Ex Parte Laible

Patent Trial and Appeal Board

Aug 3, 2017

11919569 (P.T.A.B. Aug. 3, 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.
11/919,569 10/29/2007 Karl-Friedrich Laible PTB-6032-69 5274
23117 7590 08/07/2017
NIXON & VANDERHYE, PC
901 NORTH GLEBE ROAD, 11TH FLOOR
ARLINGTON, VA 22203
EXAMINER
GALLEGO, ANDRES F
ART UNIT PAPER NUMBER
3637
NOTIFICATION DATE DELIVERY MODE
08/07/2017 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 KARL-FRIEDRICH LAIBLE
Appeal 2016-000634
Application 11/919,569
Technology Center 3600
Before LYNNE H. BROWNE, ANNETTE R. REIMERS, and
RICHARD E. RICE, Administrative Patent Judges.
RICE, 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 6—18, 20, and 21. App. Br. 9; Final Act. 1. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.
CLAIMED SUBJECT MATTER
The disclosed subject matter relates to “a refrigerating device that has
a carcass and a door and in which the carcass has a plastic front frame that is
backed by a first magnet and against which, when the door is in the closed
position, a door seal fitted with a second magnet will close tightly.” Spec.
Appeal 2016-000634
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2:1—4. Claims 6 and 11 are independent. Claim 6 is illustrative of the
claims on appeal and is reproduced below:
6. A refrigerating device comprising:
a cooled goods compartment in which goods to be cooled
are received, the cooled goods compartment having a front
frame, said cooled goods compartment having an opening
comprising a pair of horizontal sides and a pair of vertical sides,
said front frame disposed along each of the pair of horizontal
sides and each of the pair of vertical sides; and
a door movable between an open position and a closed
position relative to the cooled goods compartment, the door
having a seal element comprising a pair of horizontal sides and
a pair of vertical sides, each of the pair of horizontal sides and
each of the pair of vertical sides of the seal element configured
to be in sealing engagement with respective ones of the pair of
horizontal sides and the pair of vertical sides of the front frame
when the door is in its closed position, and the door being
displaceable in a vertical direction relative to the cooled goods
compartment within a predetermined height tolerance,
wherein the cooled goods compartment comprises a first
magnet disposed within each of the pair of horizontal sides of
the front frame and the door comprises a second magnet
disposed within each of the pair of horizontal sides of the seal
element,
wherein the first magnet has a pole and an oppositely
signed pole and the second magnet has a pole and an oppositely
signed pole,
wherein the first magnet and the second magnet are
oriented such that the pole of the first magnet adjacent the
second magnet has a sign opposite a sign of the pole of the
second magnet adjacent the first magnet,
wherein the oppositely signed pole of the first magnet
faces away from the second magnet and the oppositely signed
pole of the second magnet faces away from the first magnet,
and
wherein one of the first magnet and the second magnet is
taller than the other in a vertical direction at least to the extent
of said predetermined height tolerance to ensure overlap
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between the first magnet and the second magnet within the
range of said predetermined height tolerance when the door is
in the closed position to maintain the sealing engagement
between respective ones of the pair of horizontal sides of the
front frame and the pair of horizontal sides of the sealing
element.
App. Br. 23—24 (Claims App’x).
REFERENCES RELIED ON BY THE EXAMINER
Saunders US 2,745,259 May 15, 1956
Johnson US 5,349,832 Sept. 27, 1994
Banicevic US 6,056,383 May 2, 2000
Shin US 2002/0194861 A1 Dec. 26, 2002
An US 2004/0189165 A1 Sept. 30, 2004
Han US 6,845,545 B2 Jan. 25, 2005
THE REJECTIONS ON APPEAL
Claims 6, 10-12, 20, and 21 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Banicevic, Saunders, An, and Johnson.
Claims 7 and 15 are rejected under 35 U.S.C. § 103(a) as unpatentable
over Banicevic, Saunders, An, Johnson, and Shin.1
Claims 8, 9, 13, 14, and 16—18 are rejected under 35 U.S.C. § 103(a)
as unpatentable over Banicevic, Saunders, An, Johnson, and Han.
1 The Appeal Brief states that “Appellant hereby appeals to the Patent Trial
and Appeal Board from the last decision of the Examiner.” App. Br. 1.
