Ex Parte 7,762,098 et al

Patent Trial and Appeal Board

Aug 19, 2013

95001561 (P.T.A.B. Aug. 19, 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.
95/001,561 03/03/2011 7,762,098 19688-0050RX6 1500
26171 7590 08/20/2013
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
08/20/2013 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 PATENT TRIAL AND APPEAL BOARD
____________

Whirlpool Corporation
Requester

v.

LG Electronics Inc.
Patent Owner and Appellant
____________

Appeal 2013-001650
Reexamination Control 95/001,561
Patent 7,762,098 B2
Technology Center 3900
____________

Before RAE LYNN P. GUEST, JOSIAH C. COCKS, and
WILLIAM V. SAINDON, Administrative Patent Judges.

GUEST, Administrative Patent Judge.

DECISION ON APPEAL

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Reexamination Control 95/001,561
Patent 7,762,098 B2

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Patent Owner LG Electronics Inc. (“Patent Owner”) appeals under 35
U.S.C. §§ 134(b) and 315(a) the Examiner’s decision to reject claims 1-23,
25-27, and 29-36.
1
We have jurisdiction under 35 U.S.C. §§ 134(b) and
315(a).
We AFFIRM-IN-PART.

STATEMENT OF THE CASE
United States Patent 7,762,098 B2 (hereinafter the “’098 Patent”),
issued to Ill-Shin Kim, et al. on July 27, 2010, is the subject of the current
inter partes reexamination. The ’098 Patent is related to US 7,520,139 B2,
the subject of Reexamination 95/001,562 and US 7,428,820 B2, the subject
of Reexamination 95/001,523, which are currently under appeal. The
’098 Patent is also related to US 7,484,382 B2, the subject of Reexamination
95/001,480 and US 7,490,475 B2, the subject of Reexamination 95/001,481,
for which appeal Decisions of the Board were mailed on February 25, 2013
and March 18, 2013, respectively. The ’098 Patent is also related to US
7,392,665 B2, the subject of Reexamination 95/001,385, which has not been
appealed.
Third-Party Requester, Whirlpool Corporation
2
(hereinafter
“Requester”), filed a Respondent Brief in this appeal.

1
See Patent Owner’s Appeal Brief, filed April 27, 2012 (hereinafter “PO
App. Br.”), at 3; Examiner’s Answer, mailed September 14, 2012
incorporating by reference the Examiner’s Right of Appeal Notice, mailed
January 11, 2012 (hereinafter “RAN”).
2
See Request for Inter Partes Reexamination, filed March 3, 2011
(“Request”); Requester’s Respondent Brief, filed May 25, 2012 (“Req. Res.
Br.”) at 1.
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The ’098 Patent relates to a refrigerator having a freezer compartment
disposed below a refrigerator compartment and an ice maker structure within
the upper refrigerated compartment. ’098 Patent, col. 2, ll. 20-24. Claim 1,
which is illustrative of the appealed subject matter, has not been amended
during reexamination and reads as follows:
1. (Original) A refrigerator comprising:
a refrigerator body;
a refrigerating compartment defined at a first portion of
the refrigerator body;
a freezing compartment defined at a second portion of the
refrigerator body, the second portion of the refrigerator body
being different than the first portion of the refrigerator body;
at least one heat exchanger configured to regulate
operating temperatures in the refrigerating compartment and the
freezing compartment that differ, with the freezing
compartment having an operating temperature that is lower than
an operating temperature of the refrigerating compartment;
a pair of doors configured to open and close the
refrigerating compartment, the pair of doors including:
a first door that is configured to cover a first area
of the refrigerating compartment, and
a second door that is configured to cover a second
area of the refrigerating compartment that is different
than the first area of the refrigerating compartment;
an icemaker that is configured to freeze liquid water into
ice and that is located within the refrigerating compartment;
an ice storage bin that is configured to store ice made by
the icemaker, that is provided at one side of the first door, and
at least a part of which is located within a cavity defined by at
least one insulating wall; and
a dispenser that is installed on the first door and that is
configured to dispense ice stored within the ice storage bin
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through the first door when the first door is oriented in a closed
position,
wherein the first door is configured to cover the ice
storage bin when the first door is oriented in a closed position
that inhibits access to the first area of the refrigerating
compartment and the second door is oriented in an open
position that enables access to the second area of the
refrigerating compartment, and
wherein the first door is configured to enable access to
the ice storage bin when the first door is oriented in an open
position that enables access to the first area of the refrigerating
compartment and the second door is oriented in a closed
position that inhibits access to the second area of the
refrigerating compartment.
PO App. Br. 29-30, Claims App’x.

Patent Owner contests the Examiner’s decision to reject the claims as
follows:
1. Claims 1, 3, 5, 7-13, and 18-20 under 35 U.S.C. § 102
over Yasuzo.
3
(Ground 1, RAN 4.)
2. Claims 21, 27, and 29 under 35 U.S.C. § 103 over
Yasuzo and Swaneck.
4
(Ground 1A, RAN 8.)
3. Claims 22, 23, 25, 26, and 30 under 35 U.S.C. § 103 over
Yasuzo, Swaneck, and Jackovin.
5
(Ground 1B, RAN 10).
4. Claims 31-36 under 35 U.S.C. § 103 over Yasuzo and
Grimes.
6
(Ground 1C, RAN 15.)
5. Claim 2 under 35 U.S.C. § 103 over Yasuzo and Koons.7
(Ground 2, RAN 18.)

3
JP 2000-009372, published January 14, 2000, listing Yasuzo Ishine, et al.
as inventors. All reference to “Yasuzo” is to the English language
translation of record.
4
US 3,466,804, issued September 16, 1969, to Anthony J. Swaneck, Jr.
5
US 6,019,447, issued February 1, 2000, to Gary B. Jackovin.
6
US 3,146,606, issued September 1, 1964, to William H. Grimes, et al.
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6. Claims 4 and 14-17 under 35 U.S.C. § 103 over Yasuzo
and Fisher.
8
(Ground 3, RAN 20.)
7. Claim 6 under 35 U.S.C. § 103 over Yasuzo and Kwon.9
(Ground 4, RAN 24.)
8. Claims 1, 3, 5, 7-13, and 18-20 under 35 U.S.C. § 103
over Okada
10
and Yasuzo. (Ground 5, RAN 25.)
9. Claims 21, 27, and 29 under 35 U.S.C. § 103 over Okada,
Yasuzo, and Swaneck. (Ground 5A, RAN 31.)
10. Claims 22, 23, 25, 26, and 30 under 35 U.S.C. § 103 over
Okada, Yasuzo, Swaneck, and Jackovin. (Ground 5B, RAN
34.)
11. Claims 31-36 under 35 U.S.C. § 103 over Okada,
Yasuzo, and Grimes. (Ground 5C, RAN 38.)
12. Claim 2 under 35 U.S.C. § 103 over Okada, Yasuzo, and
Koons. (Ground 6, RAN 41.)
13. Claims 4 and 14-17 under 35 U.S.C. § 103 over Okada,
Yasuzo, and Fisher. (Ground 7, RAN 43.)
14. Claim 6 under 35 U.S.C. § 103 over Okada, Yasuzo, and
Kwon. (Ground 8, RAN 47.)
15. Claims 1, 3, 5, 8-13, 18, 20, 21, 27, and 29 under 35
U.S.C. § 103 over Cur,
11
Swaneck, and Yamazaki.
12
(Ground 9,
RAN 48.)
16. Claims 22, 23, 25, 26, 30 under 35 U.S.C. § 103 over
Cur, Swaneck, Yamazaki, and Jackovin. (Ground 9A, RAN
54.)

7
US 6,971,730, issued December 6, 2005, to Bill J. Koons.
8
US 5,272,888, issued December 28, 1993 to Michael H. Fisher, et al.
9
KR 2000-0074256, published December 15, 2000, listing Yung-cheol
Kwon as the sole inventor. All reference to “Kwon” is to the English
language translation of record.
10
JP 2000-111229, published April 18, 2000, listing Daishin Okada et al. as
inventors. All reference to “Okada” is to the English language translation of
record.
11
US 5,375,432, issued December 27, 1994 to Nihat O. Cur.
12
JP 5-296623, published November 9, 1993, listing Susumu Yamazaki as
the inventor. All reference to “Yamazaki” is to the English language
translation of record.
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17. Claims 31-36 under 35 U.S.C. § 103 over Cur, Swaneck,
Yamazaki, and Grimes. (Ground 9B, RAN 58.)
18. Claim 2 under 35 U.S.C. § 103 over Cur, Swaneck,
Yamazaki, and Koons. (Ground 10, RAN 61.)
19. Claims 4, 5, 14-17, and 19 under 35 U.S.C. § 103 over
Cur, Swaneck, Yamazaki, and Fisher. (Ground 11, RAN 63.)
20. Claim 6 under 35 U.S.C. § 103 over Cur, Swaneck,
Yamazaki, and Kwon. (Ground 12, RAN 64.)
21. Claim 7 under 35 U.S.C. § 103 over Cur, Swaneck,
Yamazaki, and Yasuzo. (Ground 13, RAN 65.)
Appellant further relies on a Rebuttal Brief (“Reb. Br.”) and the Beck
Declaration
13
in support of patentability. We note that Dr. Beck has
extensive experience in refrigerated dispensers and commercial refrigeration
and freezer systems (Beck Decl. ¶¶ 1-5). However, Dr. Beck does not
indicate any particular knowledge of designing consumer refrigerators,
namely the arrangement of doors, icemakers or compartments therein.
Accordingly, we find Dr. Beck qualified to testify only to refrigerator and
freezer systems in general and not to the specifics of consumer refrigerator
design.
The Respondent relies on its Respondent Brief (“Resp. Br.”) in
support of the Examiner’s rejections.

DISCUSSION
With respect to the obviousness rejections, Patent Owner makes
similar arguments with respect to each rejection. We address claim 1 as
being representative of all of the claims on appeal. Patent Owner presents

13
Declaration of Norman L. Beck, dated July 11, 2011, and entered into the
record on July 13, 2011 (hereinafter “Beck Declaration” or “Beck Decl.”).

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separate argument for claims 22, 23, 25 and 26 (PO App. Br. 23-28). All
remaining claims not argued separately stand or fall with claim 1.

Findings of Fact
Yasuzo
Yasuzo discloses a refrigerator-freezer 20 having an icemaker
disposed in a refrigerating compartment 3 disposed above a vegetable
compartment 5, which is disposed above a freezer compartment 7, each of
which is covered by a separate door 9. Yasuzo, ¶ 52.
Figure 1 of Yasuzo is reproduced below:

Figure 1 of Yasuzo depicts a sectional side view of a
refrigerator/freezer. Yasuzo, ¶¶ 52 and 106.
Yasuzo identifies a “refrigerator compartment” 3 as being a separate
compartment from a “vegetable compartment” 5. Id. Yasuzo teaches that
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refrigerator chiller 17 cools both refrigerator compartment 3 and vegetable
compartment 5, which is separately cooled from freezer compartment 7. Id.
at ¶¶ 53-56. Yasuzo describes that “the cold air passes through the
refrigerator compartment 3 and the vegetable compartment 5, then returns
again to the refrigerator chiller 17 in a repeating cycle, as indicated by the
arrows.” Id. at ¶ 56.
Okada
Like Yasuzo, Okada discloses a refrigerator-freezer 1 having an
icemaker disposed in a refrigerating compartment 3 disposed above a
vegetable compartment 5, which is disposed above two freezer
compartments 7 and 9. Each of the compartments is covered by a separate
door 11. Okada, ¶ 30.
Figures 1 and 9 of Okada are reproduced below:

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Figure 1 of Okada depicts a sectional side view of refrigerator-
freezer 1. Okada, ¶¶ 30 and paragraph following ¶ 71 (p. 7,
Brief Description of the Drawings). Figure 9 depicts a sectional
side view with an “operation explanatory diagram” of the flow
of cold air into the refrigerator compartment from the icemaker
compartment. Okada, ¶¶57-61 and paragraph following ¶ 71
(p. 7, Brief Description of the Drawings).
Like Yasuzo, Okada identifies a “refrigerator compartment” 3 as
being a separate compartment from a “vegetable compartment” 5. Id.
Okada describes that refrigerator compartment 3 is cooled by a first
cooler 37, which first cools an icemaker compartment 13 and then the cold
air is circulated to refrigerator compartment 3 by air blower 41. Id. at ¶ 38.
Freezer compartments 7 and 9 are separately cooled by a separate cooler 45.
Id. at ¶ 39. Figure 9 is described as a “fourth embodiment” in which a heat
exchanger for the ice making compartment 13 must cool and circulate first
through the icemaker compartment 13 then a portion is delivered into the
refrigerator compartment 3 through the air flow channel 61 to minimize
excessive cooling and temperature swings of the refrigerator compartment 3.
Id. at ¶ 61. Figure 9 is described such that “the other component elements
are identical to the first embodiment, so the same symbols have been
assigned and a detailed description is omitted.” Id. at ¶ 60. Okada does not
explain expressly how vegetable compartment 5 is cooled. See generally
Okada.
Cur
Cur discloses a refrigerator-freezer 20 having an icemaker in a
refrigerating compartment 30 disposed below a freezer compartment 26.
Cur, col. 3, ll. 35-52.
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Figures 1, 2, 4 and 5 of Cur are reproduced below:

Figure 1 of Cur depicts a perspective view of a refrigerator
having a freezer compartment 26 disposed over a refrigerating
compartment 30. Cur, col. 2, ll. 53-54. Figure 2 depicts a
sectional view of the refrigerator of Figure 1 illustrating the
arrangement of an ice making system 40. Col. 2, ll. 55-57.
Figure 4 depicts a perspective view of a side by side
refrigeration device. Col. 2, ll. 62-64. Figure 5 depicts a
perspective view of a top-mounted refrigerator-freezer. Col. 2,
ll. 65-67.
Figure 2 illustrates the icemaker disposed adjacent the upper surface
of the refrigerator compartment 30. Cur, Figure 2. Cur does not state
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whether Figure 2 depicts a side sectional view or a front sectional view. See
generally Cur.
Figures 1, 4 and 5 of Cur illustrate front plan views of alternative
refrigerator-freezers with ice dispensers in the refrigerator door. Cur, col. 2,
ll. 62-67, col. 3, ll. 4-39, col. 4, l. 60 to col. 5, l. 4; Figures 1, 4 and 5.
However, Cur does not describe expressly how the icemaker of the invention
is disposed within the refrigerator compartment of these embodiments. See
generally Cur.
Swaneck
Swaneck discloses a door gasket for a refrigerator-freezer having a so-
called “French door” refrigerating cabinet 10 disposed above a freezer
compartment 12. The refrigerating cabinet 10 has “right and left doors 14
and 16 are hinged along their right and left vertical edges, respectively, so
that the doors swing away from each other when they are opened.”
Swaneck, col. 2, ll. 48-53.
Figure 1 of Swaneck is reproduced below:

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Figure 1 of Swaneck depicts a front face view of a refrigerator
cabinet of the “French door” type provided with a bottom
mounted freezer section. Swaneck, col. 2, ll. 28-30.
Swaneck describes that “[t]he front face of the refrigerator
compartment is unobstructed by any stationary vertical members against
which the meeting or strike edges of the doors may seal. Hence the gasket at
each of the strike edges is adapted to seal with the corresponding gasket on
the door.” Id. at col. 2, ll. 53-59.
Yamazaki
Yamazaki discloses a refrigerator-freezer having an icemaker
disposed within an inner plate 12 provided on door 9 of the freezer
chamber 22. Yamazaki, ¶¶ 7 and 31. Yamazaki does not describe the
additional compartments of the refrigerator-freezer provided in Figure 5.
Figure 5 of Yamazaki is reproduced below:

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Figure 5 of Yamazaki depicts a perspective view of a body of a
refrigerator with an open freezer compartment “French door”
style door having disposed thereon an icemaker in accordance
with Yamazaki’s invention. Yamazaki, p. 9, col. 1, ll. 5-7.
Figure 5 of Yamazaki illustrates a freezer compartment having
“French door” style doors thereon. Because the icemaker is disposed on one
of the French doors, the icemaker is disposed to one side of the freezer
compartment, when the door is in a closed position and has a width that is
narrower than the door on which it is disposed. Id., Figure 5.
Jackovin
Jackovin discloses a side-by-side refrigerator-freezer 2 having a fresh
food compartment and a freezer compartment respectively covered by
doors 15 and 18. Jackovin, col. 2, ll. 61-64.
Figure 3 of Jackovin is reproduced below:

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Figure 3 of Jackovin depicts a front plan view of refrigerator-
freezer 2 in an open position. Jackovin, col. 2, ll. 43-44.
Jackovin teaches an arrangement in which “the fresh food
compartment is wider in an upper section than in a lower section, while the
freezer compartment is wider in a lower section and more narrow in an
upper section.” Id., col. 1, ll. 59-62. Jackovin states that “with this
construction, the upper section of the fresh food compartment and the lower
section of the freezer compartment can accommodate larger food items than
previously possible.” Id., col. 2, ll. 5-8.
Anticipation (Grounds 1, 1A, 1B, 1C, and 2-4)
Claim 1, as representative of all of the claims on appeal
Issue
The issue with respect to claim 1 is:
Did the Examiner err in finding that Yasuzo teaches a refrigerator
having a pair of doors for a “refrigerating compartment” with a first door
that covers “a first area of the refrigerating compartment” and a second door
that covers “a second area of the refrigerating compartment” that is different
from the first area?
Analysis
The Requester proposed, and the Examiner agreed, that refrigerator
compartment 3 and vegetable compartment 5 of Yasuzo together constitute a
“refrigerating compartment” within the scope of the claims having different
areas covered by separate doors. RAN 4 and 67-68; Req. Res. Br. 2-5.
Patent Owner contends that (a) the term “refrigerating compartment”
as recited in claim 1 requires “a single refrigerating compartment that is
covered by first and second doors” and (b) that Yasuzo discloses two
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separate refrigerating compartments, namely refrigerating compartment 3
and vegetable compartment 5, each of which is covered by a single door.
PO App. Br. 10-16.
During reexamination, “claims . . . are to be given their broadest
reasonable interpretation consistent with the specification, and . . . claim
language should be read in light of the specification as it would be
interpreted by one of ordinary skill in the art.” In re Am. Acad. of Sci. Tech.
Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004) (quoting In re Bond, 910 F.2d
831, 833 (Fed. Cir. 1990)).
The Specification of the ’098 Patent does not use the term
“refrigerating compartment.” Rather the ’098 Patent describes a single top-
mounted “refrigerator chamber 3” provided over a single bottom-mounted
“freezer chamber 5” which are vertically portioned by a barrier 4.
’098 Patent, col. 5, ll. 45-52. Figure 5 of the ’098 Patent is provided below.

Figure 5 of the ’098 Patent depicts front view showing the
internal configuration of a refrigerator in a state where doors of
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a refrigerating chamber are opened and doors of a freezing
chamber are removed. ’098 Patent, col. 5, ll. 23-26.
Patent Owner relies on Figure 5 for suggesting that claim 1 is limited
to “different areas of a single refrigerating compartment that is defined at a
single portion of a refrigerator body” because the example refrigerator is
arranged in just such a manner. PO Reb. Br. 3. Requester argues that a
“refrigerating compartment” is “a compartment where food can be stored at
a cold temperature above freezing.” Req. Res. Br. 4. Requester contends
that the presence of a partition wall does not preclude two areas together
from forming a refrigerating compartment, nor is a “refrigerating
compartment” dependent upon the type of food stored therein. Req. Res. Br.
2-5.
We determine that the term “refrigerating compartment” as recited in
claim 1 is not adequately limited by either the Specification of the
’098 Patent nor by the language of the claim itself to preclude the
compartment from being physically divided by an insulating wall. We note
that the ice making chamber 20 of the ’098 Patent is disposed within the
refrigerating compartment, even though it has insulating walls physically
separating the ice making compartment from the rest of the refrigerating
compartment. Moreover, we find that one of ordinary skill in the art, based
on the ’098 Patent, would characterize a refrigerating compartment to the
extent that it is a compartment for storing fresh food that is distinguishable
from a freezing compartment, which has a temperature below freezing.
Patent Owner further argues that Yasuzo, by defining a refrigerating
compartment as a separate and distinct compartment from a vegetable
compartment and not merely different sections of a single refrigerating
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compartment, fails to describe a single refrigerating compartment with two
doors. PO App. Br. 11-15.
We are not persuaded that Yasuzo does not teach a single
“refrigerating compartment” as recited in the claims, merely because Yasuzo
uses the phrase “refrigerating compartment” separately from the phrase
“vegetable compartment.” As discussed above, the broadest reasonable
interpretation of the term “refrigerating compartment” as claimed, does not
preclude the physically separated “compartments” of Yasuzo. The
Examiner’s and Requester’s interpretation is reasonable and consistent with
the Specification as one of ordinary skill in the art would have understood it.
We agree with the Examiner and the Requester in that the
characteristics of the vegetable compartment of Yasuzo are consistent with
those of an area of a “refrigerating compartment” as claimed, in that it is a
cooled area, distinguished from the freezing compartment, for storing fresh
foods. In particular, we note that Yasuzo expressly describes that cold air
from the same cooling mechanism is circulated through both compartments,
suggesting that the compartments are not entirely physically separated.
Yasuzo, ¶¶ 53-56. Thus, the mere presence of a well between the
“refrigerating compartment 3” and the “vegetable compartment 5” is
insufficient to distinguish Yasuzo from having a “refrigerating
compartment” covered by a pair of doors as claimed.
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Obviousness
Claim 1, as representative of all of the claims on appeal
Issue
Claim 1 requires a refrigerator having a pair of doors for a
“refrigerating compartment” with a first door that covers “a first area of the
refrigerating compartment” and a second door that covers “a second area of
the refrigerating compartment” that is different from the first area, such that
the first door covers an ice storage bin positioned to one side thereof.
The issue with respect to each of the obviousness rejections on appeal
is the same with respect to claim 1:
Did the Examiner err in determining that that the above-noted
requirements of claim 1 would have been obvious to one of ordinary skill in
the art over the teachings of Okada and Yasuzo and over the teachings of
Cur, Swaneck and Yamazaki?
Obviousness based on Okada and Yasuzo (Grounds 5, 5A, 5B, 5C,
and 6-8)
The Requester proposed, and the Examiner adopted, substantially the
same findings and conclusions with respect to Okada as with Yasuzo, i.e.,
that refrigerator compartment 3 and vegetable compartment 5 of Okada
together constitute a “refrigerating compartment” within the scope of the
claims having different areas covered by separate doors. RAN 25 and 67-
68; Req. Res. Br. 5-7.
Patent Owner likewise presents similar arguments, namely that a
proper interpretation of “refrigerating compartment” of the claims does not
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read on Okada’s separate “refrigerating compartment 3” and “vegetable
compartment 5” combined.
Based on the claim interpretation discussed above, we affirm the
Examiner’s rejections based on Okada and Yasuzo for the same reasons,
namely that Okada teaches, as does Yasuzo, combined areas that constitute a
“refrigerating compartment” covered by a pair of doors as recited in the
claims.
Obviousness based on Cur, Swaneck, and Yamazaki (Grounds 9, 9A,
9B, and 10-13)
The Requester proposed, and the Examiner found, that Swaneck
teaches that it was known in the art to have a pair of so-called “French
doors” on a refrigerating compartment with each door covering separate
areas of the compartment for accessing or not allowing access to such areas
when the doors are opened and closed, respectively. RAN 50; Req. Res. Br.
7.
The Requester proposed, and the Examiner adopted, a number of
different rationales for why it would have been obvious to use a pair of
doors, as taught by Swaneck, to open and close the refrigerating
compartment comprising an icemaker, as taught by Cur. RAN 50. Patent
Owner does not dispute the obviousness of combining the teachings of Cur
and Swaneck. See generally PO App. Br. 19-23.
Further, the Requester proposed, and the Examiner found, that
Yamazaki teaches the claimed relative orientation of the ice storage bin
relative to a first and second door of a compartment. RAN 51, 69, and 72.
The Requester proposed, and the Examiner adopted, a number of different
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rationales for why it would have been obvious to modify the combined
teachings above to further provide an ice storage bin on one side so as to be
covered by only a first of the pair of doors, such as the ice storage bin
configuration of Yamazaki. These reasons are as follows (enumerated for
clarity):
(a) to yield predictable results of saving space in the
refrigerating compartment and making the ice storage bin easily
accessible, solving the problem of efficiently using the space in
the refrigerating compartment;
(b) it would have been obvious to try combining the
references because there is only a finite number of identified,
predictable solutions to the problems of efficiently storing ice
and ice storage on one side of a “French door” style door is one
well known configuration in the art;
(c) selection of an ice storage bin configuration is a matter of
style and/or design choice; and
(d) combining the references would involve mere
substitution and arrangement of parts, requiring no more than
routine skill in the art.
RAN 52.
We agree with the Examiner that it would have been obvious to
modify the refrigerator of Cur having French doors as taught by Swaneck to
further provide an ice storage bin on one side of a first door so as to be
covered by only the first of the pair of doors, such as the ice storage bin
configuration of Yamazaki.
Patent Owner contends that a person of ordinary skill in the art would
not have seen the teachings of Yamazaki as being directly applicable to
refrigerator of Cur because of the different challenges of producing ice
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within a freezer and a refrigerating environment. PO App. Br. 21. Patent
Owner also contends that the teachings of Cur and Yamazaki could not be
combined because Cur’s ice making apparatus “spans a substantial portion
of the fresh food compartment” and because “a door lacks the substantial
volume needed to accommodate the awkward dimensions of Cur’s ice
making device.” Id. at 22. Patent Owner cites paragraph 37 of the Beck
Declaration in support of these arguments.
Dr. Beck testifies that “[a]s is depicted by Cur’s FIGS. 2 and 3, Cur’s
ice making device spans a substantial portion of the fresh food compartment
30, extending from one wall of the fresh food compartment 30 to another.”
Beck Decl. ¶ 37. Dr. Beck then testifies that “[t]hese attributes make Cur’s
ice making device and ice bin unsuitable for inclusion on a door because
evaporator tubing is generally not suitable for positioning on a refrigerator
door and the door itself lacks the substantial volume needed to accommodate
the awkward dimensions of Cur’s ice making device.” Id.
We are not persuaded by Patent Owner’s arguments. Contrary to the
Patent Owner’s arguments, “[i]t is well-established that a determination of
obviousness based on teachings from multiple references does not require an
actual, physical substitution of elements.” In re Mouttet, 686 F.3d 1322,
1332 (Fed. Cir. 2012); see also In re Etter, 756 F.2d 852, 859
(Fed.Cir.1985) (en banc) (“[T]he criterion [is] not whether the references
could be physically combined but whether the claimed inventions are
rendered obvious by the teachings of the prior art as a whole.”).
The icemaker of Cur addresses producing ice within a refrigerating
environment as opposed to a freezing environment. The Examiner has made
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clear that he is relying on the teaching of Yamazaki only with reference to
the positioning of an ice storage bin with respect to only one of two French
doors. RAN 51, 69, and 72. Here, it is the combined teachings that render
the claimed invention obvious. Positioning the ice storage bin of Cur with
respect to only one of the two refrigerator French doors of Swaneck would
be no more than a predictable use of a known configuration for storing ice
within a compartment. KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 417
(2007) (holding that the question to be asked is “whether the improvement is
more than the predictable use of prior art elements according to their
established functions.”).
Moreover, the Examiner’s rejection is not premised on repositioning
the entire ice making system on a compartment door, as suggested by Patent
Owner’s arguments. Rather, the Examiner expressly relies on Yamazaki as
teaching the requirement of claim 1 that the ice storage bin is “provided at
one side of the first door” such that the first door covers the ice storage bin
when closed and enables access to the ice storage bin when open. RAN 51,
69, and 72.
While Figure 2 of Cur illustrates the combination of an icemaker and
ice storage bin 50 extending from one compartment wall to another,
14
it is
unclear from the teachings in Cur whether Figure 2 is a front cross sectional
view of the refrigerating compartment or a side cross-sectional view of the
refrigerating compartment. Thus, it is unclear if the system extends across
the width (i.e., side-to-side) or from front-to-back within the compartment.

14
Cur’s Figure 3, which depicts an alternative ice making system (Cur,
col. 2, ll. 58-59), is illustrated without reference to the dimensions of the
refrigerating compartment and, thus, does not support Dr. Beck’s statement.
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If from front-to-back, Patent Owner has not shown that such an arrangement
would be inconsistent with having an ice storage bin positioned to one side
of a refrigerating compartment as taught by Yamazaki, since all that Cur’s
Figure 2 would have demonstrated is the ice storage bin to the front (or
back) of the refrigerating compartment. If the orientation is from side-to-
side across the width of the refrigerating compartment, the ice storage bin 50
is positioned to only one side of the refrigerating compartment, consistent
with the Examiner’s reasoning that the skilled artisan would have
understood such an ice storage bin could be covered by only one of
Swaneck’s pair of French doors, as suggested by the teachings of Yamazaki.
Claims 22, 23, 25 and 26
Okada or Yasuzo in view of Swaneck and Jackovin
(Grounds 1B and 5B)
Issues
The issues with respect to both obviousness rejections on appeal are
the same with respect to claim 22:
Did the Examiner err in determining that one of ordinary skill in the
art would have provided a pair of refrigerator compartment doors wherein
the first and second doors have different widths based on the further
teachings of Jackovin?
Analysis
The Examiner found that “Jacovin [sic] discloses a refrigerator with
French style doors wherein the first and second doors have different widths.”
RAN 11, 34, and 55. The Requester proposed, and the Examiner adopted, a
number of different rationales for why it would have been obvious to modify
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the combined teachings above to further provide French doors of different
widths on a refrigerating compartment. These reasons are as follows (again
enumerated for clarity):
(a) to maximize operational efficiency by making access to
the refrigerating compartment easier;
(b) to yield predictable results of providing accessibility to
the refrigerator in line with consumer demand, solving the
problem of how to more easily access portions of the
refrigerator that are more commonly used;
(c) it would have been obvious to try combining the
references because there is only a finite number of identified,
predictable door configurations and using a pair of doors with
various widths was one well known configuration in the art;
(d) selection of an door widths is a matter of style and/or
design choice; and
(e) combining the references would involve mere
substitution and arrangement of parts, requiring no more than
routine skill in the art.
RAN 12 and 34-35.
Patent Owner contends Jackovin does not suggest a pair of
refrigerator door having different widths because it teaches a freezer door
and a refrigerator door having different width to accommodate the desire to
place wider food items in one of the two different compartments. PO App.
Br. 23. According to the Patent Owner, where French doors cover only the
refrigerator compartment that “spans the entire width of the standard size
refrigerator opening” the pair of doors taught by Yasuzo, Okada, and
Swaneck “do not suffer from the same drawback of side-by-side
refrigerators” because “an entire width of the standard sized refrigerator
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opening is already available to accommodate wide food items.” PO App
Br. 24.
We agree with the Patent Owner that the teachings of Jackovin would
not have suggested to one of ordinary skill in the art to have a pair of doors
over a refrigerating compartment to be different widths. As discussed
above, a refrigerator compartment is distinguishable from a freezer
compartment, though not from other compartments for storing fresh foods.
Jackovin teaches the doors of a freezer compartment and a refrigerating
compartment both having various wider and narrower portions. Jackovin,
col. 1, ll. 55-58, Figure 2. However, Jackovin says nothing regarding a pair
of doors covering a refrigerating compartment, because it has only one door
covering a refrigerating compartment and one door covering a freezer
compartment. In particular, Jackovin does not suggest to the skilled artisan
that the refrigerator compartment French doors of Swaneck should be
different widths.
The evidence does not support the Examiner’s positions (a)-(e). The
evidence does not show that the skilled artisan would have considered
altering French door widths for the purposes of easier or more efficient
access to the refrigerating compartment, because Jackovin does not teach
such a feature. Nor does the evidence show that different widths was one of
a finite number of door configurations, or that door width selection is routine
or a design choice in the refrigerator art.
Accordingly, we reverse the Examiner’s rejection of claim 22 based
on Okada or Yasuzo in view of Swaneck and Jackovin. Patent Owner
presents separate arguments for dependent claims 23, 25, and 26. Because
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these claims depend from and include the limitations of claim 22, we reverse
the Examiner’s corresponding rejection of those dependent claims for the
same reasons discussed above with respect to claim 22.
Cur, Swaneck, Yamazaki and Jackovin
(Ground 9A)
Issues
The issue with respect to claim 22 is:
Did the Examiner err in determining that one of ordinary skill in the
art would have provided a pair of refrigerator compartment doors wherein
the first and second doors have different widths based on the teachings of
Cur, Swaneck, Yamazaki, and Jackovin?
The issue with respect to claim 23 is:
Did the Examiner err in determining that one of ordinary skill in the
art would have provided an ice storage bin having a width less than the
width of a first door covering it based on the teachings of Cur, Swaneck,
Yamazaki, and Jackovin?
The issue with respect to claim 25 is:
Did the Examiner err in determining that one of ordinary skill in the
art would have provided first and second drawer boxes corresponding to first
and second doors, respectively, wherein the drawer boxes are of equal or
lesser width than the respective doors based on the teachings of Cur,
Swaneck, Yamazaki, and Jackovin?
The issue with respect to claim 26 is:
Did the Examiner err in determining that one of ordinary skill in the
art would have provided a pair of refrigerator compartment doors wherein
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the first doors covering an ice storage bin has a smaller width than the
second door based on the teachings of Cur, Swaneck, Yamazaki, and
Jackovin?
Analysis
The Examiner found that “Yamazaki discloses a refrigerator with
French Style doors (Fig. 5) wherein the first door has a first width and a
second door has a second width that is different than the first width and an
ice maker with a third width which is less than the first width.” RAN 54.
The Examiner also found that Jackovin teaches these features. Id. at 55.
The Requester proposed, and the Examiner adopted, the same
rationales for why it would have been obvious to modify the combined
teachings above to further provide French doors of different widths on a
refrigerating compartment as discussed above. RAN 55.
Patent Owner’s arguments are based only on the teachings of
Jackovin. PO App. Br. 23-28.
With respect to claims 22 and 23, the Examiner found that Yamazaki
also teaches first and second compartment doors of different widths, as
recited in claim 22 and an icemaker less than the width of the first door, as
recited in claim 23. Patent Owner presents no meaningful argument or
evidence addressing the Examiner’s findings that compartment “French
doors” of different widths and that having an ice storage bin smaller than
one of the “French doors” was known in the art as evidenced by Yamazaki.
In light of this finding, we agree with the Examiner that using French doors
of different widths would be no more than a predictable use of a known door
configuration for covering a compartment and affirm the rejection of claim
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22. Similarly, we agree with the Examiner that having an ice storage bin
narrower than the first of a pair of French doors which covers the ice storage
bin would be no more than a predictable use of a known configuration for
providing an ice storage bin in a compartment covered by French doors and
affirm the rejection of claim 22.
Accordingly, we affirm the Examiner’s rejection of claims 22 and 23
as being obvious over the teachings of Cur, Swaneck, Yamazaki, and
Jackovin.
With respect to claims 25 and 26, the Examiner relies solely on the
teachings of Jackovin. We disagree with the Examiner and Requester that
any of Cur, Swaneck, Yamazaki or Jackovin suggests to the skilled artisan
the use of first and second drawer boxes corresponding to first and second
French doors, respectively, wherein the drawer boxes are of equal or lesser
width than the respective doors. Namely, we find that Jackovin’s drawer
boxes are sized to correspond to a freezer door and a refrigerator door
respectively, not to a pair of doors over the same compartment. The
Examiner has not explained why it would have been obvious to have these
separate bins positioned within a compartment configured with French
doors, such as Swaneck.
Similarly, we disagree with the Examiner and Requester that any of
Cur, Swaneck, Yamazaki or Jackovin suggests to the skilled artisan the use
of French doors wherein the first door covering the ice storage box is smaller
than the second door. Namely, we find that Jackovin’s doors correspond to
a freezer door and a refrigerator door respectively, rather than to a pair of
doors over the same compartment as claimed. Further, Figure 5 of
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Yamazaki shows that the “first” door covering the ice storage bin is larger
than the “second” of the pair of the French doors, which is the opposite of
the door arrangement of claim 26.
Accordingly, we reverse the Examiner’s rejection of claims 25 and 26.
DECISION
In sum, we affirm the Examiner’s decision to reject:
1. Claims 1, 3, 5, 7-13, and 18-20 under 35 U.S.C. § 102
over Yasuzo. (Ground 1, RAN 4.)
2. Claims 21, 27, and 29 under 35 U.S.C. § 103 over
Yasuzo and Swaneck. (Ground 1A, RAN 8.)
3. Claim 30 under 35 U.S.C. § 103 over Yasuzo, Swaneck,
and Jackovin. (Ground 1B, RAN 10.)
4. Claims 31-36 under 35 U.S.C. § 103 over Yasuzo and
Grimes. (Ground 1C, RAN 15.)
5. Claim 2 under 35 U.S.C. § 103 over Yasuzo and Koons.
(Ground 2, RAN 18.)
6. Claims 4 and 14-17 under 35 U.S.C. § 103 over Yasuzo
and Fisher. (Ground 3, RAN 20.)
7. Claim 6 under 35 U.S.C. § 103 over Yasuzo and Kwon.
(Ground 4, RAN 24.)
8. Claims 1, 3, 5, 7-13, and 18-20 under 35 U.S.C. § 103
over Okada and Yasuzo. (Ground 5, RAN 25.)
9. Claims 21, 27, and 29 under 35 U.S.C. § 103 over Okada,
Yasuzo, and Swaneck. (Ground 5A, RAN 31.)
10. Claims 30 under 35 U.S.C. § 103 over Okada, Yasuzo,
Swaneck, and Jackovin. (Ground 5B, RAN 34.)
11. Claims 31-36 under 35 U.S.C. § 103 over Okada,
Yasuzo, and Grimes. (Ground 5C, RAN 38.)
12. Claim 2 under 35 U.S.C. § 103 over Okada, Yasuzo, and
Koons. (Ground 6, RAN 41.)
13. Claims 4 and 14-17 under 35 U.S.C. § 103 over Okada,
Yasuzo, and Fisher. (Ground 7, RAN 43.)
14. Claim 6 under 35 U.S.C. § 103 over Okada, Yasuzo, and
Kwon. (Ground 8, RAN 47.)
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15. Claims 1, 3, 5, 8-13, 18, 20, 21, 27, and 29 under 35
U.S.C. § 103 over Cur, Swaneck, and Yamazaki. (Ground 9,
RAN 48.)
16. Claim 22, 23, and 30 under 35 U.S.C. § 103 over Cur,
Swaneck, Yamazaki, and Jackovin. (Ground 9A, RAN 54.)
17. Claims 31-36 under 35 U.S.C. § 103 over Cur, Swaneck,
Yamazaki, and Grimes. (Ground 9B, RAN 58.)
18. Claim 2 under 35 U.S.C. § 103 over Cur, Swaneck,
Yamazaki, and Koons. (Ground 10, RAN 61.)
19. Claims 4, 5, 14-17, and 19 under 35 U.S.C. § 103 over
Cur, Swaneck, Yamazaki, and Fisher. (Ground 11, RAN 63.)
20. Claim 6 under 35 U.S.C. § 103 over Cur, Swaneck,
Yamazaki, and Kwon. (Ground 12, RAN 64.)
21. Claim 7 under 35 U.S.C. § 103 over Cur, Swaneck,
Yamazaki, and Yasuzo. (Ground 13, RAN 65.)
We reverse the following rejections:
1. Claims 22, 23, 25, and 26 under 35 U.S.C. § 103 over
Yasuzo, Swaneck, and Jackovin. (Ground 1B, RAN 10.)
2. Claims 22, 23, 25, and 26 under 35 U.S.C. § 103 over
Okada, Yasuzo, Swaneck, and Jackovin. (Ground 5B, RAN
34.)
3. Claims 25 and 26 under 35 U.S.C. § 103 over Cur,
Swaneck, Yamazaki, and Jackovin. (Ground 9A, RAN 54.)

TIME PERIOD FOR RESPONSE
In accordance with 37 C.F.R. § 41.79(a)(1), the “[p]arties to the
appeal may file a request for rehearing of the decision within one month of
the date of: . . . [t]he original decision of the Board under § 41.77(a).” A
request for rehearing must be in compliance with 37 C.F.R. § 41.79(b).
Comments in opposition to the request and additional requests for rehearing
must be in accordance with 37 C.F.R. § 41.79(c) & (d), respectively. Under
37 C.F.R. § 41.79(e), the times for requesting rehearing under paragraph (a)
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31
of this section, for requesting further rehearing under paragraph (d) of this
section, and for submitting comments under paragraph (c) of this section
may not be extended.
An appeal to the United States Court of Appeals for the Federal
Circuit under 35 U.S.C. §§ 141-144 and 315 and 37 C.F.R. § 1.983 for an
inter partes reexamination proceeding “commenced” on or after November
2, 2002 may not be taken “until all parties’ rights to request rehearing have
been exhausted, at which time the decision of the Board is final and
appealable by any party to the appeal to the Board.” 37 C.F.R. § 41.81. See
also MPEP § 2682 (8th ed., Rev. 7, July 2008).

AFFIRMED-IN-PART

ak

PATENT OWNER:
Fish & Richardson, PC
P.O. Box 1022
Minneapolis, MN 55440-1022

THIRD-PARTY REQUESTER:

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