Ex Parte Bischofberger et al

Patent Trial and Appeal Board

Nov 23, 2016

13002655 (P.T.A.B. Nov. 23, 2016)

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.
13/002,655 01/05/2011 Thomas Bischofberger PTB-6032-77 2658
23117 7590 11/28/2016
NIXON & VANDERHYE, PC
901 NORTH GLEBE ROAD, 11TH FLOOR
ARLINGTON, VA 22203
EXAMINER
ZERPHEY, CHRISTOPHER R
ART UNIT PAPER NUMBER
3744
NOTIFICATION DATE DELIVERY MODE
11/28/2016 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):
PTOMAIL@nixonvan.com
pair_nixon @ firsttofile. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte THOMAS BISCHOFBERGER, MARTIN BUCHSTAB,
and HANS IHLE
Appeal 2015-000894
Application 13/002,655
Technology Center 3700
Before WILLIAM A. CAPP, AMANDA F. WIEKER, and
ARTHUR M. PESLAK, Administrative Patent Judges.
CAPP, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants seek our review under 35 U.S.C. § 134 of the final
rejection of claims 27—31, 33, 36-40, and 42—52. We have jurisdiction
under 35 U.S.C. § 6(b).
We AFFIRM.
Appeal 2015-000894
Application 13/002,655
THE INVENTION
Appellants’ invention relates to channel closure means for a defrost
water channel of a refrigeration unit. Spec. 11. Claim 27, reproduced
below, is illustrative of the subject matter on appeal.
27. A domestic refrigeration unit, comprising:
a defrost water channel to direct a flow of condensed water
collected from the refrigeration unit; and
a channel closure to temporarily close off the defrost water
channel,
wherein the channel closure is at least partially water-
soluble, and
wherein the channel closure is disposed in a vertical portion
of the defrost water channel such that the flow of condensed
water contacts an entire surface of the channel closure to
completely dissolve the channel closure when the flow of
condensed water reaches the channel closure.
THE REJECTIONS
The Examiner relies upon the following as evidence in support of the
rejections:
Goetz US 4,843,835 July 4, 1989
Chaves US 5,644,925 July 8, 1997
Chang US 5,720,183 Feb. 24, 1998
Suffa US 2003/0071057 A1 Apr. 17, 2003
Cantolino US 6,895,771 B1 May 24, 2005
Hiroshi JP 10267507 A Oct. 9, 1998
The following rejections are before us for review:
1. Claims 27—30, 33, 36—39, 45, 46, and 48—52 are rejected under 35
U.S.C. § 103(a) as being unpatentable over Hiroshi and Chaves.
2. Claims 44 and 47 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Hiroshi, Chaves, and Cantolino.
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Application 13/002,655
3. Claim 31 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Hiroshi, Chaves, and Chang.
4. Claim 40 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Hiroshi, Chaves, and Goetz.
3. Claims 42 and 43 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Hiroshi, Chaves, and Suffa.
OPINION
Unpatentability of Claims 27—30, 33, 36—39, 45, 46, and 48—52
over Hiroshi and Chaves
Claims 27—30, 33, 36—39, 45, 46, and 48—50
Appellants argue claims 27—30, 33, 36—39, 45, 46, and 48—50 as a
group. Appeal Br. 7—9. We select claim 27 as representative. See 37 C.F.R.
§ 41.37(c)(l)(iv) (2015).
The Examiner finds that Hiroshi discloses the invention as claimed,
except for locating the closure in a vertical portion of the water channel.
Final Action 2—3. The Examiner relies on Chaves as teaching a closure
disposed in a vertical portion of a water channel. Id. at 3. The Examiner
concludes that it would have been obvious to a person of ordinary skill in the
art at the time of the invention to locate Hiroshi’s water soluble channel
closure in a vertical portion as taught by Chaves. Id. According to the
Examiner, a person of ordinary skill in the art would have done this to
expedite contact of the closure means with the condensed water. Id.', see
also Ans. 9.
