BSH Home Appliances Corporation et al.

Patent Trials and Appeals Board

Mar 31, 2022

2022000222 (P.T.A.B. Mar. 31, 2022)

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. 15/727,654 10/09/2017 Horst Drotleff 2017P02511US 6902 46726 7590 03/31/2022 BSH Home Appliances Corporation 100 Bosch Boulevard NEW BERN, NC 28562 EXAMINER SULLENS, TAVIA L ART UNIT PAPER NUMBER 3763 NOTIFICATION DATE DELIVERY MODE 03/31/2022 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): MBX-NBN-IntelProp@bshg.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte HORST DROTLEFF and MARCO MARQUES ____________ Appeal 2022-000222 Application 15/727,654 Technology Center 3700 ____________ Before MURRIEL E. CRAWFORD, BRUCE T. WIEDER, and TARA L. HUTCHINGS, Administrative Patent Judges. HUTCHINGS, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s final rejection of claims 1-3. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 1 We use the term “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies BSH Home Appliances Corporation and BSH Hausgeräte GmbH as the real parties in interest. Appeal Br. 2. Appeal 2022-000222 Application 15/727,654 2 CLAIMED INVENTON Appellant’s claimed invention relates to an ice bucket for a refrigerator having noise dampening characteristics. See Spec. ¶ 1. Claim 1, reproduced below, is the sole independent claim on appeal, and is representative of the claimed subject matter: 1. A refrigerator comprising: an ice compartment region disposed in at least one of a fresh food compartment or a freezer compartment; an ice maker disposed in the ice compartment region; and a removable ice bucket for storing ice, the removable ice bucket being removably disposed in the ice compartment region, wherein the removable ice bucket comprises means for dampening noise created by ice pieces falling from the ice maker during ice harvest and impacting the removable ice bucket, the means for dampening noise being formed structurally as a single piece with the removable ice bucket so as to be a unitary, one-piece structure therewith, such that the means for dampening noise is entirely removed together with the removable ice bucket on condition that the removable ice bucket is removed from the ice compartment region. Appeal Br. 12 (Claims App.). Appeal 2022-000222 Application 15/727,654 3 REJECTIONS Claims 1 and 3 are rejected under 35 U.S.C. § 102(a)(1) as anticipated by Yoon (KR 2010-0018995, pub. Feb. 18, 2010).2 Claims 1 and 3 are rejected under 35 U.S.C. § 103 as obvious over Yoon. Claim 2 is rejected under 35 U.S.C. § 103 as unpatentable over Yoon and Benz (US 2001/0239688 A1, pub. Oct. 6, 2011). Claim 2 is rejected under 35 U.S.C. § 103 as unpatentable over Yoon and Nelson (US 6,050,097, iss. Apr. 18, 2000). ANALYSIS Anticipation We are persuaded by Appellant’s argument that the Examiner erred in rejecting claim 1 under 35 U.S.C. § 102(a)(1) because Yoon does not teach that the means for dampening noise is “formed structurally as a single piece with the removable ice bucket so as to be a unitary, one-piece structure therewith,” as recited in claim 1. Appeal Br. 7-8. The Examiner finds that Yoon’s pad member 100 teaches the claimed means for dampening. Final Act. 6 (citing Yoon Figs. 3-6). Appellant argues that Yoon’s pad 100 is a separate pad fixed to ice bucket 60 either by fixing part 110 and locking part 115 (Figures 3-5), or by trim portion 130 and locking portion 69 (Figure 6). Id. at 8 (citing Yoon Figs. 3-5). As such, Yoon’s pad is not formed structurally as a single piece with the removable ice bucket so as to be a unitary, one-piece structure therewith, as required by claim 1. Appeal Br. 7- 2 The Examiner provided a machine-generated translation for Yoon. We refer to the translation as “Yoon Transl.” Appeal 2022-000222 Application 15/727,654 4 8. The Examiner, however, takes the position that Yoon’s pad teaches the argued limitation because it forms a one-piece, unitary structure with the bucket when it is fixed to the bucket during assembly. Ans. 8-9; see also id. at 9 (explaining that Figure 6 of Yoon shows that “the entire ice bucket must be disassembled to remove the pad”). Appellant’s Specification does not provide a definition for the claim term “unitary.” However, the Specification distinguishes an embodiment in which the means for dampening noise is formed by “co-injection, deposition and the like” (Spec. ¶ 39) from an alternative embodiment in which the means for dampening noise is “added to the interior space of the ice bucket 21 as a separate piece” (id. ¶ 41; see also id. ¶ 14). In our view, one of ordinary skill in the art would understand the claimed means for dampening noise in view of the Specification to be formed structurally as a one-piece structure, such as by co-injection or deposition, not a plurality of separate structures assembled into one structure. The Examiner finds that Yoon teaches pad 100 as a separate structure attached by further separate structures. Therefore, the Examiner has not adequately established that Yoon discloses the claimed means for dampening noise. Accordingly, we do not sustain the Examiner’s rejection of claim 1 and dependent claim 3 under 35 U.S.C. § 102(a)(1). Obviousness We are not persuaded by Appellant’s argument