Ex Parte CUR et al

Patent Trial and Appeal Board

Dec 7, 2017

13108226 (P.T.A.B. Dec. 7, 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.
13/108,226 05/16/2011 NIHAT CUR SUB-US20080774-US-NP 9136
130333 7590 12/11/2017
WHTRT POOT TORPOR ATTON - MF> 1 PRIOR HF.NF.VFJ F) EXAMINER
LLP TADESSE, MARTHA
2000 NORTH M63
BENTON HARBOR, MI 49022 ART UNIT PAPER NUMBER
3744
NOTIFICATION DATE DELIVERY MODE
12/11/2017 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):
mike_lafrenz @ whirlpool .com
deborah_tomaszewski@whirlpool.com
ptomail @priceheneveld.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte NIHAT CUR, ALBERTO R. GOMES,
LUIZ ANTONIO D. LOPES, GUOLIAN WU,
and LUCIANA WASNIEVSKI DA SILVA1
Appeal 2016-008232
Application 13/108,226
Technology Center 3700
Before JAMES P. CALVE, WILLIAM A. CAPP, and ANTHONY KNIGHT,
Administrative Patent Judges.
CALVE, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Final Office
Action rejecting claims 1—32. See Appeal Br. 16. We have jurisdiction
under 35 U.S.C. § 6(b).
We AFFIRM.
1 Whirlpool Corporation is identified as the real party in interest. Appeal
Br. 1.
Appeal 2016-008232
Application 13/108,226
CLAIMED SUBJECT MATTER
The Specification discloses refrigerator 100 with cooling module
set 106 that can be configured in vertical and/or horizontal orientations
within mullions 122 to allow freezer and refrigerator compartments 102, 104
to be configured in different arrangements. Spec. ^ 1,3, 35—38. Claims 1,
13, 24, and 31 are independent. Representative claim 1 is reproduced below.
1. An appliance comprising:
at least one freezer compartment;
at least one refrigerator compartment, wherein the freezer
compartment and the refrigerator compartment are defined by a
plurality of interior surfaces;
at least one mullion; and
a mullion envelope that defines an exterior surface of the
mullion wherein the mullion envelope at least partially encloses a
cooling module set and is removably engaged to at least one of the
plurality of interior surfaces, the cooling module set comprising:
an orientation-flexible compressor, wherein the cooling module
set is configured to operate in any orientation including at least a
vertical orientation within a plurality of mullion orientations without
modification to the orientation-flexible compressor and without
modification as to the orientation of the orientation-flexible
compressor, and the at least partially enclosed cooling module set is
further configured to be repositionable with respect to the plurality of
interior surfaces including between at least one vertical surface and at
least one horizontal surface to alter the appliance configuration
defined by the specific orientation of the refrigerator compartment and
the freezer compartment, and the at least partially enclosed cooling
module set is configured to alter a shape of at least one of the
refrigerator compartment and the freezer compartment; wherein the
cooling module set supplies cooling to the at least one freezer
compartment temperature at a freezer compartment temperature and to
the at least one refrigerator compartment at a refrigerator
compartment temperature that is higher than the freezer compartment
temperature.
2
Appeal 2016-008232
Application 13/108,226
REJECTIONS
Claims 1—3, 6, 8, 9, 11—13, 15, 19, 20, 22—27, 29, 31, and 32 are
rejected under 35 U.S.C. § 103(a) as unpatentable over Amaral (WO
2010/043009 A2, pub. Apr. 22, 2010) and Quesada Saborio (US 2010/
0058791 Al, pub. Mar. 11,2010).
Claims 4, 5, 16, and 17 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Amaral, Quesada Saborio, and Maudlin (US 4,041,727,
iss. Aug. 16, 1977).
Claim 7 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Amaral, Quesada Saborio, and Luisi (US 2007/0228907 Al, pub. Oct. 4,
2007).2
Claims 18 and 28 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Amaral, Quesada Saborio, and Luisi.
Claims 10, 21, and 30 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Amaral, Quesada Saborio, and Cur (US 7,908,873 Bl, iss.
Mar. 22, 2011).
ANALYSIS
Claims 1—3, 6, 8, 9, 11—13, 15, 19, 20, 22—27, 29, 31, and 32
Rejected Over Amaral and Quesada Saborio
Appellants argue claims 1, 2, 6, 8, 9, 11—13, 15, 19, 20, 22—27, and 29
as a group. See Appeal Br. 5—14. We select claim 1 as representative, with
claims 2, 6, 8, 9, 11—13, 15, 19, 20, 22—27, and 29 standing or falling with
claim 1. 37 C.F.R. § 41.37(c)(l)(iv).
