Ex Parte Boarman et al

Patent Trials and Appeals Board

Mar 29, 2019

13646901 - (D) (P.T.A.B. Mar. 29, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/646,901 10/08/2012
135389 7590 04/02/2019
Whirlpool Corporation/Nyemaster
Nyemaster Goode, P.C.
2000 North M-63
MD3601
Benton Harbor, MI 49022
FIRST NAMED INVENTOR
Patrick J. Boarman
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.
SUB-02493-US-NP 1074
EXAMINER
OSWALD, KIRSTIN U
ART UNIT PAPER NUMBER
3763
NOTIFICATION DATE DELIVERY MODE
04/02/2019 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):
deborah_tomaszewski@whirlpool.com
ptomail@nyemaster.com
mike_lafrenz@whirlpool.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte PATRICK J. BOARMAN, BRIAN K. CULLEY,
GREGORY GENE HORTIN, and MARKE. THOMAS
Appeal2017-003336
Application 13/646,901
Technology Center 3700
Before JENNIFER D. BAHR, JAMES P. CAL VE, and
FREDERICK C. LANEY, Administrative Patent Judges.
LANEY, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Whirlpool Corporation (Appellant) 1 appeals under 35 U.S.C. § 134(a)
from the Examiner's decision ( entered March 22, 2016, hereinafter "Final
Act.") rejecting claims 1-20. We have jurisdiction over this appeal under 35
U.S.C. § 6(b ).
We REVERSE.
1 Whirlpool Corporation is the Applicant as provided in 37 C.F.R. § 1.46 and
is identified as the real party in interest Br. 3.
Appeal2017-003336
Application 13/646,901
INVENTION
Appellant's invention relates "to refrigerators with wet ice storage."
Spec. 1:5-6.
Claims 1, 13, and 18 are independent. Claim 1 is illustrative of the
claimed invention, and reads as follows:
1. A refrigerator comprising:
a refrigerator cabinet;
at least one compartment disposed within the refrigerator
cabinet;
a door for providing access to the cabinet disposed on the
cabinet and having an ice dispenser operable with the
door in a closed position;
an ice maker for making ice disposed within the refrigerator
cabinet;
a bucket for storing the ice, the bucket positioned to receive the
ice from the ice maker;
an opening at the bottom of the bucket;
a chute disposed below the opening with a first end disposed at
the opening and a second end disposed at the ice
dispenser ["chute limitation"]; and
a drain connected to the chute and extending downwardly from
the opening for draining water from the bucket ["drain
limitation"].
Br. 14 (Claims App.)(emphasis and annotations added).
REJECTIONS
The following rejections are before us for review:
I. The Examiner rejected claims 1, 2, 11, and 12 under 35 U.S.C.
§ 103(a) as unpatentable over Muffly (US 2,866,322, iss. Dec.
30, 1958) and Buchser (US 5,077,985, iss. Jan. 7, 1992).
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Application 13/646,901
II. The Examiner rejected claims 3, 5, and 6 under 35 U.S.C.
§ I03(a) as unpatentable over Muffly, Buchser, and Gould (US
3,146,601, iss. Sept. 1, 1964).
III. The Examiner rejected claim 4 under 35 U.S.C. § 103(a) as
unpatentable over Muffly, Buchser, and Brown (US 3,667,249,
iss. June 6, 1972).
IV. The Examiner rejected claim 7 under 35 U.S.C. § I03(a) as
unpatentable over Muffly, Buchser, and Ducharme (US
2010/0218518 Al, pub. Sept. 2, 2010).
V. The Examiner rejected claims 8-10 under 35 U.S.C. § I03(a) as
unpatentable over Muffly, Buchser, Brown, and Smith (US
2009/0211292 Al, pub. Aug. 27, 2009).
VI. The Examiner rejected claims 13, 14, and 18 under 35 U.S.C.
§ I03(a) as unpatentable over Muffly, Brown, and Buchser.
VII. The Examiner rejected claims 15 and 16 under 35 U.S.C.
§ I03(a) as unpatentable over Muffly, Brown, Buchser, and
Gould.
VIII. The Examiner rejected claim 19 under 3 5 U.S. C. § 10 3 (a) as
unpatentable over Muffly, Brown, Buchser, and Ducharme.
IX. The Examiner rejected claims 17 and 20 under 35 U.S.C.
§ I03(a) as unpatentable over Muffly, Brown, Buchser, and
Smith.
ANALYSIS
Rejection I
The Examiner determines claims 1, 2, 11, and 12 would have been
obvious in view ofMuffly and Buchser. Final Act. 3-5. For independent
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Application 13/646,901
claim 1, the Examiner finds that Muffly discloses the chute limitation and
the drain limitation. Id. at 3--4 (citing Muffly 5:15-16, Figs. 1, 2). To
support these findings, the Examiner relies principally on Figure 1 of Muffly
reproduced below:
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Application 13/646,901
Above Figure 1 shows a sectional view of the ice-making system Muffly
discloses. Muffly 2: 68---69.
For the chute and drain limitations, the Examiner finds in Figure 1 of
Muffly that elements 36 and 38 show "a chute," element 28 shows "a bucket
for storing ice," element 36 shows "an ice dispenser," and a "conduit from
pump 92" (i.e., element 96) shows "a drain." Final Act. 3--4. Notably, the
Examiner identifies element 3 6 as both a component of the claimed chute
and as being the claimed ice dispenser. Also notable is that element 96 in
Figure 1 connects to element 36 only and does not connect to element 38.
Appellant argues that the Examiner errs by finding Muffly discloses the
drain limitation because the Examiner is incorrect that element 3 6 comprises
a portion of a chute, moreover, the Examiner is incorrect that element 96 is a
drain connected to the chute. Br. 7-8. Appellant's argument is persuasive