Neither the Appeal Brief nor the Reply Brief, however, includes any
argument addressed to the rejection of claims 7 and 15. We, nevertheless,
do not understand Appellant to have withdrawn the appeal as to claims 7
and 15 because Appellant’s submissions do not state explicitly that only
claims 6, 8—14, 16—18, 20, and 21 are being appealed.
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ANALYSIS
The Rejection of Claims 6, 10—12, 20, and 21 as
Unpatentable over Banicevic, Saunders, An, and Johnson
Claims 6 and 11
Appellant argues claims 6 and 11 together.2
a. “a door. . . displaceable in a vertical direction relative to the
cooled goods compartment within a predetermined height
tolerance ”
Claim 6 recites, inter alia, “[a] refrigerating device comprising: a
cooled goods compartment. . . ; and a door,... the door being displaceable
in a vertical direction relative to the cooled goods compartment within a
predetermined height tolerance.” The Examiner finds that Banicevic
discloses refrigeration device 10 having a door (door 20) that is
“displaceable in a vertical direction relative to the cooled goods
compartment within a predetermined height tolerance.” Final Act. 2—3.3
The Examiner finds that Saunders teaches single outer door 14 comprising a
pair of horizontal sides and a pair of vertical sides and a gasket that extends
entirely around the door. Id. at 4. According to the Examiner, it would have
been obvious to have modified Banicevic’s refrigerator to provide a
common outer door that encloses both the freezer and fresh food
compartments, because “such a modification would increase the insulation
of the freezer compartment while providing a common outer door that closes
2 We select claim 6 for review, with claim 11 standing or falling with
claim 6. See 37 C.F.R. § 41.37(c)(l)(iv).
3 We note that Banicevic’s refrigerator has two sets of outer doors, one set
for the freezer compartment and one set for the fresh food compartment.
4:31-33, Fig. 1.
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both the freezer and refrigerated compartments as taught by Saunders in
Column 2 Lines 25-45.” Id.
Appellant asserts that the rejection does not provide any discussion of
“[t]he feature of ‘the door being displaceable in a vertical direction relative
to the cooled goods compartment within a predetermined height tolerance.’”
App. Br. 9. Appellant argues that “the rejection is deficient because it fails
to clearly explain the pertinence of Banicevic with respect to this claim
feature.” Id. at 10 (citing 37 C.F.R. § 1.104(c)(2)). Appellant further argues
that the Examiner fails to specify which of Banicevic’s doors 20 are relied
upon for the rejection, and that Banicevic does not disclose a door that
satisfies the claim requirement. Id. at 10—11.
The Examiner answers that the limitation “displaceable in a vertical
direction relative to the cooled goods compartment within a predetermined
height tolerance” simply requires the door to be capable of some amount of
vertical displacement relative to the cooled goods compartment. Ans. 2
(citing Spec. 2:10—16). The Examiner further explains that “no values
associated with the height tolerances and vertical displacements are being
claimed, nor is there a recitation of values in the disclosure.” Id.
Appellant replies that “the Examiner cites to no prior art for this
position and makes no attempt to refute [Appellant’s] argument that this
feature is not taught by Banicevic.” Reply Br. 2. Appellant, however, does
not dispute the Examiner’s claim construction, or present persuasive
evidence or argument to establish that Banicevic’s door 20 either is not
supported by a hinge, or is incapable of some amount of vertical
displacement. See In re Schreiber, 128 F.3d 1473, 1477—78 (Fed. Cir. 1997)
(explaining that claims directed to an apparatus must be distinguished from
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the prior art in terms of structure rather than function); see also Banicevic
4:58—60, Fig. 2 (disclosing hinges 42 for mounting refrigerator door 20).
Accordingly, Appellant does not apprise us of error.
b. “a second magnet disposed within each of
the pair of horizontal sides of the seal element ”
Claim 6 recites, inter alia, that “the cooled goods compartment
comprises a first magnet disposed within each of the pair of horizontal sides
of the front frame and the door comprises a second magnet disposed within
each of the pair of horizontal sides of the seal element.” As previously
noted, the Examiner finds that the combination of Banicevic and Saunders
teaches a common outer door comprising the second magnet disposed within
each of the pair of horizontal sides of the seal element. Final Act. 4.
