Ex Parte Herrera et al

Patent Trial and Appeal Board

Sep 27, 2012

11127836 (P.T.A.B. Sep. 27, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte ERIC HERRERA, MARVIN JOSEPH HOUSER, MOHAMED
SALAH ATALI, KENDRICK WILLIAM BANKS,
and JOEL T. JOHNSON
____________

Appeal 2010-009161
Application 11/127,836
Technology Center 3700
____________

Before KEN B. BARRETT, BENJAMIN D. M. WOOD, and
RICHARD E. RICE, Administrative Patent Judges.

RICE, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134 involving claims to a kick
panel for an appliance. The Examiner has rejected claims 1-23 as obvious.
See App. Br. 7.1 We have jurisdiction under 35 U.S.C. § 6.
We affirm-in-part.

1 By “App. Br.,” we refer to the Appellant’s Corrected Appeal Brief filed
October 13, 2009.
Appeal 2010-009161
Application 11/127,836

2
Claim 1 recites:

1. A kick panel for an appliance, comprising:
an elongated panel member adapted to be mounted to a
front surface of an appliance; and
at least one flexible side flap extending from an end of
said elongated panel member, said flexible side flap being
adapted to flex outward to engage a structure next to the
appliance.

The following Examiner’s rejections are before us for review:
1. Claims 1, 3-11, and 13-23 stand rejected under 35 U.S.C. § 103(a)
as unpatentable over Hong (US 2005/0218764 A1, pub. Oct. 6, 2005) in
view of Kessler (US 6,158,703, iss. Dec. 12, 2000).
2. Claim 2 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over Hong, Kessler and Campbell ‘493 (US 2004/0129493, pub. Jul. 8,
2004).
3. Claim 12 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over Hong, Kessler and Campbell ‘305 (US 5,886,305, iss. Mar. 23, 1999).
The rejection of claims 1, 3-11, and 13-23 as unpatentable over Hong and
Kessler
Claims 1 and 3
With reference to the Examiner’s annotated Figure 2 of Hong, the
Examiner found that Hong discloses a kick panel comprising an elongated
panel member (Item A) adapted to be mounted to a front surface of an
appliance; and at least one side flap (Items B, C, D) extending from an end
of the panel member. Ans. 3. Figure 2 of Hong, with the Examiner’s
annotations, is shown below:
App
App

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Figure 2
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ary skill i
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09161
/127,836
of Hong i
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ded perspe
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ase the du
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. Ans. 3.
s to one o
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ound that

f
Appeal 2010-009161
Application 11/127,836

4
the recitation “said flexible side flap being adapted to flex outward to engage
a structure next to the appliance” is satisfied by a flexible flap capable of
flexing outwards as taught by Hong and Kessler. Id. at 8.
The Appellants initially argue that the teachings of Hong and Kessler
are incompatible because, if Hong’s engaging member 32 were made of a
flexible material as taught by Kessler, it would not have “the ability … to
support the panel 30 within the engaging grooves 33.” App. Br. 8. In
response, the Examiner points to Hong’s disclosure that “[t]he engaging
member 32 is provided with a bent portion 36 elastically deformed so that
the engaging member 32 is forcibly engaged with the engaging groove 33.”
Ans. 8 (quoting Hong, [0030], emphasis supplied by the Examiner). The
Appellants do not address the Examiner’s response in their Reply Brief.
The Appellants also challenge the Examiner’s conclusion “that, being
flexible, the side flaps of Hong as modified by Kessler would obviously be
capable of flexing outward.” App. Br. 8 (quoting Advisory Action mailed
Jul. 24, 2008). The Appellants argue that “there is no rational basis for
flexing [Hong’s] engaging members 32 outward, as they would then no
longer be available for their intended purpose of supporting the panel 30 to
the engaging grooves 33.” Id. The Appellants further argue that “portions
37 [Item B] as shown in Figure 2 of Hong already extend laterally to their
fullest extent and do not extend beyond an outer edge of the refrigerator
housing 10.” Id. (emphasis added). The Appellants additionally contend
that the recitation “said flexible side flap being adapted to flex outward to
engage a structure next to the appliance” “imparts a structural limitation …
not satisfied by the device of Hong as modified in view of Kessler.” Id. at 9
(citing In re Venezia, 530 F.2d 956, 958-60 (CCPA 1976)).
Appeal 2010-009161
Application 11/127,836

