Ex Parte Allard et alDownload PDFPatent Trial and Appeal BoardOct 31, 201713975448 (P.T.A.B. Oct. 31, 2017) Copy Citation United States Patent and Trademark Office UNITED STATES DEPARTMENT OF COMMERCE United States Patent and Trademark Office Address: COMMISSIONER FOR PATENTS P.O.Box 1450 Alexandria, Virginia 22313-1450 www.uspto.gov APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 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 2 Appeal 2016-006881 Application 13/975,448 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 3 Appeal 2016-006881 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 4 Appeal 2016-006881 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. 5 Appeal 2016-006881 Application 13/975,448 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 6 Appeal 2016-006881 Application 13/975,448 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 7 Appeal 2016-006881 Application 13/975,448 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 8 Copy with citationCopy as parenthetical citation