Ex Parte 7,490,475 et al

Patent Trial and Appeal Board

Mar 15, 2013

95001481 (P.T.A.B. Mar. 15, 2013)

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.
95/001,481 11/03/2010 7,490,475 002783.0120 3845
26171 7590 03/18/2013
FISH & RICHARDSON P.C. (DC)
P.O. BOX 1022
MINNEAPOLIS, MN 55440-1022
EXAMINER
ENGLE, PATRICIA LYNN
ART UNIT PAPER NUMBER
3993
MAIL DATE DELIVERY MODE
03/18/2013 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

WHIRLPOOL CORPORATION
Requester, Respondent

v.

LG ELECTRONICS, INC.
Patent Owner, Appellant
____________________

Appeal 2012-012470
Reexamination Control No. 95/001,481
Patent 7,490,475 B2
Technology Center 3900
____________________

Before JOSIAH C. COCKS, WILLIAM V. SAINDON, and
SCOTT E. KAMHOLZ, Administrative Patent Judges.

KAMHOLZ, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2012-012470
Reexamination Control No. 95/001,481
Patent 7,490,475 B2

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STATEMENT OF THE CASE
This proceeding arose from a request by Respondent Whirlpool
Corporation for an inter partes reexamination of U.S. Patent 7,490,475 B2
(hereinafter, the ’475 patent), entitled “Refrigerator,” and issued to LG
Electronics Inc. (Feb. 17, 2009).
1

Appellant, patent owner LG Electronics, Inc., appeals under 35 U.S.C.
§§ 134(b) and 315(a) (2002) from a decision of the primary Examiner finally
rejecting claims 1-23, 25-50, and 54-64. RAN
2
PTOL-2066. Claims 1-15
were originally issued in the ’475 patent, and new claims 16-23, 25-50, and
54-64 were presented during the reexamination.
We affirm-in-part.

1
The ’475 patent was also the subject of a co-pending litigation styled LG
Electronics U.S.A., Inc., et al. v. Whirlpool Corp., et al., no. 2:09-cv-05142
(D. N.J.). We understand that this litigation was dismissed with prejudice on
Oct. 1, 2012. See “Stipulation and Order of Dismissal” (paper no. 371). We
will therefore not consider any findings, conclusions, or judgments from that
litigation. We find no indication in the record of the present proceeding that
Patent Owner brought this result of the litigation to the attention of the
Office or the Board. Patent Owner is reminded of its continuing obligation
under 37 C.F.R. § 1.985(a) to notify the Office of concurrent proceedings,
including litigation “and the results of such proceedings” (emphasis added).

2
While we have considered the entire appeal record, we refer to and address
only specific portions of the record directly relevant to the disposition of the
appeal and cross-appeal, abbreviating the documents therein as follows:
1. Right of Appeal Notice: RAN
2. Appeal Brief of Patent Owner: App. Br.
3. Respondent Brief of Requester: Resp. Br.
4. Rebuttal Brief of Patent Owner: Reb. Br.
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THE CLAIMED SUBJECT MATTER
The ’475 patent describes refrigerators having ice-making structures
(col. 1, ll. 5-10). Claim 1 on appeal is illustrative and reads as follows:
1. A refrigerator comprising:
a refrigerating compartment;
a freezing compartment;
an ice compartment located within the refrigerating
compartment;
an ice maker located within the ice compartment and
configured to freeze liquid water into ice;
a refrigerator door configured to open to enable
frontal access and close to inhibit frontal access to
at least a portion of the refrigerating compartment;
a dispenser, at least a portion of which being located
on the refrigerator door, configured to dispense
liquid water and frozen water as ice;
an ice maker branch line configured to guide liquid
water to an inlet of the ice maker located within
the ice compartment;
a dispenser branch line configured to guide liquid
water to the dispenser; and
a water supply line that branches into the ice maker
branch line and the dispenser branch line, wherein:
a branch point, at which the water supply line
branches to interface with the ice maker branch
line and the dispenser branch line, is located
proximate to a wall of the refrigerating
compartment; and
both the ice maker branch line and the dispenser
branch line extend along at least one wall of the
refrigerating compartment without extending along
a wall of the freezing compartment.

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REFERENCES
The Examiner relies on the following prior art references:
Money US 2,412,904 Dec. 17, 1946
Toloczko US 3,934,691 Jan. 27, 1976
Fisher US 5,272,888 Dec. 28, 1993
Cur US 5,375,432 Dec. 27, 1994
Coates US 5,813,245 Sep. 29, 1998
Chiapetta US 6,447,083 B1 Sep. 10, 2002
Doshiyuki KR 1997-000129 Feb. 5, 1997
Park KR 1998-018912 Jul. 6, 1998
Oh KR 1999-021017 Mar. 25, 1999
Kim I KR 1999-0031494 May 6, 1999
Lee KR 1999-0043740 Jun. 15, 1999
Kim II KR 1999-0066209 Aug. 16, 1999
Yasuzo JP 2000-9372A Jan. 14, 2000
Kwon KR 2000-0073340 Dec. 5, 2000

OTHER EVIDENCE
Declaration of Norman L. Beck (“Beck Decl.”) (submitted by Appellant).

Supplemental Declaration of Norman L. Beck (“Suppl. Beck Decl.”)
(submitted by Appellant).

Declaration of Albert V. Karvelis (“Karvelis Decl.”) (submitted by
Respondent).

REJECTIONS
Appellant seeks our review of the following rejections set forth by the
Examiner in the RAN, which was incorporated by reference into the
Examiner’s Answer:
Rejections under 35 U.S.C. § 103(a) for obviousness:
1. Claims 1-3, 5-8, 10-13, and 15 over Cur and Kwon. RAN 7.
2. Claims 4, 9, and 14 over Cur, Kwon, and Park. RAN 16.
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3. Claims 1-3, 5-8, 10-13, 15, 21-23, 25-28, 49, 50, 54, and 58-63
over Yasuzo and Kwon. RAN 27.
4. Claims 4, 9, and 14 over Yasuzo, Kwon, and Park. RAN 37.
5. Claims 16-20 over Yasuzo, Kwon, and Oh. RAN 40.
6. Claims 29-38, 42-48, and 64 over Yasuzo, Kwon, and Fisher.
RAN 41.
7. Claims 39-41 over Yasuzo, Kwon, Fisher, and Toloczko.
RAN 48.
8. Claims 55 and 56 over Yasuzo, Kwon, and Doshiyuki. RAN 49.
9. Claim 57 over Yasuzo, Kwon, Doshiyuki, and Money or
Chiapetta. RAN 50.
10. Claims 1-15, 28, 49, 50, and 54 over Cur and Oh. RAN 7.
11. Claims 4, 9, and 14 over Cur, Oh, and Park. RAN 16.
12. Claims 58-63 over Cur, Oh, and Yasuzo. RAN 19.
13. Claims 29-38, 42-48, and 64 over Cur, Oh, and Fisher. RAN 19.
14. Claims 39-41 over Cur, Oh, and Fisher. RAN 26.3
15. Claims 1-15 over Yasuzo and Oh. RAN 27.
16. Claims 4, 9, and 14 over Yasuzo, Oh, and Park. RAN 37.
17. Claims 1-15 over Cur and Kim I. RAN 7.
18. Claims 4, 9, and 14 over Cur, Kim I, and Park. RAN 16.
19. Claims 1-15 over Yasuzo and Kim I. RAN 27.
20. Claims 4, 9, and 14 over Yasuzo, Kim I, and Park. RAN 37.
21. Claims 1-3, 6-8, and 11-13 over Cur and Kim II. RAN 7.
22. Claims 4, 9, and 14 over Cur, Kim II, and Park. RAN 16.

3
Appellant incorrectly lists this rejection as having been made over Cur, Oh,
Fisher, and Lee. App. Br. 5.
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23. Claims 5, 10, and 15 over Cur, Kim II, and Coates. RAN 17.
24. Claims 1-3, 6-8, and 11-13 over Yasuzo and Kim II. RAN 27.
25. Claims 4, 9, and 14 over Yasuzo, Kim II, and Park. RAN 37.
26. Claims 5, 10, and 15 over Yasuzo, Kim II, and Coates. RAN 39.
Other Rejections:
27. Claims 31-33, 38-40, 43, 45-48, 54, 59, and 62 under 35 U.S.C.
§ 112, first paragraph (written description). RAN 4.
28. Claims 39, 40, 49, and 50 under 35 U.S.C. § 112, second
paragraph (indefiniteness). RAN 6.

ANALYSIS
We limit our discussion of the issues argued to those necessary for the
disposition of the appeal.
Obviousness Rejections
We focus our analysis on claim 1. In the detailed explanations of the
rejections, the Examiner asserted that each of various references (viz. Kwon,
Oh, Kim I, and Kim II) disclose the limitation “wherein: … both the ice
maker branch line and the dispenser branch line extend along at least one
wall of the refrigerating compartment without extending along a wall of the
freezing compartment.” See, e.g., RAN 8-9 (beginning at last line on p. 8)
for the discussion of Kwon. The Examiner did not, however, explain how
the limitation was being construed.
In the “Response to Patent Owner Comments” section of the RAN,
the Examiner explained that this limitation requires merely that the branch
lines each have some segment in which the branch line extends along at least
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one wall of the refrigerating compartment without the same segment exten-
ding along a wall of the freezing compartment:
The Examiner’s position is that this term requires that both
the lines need to extend along at least one wall of the
refrigerating compartment and when both lines extend along
at least one wall they do not extend along a wall of the
freezing compartment. . . . The Examiner has reviewed the
specification of the ’475 patent and has found one statement
regarding the water lines and the freezing compartment (col.
11, lines 37-39). However, this statement states that the
water supply tubes do not pass through the refrigerating
(interpreted as a typo meant to be freezing) chamber side.
This statement does not bar the water lines from extending
through the insulation of a shared freezing and refrigerating
compartment wall. Rather, this statement seems to indicate
that the lines do not extend into the freezing compartment.
Therefore, the Examiner maintains her position that a water
supply line that extends along a wall of the refrigerating
compartment only for at least a portion of the water supply
line would meet the claim limitation.
RAN 54-55 (emphases added). Appellant argues that the proper construc-
tion is instead “both the ice maker branch line and the dispenser branch line
extend along at least one wall of the refrigerating compartment, but do not
extend along any walls of the freezing compartment,” and cites the Beck
Declaration, paras. 11, 17, 23, and 24 and Specification passages for support.
App. Br. 6-7. In particular, Appellant cites the Specification at col. 11, ll.
26-29, which explains that the tubes for the icemaker and dispenser “are
provided only on the refrigerating chamber side of the refrigerator body,”
and Specification col. 8, lines 29-32, which explains that the tubes “are
preferably embedded into a rear side of an inner case or an insulating
material of the walls of the refrigerating chamber 3.” App. Br. 7. Appellant
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also points to elements 3, 5, 54 ,́ and 55 ́in Fig. 7 as supporting this
construction. App. Br. 4.
Respondent criticizes Appellant’s proposed construction on the basis
that “[n]othing in the prosecution history or specification” of the ’475 patent
supports it, and that the Specification passages Appellant cites amount to no
more than “preferred embodiments” to which the limitation at issue should
not be constrained. Resp. Br. 1-2. Respondent argues that Appellant
“ignores the existence of a shared wall between [the] refrigerating chamber
and the freezing chamber” and that therefore the Specification passages
Appellant cites “do not exclude extending the branch lines, at least in part,
through” this shared wall. Resp. Br. 2. Respondent argues, echoing the
Examiner, that this limitation “only requires that at least some portion of
both branch lines extend along a wall of the refrigerating compartment
without extending along a wall of the freezing compartment.” Resp. Br. 1
(emphasis added).
Respondent further argues that differentiation of claims 21-23 from
claim 1 supports the Examiner’s construction. Resp. Br. 3; Karvelis Decl.
para. 18. Respondent also argues that the cited references meet or render
obvious the limitation at issue even if construed as Appellant urges.
Resp. Br. 5-7, 10, 11, 13. Specifically, Respondent argues that Cur discloses
an ice maker branch line that “would not extend along any wall of [the]
freezing compartment” (Resp. Br. 5-6); that Kim I discloses a dispenser line
that runs entirely along walls of the refrigerating compartment without
extending along a wall of the freezing compartment (Resp. Br. 11); and that
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Kwon, Oh, or Kim II combined with Cur or Yasuzo would have rendered the
limitation obvious (Resp. Br. 7, 10, 13) (citing Karvelis Decl. passim.).
Appellant argues in response, among other things, that differentiation
of claims 21-23 from claim 1 does not require so broad a construction of the
limitation in question as Requester urges (Reb. Br. 9-10) and that the cited
references do not meet the limitation at issue (Reb. Br. 11-24).
We determine that a preponderance of the evidence of record does not
support the Examiner’s broad construction of this limitation. We agree with
Appellant that the disclosure of water lines being provided “only on the
refrigerating chamber side” is fairly read to exclude an arrangement in which
the lines extend along a shared wall. The only “chambers” described in the
’475 patent are refrigerating chamber 3 and freezing chamber 5. The
specific reference to “refrigerating chamber side” distinguishes from and
excludes the freezing chamber. The passage is properly read, then, as
disclosing that the lines are provided on the refrigerating chamber side and
not on the freezing chamber side of the refrigerator body. Interpreting the
claim as encompassing an arrangement in which the lines extend along a
shared wall would be inconsistent with this disclosure. The Examiner’s
broad construction, however, relies on this inconsistent interpretation. We
therefore conclude that the Examiner has not shown that the adopted
construction is the broadest reasonable interpretation consistent with the
Specification.
Respondent’s claim differentiation argument also fails to justify the
broad construction. Claim 1 requires that the lines extend along “at least one
wall” of the refrigerating compartment, while each of claims 21-23 requires
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that one or both lines “only extends along walls of the refrigerating
compartment” (emphasis added). That is, claims 21-23 further limit claim 1
by requiring that the line or lines extend along more than one wall.
Because the scopes of claims 21-23 are narrower than claim 1 in this respect,
Respondent’s construction of claim 1 is unnecessary to differentiate it from
claims 21-23.
Respondent’s arguments that the cited references meet or render
obvious the limitation as narrowly construed by Appellant do not persuade
us of the soundness of any of the rejections. Respondent’s argument
regarding Cur relies on an exterior-view drawing (Fig. 5) and inferences
drawn about where the ice maker branch line would run inside the
refrigerator. Appellant correctly notes that Cur is “unclear” about these
details (Reb. Br. 11), and we agree that Cur lacks sufficient disclosure to
meet the “ice maker branch line” portion of the limitation at issue.
Respondent’s argument concerning Kim I relies on Cur for this disclosure
and fails for similar reasons. Respondent’s arguments concerning
obviousness of the limitation at issue in view of the cited references are all
inapposite to the rejections of record. The Examiner relied upon Kwon, Oh,
and Kim II as each individually disclosing the limitation, not for rendering
the limitation obvious.
For these reasons, we reverse all obviousness rejections.

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Written Description Rejections
1. Claims 38-44 and 48
With respect to claims 38 and 48, the Examiner found that the patent
Specification “does not state that the outlet defined in the ice compartment is
located at a bottom surface of the ice storage bin.” RAN 4.
4

Appellant argues that Fig. 3 shows that “a portion of ice storage 26
hangs over the second portion of ice discharge duct 28” and that “[a] person
having ordinary skill in the art… would understand… that the outlet is
located on or at the bottom surface of the ice storage bin at a position
corresponding to the second portion of the ice discharge duct.” App. Br. 37.
Appellant cites the Supplemental Beck Declaration, para. 16, in support of
this argument, in which Mr. Beck describes Fig. 3 in this manner.
Respondent argues that “[n]o outlet is shown in any of the figures of
the ’475 patent” and that “discharge chute 28 is shown in Figure 3 of the
’475 patent extending from the vertical front wall of storage volume 26 and
angling downward.” Resp. Br. 17. The Examiner expresses a similar view
in maintaining the rejection. RAN 60.
We agree with the Examiner that the Specification does not disclose
that the outlet defined in the ice compartment is located at a bottom surface
of the ice storage bin. Figure 3 of the patent appears to show the second
portion of the ice discharge duct 28 extending from both the vertical front
wall and the bottom of ice storage 26. While it is reasonable to infer from
this that the (unillustrated) outlet is positioned in some location that
communicates with the second portion of the ice discharge duct 28, it cannot

4
It is not clear to us why the Examiner did not also reject claims 29-37 for a
similar reason.
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be determined from this figure, or from any other figure, or from the
description, whether the outlet is located at the bottom surface, the front
surface, a side surface, or some combination of these. The Specification is
at best ambiguous on this point and consequently insufficient to establish
possession. See Lockwood v. Am. Airlines, Inc., 107 F.3d 1565, 1572 (Fed.
Cir. 1997) (“it is not a question of whether one skilled in the art might be
able to construct the patentee’s device from the teachings of the disclosure
[but] whether the application necessarily discloses that particular device”)
(internal citation and quotation omitted). We therefore affirm the rejection
of claims 38 and 48 on this basis.
Claims 39-44 depend from claim 38 and inherit this defect. We
therefore interpret the rejection of claim 38 as implicitly a rejection of 39-44.
We affirm the rejection of claims 39-44 for the reasons given above.
2. Claims 31, 32, and 45-48
The Examiner found that while the patent Specification “states that
the ice-making chamber may be configured to be detachably installed
(col. 9, line 34-40),” the Specification “does not state that a portion of the
ice-making chamber is detachable. There is no support in the patent
specification for only a portion of the ice-making chamber being detachably
installed.” RAN 4-5 (italic emphasis added).
Appellant argues that one having ordinary skill in the art would have
understood from a description of the entire ice compartment being
detachably installed that at least a portion of it may be detachably installed,
because “detachable installation of the entire ice compartment, as described,
covers detachable installation of at least a portion of the ice compartment.”
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App. Br. 33-34. Appellant cites the Supplemental Beck Declaration,
para. 10, in support of this argument. Applicant further argues that the
Examiner has inappropriately interpreted the rejected claims as requiring
that “only” a portion of the ice-making chamber be detachable. Id. at 34.
Respondent argues in favor of the Examiner’s position that these
claims require separate detachability of portions of the ice compartment.
Resp. Br. 17. The Karvelis Declaration, paras. 39 and 40, echoes these
arguments.
We agree with the Examiner that disclosure of detachability of the
entire ice compartment does not adequately support claims to the
detachability of a portion of the compartment. In the absence of further
disclosure, a portion is “detachable” only to the extent that it is a part of a
whole that is detachable. Consider, for example, a car tire that is disclosed
as being detachably installed on the wheel of a car. It would not follow from
such a disclosure that, say, the side wall, valve stem, or tread of the tire is
detachably installed. So too does it not follow from a disclosure that the ice
compartment is detachably installed that the front insulating wall, the outlet,
or the ice storage bin of the ice compartment is detachably installed.
We therefore affirm the rejection of claims 31, 32, and 45-48.
3. Claims 33, 38, and 43
We have affirmed the rejection of claims 38 and 43 for failure to
comply with the written description requirement, supra, and need not
address those claims further.
The Examiner found that the patent Specification, while disclosing a
dispenser and an operating button or lever, does not disclose “details of the
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dispensing port, the opening and closing of the dispensing port and how the
opening and closing of the dispensing port is different than the opening and
closing of the ice discharge duct.” RAN 5.
Appellant argues that support for claim 33 may be found at col. 6,
lines 40-49. App. Br. 34-35 (citing Suppl. Beck Decl. para. 11).
Respondent argues that while the ’475 patent Specification does disclose
that an operating lever or button receives a signal for opening and closing a
dispensing port, there is no disclosure that the dispensing port is opened and
closed “in response to that signal” or that the dispensing port is “configured”
to open and close. Resp. Br. 17.
We agree with Appellant that the ’475 Specification reasonably
evidences possession of the subject matter of claim 33. The Specification
explains at col. 6, lines 47-49 that “the dispensing port is opened by the
operating lever or button, whereby water or ice is discharged to the outside.”
The patent also explains that the operating lever or button “receives a signal
for opening and closing [the] dispensing port” at col. 6, lines 44-45. From
these passages, it is reasonably understood that the dispensing port is opened
based on input received by the operating lever or button. We find
Appellant’s use of the term “configured” in claim 33 not to impose any
particular structural requirement on these claims that is not reasonably
understood from the cited passages of the Specification. We reverse the
rejection as to claim 33.
4. Claim 54
The Examiner found that the Specification “does not disclose the ice
compartment having a width less than half of the width of the refrigerating
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compartment.” RAN 5. In response to Appellant’s argument that Fig. 5
shows the compartment as being less than half the width of the refrigerating
compartment, the Examiner notes that the widths of these components are
not “provided in the specification or drawings,” nor does the patent indicate
which dimension should be regarded as the “width.” RAN 59. Respondent
echoes the Examiner’s position. Resp. Br. 18.
We agree with Appellant that Fig. 5 of the ’475 patent fairly shows
that the ice compartment has a width less than half of the width of the
refrigerating compartment. One having ordinary skill in the art would have
understood that “width” conventionally refers to the side-to-side dimension
as one faces the refrigerator. The patent disclosure therefore reasonably
conveys to one having ordinary skill in the art that the inventors had
possession of the claimed subject matter. See Vas-Cath, Inc. v. Mahurkar,
935 F.2d 1555, 1563 (Fed. Cir. 1991). We reverse the rejection of claim 54.
5. Claims 59 and 62
These claims require a fan that is configured “to circulate cold air
within the ice compartment” (claim 59) or “to blow cold air within the ice
compartment to cause the cold air within the ice compartment to transfer
throughout the ice compartment” (claim 62). The Examiner found that the
Specification does not disclose either of these functions of the fan. RAN 6.
Appellant argues that disclosures at col. 6, lines 60-62
5
and col. 9,

5
“[A] blow fan 34 may… be installed such that cold air… can be transferred
more quickly into the ice-making chamber 20.”
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lines 9-19
6
reasonably support the claimed limitations. App. Br. 36-37;
Suppl. Beck Decl. para. 15. The Examiner maintains that the Specification
lacks disclosure “of a fan that circulates or transfers air throughout the ice
compartment, as claimed.” RAN 59. Respondent presents arguments in
support of the Examiner’s rejection. Resp. Br. 18; Karvelis Decl. para 48.
We agree with Appellant that the cited passages from the
Specification support the rejected claims. We think it reasonably follows
from these passages that when cold air is “transferred… into” or “delivered
into” the ice-making chamber 20 it “circulate[s]… within” and/or
“transfer[s] throughout.” We reverse the rejection of these claims.
Indefiniteness Rejections
1. Claims 49 and 50
The Examiner found that recitation of the terms “normal operating
orientation” and “normal operation” renders these claims indefinite. RAN 7.
Appellant argues that “normal operating orientation” refers to the orientation
consistently shown in Figs. 1-7, that the Specification specifies the relative
positions of the refrigerating compartment and the freezing compartment as
“upper” and “lower,” respectively, and that proper transfer of ice from the
ice compartment to the dispenser requires such an orientation. App. Br. 37-
38; Suppl. Beck Decl. para 17. Appellant argues that the claim limitation
“normal operation” refers to “a typical operating state of the refrigerator” in
which “the refrigerating compartment maintains refrigerating temperatures.”
App. Br. 38; Suppl. Beck Decl. para 18.

6
The cited passage states at ll. 17-19: “The cold air… is delivered into the
ice-making chamber 20 by means of the blow fan 34 such that ice is made in
the icemaker 24.”
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Respondent argues that “[t]here is no common understanding in the
art” of these limitations and that the meaning of “normal” depends on the
consumer. Resp. Br. 18-19. For example, Respondent argues, a consumer
might “wish to keep the refrigerating compartment… at freezing.” Id. at 19.
We agree with Appellant that, in the context of the present disclosure,
one having ordinary skill in the art would understand the meanings of the
disputed limitations as being those advanced by Appellant. We reverse the
rejection of these claims.
2. Claims 39 and 40
The Examiner found that the Specification does not disclose “separate
opening and closing of the discharge duct and separate opening and closing
of the dispensing port.” RAN 5. Appellant argues that because the
discharge duct and the dispensing port are disclosed as being distinct
structures, the opening and closing of each is “different than” and “separate
from” the other. App. Br. 38 (citing Suppl. Beck Decl. 19). Respondent
argues in favor of the rejection. Resp. Br. 17-18 (citing Karvelis Decl. 44).
We find that the evidence on balance favors Appellant’s position and
therefore reverse the indefiniteness rejection, though we affirm the rejection
of these claims for lack of written description for the reasons given above
with respect to claim 38.

DECISION
The Examiner’s rejections of claims 1-23, 25-30, 33-37, 49, 50, and
54-64 are REVERSED. The Examiner’s rejections of claims 31-32 and 38-
48 are AFFIRMED.
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Requests for extensions of time in this inter partes reexamination
proceeding are governed by 37 C.F.R. §§ 1.956 and 41.77(g).

AFFIRMED-IN-PART

alw

Patent Owner:

Fish & Richardson, PC (DC)
P.O. Box 1022
Minneapolis, MN 55440-1022

Third Party Requester:

Michael A. Hawes
One Shell Plaza
910 Louisiana Street
Houston, TX 77002