Ex Parte Allard et al

Patent Trial and Appeal Board

Oct 31, 2017

13975448 (P.T.A.B. Oct. 31, 2017)

United States Patent and Trademark Office
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O.Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
13/975,448 08/26/2013 Paul B. ALLARD SUB-0291 l-US-NP 5743
173 7590 11/02/2017
WHIRLPOOL CORPORATION - MD 3601
2000 NORTH M63
BENTON HARBOR, MI 49022
EXAMINER
ZERPHEY, CHRISTOPHER R
ART UNIT PAPER NUMBER
3744
NOTIFICATION DATE DELIVERY MODE
11/02/2017 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):
whirlpool_patents_co@whirlpool.com
mike_lafrenz @ whirlpool .com
deborah_tomaszewski@whirlpool.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte PAUL B. ALLARD and YEN-HSI LIN
Appeal 2016-006881
Application 13/975,4481
Technology Center 3700
Before EDWARD A. BROWN, AMANDA F. WIEKER, and
FREDERICK C. LANEY, Administrative Patent Judges.
LANEY, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Paul B. Allard and Yen-His Lin (Appellants) appeal under
35 U.S.C. § 134(a) from the Examiner’s decision rejecting claims
1—17 under 35 U.S.C. § 103(a) as unpatentable in view of Kim
(US 6,125,641, iss. Oct. 3, 2000) and Aizenberg (US 2014/0147627 Al,
pub. May 29, 2014). We have jurisdiction over this appeal under 35 U.S.C.
§ 6(b).
We AFFIRM-IN-PART.
1 According to Appellants, the real party in interest is Whirlpool
Corporation. Appeal Br. 3 (filed December 29, 2015).
Appeal 2016-006881
Application 13/975,448
INVENTION
Appellants’ invention relates “to combined refrigerator/freezer
appliances with dampers having ice prevention treatments.” Spec. 11.
Claims 1 and 10 are independent claims. Claim 1 is illustrative of the
claimed invention and reads as follows:
1. A combined refrigerator/freezer appliance comprising:
a cabinet having a first compartment and a second separate
compartment;
a refrigeration system including a compressor, a single
evaporator and a condenser, the single evaporator being
associated with the first compartment to lower temperatures of
the first and second compartments; and
a damper having a first position in which air is prevented
from flowing from the first compartment to the second
compartment, and a second position in which air is permitted to
flow from the first compartment to the second compartment,
wherein at least a portion of the damper is treated to prevent ice
buildup from forming on the at least portion of the damper when
the damper is in the first position.
Appeal Br. 15 (Claims App.) (emphasis added).
ANALYSIS
Claims 1, 2, 7, 8, 10, If and 16
The Examiner’s determination that independent claims 1 and 10
would have been obvious in view of Kim and Aizenberg relies on the same
findings and rationale. See Final Act. 4—5, 6. Likewise, Appellants rely on
the same contentions challenging the Examiner’s determination. Compare
Appeal Br. 5—6, with id. at 9-11. The patentability of claims 2, 7, 8, 11, and
16 are not argued separately, instead, Appellants indicate they stand or fall
with their respective parent claim. Id. at 6, 11. We select accordingly claim
1 as the representative claim to decide the appeal of the rejection of these
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claims, with claims 2, 7, 8, 10, 11, and 16 standing or falling with claim 1.
See 37 C.F.R. § 41.37(c)(l)(iv).
For claim 1, the Examiner finds Kim discloses each of the structural
elements, except “wherein at least a portion of the damper is treated to
prevent ice buildup from forming on the at least portion of the damper when
the damper is in the first position.” Final Act. 4. The Examiner finds
Aizenberg discloses the missing limitation, however. Id. Noting Kim
“discusses the desire to prevent frost formation on [the] damper,” citing
column 3, lines 49-60, the Examiner determines “[i]t would have been
obvious to a person having ordinary skill in the art at the time of the
effective filing date to have provided the damper of Kim with the surface
treatment of Aizenberg in order to prevent ice buildup.” Id. at 4—5. The
Examiner asserts the modification is simply applying a known technique to a
known device that is ready for improvement in a known way. Id. at 5.
