Ex Parte Ihle et al

Patent Trial and Appeal Board

Aug 9, 2017

12865742 (P.T.A.B. Aug. 9, 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.
12/865,742 08/02/2010 Hans Ihle SDJ-6032-102 5577
23117 7590 08/11/2017
NIXON & VANDERHYE, PC
901 NORTH GLEBE ROAD, 11TH FLOOR
ARLINGTON, VA 22203
EXAMINER
SHAIKH, MERAJ A
ART UNIT PAPER NUMBER
3744
NOTIFICATION DATE DELIVERY MODE
08/11/2017 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):
PTOMAIL@nixonvan.com
pair_nixon @ firsttofile. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte HANS IHLE and HOLGER WALLISER
Appeal 2016-005624
Application 12/865,742
Technology Center 3700
Before JILL D. HILL, LEE L. STEPINA, and
ARTHUR M. PESLAK, Administrative Patent Judges.
PESLAK, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Hans Ihle and Holger Walliser (“Appellants”) appeal under 35 U.S.C.
§ 134(a) from the Examiner’s decision rejecting claims 13—20 and 22—34.1
We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 Appellants submit the real party in interest is BSH BOSCH UND
SIEMENS HAUSGERAETE GMBH. App. Br. 3 (filed Feb. 4, 2015).
Appeal 2016-005624
Application 12/865,742
THE CLAIMED SUBJECT MATTER
Appellants’ invention relates to a refrigerating appliance. Spec. 11.
Claims 13 and 26 are independent. Claim 13, reproduced below, is
illustrative of the claimed subject matter.
13. A refrigerating appliance, comprising:
at least one storage compartment cooled by circulating
air;
a mobile control element adapted to control a degree of
moisture of the circulating air in the storage compartment;
a motor to adjust the mobile control element;
a control unit to adjust, by means of the motor, a position
of the mobile control element according to an input that is
specified by a user, the input corresponding to at least one type
of cooled item; and
a data memory;
wherein at least one assignment value that assigns the
position of the mobile control element that is suitable for the at
least one type of cooled item is stored in the data memory.
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Appeal 2016-005624
Application 12/865,742
REJECTIONS2
1) Claim 193 is rejected under 35 U.S.C. § 112, second paragraph,
as indefinite.
2) Claims 13—15, 19, 20, and 22—34 are rejected under 35 U.S.C.
§ 103(a) as unpatentable over Thomas, Gagas (US 2006/0043087 Al,
published Mar. 2, 2006), and Tatter (US 2001/0045096 Al, published Nov.
29, 2001).
3) Claims 16—18 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Thomas, Gagas, Tatter, and Zhihong (CN 1629584 A,
published June 22, 2005).
2 Claims 13—20 and 22—34 were rejected under 35 U.S.C. § 103(a) as
unpatentable over Bischofberger (DE 10 2007 005 953 Al, published Aug.
7, 2008) and Thomas (US 5,357,765, issued Oct. 25, 1994). Final Act. 4.
Appellants filed an amendment on November 4, 2014, including an English
translation of the German priority document to the present application (DE
10 2008 101 520.1) to perfect their claim to priority and remove
Bischofberger as prior art. See Interview Summary mailed Nov. 3, 2014 at
3,1 d); Resp. After Final filed Nov. 11, 2014 at 9; Appeal Br. 7, n. 1. The
Examiner entered the amendment, which included an attorney statement
verifying the accuracy of the English translation. See Adv. Act. 1.
Appellants submit that this rejection is withdrawn. Appeal Br. 7, n. 1. In the
Answer, the Examiner does not specifically withdraw this rejection nor
repeat the rejection, but confirms that Appellants’ statement of the grounds
of rejection is substantially correct. Ans. 2. We assume this rejection is
withdrawn, but suggest that the Examiner clarify the status of the rejection.
3 The statement of Rejection 1 includes claims 13—20 and 22—25. Final Act.
3. The Examiner states the indefmiteness rejection only applies to claim 19
not to claims 13—18, 20, and 22—25. Interview Summary 3 (mailed Nov. 3,
2014).
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Application 12/865,742
DISCUSSION
Rejection 1
The Examiner finds that the limitation “a plurality of circulation
conditions,” in claim 19, is not clear because the Specification “does not
describe what the ‘circulation condition’ corresponds to” and a circulation
condition could have several different meanings. Final Act. 3.
Appellants assert that the indefmiteness rejection is withdrawn
because the Advisory Action mailed Nov. 13, 2014, lists only the rejection
based on Thomas, Gagas, and Tatter. Appeal Br. 7, n.l.
