Ex Parte Bischofberger et al

Patent Trial and Appeal BoardMar 29, 2016

12679705 (P.T.A.B. Mar. 29, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 12/679,705 03/24/2010 46726 7590 03/31/2016 BSH Home Appliances Corporation 100 Bosch Boulevard NEW BERN, NC 28562 FIRST NAMED INVENTOR Thomas Bischofberger 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 ATTORNEY DOCKET NO. CONFIRMATION NO. 2007P02361 WOUS 9033 EXAMINER ANDEREGG,ZACHARYR ART UNIT PAPER NUMBER 3744 NOTIFICATION DATE DELIVERY MODE 03/31/2016 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): 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 THOMAS BISCHOFBERGER, HANS IHLE, ANDREAS KEMMER, and ANDREAS KEMPTE Appeal2014-000495 Application 12/679,705 Technology Center 3700 Before MICHAEL L. HOELTER, ANNETTE R. REIMERS, and MARK A. GEIER, Administrative Patent Judges. HOELTER, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE This is a decision on appeal, under 35 U.S.C. Â§ 134(a), from a final rejection of claims 12-34. Appeal Br. 5. Claims 1-11 have been canceled. Appeal Br. 10 (Claims App.) We have jurisdiction under 35 U.S.C. Â§ 6(b). We AFFIRM. Appeal2014-000495 Application 12/679,705 THE CLAIMED SUBJECT MATTER The disclosed subject matter relates to a refrigeration appliance featuring a thermally insulated housing, whose interior is accessible via a door that can be opened and closed, at least one flow path for supplying air into the interior, a blower for generating an airflow along the flow path, and an air filter which is arranged in the flow path. Spec. ,-i 1. Claims 12 and 23 are independent. Independent claim 12 is illustrative of the claims on appeal and is reproduced below: 12. A refrigeration appliance comprising: a thermally insulated housing, the interior thereof being accessible via a door that can be opened and closed; at least one flow path for supplying air into the interior, wherein the at least one flow path is configured to recirculate at least a part of the air through the interior of the housing; a blower for generating an airflow along the flow path; and an air filter which is arranged in the flow path and extends over only part of a flow cross-section thereof such that at least a part of the air that passes through the interior of the housing is unfiltered. REFERENCES RELIED ON BY THE EXAMINER Kim Mitchell US 2004/0118276 Al US 2007 /0209978 A 1 THE REJECTIONS ON APPEAL June 24, 2004 Sept. 13, 2007 Claims 12-34 are rejected under 35 U.S.C. Â§ 103(a) as unpatentable over Mitchell and Kim. 2 Appeal2014-000495 Application 12/679,705 ANALYSIS Appellants argue independent claims 12 and 23 together, and Appellants also argue dependent claims 17 and 27 together. Appeal Br. 5-9. Appellants do not present separate arguments for dependent claims 13-16, 18-22, 24-26, and 28-34. Accordingly, we select claims 12 and 17 for review with claims 13-16 and 18-34 standing or falling therewith. See 37 C.F.R. Â§ 41.37(c)(l)(iv) (2015). Claim 12 As for claim 12, the Examiner finds that Mitchell teaches all but the final clause (i.e., "that at least a part of the air that passes through the interior of the housing is unfiltered"). Final Act. 2. For the structure recited in the final clause of claim 12, the Examiner turns to Kim, stating: "Kim teaches an air filter which is arranged in the flow path (Fig. 8B; 'HEPA filter 808' at paragraph [0033]) and extends over only part of a flow cross-section (Fig. 8B; 'bypass passage 720' at paragraph [0032])." Final Act. 3. The Examiner states that it would have been obvious "to modify the air filter of Mitchell to extend over only part of a flow cross-section as taught by Kim." Final Act. 3 (referencing Kim, Fig. 8B). The Examiner's stated motivation for doing so is "taught by Kim in paragraph [0037]: placing the filter over only a part of the flow cross section 'minimizes air pressure loss and attenuates operation noise caused by the HEP A filter."' Final Act. 3; see also Kim ,-i,-i 26, 34. In response to the Examiner's findings concerning claim 12, Appellants contend that the Examiner "fails to consider the entirety of Kim's disclosure" such that the Examiner fails to address Kim's "prefilter 802" through which the air passes prior to optionally passing through or bypassing 3 Appeal2014-000495 Application 12/679,705 HEPA filter 808. Appeal Br. 5-6; Reply Br. 2-3; see also Kim iii! 33, 34, Figs. 8A, 8B. The essence of Appellants' argument is that all of the air that passes through the Kim air purification device is at least prefiltered by prefilter 802, notwithstanding that the HEP A filter 808 may be selectively bypassed. Kim iii! 33, 34. Appellants also point to paragraph 26 of Kim as supporting their position. Appeal Br. 7. Appellants' argument is not persuasive. What Appellants overlook is that the entirety of the Kim filtration system, including prefilter 802, need not be bodily incorporated into the Mitchell refrigeration device in order to justify the obviousness rejection proffered by the Examiner. 1 The Examiner relies upon Kim for the specific teaching regarding a specific air filter (i.e., "HEPA filter 808," (Final Act. 3)) which is arranged in the air flow path and which can also be by-passed if desired. See Final Act. 3; Ans. 7-8. More specifically, as per the Examiner, "Kim has only been used to provide the teaching that it is old and well known in the art of air filtration to provide an air filter with a bypass in order to reduce pressure drop of the air flowing through the air filter." Ans. 7-8. As reiterated by the Examiner, "[t]he primary reference of Mitchell provides the teaching of a refrigerator with an air filter." Ans. 8. Accordingly, Kim is not "barred from having additional features beyond the teachings taken from it." Ans. 8. Rather, "if a technique has been used to improve one device, and a person of ordinary skill in the art 1 It is well settled that obviousness does not require that all of the features of the secondary reference be bodily incorporated into the primary reference. In re Keller, 642 F.2d 413, 425 (CCPA 1981). 