that the Examiner erred in rejecting independent claim 1 under 35 U.S.C. § 103 because the Examiner fails to establish that it would have been obvious to a person of ordinary skill in the art to modify Yoon’s pad to be “formed structurally as a single piece with the removable ice bucket so as to be a unitary, one-piece Appeal 2022-000222 Application 15/727,654 5 structure therewith,” as recited in claim 1. See Appeal Br. 8-10. Specifically, Appellant argues that the Examiner is relying on per se rules to establish obviousness, that the Examiner relies on Appellant’s Specification to establish obviousness, and that the Examiner “has not pointed to any evidence to show that [the benefit of the modification] would have been predictable to those of ordinary skill in the art.” Id. at 9. However, for the reasons discussed below, we determine that the Examiner has set forth an adequate design choice rationale for modifying Yoon. In rejecting claim 1 under 35 U.S.C. § 103, the Examiner acknowledges that Yoon’s pad and removable ice bucket are formed as separate pieces and assembled to form a multi-piece structure. Final Act. 6. Nonetheless, the Examiner determines that forming Yoon’s pad 100 with bucket 60 as a unitary, one-piece structure would have been obvious as a matter of routine design choice for the skilled artisan. Id. at 7. In particular, the Examiner relies on In re Larson, 340 F.2d 965, 968 (CCPA 1965) for the proposition that using an integral, one-piece construction, instead of a multi- piece structure, is a matter of obvious engineering choice. Final Act. 7; see also Manual of Patent Examination Procedure § 2144.04(V)(B), Ninth Edition, Rev. 10.2019 (June 2020). The Examiner points to Appellant’s Specification to support the design choice rationale. Final Act. 6-7. Specifically, the Examiner finds that Appellant’s Specification describes that the means for dampening noise could be formed as a single piece with the ice bucket or as a separate piece with the bucket. Id.; see also Spec. ¶¶ 39, 41 (describing both embodiments of the means for dampening noise). The Examiner finds that the Specification does not indicate that the one-piece structure performs better Appeal 2022-000222 Application 15/727,654 6 than the multi-piece structure. See Final Act. 6-7. Accordingly, the Examiner concludes that the means for dampening noise being formed with the bucket as a unitary, one-piece construction is not critical to Appellant’s invention. Id. at 7. Appellant argues that forming the means for dampening noise as a single piece with the ice bucket “reduces the complexity in manufacturing the removable ice bucket” and is “much easier for the user to clean and maintain.” Appeal Br. 10. However, these assertions amount to mere attorney argument and, thus, do not demonstrate criticality. See In re Pearson, 494 F.2d 1399, 1405 (CCPA 1974) (holding “[a]ttorney’s argument[s] in a brief cannot take the place of evidence”). The Examiner explains that a person of ordinary skill in the art would select this particular design choice (i.e., a unitary, one-piece structure of the pad and bucket) to simplify cleaning. Final Act. 7. As such, the Examiner’s rationale takes account of the inferences and creative steps that a person of ordinary skill in the art would employ, which suffices to establish obviousness. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (explaining that an obviousness analysis “need not seek out precise teachings directed to the specific subject matter of the challenged claim, for a court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ”). For at least these reasons, we determine that the Examiner has articulated adequate reasoning with rational underpinning as to why one of ordinary skill in the art would have modified Yoon to result in the claimed subject matter. See In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (“[R]ejections on obviousness grounds [require] some articulated reasoning Appeal 2022-000222 Application 15/727,654 7 with some rational underpinning to support the legal conclusion of obviousness.”). In any case, Yoon teaches this limitation, describing that the pad could be inserted into the ice bucket as a separate structure (Figure 6), or formed integral with the ice bucket by injection (not shown). See Yoon Transl. 3 (“The pad member is inserted and shaped in the ice storage container or it becomes with the double injection.”); 5 (“As shown in FIG. 6 the pad member (100) is inserted and shaped in the ice storage container (60) or it can be injected among this.”); see also Spec. ¶ 39 (identifying injection as a method of forming the means for dampening noise as a one-piece, unitary structure with the ice bucket). Accordingly, we sustain the Examiner’s rejection of claim 1 and dependent claim 3 under 35 U.S.C. § 103. We also sustain the Examiner’s rejections under 35 U.S.C. § 103 of dependent claim 2, which Appellant does not separately argue. CONCLUSION In summary: Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1, 3 102(a)(1) Yoon 1, 3 1, 3 103 Yoon 1, 3 2 103 Yoon, Benz 2 2 103 Yoon, Nelson 2 Overall Outcome 1-3 Appeal 2022-000222 Application 15/727,654 8 No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 1.136(a)(1)(iv) (2020). AFFIRMED