Ex Parte Querfurth et al

Patent Trial and Appeal Board

Jul 28, 2016

12434121 (P.T.A.B. Jul. 28, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/434, 121 0510112009
173 7590 08/01/2016
WHIRLPOOL CORPORATION - MD 3601
2000 NORTH M63
BENTON HARBOR, MI 49022
FIRST NAMED INVENTOR
KAREN J. QUERFURTH
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
US20080087 1500
EXAMINER
VAZQUEZ, ANA M
ART UNIT PAPER NUMBER
3744
NOTIFICATION DATE DELIVERY MODE
08/01/2016 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):
whirlpool_patents_co@whirlpool.com
mike_lafrenz@whirlpool.com
deborah_tomaszewski@whirlpool.com
PTOL-90A (Rev. 04/07)
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte KAREN J. QUERFUR TH,
AMERESH B. VISWANATHAN,
RONALD L. VOGLEWEDE, and MICHELE E. WILCOX
Appeal2014-004427
Application 12/434,121
Technology Center 3700
Before ANNETTE R. REIMERS, ERIC C. JESCHKE, and
PAUL J. KORNICZKY, Administrative Patent Judges.
KORNICZKY, Administrative Patent Judge.
DECISION ON 1A..PPEii,L
STATEMENT OF CASE
Appellants, Karen J. Querfurth et al., 1 appeal under 35 U.S.C. § 134
from the Examiner's decision rejecting claims 1-5, 7-11, 13-15, and 21-
25.2 We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
Appellants identify the real party in interest as Whirlpool Corp.
Appeal Br. 2.
2 Claims 16-20 are cancelled (Amendment, dated September 22, 2011 ),
and claims 6 and 12 are withdrawn from consideration (Final Act. 1 ).
Appeal2014-004427
Application 12/434,121
THE CLAIMED SUBJECT MATTER
The claims are directed to a personalized dry or bulk dispensing
system. Spec. i-f 1 (Title). Claims 1 and 10 are independent. Appeal Br. 25-
30, Claims App. Claim 1, reproduced below, is illustrative of the claimed
subject matter:
1. An appliance comprising:
a rear wall section, a first side wall section, a second side
wall section, a top, and a bottom and at least one appliance door
with an exterior surface and an interior surface having a door
liner; and defining an interior comprising:
a refrigerator section within the appliance interior where
the interior of the refrigerator section is the same size or smaller
than the interior of the appliance;
a module comprising a module housing comprising a
bottom portion, a top portion and a rear wall portion extending
between the bottom portion and the top portion and wherein the
top portion, the bottom portion and the rear wall of the module
define an interior volume and wherein the rear wall of the module
is configured to be removably engaged with the exterior surface
or the interior surface of the appliance door without the use of
tools, wherein the module further comprises a resealable
comestible dry goods container having a defined interior volume,
an exterior, and a bottom portion wherein the container is
removably engaged with the module and the releasable
comestible dry goods container is positioned within the interior
volume of the housing when the releasable comestible dry goods
container is engaged with the module; and
wherein the module is capable of maintaining a storage
effecting condition within the interior of the container, wherein
the storage effecting condition is chosen from the group
consisting of humidity, temperature, pressure, gas composition,
and combinations thereof; and
wherein the module further comprises a releasable
electrical connector including a protrusion and a recess that
releasably engages the protrusion to provide electrical power to
2
Appeal2014-004427
Application 12/434,121
the module and wherein at least one of the recess and the
protrusion is on the rear wall of the module.
REFERENCES
In rejecting the claims on appeal, the Examiner relied upon the
following prior art:
Giacalone
Kim '587
Cox
Winders
Crisp
Park
Kim '298
Hamel
us 3,178,061
us 5,570,587
us 5,588,558
US 6,694,770 B2
US 6,857,541 Bl
US 2007 /0093102 A 1
US 7 ,404,298 B2
US 7,762,102 B2
REJECTIONS
The Examiner made the following rejections: 3
Apr. 13, 1965
Nov. 5, 1996
Dec. 31, 1996
Feb.24,2004
Feb.22,2005
Apr. 26, 2007
July 29, 2008
July 27, 2010
1. Claims 1--4, 10, 15, 21, and 24 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Giacalone, Hamel, Winders, Kim '298,
and Kim '587.4
2. Claims 5, 7, and 11 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Giacalone, Hamel, Winders, Kim '298, and
Kim '587.