2 The reference to Hashimoto (EP 2233874) in the caption of this rejection
(Final Act. 23) appears to be a typographical error because Hashimoto is not
relied upon in the body of the rejection (id.). See Appeal Br. 15.
3
Appeal 2016-008232
Application 13/108,226
Claims 1. 2, 6. 8. 9. 11-13. 15. 19. 20, 22-27. and 29
The Examiner finds that Amaral discloses appliance G with freezer
compartment 1-CF, refrigerator compartment 2-CR, and mullion (partition
wall PD) at least partially enclosing a cooling module set (MR) in three
different horizontal positions in Figure 1, but lacks an orientation-flexible
compressor and a cooling module configured to operate in any orientation to
include at least a vertical orientation. Final Act. 2—3. The Examiner finds
that Quesada Saborio teaches an orientation-flexible compressor and cooling
module set 25 (e.g., single flexible monoblock) configured to operate in any
orientation including a vertical orientation and is repositionable between at
least one vertical surface and at least one horizontal surface. Id. at 3^4.
The Examiner determines that it would have been obvious to modify
Amaral’s cooling module set and mullion with that of Quesada Saborio to
enable a plurality of orientations, including a vertical orientation that
facilitates many different customized refrigerator and freezer compartment
configurations and sizes without changing the appliance foot print. Id. at 4.
Appellants argue that Amaral discloses a cooling module set that can
be positioned in different vertical locations that are horizontally disposed but
the cooling module sets are not repositionable. Appeal Br. 6. Appellants
argue that the term “repositioning” is defined in the Specification as being
repositionable in the factory after assembly in the factory or by a consumer,
whereas Amaral teaches a cooling module and mullion that is positionable in
a choice of locations but once it is installed in an interior surface, the cooling
module is fixed in place and is not repositionable as recited in claim 1. Id.
at 7—8. Appellants also argue that Quesado Saborio does not teach this
feature either. Id. at 8.
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Appeal 2016-008232
Application 13/108,226
These arguments are not persuasive for the following reasons. First,
we agree with the Examiner that Amaral teaches a cooling module MR that
is repositionable in three different horizontal positions with respect to plural
interior surfaces in upper, median, and lower parts of cabinet G as shown in
Figure 1. Ans. 2; Final Act. 2—3; Amaral, 6:11—20. Appellants disclose that
one way in which the claimed cooling module set 106 is “repositionable” is
“during manufacturing (e.g., at the factory).” Spec. 1 51; see Appeal Br. 7.
We agree with the Examiner that Amaral teaches this feature and Appellants
do not dispute that Amaral teaches a cooling module set that is positionable
in one of several positions. Appeal Br. 7—8. We determine that a cooling
module set that can be positioned in three different slots in a refrigerator
cabinet G is “repositionable” as claimed. See Ans. 2. Appellants have not
defined “repositionable” to mean a cooling module set that is positionable
during manufacture, reconfigurable at the factory after the production of the
appliance at the factory, or repositionable by consumer as Appellants argue.
See Appeal Br. 7. Instead, Appellants disclose that cooling set module 106
may be reconfigurable at the factory after production of the appliance at the
factory (Spec. 1 56), or it may be repositionable during manufacturing at the
factory “and/or” by a consumer (id. 151). We do not consider the different
ways of configuring a cooling module set at different times and locations as
being a lexicographic definition that requires each cooling module set to be
configurable in each of these ways, particularly when paragraphs 51 and 56
of the Specification disclose different alternate ways to reconfigure a cooling
module set. See Appeal Br. 7. Moreover, even if we viewed Appellants as
providing a lexicographic definition, one of the repositionable configurations
can occur at the factory during production, as Amaral discloses.
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Appeal 2016-008232
Application 13/108,226
Amaral teaches the repositioning of cooling module set MR during
manufacture (see Amaral 6:11—20, Fig. 1), which the Examiner reasonably
interprets as allowing repositioning between an upper, median, or lower part
of cabinet G (Ans. 2). This arrangement corresponds to one embodiment
that Appellants disclose as being repositionable in their Specification. Spec.
