Ex Parte Gorz et al

Patent Trial and Appeal Board

Dec 12, 2012

10556956 (P.T.A.B. Dec. 12, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte ALEXANDER GORZ and MICHAELA MALISI
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Appeal 2010-011694
Application 10/556,956
Technology Center 3600
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Before: STEVEN D.A. McCARTHY, JOHN W. MORRISON, and NEIL
POWELL, Administrative Patent Judges.

MORRISON, Administrative Patent Judge.

DECISION ON APPEAL
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Application 11/556,956

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STATEMENT OF THE CASE
Appellants seek our review under 35 U.S.C. § 134 of the Examiner’s
decision rejecting claims 18-40. We have jurisdiction under 35 U.S.C.
§ 6(b).
We AFFIRM.

THE INVENTION
Appellants’ claimed invention relates to a drawer element for a
refrigeration device. Spec. 1. Claims 18 and 25 are the independent claims
on appeal. Claim 18 is representative and is reproduced below:  
18. A refrigeration device including at least
one drawer element, said drawer element
comprising:
a body having at least a floor and two side
walls;
said body further including a front flap
hinged on said body moveable between a closed
and an open position; and
said body further including said front flap
hinged on said body at a pivoting axis arranged
substantially at the level of said body floor.

THE REJECTIONS
Appellants seek review of the following rejections.
Claims 18-20, 22, 23, and 38 are rejected under 35 U.S.C. § 102 (b)
over Dyer (US 2,086,019, iss. Jul. 6, 1937).
Claims 18, 20-25, and 28-40 are rejected under 35 U.S.C. § 103(a)
over Andrews (US 460,768, iss. Oct. 6, 1891) and Byrne (US 4,676,371, iss.
Jun. 30, 1987).
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Claims 18, 20, 21, 23, 25-27, 29-32, 36, and 38-40 are rejected under
35 U.S.C. § 103(a) over Attardo (US 4,923,261, iss. May 8, 1990) and
Reddig (US 3,339,994, iss. Sept. 5, 1967).
Claims 24 and 37 are rejected under 35 U.S.C. § 103(a) over Attardo,
Reddig, and Tovar (US 5,947,573, iss. Sep. 7, 1999).

ANALYSIS
Anticipation by Dyer
Addressing claim 18, the Examiner finds
Dyer (figures 1-8) teaches of a refrigeration device
(10) including at least one drawer element (24), the
drawer element comprising: a body (body) having
at least a floor (32) and two side walls (31); the
body further including a front flap (33) hinged on
the body moveable between a closed and an open
position; and the body further including the front
flap hinged on the body at a pivoting axis arranged
substantially at the level of the body floor (fig. 2).
Ans. 3.
Appellants argue that the
Dyer reference does not disclose a drawer element
at all. Instead, the Dyer reference discloses a
refrigerator safe 24 that is a fixed box 30 mounted
on the interior of the refrigerator door 17 and
having a pivotable door 33 for accessing the box
30 only by opening the door 33. The safe 24 of the
Dyer reference cannot move in and out, and
therefore, clearly is not a drawer, as recited in
claims 18 and 25.
App. Br. 10 (Emphasis in original.).
The central issue is whether or not the term “drawer element” is a
functional limitation that requires a drawer. The Examiner reasons that “the
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claimed limitation does not specifically stipulate any structure or function
that would otherwise preclude the use of the applied prior art.” Ans. 9. The
Examiner further reasons that the “claimed ‘drawer element' has been
adequately represented i.e., identified, within the body of the prior art
rejection. Additionally, the terminology of ‘drawer element’ does not impart
any functional aspect regarding the use or operative mode of said structure.”
Ans. 10.
When analyzing whether or not a preamble limits a claimed structure
we apply the following analysis. “In general, a preamble limits the
invention if it recites essential structure or steps, or if it is ‘necessary to give
life, meaning, and vitality’ to the claims. Conversely, a preamble is not
limiting ‘where a patentee defines a structurally complete invention in the
claim body and uses the preamble only to state a purpose or intended use for
the invention.’” Catalina Mktg. Int’l Inc. v. Coolsavings.com, Inc., 289 F.3d
801, 808 (citing Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298,
1305 (Fed. Cir. 1999) and Rowe v. Dror, 112 F.3d 473, 478 (Fed. Cir.
1997)). In this case, the preamble is not necessary to bring meaning to the
claims because the claim body describes a structurally complete invention.
Thus, the term “drawer” is construed to be a statement of intended use of the
element and not a claim limitation. Similarly, the term “refrigeration
device” is a statement of intended use and not a claim limitation. As such,
we sustain the rejection of claim 18, and claims 19, 22, and 23 which depend
therefrom and are not separately argued.
Addressing claim 20, the Examiner finds the “[f]ront edges of
the side walls are not connected to one another in their upper area (upper
area being viewed as the area exposed when the flap is down as depicted in
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figure 2).” Ans. 4. The Appellants have not offered a persuasive
explanation why the Examiner’s finding to the contrary might be erroneous.
See, e.g., App. Br. 13-15. As such we sustain the rejection of claim 20.
Addressing claim 38, the Examiner finds “top edges of the side walls
are not connected to one another {top edges being the edges facing to the
left as shown in fig. 2}.” Ans. 4. Appellants counter “[w]hen properly
considered as a whole in view of claims [20] and 38, and reasonably
interpreted in view of the specification, the ‘top’ edge of the drawer element
22 recited in claim 38 clearly is differentiated from the ‘front’ edge recited
in claim [20].” App. Br. 14. Appellants have identified error in the
Examiner’s findings. The edges “facing to the left” of Figure 2 are “front
edges” and not “top edges.” As such, we cannot sustain the rejection of
claim 38.