3 In an Advisory Action mailed July 10, 2013, the rejection of claims 1-
5, 7-11, 13-15, and 21-25 under 35 U.S.C. § 112 (pre-AIA), second
paragraph, has been withdrawn in light of the amendments filed and entered
on June 24, 2013. Ans. 15.
4 The Examiner's rejection also relies upon Kim '587. See, e.g., Final
Act. 4--5. In their Appeal Brief and Reply Brief, Appellants also rely on
Kim '587. See, e.g., Appeal Br. 7-10; Reply Br. 6-7.
3
Appeal2014-004427
Application 12/434,121
3. Claims 8 and 13 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Giacalone, Hamel, Winders, Kim '298, and Park.
4. Claims 9 and 14 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Giacalone, Hamel, Winders, Kim '298, Park, and
Cox.
5. Claims 22, 23, and 25 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over Giacalone, Hamel, Winders, Kim '298,
Kim '587, and Crisp.
Appellants seek our review of these rejections.
Claims 1--4
OPINION
REJECTION 1
Appellants argue claims 1--4 as a group. Appeal Br. 5-16. We select
claim 1 as the representative claim, and claims 2--4 stand or fall with claim
1. 37 C.F.R. § 41.37(c)(l)(iv).
The Examiner finds that Giacalone discloses all of the limitations of
claim 1 except for (1) the claimed module, which is taught by Hamel, (2) the
claimed dry goods container, which is taught by Kim '587, (3) the claimed
rear wall of the module, which is capable of removable engagement with the
surface of the appliance door without tools, which is taught by Winders, and
(4) the claimed releasable electrical connector, which is taught by Kim '298.
Final Act. 3-6.
Appellants present numerous arguments in response to the Examiner's
rejections. First, Appellants argue that Giacalone, Hamel, Winders, and
Kim '298 "disclose mounting an item to a refrigerator door. None of the
4
Appeal2014-004427
Application 12/434,121
cited references disclose removably mounting a housing on a refrigerator
door, and removably mounting a container within the housing as recited in
claim 1 of the present application." Appeal Br. 6; see id. at 17 ("none of the
cited references disclose a dry goods container that is removably engaged
within an interior volume of a module, wherein the module is removably
engaged with a refrigerator door").
Appellants' arguments, however, improperly argue the cited
references individually whereas the relevant inquiry is whether the claimed
subject matter would have been obvious to those of ordinary skill in the art
in light of the combined teachings of Giacalone, Hamel, Winders, Kim '587,
and Kim '298. See In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986)
("Non-obviousness cannot be established by attacking references
individually where the rejection is based upon the teachings of a
combination of references.").
Second, with regard to Giacalone and Hamel, Appellants assert that
"[t]he fact that the teachings of the prior art are contrary to one another
suggests that modification would not be obvious." Id. at 6. Appellants
argue that "[i]fthe liquid containers 34 of Giacalone '061 were to be
mounted within the soft freeze assembly 150 of Hamel '102, the liquid
containers 34 of Giacalone '061 would take up space within the soft freeze
assembly 150 and interfere with a user's ability to place food within the soft
freeze assembly 150 of Hamel '102." Id. at 6; see also id. at 7; Reply Br. 3
("Absent knowledge of Applicants claimed invention, there would be no
reason to position the liquid containers 34 of Giacalone '061 in the 'soft
freeze assembly 150' of Hamel '102.").
5
Appeal2014-004427
Application 12/434,121
Appellants' arguments, however, are not responsive to the rejection as
articulated by the Examiner. According to the Examiner,
it is a known technique to provide a compartment in a refrigerator
to store and condition dry goods (see US 5570587 to Kim as
evidence). Therefore it would have been obvious to one skilled
in the art at the time of invention to further modify the containers
of Giacalone to be a comestible dry goods container since the
technique was recognized as part of the ordinary capabilities of
one skilled in the art as evidenced by Kim and such a
modification would have yielded predictable results.
Final Act. 4; see also Ans. 17. Appellants have not shown why modifying
the Giacalone container to be a dry goods container was not part of the
ordinary capabilities of one skilled in the art or would have yielded
unpredictable results. In addition, most foods and liquids placed in
refrigerators and the Hamel module are stored in a container so Appellants'
argument that the Giacalone container would not fit in the Hamel module is
unpersuasive.
