Ex Parte Jendrusch

Patent Trial and Appeal BoardNov 25, 2014

12287241 (P.T.A.B. Nov. 25, 2014)

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. 12/287,241 10/07/2008 Holger Jendrusch 298-431 7872 28249 7590 11/25/2014 DILWORTH & BARRESE, LLP Dilworth & Barrese, LLP 1000 WOODBURY ROAD SUITE 405 WOODBURY, NY 11797 EXAMINER ROGERS, LAKIYA G ART UNIT PAPER NUMBER 3744 MAIL DATE DELIVERY MODE 11/25/2014 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte HOLGER JENDRUSCH ____________ Appeal 2012-011405 Application 12/287,241 Technology Center 3700 ____________ Before CHARLES N. GREENHUT, MICHAEL L. HOELTER, and ERIC C. JESCHKE, Administrative Patent Judges. JESCHKE, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE This is a decision on appeal, under 35 U.S.C. § 134(a), from a final rejection of claims 1–6 and 8–20. Appeal Br. 10. Claim 7 is cancelled. Id. at 12. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. CLAIMED SUBJECT MATTER The disclosed subject matter “relates to a refrigerator and/or freezer with an ice cube maker and with conveying means for conveying the ice Appeal 2012-011405 Application 12/287,241 2 cubes.” Spec. 1.1 Independent claim 1 recites as follows, with relevant language italicized: 1. A system with an ice cube maker and with conveying means for conveying the ice cubes for use in a refrigerator and/or freezer, wherein the conveying means are configured such that they are operable in different conveying directions, and wherein the conveying means are configured such that they are operated in the direction reversed with respect to the first conveying direction based on a period of time which has elapsed since the last delivery of ice cubes. EVIDENCE RELIED ON BY THE EXAMINER Krause US 2007/0084230 A1 Apr. 19, 2007 Swanson US 3,329,223 July 4, 1967 REJECTION ON APPEAL Claims 1–6 and 8–20 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Krause and Swanson. Ans. 4–8; Adv. Act. 2.2 1 Because Appellant’s Specification does not provide line or paragraph numbering, this opinion refers to page numbers. 2 In an Amendment After Final, Appellant cancelled dependent claim 7 and incorporated the limitations from that cancelled claim into claim 1. See Appeal Br. 6 n.2. Although the Examiner allowed the amendments, in the Answer filed in this Appeal, the Examiner still directs certain arguments at “claim 7.” Ans. 7–8. Appeal 2012-011405 Application 12/287,241 3 ANALYSIS Claims 2–6 and 8–20 all depend, either directly or indirectly, from claim 1, which is the only independent claim. Appeal Br. 11–14. Appellant has not separately argued the patentability of the dependent claims. Id. at 10. Accordingly, the sole issue on appeal is the rejection of claim 1 under 35 U.S.C. § 103(a) as being unpatentable over Krause and Swanson. The Examiner and Appellant appear to agree that the prior art references explicitly disclose all the limitations of claim 1 except the requirement that the reversal of direction of the conveying means be “based on a period of time which has elapsed since the last delivery of ice cubes.” See Appeal Br. 7–8; Ans. 7, 9. Further, the Examiner and Appellant appear to agree that Swanson, instead, discloses a system in which the reversal of direction occurs based on a predetermined time period. See Appeal Br. 7–8; Ans. 7, 9. For example, Swanson teaches that the time period may be a “selected interval, e.g., 6 seconds, periodically, e.g., every three hours.” See Swanson, 6:10–14. The Examiner asserts that a “person of ordinary skill in the art at the time of invention would recognize that the technique of Swanson is equivalent to the technique as claimed because both techniques initiate and terminate the agitation cycles based on a predetermined time period.” Ans. 7–8. According to the Examiner, A person skilled in the art at the time of invention would understand that a selected time interval will include and/or consider a period of time which has elapsed since the last delivery of ice cubes. The fact that the selected time interval does not only consider the period of time which has elapsed since the last delivery of ice cubes does not negate Appeal 2012-011405 Application 12/287,241 4 the fact that the time period since the last delivery of ice cubes is included in the time period which determines when to reverse the conveying direction in the technique taught by Swanson. Id. at 9. The Examiner finds that “[s]ince the technique taught by Swanson solves the same problem (preventing ice agglomeration) in a similar manner (reversing an ice bin agitator based upon a given time interval), the technique of Swanson has been considered an equivalent technique making the claimed arrangement obvious.” Id. at 10. According to the Examiner, “[r]egardless of if the time period selected is an exact time period, such as since the last delivery of ice cubes, or a relative time period, such as a predetermined time interval, both techniques agitate the ice in the bin based on a time period which has elapsed since the last delivery of the ice cubes as claimed.” Id. Further, the Examiner asserts that “Appellant fails to teach any criticality to having the time period specifically set based on a period of time which has elapsed since the last delivery of the ice cubes in the original disclosure.” Id. The Examiner also states that Appellant has failed to demonstrate nonequivalence. See id. at 10–11 (citing MPEP § 2184). Finally, the Examiner asserts that “configured” in the relevant limitation should be construed as “set up for operation especially in a particular way.” Id. at 11. According to the Examiner, under that construction, “the system of Krause as modified is capable of or set up for operation as claimed meeting the requirements of the claim as currently presented.” Id. Appeal 2012-011405 Application 12/287,241 5 Appellant asserts that the Examiner has not “met the initial burden of making out a prima facie case of equivalence.” Reply Br. 2. Specifically, Appellant alleges that the Examiner has not met any of the three requirements needed to put forth a prima facie showing of equivalence. Id. (citing MPEP § 2183). As to the first requirement, Appellant asserts that the Examiner “has explicitly conceded that Swanson does not perform th[e] function specified in the claims.” Reply Br. 2–3 (citing Ans. 9). As to the second requirement, Appellant asserts that “a conveying means that reverses based on a condition precedent, i.e. ‘the last delivery of ice cubes’” as in claim 1 “must exclude” a conveying means that reverses “based solely on a preset amount of time as in Swanson.” Reply Br. 3. As to the third requirement, Appellant argues that “[t]he conveying means that reverses based on a selected time interval of Swanson is not an equivalent function limitation to a condition precedent, i.e. ‘a period of time which has elapsed since the last delivery of ice cubes’ as in the claims of the present application.” Id. “In rejecting claims under 35 U.S.C. § 103, the examiner bears the initial burden of presenting a prima facie case of obviousness. Only if that burden is met, does the burden of coming forward with evidence or argument shift to the applicant.” In re Rijckaert, 9 F.3d 1531, 1532 (Fed. Cir. 1993) (internal citation omitted) (citing In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992)). For a prior art element to satisfy a means-plus- function limitation, as permitted by former 35 U.S.C. § 112, sixth paragraph, the prior art element must either be the same as the disclosed structure or be an “equivalent[] thereof.” In re Donaldson Co., 16 F.3d 1189, 1195 (Fed. Cir. 1994) (en banc). Two structures are “equivalent” within the meaning of Appeal 2012-011405 Application 12/287,241 6 the statute if they “perform the identical function, in substantially the same way, with substantially the same result.” Kemco Sales, Inc. v. Control Papers Co., 208 F.3d 1352, 1364 (Fed. Cir. 2000) (emphasis added). We agree with Appellant that the Examiner has not made a prima facie case of equivalence at least because the Examiner has failed to demonstrate that the system disclosed in Swanson and the claimed “conveying means” “perform the identical function.” The function performed by the “conveying means” based on the limitation at issue is to “operat[e] in the direction reversed with respect to the first conveying direction based on a period of time which has elapsed since the last delivery of ice cubes.” As noted by Appellant, the Examiner explicitly admits that this function is not performed by the system disclosed in Swanson. Ans. 9 (“Again, it was never the Examiner’s position that Swanson teaches the technique as claimed.”). Although the Examiner asserts that one of ordinary skill in the art at the time of the invention “would understand that a selected time interval [as disclosed in Swanson] will include and/or consider a period of time which has elapsed since the last delivery of ice cubes,” (Ans. 9 (emphasis added)), that does not show that the system disclosed in Swanson system performs the required reversal of direction “based on a period of time which has elapsed since the last delivery of ice cubes.” Stated differently, the fact that the “selected interval” in Swanson and the “period of time which has elapsed since the last delivery of ice cubes” may, in some potential instances, overlap is irrelevant. And although the Examiner states essentially the same Appeal 2012-011405 Application 12/287,241 7 argument in different ways,3 we are not persuaded that the system disclosed in Swanson and the claimed “conveying means” “perform the identical function.” Further, because the Examiner has failed to show equivalence, Appellant need not demonstrate nonequivalence. See MPEP § 2184 (titled “Determining Whether an Applicant Has Met the Burden of Proving Nonequivalence After a Prima Facie Case Is Made”). As to the Examiner’s assertion regarding the alleged failure of Appellant to demonstrate “any criticality” to the temporal aspect of the claimed function (Ans. 10), we fail to see (and the Examiner does not attempt to demonstrate) the relevance of that issue under the analysis required. As to the Examiner’s proposed construction of the term “configured,” we are not persuaded that adopting the proposed construction would change the analysis. Specifically, even under the Examiner’s proposed construction, the “conveying means” are “set up for operation especially in a particular 3 See Ans. 7–8 (“A person of ordinary skill in the art at the time of invention would recognize that the technique of Swanson is equivalent to the technique as claimed because both techniques initiate and terminate the agitation cycles based on a predetermined time period.”) (emphasis added); id. at 9 (“The fact that the selected time interval does not only consider the period of time which has elapsed since the last delivery of ice cubes does not negate the fact that the time period since the last delivery of ice cubes is included in the time period which determines when to reverse the conveying direction in the technique taught by Swanson.”) (emphasis added); id. at 10 (“Regardless of if the time period selected is an exact time period, such as since the last delivery of ice cubes, or a relative time period, such as a predetermined time interval, both techniques agitate the ice in the bin based on a time period which has elapsed since the last delivery of the ice cubes as claimed.”) (emphasis added). Appeal 2012-011405 Application 12/287,241 8 way” “such that they are operated in the direction reversed with respect to the first conveying direction based on a period of time which has elapsed since the last delivery of ice cubes.” (emphasis added). In other words, the proposed construction does not transform the last limitation into a mere capability because the claim language specifically recites how the “conveying means” “are operated.” CONCLUSION For the reasons set forth above, we REVERSE the Examiner’s rejection of claims 1–6 and 8–20 under 35 U.S.C. § 103(a) as being unpatentable over Krause and Swanson. REVERSED Ssc