WHIRLPOOL CORPORATION

Patent Trials and Appeals Board

Feb 6, 2020

14675798 - (D) (P.T.A.B. Feb. 6, 2020)

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.
14/675,798 04/01/2015 RAMEET SINGH GREWAL SUB-US20090583-
US-CNT
7169
27238 7590 02/06/2020
WHIRLPOOL CORPORATION - MD 3601
2000 North M63
Benton Harbor, MI 49022
EXAMINER
DIAZ, MIGUEL ANGEL
ART UNIT PAPER NUMBER
3763
NOTIFICATION DATE DELIVERY MODE
02/06/2020 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):
MAIL@DWPATENTLAW.COM
PatentDocketing@whirlpool.com
deborah_tomaszewski@whirlpool.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte RAMEET SINGH GREWAL, ANDERSON BORTOLETTO,
and GUOLIAN WU
____________

Appeal 2019-004070
Application 14/675,798
Technology Center 3700
____________

Before MICHAEL J. FITZPATRICK, WILLIAM A. CAPP, and
RICHARD H. MARSCHALL, Administrative Patent Judges.

CAPP, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant1 seeks our review under 35 U.S.C. § 134(a) of the final
rejection of claims 1–15 and 17–20. We have jurisdiction under 35 U.S.C.
§ 6(b).
We REVERSE.

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42(a). Appellant identifies Whirlpool Corporation as the
Applicant and real party in interest. Appeal Br. 5.
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THE INVENTION
Appellant’s invention relates to a refrigerator. Spec. ¶ 2. Claim 1,
reproduced below, is illustrative of the subject matter on appeal.
1. A method for actuating a humidifier to provide
humidification to an interior of a refrigeration compartment,
said method including:
establishing a desired humidity level for the interior of the
refrigeration compartment;
measuring a temperature in the interior of said refrigeration
compartment;
determining at least one of:
a) a length of time since the last defrost operation in
said refrigeration compartment;
b) a length of time since a door to said refrigeration
compartment was last opened; and
c) a compressor time by performing at least one of:
determining a length of time a compressor has been
operating, wherein said compressor operates to provide
refrigeration for the interior of said refrigeration
compartment; and
determining a length of time since said compressor
ended operation;
calculating an estimated humidity level for the interior of
said refrigeration compartment based, at least in part, on said
temperature in the interior of said refrigeration compartment
and at least one of said length of time since the last defrost
operation, the length of time since the door to said refrigeration
compartment was last opened and said compressor time; and
actuating said humidifier when said estimated humidity
level is less than said predetermined desired humidity level.