Third, Appellants argue that (1) "the liquid in containers 34 of
Giacalone '061 would freeze if placed in the 'soft freeze assembly 150' of
Hamel '102" (Appeal Br. 7), (2) "[ fJreezing the liquid in the containers 34 of
Giacalone '061 would render the liquid containers 34 of Giacalone '061
unsuitable for their intended purpose" (id. at 9-10), and (3) the Examiner's
"stated reason for modification [of Giacalone and Hamel] is speculative and
contrary to the actual disclosure of the cited references" (id. at 10). See also
id. at 14 ("Modifying the liquid containers 34 of Giacalone '061 to position
the fluid containers in a soft freeze assembly 150 of Hamel '102 would
cause the liquid to freeze. This is not flexibility."); id. at 17 ("If the liquid
containers 34 of Giacalone '061 were positioned in the freezing
compartment 150 of Hamel '102, the liquid in the liquid containers 34 would
6
Appeal2014-004427
Application 12/434,121
freeze, rendering the liquid containers 34 unsuitable for their intended
purpose."); Reply Br. 3 ("Positioning the liquid containers 34 of Giacalone
'061 in a freezer would cause the liquid in the containers 34 to freeze,
thereby rendering the liquid containers 34 of Giacalone '061 unsuited for
their intended use.").
Appellants' arguments, however, are not responsive to the rejection as
articulated by the Examiner. As discussed above, the Examiner finds the
Giacalone container would be modified to store dry goods, not a liquid.
Final Act. 3--4. Also, the Examiner explains:
Hamel further teaches that this module arrangement allows food
items contained within the module to be maintained at a desired
temperature different than the temperature of the refrigerator
storage compartment in order to preserve freshness of the food
items (see Col. 1, lines 20-27).
Therefore, it would have been obvious to a person skilled
in the art at the time of invention to modify the system of
Giacalone to include a module containing the releasable goods
containers in order to maintain the goods at a desired temperature
different than the temperature of the refrigerator storage
compartment in order to preserve freshness of the food items for
a more flexible appliance in view of the teaching by Hamel.
Final Act. 4; see also Ans. 16-17. We agree with the Examiner that a
"person skilled in the art at the time of invention would recognize that the
technique of maintaining the module at a temperature different than the
temperature of the refrigerator storage compartment provides at least thermal
flexibility," and "Hamel teaches that the temperature of the compartment
may be adjusted by a consumer" to avoid freezing, if necessary. Ans. 17.
We also agree with the Examiner's finding that the modified "containers of
Giacalone would contain dry comestible goods as claimed rather than liquids
as argued by Appellant[ s]." Ans. 17.
7
Appeal2014-004427
Application 12/434,121
Appellants' suggestion that "[ c ]learly, the soft freeze assembly 150 of
Hamel '102 is configured to freeze foods to 'prevent ice crystal growth,
which may damage the freshness of food items"' is misleading and
incomplete. Appeal Br. 9 (citing Hamel 1 :20-24 ). The full Hamel quote is
[I]t may be desirable to rapidly cool and/or store certain food
items at a temperature different than the temperature within the
freezer storage compartment to prevent ice crystal growth, which
may damage the freshness of the food items. Further, it may be
desirable to maintain certain food items, such as meat products
or dairy products, at a soft freeze state (i.e., not completely
frozen) for facilitating cutting or serving the food items.
Hamel 1 :20-27 (emphasis added). Appellants' arguments do not show any
error by the Examiner and are not persuasive.
Fourth, with regard to Giacalone, Hamel, and Kim '587, Appellants
argue that (1) "the cereals storage room 200 of Kim '587 has almost nothing
in common with the liquid containers 34 of Giacalone '061" (Appeal Br. 8),
and (2) "substantial reconstruction of Giacalone '061 and/or Kim '587
would be required to arrive at the arrangement of claim 1" (id. at 9). See
also id. at 17 ("To the extent it might be possible to modify the liquid
containers 34 of Giacalone '061 to incorporate the cereals storage room 200
and related components of Kim '587, this modification would render the
liquid containers 34 of Giacalone '061 unsuited for dispensing liquid as
actually taught by Giacalone '061."); Reply Br. 4 ("Attempting to position
the liquid containers 34 of Giacalone '061 in the 'soft freeze assembly 150'
of Hamel' 102 would require removal and/or modification of the support
tray 156 and rack 158, ... ");Reply Br. 6 ("If a separate cereals storage room
200 [in Kim '587] were to be added, the cereals storage room 200 could be
8
Appeal2014-004427
Application 12/434,121
used in its intended way, and the liquid containers 34 of Giacalone '061
could also be utilized in their intended way.").