5
While appearing to agree that Items B, C, D already extend laterally
to their fullest extent, the Examiner responds that “said side flaps would be
capable of being flexed downward, or forward; both directions would point
away from the refrigerator, and hence could be deemed ‘outward.’” Ans. 7.2
The Examiner further responds that the engaging members 32 atop the side
flaps are located beyond the end of the grooves 33, as shown in Figure 2 of
Hong, and that even if there was engagement of elements 32 and 33 as the
Appellants contend, “at least a portion of said side flaps could still be flexed
outward.” Id. at 7-8. As noted supra, the Examiner interpreted the
recitation “said flexible side flap being adapted to flex outward to engage a
structure next to the appliance” as a recitation that can be satisfied by a
flexible side flap capable of performing the recited function. Id. at 8.
In their Reply Brief, the Appellants argue that Hong’s cover as
modified by Kessler would not be capable of downward or forward flexing
to engage a structure next to the appliance:
Flexing ‘downward’ would only provide for engagement
of the floor and flexing ‘forward’ could potentially provide
engagement with a structure in front of the appliance.
However, the floor is not “a structure next to the appliance,” as
set forth in Claim 1, and engagement with a structure in front of
the appliance would restrict entry to the appliance, thus
rendering the appliance inoperable for its intended use.
Reply Br. 3. The Appellants further contend that “[t]he Examiner has
impermissibly modified Hong such that the lower cover 30 no longer

2 The use of “laterally” to modify “outward” in the Appellants’ Specification
(describing the side flaps as “adapted to extend laterally outward”) supports
the Examiner’s interpretation that “outward,” by itself, has a broader
meaning. Spec., [0003] (emphasis added).

Appeal 2010-009161
Application 11/127,836

6
extends entirely across the front 10a of the main body 10” and that
Hong “fails to disclose or suggest a ‘side flap extending from an end
of said elongated panel member,’ as set forth in independent claims 1
and 17.” Id. at 2-3.
The Appellants have not persuaded us of error in the
Examiner’s rejection of claim 1 for obviousness over Hong and
Kessler. We do not agree that the Examiner engaged in impermissible
hindsight by simply annotating Hong’s Figure 2, using broken lines
and labels to explain the Examiner’s application of the claim
language, including the “side flap” limitation. The Appellants have
not offered a construction of “side flap” that is inconsistent with the
Examiner’s claim application or otherwise provided adequate
reasoning or evidence to establish that Items B, C, D do not satisfy the
“side flap” limitation as found by the Examiner.3 While the
Appellants’ Specification describes an embodiment having a side flap
that “extends angularly relative to the panel member,” claim 1 does
not recite that property. Spec., [0012], fig. 3; see also, E-Pass Techs.,
Inc. v. 3Com Corp., 343 F.3d 1364, 1369 (Fed. Cir. 2003) (properties
of embodiments not recited in a claim do not limit the reasonable
scope of the claim).4 Furthermore, because the claim term “elongated

3 A “flap” can be broadly defined as a “flat piece, slice or layer.”
WEBSTER’S THIRD NEW INTERNATIONAL DICTIONARY OF THE ENGLISH
LANGUAGE UNABRIDGED 864 (1971). The usage of “flap” in the Appellants’
Specification is consistent with this definition. E.g., Spec., [0012] (“flap
portion 24L, 24R”); [0013] (“rearward flaps 24R, 24L”); fig. 2.
4 We note that dependent claim 5 recites that the side flap “extends angularly
from said elongated panel member,” indicating that claim 1 is not so limited.
See Curtiss-Wright Flow Control Corp. v. Velan, Inc., 438 F.3d 1374, 1380
Appeal 2010-009161
Application 11/127,836

7
panel member” does not limit the width of the panel member, much
less require its “ends” to coincide with the side edges of an appliance,
we do not agree that Hong fails to disclose a “side flap extending from
an end of said elongated panel member.”
We find no error in the Examiner’s rationale for combining the
teachings of Hong and Kessler. As noted by the Examiner, Hong
itself discloses a sufficient reason for making the cover, including its
side portions, from a flexible or elastically deformable material.
Hong, [0030].
The Appellants have not challenged the Examiner’s
interpretation that “outward” in the claim 1 recitation “adapted to flex
outward to engage a structure next to the appliance,” emphasis added,
encompasses “downward,” or that Items B, C, D of Hong as modified
by Kessler would be capable of being adapted to flex downward to
engage the floor. See Reply Br. 3. Rather, the Appellants contend
that the floor is not a structure “next to” the appliance. Id. This
contention is inconsistent with the plain meaning of “next to” and
Hong’s disclosure that the refrigerator is mounted on (next to) a
floor.5 The Appellants also argue, relying on Venezia, that this

(Fed. Cir. 2006) (citing to Nazomi Commc’ns, Inc. v. Arm Holdings, PLC.,
403 F.3d 1364, 1370 (Fed.Cir.2005) (“[C]laim differentiation ‘normally
means that limitations stated in dependent claims are not to be read into the
independent claim from which they depend.”’ (quoting Karlin Tech., Inc. v.
Surgical Dynamics, Inc., 177 F.3d 968, 971-72 (Fed.Cir.1999)).

5 See, e.g., WEBSTER’S THIRD NEW INTERNATIONAL DICTIONARY OF THE
ENGLISH LANGUAGE UNABRIDGED 1524 (1971) (defining “next to” as
synonymous with “adjacent to”); Hong, [0026].