Appellant contends that “the rejection is relying on two separate
doors 20 and on two separate chambers [as depicted in Banicevic’s Figures 8
and 9] for each of the ‘pair of horizontal sides.’”4 App. Br. 12. Based on
this contention, Appellant argues that “since the mullion 38 does not have a
breaker strip 36, it is not possible for Banicevic to teach [the] claim feature.”
Id.
The Examiner answers that the rejection of claim 6 is based on
a combination of references, not Banicevic alone, and that the
combination of Banicevic and Saunders teaches the second magnets
disposed in the horizontal sides of the door seal element, explaining
that:
4 Appellant notes that Figure 8 of Banicevic depicts a cross-section taken
through the upper chamber and one of the upper doors 20, while Figure 9 of
Banicevic depicts a cross-section taken through the lower chamber and one
of the lower doors 20. See App. Br. 12.
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. . . Banicevic teaches the front frame of the cooled goods
compartment having [] magnets on [a] pair of horizontal sides
and magnets on a pair of vertical sides that respectively interact
with corresponding magnets on the horizontal seal elements and
vertical seal elements of the doors of Banicevic (Figure 1
illustrates the doors 20 having vertical and horizontal portions
that align with [] respective vertical and horizontal portion[s] of
the front frame of the refrigerator), with the prior art of
Saunders teaching that a single door [could] be used, as
Saunders teaches a single door having a seal arrangement along
its periphery that has two vertical and horizontal components
respectively interacting with the horizontal and vertical sides of
the front frame of the cool goods compartment.
Ans. 4.
Appellant replies that “the rejection is relying on two separate
doors 20 and on two separate chambers of Banicevic for each of the ‘pair of
horizontal sides,’ which is inconsistent with the claim language.” Reply
Br. 4. Appellant also argues that “[t]he Examiner’s response does not
appear to address the substance of [Appellant’s] argument at all. Rather, the
Examiner essentially repeats the rejection.” Id.
Appellant misconstrues the rejection, which relies on the combined
teachings of Banicevic and Saunders. As such, the rejection does not rely on
two separate doors and two separate chambers for each pair of horizontal
sides, contrary to Appellant’s argument. Accordingly, Appellant does not
apprise us of error.
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c. “one of the first magnet and the second magnet is taller than the other
in a vertical direction at least to the extent of said predetermined
height tolerance to ensure overlap between the first magnet and the
second magnet within the range of said predetermined height
tolerance when the door is in the closed position ”
Claim 6 recites, inter alia, that “one of the first magnet and the second
magnet is taller than the other in a vertical direction at least to the extent of
said predetermined height tolerance to ensure overlap between the first
magnet and the second magnet within the range of said predetermined height
tolerance when the door is in the closed position” (emphasis added). The
Examiner finds that Johnson teaches a first magnet (magnet 44) that is taller
than a second magnet (magnet/magnetic seal 34) in a vertical direction as
shown in Figure 2. Final Act. 5. The Examiner provides the following
rationale for combining the teachings of Johnson and Banicevic:
It would have been obvious to one having ordinary skill in the
art at the time the invention was made to modify the magnets of
Banicevic by having the magnet on the door frame be wider
than [the] door magnet as taught by Johnson, such that one of
the first magnet and the second magnet is taller than the other in
a vertical direction at least to the extent of said height tolerance
to ensure overlap between the first magnet and the second
magnet within the range of said predetermined height tolerance
when the door is in the closed position to maintain the sealing
engagement between respective ones of the pair of horizontal
sides of the front frame and the pair of horizontal sides of the
sealing element, since such a modification would bring down
the overall weight of the magnets [] acting on the door gasket,
reducing sagging over time.
Id. at 5. The Examiner further reasons that this modification would have
been obvious because “it has been held that where the general conditions of
a claim are disclosed in the prior art, it is not inventive to discover the
optimum or workable values or ranges by routine experimentation.”
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Id. at 5—6.