In the Advisory Action, the Examiner did not indicate in box 5 that
Applicant’s reply overcomes any rejection. See Advisory Act. 1. In the
Answer, the Examiner repeats the rejection under the heading “PREVIOUS
GROUND(S) OF REJECTION,” and does not indicate that the rejection is
withdrawn. See Ans. 2—3.
As Appellants do not address the merits of the rejection, Appellants
waived any argument of error, and we summarily sustain the rejection of
claim 19. See Hyatt v. Dudas, 551 F.3d 1307, 1314 (Fed. Cir. 2008)
(explaining that summary affirmance without consideration of the
substantive merits is appropriate where an appellant fails to contest a ground
of rejection); see also 37 C.F.R. § 41.39(a)(1) (“An examiner’s answer is
deemed to incorporate all of the grounds of rejection set forth in the Office
action from which the appeal is taken . . . unless the examiner’s answer
expressly indicates that a ground of rejection has been withdrawn.”).
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Application 12/865,742
Rejections 2 and 3
Claims 13, 16—20, 22—26, and 28—34
Appellants argue the rejection of claims 13, 16—20, 22—26, and 28—34
as a group. Appeal Br. 7—10. We select claim 13 as representative and
claims 16—20, 22—26, and 28—34 stand or fall with claim 13. See 37 C.F.R.
§41.37(c)(l)(iv).
The Examiner finds that (1) Thomas discloses most of the limitations
of claim 13, including a control unit for adjusting a position of a mobile
control element, (2) Gagas discloses control based on user input, and (3)
Tatter discloses control based on different types of items to be cooled. Final
Act. 7—9. The Examiner reasons that it would have been obvious to operate
Thomas’ control unit based on user specified input as taught by Gagas “in
order to maintain temperature and moisture throughout the compartment
without any uneven distribution of temperature within the compartment.”
Id. at 8. The Examiner concludes that it would have been obvious to modify
the controller of Thomas to have the control unit assign positions to the
mobile control element based on the type of item to be cooled as taught by
Tatter “in order to provide precise control of the cooling conditions within
the storage compartments and to prevent deterioration and growth of various
organising] on the food products.” Id. at 9 (citing Tatter, Abstract).
Appellants contend that Gagas is non-analogous art because Gagas
relates to heating, not refrigeration. Appeal Br. 7—9. Appellants additionally
contend that “there is no reason why one of ordinary skill would look to
Gagas to modify Thomas,” because “the structures or problems addressed by
Gagas” do not relate to Thomas “because cooling (Thomas) is the opposite
of heating (Gagas).” Id. at 9-10.
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The Examiner responds that Gagas is analogous art because Gagas
“teaches using the design of the moisture control dampers and cabinets [] in
a refrigerator where objects are cooled.” Ans. 25 (citing Gagas 179, Fig.
10). The Examiner states that, because the device of Gagas is used in a
refrigerator, Gagas would have been considered by one of ordinary skill
when modifying Thomas. Ans. 26.
In reply, Appellants concede that Gagas discloses refrigeration and
thus, is analogous art. Reply Br. 1. Despite this concession, Appellants
argue, Gagas solves problems related to “warming drawer specific
problems” and consequently modifying Thomas’ cooling device with the
teachings of Gagas must be based on impermissible hindsight (“first
hindsight argument”). Reply Br. 1—2. Appellants next argue that the
Examiner’s statements in the Answer, in response to Appellants’ contention
that Gagas is non-analogous art, in which the Examiner compares Gagas
disclosure to Appellants’ claims, are “a clear indication of impermissible
hindsight” (“second hindsight argument”). Id. at 2 (citing Ans. 26).
Appellants also argue that the Examiner’s reliance on “moisture control” to
modify “Thomas is misplaced because there is no evidence that the device
disclosed by Thomas suffers from moisture related problems,” and, in any
event, Gagas relates to “warming-drawer specific (i.e., heating specific)
problems whereas Thomas is focused on cooling.” Id. at 2.
With respect to Appellants’ first hindsight argument, Gagas discloses
that “the warmer drawer 12 may also be configured to cool (e.g. refrigerate)
objects placed in the drawer ... a heat pump system may be substituted for
the fan and heater (previously described).” Gagas 179. Based on this
disclosure, we agree with the Examiner that one of ordinary skill in the art
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would understand that Gagas is relevant to both heating and refrigeration.
See In re Mercier, 515 F.2d 1161, 1165—66 (CCPA 1975) (“[A]//of the
relevant teachings of the cited references must be considered in determining
what they fairly teach to one having ordinary skill in the art.”) (emphasis in
original, citations omitted). We are, thus, not persuaded by Appellants’
argument that modifying Thomas’s cooling device with Gagas is necessarily
based on impermissible hindsight reasoning because Gagas’ disclosure is
limited to heating.
