Ex Parte Roche et al

Patent Trial and Appeal BoardNov 14, 2012

10827598 (P.T.A.B. Nov. 14, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte JOHN M. ROCHE, SESHA C. MADIREDDI, EDWARD A. BERNHEIM, and BENJAMIN W. RAGLIN ____________ Appeal 2010-010852 Application 10/827,598 Technology Center 3600 ____________ Before LINDA E. HORNER, PATRICK R. SCANLON, and TIMOTHY J. O’HEARN, Administrative Patent Judges. O’HEARN, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE This is an appeal under 35 U.S.C. § 134 involving merchandiser displays having anti-fog coatings. The Examiner has rejected claims 1-89. We have jurisdiction under 35 U.S.C. § 6(b). We reverse. THE INVENTION Appellants’ claimed invention relates to coatings that are applied to retail merchandising displays of frozen and refrigerated items to reduce Appeal 2010-010852 Application 10/827,598 2 fogging of the displays. Claims 1 and 43 are the only independent claims and are reproduced below. 1. A refrigerator door comprising: a substantially transparent substrate having an anti-fog coating on at least a portion thereof, the portion of the substrate substantially not fogging when the portion has an initial surface temperature and is then exposed to a moist air ambient with a dewpoint temperature equal to or greater than the surface temperature for a period of time, wherein the surface temperature is less than about 0° C. and the period of time is greater than about 6 seconds. 43. A refrigerator door comprising a substantially transparent substrate having an anti-fog coating on at least a portion thereof, the coating comprising a polyurethane and having a surface tension of less than about 60 dynes/cm. THE REJECTIONS Claims 1-4, 6, 8-10, 13-15, 18-20, and 23-25 stand rejected under 35 U.S.C. § 102(b) as being anticipated by Sodervall (US 5,329,736, iss. Jul. 19, 1994). Claims 5, 7, 11-12, 16-17, 21-22, and 26-89 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Sodervall. ISSUES For claims 1-4, 6, 8-10, 13-15, 18-20, and 23-25, Appellants argue that the Examiner failed to establish a prima facie case of anticipation because the coating taught in Sodervall is not an "anti-fog coating" as the claims require. App. Br. 12-15. For claims 5, 7, 11-12, 16-17, 21-22, and 26-89, Appellants argue that the Examiner failed to establish a prima facie Appeal 2010-010852 Application 10/827,598 3 case of obviousness based on Sodervall. App. Br. 15-21. The issues presented by the present appeal are: Does Sodervall disclose an “anti-fog coating” as called for in independent claim 1? Did the Examiner articulate adequate reasoning based on rational underpinnings to explain why one of ordinary skill would have been led to modify Sodervall to arrive at the claimed invention? ANALYSIS Rejection of claims 1-4, 6, 8-10, 13-15, 18-20, and 23-25 The Examiner found that Sodervall discloses a refrigerator door with an anti-fog coating on a surface of the door to deal with condensation that forms when the door is opened and warmer moist air comes in contact with the cold inner surface. Ans. 3. Based on this disclosure, the Examiner concluded that claim 1 is anticipated. Id Appellants point out that the coating in Sodervall is an infrared reflective coating which causes the mist that forms on the inner door surface to disappear quickly from the moment of closing the door, whereas the coating disclosed and claimed by Appellants prevents fog formation in the first place. App. Br. 12-13; Reply Br. 13-14. Appellants argue that claim 1 is not anticipated because of this fundamental difference between the claimed “anti-fog coating” and the coating taught in Sodervall. Id. Appeal 2010-010852 Application 10/827,598 4 The Examiner determined that Sodervall’s coating layer 25 is the claimed “anti-fog coating.” Sodervall describes this layer as “an infrared radiation reflective coating or layer 25 which constitutes the actual surface facing the colder space. Such an infrared reflective coating has a relatively low emissivity factor ….” Sodervall, col. 4, ll. 55-58. The effect of this coating, according to Sodervall, is to maintain a higher temperature such that “mist” that forms when the refrigerator door is opened will rapidly disappear after the door is closed. Sodervall, col. 4, l. 63 – col. 5, l. 2. Appellants’ Specification draws a distinction between an “anti-fog” coating and a low emissivity coating. For example, the Specification states that “[t]he anti-fog coatings work particularly well, however, when used in conjunction with [transparent panels] at least partially made from or comprising low-E glass or coated with a low-E coating.” Spec. 11, ll. 18-20. The coatings of the invention cause condensation to “sheet out,” as opposed to beading up, and thus present “a transparent see-through phenomenon as distinguished from a vision obscuring fog, and rapidly clears.” Spec. 12, ll. 25-29. Appellants emphasize that their claimed coating is limited to a coating which inhibits or prevents the formation of vision obscuring fog, as distinct from the low emissivity coating of Sodervall, which does not prevent the formation of vision obscuring fog. Reply Br. 14. Given the foregoing explicit statements in the Specification, which treat low emissivity coatings and anti-fog coatings as two different coating types, a proper construction of the claim term “anti-fog coating” would not Appeal 2010-010852 Application 10/827,598 5 encompass the low emissivity coating layer 25 of Sodervall because the coating layer 25 is not disclosed as presenting a transparent see-through phenomenon. See Phillips v. AWH Corp., 415 F.3d 1303, 1316 (Fed. Cir. 2005) (“[T]he specification may reveal an intentional disclaimer, or disavowal, of claim scope by the inventor. In that instance as well, the inventor has dictated the correct claim scope, and the inventor’s intention, as expressed in the specification, is regarded as dispositive.”) In light of this claim construction, Sodervall’s disclosure differs from the Appellants’ claims. [U]nless a reference discloses within the four corners of the document not only all of the limitations claimed but also all of the limitations arranged or combined in the same way as recited in the claim, it cannot be said to prove prior invention of the thing claimed and, thus, cannot anticipate under 35 U.S.C. § 102. Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1371 (Fed. Cir. 2008). We do not find on this record a basis for rejecting independent claim 1, or its dependent claims 2-4, 6, 8-10, 13-15, 18-20, and 23-25 as being anticipated by Sodervall. Rejection of claims 5, 7, 11-12, 16-17, 21-22, and 26-89 The Examiner also concluded that the remaining claims would have been obvious because the additional features recited in those claims were a mere design choice. Ans. 3-6. The Examiner applied this design choice reasoning to independent claim 43 and its dependent claims, each of which Appeal 2010-010852 Application 10/827,598 6 specifies that the coating layer is made of “polyurethane.” Id. Appellants argue that the obviousness rejections are improper because the Examiner has provided no explanation why a worker of ordinary skill in the art would alter the Sodervall display to incorporate a coating like that taught and claimed by Appellants. App. Br. 15-19. Appellants also emphasize that Sodervall nowhere mentions “polyurethane.” App. Br. 19-21. A rejection based on obviousness must provide 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, 417 (2007). We do not find on this record an affirmable basis for the obviousness rejection. The Examiner asserts that features not found in Sodervall but specified in the above claims are a mere “design choice” even though Sodervall does not teach an “anti-fog coating” and does not mention polyurethane as a candidate material for such a coating. Accordingly, we do not find that a prima facie case of obviousness has been presented. CONCLUSIONS Because Sodervall does not disclose an “anti-fog coating” as recited in claim 1, the anticipation rejection cannot be sustained. Also, the Examiner did not articulate an adequate reasoning based on rational underpinnings to explain why one of ordinary skill would have been led to modify Sodervall to arrive at the claimed invention. Appeal 2010-010852 Application 10/827,598 7 DECISION The Examiner’s rejection of claims 1-4, 6, 8-10, 13-15, 18-20, and 23- 25 under 35 U.S.C. § 102(b) is reversed. The Examiner’s rejection of claims 5, 7, 11-12, 16-17, 21-22, and 26-89 under 35 U.S.C. § 103(a) is reversed. REVERSED hh