Appellants traverse the Examiner’s rejection by arguing that Chaves
teaches away from the proposed combination. Appeal Br. 7. Appellants
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Application 13/002,655
argue that Chaves is an alternative to a conventional U-shaped trap. Id. at 7—
8.
In response, the Examiner points out that Hiroshi is relied on to teach
all limitations except for locating the channel closure in a vertical section of
a water channel. Ans. 7. The Examiner further states that Hiroshi is not
limited to the location illustrated in its figures, but rather discloses that it
may be located at other portions of the defrost water channel. Id. (citing
Hiroshi 115).
Appellants’ teaching away argument is not persuasive. A reference
does not teach away if it merely discloses an alternative invention but does
not “criticize, discredit, or otherwise discourage” investigation into the
invention claimed. In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004).
Appellants have not directed us to any language in Chaves that criticizes,
discredits, or otherwise discourages investigation into placing a channel
closure in the vertical portion of a U-shaped trap.1
Next, Appellants argue that the Examiner’s stated motivation to
combine is not disclosed in the cited references. Appeal Br. 8.2 This
1 Although not explicitly relied on by the Examiner in the rejection of
claim 27, we note that Cantolino locates float ball 26 in valve housing 62,
located between second tubing 54 and P-trap 14. Cantolino, Figs. 2—4, 7,
col. 6,11. 17—22. Thus, it was known, at the time of the invention, to locate a
channel closure in a vertical section of a U-shaped trap. In our view, Chaves
is better understood as a mere alternative design, rather than as a teaching
away, from the valve configuration disclosed in Cantolino.
2 “Appellants respectfully submit that the reasoning provided in the
Office Action for combining Hiroshi and Chaves is unsupported by the
references.” Id. “Appellants believe that the reasoning provided by the
Office Action is not disclosed in the prior art cited.” Id.
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Application 13/002,655
argument is without merit. The Supreme Court has dispelled any notion that
the law requires the reason to combine to be disclosed in the applied art.
The diversity of inventive pursuits and of modem technology
counsels against confining the obviousness analysis by a
formalistic conception of the words teaching, suggestion, and
motivation, or by overemphasizing the importance of published
articles and the explicit content of issued patents.
KSRInt’l Co. v. Teleflex Inc., 550 U.S. 398, 402 (2007). Thus, it is well
settled that a reason to modify a prior art reference may be found explicitly
or implicitly in market forces; design incentives; the “interrelated teachings
of multiple patents”; “any need or problem known in the field of endeavor at
the time of invention and addressed by the patent”; and the background
knowledge, creativity, and common sense of the person of ordinary skill.
Perfect Web Techs., Inc. v. InfoUSA, Inc., 587 F.3d 1324, 1328—29 (Fed. Cir.
2009) (quoting KSR, 550 U.S. at 418-21).
Here, the Examiner finds that disposing the channel closure in a
vertical section facilitates contact of the water soluble closure means with
water. Final Action 3, Ans. 8—9. This is a sufficient non-hindsight reason
for a person of ordinary skill in the art to make the proposed combination.
In their reply, Appellants complain that the Examiner raised a new
motivation to combine in the Answer. Reply Br. 5. We disagree. At most,
the Examiner merely expounded upon the reason originally articulated in the
final action. Compare Final Action 3, with Ans. 8—9. In any event,
Appellants waived any “new grounds” argument by submitting a reply brief
instead of petitioning the Director. See 37 C.F.R. § 41.40(a).
We have considered Appellants’ remaining arguments and find them
to be without merit. In view of the foregoing discussion, we determine the
Examiner’s findings of fact are supported by a preponderance of the
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evidence and that the Examiner’s legal conclusion of unpatentability is well-
founded. Accordingly, we sustain the Examiner’s unpatentability rejection
of claims 27—30, 33, 36—39, 45, 46, and 48—50.
Claims 51 and 52
Appellants argue claims 51 and 52 together. Appeal Br. 9. We treat
claim 51 as representative. Claim 51 depends from claim 27 and adds the
limitation: “wherein the channel closure is positioned in the defrost water
channel such that the flow of condensed water contacts the entire channel
closure when the flow of condensed water reaches a predetermined height.”