Appellant contends that “[i]f such a height difference is disclosed,
then the height difference would obviate the need for the alleged motivations
of ‘bringing] down the overall weight of the magnets’ and ‘reducing
sagging over time’ to ensure that the magnets will be able to attract to one
another.” Appeal Br. 14. In support of this contention, Appellant asserts
that, even assuming that Johnson teaches such a height difference, this
teaching “conflicts] with the alleged motivation of ‘bringing] down the
overall weight of the magnets’ because the excess height of the taller magnet
would result in excess weight beyond what would be needed for the magnets
to align and attract to one another.” Id.
Appellant also asserts that the Examiner erroneously relies on the rule
that “where the general conditions of a claim are disclosed in the prior art, it
is not inventive to discover the optimum or workable values or ranges by
routine experimentation” (“the optimizing rule”). Id. at 14. Appellant
argues that the prior art does not teach a door that is displaceable “within a
predetermined height tolerance” and, therefore, does not disclose the general
conditions of the claim, as required for application of the optimizing rule.
Id. at 14—15. Appellant further argues that the rule is inapposite because
claim 6 does not recite a specific numerical range. Id. at 15.
The Examiner answers that a shorter magnet would not obviate the
need for the increased surface area on the larger magnet because
“[reduction in sagging over time does not eliminate the door having some
amount of sag over time, and a larger magnet fixedly placed on the front
frame offers more surface area that, over time, allows for the connection to
the smaller magnet on the door seal to be maintained.” Ans. 5. The
Examiner also maintains that the optimizing rule is applicable
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notwithstanding the absence of specific numerical values in the claim. Id.
In reply, Appellant continues to challenge the Examiner’s reliance on the
optimizing rule, but does not address the Examiner’s statement in the
Answer that a reason for the larger magnet having greater surface area is to
maintain the connection to the smaller magnet when the door sags over time.
See Reply Br. 4—5.
We are not persuaded that the Examiner’s articulated rationale for
combining the teachings of Johnson and Banicevic is deficient. Appellant
does not dispute the Examiner’s finding that Johnson’s first magnet 44 is
taller than Johnson’s second magnet 34 in a vertical direction. Appellant
also does not challenge the Examiner’s reasoning that “[Reduction in
sagging over time does not eliminate the door having some amount of sag
over time, and a larger magnet fixedly placed on the front frame offers more
surface area that, over time, allows for the connection to the smaller magnet
on the door seal to be maintained.” See Ans. 5.
In view of Banicevic’s disclosure of a door that is displaceable in a
vertical direction relative to the cooled goods department within a
predetermined height tolerance, as found by the Examiner, one skilled in the
art would have recognized that displacement of Banicevic’s door, as
modified by Saunders, would affect the relative positions, or overlap, of the
second magnet affixed to the door seal and the first magnet affixed to the
front frame of the cooled goods department. Thus, the Examiner’s
articulated reasoning has some rational underpinning to support the legal
conclusion of obviousness. See Ans. 5; KSR Int’l Co. v. Teleflex Inc., 550
U.S. 398, 418 (2007) (‘“[R]ejections on obviousness grounds cannot be
sustained by mere conclusory statements; instead, there must be some
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articulated reasoning with some rational underpinning to support the legal
conclusion of obviousness.’” (Quoting In re Kahn, 441 F.3d 977, 988 (Fed.
Cir. 2006))).
Further, we are not persuaded that the Examiner’s reliance on the
optimizing rule is erroneous. See App. Br. 14—15. While this rule applies
only where the optimized variable is a “result-effective variable,” see In re
Applied Materials, Inc., 692 F.3d 1289, 1295 (Fed. Cir. 2012) (citing In re
Antonie, 559 F.2d 618, 620 (CCPA 1977); In re Boesch, 617 F.2d 272, 276
(CCPA 1980)), Appellant has not argued or shown that the relative
positioning, or extent of overlap, of adjacent magnets was not recognized in
the prior art to be a result-effective variable. See Applied Materials, 692
F.3d at 1297 (“A recognition in the prior art that a property is affected by the
variable is sufficient to find the variable result-effective.”). Indeed, the
evidence of record establishes that the prior art did recognize that relative
positioning, or extent of overlap, of adjacent magnets was a result-effective
variable. See An | 8 (teaching that “when a magnet is embedded inside the
front of the refrigerator body, the magnet must be embedded at a correct
position corresponding to that of the magnet contained in the gasket”).