Appellants’ second hindsight argument is also not persuasive. On
page 26 of the Answer, the Examiner addressed Appellants’ argument that
Gagas is non-analogous art. Ans. 26. The second prong of the non-
analogous art test is “whether the reference ... is reasonably pertinent to the
particular problem with which the inventor is involved.” In re Klein, 647
F.3d 1343, 1348 (Fed. Cir. 2011). Thus, the Examiner’s comparison of
Gagas’s disclosure to Appellants’ claims is not indicative of impermissible
hindsight but rather an analysis of whether Gagas is “reasonably pertinent to
the particular problem with which” Appellants’ claims are involved.
Finally, we are not persuaded by Appellants’ assertion that “there is
no evidence that the device disclosed by Thomas suffers from moisture
related problems.” Thomas discloses that overcooling “results in a reduction
in the humidity . . . which increases tendencies for foodstuffs held in the
refrigerator compartment to be dried out,” and that “overcooling also
reduces the overall efficiency of the appliance.” Thomas, col. 1,11. 17—24
(emphasis added). Thomas also discloses a “humidity compartment 2” and
that providing a cooling device that can maintain proper temperatures “tends
to minimize tendencies to dry foodstuffs at least in the refrigerator
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compartment as an improvement in humidity in that compartment is found,”
and increases efficiency. Id. at col. 3,1. 38; col. 6,11. 15—20 (emphasis
added). Given that Gagas relates to heating and cooling in order to maintain
temperature and moisture, and that Thomas relates to cooling at proper
temperatures and humidity, we discern no error in the Examiner’s
modification of Thomas based on the teachings of Gagas to allow a user to
control cooling conditions. Appellants’ argument that Thomas does not
suffer “from moisture related problems” is of no import. See Cross Med.
Prods, v. Medtronic Sofamor Danek, Inc., 424 F.3d 1293, 1323 (Fed. Cir.
2005) (“One of ordinary skill in the art need not see the identical problem
addressed in a prior art reference to be motivated to apply its teachings.”).
The Examiner’s reason for combining Thomas and Gagas, i.e., maintaining
temperature and moisture throughout the compartment, is taken directly
from Gagas. Appellants, thus, fail to apprise us of error in the Examiner’s
factual findings or rationale, quoted above, for the combination of Thomas
and Gagas, which we determine to be reasonable and supported by a rational
underpinning. See KSR Int’l Co. v Teleflex Inc., 550 U.S. 398, 416 (2007)
(“[t]he combination of familiar elements according to known methods is
likely to be obvious when it does no more than yield predictable results.”);
In re Cree, 818 F.3d 694, 702, n.3 (Fed. Cir. 2016) (Impermissible hindsight
argument “fully answered by the Board’s observation that ‘the weight of the
evidence shows that the proffered combination is merely a predictable use of
prior art elements according to their established functions.”).
For these reasons, we sustain the Examiner’s rejection of claim 13 as
unpatentable over Thomas, Gagas, and Tatter. Claims 16—20, 22—26, and
28—34 fall with claim 13.
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Claims 14 and 27
Claim 14 depends from claim 13 and recites, in part, that “the data
memory stores an assignment table that assigns a respective position of the
mobile control element that is suitable for a set of types of cooled item.”
Appeal Br. 13 (Claims App.). Claim 27 recites, in part, that “the data
memory is adapted to store an assignment table that assigns a position of the
diffusion layer that is suitable for a set of types of cooled item.” Id. at 15.
The Examiner finds that Thomas discloses a data memory 30 and
Tatter discloses “an assignment table (paragraph 7) and that the position of
the mobile control element that is suitable for a set type of cooled item
(cooling set based on temperature requirement of a food product).” Final
Act. 9 (citing Tatter || 35, 37; Fig. 5). The Examiner concludes that it
would have been obvious to modify the controller of Thomas by providing
an assignment table as taught by Tatter “in order to allow the system to
operate with minimum human interference and tampering and to conserve
energy by adjusting the cooling for specific needs.” Id. The Examiner
makes similar findings and reasoning for claim 27. Id. at 19.
Appellants argue that the portions of Tatter on which the Examiner
relies “relate to temperature suitable for stored items, not a position of a
mobile control element.” Appeal Br. 10. Appellants contend that the
rejection is improper “because temperature is not position and the Office
Action has not explained, or provided substantial evidence explaining, why
temperature would have rendered position obvious.” Id.
The Examiner responds that Tatter teaches assigning a position of the
mobile control element because “Tatter discloses cooled item types and their
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temperatures as the assignment values that dictate the position of the cooling
system.” Ans. 27.