Claims App. The Examiner finds this limitation satisfied by Hiroshi. Final
Action 5.
Appellants argue that Hiroshi does not meet the claim limitation
because one part of the water-soluble sealing agent is contacted earlier than
the rest. Appeal Br. 9. Appellants argue that Chaves does not disclose this
feature because condensate will initially coalesce around the outer periphery
of the spherical float. Id. at 10.
In response, the Examiner explains that the claim discusses what
happens functionally as water is drained from the system. Ans. 9. The
Examiner further explains that Hiroshi, as modified by Chaves, is capable of
performing this functional limitation. Id. at 10. The Examiner further
observes that claim 51 does not contain a temporal limitation as to when the
“entire” channel closure must be contacted by the flow of water. Id.
The Examiner states the better position on this issue. When Hiroshi is
modified so that its soluble channel closure is disposed in a vertical channel
section, flowing water, under the force of gravity, will disperse across the
upper surface of the channel closure.
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The Examiner’s position is supported by a preponderance of the
evidence and, accordingly, we sustain the rejection of claims 51 and 52.
Unpatentability of Claims 31 and 40
Claims 31 and 40 depend, directly or indirectly, from claim 27.
Claims App. Appellants do not argue for the separate patentability of these
claims and, therefore, have waived the right to argue them. See 37 C.F.R.
§ 41.37(c)(l)(iv)(2015). We sustain the rejection of claims 31 and 40.
Unpatentability of Claims 42 and 43
over Hiroshi, Chaves, and Suffa
Appellants argue claims 42 and 43 together and we select claim 42 as
representative. Appeal Br. 11—12. Claim 42 depends from claim 27 and
adds the limitation: “wherein the channel closure comprises a water-soluble
film that is drawn over an end face of a tube at an outlet end of the defrost
water channel.” Claims App.
The Examiner finds that Hiroshi discloses channel closure means in
the form of a water-soluble film. Final Action 6. The Examiner
acknowledges that Hiroshi’s water-soluble film is not drawn over the end
face of a tube. Id. The Examiner relies on Suffa as disclosing a sealing film
drawn over an end face. Id. (citing Suffa element 27 in Figure 1 and 126).
The Examiner concludes that it would have been obvious to a person of
ordinary skill in the art at the time the invention was made to form Hiroshi’s
film over the end face of an outlet tube. Id. According to the Examiner, a
person of ordinary skill in the art would have done this to provide a more
accessible surface to which the film can adhere. Id. at 6—7. Furthermore,
the Examiner observes that it is “simply obvious” to fix the film to one of
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the limited number of surfaces at the outlet end of the tube in order to obtain
the predictable result of sealing the tube. Id. at 7.
Appellants argue that Suffa’s film is not water-soluble, a point already
conceded by the Examiner. Appeal Br. 11—12. Appellants also argue that
Suffa is not analogous art. Neither argument is persuasive.
The Examiner’s rejection is based on a combination where Hiroshi
discloses a water-soluble film and Suffa discloses a location for placement
of the film. Ans. 11. Thus, Appellants’ argument that Suffa is not water-
soluble is not responsive to the grounds of rejection. See In re Merck & Co.,
800 F.2d 1091, 1097 (Fed. Cir. 1986) (non-obviousness cannot be
established by attacking references individually where the rejection is based
upon the teachings of a combination of references); In re Keller, 642 F.2d
413,425 (CCPA 1981).