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THE REJECTIONS
The Examiner relies upon the following as evidence in support of the
rejections:
NAME REFERENCE DATE
Dodge US 3,474,638 Oct. 28, 1969
Sweetman US 4,395,887 Aug. 2, 1983
Fortmann US 5,025,132 June 18, 1991
Hwang US 5,974,815 Nov. 2, 1999
The following rejections are before us for review:
1. Claims 1–15 and 17–20 are rejected under 35 U.S.C. § 112(b) as
indefinite for failing to particularly point out and distinctly claim the subject
matter which the inventor or a joint inventor regards as the invention.
2. Claims 1–15 and 17–20 are rejected under 35 U.S.C. § 112(a) for
failure to comply with the enablement requirement.
3. Claims 1–3, 5–7, 15, and 18 are rejected under 35 U.S.C. § 103 as
being unpatentable over Hwang and Fortmann.
4. Claims 4, 8, and 19 are rejected under 35 U.S.C. § 103 as being
unpatentable over Hwang, Fortmann, and Sweetman.
5. Claims 9, 17, and 20 are rejected under 35 U.S.C. § 103 as being
unpatentable over Hwang, Fortmann, and Dodge.
6. Claims 10–14 are rejected under 35 U.S.C. § 103 as being
unpatentable over Hwang, Fortmann, Sweetman, and Dodge.
OPINION
Indefiniteness
The Examiner expresses concern that it is not clear as to how exactly
the calculation or estimation of the humidity is performed. Final Action 9.
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In particular, the Examiner expresses concern that neither the claims nor the
Specification supplies the particular mathematical steps or algorithms in
order to calculate a numerical amount of humidity. Id.
[I]t is not clear how exactly one of ordinary skill in the art
would be able to take the amount of time the compressor has or
has not been operating, the amount of time since the last defrost
operation, or the amount of time since the door was last opened,
along with the indoor temperature and be able to correlate and
conclude a level of humidity.
Id. at 9–10.
Appellant argues that the claims are sufficiently definite and that the
Examiner’s concerns are directed more to the issue of enablement than
indefiniteness. Appeal Br. 22. We agree.
The PTO can properly reject a claim as indefinite if the claim is
ambiguous, vague, incoherent, opaque, or otherwise unclear. In re Packard,
751 F.3d 1307, 1311 (Fed. Cir. 2014). The test for definiteness under 35
U.S.C. § 112, is whether “those skilled in the art would understand what is
claimed when the claim is read in light of the specification.” Orthokinetics,
Inc. v. Safety Travel Chairs, Inc., 806 F.2d 1565, 1576 (Fed. Cir. 1986)
(citations omitted).
Here, the Examiner’s concerns about how the estimation of humidity
is performed goes more to the question of whether the claims can be
practiced without undue experimentation than whether a person of ordinary
skill in the art would understand what is claimed in light of the
Specification. We address that question in connection with the Examiner’s
non-enablement rejection discussed below.
We do not sustain the Examiner’s Section 112 indefiniteness rejection
of claims 1–15 and 17–20.
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Non-Enablement
The Examiner takes the position that each of the independent claims
(1, 5, 10, and 15) contains a limitation directed to estimating the humidity
level in the interior compartment of a refrigerator based on measuring the
temperature in such compartment in conjunction with one or more time
duration measurements that are recited in the claim. Final Action 2–3. The
Examiner determines that the Specification fails to provide enough
information to enable one of ordinary skill in the art to make and use the
claimed invention. Id. at 3.
[T]he claims require a series of inputs (i.e. inputs A, B, C, D)
that are used to calculate or estimate an output (i.e. output Y),
without sufficiently describing how exactly the claimed
calculation takes place . . .
[T]he specification does not describe how exactly this
calculation is accomplished, it only describes that the amount of
required humidity is a function of said variables, without
providing the necessary algorithm or mathematical formula so
as to obtain a numerical value for an absolute humidity or a
relative humidity.
Id. at 3–4.
In traversing the rejection, Appellant raises a plethora of procedural
objections, none of which we find persuasive. Appeal Br. 9–11. For
example, Appellant argues that a parent application has issued as
US 9,004,369. Id. In essence, Appellant argues that, since the parent
application issued, its claims must be considered enabled and, if those claims
are enabled, the claims of the instant continuation application must also be
enabled. Id. We express no opinion as to whether the claims of
US 9,004,369 were properly allowed as enabled or whether they might
survive an invalidity challenge in a Re-Examination Proceeding, District
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Court litigation, or a trial proceeding before the Board brought under the
America Invents Act. The sole issue before us is whether the claims of the
instant application are enabled. The instant application must stand or fall on
its own merits.
Appellant next argues that the Examiner’s rejection is deficient
because it does not analyze and apply “all” of the factors set forth in the case
of In re Wands, 858 F.2d 731, 737 (Fed. Cir. 1988). Appeal Br. 12. This
argument contravenes prevailing law. Contrary to Appellant’s position,
there is no requirement that an Examiner explicitly cite to the Wands case in
making a non-enablement rejection; neither is there a requirement to address
each and every one of factors in formulating a rejection.
