Ex Parte Darney

Patent Trial and Appeal Board

Mar 10, 2017

12305967 (P.T.A.B. Mar. 10, 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.
9861-4 9569
EXAMINER
STAPLETON, ERIC S
ART UNIT PAPER NUMBER
3742
MAIL DATE DELIVERY MODE
12/305,967 12/20/2008
20792 7590 0:
MYERS BIGEL, P.A.
PO BOX 37428
RALEIGH, NC 27627
Ian Darney
03/10/2017 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
Ex parte IAN DARNEY
Appeal 2015-004291
Application 12/305,967
Technology Center 3700
Before CHARLES N. GREENHUT, MICHAEL L. HOELTER, and
PAUL J. KORNICZKY, Administrative Patent Judges.
GREENHUT, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134 from a rejection of claims 1,
3—13, and 23—27. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
Appeal 2015-004291
Application 12/305,967
CLAIMED SUBJECT MATTER
The claims are directed to a domestic appliance with controlled door
opening. Claim 1, reproduced below, with emphasis added, is illustrative of
the claimed subject matter:
1. A domestic appliance, comprising:
a housing;
a front door;
a key member attached to the door;
a retention mechanism, located within the housing and
engageable with the door;
wherein the retention mechanism is movable between a
first configuration, in which the door is retained in a closed
position, and a second configuration, in which the door is non-
engaged;
an electromechanical actuator, adapted to move the
retention mechanism out of said first configuration; and
a controller, coupled to the actuator, the controller being
operable in response to one or more signals to activate the
actuator, and thereby release the door from the closed position,
wherein the retention mechanism comprises a guide
surface that is operable to be in sliding contact with the key
member that is attached to the door,
wherein the key member includes an end portion that is
configured to extend in a downwardly-non-vertical direction,
and
wherein, when the retention mechanism is in the first
configuration, a first portion of the guide surface is configured
such that the end portion slides over the first portion when an
outward pulling force is applied to the door, whereby the
retention mechanism moves out of the first configuration.
REJECTIONS
Claims 1, 3—13, and 23—27 are rejected under 35 U.S.C. § 112, first
paragraph, as failing to comply with the written description requirement.
2
Appeal 2015-004291
Application 12/305,967
Claims 1, 3—13, 23, 24, 26, and 27 are rejected under 35 U.S.C.
§ 102(b) as anticipated by or, in the alternative, under 35 U.S.C. § 103(a) as
unpatentable over Shimizu (US 4,450,335, iss. May 22, 1984).
Claims 6 and 25 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Shimizu in view of Miller (US 2004/0255929 Al, pub.
Dec. 23, 2004).
Claims 8—10 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Shimizu in view of Chun (US 2002/0014486 Al, pub.
Feb. 7, 2002).
Claim 12 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Shimizu in view of Clark (US 2004/0108106, pub. June 10, 2004)
Claims 1, 3—13, 23, 24, 26, and 27 are rejected under 35 U.S.C.
§ 102(b) as anticipated by or, in the alternative, under 35 U.S.C. § 103(a) as
unpatentable overUeda (EP0031142 Al, pub. July 1, 1981).
Claims 6 and 25 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Ueda in view of Miller.
Claims 8—10 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Ueda in view of Chun.
Claim 12 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Ueda in view of Clark.
Claims 1, 3—5, 7—13, 23, 24, 26 and 27 rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Seo (EP0917404 A2, pub. May 19,
1999) in view of Tsunekawa (EP0342307 A2, pub. Nov. 23, 1989).
Claims 6 and 25 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Seo, Tsunekawa, and Miller.
3
Appeal 2015-004291
Application 12/305,967
Claims 8—10 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Seo, Tsunekawa, and Chun.
Claim 12 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Seo, Tsunekawa, and Clark.
OPINION
The prior-art rejections
Regarding the limitation emphasized above, the Examiner states:
The functional recitation, “a first portion of the guide surface is
disposed to allow sliding ...,” merely requires the ability to so
perform. While features of an apparatus may be recited either
structurally or functionally, claims directed to an apparatus must
be distinguished from the prior art in terms of structure rather
than function. MPEP 2114.
Final Act. 5; Ans. 37. While these principles may be true, there is no
indication that the Examiner applied them to the cited prior art.
[Wjhere the Patent Office has reason to believe that a functional
limitation asserted to be critical for establishing novelty in the
claimed subject matter may, in fact, be an inherent characteristic
of the prior art, it possesses the authority to require the applicant
to prove that the subject matter shown to be in the prior art does
not possess the characteristic relied on.
In re Swinehart, 439 F.2d 210, 213 (CCPA 1971). “Nevertheless, before an
applicant can be put to this burdensome task, the examiner must provide
sufficient evidence or scientific reasoning to establish there is a sound basis
for the examiner’s belief that the functional limitation is an inherent
characteristic of the prior art.” Ex parte Skinner, 2 USPQ2d 1788, 1789
(BPAI 1986); see In re Spada, 911 F.2d 705, 708 (Fed. Cir. 1990) and