151 (during manufacturing at the factory). Claim 1, an apparatus claim,
does not require the cooling module set to be repositionable in a particular
way or at a particular time, and we decline to read such limitations or other
embodiments from the Specification into claim 1. In re Zletz, 893 F.2d 319,
321 (Fed. Cir. 1989) (before application is granted, there is no reason to read
into the claim the limitations of the specification because “during patent
prosecution when claims can be amended, ambiguities should be recognized,
scope and breadth of language explored, and clarification imposed”).
The Examiner also relies on Quesado Saborio to teach repositionable
cooling module sets. Final Act. 3^4; Ans. 2. Quesado Saborio teaches a
cooling module set that is repositionable between one or more vertical and
horizontal surfaces. See Quesado Saborio Tflf 175—180, Figs. 8—17, 24—27.
Appellants’ argument that “Saborio is not cited for this feature and . . . fails
to teach or suggest this feature” (Appeal Br. 8) does not address the
Examiner’s findings that Quesado Saborio teaches a repositionable cooling
module in mullions (covers 18, 19) that may be removably engaged inside
interior surfaces as shown, for example, in Figures 9-22, 24. See In re Jung,
637 F.3d 1356, 1365 (Fed. Cir. 2011) (approving of Board’s practice in Ax
parte Frye of requiring appellants to identify error in a rejection); Ex parte
Frye, 94 USPQ 2d 1072, 1075—76 (BPAI 2010) (precedential) (a panel
reviews rejections for error based on the issues identified by an appellant).
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Appeal 2016-008232
Application 13/108,226
Appellants argue for the first time in their Reply Brief that Amaral
discloses three different cabinets, each having a single opening in different
locations rather than a single cabinet having three openings. Reply Br. 2—3.
As a result, Appellants argue that once cooling module set (refrigerating
module MR) is mounted in opening 1 of cabinet A, module MR cannot be
moved within cabinet A because there is no other opening in cabinet A. Id.
at 3. Appellants also argue that Figure 6 of Amaral shows cabinet G with a
single opening 2 that receives refrigerating module MR and once the module
is mounted in the opening, it cannot be repositioned. Id.
This argument is untimely and will not be considered as it was made
for the first time in the Reply Brief, not in response to an argument raised in
the Answer, and without good cause being shown. 37 C.F.R. § 41.41(b)(2).
Moreover, claim 1 requires a cooling module set to be repositionable with
respect to plural interior surfaces including at least one horizontal surface
and at least one vertical surface. Figure 1 of Amaral illustrates how cooling
module set MR is positioned and repositioned with respect to the interior
surfaces of cabinet G in upper part, median part, and lower part. Claim 1
does not require the appliance to include at least three separate openings
with the cooling module set being positionable in one of the three separate
openings and later being positioned in another of the separate openings as
the Specification discloses can occur if multiple access ports 164 are used.3
3 Appellants disclose that “[a] plurality of configuration access ports may be
configured in the appliance cabinet and sealed with a removable (typically
insulated) plug or covering when one or more of the configuration access
ports are not operably engaged with the cooling module set.” Spec. 1 55.
“The configuration access ports 164 can be cut into the generic cabinet at
various locations.” Id. 1 56. Claim 1 does not recite access ports, however.
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Appeal 2016-008232
Application 13/108,226
An essential purpose of patent examination is to fashion claims
that are precise, clear, correct, and unambiguous. Only in this
way can uncertainties of claim scope be removed, as much as
possible, during the administrative process.
Zletz, 893 F.2d at 322.
We also find the Declaration of Alberto R. Gomes, one of the named
inventors, to be inapposite regarding Amaral’s disclosure of repositionable
cooling module sets. Mr. Gomes testifies that Amaral does not disclose a
cooling module set configured to be repositionable as claimed. See Gomes
Declaration (dated July 23, 2015) 111 (Appendix II to Appeal Brief).
Mr. Gomes testifies that
the Examiner is taking the present application, which teaches
repositioning the mullion and cooling module set and is
applying the teachings of my current invention to interpret the
Amaral reference in a manner that is not disclosed by Amaral.