In reply, Appellants argue that Tatter “generally relates to controlling
a cooling system for a desired temperature,” but not to a position, and that
the Examiner fails to present evidence, or logical reasoning, “to explain why
it would have been reasonable to interpret any of the disclosure in these
paragraphs as a position according to claims 14 and 27.” Reply Br. 3.
We discern no error in the Examiner’s findings or conclusion of
obviousness. Tatter discloses that “[o]nce the food product is selected,
storage condition controller 14 performs the necessary functions to maintain
the conditions of the storage compartment within the programmed settings.”
Tatter 137. Although we appreciate that Tatter’s control is based on
temperature, the Examiner relies on Thomas as disclosing a controller that
adjusts a position, and the position change in Thomas is based on
temperature. Thomas, col. 4,11. 21—35; Final Act. 7—8. Specifically,
Thomas discloses that valve 32 is moved between positions “in order to vary
the temperature of the [product] compartment.” Id. at 11. 32—33. The
modification by Tatter is to change the position based on the temperature
requirements of different foods. Final Act. 9; Ans. 26—27. Based on this
disclosure from Tatter and Thomas, the Examiner adequately explains with
evidence the relationship between temperature and assigning the position of
the mobile control unit as required in the claims. Appellants do not apprise
us of error in the Examiner’s findings or rationale quoted above which we
determine to be reasonable and supported by a rational underpinning. We,
thus, sustain the rejection of claims 14 and 27.
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Claim 15
Claim 15 depends from claim 14 and recites, in part, “wherein the
position of the mobile control element corresponds to a first position . . .
assigned to a specified type of cooled items; and ... a second position . . .
assigned to the specified type of cooled items.” Appeal Br. 13 (Claims
App.).
The Examiner finds that Gagas discloses a first position and a second
position, but that the positions in Gagas are not based on a specified type of
cooled item. Final Act. 10—11. The Examiner finds that the controller of
Tatter controls the temperature based on different types of items. Id. at 11.
The Examiner concludes that it would have been obvious to modify the
controller to change position based on a plurality of types of cooled items by
controlling the temperature of the cooling system as taught by Tatter “in
order to precisely control the cooling operation for particular food items
without causing deterioration to the food products while utilizing efficient
cooling methods and preventing development of harmful organism around
the food.” Id. at 11—12 (citing Tatter, Abstract).
Appellants argue that the portions of Tatter upon which the Examiner
relies “are related to temperature, not position or circulation,” and that the
Examiner “has not explained, or provided substantial evidence explaining,
why temperature renders position or circulation obvious.” Appeal Br. 11.
The Examiner responds that the Gagas controller has a mobile control
element having multiple positions but that the different positions in Gagas
do not correspond to different cooled items. Ans. 27. The Examiner states
that one of ordinary skill in the art would “assign first and second positions
of the mobile control element to specific types of cooled items in order to
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standardize the cooling requirements of a type of cooled item in a
refrigerated space.” Id. The Examiner explains that this would “prevent
moisturizing or drying by overcooling a type of cooled food item that has
cooling requirements very different from another cooled food item and also
to allow quantity of air and moisture and the rate of cooling to be controlled
based on the product item selected.” Id. at 27—28.
Appellants reply that the Examiner’s allegations are conclusory and
are insufficient to support prima facie obviousness. Reply Br. 3^4.
We discern no error in the Examiner’s findings or conclusion of
obviousness. Tatter discloses selecting a food product and using a controller
“to maintain the conditions of the storage compartment within the
programmed settings.” Tatter 137. Although the conditions are based on
storage temperature, as with claim 14, the Examiner adequately explains the
relationship between temperature and assigning the position of the mobile
control unit. The Examiner relies on Gagas as disclosing a controller that
has multiple positions. Ans. 27. Gagas discloses that positions include
opened, closed, partially opened, and partially closed, and that selection of
position controls heat (temperature) or moisture build-up in the storage
chamber. Gagas 164; Ans. 27. The modification by Tatter is to relate the
positions to different foods. Id. Given that foods are stored at different
temperatures (Tatter 17), and given that both Gagas and Tatter control the
conditions of the storage compartment based on temperature, Appellants do
not apprise us of error in the Examiner’s findings or rationale quoted above
which we determine to be reasonable and supported by a rational
underpinning. We, thus, sustain the rejection of claim 15.
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DECISION
The Examiner’s decision rejecting claim 19 as indefinite is affirmed.
The Examiner’s decision rejecting claims 13—15, 19, 20, and 22—34 as
unpatentable over Thomas, Gagas, and Tatter is affirmed.
The Examiner’s decision rejecting claims 16—18 as unpatentable over
Thomas, Gagas, Tatter, and Zhihong is affirmed.
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)(l)(iv).
AFFIRMED
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