Nothing in the Federal Circuit’s articulation of the optimizing rule,
moreover, limits application of the rule to claims reciting specific numerical
values. See, e.g., Applied Materials, 692 F.3d at 1295 (upholding the
Board’s finding that dimensional variables were result-effective, rendering
their optimization within the grasp of one of ordinary skill in the art).
Moreover, Appellant has not explained why the scope of the range “at least
to the extent of said predetermined height tolerance” does not overlap the
difference in height of Johnson’s magnets. We note, for example, that a
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door having little potential to sag on its hinge would require only a
correspondingly small difference in the height of the first and second
magnets. See In re Woodruff, 919 F.2d 1575, 1578 (Fed. Cir. 1990)
(explaining that a claimed range that overlaps the prior art may create a
prima facie case of obviousness that the applicant needs to rebut).
Accordingly, Appellant does not apprise us of error. We sustain the
Examiner’s rejection of claims 6 and 11 over Banicevic, Saunders, An, and
Johnson.
Claims 10, 12, 20, and 21
Appellant argues claims 10 and 20 together.5
d. “the third magnet and the fourth magnet are oriented such that the
poles of the third magnet are adjacent to respective poles of the
fourth magnet having signs opposite to signs of the poles of the
third magnet when the door is in the closed position ”
Claim 10 recites, inter alia, “a third magnet disposed within each of
the pair of vertical sides of the seal element and a fourth magnet disposed
within each of the pair of vertical sides of the front frame,” that “the third
magnet and the fourth magnet each has a pole and an oppositely signed
pole,” and that
the third magnet and the fourth magnet are oriented such that
the poles of the third magnet are adjacent to respective poles of
the fourth magnet having signs opposite to signs of the poles of
the third magnet when the door is in the closed position,
irrespective of vertical displacement of the door relative to the
opening of the cooled goods compartment.
Appeal Br. 25 (Claims App’x).
5 We select claim 10 for review, with claim 20 standing or falling with
claim 10.
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Appellant asserts that the Examiner improperly relies on An’s
magnets 31 and 32 for two, separately recited pairs of magnets—the first and
second magnets recited in claims 6 and 11 and the third and fourth magnets
recited in claims 10 and 20. App. Br. 16. According to Appellant, the
Examiner’s “reliance on the same component in a reference to teach two
different claim features is improper.” Id. Appellant also asserts that the
Examiner fails to address the recitation that
the third magnet and the fourth magnet are oriented such that
the poles of the third magnet are adjacent to respective poles of
the fourth magnet having signs opposite to signs of the poles of
the third magnet when the door is in the closed position,
irrespective of vertical displacement of the door relative to the
opening of the cooled goods compartment.
Id. at 17. Appellant additionally argues that An does not teach that feature.
Id. at 17—18.
The Examiner answers that Appellant’s argument improperly focuses
on the teachings of An, individually, rather than the teachings of An,
Banicevic, and Saunders, in combination. Ans. 6. In addition, the Examiner
“maintains that An is taught as modifying [] all the magnets of Banicevic, as
modified by Saunders, for a combined teaching defining the magnets having
pole to opposite pole relationships, as claimed, ” and explains that one
skilled in the art “would recognize that for adjacent magnets to maintain
alignment, the adjacent surfaces of the magnets will have opposing poles to
create an attractive force.” Id. (emphasis added).
In reply, Appellant again asserts that
as noted in the Appeal Brief, the rejection does not cite to any
prior art to teach that “the third magnet and the fourth magnet
are oriented such that the poles of the third magnet are adjacent
to respective poles of the fourth magnet having signs opposite
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to signs of the poles of the third magnet when the door is in the
closed position, irrespective of vertical displacement of the door
relative to the opening of the cooled goods compartment.”
Unlike the Office Action, the Examiner now alleges that An
teaches this claimed arrangement of the magnet’s poles.[6] An
does not, however, teach this arrangement. Figs. 4 and 7-9 of
An show that one pole of one magnet is adjacent to the opposite
pole of the other magnet, while the other two poles are not
adjacent. For example, in Fig. 4 the north pole of magnet 31 is
adjacent to the south pole of magnet 32, but the south pole of
magnet 31 is not adjacent to the north pole of magnet 32.
