Ex Parte DarneyDownload PDFPatent Trial and Appeal BoardMar 10, 201712305967 (P.T.A.B. Mar. 10, 2017) Copy Citation 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 Copy with citationCopy as parenthetical citation