Gomes Declaration 112. This testimony is speculative. It does not address
the Examiner’s findings that Amaral teaches repositionable cooling module
set MR in Figure 1 being repositionable between upper, median, and lower
interior horizontal and vertical surfaces of cabinet G, and Quesado Saborio
also teaches this feature. Final Act. 2—A\ Ans. 2. Even if Amaral is limited
to horizontal layouts as Mr. Gomes testifies (Gomes Declaration 113), the
Examiner has explained how such configuration satisfies the requirements
of claim 1 regarding being “repositionable.” We agree with the Examiner
that positioning cooling module set MR in different parts of cabinet G also
repositions module MR relative to interior vertical and horizontal surfaces
of cabinet G as claimed. See Amaral, Fig. 1. Moreover, Quesado Saborio
also teaches repositionable cooling module sets as discussed above.
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Appeal 2016-008232
Application 13/108,226
We also agree with the Examiner that Quesado Saborio discloses an
orientation flexible compressor as illustrated, for example, in Figure 26.
Claim 1 recites “an orientation-flexible compressor, wherein the cooling
module set is configured to operate in any orientation including at least a
vertical orientation . . . without modification to the orientation-flexible
compressor and without modification to the orientation of the orientation-
flexible compressor.'1'’ Appeal Br. 17 (Claims Appendix) (emphasis added).
Figure 26 of Quesado Saborio discloses this exact arrangement with a
cooling module set in various horizontal and vertical configurations without
modification to compressor 73 and without modification to the orientation
of compressor 73. See also Quesado Saborio, Figs. 9-25. Appellants also
disclose an embodiment with cooling module set 106 configured to operate
in any orientation without modifying the orientation of compressor 112’,
which can be a standard compressor with oil in their Figures 10—12.
Appellants also argue that an orientation flexible compressor does not
use oil as a lubricant but instead uses refrigerant gas as the lubricant for the
gas bearings so there is no oil to drain out of the sump if the compressor is
turned on its side or upside down. Appeal Br. 9. This argument is not
commensurate with the scope of claim 1 and thus is not persuasive. Indeed,
Appellants’ Specification discloses that compressor 112 can be an oil-less
compressor. Spec. 137. Claim 10, which depends from claim 1, recites this
feature. Inline Plastics Corp. v. EasyPak, LLC, 799 F.3d 1364, 1371 (Fed.
Cir. 2015) (“[t]he presence of a dependent claim that adds a particular
limitation gives rise to a presumption that the limitation in question is not
present in the independent claim.”); Seachange Int’l, Inc. v. C-CORInc., 413
F.3d 1361, 1368-69 (Fed. Cir. 2005) (same).
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Appeal 2016-008232
Application 13/108,226
Claim 1 requires the orientation-flexible compressor to be oriented in
the same orientation (i.e., “without modification as to the orientation of the
orientation-flexible compressor”). Quesado Saborio teaches this feature.
The Examiner’s finding that Quesado Saborio teaches an orientation-
flexible compressor is supported by a preponderance of evidence. We do
not interpret this limitation to require an oil-less compressor because the
language of claim 1 does not specify any particular type of compressor, and
dependent claim 10 recites an oil-less compressor. Appellants disclose that
“the orientation of the orientation-flexible compressor within the CMS 106
does not need to be altered as the orientation of the CMS 106 is changed.”
Id. 147. Quesado Saborio discloses this arrangement. Quesado Saborio’s
compressor does not change its own orientation as the cooling module set is
repositioned. Claim 1 does not require the orientation-flexible compressor
to be reorientable with respect to any particular feature, e.g., the cooling
module set or the orientation-flexible compressor itself. See Reply Br. 4—5.
Appellants disclose both types of orientation-flexible compressor 112, 112’.
Spec. 47-48, Figs. 7—12. Claim 1 thus encompasses the embodiment of
Figures 10—12 where the orientation of the module cooling set changes but
the orientation of compressor 112’ does not. Quesado Saborio discloses this
type of compressor orientation in a cooling module set.
Appellants’ argument that Quesado Saborio does not teach a mullion
within the interior of a refrigerator (Reply Br. 4) is untimely and thus is not
persuasive. Moreover, the Examiner relies on Amaral to teach this feature.
Final Act. 2. We agree with the Examiner that Amaral teaches this feature,
for example, in Figure 6 with cooling set module MR positioned in partition
wall PD and finishing panel PA, which are inside the interior of cabinet G.