and, for the following reasons, we agree the Examiner's factual findings are
flawed.
Claim 1 recites that the chute is disposed below the opening at the
bottom of the bucket with a first end disposed at the opening and a second
end disposed at the ice dispenser operable with the door in a closed position.
Id. at 14. It is clear from claim 1 that the chute is structurally separate from
the bucket with an opening at its bottom and the ice dispenser. "Where a
claim lists elements separately, the clear implication of the claim language is
that those elements are distinct components of the patented invention."
Becton, Dickinson & Co. v. Tyco Healthcare Group, LP, 616 F.3d 1249,
1254 (Fed. Cir. 2010) (citations and quotations omitted). There is nothing in
claim 1 to suggest that the chute and ice dispenser can be the same structure.
See CAE Screenplates, Inc. v. Heinrich Fiedler GmbH & Co., 224 F.3d
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Application 13/646,901
1308, 1317 (Fed. Cir. 2000) ("In the absence of any evidence to the contrary,
we must presume that the use of . . . different terms in the claims connotes
different meanings."). The Specification confirms further that the chute and
ice dispenser are understood properly to be separate structures. Spec. 4--5,
Figs. 2-5.
Element 36 in Muffly is described as "the storage tank," which may
be provided with a "door or hand hole opening" to compartment 40 of tank
36. Muffly 3:70-75, 5:23-26. Element 38 is described as "the chute" that
allows ice to roll or slide down from trough 28 to compartment 40 of tank
36. Id. at 3:75--4:4. Beyond pointing to Figure 1 ofMuffly, the Examiner
offers no evidence or technical reasoning to explain why a skilled artisan
would consider element 36 as part of the chute. In view of what Muffly
describes Figure 1 to disclose, element 36 may be viewed as an ice
dispenser, but there is not sufficient evidence to support the Examiner's
finding that it is also a component of the chute. The Examiner's assertion
that the chute and the ice dispenser could be the same structure would render
claim 1 nonsensical. If the chute and ice dispenser are one and the same
element, namely storage tank 36 and chute 38, then the chute must have a
second end "disposed at" itself, a physical impossibility. See Becton,
Dickinson & Co., 616 F.3d at 1255 ("If the hinged arm and the spring means
are one and the same, then the hinged arm must be "connected to" itself and
must "extend between" itself and a mounting means, a physical
impossibility."). On this record, we are persuaded that the Examiner's
reliance on element 36 in Figure 1 of Muffly as forming the claimed chute
was an error.
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This error contaminates the Examiner's finding that Muffly discloses
the claimed drain. This is because the Examiner relies on the connection
between element 96 and element 36 to disclose "a drain connected to the
chute," as the drain limitation in claim 1 recites. Because element 36 is not a
chute, there is insufficient evidence to support the Examiner's finding that
Muffly discloses the recited drain limitation. As a result, the Examiner has
not made a persuasive showing that the prior art discloses each of the
limitations claim 1 recites. Therefore, we do not sustain the Examiner's
obviousness rejection of claim 1, or claims 2, 11, and 12 depending
therefrom.
Rejections 11-V
The Examiner adopts the above errors into the rejections of dependent
claims 3-10, which are the subject of Rejections II-V. See Final Act. 5-9.
The Examiner does not rely on Gould, Brown, Ducharme, or Smith to the
cure the deficiencies discussed above (see supra, Rejection I) regarding
claim 1. Therefore, we do not sustain the Examiner's rejections of claims 3-
10.
Rejection VI
The Examiner determines claims 13, 14, and 18 would have been
obvious in view ofMuffly, Brown, and Buchser. Final Act. 11-14. For
independent claims 13 and 18, the Examiner again finds that elements 3 6
and 38 in Muffly's Figure 1 disclose the claimed chute and that element 36
is also the ice dispenser. Id. at 11, 13. And like claim 1, the Examiner finds
element 96 and its connection with element 36 discloses a drain extending
from the chute. Id. Thus, for the same reasons discussed above for claim 1
(see supra, Rejection I), the Examiner's reliance of element 36 as forming
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Application 13/646,901
the claimed chute was error and, as a result, the Examiner has not made a
persuasive showing that the prior art discloses each of the limitations claims
13 and 18 recite. Therefore, because claim 14 depends from claim 13, we do
not sustain the Examiner's rejection of claims 13, 14, and 18.
Rejections VII-IX
Claims 15-17, 19, and 20, which are the subject of Rejections VII-IX,
each depend (either directly or indirectly) from either claim 13 or 18. See
Final Act. 5-9. The Examiner does not rely on Gould, Brown, Ducharme, or
Smith to the cure the deficiencies discussed above regarding independent
claims 13 and 18 (see supra, Rejection VI). Therefore, we do not sustain the
Examiner's rejections of claims 15-17, 19, and 20.
DECISION
The Examiner's rejections of claims 1-20 are reversed.
REVERSED
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