4 Appeal2014-000495 Application 12/679,705 would recognize that it would improve similar devices in the same way, using the technique is obvious unless its actual application is beyond his or her skill." KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007). On this point, Appellants have not indicated that incorporating Kim's teachings regarding a filter bypass (Kim iJ 34) into the device of Mitchell would have been beyond the abilities of one skilled in the art. Appellants' contention is not persuasive of Examiner error. Appellants also contend that the benefit obtained by the combination of Mitchell and Kim (i.e., "minimizing pressure loss and attenuating operational noise") "is based on pure speculation because there is no evidence of record to suggest that Mitchell's device suffers from these problems." Appeal Br. 8; see also Reply Br. 3--4. However, whether or not Mitchell acknowledges that it "suffers from these problems," is not the correct inquiry. Instead, we are instructed that "it can be important to identify a reason that would have prompted a person of ordinary skill in the relevant field to combine the elements in the way the claimed new invention does." KSR, 550 U.S., at 418. On this point, the Examiner states that it would have been obvious to combine Mitchell and Kim "as reduction of pressure loss would allow the ventilator of Mitchell to operate more efficiently" and reduce noise. Ans. 9; see also Final Act. 3. Accordingly, we are not persuaded the Examiner failed to provide articulated reasoning with rational underpinning to support the legal conclusion of obviousness. See KSR, 550 U.S. at 418. Appellants further argue that they discovered "that the need for a high efficiency refrigerator (the problem) can be met by having only a portion of air passing through an air filter within the refrigerator (the solution)." 5 Appeal2014-000495 Application 12/679,705 Appeal. Br. 8; see also Reply Br. 3-4. According to Appellants: "Appellants discovered that part of the problem of inefficient refrigerators is excessive power consumption by the air filtration system and that this problem can be solved by the features of claim 12 []. Because Appellants discovered the problem and provided a solution, this is indicia of non- obviousness." Appeal Br. 8-9. However, as noted by the Examiner: "Kim clearly recognizes that an advantage of a filter bypass, resulting in only a portion of air passing therethrough to be filtered, is to reduce pressure loss and noise attenuation in the air flowing through the filter (see Kim at paragraph [0037])." Ans. 9. In view of these teachings in Kim, Appellants' argument that they discovered this problem or that the Examiner is relying on "impermissible hindsight" is unpersuasive. Reply Br. 3--4. Furthermore, "[i]n determining whether the subject matter of a patent claim is obvious, neither the particular motivation nor the avowed purpose of the [Appellants] controls." KSR, 550 U.S. at 419; see also In re Linter, 458 F.2d 1013, 1016 (CCPA 1972). In view of the record presented, we sustain the Examiner's rejection of claim 12, as well as claims 13-16, 21-26, 32, and 33 which depend therefrom. Claim 17 Claim 17 requires that the air filter be arranged "such that it is mounted in front of an overpressure side of the blower." Appellants contend that (a) "Mitchell is silent regarding direction of airflow;" (b) "Kim is the only reference that teaches a direction for airflow;" and, ( c) "Kim teaches a direction of airflow that is opposite to that recited in the claims." Appeal Br. 7 (emphasis omitted); see also Reply Br. 6. 6 Appeal2014-000495 Application 12/679,705 According to the Examiner, Figure 5 of Mitchell discloses a fan 105, a filter 102 and graphics 118. Ans. 10. Graphics 118 are used to indicate "to a user that the air filter is in need of replacement." Ans. 10; see also Mitchell ,-i 42. The Examiner reasons "that the air filter is on an overpressure side of the fan" because in that fashion, it would "be facing the interior of the refrigerator in order for a user to notice when the indication has been turned on." Ans. 10; see also Mitchell ,-i 42 (the graphics should be positioned "so that the user's attention is directed to the location of the filter when the graphics are illuminated"). If not facing the interior, then, according to the Examiner, graphics 118 "would be facing down the air passage and be essentially a useless piece of equipment." Ans. 10. Upon inspection of Fig. 5 of Mitchell and its accompanying text (i.e., "[a]n air moving device 105, such as a fan, may be used to direct an air stream through the filter cartridge 102" (Mitchell ,-i 40)), we are not apprised of error in the Examiner's findings. That is, Appellants fail to be persuasive that Mitchell does not teach a direction of air flow, or that the air filter cartridge 102 is arranged other than in front of an overpressure side of the blower or fan 105 as claimed. We sustain the Examiner's rejection of claims 17-20, 27-31, and 34. DECISION The Examiner's rejections of claims 12-34 are affirmed. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. Â§ l .136(a)(l )(iv). AFFIRMED 7