Therefore, An cannot teach this feature as alleged in the
rejection.
Reply Br. 6.
As Appellant argues, the Examiner does not explain how An teaches
“the third magnet and the fourth magnet are oriented such that the poles of
the third magnet are adjacent to respective poles of the fourth magnet having
signs opposite to signs of the poles of the third magnet when the door is in
the closed position.” The recited orientation of the third and found magnets,
in claim 10, is different from the recited orientation of the first and second
magnets, in claim 6. In claim 6, one pole of the first magnet and an
oppositely signed pole of the second magnet are adjacent to each other,
6 To the extent Appellant asserts that the Examiner’s Answer includes
arguments alleged by Appellant to constitute an undesignated new ground of
rejection, Appellant could have filed either a petition to the Director seeking
to reopen prosecution before the Examiner to address the alleged new
ground, or a Reply Brief to address the arguments presented in the Answer
and to continue with the appeal. 37 C.F.R. §§41.40 and 41.41. Appellant
chose to file a Reply Brief to address the arguments presented in the Answer
and to continue with the appeal. See 37 C.F.R. § 41.40(a) (“Failure of
appellant to timely file such a petition [under 37 C.F.R. § 1.181] will
constitute a waiver of any arguments that a rejection must be designated as a
new ground of rejection.”).
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while the other poles of the first and second magnets face away from each
other. In claim 10, however, both poles of each of the third and fourth
magnets are adjacent to respective poles of the other magnet having opposite
signs when the door is in the closed position. Compare Spec. 4:5—19, Fig. 3
(describing magnets 7 and 9 corresponding to the first and second magnets
in claim 6), with Spec. 4:20—31, Fig. 4 (describing magnets 12 and 13
corresponding to the third and fourth magnets in claim 10).
Accordingly, we do not sustain the Examiner’s rejection of claims 10
and 20 as unpatentable over Banicevic, Saunders, An, and Johnson. We also
reverse the Examiner’s rejection of claim 12 (which depends directly from
claim 10) and claim 21 (which depends directly from claim 20).
The Rejection of Claims 8, 9, 13, 14, and 16—18 as
Unpatentable over Banicevic, Saunders, An, Johnson, and Han
Claim 9
Claim 9 recites that “the predetermined height tolerance between the
door and the opening of the cooled goods compartment is greatest at a side
of the door laterally opposite from the at least one multi-link hinge.” The
Examiner finds that the combination of Han and Banicevic teaches this
functional limitation. Final Act. 8—9. The Examiner reasons that it would
have been obvious to modify Banicevic’s door to incorporate Han’s multi-
link hinge, and that the predetermined height tolerance between the modified
door and the opening of the cooled goods compartment would have been
greatest at the side laterally opposite from the hinge because “the moment
arm created by the load of the door acting on the multi-link hinge would
predictably cause the door to sag most at a point furthest away from the
hinge.” Id.
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Appellant asserts the Examiner’s analysis “incorrectly presupposes
that the ‘apparatus’ taught by Han would necessarily sag in the first place.”
App. Br. 19. Appellant further argues that “the ‘apparatus’ of Han must be
made sufficiently robust. . . such that [Han’s] door 501 would not sag in the
first place.” Id. at 20.
In response, the Examiner explains that “sagging exists even in small
values that would not necessarily affect the function of the hinge of Han,
when introduced to the combined prior art teachings.” Ans. 7. The
Examiner further finds “that it is a known characteristic of doors to have
some amount of sagging relative to a structure while supported on a hinge by
a predictable vertical distance as can be tolerated by the hinge due to the
torque acting on it.” Id.
In reply, Appellant argues that “the rejection incorrectly presupposes
that the ‘apparatus’ taught by Han would necessarily, i.e., inherently, sag in
the first place.” Reply Br. 7. Appellant contends that “the Examiner’s
inherency position is deficient. This shifts the burden to the Examiner to
explain why such a feature would be inherent to Han’s device. However, the
Examiner did not meet this burden in the response in the Examiner’s
Answer.” Id.