MPEP § 2114. The fact that a certain result or characteristic may occur or
4
Appeal 2015-004291
Application 12/305,967
be present in the prior art is not sufficient to establish the inherency of that
result or characteristic. In re Rijckaert, 9 F.3d 1531, 1534 (Fed. Cir. 1993).
Here, the functional recitation “tells us something about the structural
requirements of’ the claimed device (see, e.g., K-2 Corp. v. Salomon S.A.,
191 F.3d 1356, 1363 (Fed. Cir. 1999)), namely, the key, retention
mechanism, and actuator must be arranged such that a user’s application of
outward force to the door can overcome the forces maintaining the door in a
closed position. As Appellant correctly points out (Reply Br. 7, 9, 11), the
references cited as meeting this limitation, Shimizu, Ueda, and Tsunekawa,
do not provide enough information to determine whether the recited
components are arranged according to the claim making them capable of
performing the recited function. Seo expressly states that it cannot perform
the recited function. Reply Br. 11 (citing Seo para. 36). Thus, we are not
apprised of any sound or reasonable basis for the Examiner to conclude that
the ability to perform the recited function is an inherent characteristic of any
of the devices in the references cited as satisfying this limitation.
Accordingly, the prior-art rejections cannot be sustained on the basis set
forth by the Examiner.
The §112 rejection
The limitation emphasized above1 also forms the basis for the
Examiner’s rejection under § 112. The § 112 rejection is tenable for
1 In making this rejection, the Examiner also quotes the limitations: “the
retention mechanism comprises a guide surface that is operable to be in
sliding contact with the key member that is attached to the door, wherein the
key member includes an end portion that is configured to extend in a
downwardly non-vertical direction.” Final Act. 2. Although Appellant does
5
Appeal 2015-004291
Application 12/305,967
essentially the same reasons that the prior-art rejections are untenable. As
the Examiner points out, Appellant makes no assertion that the functional
features recited in the claim are supported expressly or implicitly by any
portion of the Specification. See Ans. 2—3; App. Br. 4—6. Appellant relies
solely on Figures 3(a)-3(c) as supporting such operation. App. Br. 4—6.
However, these figures show unlatching the door under the influence of a
solenoid 212, not by outward force applied to the door. There is no
indication as to how much force is required or whether a force applied on the
door in an outward direction would similarly suffice to actuate the key
member 316 and unlatch and open the door. In effect, Appellant also is
attempting to rely on inherent, yet unmentioned, functional characteristics of
the claimed device to provide descriptive support. While there is nothing
wrong with relying on an inherent disclosure to provide descriptive support
to new or amended claims (MPEP § 2163(I)(B)), as discussed above, the
standard for establishing inherency is that the evidence must make clear that
the missing descriptive material is necessarily present in the mechanism
described (MPEP § 2163.07(a)). As Appellant pointed out with regard to
the prior-art rejections, solenoid-actuated appliance doors may or may not be
openable when a user pulls the handle of the appliance door. Reply Br. 11
(citing Seo para. 36 (“the locked state may not be released arbitrarily even
not identify the retention mechanism and its corresponding guide surface
with specificity, we understand it to be the structure and surface immediately
below the tip 324 of key 316 as viewed in Figure 3(c). Thus, we do not take
issue with this portion of the quoted claim language. We note that Appellant
attempted to enter an amended version of Figure 3(a) and an amendment to
the Specification identifying 404 as the guide surface. However, it is
unclear in the amended figure where the lead line for reference numeral 404
originates.
6
Appeal 2015-004291
Application 12/305,967
when the user pulls the handle H of the door D.”)). Appellant has not
presented evidence or technical reasoning to demonstrate why, based on the
disclosure as originally filed, one skilled in the art would recognize
Appellant had possession of the appliance now claimed, which according to
independent claims 1 and 27 includes the feature: “wherein, when retention
mechanism is in the first configuration, a first portion of the guide surface is
configured such that the end portion slides over the first portion when an
outward pulling force is applied to the door, whereby the retention
mechanism moves out of the first configuration.” Accordingly, the claims
are properly rejected under § 112, first paragraph. See Amgen Inc. v.
Hoechst Marion Roussel Inc., 314 F.3d 1313, 1330 (Fed. Cir. 2003) (“The
purpose of the written description requirement is to prevent an applicant
from later asserting that he invented that which he did not”).2
DECISION
The Examiner’s rejections under §§102 and 103 are reversed.
The Examiner’s rejection under § 112, first paragraph, is affirmed.
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)(l)(iv).
AFFIRMED
2 The Examiner has not indicated entry or refusal of entry of the
amendments to the Drawings and Specification filed Nov. 20, 2012. The
Examiner should make formal objections of record. See MPEP §§2163.01,
2163.06.
7