Obviousness over Andrews and Byrne
Addressing claims 18 and 25, Appellants again argue that neither
reference discloses a drawer element. App. Br. 16-17. As discussed above
with respect to claim 18, the preamble is a non-limiting intended use for the
element of claim 18. Claim 25 includes identical preamble language. Thus,
the preamble of claim 25 is construed to be a non-limiting intended use of
the element. Thus, claims 18 and 25 are not limited by the preamble terms
drawer or refrigeration device.
The Examiner also reasons
it would have been obvious to a person of ordinary
skill in the art at the time the invention was made
to associate the drawer element of Andrews with a
refrigeration device in view of Byrne's teaching of
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such a combination because this arrangement
would enhance the versatility of Andrew's device
since a physical device is entitled to all it's
practical uses and the combining of the drawer
element with a refrigeration device would allow a
user to use Andrew's element with the device as
dictated by the needs or preferences of the user.
Ans. 4-5. Appellants counter that “such a conclusory statement is
insufficient to provide a prima facie case for obviousness because the Office
Action fails to provide an adequate rationale for combining the prior art.”
App. Br. 17. We do not find Appellants’ argument to be persuasive. One of
the potential uses of the container of Andrews could be within a refrigeration
device as disclosed in Byrne. Previously, we determined that the preamble
of claim 18 (and similarly claim 25) is not limiting, but rather a statement of
intended use of the element. As such, Andrews alone anticipates claims 18
and 25 and thus renders them obvious.  Absent objective evidence to the
contrary, a reference which expressly describes the subject matter of a claim
also provides a rational underpinning for concluding that the subject matter
would have been obvious. See In re Fracalossi, 681 F.2d 792, 794 (CCPA
1982). Thus, we sustain the rejection of claims 18 and 25 and claims 20-24,
and 28-40, which are not separately argued.

Obviousness over Attardo and Reddig
Again addressing claims 18 and 25, Appellants first contend “none of
the applied references discloses or suggests the features of the claimed
invention including a refrigeration device including at least one drawer
element.” App. Br. 18. As discussed above, the preamble is a non-limiting
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intended use for the element of claims 18 and 25. Thus, claims 18 and 25 do
not require a drawer or refrigeration device.
The Examiner reasons that it would be “obvious to a person of
ordinary skill in the art at the time the invention was made to associate the
drawer element of [Attardo] with a refrigeration device in view of [Reddig's]
teaching of such a combination because this arrangement would enhance the
versatility of Attardo's device.” Ans. 7.   Appellants next contend that the
Examiner “fails to provide a prima facie case of obviousness” because the
reasoning of “enhanced versatility” is conclusory. App. Br. 18-19. We do
not find Appellants’ arguments to be persuasive. One of the potential uses
of the sliding drawer of Attardo would be within a refrigeration device as
disclosed in Reddig. Again, we previously determined that the preamble of
claim 18 (and similarly claim 25) is not limiting, but rather a statement of
intended use of the element. As such, Attardo alone anticipates claims 18
and 25 and thus renders them obvious. See In re Fracalossi, 681 F.2d at
794. Thus, we sustain the rejection of claims 18 and 25 and claims 20, 21,
23, 26, 27, 29-32, 36, and 38-40 which are not separately argued.

Obviousness over Attardo, Reddig and Tovar
Addressing claims 24 and 27, Appellants argue that these claims are
allowable for the same reasons that claims 18 and 25 are allowable over
Attardo and Reddig. As such, we sustain the rejection of claims 24 and 27. 

DECISION
The Examiner’s decision rejecting claims 18-40 is affirmed.
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No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. §
1.136(a)(1)(iv).

AFFIRMED

mls