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Appeal 2016-008232
Application 13/108,226
The Examiner also relies on Quesado Saborio to teach a mullion (e.g.,
covers 18, 19) containing cooling module sets and placed in a plurality of
vertical and horizontal interior surface orientations. The Examiner relies on
this teaching to modify Amaral’s mullions to allow repositioning of cooling
module sets MR of Amaral in cabinet G to customize different refrigerator
and freezer compartment sizes. See Final Act. 4. Appellants’ argument that
the Examiner’s reasoning is unclear because the changing of a foot print and
overall dimensions are not claimed (Appeal Br. 8) is not persuasive because
the Examiner’s reasoning may differ from that of an inventor.
Thus, we sustain the rejection of claim 1, with claims 2, 6, 8, 9, 11—
13, 15, 19, 20, 22—27, and 29 standing with claim 1. Appeal Br. 11 (arguing
reversal of claims 13 and 24 for the same reasons as claim 1 and claim 23
based on an orientation-flexible compressor).
Claim 3
Claim 3 depends from claim 1 and recites that “the mullion is further
configured to be repositionable within the appliance, such that a ratio of the
refrigerator compartment and the freezer compartment is altered when the
mullion is repositioned.” The Examiner finds that Amaral teaches a ratio of
the refrigerator to freezer compartments that is altered in Figure 1 when the
position of cooling module MR changes. Final Act. 5—6. Appellants argue
that Amaral does not disclose repositioning and therefore does not disclose
this feature. Appeal Br. 10—11. This argument is not persuasive in view of
our holding that Amaral does disclose a repositionable cooling module set
MR that is repositioned in upper, median, and lower parts of cabinet G and
the repositioning changes the ratio of refrigerator and freezer compartments
as illustrated in Figure 1 of Amaral.
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Application 13/108,226
Figures 1 and 6 of Amaral also illustrates how changes in the position
of module MR would change the position of the associated partition wall PD
and finishing panel PA and thereby alter the ratio of freezer compartment 1 -
CF and refrigerator compartment 2-CR as claimed. See Amaral, 10:4—11:20,
Figs. 1, 6. Thus, we sustain the rejection of claim 3.
Claim 31
Appellants argue that the prior art does not teach an orientation-
flexible compressor in claim 31 for the same reasons as claim 1. Compare
Appeal Br. 11—14 with id. at 8—10. This argument is not persuasive for the
same reasons as claim 1, and we sustain the rejection of claim 31.
Claim 32
Appellants argue that there is no door in Amaral or Quesado Saborio
to alter the perimeter shape as recited in claim 32. Appeal Br. 14. We agree
with the Examiner that Amaral teaches doors la, 2a (Figure 6) that change
dimension and perimeter shape as cooling module set MR is repositioned in
cabinet G. Final Act. 19. Figure 6 of Quesado Saborio illustrates mullion
PA/PD located with cooling module set MR such that repositioning module
MR in upper, median, or lower parts of cabinet G would reposition mullions
PA, PD to alter dimensions of the freezer and refrigerator compartments.
Quesado Saborio, 10:4—11:20. Thus, we sustain the rejection of claim 32.
Claims 4, 5, 16, and 17
Rejected Over Amaral, Quesada Saborio, and Maudlin
Appellants argue that claims 4, 5, 16, and 17 are allowable because
they depend from independent claims 1 and 13. See Appeal Br. 14. This
argument is not persuasive in view of our affirmance of the rejection of
claims 1 and 13. Thus, we sustain the rejection of claims 4, 5, 16, and 17.
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Appeal 2016-008232
Application 13/108,226
Claim 7
Rejected Over Amaral, Quesada Saborio, and Luisi
Appellants argue that claim 7 is allowable because it depends from
independent claim 1. See Appeal Br. 15. This argument is not persuasive in
view of our affirmance of the rejection of claim 1. Thus, we sustain the
rejection of claim 7.
Claims 18 and 28
Rejected Over Amaral, Quesada Saborio, and Luisi
Appellants argue that claims 18 and 28 are allowable because they
depend from independent claims 13 and 24. See Appeal Br. 15. This
argument is not persuasive in view of our affirmance of the rejection of
claims 13 and 24. Thus, we sustain the rejection of claims 18 and 28.
Claims 10, 21, and 30
Rejected Over Amaral, Quesada Saborio, and Cur
Appellants argue that claims 10, 21, and 30 are allowable because
they depend from independent claims 1,13, and 24. See Appeal Br. 14.
This argument is not persuasive in view of our affirmance of the rejection of
claims 1,13 and 24. Thus, we sustain the rejection of claims 10, 21, and 30.
DECISION
We affirm the rejections of claims 1—32.
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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