However, "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."
In re Keller, 642 F.2d 413, 425 (CCPA 1981); see also In re Sneed, 710 F.2d
1544, 1550 (Fed. Cir. 1983) ("[I]t is not necessary that the inventions of the
references be physically combinable to render obvious the invention under
review"); KSR Int 'l Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007) ("[I]f a
technique has been used to improve one device, and a person of ordinary
skill in the art would recognize that it would improve similar devices in the
same way, using the technique is obvious unless its actual application is
beyond his or her skill."). As discussed above, the Examiner's articulated
reasons (e.g., it would have been obvious to modify the Giacalone container
to be a dry goods container "since the technique was recognized as part of
the ordinary capabilities of one skilled in the art as evidenced by Kim and
such a modification would have yielded predictable results") have rational
underpinnings, which Appellants have not shown contain any error. Final
Act. 3--4.
Fifth, Appellants argue that "even if the liquid containers 34 of
Giacalone '061 were somehow modified to include the horizontal moving
plate 212, rice outlet 207, and container 209 of cereals storage room 200 of
Kim '587, the references themselves do not provide any motivation or
reason for such modification." Appeal Br. 10. Appellants' arguments,
however, are not responsive to the rejection as articulated by the Examiner.
9
Appeal2014-004427
Application 12/434,121
See Jn re Merck, 800 F .2d at 1097. The Examiner does not rely on plate
212, rice outlet 207, container 209, or room 200 in Kim '587. See, e.g., Ans.
18 ("A motivation to modify was clearly set forth in the rejection, and did
not mention or suggest bodily incorporation of elements of the Kim
reference into the system of Giacalone ... "). Also, an express teaching or
motivation in the references is not required; instead, the Examiner need only
articulate a reason to combine the references with some rational
underpinning to support the legal conclusion of obviousness. KSR Int 'l, 550
U.S. at 418. Here, the Examiner's articulated reasoning contains rational
underpinnings, and Appellants do not show why or how the Examiner erred.
Sixth, with regard to Giacalone, Hamel and Winders, Appellants
argue that"[ e ]ven if Giacalone '061, Hamel '102 and Winders '770 were to
be combined, it would not result in the arrangement of claim 1" (Appeal Br.
10), which recites that "the rear wall of the module is configured to be
removably engaged with the exterior surface or the interior surface of the
appliance door without the use of tools" and "wherein the container is
removably engaged with the module." Id. at 25, Claims App. According to
Appellants, Winders discloses brackets mounted on a side wall, not a rear
wall (id. at 10-11 ), and "the cited references themselves do not provide any
reason to modify the soft freeze assembly 150 of Hamel '102 to be
removable" (id. at 11 ). See also id. at 17 ("none of the cited references
provide a reason to modify the soft freeze assembly 150 of Hamel '102 to be
removable."); Reply Br. 5 ("Applicant respectfully asserts that there is no
apparent reason, absent knowledge of Applicants claimed invention, to
removably mount the liquid containers 34 of Giacalone '061 in the soft
freeze assembly 150 of Hamel '102.").
10
Appeal2014-004427
Application 12/434,121
Appellants' arguments do not address the rejection as articulated by
the Examiner. As discussed above, an express teaching or motivation in the
references is not required; instead, the Examiner need only articulate a
reason to combine the references with some rational underpinning to support
the legal conclusion of obviousness. KSR Int 'l Co., 550 U.S. at 418. Here,
the Examiner explains:
Winders teaches [a] refrigerator having a module (compartment
16) mounted to an interior surface of a refrigerator door (see Fig.
1 ).
Winders further teaches that the compartment includes
brackets (26) that correspond with receiving brackets in the
refrigerator door to quickly and easily secure the chiller
compartment (see Col. 3, lines 25-31 ).
Therefore, it would have been obvious to a person skilled
in the art at the time of invention to further modify the system of
Giacalone to include the rear wall of the module capable of being
engaged with the interior surface of the appliance door without
the use of tools in order to provide quick and easy mounting
means in view of the teaching of Winders.
Final Act. 4--5. The Examiner also finds that
the teachings of Hamel were relied upon for making obvious the
module which would include the 'rear wall' of the module. The
teachings of Winders was relied upon for teaching that it would
have been obvious to have the rear wall capable of being
removably engaged with the exterior surface or the interior
surface of the appliance door as claimed.