With respect to the non-analogous art argument, a reference qualifies
as prior art for an obviousness determination when it is analogous to the
claimed invention. Innovention Toys, LLC. v. MGA Ent., Inc., 637 F.3d
1314, 1321 (Fed. Cir. 2011). “Two separate tests define the scope of
analogous art: (1) whether the art is from the same field of endeavor,
regardless of the problem addressed, and (2) if the reference is not within the
field of the inventor's endeavor, whether the reference still is reasonably
pertinent to the particular problem with which the inventor is involved.” In
re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004). The “field of endeavor” test
asks if the structure and function of the prior art is such that it would be
considered by a person of ordinary skill in the art because of similarity to the
structure and function of the claimed invention as disclosed in the
application. Id. at 1325—26. “A reference is reasonably pertinent if... it is
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one which, because of the matter with which it deals, logically would have
commended itself to an inventor's attention in considering his problem.” In
re Clay, 966 F.2d 656, 659 (Fed. Cir. 1992). “If a reference disclosure has
the same purpose as the claimed invention, the reference relates to the same
problem, and that fact supports use of that reference in an obviousness
rejection.” Id. Whether a prior art reference is “analogous” is a question of
fact. Id. at 658.
Suffa is analogous under at least the second prong of the two part test.
Suffa shows that it was known to seal the end of a tube with a film. The
need to seal, cover, or cap the end of a tube, pipe, or similar conduit is a
common problem that has common solutions with broad application among
the mechanical arts. Appellants’ arguments fail to convince us that merely
placing an obstruction over the outlet end of a tube to inhibit the flow of a
fluid rises to the level of a patentably non-obvious invention. “We find it
not unreasonable in cases such as this, involving relatively simple everyday-
type mechanical concepts, to permit inquiry into other areas where one of
even limited technical skill would be aware that similar problems exist.” In
re Heldt, 433 F.2d 808, 812 (CCPA 1970).
We sustain the rejection of claims 42 and 43.
Unpatentability of Claims 44 and 47
over Hiroshi, Chaves, and Cantolino
Appellants argue claims 44 and 47 together. Appeal Br. 10-11. We
select claim 44 as representative. See 37 C.F.R. § 41.37(c)(l)(iv) (2015).
Claim 44 depends from claim 28 and adds the limitation: “wherein
the channel closure is disposed in front of the siphon in a direction of the
flow of condensed water.” Claims App. Claim 28, in turn, depends from
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claim 27 and adds the limitation: “wherein the defrost water channel is a
siphon.” Id. The Examiner relies on Cantolino as disclosing a channel
closure disposed in front of a siphon as claimed. Final Action 5.
Appellants argue that the feature relied upon by the Examiner is
disposed downstream, not upstream, of Cantolino’s treatment tablets 30,
which were initially identified by the Examiner as corresponding to the
claimed channel closure. Reply Br. 6. The Examiner, however, offers an
alternative finding that Cantolino’s float ball 26 is disposed in front of
siphon 16 in a direction of the flow of condensed water. Ans. 11. The
Examiner concludes that it is obvious to apply Cantolino’s teaching
regarding float ball 26 to Hiroshi. Id. According to the Examiner, the
reasoning for doing this would have been to prevent fouling odor and
bacteria. Id.
In reply, Appellants argue that Cantolino’s float ball arrangement is
“very similar” to the trap of Chaves. Reply Br. 7. Appellants argue that
Cantolino is not combinable with Chaves for essentially the same reason
Appellants argued with respect to Chaves on the rejection of claim 27. Id.
Appellants’ position regarding Cantolino and claim 44 is belied by the
arguments Appellants advanced against claim 27 regarding Chaves. With
respect to claim 27, Appellants argued that Chaves taught away from the
invention by disparaging the “U-shaped trap.” Appeal Br. 8. Now, when
confronted with Cantolino’s U-shaped trap (siphon 16, Fig. 2), Appellants
characterize Cantolino and Chaves as “very similar.”
The Examiner’s finding that Cantolino discloses a channel closure
disposed in front of the siphon in the direction of the flow of condensed
water is supported by a preponderance of the evidence. Ans. 11. The
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Examiner’s proposed modification of Hiroshi’s water soluble channel
closure by disposing it in a vertical channel section upstream of a siphon is
supported by sound reasoning. We sustain the rejection of claims 44 and 47.
DECISION
The decision of the Examiner to reject claims 27—31, 33, 36-40, and
42—52 is affirmed.
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
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