Ex Parte Buehrle et al

Patent Trial and Appeal Board

Aug 7, 2017

13451576 (P.T.A.B. Aug. 7, 2017)

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.
13/451,576 04/20/2012 Sascha Buehrle 2012P00111US 3523
46726 7590 08/09/2017
RS»H Home. Ann1ianrp.s Pomoratinn
EXAMINER
100 Bosch Boulevard
NEW BERN, NC 28562
ARANT, HARRY E
ART UNIT PAPER NUMBER
3744
NOTIFICATION DATE DELIVERY MODE
08/09/2017 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):
MBX-NBN-IntelProp@bshg.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SASCHA BUEHRLE and MANFRED W. STAEBLER
Appeal 2015-007650
Application 13/451,576
Technology Center 3700
Before JOHN C. KERINS, WILLIAM A. CAPP, and
SEAN P. O’HANLON, Administrative Patent Judges.
CAPP, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants seek our review under 35 U.S.C. § 134 of the final
rejection of claims 1—17, 19, and 20. We have jurisdiction under 35 U.S.C.
§ 6(b).
We AFFIRM-IN-PART.
Appeal 2015-007650
Application 13/451,576
THE INVENTION
Appellants’ invention relates to an ice maker for a refrigerator-freezer.
Spec. 11. Claim 9, reproduced below with the claim language at issue
highlighted in italics, is illustrative of the subject matter on appeal.
9. An ice making device, comprising:
an ice tray, wherein the ice tray includes:
at least one receiving part that receives water for
freezing into clear ice, the at least one receiving part having
an opening provided at a top portion thereof through which
the water is supplied and the clear ice is discharged from
the at least one receiving part; and
at least one oscillator disposed on the ice tray, the at least
one oscillator arranged to vibrate the ice tray to keep the water
moving during production of the ice, and the at least one
oscillator being configured to vibrate the ice tray to release the
ice from the ice tray; and
a microcontroller configured to control the oscillator,
wherein the microcontroller is configured to operate the
oscillator at a different frequency and/or a higher amplitude
when releasing the ice than when keeping the water moving
during the production of the ice.
The Examiner relies upon the following as evidence in support of the
THE REJECTIONS
rejections:
Fink
Hoyt
Baldus
Matsui
US 2,990,701
US 3,224,213
US 4,178,776
JP 05-322398 A
July 4, 1961
Dec. 21, 1965
Dec. 18, 1979
Dec. 7, 1993
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Appeal 2015-007650
Application 13/451,576
The following rejections are before us for review1:
1. Claims 17, 19, and 20 are rejected under 35 U.S.C. § 112, second
paragraph, as being indefinite for failing to particularly point out and
distinctly claim the subject matter which the applicant regards as the
invention.
2. Claims 1, 3—7, 9, 11—15, 17, and 19 are rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Hoyt and Baldus.2
3. Claims 2 and 10 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Hoyt, Baldus, and Fink.
4. Claims 5 and 13 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Hoyt.
5. Claims 2 and 10 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Hoyt and Fink.
6. Claims 8, 16, and 20 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Hoyt and Matsui.
OPINION
Indefiniteness of Claims 17, 19, and 20
The Examiners rejects claim 17 as indefinite because the limitation
“the at least one oscillator” in claim 17 lacks antecedent basis. Final
Action 3. Appellants do not challenge this ground of rejection, which is
hereby summarily sustained. See Manual of Patent Examining Procedure
1 A rejection of claims 1, 3, 4, 6, 7, 9, 11, 12, 15, 17, and 19 under 35 U.S.C.
§ 102(b) as anticipated by Hoyt has been withdrawn. Ans. 2. We view the
Examiner’s failure to specifically mention claim 12 in the withdrawal as a
typographical error.
2 The Examiner inadvertently failed to specifically reject claim 14 in the
final rejection. This omission was corrected in the Answer.
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Application 13/451,576
(MPEP) § 1205.02, 9th ed., Rev. Nov. 2015 (“If a ground of rejection stated
by the examiner is not addressed in the appellant’s brief, appellant has
waived any challenge to that ground of rejection and the Board may
summarily sustain it”).
Unpatentability of Claims 1, 3—7, 9, 11—13, 15, 17, and 19
over Hoyt and Baldus
Claim 1
The Examiner finds that Hoyt discloses the invention of claim 1
except for a microcontroller that changes the frequency and/or amplitude of
vibrations between: (1) producing the clear ice; and (2) releasing the clear
ice from the tray. Final Action 8—9. The Examiner relies on Baldus as
disclosing a controller for an oscillator that changes frequency and/or
amplitude when releasing ice “from a heat exchanger surface.” Id. at 9
(citing Baldus, col. 5,11. 21—32). The Examiner concludes that it would
have been obvious to a person of ordinary skill in the art at the time of the
invention to modify Hoyt to increase frequency and/or amplitude when
releasing ice. Id. According to the Examiner, a person of ordinary skill in
the art would have done this to increase shear force and ensure ice
separation. Id.