Appeal 2010-009161
Application 11/127,836

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recitation imparts a structural limitation not disclosed by the
combination of Hong and Kessler. App. Br. 8. We disagree.6
The claims at issue in Venezia were directed to a splice
connector kit having component parts capable of being assembled in
the field to provide a splice connection between high-voltage shielded
electrical cables. Id. at 957. The claims recited, for example, a pair of
sleeves “each sleeve of said pair adapted to be fitted over the
insulating jacket of one of said cables.” Id. The court held that this
claim language was not indefinite, and that it imparted a structural
limitation to the sleeve in that it called for “[e]ach sleeve [to be] so
structured or dimensioned that it can be fitted over the insulating
jacket of a cable.” Id. at 959. In other words, the court interpreted the
claim language to call for a pair of sleeves structured or dimensioned
to render them capable of being fitted over the insulating jacket of a
cable. See also, Aspex Eyewear, Inc. v. Marchon Eyewear, Inc., 672
F.3d 1335, 1349 (Fed. Cir. 2012) (“In common parlance, the phrase
‘adapted to’ is frequently used to mean ‘made to,’ ‘designed to,’ or
‘configured to,’ but it can also be used in a broader sense to mean
‘capable of or ‘suitable for.”’)

The usage of the term “next to” in the Appellants’ Specification is consistent
with its plain meaning. See, e.g., Spec., [0003]; see also, In re Zletz, 893
F.2d 319, 321 (Fed. Cir. 1989) (the words of the claim must be given their
plain meaning unless the plain meaning is inconsistent with the
specification).

6 We also do not agree that flexing Hong’s cover outward, such as toward
the floor, would necessarily affect its ability to cover the entire front of the
refrigerator.
Appeal 2010-009161
Application 11/127,836

9
The Examiner in the instant case has interpreted the “adapted
to” claim language in claim 1 consistently with Venezia. In particular,
the Examiner correctly determined that: (1) claim 1 is directed to an
elongated panel member and at least one flexible side flap extending
from an end of the elongated member; (2) the front surface of the
appliance and the structure next to the appliance are not positively
recited claim limitations; and (3) the claim language in question
merely requires a flexible side flap capable of flexing outward to
engage a structure next to the appliance.
We sustain the rejection of claim 1. As the Appellants do not
separately argue dependent claim 3, we also sustain the rejection of
that claim.
Claims 4 and 6
The Appellants have not provided sufficient reasoning or evidence to
persuade us that the Examiner erred in finding that Item C satisfies the
limitations added by dependent claims 4 and 6, respectively. Ans. 4. The
Appellants argue with respect to claims 4 and 6 as they do with respect to
claim 1 that “Hong does not disclose side flaps.” Reply Br. 5. For the
reasons discussed with respect to claim 1 supra, we sustain the rejection of
claims 4 and 6.
Claim 5
Dependent claim 5 calls for a side flap that “extends angularly from
said elongated panel member.” The Examiner points to Item C as satisfying
this limitation. We disagree. The Examiner has not provided an adequate
explanation as to how Item C extends angularly from Item A. As depicted in
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Application 11/127,836

10
Figure 2 of Hong, Item C appears to extend angularly from Item B, not Item
A. We do not sustain the rejection of claim 5.
Claims 7-11and 13-16
Dependent claim 7 and independent claim 13 each call for “a flexible
apron portion extending from a top portion of said elongated panel member
and adapted to be mounted to a door of said appliance.” Dependent claims
8-11 depend directly or indirectly from claim 7. Dependent claims 14-16
each depend directly or indirectly from claim 13. The Examiner found that
the combination of Hong and Kessler discloses a flexible apron portion
(Item E) extending from a top portion of the elongated panel member (Item
A) and capable of being mounted to the door of an appliance. Ans. 4. The
Applicants argue that the doors of Hong’s refrigerator “pivot away from the
kickpanel 30 and in no way can be connected to the kickpanel ….” App. Br.
11. Because the Examiner has not adequately explained how Item E can be
mounted to the door of an appliance, we do not sustain the rejection of
claims 7-11 and 13-16.
Claims 17-23
Independent claim 17 calls for an “appliance” comprising a “housing”
and “at least one flexible side flap …, said flexible side flap being adapted to
flex laterally outward from said housing.” Emphasis added. Dependent
claims 18-23 depend directly or indirectly from claim 17. We agree with the
Appellants that the combination of Hong and Kessler does not disclose a
side flap that is capable of flexing laterally outward (left or right relative to
the refrigerator as shown in Hong’s Figure 2). We do not sustain the
rejection of claims 17-23.

Appeal 2010-009161
Application 11/127,836

11
The rejection of claim 2 as unpatentable over Hong, Kessler and
Campbell ‘493
The Appellants do not argue dependent claim 2 separately from
claim 1. For the reasons discussed with respect to claim 1 supra, we sustain
the rejection of claim 2.
The rejection of claim 12 as unpatentable over Hong, Kessler and
Campbell ‘305
The Appellants do not argue dependent claim 12 separately from
claim 1. Claim 12 depends directly from claim 1. For the reasons discussed
with respect to claim 1 supra, we sustain the rejection of claim 12.

SUMMARY
We affirm the rejection of claims 1-4, 6, and 12.
We reverse the rejection of claims 5, 7-11, and 13-23.
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-IN-PART

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