As an initial matter, Appellant’s argument that the Examiner fails to
explain why the recited feature “would be inherent to Han’s device” (id.) is
not responsive to the Examiner’s rejection, which relies on Han only for the
teaching of a multi-link hinge. Further, the Examiner’s explanation of why
the recited functional limitation is an inherent characteristic of Banicevic’s
door, as modified by Saunders and Han, is reasonable. See Ans. 7 (finding
that “it is a known characteristic of doors to have some amount of sagging
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relative to a structure while supported on a hinge by a predictable vertical
distance as can be tolerated by the hinge due to the torque acting on it,” and
that “it is an inherent characteristic of a moment arm created by a load on a
door acting on a hinge to have the most torque when the load is applied at a
distance farthest from the hinge and creating the most displacement for the
door relative to the door frame”); Spec. 2:11—14 (admitting as to “a
refrigerating device whose door and carcass are linked by means of a multi­
link hinge, [that] the risk that the door will, under load, sag substantially
parallel to the carcass or sag more at its free, non-fastened end and so in any
event become displaced is relatively high in the case of that type of hinge”).
Appellant has not sufficiently shown that there is a structural distinction
between Banicevic’s door, as modified, and the recited functional limitation.
Accordingly, Appellant does not apprise us of error. We sustain the
Examiner’s rejection of claim 9 over Banicevic, Saunders, An, Johnson, and
Han.
Claims 14 and 18
Appellant argues claims 14 and 18 together.7
Claim 14 recites that “the door is displaceable in a vertical direction
relative to the opening of the cooled goods compartment due to displacement
of the at least one multi-link hinge caused by loading of the at least one
shelf.” The Examiner finds that Banicevic, as modified, teaches this
limitation, reasoning that it is a characteristic property of doors supported by
a hinge to have some deflection or sagging due to weight exerted on the door
at a distance from the hinge, “especially through repeated loading and
7 We select claim 14 for review, with claim 18 standing or falling with
claim 14.
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unloading of goods on the shelves supported by the door over an extended
period of time.” Final Act. 9.
Appellant argues “that one of ordinary skill in the art would not find
the features of claim 14 to be inherently disclosed by Han.” App. Br. 21.
Similar to its argument in connection with claim 9, Appellant argues that one
skilled in the art “would understand that the [Han] ‘apparatus’ must be
sufficiently strong to prevent any sagging of the door 501 in the first place.”
Id.
The Examiner answers that claim 14 recites a functional limitation
that requires the door to be capable of having some amount of vertical
displacement. Ans. 8. The Examiner explains that “Han is introduced only
to teach that a multi-link hinge can be used instead of the hinge in Banicevic,
as modified,” and that Han “does not change the known characteristic that
doors, especially under load, will have some amount of displacement.” Id.
Appellant replies that “the Examiner’s argument is purely conjecture. There
is no teaching of this feature in any reference cited.” Reply Br. 9.
For essentially the same reasons as discussed above in connection
with claim 9, Appellant does not apprise us of error. We sustain the
Examiner’s rejection of claims 14 and 18 over Banicevic, Saunders, An,
Johnson, and Han.
Claim 8 depends directly from claim 6, claim 13 depends directly
from claim 8, claim 16 depends directly from claim 11, and claim 17
depends directly from claim 16. Appellant does not argue the separate
patentability of claims 8, 13, 16, and 17. Accordingly, we sustain the
Examiner’s rejection of claims 8, 13, 16, and 17 over Banicevic, Saunders,
18
Appeal 2016-000634
Application 11/919,569
An, Johnson, and Han, for the reasons discussed above in connection with
claims 6 and 11.
The Rejection of Claims 7 and 15 as Unpatentable
over Banicevic, Saunders, An, Johnson, and Shin
Claim 7 depends directly from claim 6, and claim 15 depends directly
from claim 11. As neither the Appeal Brief nor the Reply Brief includes any
argument addressed to the rejection of claims 7 and 15, we sustain the
Examiner’s rejection of claims 7 and 15 over Banicevic, Saunders, An,
Johnson, and Shin, for the reasons discussed above in connection with
claims 6 and 11.
DECISION
The Examiner’s rejections of claims 10, 12, 20, and 21 are reversed.
The Examiner’s rejections of claims 6—9, 11, and 13—18 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). See 37 C.F.R.
§ 1.136(a)(l)(iv).
AFFIRMED-IN-PART
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