Finally, the Examiner explains,
Kim . . . teaches a refrigerator with a damper and the desire to
prevent ice build-up on said damper by using an operation
method. Aizenberg discloses a surface treatment which prevents
or reduces ice buildup. . . .[T]he damper of Kim being a known
place for undesirable ice formation would lead one of ordinary
skill in the art to select treatments that reduce undesirable ice
formation.
Id. at 6.
Appellants challenge the Examiner’s reasoning for modifying the
damper of Kim with the surface coating of Aizenberg. Appeal Br. 5—6.
Appellants contend first, “the Examiner has not shown that the [ice
prevention coating] technique of Aizenberg is applicable to a baffle of a
refrigerator damper,” or that the proposed combination was within the
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Application 13/975,448
capabilities of a skilled artisan. Id. at 6. Although recognizing the Examiner
identifies Aizenberg teaches applying an ice preventing coating to aluminum
“widely used ... as cooling fins of heat exchangers in refrigeration systems”
(Aizenberg 1411), Appellants simply conclude this finding is insufficient.
Appeal Br. 6.
Appellants’ challenge is unpersuasive. Appellants notably do not
provide any evidence, or even argue, there are any significant differences
between the material used for the damper and the heat exchanger fins in a
refrigerator system. Furthermore, Appellants do not provide any technical
reasons to explain why the icing issues with heat exchangers and dampers,
both in the context of a refrigerator system, are significantly different such
that a skilled artisan would not readily appreciate a coating technique that
improves the ability of one to avoid ice accumulation would also improve
the other. Aizenberg indisputably teaches an ice preventive coating for a
material (such as the fins on a heat exchanger) that is subject to ice
accumulation in a refrigerator systems and this fact itself provides a factual
basis from which it is at least reasonable for the Examiner to conclude a
skilled artisan would have known the coating to be applicable to other parts
(i.e., dampers) of a refrigerator system experiencing ice accumulation. We
note further Aizenberg teaches that the disclosed coating may be applied to a
wide range of materials, and for a wide range of applications. See, e.g.,
Aizenberg || 128, 152. As a result, balancing the weight of the evidence in
the record before us, we find the Examiner’s position more persuasive.
Appellants assert next that the addition of the ice preventive coating
taught by Aizenberg to the prior art adaptor Kim discloses, which is the
combination the Examiner proposes, would render Kim unsatisfactory for its
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Application 13/975,448
intended purpose. Appeal Br. 6. As support, Appellants point to the fact
that “Kim specifically teaches regulating the opening and closing of the
damper [to prevent ice from forming on the damper] and avoiding the
addition of further structure.” Id. (citing Kim col. 3,11. 53—56, col. 4,11. 1—
28). Appellants’ contention, however, does not demonstrate persuasively
how the proposed modification would make Kim’s device unsatisfactory for
its intended purpose. Although Appellants are correct Kim states an intent
to avoid using “any additional devicefs/” (col. 3,11. 53—56 (emphasis
added)), when viewed in context, the evidence supports the Examiner’s
finding that the kind of devices Kim is referring to are heater type devices
rather than coatings on existing devices. Ans. 7 (citing Kim col. 3,1. 45, col.
7,1. 38). Appellants notably do not provide any evidence, or technical
reasoning, that shows the addition of a coating to the damper in Kim would
actually require any other changes to the design and operation of the
refrigerator system Kim discloses, nor is it readily apparent any changes are
necessary.
Regardless, we do not agree avoiding additional devices is a proper
characterization of the intended purpose of Kim’s invention; rather, it is a
benefit. We agree with the Examiner that the intended purpose of the
invention in Kim is to prevent ice from forming on a damper in a
refrigerator. Id.', Kim col. 3,11. 48—51. A preponderance of the evidence
supports the Examiner’s finding that the addition of a coating that helps
guard against ice accumulation on the damper would actually increase the
effectiveness of Kim’s invention to “prevent[] unwanted frost build-up.”
Ans. 7. Appellants, therefore, have not shown persuasively how Kim would
be unsatisfactory for its intended purpose.
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Lastly, Appellants’ argument that the Examiner’s reasoning changes
Kim’s principle of operation is unpersuasive. Appeal Br. 6. According to
Appellants, this is so because “the Examiner is replacing Kim’s ice
prevention means (baffle control) with a completely different ice prevention
means (a coating).” Id. Appellants do not identify anything from the
Examiner’s reasoning that requires this substitution, however. We note
conversely that the Examiner’s rejection of claim 1 actually cites to Kim’s
discussion of a prior art refrigerator system and does not actually cite to the
inventive refrigerator system Kim discloses. See Final Act. 4 (identifying
structures found in Figures 1 and 2 of Kim, which are identified as prior art,
and citing portions of the Specification in Kim that discuss the prior art). In
addition, even if the Examiner had relied upon Kim’s inventive refrigerator
system, Appellants offer no evidence or technical reasoning to show why the
damper in Kim could not operate as described when modified to use the
coating technique Aizenberg discloses. Nor is it readily apparent why the
Kim and Aizenberg techniques for addressing ice accumulation are mutually
exclusive. As a result, balancing the weight of the evidence in the record
before us, we find the Examiner’s position more persuasive.
For the foregoing reasons, Appellants have not shown persuasively
any error with the Examiner’s obviousness determination of claim 1, which
has support by a preponderance of the evidence and a rational underpinning.
Therefore, we sustain the Examiner’s rejection of claims 1, 2, 7, 8, 10, 11,
and 16.
Claims 3 and 12
Claims 3 and 12 recite, “wherein treatment of the at least portion of
the door comprises an icephobic coating applied to a surface of the at least
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portion of the door,” which the Examiner finds Aizenberg discloses at
paragraph 157. Final Act. 5. Appellants have not persuasively shown error.
Alleging paragraph 157 deficient to support the Examiner’s finding,
Appellants assert “[tjhere is no disclosure ... of any coating, let alone an
icephobic coating.” Appeal Br. 7. These claims, however, depend from
claims 1 and 10, respectively and, for those parent claims, the Examiner has
already shown Aizenberg discloses an “icephobic coating.” See Final Act. 4
(Aizenberg, at paragraphs 420, teaches the Liquid B coating has shown in
tests to have “an order of magnitude decrease in the ice adhesion strength
than that of state-of-the-art icephobic surfaces”). As dependent claims,
claims 3 and 12 are subject to the factual findings the Examiner made for
parent claims 1 and 10. Therefore, we sustain the Examiner’s rejection of
dependent claims 3 and 12.
Claims 4—6 and 13—15
Claims 4—6 and 13—15 each, either directly or indirectly, require a
treatment that uses “silicon oil infused polydimethylsiloxane,” which is also
known as “silicon oil infused PDMS,” and Appellants contest the
Examiner’s finding Aizenberg discloses this treatment. Appeal Br. 7, 15—
17. Appellants’ challenge is persuasive. While Aizenberg does disclose a
PDMS coating, there is no evidence PDMS is the same as silicon infused oil
PDMS coating. The Examiner relies on Aizenberg’s teaching of a PDMS
structure coated with PDMS (Final Act. 5; Ans. 8), but a preponderance of
the evidence does not support this combination changes the PDMS coating
to a silicon infused oil PDMS coating. Moreover, regardless of whether the
PDMS structure is being infused with a silicon oil (PDMS), the claim
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requires the “coating” itself to be a silicon infused oil PDMS. Therefore, we
do not sustain the Examiner’s rejection of claims 4—6 and 13—15.
Claims 9 and 17
Claims 9 and 17 further limit the adapter structure of claims 1 and 10
to have a coating on at least a portion of the door and housing. Appellants
argue unpersuasively that, even if it has been properly shown that treating
the adapter door to prevent ice buildup would have been obvious, the
Examiner has not shown it would have been obvious to treat both the adapter
door and housing. See Appeal Br. 9, 13. For the reasons discussed above in
the context of claim 1, we do not find error with the Examiner’s
determination that a skilled artisan would have found it obvious to apply the
coating technique that Aizenberg teaches to any surface of the adapter a
skilled artisan knew to be subject to unwanted ice accumulation. Therefore,
we sustain the Examiner’s rejection of claims 9 and 17.
DECISION
The Examiner’s rejection of claims 1—3, 7—12, 16, and 17 is affirmed.
The Examiner’s rejection of claims 4—6 and 13—15 is reversed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED-IN-PART
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