Ans. 19. Giacalone also provides further support for teaching that the rear
wall may be removably engaged with a refrigerator wall. See, e.g.,
Giacalone, Fig. 2-3, 1:39--42. Appellants' arguments do not show that the
Examiner's articulated reasoning lacks rational underpinning, and are not
persuasive.
11
Appeal2014-004427
Application 12/434,121
Seventh, Appellants argue that "[i]f the soft freeze assembly 150 of
Hamel '102 (including heater 164 and controller 130) as actually taught by
Hamel '102 were to be removably positioned in a refrigerator compartment
as taught by Winders '770, this would result in heating the air in chiller
compartment 16 of Winders '770." Appeal Br. 11; see also id. at 17 ("The
heater 164 of Hamel '102 would not function if it were to be disconnected
from a power supply."); Reply Br. 5 ("Applicant respectfully asserts that the
prior art itself does not teach positioning the soft freeze assembly 150 with
heater 164 in a refrigerator compartment 12 that is already above freezing.").
Appellants' arguments, however, are not responsive to the rejection as
articulated by the Examiner. See also In re Sneed, 710 F.2d at 1550 ("[I]t is
not necessary that the inventions of the references be physically combinable
to render obvious the invention under review."). The Examiner does not
rely on the Hamel heater 164 and controller 130. Rather, the Examiner finds
that Hamel discloses a "module to be maintained at a desired temperature
different than the temperature of the refrigerator storage compartment in
order to preserve freshness of the food items" and
it would have been obvious to a person skilled in the art at the
time of invention to modify the system of Giacalone to include a
module containing the releasable goods containers in order to
maintain the goods at a desired temperature different than the
temperature of the refrigerator storage compartment.
Final Act. 4; see also Ans. 20. The Examiner also explains:
the modification would allow the module to receive power from
another source separate from the refrigerator. Hamel teaches a
controller (130) in communication with a thermistor 166 or any
suitable temperature sensor or detector for detecting a
temperature within the storage compartment (see at least Col. 4,
lines 44-50). A person skilled in the art at the time of the
invention would recognize that cold air that was already
12
Appeal2014-004427
Application 12/434,121
conditioned within the module would keep the containers near a
desired temperature for a given period of time (i.e. convective
heat transfer). In other words, the external power supply would
allow the module to at least continue to monitor the temperature
of the compartment so that a user could decide when the
comestible goods containers need to be transferred from module
to be cooled by another source.
Ans. 20. Appellants' arguments do not show error or lack of rational
underpinning in the Examiner's reasoning, and are unpersuasive.
Seventh, Appellants argue that "it is not proper to simply pick and
choose certain aspects of Giacalone '061, Winders '770, and Hamel '102 to
arrive at precisely the arrangement of claim 1, as this would require
extensive modification and it further requires ignoring numerous significant
differences between these cited references." Appeal Br. 12. Appellants'
arguments, however, are not responsive to the rejection as articulated by the
Examiner, see In re Merck, 800 F.2d at 1097, and "it is not necessary that
the inventions of the references be physically combinable to render obvious
the invention under review." In re Sneed, 710 F.2d at 1550. As discussed
above, an express teaching or motivation in the references is not required;
instead, the Examiner need only articulate a reason to combine the
references with some rational underpinning to support the legal conclusion
of obviousness. KSR Int'!, 550 U.S. at 418. Here, Appellants' arguments do
not show error in the Examiner's findings or that the Examiner's articulated
reasoning lacks rational underpinnings.
Eighth, Appellants argue that Giacalone, Hamel, Winders, and Kim
'298 do not teach the arrangement of claim 1, which recites "a releasable
electrical connector including a protrusion and a recess that releasably
engages the protrusion to provide electrical power to the module and
13
Appeal2014-004427
Application 12/434,121
wherein at least one of the recess and the protrusion is on the rear wall of the
module." Appeal Br. 12-13. Appellants assert that "Kim '298 actually
teaches a display mount for a terminal 70 that has nothing to do with the soft
freeze assembly 150 of Hamel '102" (id. at 13), that "Kim '298 discloses 'a
display screen 71 which is a front face of the terminal 70"' (id. at 14), and
that "[s]ubstantial modification of the case 60 of Kim '298 would be
required to enable the case 60 to properly accept the soft freeze assembly
150 of Hamel '102, and the cited references themselves do not teach such
modification" (id. at 15). See also id. at 17-18 ("even if an auxiliary power
supply of some sort were to be connected to the heater 164 of Hamel '102,
the soft freeze assembly 150 could not function to freeze food utilizing the
heater 164, such that the soft freeze assembly 150 would no longer function
for its intended purpose"); id. at 18 ("Modification of the case 60 of Kim
'298 to accommodate the soft freeze compartment 150 of Hamel '102 would
require substantial modifications that are not taught by the references
themselves. To the extent that Kim '298 is being cited only for the contact
terminals 58 and 72, ... "); Reply Br. 8 ("Applicant respectfully asserts that
the proposed modifications are based on hindsight and constitute improper
picking and choosing."). Appellants also argue that they do not know "what
is meant by 'continue to condition', or 'temporarily house temperature
sensitive items such as medicine" (Appeal Br. 13), or "a more flexible
refrigerator system" (id. at 14).
