of the cooking system, this suffices to create two units. Id. This is consistent with Applicant s admission during prosecution that Figs. 19 and 20 both show dual unit embodiments. TBC 1002, p. 70. In actuality, PHOSITA would have understood that the double width cooker of Fig. 20 is a combination of the single-width charcoal grill of Figs. 1-3 and the SMRH:

40 single-width gas grill of Figs. 15 or 16 disclosed by Oliver. Id. In Figs. 1-3, [a] body end 16 at each end of reflector 12 closes the ends of the body portion of the cooker. TBC 1005, 3: The body ends on the charcoal grill are needed to confine the charcoal inside the grill to prevent the start [of] grass fires and to improve draft control, two central concerns of Oliver. Id., 1:23 & 1:36. In the single-width propane gas cooker of Figs , in contrast, the body ends 16 of the gas grill unit are removed to allow the gas burner to extend through the gas cooker. Id., 5: When these two single-width cookers are combined in Fig. 20, it is only logical that the same schemes used in the single-width cookers apply. TBC 1010, 162. The body ends of the gas cooker are thus removed to accommodate the gas burner, but the body ends of the charcoal cooker are kept in place to confine the charcoal, prevent fires, and allow for draft control. Id. This interpretation most naturally aligns with Oliver s teachings. See In re Buszard, 504 F.3d 1364, (Fed. Cir. 2007) (rejecting PTO s interpretation as not reasonable and not sufficiently creditable to warrant further consideration. ). The body end on the SMRH:

41 inner end of charcoal cooker divides the cooker into two cooking units. Id. the first cooking unit attached to the support structure As shown in Fig. 20, the first cooking unit (on the left) is attached to the support structure (leg stands 24 and 26). the first cooking unit including at least one grill A grill is shown in several of the embodiments of Oliver, including Figs. 8, 20 and 21. While the gas unit on the left in Fig. 20 is shown with a griddle instead of a grill (TBC 1005, 2:54), PHOSITA would have understood that griddles and grates on a grill are readily interchangeable depending on the type of food being cooked (TBC 1010, 164). In fact, PHOSITA would have understood Oliver to suggest substituting various components to suit the user s preference. See, e.g., TBC 1005, Abstract, fourth sentence ( By installing, removing and substituting various parts, the cooking unit may be used as, for example, a grill, a baker, a boiler, a smoker, a steamer, a deep fryer and the like. ); 1:46-49 ( Additionally, the system includes a number of additional features which enable it to be used in a number of different cooking modes as, for example, a grill, a baker, a boiler, a smoker, a steamer, a deep fat fryer, and the like. ). PHOSITA thus would have understood that one could readily substitute a grill or grate from one of the other embodiments of Oliver for the griddle in the embodiment of Fig. 20. Id. Combining two embodiments disclosed adjacent to each other in a prior art SMRH:

42 patent does not require a leap of inventiveness. Boston Scientific Scimed, Inc. v. Cordis Corp., 554 F.3d 982, 991 (Fed. Cir. 2009). the first cooking unit further including an openable first cover attached to the first cooking unit that selectively covers the first grill In describing the embodiment of Fig. 20, Oliver discloses that two each reflectors 12 and 14 are assembled on rods 120, 122, 128 and 130. TBC 1005, 6: The reflectors 14 on rods 128 and 130 correspond to openable covers, one of which corresponds to the openable first cover attached to the first cooking unit that selectively covers the first grill. the first cover includes at least one exhaust Oliver discloses in connection with the single-width charcoal grill Figs. 1-3 that lid ends 18 may be slid along rods 28 and 30 to vary the distance from lid 14 to vary flow of draft air for the fire. TBC 1005, 4:67 5:2. Additionally, claim 18 of Oliver recites wherein at least one of the lid ends may be spaced apart from the lid reflector to provide combustion air for the cooker. Id., 10: In other words, Oliver teaches a method of venting exhaust gases from the grill through the adjustable ends on each of the reflectors or openable covers. TBC 1010, 166. However, Oliver does not teach that the openable covers include an exhaust, i.e., a pipe, duct or similar structure that is attached to and extends from an openable cover, through which exhaust gases are expelled. Id. SMRH:

43 Exhaust openings shaped like chimneys or smoke stacks have been used for hundreds of years on fireplaces, stoves, boilers cookers, locomotives, smokers and grills, and are almost always placed above the location of intended heat transfer (e.g., the cooking surface). Id., 167. PHOSITA understood that all covered grills must have some type of venting for combustion air, and that the use of chimneys or smoke stacks was a common and known method for venting a grill. Id. As discussed in section VIII.A.1 (at pp ), supra, Holland discloses gas and charcoal grills with openable lids having two chimneys or smoke stacks, resembling that described in the '712 patent. See, e.g., TBC 1004, Fig. 1. If one did not want to rely on separating the lid ends from the lid reflector for venting in Oliver, PHOSITA would have understood that Oliver s reflectors or covers could be modified to include Holland s smoke stacks. TBC 1010, 168. For example, PHOSITA might have been motivated to use Holland s smoke stacks for the exhaust structure in order to obtain certification of the grill. Id. Consistent with Oliver s objective, Holland specifically teaches retractable exhausts to provide a barbeque grill which can be compact and easily transportable. TBC 1004, [0008]. The addition of Holland s smoke stacks also does not run afoul of Oliver s teachings or motivations for his invention. Id. Although Oliver discussed the benefits of a grill that could be easily transported, quickly assembled and disassembled, and stored flat and his preferred embodiment shown in Figs SMRH:

44 seem to satisfy this objective he clearly departed from that objective with respect to his disclosure of alternate embodiments having numerous parts that cannot be stored flat e.g., a baking pan 62 (Fig. 11), propane burner 94 and propane tank 96 (Figs. 15, 16 & 20), and rotisserie motor assembly 92 (Figs. 17 & 22) and double-width, multi-mode cookers (Figs ), which are not as easily transported. TBC 1010, 168. PHOSITA would have understood that while Oliver disclosed flat storage as an objective, it clearly was not the sole objective of every disclosed embodiment. Id. a second cooking unit configured to cook food using solid cooking fuel As discussed above (at p. 32), Fig. 20 of Oliver discloses a solid fuel cooking unit on the same support structure with a gas fuel cooking unit. To overcome rejections based on Oliver during prosecution, the Patent Owner mischaracterized Fig. 20 as a dual unit embodiment, with both units using gas, and falsely represented that [n]owhere in Oliver is any description or suggestion that a cooking apparatus could include a charcoal cook unit and a gas cook unit. TBC 1002, p. 70. The Examiner never cited Oliver again for its teaching of dual mode cooking with gas and charcoal simultaneously, and incorrectly stated in the Reasons for Allowance that Oliver fails to disclose or make obvious multiple distinct fuels at one time. TBC 1002, p See TBC 1010, It is fundamental that the Board is not required to reject a petition SMRH:

45 based upon the fact that certain arguments or art were previously considered by the Office. Macauto U.S.V. v. BOS GmbH & KG, IPR , Paper 18 (Jan. 24, 2013) (instituting IPR on previously-cited reference). This is particularly so where, as here, the Examiner s allowance over the reference was based on a misunderstanding of its disclosure. See, e.g., LKQ Corp. v. Clearlamp, LLC, IPR , Paper 18 (Mar. 29, 2013) (instituting IPR where the Board disagreed with Examiner s conclusion that previously-cited reference taught away from claimed invention.) the second cooking unit attached to the support structure As shown in Fig. 20 of Oliver, the second cooking unit (on the right) is configured to cook food using solid cooking fuel (i.e., charcoal) and is attached to the support structure (leg stands 24 and 26). the second cooking unit including at least one second grill Fig. 20 of Oliver shows a grate or cooking grill on the charcoal side of the grill (right side). the second cooking unit further including an openable second cover attached to the second cooking unit that selectively covers the second grill As discussed above, Oliver discloses that two each reflectors 12 and 14 are assembled on rods 120, 122, 128 and 130. TBC 1005, 6: Reflectors 14 on rods 128 and 130 correspond to openable covers, and one of them corresponds to the openable second cover attached to the second cooking unit that selectively SMRH:

46 covers the second grill. the second cover includes at least one exhaust For the reasons discussed above (at pp ), it would have been obvious to modify the embodiment of Fig. 20 of Oliver to include a chimney or smoke stack in the openable cover of the second cooking unit. TBC 1010, 173. the first cooking unit and the second cooking unit are simultaneously operable to cook food Oliver discloses that the cooking units can be used simultaneously, and in Fig. 20 shows gas and charcoal configured to operate together. TBC 1005, 2: Oliver states that the system includes a number of additional features which enable it to be used in a number of different cooking modes as, for example, a grill, a baker, a boiler, a smoker, a steamer, a deep fat fryer, and the like. Some of these modes may be carried out simultaneously. Id., 1: the first grill and second grill are selectively and independently coverable Figs. 19 and 23 of Oliver show that the two covers (reflectors 14) are separately operable such that they selectively cover each grill independently. In SMRH:

47 describing the Fig. 23 embodiment, Oliver states [i]n this configuration, it is possible to open only one lid section at a time to reduce the loss of heat while attending to the food or fire at one end of the double width cooker. TBC 1005, 6: See TBC 1010, 175. While this feature is not shown in the Fig. 20 embodiment, PHOSITA would have understood that the two independent covers in the embodiment of Fig. 23 could be used in the embodiment of Fig. 20 as they are both shown on the same frame. TBC 1010, 175. From a common sense standpoint, the depicted one-lid or two-lid configurations are effectively taught for all base grill combinations. Id. Again, [c]ombining two embodiments disclosed adjacent to each other in a prior art patent does not require a leap of inventiveness. Boston, 554 F.3d at 991. Accordingly, for all of the above reasons, claim 1 would have been obvious over Oliver in view of Holland. TBC 1010, Independent claim 10 The invalidity analysis for claim 1 based on Oliver in view of Holland set forth in section VIII.E.1, supra, applies equally to claim 10. TBC 1010, Dependent claims 4 & 13 The barbeque grill of claim 1 [10], wherein the first cooking unit[means for cooking] and the second cooking unit [means for cooking] are operable independently of each other As noted in section VIII.E.1 (at p. 39), supra, Oliver teaches that various cooking modes may be carried out simultaneously. TBC 1005, 1: Oliver SMRH:

48 also discloses that in the Fig. 23 embodiment, each lid assembly may be lifted independently to tend to the food or fire at that end of the cooker. Id., 6: Thus, PHOSITA would have understood that the embodiments utilizing two cooking units (e.g., Figs. 19, 20 & 23) could be used simultaneously and were independently operable of each other. TBC 1010, Dependent claims 5 & 14 The barbeque grill of claim 1 [10], further comprising: at least one substantially vertical panel positioned between the first cooking unit [means for cooking] and the second cooking unit [means for cooking] As discussed in section VIII.E.1 (at pp ), supra, Oliver discloses lid ends 18, which are substantially vertical panels positioned between the first and second cooking units in the embodiments of Figs. 19, 20 and Dependent claims 7 & 15 The barbeque grill of claim 1 [10], wherein the support structure [means] is configured to hold [comprises a means for holding] at least one fuel container Oliver discloses that brackets 76 are used to support a propane burner 94 and propane tank 96, as shown in Fig. 20. TBC 1005, 6: Dependent claim 8 The barbeque grill of claim 1, wherein the first and second cooking units are each configured to hold food over a flame In the embodiment of Fig. 20, a grill or grate is shown in the cooking unit on the right side of the grill, and PHOSITA would have understood that it is SMRH:

49 configured to hold food over a flame. TBC 1010, 192. As discussed in section VIII.E.1 (at p. 34), supra, while a griddle is shown in the unit on the left in Fig. 20, it would have been obvious to substitute a grill or grate for the griddle, such that it would be configured to hold food over a flame. Id. Oliver also shows a grate over a gas flame in Fig. 25. Id. 7. Dependent claims 9 & 16 The barbecue grill of claim 1 [10], wherein the configuration of the at least one exhaust [means] of the first cover [means] includes a configuration of at least two exhausts As discussed in sections VIII.A.1 (at pp ) and VIII.E.1 (at pp ), supra, Holland discloses two smoke stack-type exhausts on the cover of a grill of any type, including gas-fueled, as shown in Fig. 1. TBC 1004, [0029], Fig. 1. For the reasons discussed, it would have been obvious to substitute the two Holland chimneys or smoke stacks for the slidable lid ends of Oliver. TBC 1010, Independent claim 17 For the reasons discussed in section VIII.E.1, supra, the common elements of claims 1 and 17 are disclosed in Oliver or would have been obvious to a person skilled in the art based on Oliver in view of Holland. TBC 1010, 178. With respect to the additional requirement of claim 17, Oliver discloses that the cooking units are substantially cylindrical in shape, as shown in Figs and 23. Accordingly, claim 17 would have been obvious over Oliver in view of Holland. Id., 179. SMRH:

50 9. Dependent claim 18 The barbeque grill of claim 17, wherein the first and second cooking units are supported by the support structure such that the substantially cylindrical shape of the first cooking unit and the substantially cylindrical shape of the second cooking unit are aligned substantially coaxially In Oliver, the substantially cylindrical shapes of the first and second cooking units are aligned coaxially, as shown in Figs and Dependent claim 19 The barbeque grill of claim 18, wherein the first cover forms a portion of the substantially cylindrical shape of the first cooking unit and the second cover forms a portion of the substantially cylindrical shape of the second cooking unit Oliver s first and second covers form a portion of the substantially cylindrical shape of both of the cooking units, as shown in Figs and Dependent claim 20 The barbecue grill of claim 17, wherein the configuration of the at least one exhaust of the first cover includes a configuration of at least two exhausts For the reasons discussed in sections VIII.A.1 (at pp ), VIII.A.8, and VIII.E.1 (at pp ), supra, it would have been obvious to add two exhausts to the openable covers of Oliver. TBC 1010, 194. SMRH:

51 F. Ground 6: Claims 2, 6 & 11 are Invalid as Obvious Over Oliver in View of Holland and Ducate 1. Dependent claims 2 & 11 The barbeque grill of claim 1 [10], further comprising: a side burner[burner means] supported by the supporting structure [structure means] As discussed in section VIII.B, supra, Ducate discloses a side cooker apparatus 80 attached to a barbecue grill 10. TBC 1006, 1:56-58; Figs the side burner comprising a component configured to prepare [burner means for preparing] food by radiating heat or emitting flames As discussed in section VIII.B, supra, Ducate teaches that the side cooker apparatus 80 includes an auxiliary gas burner 94. Id., 3: the side burner[burner means], the first cooking unit [means for cooking], and the second cooking unit [means for cooking] are simultaneously operable to cook food As discussed in section VIII.B, supra, PHOSITA it would have understood that Ducate s side burner is operable simultaneously with the main cooking grill. For the reasons discussed in section VIII.B, supra, as applied to Koziol, it would have been obvious to add a side burner such as disclosed in Ducate to the double-width embodiments of Oliver, such that the side burner would have been simultaneously openable with the first and second cooking units. TBC 1010, 181. PHOSITA would not have seen this as inconsistent with Oliver s objectives given Oliver s departures from those objectives in alternate embodiments. Id. SMRH:

52 2. Dependent claim 6 The barbeque grill of claim 1, wherein the support structure comprises at least two wheels While Oliver does not disclose that the support structure comprises at least two wheels, the addition of wheels to a support structure for a barbecue grill was well known in the art. TBC 1010, 188. For example, this feature is taught in many prior art patents, including Ducate. See Ducate, Figs The function and motivation for adding wheels to any barbecue grill is to make it more portable and allow users to move it around. TBC 1010, 188. Accordingly, it would have been obvious to add wheels to Oliver in order to make it more portable and easier to move around. Id. Again, it is the predictable use of prior art elements according to their established functions. KSR, 550 U.S. at 417. G. Ground 7: Claims 3 & 12 are Invalid as Obvious Over Oliver in View of Holland and Milloy 1. Dependent claims 3 & 12 The barbeque grill of claim 2 [11], further comprising: a firebox [firebox means] supported by the supporting structure [structure means] As discussed in section VIII.C, supra, Milloy shows a side firebox 12 that is attached to a barbecue grill 10 having an oven 14 and supported by frame 16 having legs 18. TBC 1007, Figs. 1 &2, 3:2-8. SMRH:

53 the firebox [firebox means] configured to provide heat or smoke to the second cooking unit when a fuel material is burned or combusted in the firebox [for providing heat or smoke to the second means for cooking] As discussed in section VIII.C, supra, Milloy teaches that heat and smoke come into the oven from the firebox. Id., 3: the firebox [firebox means] simultaneously operable with the side burner [burner means], the first cooking unit [means for cooking], and the second cooking unit [means for cooking] As discussed in section VIII.C, supra, Milloy s side firebox is simultaneously operable with the oven. TBC 1007, 1:33-36 & 8:7-11. For the reasons discussed in section VIII.C, supra, as applied to Koziol, it would have been obvious to add a side firebox, such as disclosed in Milloy, to the dual cooker embodiments of Oliver, including Fig. 20, in order to add the additional benefit of using the charcoal grill as a smoker, while maintaining the ability to use the first cooking unit as a gas grill. TBC 1010, 183. Again, this would not have been seen by PHOSITA as inconsistent with Oliver s objectives given Oliver s departures from those objectives in alternate embodiments. Id. H. Ground 8: Claims 1, 2, 4, 5, 7-11 & are Invalid as Obvious Over BGE Cooking Center Manual in View of Holland and BGE Manual The BGE Cooking Center Manual (TBC 1008) is dated December 2003, making it prior art under 35 U.S.C. 102(a). It was not a cited reference. The BGE Cooking Center Manual discloses The Big Green Egg Cooking Center, comprising a gas barbecue grill and a Big Green Egg charcoal grill on a single SMRH:

54 support structure. It also includes a side burner. The BGE Cooking Center Manual is directed mainly to the assembly and operation of the gas grill portion of the cooking center. It directs users (at TBC 1008, p. 11) to a separate manual for operation of the Big Green Egg, though it does provide assembly instructions for the Big Green Egg. Id., pp The BGE Manual (TBC 1009) has a copyright date of March 1999, making it prior art under 35 U.S.C. 102(b) as well. It was not a cited reference. The BGE Manual includes instructions on how to assemble and use the grill, a diagram of its components, and a discussion of features and benefits of the grill. 1. Independent claim 1 A barbecue grill having multiple cooking units As discussed in section VIII.A.1, supra, the preamble of claim 1 is not a limitation, but if so construed it is satisfied by the BGE Cooking Center Manual. SMRH: