Ex Parte Konopa

Patent Trial and Appeal Board

Dec 17, 2012

11788663 (P.T.A.B. Dec. 17, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte HELMUT KONOPA
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Appeal 2010-012455
Application 11/788,663
Technology Center 3700
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Before GAY ANN SPAHN, BENJAMIN D.M. WOOD, and
MICHELLE R. OSINSKI, Administrative Patent Judges.

OSINSKI, Administrative Patent Judge.

DECISION ON APPEAL
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STATEMENT OF THE CASE
Appellant1 appeals under 35 U.S.C. § 134(a) from a final rejection of
claims 26-31 and 34-44.2 We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
The claimed subject matter relates to a “refrigerator with regulable
dehumidification . . . that is capable, under diverse climatic conditions, of
achieving a favorable compromise between the risk of the formation of
condensation in the storage compartment and the risk of drying out the
articles that are to be cooled.” Spec. 2, l. 24 – 3, l. 4. Claims 26 and 34 are
the independent claims on appeal. Claim 26, reproduced below, is
illustrative of the claimed subject matter:
26. A refrigerator, comprising:
at least one storage compartment defining an
interior;
a thermally insulating wall;
an evaporator disposed separate from said
interior with said thermally insulating wall; and
a fan for driving an exchange of air between
said interior of said storage compartment and the
area of said evaporator, said evaporator operating
while said fan is switched off, whereby
evaporation from the evaporator back into the
storage compartment is limited.

REJECTIONS
Appellant seeks review of the following rejections:

1 Appellant identifies the real party in interest as BSH Bosch und Siemens
Hausgeräte GmbH. App. Br. 3.
2 The Examiner withdrew the rejection of claims 32 and 33 under 35 U.S.C.
§ 102(b) as anticipated by Yoo. Ans. 3.
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(1) Claims 26-29, 31, and 34-44 under 35 U.S.C. § 102(b) as
anticipated by Yoo (US 5,931,004, iss. Aug. 3, 1999). Ans. 3-5.
(2) Claim 30 under 35 U.S.C. § 103(a) as unpatentable over Yoo and
Weiss (US 5,355,686, iss. Oct. 18, 1994). Ans. 5-6.

ANALYSIS
Claims 26-29, 31, and 34-44 as anticipated by Yoo
Claims 26-29
Only issues and findings of fact contested by Appellant in the Brief
will be addressed. See Ex parte Frye, 94 USPQ2d 1072, 1075-76 (BPAI
2010). Appellant argues claims 26-29 as a group. App. Br. 10-11. We
select independent claim 26 as the representative claim. See 37 C.F.R.
§ 41.37(c)(1)(vii)(2011).
The Examiner found that Yoo discloses all of the limitations of
independent claim 26. Ans. 3-4. In particular, the Examiner found that the
evaporator operates (when the compressor operates) while the fan is
switched off as shown, for example, in step 214 of Figure 7 of Yoo. Id. at 4.
The Examiner “noted that the compressor control of Yoo et al. corresponds
to the evaporator control of the instant application, since it is the running of
the compressor that pumps refrigerant through the evaporator and causes the
evaporator to be on.” Id.
In contesting the rejection of claim 26, Appellant recites the
limitations set forth in claim 26 and alleges that the cited reference does not
disclose these limitations. Reply Br. 10-11. This statement does not
constitute a separate argument for patentability of claim 26 pursuant to 37
C.F.R. § 41.37(c)(1)(vii)(2011). See In re Lovin, 652 F.3d 1349, 1357 (Fed.
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Cir. 2011) (holding that the Board had reasonably interpreted 37 C.F.R.
§ 41.37(c)(1)(vii) as requiring “more substantive arguments in an appeal
brief than a mere recitation of the claim elements and a naked assertion that
the corresponding elements were not found in the prior art.”); see also, e.g.,
Ex parte Belinne, No. 2009-004693, 2009 WL 2477843 (BPAI 2009)
(informative) (“[W]e find that the Examiner has made extensive specific fact
finding . . . with respect to each of the argued claims. Appellants’ argument
. . . repeatedly restates elements of the claim language and simply argues
that the elements are missing from the reference. However, Appellants do
not present any arguments to explain why the Examiner’s explicit fact
finding is in error.”). Appellant’s statement does not specifically address the
Examiner's findings with respect to the disclosure in Yoo (Ans. 3-5, 6-7) or
point out why the findings are in error.
For the foregoing reasons, we find that the Examiner did not err in
finding that Yoo discloses all of the limitations recited in claim 26 and we
sustain the rejection of claims 26-29 under 35 U.S.C. § 102(b).

Claim 31
Appellant presents separate arguments for the patentability of claim
31. The Examiner found that Yoo discloses all of the limitations of claim
31. Ans. 4, 6-7. In particular, the Examiner found that “in the instance
when, after passing through Phase I (step 213), TF is greater than TFS (at step
215) and TR is less than TRS (at step 212), the control circuit performs Phase
II (step 214) directly after performing Phase I—thus reading directly on
Appellant's claim.” Id. at 6-7.
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Appellant disagrees with the Examiner’s finding that Yoo discloses
the control circuit performing a first phase in which the fan and evaporator
are turned on and then performing a second phase in which the fan is turned
off and the evaporator is turned on. Reply Br. 11. In particular, Appellant
contends that:
Rather, as shown in Figure 7, if the temperature TF is less than
TFS, the control proceeds to step 217 and may never reach steps
212 or 214. Similarly, if the temperature TR is less than TRS,
then the control proceeds directly to step 214, in which the
compressor is on and the refrigerating fan is off.
Thus, the Yoo et al. reference does not necessarily
disclose wherein the control circuit performs a first phase in
which both the fan and the evaporator are turned on and then
performs a second phase in which the fan is turned off and the
evaporator is turned on, as recited in claim 31.

Id. at 11-12.
Appellant’s argument is unpersuasive because it does not address the
rejection as articulated by the Examiner. The Examiner has set forth
particular findings of a control method supported by the flow chart of Figure
7 to show that first and second phases meeting the recited claim limitations
are disclosed in Yoo. Rather than pointing out error in the Examiner’s
findings, Appellant has merely pointed out other, different control methods
also supported by the flow chart of Figure 7 that do not meet the recited
claim limitations. Appellant’s arguments do not persuasively rebut the
Examiner’s finding that at least one control method meeting the recited
claim limitations is disclosed in Yoo.
For the foregoing reasons, we find that the Examiner did not err in
finding that Yoo discloses all of the limitations recited in claim 31 and we
sustain the rejection of claim 31 under 35 U.S.C. § 102(b).
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Claims 34, 35, and 37-44
Appellant argues claims 34, 35, and 37-44 as a group. Reply Br. 12.
We select independent claim 34 as the representative claim. See 37 C.F.R.
§ 41.37(c)(1)(vii)(2011). The Examiner found that Yoo discloses all of the
limitations of independent claim 34. Ans. 3-4. In contesting the rejection of
claim 34, Appellant indicates that claims 34, 35, and 37-44 “recite somewhat
similar features as claims 26-33” and claims 34, 35, and 37-44 “are not
anticipated by the Yoo et al. reference for at least the same reasons.” Reply
Br. 12. As we did not find Appellant’s arguments with respect to claims 26-
33 persuasive for the reasons discussed supra, we sustain the Examiner’s
rejection of independent claim 34, and claims 35 and 37-44 which fall
therewith, under 35 U.S.C. § 102(b) as anticipated by Yoo.

Claim 36
Claim 36 depends from claim 34 and recites “performing a first phase
in which both the fan and the evaporator are operating; and performing a
second phase in which the fan is turned off and the evaporator is turned on.”
The Examiner found that Yoo discloses all of the limitations of claim
36. Ans. 4. Appellant argues that Yoo fails to disclose or suggest
“performing a first phase (19) in which both the fan (9) and the evaporator
(4, 5) are operating (page 12, lines 2-6); and performing a second phase (21)
in which the fan (9) is turned off and the evaporator (4, 5) is turned on (page
12, line 7-15), as recited in claim 36). Reply Br. 12.
As Appellant’s argument merely repeats the claim language of claim
36 and does not specifically address the Examiner's findings with respect to
the disclosure in Yoo (Ans. 3-5) or point out why the findings are in error,
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the argument is not persuasive. See Lovin at 1357; see also, e.g., Belinne,
No. 2009-004693, 2009 WL 2477843.
For the foregoing reasons, we find that the Examiner did not err in
finding that Yoo discloses all of the limitations recited in claim 36 and we
sustain the rejection of claims 36 under 35 U.S.C. § 102(b).

Claim 30 as unpatentable over Yoo and Weiss
Appellant presents separate arguments for the patentability of claim
30. The Examiner finds that Yoo discloses all of the limitations of claim 30,
except for “controlling the fan or evaporator according to sensed humidity.”
Ans. 6. The Examiner concludes that “[i]t would have been obvious to one
of ordinary skill in the art . . . to apply such humidity sensor controls [as
taught by column 9, lines 13-19 of Weiss to control a compressor/evaporator
and fans of a refrigerator system] to the refrigerator of Yoo et al. for the
general purpose of controlling the humidity within the refrigerator.” Id.
First, Appellant merely sets forth the limitations in claim 30 and
alleges that the cited references do not disclose these limitations. Reply Br.
13. This does not constitute a separate argument for patentability of claim
30, because it does not specifically address the Examiner's findings with
respect to the combination of Yoo and Weiss (Ans. 5-6) or point out why the
findings are in error. See 37 C.F.R. § 41.37(c)(1)(vii); see also, e.g., Lovin
at 1357 and Belinne, No. 2009-004693, 2009 WL 2477843.
Second, Appellant contends that Weiss does not remedy the
deficiencies of Yoo in failing to teach or suggest a humidity sensor
providing a humidity signal to the control circuit and the control circuit
controlling operation of the evaporator and fan. Reply Br. 13. We find that
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Weiss does remedy the deficiencies of Yoo in that Weiss teaches humidity
sensors that may interact with a controller to drive relays for compressors,
fans, and heaters (Weiss, col. 9, ll. 13-19) and that the Examiner has
provided “some articulated reasoning with some rational underpinning to
support the legal conclusion of obviousness.” KSR Int’l Co. v. Teleflex Inc.,
550 U.S. 398, 418 (2007) (quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir.
2006)).
Third, Appellant contends that:
one of ordinary skill in the art would not have had apparent
reason to modify the control of the compressor and freezing and
refrigerating fans of the Yoo et al. reference, which is based
solely on a comparison of the temperature in the refrigerator
and freezer compartments, to control the operation of the
compressor and the fan based on the humidity.
Reply Br. 13. Appellant further points out that “the Examiner’s Answer
does not establish how such a combination would be made without deviating
from the alleged control in steps 212, 213, 214, 215 of the Yoo et al.
reference.” Id. at 13-14. Appellant appears to be arguing a bodily
incorporation of the humidity sensor controls of Weiss into Yoo’s device.
See In re Keller, 642 F.2d 413, 425 (CCPA 1981) (citations omitted) (“The
test for obviousness is not whether the features of a secondary reference may
be bodily incorporated into the structure of the primary reference. . . .
Rather, the test is what the combined teachings of those references would
have suggested to those of ordinary skill in the art.”); see also In re Nievelt,
482 F.2d 965, 968 (CCPA 1973) (“Combining the teachings of references
does not involve an ability to combine their specific structures.”).
Appellant has not asserted that the proposed modification would have
been beyond the capabilities of a person of ordinary skill in the art. Even if
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the modification of Yoo by the teachings of Weiss would require some
deviation from the control in the steps 212, 213, 214, and 215, this would
not be beyond the level of ordinary skill in the art, because “[a] person of
ordinary skill in the art is also a person of ordinary creativity, not an
automaton.” See KSR at 421. Accordingly, we are not persuaded of error in
the Examiner’s rejection as it takes into account only “the inferences and
creative steps that a person of ordinary skill in the art would employ.” See
KSR at 418.
For the foregoing reasons, we sustain the rejection of claim 30.

DECISION
The Examiner’s rejections of claims 26-31 and 34-44 are
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)(1)(iv).

AFFIRMED

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