As the MPEP states, “it is not necessary to discuss each
[Wands] factor in the . . . enablement rejection.” MPEP
§ 2164.04. Rather, the rejection “should focus on those factors,
reasons, and evidence that lead [to] the [conclusion] that the
specification fails to teach how to make and use the claimed
invention without undue experimentation.” Id. (emphasis
omitted).
In re Hillis, 484 Fed. Appx. 491, 495 (Fed. Cir. 2012).
Turning to the merits of the rejection, Appellant asserts that the claim
is directed to an “estimated” humidity level which, by definition, is not as
accurate as measuring humidity directly. Appeal Br. 13. Appellant notes
that the Specification distinguishes between a closed loop control system
based on measured levels of humidity and an open loop control system that
estimates humidity. Id. Appellant points out that the goal of the invention is
to provide a less expensive refrigeration system that provides enhanced food
storage capability, while avoiding the expense of a humidity sensor. Id.
Appellant further explains that paragraph 97 of the Specification discloses
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that regression data from tests done under several different operating
conditions allows one to estimate the humidity level within the refrigeration
compartment. Id.
[O]ne skilled in the art could design and build a refrigerator,
install a temporary humidity sensor, place the refrigerator in
environmental conditions similar to those expected to be
encountered during use, and record the humidity within the
refrigerator. Afterwards, the humidity level could be measured
at regular intervals to determine the rate of change of the
humidity level over time. With this information, the length of
time since the door was last opened could be used to calculate
the humidity level within the refrigerator without the need for a
humidity sensor. Such testing can be repeated in different
environmental conditions and for different refrigerator interior
temperatures.
Id. at 13–14. Appellant asserts that such an amount of experimentation is
not “undue.” Id. at 14.
In response, the Examiner emphasizes that information is missing
about the relationships between claimed elements that cannot be developed
without undue experimentation. Ans. 7. The Examiner identifies a number
of variables that affect humidity levels within a refrigerator which, in the
Examiner’s opinion, should be accounted for in estimating humidity. Id.
Among other things, the Examiner lists: (1) environmental conditions such
as ambient temperature and humidity; (2) compressor capacity; (3)
compartment volume; (4) stored item temperatures; (5) food load amounts,
and (6) the number of fans. Id. at 9. The Examiner considers it to be
“practically impossible” to estimate a humidity based merely on measured
temperature and a time duration as claimed, without considering what the
Examiner characterizes as an “undue plethora” of factors. Id. The Examiner
faults Appellant for not providing actual regression analysis data to support
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its argument that the invention could be practiced using regression analysis.
Id. at 11.
Proceeding further, the Examiner takes issue with Appellant’s failure
to provide criteria of acceptable performance for embodiments of the
invention.
[T]he disclosure does not specifically establish . . . the requisite
degree of what may be considered a level of “estimated”
humidity. In other words, what margin of error reasonably
comprises an “estimated” humidity for the claimed invention?
Would it be a relative humidity level of approximately +/- 3%,
5%, 10%, or even more? . . . Given the fact that appellant has
not established the requisite degree for what may be considered
an “estimated” humidity, it is unclear how the claimed
invention would function, since there are many factors (such as
the type of food stored within the refrigerator, and convection
between the refrigerator and the outside environment) that may
influence the level of humidity therein, which is not accounted
for with the claimed calculation.
Ans. 11–12.
In reply, Appellant points out that some of the variables identified by
the Examiner are static, such as compressor capacity and compartment
volume. Reply Br. 2. Appellant argues that such variables lend themselves
to routine experimentation as they do not vary during use of the refrigerator.
Id. at 2–3. Appellant further argues that other variables identified by the
Examiner, such as ambient temperature and humidity, the temperature of
stored items, and food load can reasonably be expected to fall within certain
ranges. Id. at 3. Appellant concludes that such variables lend themselves to
a regression analysis that does not amount to “undue” experimentation. Id.
Appellant next points out that there are a limited number of
refrigerator manufacturers, each with a limited product line. Id. Appellant
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explains that, in the ordinary course of new product development, design
engineers can construct a refrigerator for testing purposes, install a humidity
sensor, place the refrigerator in environmental conditions similar to those
expected to be encountered during use, and then collect humidity data. Id.
Appellant explains that actual, measured humidity data can be correlated to
the temperature and time duration parameters recited in the claims to derive
an estimated humidity level “without the need to install a humidity sensor in
the . . . refrigerators that will subsequently be produced.” Id. Appellant
describes this process as “ordinary” product development steps that would