As discussed above, Appellants' arguments are not responsive to the
rejection as articulated by the Examiner, and "it is not necessary that the
inventions of the references be physically combinable to render obvious the
14
Appeal2014-004427
Application 12/434,121
invention under review." Jn re Sneed, 710 F.2d at 1550. We agree with the
Examiner's findings:
In regard to a releasable electrical connector, Kim teaches
a refrigerator having a removable module mounted in the door
(see Figs. 1 and 2) having a power engagement system that
provides external power to the module and include a protrusion
(second contact terminal 58; see Fig. 3 and Col. 6, lines 6-13)
and a recess (first contact terminal 72) that releasably and
matingly engages the protrusion (see at least Fig. 3) capable of
providing electrical power to the module. A person skilled in the
art would recognize that the power arrangement taught by Kim
provides for a more flexible system by providing power to the
power consuming module separate from the refrigerator. For
example if the refrigerator malfunctions or requires maintenance,
the cooling module would be able to continue to condition due to
the external power source. In tum, a user would have space to
temporarily house temperature sensitive items such as medicine
in the event of an unexpected shut down of the refrigerator.
Final Act. 5---6. As discussed above, an express teaching or motivation in the
references is not required; instead, the Examiner need only articulate a
reason to combine the references with some rational underpinning to support
the legal conclusion of obviousness. KSR Int 'l, 550 U.S. at 418. Here,
Appellants' arguments do not show error in the Examiner's findings or that
the Examiner's articulated reasoning lacks rational underpinning. We
further are not persuaded that the Examiner applied impermissible hindsight
in combining the references. As discussed above, the Examiner cites
explicit teachings in the references, not Appellants' disclosure, in
articulating reasons for combining the references as proposed in the
rejection. See Final Act. 3---6.
For the reasons above, we sustain the Examiner's rejection of claim 1
under 35 U.S.C. § 103(a). Because Appellants do not allege any other
15
Appeal2014-004427
Application 12/434,121
patentable distinctions for claims 2--4, we likewise sustain the Examiner's
rejections of these claims under 35 U.S.C. § 103(a).
Claims 10, 15, 21, and 24
Appellants argue claims 10, 15, 21, and 24 as a group. Appeal Br.
17-18. We select claim 10 as the representative claim, and claims 15, 21,
and 24 stand or fall with claim 10. 37 C.F.R. § 41.37(c)(l)(iv).
In response to the rejection of claim 10, Appellants advance the same
arguments for Giacalone, Hamel, Winders, Kim '298, and Kim '587 as those
advanced above for claim 1. Appeal Br. 17-18. For the same reasons
discussed above, Appellants' arguments are not persuasive. We sustain the
Examiner's rejection of claim 10 under 35 U.S.C. § 103(a). Because
Appellants do not allege any other patentable distinctions for claims 15, 21,
and 24, we likewise sustain the Examiner's rejections of these claims under
35 U.S.C. § 103(a).
REJECTION2
Claims 5 and 7
Appellants argue claims 5 and 7 as a group. Appeal Br. 18-19. We
select claim 5 as the representative claim, and claim 7 stands or falls with
claim 5. 37 C.F.R. § 41.37( c )(1 )(iv).
In response to the rejection of claim 5, Appellants advance the same
arguments for Giacalone, Hamel, Winders, Kim '298, and Kim '587 as those
advanced above for claim 1. Appeal Br. 18-19. For the same reasons
discussed above with respect to claim 1, Appellants' arguments regarding
claim 5 are not persuasive.
16
Appeal2014-004427
Application 12/434,121
Citing to an incomplete portion of the Examiner's findings,
Appellants also argue that the Examiner does not present an objective reason
to combine the teachings of the references. Id.