Appellants traverse the Examiner’s rejection by arguing that Baldus
does not teach increasing the frequency and/or amplitude to release clear ice
from an ice tray. Appeal Br. 12—14. Appellants contend that Baldus is
directed to forming, and then removing, ice crystals in an aqueous solution
to form a concentrate of the solution. Id. at 13. According to Appellants, a
person of ordinary skill in the art would not have been inclined to use the
teaching of Baldus to increase frequency and/or amplitude to release clear
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Application 13/451,576
ice from an ice tray. Id. at 14 (“Baldus teaches to vary the oscillation
frequency due to different (or changing) concentration of a solution”).
In response, the Examiner states that Baldus is only relied on to teach
increasing the frequency of an oscillator to increase the shearing force of a
surface “to ensure dislodgement of ice.” Ans. 11 (citing Baldus, col. 5,
11. 21—32). The Examiner further states:
Hoyt, Jr. clearly teaches operating an oscillator when releasing
clear ice and during the production of the clear ice (Hoyt Jr.,
col. 2, lines 61-68 and 56-58). Thus, it would have been clearly
obvious to have dislodgment phase of Hoyt Jr. to have a higher
frequency and/or amplitude.
Id.
Hoyt is directed to forming clear machine manufactured ice in cube or
other forms. Hoyt, col. 1,11. 7—12. Baldus, unlike Hoyt, does not make ice
cubes; rather, Baldus increases the concentration of a solution by forming
and removing frozen crystals:
[A] method for crystallizing out solvent components of a
solution to concentrate the solution and thereby form an
inspissate therefrom wherein the cool surface in contact with
the solution is vibrated for periods which alternate with rest
periods or no vibration periods.
According to the invention, therefore, the solution is
brought into contact with an internally cooled heat exchange
surface which is in contact with the solution and at the
solid/liquid interface abstracts heat from the solution to freeze
out solvent components thereof and thereby concentrate the
solution.
Baldus, col. 2,1. 68 — col. 3,1. 11. It is true that Baldus vibrates a surface on
which frozen crystals are formed, but such surface is not an ice cube tray.
The vibration and the resulting shear forces induced in Baldus are not
entirely between solid, frozen ice cubes, and an ice cube tray. Instead there
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Application 13/451,576
is an interaction between the vibrating surface, frozen crystals formed on the
vibrating surface, and the remainder of the solution that remains in an
unfrozen state.
The Examiner is also correct in finding that Baldus teaches varying
the oscillation frequency. See, e.g., Baldus, col. 4,1. 15. In that regard,
Baldus teaches that
the interruption of the vibration for rest periods as described
appears to increase the overall vibration effect in the removal of
ice or the prevention of the deposition of the crystals upon the
surface. In other words, as compared with constant vibration of
the surface with a given temperature, vibration amplitude and
frequency, interruption of the vibration for rest periods of a
duration in excess of the period of vibration (reciprocal of the
vibration frequency) and the subsequent vibration of the surface
for an interval which is also a multiple of the period of
vibration, provides significantly improved ice-removal results.
Id. at col. 3,11. 29-40. However, this falls short of teaching that it is
beneficial to vibrate at one frequency or amplitude to promote the formation
of clear ice in an ice cube tray (or other surface) and vibrate at a different
frequency or amplitude to promote release of ice from an ice cube tray (or
other surface).
This brings us to the question of whether it would have been obvious
to modify Hoyt with the teachings of Baldus to achieve the invention of
claim 1. Baldus, at best, provides only general guidance regarding the effect
of varying oscillation frequency and amplitude on release of ice from a
surface; however, it falls short of guiding an inventor toward the particular
solution achieved here.
[A]n invention is not obvious to try where vague prior art does
not guide an inventor toward a particular solution. A finding of
obviousness would not obtain where “what was ‘obvious to try’
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was to explore a new technology or general approach that
seemed to be a promising field of experimentation, where the
prior art gave only general guidance as to the particular form of
the claimed invention or how to achieve it.” [cit. omitted]. This
expresses the same idea as the KSR requirement that the
identified solutions be “predictable.”
Bayer Schering Pharma AG v. Barr Laboratories, Inc., 575 F.3d 1341, 1347
(2009) (citing In re O’Farrell, 853 F.2d 894, 903 (Fed. Cir. 1988), and KSR
Int’l Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007)).
The obviousness inquiry requires a determination that a skilled artisan
would have been motivated to combine the teachings of the prior art
references to achieve the claimed invention, and that the skilled artisan
would have had a reasonable expectation of success in doing so. Kinetic
Concepts, Inc. v. Smith & Nephew, Inc., 688 F.3d 1342, 1360 (Fed. Cir.
2012). “The reasonable expectation of success requirement refers to the
likelihood of success in combining references to meet the limitations of the
claimed invention.” Intelligent Bio-Systems, Inc. v. Illumina Cambridge
Ltd., 821 F.3d 1359, 1367 (Fed. Cir. 2016). In other words, “one must have
a motivation to combine accompanied by a reasonable expectation of
achieving what is claimed in the patent-at-issue.” Id. Here, we are not
persuaded that a person of ordinary skill in the art would have been
motivated by the teachings of Baldus to modify Hoyt in the manner claimed
by Appellants.
For the foregoing reasons, we do not sustain the unpatentability
rejection of claim 1.
Claims 3—7
Claims 3—7 depend, directly or indirectly, from claim 1. The rejection
of these claims suffers from the same infirmity that we have previously
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identified in connection with the rejection of claim 1. For essentially the
same reasons expressed above, we do not sustain the unpatentability
rejection of claim claims 3—7.
Claims 9 and 11—15
Claim 9 is an independent claim that is substantially similar in scope
to claim 1, except that the preamble is directed to an icemaker instead of a
refrigerator. Claims App. Claims 11—15 depend, directly or indirectly,
from claim 9. Id. The rejection of these claims suffers from the same
infirmity that we have previously identified in connection with the rejection
of claim 1. For essentially the same reasons expressed above, we do not
sustain the unpatentability rejection of claims 9, 11—15.
Claims 17 and 19
Claim 17 is an independent claim that is substantially similar in scope
to claim 1, except that it is directed at a method rather than an apparatus.
Claims App. Claim 19 depends from claim 17. Id. The rejection of these
claims suffers from the same infirmity that we have previously identified in
connection with the rejection of claims 1 and 9. For essentially the same
reasons expressed above, we do not sustain the unpatentability rejection of
claims 17 and 19.
Unpatentability of Claims 2 and 10
over Hoyt, Baldus, and Fink
Claim 2 depends from claim 1. Claims App. Claim 10 depends from
claim 9. Id. The Examiner’s rejections of claims 2 and 10 suffer from the
same infirmity that was identified above with respect to claims 1 and 9,
which infirmity is not cured by the addition of the Fink reference to the
proposed combination. Thus, for essentially the same reason expressed
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above in connection with claims 1 and 9, we do not sustain the
unpatentability rejection of claims 2 and 10 over Hoyt, Baldus, and Fink.
Unpatentability of Claims 2 and 10
over Hoyt and Fink
Claim 2 depends from claim 1. Claims App. Claim 10 depends
indirectly from claim 9. Id. In this ground of rejection, the Examiner
erroneously finds that Hoyt discloses “all previous claim limitations,” which
necessarily includes the limitation of claim 1 directed to an oscillator
microcontroller configured to operate at a different frequency and/or higher
amplitude for releasing the clear ice. Final Action 14. We are unable to find
that the record supports such a factual finding by the Examiner.3
Accordingly, we do not sustain the unpatentability rejection of claims 2
and 10 over Hoyt and Fink.
Unpatentability of Claims 5 and 13
over Hoyt
Claim 5 depends indirectly from claim 1. Claims App. Claim 13
depends indirectly from claim 9. Id. In this ground of rejection, the
Examiner, again, erroneously finds that Hoyt discloses “all previous claim
limitations,” which necessarily includes the limitation of claims 1 and 9
directed to an oscillator microcontroller configured to operate at a different
frequency and/or higher amplitude for releasing the clear ice. Final Action
15. We are unable to find that the record supports such a factual finding by
the Examiner. Accordingly, we do not sustain the unpatentability rejection
of claims 5 and 13 over Hoyt.
3 The Examiner previously withdrew a Section 102 anticipation rejection of
claim 1 that made a similar, unsupported finding. Ans. 2; Final Act. 3^4.
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Unpatentability of Claims 8, 16, and 20
over Hoyt and Matsui
Claim 8 depends from claim 1. Claims App. Claim 16 depends from
claim 9. Id. Claim 20 depends from claim 17. Id. In this ground of
rejection, the Examiner, again, erroneously finds that Hoyt discloses “all
previous claim limitations,” which necessarily includes the limitations of
claims 1, 9, and 17 directed to a different frequency and/or higher amplitude
for releasing the clear ice. Claims App., Final Action 16. Accordingly, we
do not sustain the unpatentability rejection of claims 8, 16, and 20 over Hoyt
and Matsui.
DECISION
The decision of the Examiner to reject claims 17, 19, and 20 as
indefinite under 35U.S.C. § 112 is affirmed.
The decision of the Examiner to reject claims 1—17, 19, and 20 as
unpatentable under 35 U.S.C. § 103 is reversed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED-IN-PART
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