be performed by engineers that specialize in refrigerator design. Id.
Distilled to its essence, Appellant asserts that the Examiner is imposing an
artificial and exacting performance criteria on Appellant’s refrigerator that
does not align with the legal standards of enablement and undue
experimentation. Reply Br. 4.
At the outset, we commend the Examiner for the thorough, detailed,
thoughtful, and insightful analysis that went into the Final Rejection and the
Examiner’s Answer. The Examiner has demonstrated a clear grasp of the
technical issues that are involved in estimating the humidity level inside of a
refrigerator without the use of a humidity sensor. Notwithstanding the
foregoing, however, the Examiner has applied an incorrect standard of non-
enablement to the facts of this case in the following two respects: (1) the
performance criteria that is applied to an invention; and (2) the amount of
experimentation that is considered to be “undue.”
The enablement requirement prevents mere ideas from being patented.
In re ‘318 Patent Infringement Litigation, 583 F.3d 1317, 1324 (2009).
Enablement requires that the Specification enable those skilled in the art to
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make and use the full scope of the claimed invention without undue
experimentation. Genentech, Inc. v. Novo Nordisk A/S, 108 F.3d 1361, 1365
(Fed. Cir. 1997) (quoting In re Wright, 999 F.2d 1557, 1561 (Fed. Cir.
1993). The enablement requirement ensures that the public knowledge is
enriched by the patent specification to a degree at least commensurate with
the scope of the claims. Nat’l Recovery Tech., Inc., v. Magnetic Separation
Sys, Inc., 166 F.3d 1190, 1195–96 (Fed. Cir. 1999). The scope of the claims
must be less than or equal to the scope of the enablement. Id. The scope of
enablement, in turn, is that which is disclosed in the Specification plus the
scope of what would be known to one of ordinary skill in the art without
undue experimentation. Id. Whether making and using the claimed
invention would have required undue experimentation, such that claims were
not sufficiently enabled by the Specification, is a legal conclusion based
upon underlying facts. In re Goodman, 11 F.3d 1046, 1049–50 (Fed. Cir.
1993).
In analyzing enablement of Appellant’s invention, the Examiner errs
in comparing the accuracy and performance of Appellant’s humidity
estimation technique with that of an actual humidity sensor. Patents may be
obtained for inventions that are new and “useful.” 35 U.S.C. § 101. There
is no requirement that the disclosure enables a perfected, commercially
viable embodiment.
Enablement does not require an inventor to meet lofty standards
for success in the commercial marketplace. Title 35 does not
require that a patent disclosure enable one of ordinary skill in
the art to make and use a perfected, commercially viable
embodiment absent a claim limitation to that effect . . .
[W]hen an invention claims a general system to improve . . . the
disclosure enables that invention by showing improvements.
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CFMT, Inc. v. Yieldup Int’l Corp, 349 F.3d 1333, 1338 (Fed. Cir. 2003).
The invention here does not seek to improve on control systems that use
actual humidity sensors, rather, it seeks to improve on the food storage
capabilities of a refrigerator that has no humidity sensor. The invention
saves the expense associated with providing a humidity sensor, while still
providing some, albeit admittedly imperfect, humidity control. In that sense,
it provides a “poor man’s” humidity control system. Thus, the question is
not whether it works perfectly, but whether it works at all. The Examiner
offers no evidence or technical reasoning to challenge the notion that
Appellant’s invention provides some amount of humidity control
improvement over prior art refrigerators with no humidity control system
whatsoever.
On the question of whether the amount of experimentation required to
practice the invention is “undue,” Appellant has the better position.
Although experimentation must not be undue, a reasonable amount of
routine experimentation required to practice a claimed invention does not
violate the enablement requirement. Enzo Biochem, Inc. v. Calgene, Inc.,
188 F.3d 1362, 1371 (Fed. Cir. 1999). The Examiner’s undue
experimentation analysis is, in the first instance, predicated on the
Examiner’s notion that the invention achieve some artificially imposed
standard of performance, a notion that the law does not endorse. In
evaluating Appellant’s arguments regarding undue experimentation, we are
mindful that an inventor is speaking to those skilled in the art. In re
Howarth, 654 F.2d 103, 105 (CCPA 1981). Consequently, what is
conventional knowledge will be read into the disclosure. Id. Thus, the
disclosure of an application embraces not only what is expressly set forth in
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words or drawings, but what would be understood by persons skilled in the
art. Id. at 106.
Appellant’s Specification teaches that an adaptive method for
estimating humidity levels in a refrigerator is based on the physical
understanding of mass transfer or moisture transfer inside of the refrigerator.
Spec. ¶ 77. The Specification identifies factors that add to or remove
moisture from the refrigerator. Id. ¶ 79. The Specification explains that
regression data from tests done in several operating conditions helps
estimate current relative humidity and consequently, the need for water
atomization. Id. ¶ 97.
We find persuasive Appellant’s arguments that a skilled refrigerator
design engineer would be able to test a prototype refrigerator during product
development by collecting data using an actual humidity sensor and
correlating and comparing such data against the temperature and other
parameters recited in claim 1 and develop an algorithm to estimate a
humidity level. Reply Br. 3. We do not consider the prospect that such a
design effort would need to be undertaken for each new refrigerator product
under development constitutes “undue” experimentation. Moreover, we are
not inclined to fault Appellant for not providing a precise algorithm in the
Specification, when it is understood that the particulars of the algorithm may
vary depending on design consideration variables such as compartment size
or anticipated environmental operating conditions particular to each new
product. Under the circumstances, it is enough that a person of ordinary
skill in the art would have been able to derive the appropriate algorithm
given a specified set of physical and operational parameters.
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In view of the foregoing discussion, we do not sustain the Examiner’s
Section 112 non-enablement rejection of claims 1–15 and 17–20.
Unpatentability of Claims 1–3, 5–7, 15, and 18
over Hwang and Fortmann
Claim 1
The Examiner finds that Hwang discloses the invention substantially
as claimed except that it uses an actual humidity sensor and, therefore, does
not rely on temperature and time duration parameters to estimate humidity
level. Final Action 11. The Examiner relies on Fortmann as disclosing a
food treatment cabinet with a humidity control routine that relies on
measuring a temperature of the interior of the compartment, determining a
length of time since a door to the compartment was last opened, and
calculating an estimated humidity level for the interior of the compartment
based on the temperature and the length of the time since the door to said
compartment was last opened. Id. at 12.
We have reviewed the Fortmann reference. Fortmann is directed to a
food steamer, not a refrigerator. Fortmann, col. 4, ll. 1–4. To be sure,
Fortmann does disclose controlling temperature within the food steamer. Id.
col. 4, ll. 21–30. Fortmann also discloses using humidity control logic to
control a water heater. Id. col. 4, ll. 60–62. Fortmann also discloses
monitoring the length of time a door has remained open in connection with
adjusting the temperature and relative humidity within the steamer. Id.
col. 3, ll. 1–32. However, nowhere, insofar as we are able to determine,
does Fortmann disclose calculating an estimated humidity level based in part
on temperature. In our opinion, the passage of Fortmann relied on by the
Examiner in the Final Rejection fails to provide evidentiary support for the
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Examiner’s findings of fact. See Final Action 12 (citing Fortmann, col. 7,
ll. 7–15).
In view of the foregoing, we determine that the Examiner's findings of
fact are not supported by a preponderance of the evidence and that the
Examiner's legal conclusion of unpatentability based on such erroneous fact
finding is not well-founded. Accordingly, we do not sustain the Examiner's
unpatentability rejection of claim 1.
Claims 2, 3, 5–7, 15, and 18
Claims 2 and 3 depend from claim 1. Claims App. Claim 5 is an
independent claim that, like claim 1, contains a limitation directed to
determining a humidity level based in part on a temperature of a
refrigeration compartment. Id. Claims 6 and 7 depend from claim 5. Id.
Claim 15 is an independent claim that, like claim 1, contains a limitation
directed to determining a humidity level based in part on a temperature of a
refrigeration compartment. Id. Claim 18 depends from claim 15.
The Examiner’s rejection of these claims suffers from the same
infirmity that was identified above with respect to claim 1. Thus, for
essentially the same reason expressed above in connection with claim 1, we
do not sustain the rejection of claims 2, 3, 5–7, 15, and 18.
Unpatentability of Claims 4, 8, 9, 17, 19, and 20
over Hwang Combined with Sweetman or Dodge
Claim 4 depends from claim 1. Claims App. Claims 8 and 9 depend
from claim 5. Id. Claims 17, 19, and 20 depend from claim 15. Id. The
Examiner’s rejection of these claims suffers from the same infirmity that
was identified above with respect to claim 1, which infirmity is not removed
by any findings of fact based on either the Sweetman or Dodge reference.
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Thus, for essentially the same reason expressed above in connection with
claim 1, we do not sustain the rejection of claims 4, 8, 9, 17, 19, and 20.
Unpatentability of Claims 10–14
over Hwang, Fortmann, Sweetman, and Dodge
Claim 10 is an independent claim and claims 11–14 depend directly
therefrom. Claims App. As with claim 1, claim 10 contains a limitation
directed to determining a humidity level based in part on a temperature of a
refrigeration compartment. Id. The Examiner’s rejection of these claims
suffers from the same infirmity that was identified above with respect to
claim 1, which infirmity is not removed by any findings of fact based on
either Sweetman or the Dodge reference. Thus, for essentially the same
reason expressed above in connection with claim 1, we do not sustain the
rejection of claims 10–14.
CONCLUSION
In summary:
Claims
Rejected
§ Reference(s)/Bases Aff’d Rev’d
1-15, 17-20 112 Indefiniteness 1-15, 17-20
1-15, 17-20 112 Non-Enablement 1-15, 17-20
1-3, 5-7, 15, 18 103 Hwang, Fortmann 1-3, 5-7, 15, 18
4, 8, 19 103 Hwang, Fortmann,
Sweetman
4, 8, 19
9, 17, 20 103 Hwang, Fortmann,
Dodge
9, 17, 20
10-14 103 Hwang, Fortmann,
Sweetman, Dodge
10-14
Overall
Outcome
1-15, 17-20
REVERSED