The Examiner's complete findings state:
Giacalone teaches the invention as modified above but
fails to explicitly teach the metering and dispensing mechanism
as claimed.
However, Kim teaches a refrigerator having a metering
and dispensing mechanism ... A person skilled in the art would
recognize that the technique taught by Kim may provide
improved control and accuracy in dispensing of dry goods
compared to the technique of Giacalone.
Therefore, it would have been obvious and within the skill
level of one in the art at the time of invention to further modify
the metering and dispensing mechanism of Giacalone as claimed
since the technique for improving a particular class of devices
was part of the ordinary capabilities of a person of ordinary skill
in the art in view of the teaching of the technique for
improvement in other situations as taught by Kim.
Final Act. 8-9. Appellants do not address or show any error in the
Examiner's findings, including that a "person skilled in the art would
recognize that the technique taught by Kim may provide improved control
and accuracy in dispensing of dry goods compared to the technique of
Giacalone." Id. at 9. Appellants' arguments are not persuasive.
We sustain the Examiner's rejection of claim 5 under 35 U.S.C.
§ 103(a). Because Appellants do not allege any other patentable distinctions
for claim 7, we likewise sustain the Examiner's rejection of claim 7 under 35
U.S.C. § 103(a).
17
Appeal2014-004427
Application 12/434,121
Claim 11
In response to the rejection of claim 11, Appellants state that " [ c] laim
11 depends from independent claim 10, and is therefore believed to be
allowable for those reasons set forth above in connection with independent
claim 10." Appeal Br. 19. For the same reasons discussed above with
respect to claim 10, Appellants' arguments regarding claim 11 are not
persuasive.
Appellants also argue that
Giacalone '061 does not state or recognize any problems
associated with controlling humidity in containers that are
designed to dispense and store liquids ....
Modifying Giacalone '061 to dispense rice and cereal,
followed by additional modification to include a humidity
controller is contrary to the actual teachings of Giacalone '061,
and such modifications would render Giacalone '061 unsuited
for its intended use, namely, dispensing liquids.
Id. at 19-20.
Appellants' arguments, however, are not responsive to the rejection as
articulated by the Examiner. In re Merck & Co., 800 F.2d at 1097. The
Examiner finds that Kim '587, not Giacalone, discloses the modification of
the Giacalone container to be a comestible dry goods container. Final Act.
4. The Examiner also finds that Kim '587, not Giacalone, discloses the
recited humidity controller. Final Act. 11 (citing Kim '587 at 4:41--46). The
Examiner explains:
Regarding the humidity controller, a person of ordinary
skill in the art would recognize that desiccants, salts, and heaters
are well known in the art for controlling moisture (see
US7797963 as evidence). Additionally, it would have been an
obvious matter of design choice to further modify the system of
Giacalone to have the humidity controller as a desiccant, a salt,
18
Appeal2014-004427
Application 12/434,121
Id.
or a heater since Applicant has not disclosed that having one of
these specific elements as a humidity controller solves any stated
problem or is for any particular purpose and it appears that the
humidity controller would perform equally well having other
arrangements.
Appellants have not shown that the Examiner's articulated reasoning lacks
rational underpinning. Appellants' arguments are not persuasive.
We sustain the Examiner's rejection of claim 11under35 U.S.C.
§ 103(a).
REJECTION3
Claims 8 and 13
Appellants state that "[ c ]laim 8 depends from claim 1, and is therefore
believed to be allowable for those reasons set forth above in connection with
independent claim 1" and " [ c] laim 13 depends from claim 10, and is
therefore believed to be allowable for those reasons set forth above in
connection with independent claim 10." Appeal Br. 20. For the same
reasons discussed above with respect to claims 1 and 10, Appellants'
arguments regarding claims 8 and 13 are not persuasive.
We sustain the Examiner's rejection of claims 8 and 13 under 35
U.S.C. § 103(a).
REJECTION4
Claims 9 and 14
Appellants state that "[ c ]laim 9 depends from claim 1, and is therefore
believed to be allowable for those reasons set forth above in connection with
independent claim 1" and "[ c ]laim 14 depends from claim 10, and is
19
Appeal2014-004427
Application 12/434,121
therefore believed to be allowable for those reasons set forth above in
connection with independent claim 10." Appeal Br. 21. For the same
reasons discussed above with respect to claims 1 and 10, Appellants'
arguments regarding claims 9 and 14 are not persuasive.
