Ex Parte Buchstab et al

Patent Trials and Appeals Board

Apr 22, 2014

12085939 - (D) (P.T.A.B. Apr. 22, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte MARTIN BUCHSTAB, IRENE DUMKOW,
ADOLF FEINAUER, KLAUS FLINNER, BERND HEGER,
PETER NALBACH, and KASIM YAZAN
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Appeal 2012-002023
Application 12/085,939
Technology Center 3700
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Before: ANTON W. FETTING, BIBHU R. MOHANTY, and
GEORGE R. HOSKINS, Administrative Patent Judges.

HOSKINS, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Martin Buchstab et al. (“Appellants”) appeal under 35 U.S.C. § 134
from the Examiner’s decision rejecting claims 13, 17–20, 22, and 24. We
have jurisdiction over this appeal under 35 U.S.C. § 6(b).
We AFFIRM.
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CLAIMED SUBJECT MATTER
Claim 13 illustrates the subject matter on appeal:
13. A refrigeration appliance comprising:
a heat-insulating housing;
a storage compartment for refrigerated items, the storage
compartment being located in the heat-insulating housing;
a water reservoir;
a blower for propelling a cold air stream sourced from an
evaporator; and
a distributor device, the distributor device being operable
to distribute the cold air stream in a controlled manner via at
least two circulation paths with a first one of the circulation
paths being in closer thermal contact with the water reservoir
than a second one of the circulation paths.
See App. Br., Clms. App’x.
REJECTIONS
Appellants request our review of the following rejections. See App.
Br. 4.
Claims 13, 17–20, 22, and 24 are rejected under 35 U.S.C. § 112, first
paragraph, as failing to satisfy the enablement requirement.
Claims 13, 17–20, 22, and 24 are rejected under 35 U.S.C. § 102(b) as
anticipated by Rudick (US 4,970,871, iss. Nov. 20, 1990).
Claims 13, 17–20, 22, and 24 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Rudick and Thompson (US 4,704,874, iss. Nov. 10,
1987).
ANALYSIS
Enablement
As the basis for the enablement rejections, the Examiner states “[t]he
construction of the distributor device 21 of Fig. 4 is still not understood,”
“especially . . . how the distributor device as shown in Fig. 4 and described
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in the specification as originally filed operates to divide the air stream from
the evaporator 6 into the first and second air circulation paths 20 and
13 . . . .” Ans. 4.
A specification is not enabling if a person of ordinary skill in the art
would require “undue experimentation” to practice the claimed invention. In
re Wands, 858 F.2d 731, 736–37 (Fed. Cir. 1988). “The key word is
‘undue,’ not ‘experimentation.’” Id. at 737 (quoting In re Angstadt, 537
F.2d 498, 504 (CCPA 1976)). “A patent need not disclose what is well
known in the art.” Id. at 735. Thus, enablement is not negated if a
reasonable amount of experimentation is required in order to practice the
claimed invention. See Enzo Biochem, Inc. v. Calgene Inc., 188 F.3d 1362,
1371 (Fed. Cir. 1999).
In this case, both the Examiner and Appellants focus their arguments
on the embodiment of Figures 4 and 5 of the application. See Ans. 4, 6;
App. Br. 5–6; Reply Br. 3. We do likewise. As described in the application,
valve 21 of Figure 4 operates to distribute cold air into either (a) two outer
distributor channels 20 of door 8, or (b) middle cooling duct 13 of door 8.
See Spec. 6:26–29, 7:7–12. The only structure identified in the application
to perform that function is the term “valve,” and the illustration of valve 21
in Figure 4. We agree with the Examiner that the application as filed lacks
any description, in either the written specification or the drawings, showing
how valve 21 would work to perform the identified distribution function.
See Ans. 6. Nonetheless, air valve and delivery technology is not so
complicated that undue experimentation would be required for one of
ordinary skill to make a valve performing the distribution function described
in the specification. Therefore, the Examiner has not established by a
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preponderance of the evidence any lack of enablement of the embodiment of
Figures 4 and 5 in the application.
Anticipation by Rudick
Independent claims 13 and 24 both recite “a distributor device
operable to distribute the cold air stream in a controlled manner via at least
two circulation paths with a first one of the circulation paths being in closer
thermal contact with the water reservoir than a second one of the circulation
paths.” App. Br., Clms. App’x. Appellants contend Rudick fails to disclose
that combination of features. See App. Br. 6–11. We, however, agree with
the Examiner that Rudick’s carbonator by-pass valve 34 is a distributor
device as recited in these claims. See Ans. 5 (basis for rejection), 6–8
(response to argument).
More particularly, when valve 34 is in the “closed” position illustrated
in Figure 4 of Rudick, cold air (represented by arrows) is directed along a
first path through insulated duct 32 which leads to carbonator 30 and then
refrigerator compartment 14. See Rudick, 3:24–34; Ans. 6–7. By contrast,
when valve 34 is in an “open” position (not shown in Figure 4), cold air is
directed along a second path down “straight into the refrigerator
compartment 14.” Rudick, 3:34–36; see also Ans. 6–7. Thus, the first path
is in closer thermal contact with carbonator 30 than the second path, as
required by claims 13 and 24.
Appellants contend Rudick’s carbonator 30 is not a “water reservoir”
as recited in claims 13 and 24. See App. Br. 8, 9–10, 11. We, however,
agree with the Examiner that carbonator 30 is disclosed as storing
carbonated water, and is therefore a water reservoir. See Ans. 7–8. For
example, Rudick indicates its system “dispens[es] a chilled carbonated
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liquid such as water” and the chilling is effected by cooling carbonator 30.
See Rudick, abs., 1:22–30, 1:50–2:6. Rudick additionally indicates
“carbonated water from the carbonator 30 is directed to a dispensing
mechanism in door 18 . . . .” Id. at 4:31–34.
Appellants also attempt to distinguish Rudick from the pending claims
by reference to door components such as “distributor channels 20 including
an opening 27 and a plurality of outlet apertures 29, and the flat plastic shell
30 including an opening 26 and an opening 40.” App. Br. 8–9; see also id.
at 10 (discussing two outer openings 27 and a middle opening 28 of a door).
We are not persuaded, because as the Examiner notes, the pending claims
fail to recite any such door components. See Ans. 7.
Appellants do not argue for the patentability of dependent claims 17–
20 and 22 separately from their common parent independent claim 13.
Therefore, for the reasons provided with respect to independent claims 13
and 24, we sustain the Examiner’s rejections of claims 13, 17–20, 22, and 24
as anticipated by Rudick.
Obviousness over Rudick and Thompson
As an alternative to the anticipation rejections based on Rudick, the
Examiner rejected all pending claims as unpatentable over Rudick in view of
Thompson. See Ans. 5. Having sustained the anticipation rejections, we
need not reach these alternative rejections.
DECISION
The rejections of claims 13, 17–20, 22, and 24 as failing to satisfy the
enablement requirement are not sustained. The rejections of those claims as
anticipated by Rudick are sustained. We do not reach the rejections of those
claims as unpatentable over Rudick and Thompson.
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No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED

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