We sustain the Examiner's rejection of claims 9 and 14 under 35
U.S.C. § 103(a).
REJECTIONS
Claims 22, 23, and 25
Appellants state that claims 22 and 23 "depend from claim 1, and are
therefore believed to be allowable for those reasons set forth above in
connection with independent claim 1" and claim 25 is "allowable for those
reasons set forth above in connection with independent claim 10." Id. at 21.
For the same reasons discussed above with respect to claims 1 and 10,
Appellants' arguments are not persuasive.
Appellants argue claims as 22, 23, and 25 as a group. Id. at 21-23.
We select claim 22 as the representative claim, and claims 23 and 25 stand
or fall with claim 22. 37 C.F.R. § 41.37(c)(l)(iv).
Claim 22 recites the "handle is outside of the interior volume of the
module housing." Appeal Br. 29, Claims App. Appellants also argue that
"the electric push button 3 6 of Crisp '541 could not operate the mechanical
rotating lever 215 and moving screw 214 of Kim '587'' (id. at 22), and the
"push button 36 of Crisp '541 is clearly not a functional equivalent or
mechanical equivalent of the rotating screw 215 of Kim '587'' (id. at 23).
Appellants' arguments, however, are not responsive to the rejection as
articulated by the Examiner. In re Merck & Co., 800 F.2d at 1097. The
20
Appeal2014-004427
Application 12/434,121
Examiner finds that Giacalone as modified by Kim '587 "fails to explicitly
teach that the handle is outside of the interior volume of the module
housing." Final Act. 14. The Examiner explains:
However, Crisp teaches the technique of providing a
dispenser in a refrigerator door having a dispensing button (36)
outside of the interior volume of the housing for canisters (24)
wherein goods are capable of being dispensed through a bottom
portion of the housing (see Figs. 5 and 7). A person skilled in the
art would recognize that the button (3 6) corresponds with the
handle as claimed since they initiate or help carry out dispensing
by the system.
Therefore, it would have been obvious to a person skilled
in the art at the time of invention to modify the system of
Giacalone as claimed since the technique was part of the ordinary
capabilities of one skilled in the art as evidenced by Crisp and
such a modification would have yielded predictable results.
Id. The Examiner further explains:
As noted on page 23 of the brief Appellant[ s] assert[] "The
switch 36 generates an electrical signal. .. for dispensing liquid in
Crisp '541, whereas the rotating lever 215 of Kim '587 provides
for manual rotation .... to dispense rice or cereal" In other words,
by Appellant[s'] own admission both the push button 36 of Crisp
and the lever 215 of Kim '587 initiate or help carry out
dispensing. Therefore, one skilled in the art at the time of
invention would recognize that the button (36) "corresponds" or
is equivalent to the handle as claimed as discussed in the final
rejection on page 14.
Ans. 21-22.
Appellants' arguments do not identify any error in the Examiner's
findings that further modifying the lever of Giacalone as modified by Kim
'587 so that it is outside the interior volume of the module, in light of the
teachings of Crisp, was not part of the ordinary capabilities of one skilled in
21
Appeal2014-004427
Application 12/434,121
the art or demonstrate that such a modification would have yielded
unpredictable results. Appellants' arguments are not persuasive.
We sustain the Examiner's rejection of claims 22, 23, and 25 under 35
U.S.C. § 103(a).
DECISION
For the above reasons, the Examiner's rejection of claims 1--4, 10, 15,
21, and 24 under 35 U.S.C. § 103(a) as being unpatentable over Giacalone,
Hamel, Winders, Kim '587, and Kim '298 is AFFIRMED.
The Examiner's rejection of claims 5, 7, and 11 under 35 U.S.C.
§ 103(a) as being unpatentable over Giacalone, Hamel, Winders, Kim '298,
and Kim '587 is AFFIRMED.
The Examiner's rejection of claims 8 and 13 under 35 U.S.C. § 103(a)
as being unpatentable over Giacalone, Hamel, Winders, Kim '298, and Park
is AFFIRMED.
The Examiner's rejection of claims 9 and 14 under 35 U.S.C. § 103(a)
as being unpatentable over Giacalone, Hamel, Winders, Kim '298, Park, and
Cox is AFFIRMED.
The Examiner's rejection of claims 22, 23, and 25 under 35 U.S.C.
§ 103(a) as being unpatentable over Giacalone, Hamel, Winders, Kim '298,
Kim '587, and Crisp 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)(l )(iv).
AFFIRMED
22