Ex Parte Flinner et al

Board of Patent Appeals and Interferences

May 11, 2010

10989809 (B.P.A.I. May. 11, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte KLAUS FLINNER, GEORG HAUSMANN, STEFAN HOLZER,
FRITZ HAGELE, HELMUT KONOPA and JORG STELZER
____________

Appeal 2009-006801
Application 10/989,809
Technology Center 3700
____________

Decided: May 11, 2010
____________

Before STEVEN D.A. McCARTHY, MICHAEL W. O’NEILL AND
FRED A. SILVERBERG, Administrative Patent Judges.

O’NEILL, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Klaus Flinner et al. (Appellants) seek our review under 35 U.S.C.
§ 134 of the final rejection of claims 1-4, 8-10, 13-15, 18, 20, 22-24, 30, 36,
40, and 41. We have jurisdiction under 35 U.S.C. § 6(b).
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The Invention
The claimed invention is to a defrost indicator on a static freezer, i.e.,
a freezer that does not have an autodefrost mode.
Claim 1, reproduced below, is illustrative of the subject matter on
appeal.
1. A static freezer having no means for
automatic defrosting, comprising:
a housing having a refrigerating surface that
at least periodically freezes during operation; and
a measuring circuit estimating a quantity of
ice on said refrigerating surface and supplying a
warning signal when an estimated quantity of ice
exceeds a predetermined limit value, wherein said
measuring circuit has a time measuring device and
said measuring circuit estimates a quantity of ice
based upon a time measured by said time
measuring device since a fixed point in time,
which is the time at which the last defrosting
operation occurred.

The Prior Art
The Examiner relies upon the following as evidence of
unpatentability:
Troll US 1,945,100 Jan. 30, 1934
Kamiyama US 4,176,524 Dec. 4, 1979
Alsenz US 4,578,959 Apr. 1, 1986
Nojiri US 5,522,232 Jun. 4, 1996
Suse US 5,564,286 Oct. 15, 1996
Lee US 5,887,443 Mar. 30, 1999
Davis US 2001/0054292 A1 Dec. 27, 2001

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The Rejections
The following Examiner’s rejections are before us for review:
A.) Claims 1-3, 8, 10, 13, 20, 22, 24, 40, and 41 stand rejected under
35 U.S.C. § 103(a) as being unpatentable over Troll in view of Suse.
B.) Claims 4, 9, 14, 15, 18, and 23 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Troll and Suse as applied to claim 1, and
further in view of Davis.
C.) Claim 30 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Troll in view of Alsenz.
D.) Claim 36 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Troll in view of Kamiyama or Nojiri.
E.) Claims 20, 22, 24, 40, and 41 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Troll in view of Lee.

SUMMARY OF DECISION
We AFFIRM-IN-PART.

OPINION
Rejection A
Claim 1 is representative of the claims rejected over Troll and Suse
concerning claims 2, 3, 8, 10, 13, 20, 22, 24, and 40 since Appellants do not
separately argue these claims. Claim 41 is treated separately since it appears
to be is argued separately. 37 C.F.R. § 41.37(c)(1)(vii)(2007).
Appellants contend that Troll does not teach or disclose a measuring
circuit for estimating the quantity of ice on a surface of a refrigerator.
Appellants also contend that Troll does not teach or disclose supplying a
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warning signal when an estimated quantity of ice exceeds a predetermined
limit value. Appellants further contend that Troll fails to disclose a
measuring circuit in which the quantity of ice is estimated based upon a time
measured by the time measuring device since a fixed point in time, viz., the
time that the last defrosting operation occurred. Appellants contend that
Suse’s teachings have nothing to do with the system described in Troll
because Troll’s defrosting is done manually after a determination has been
made that defrosting is required. App. Br. 8-9. For claim 41, Appellants
paraphrase the claim language and contend, while Suse takes into account
outside temperature, Suse’s use of fuzzy logic along with an input variable
of outside temperature to determine when self-defrosting operations are to
commence is done in the context of a self-defrosting refrigerator. App. Br.
9-10.
The Examiner finds that Suse discloses a defrost time estimation
means to generate a defrost signal limitation, wherein the signal is sent to a
defrost means. The Examiner finds the element in Suse that determines
when to send a defrost signal is a defrost estimate means and this element is
a frost sensor. Ans. 8. The Examiner concludes that inasmuch as Troll and
Suse both disclose the functional equivalents in the art to determine when to
send a signal to request the next action, it would be obvious to substitute one
for the other. Ans. 8. The Examiner concludes that both what is disclosed
in Troll and Suse are processes to initiate defrost and how the signal is
generated does not patentably distinguish the claimed invention from the
combined teachings of Troll and Suse. Ans. 8-9.
We find Appellants’ arguments unpersuasive to show error in the
Examiner’s rejection. Primarily Appellants’ arguments attack Troll and
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Suse individually rather than the combination as a whole. Nonobviousness
cannot be established by attacking the references individually when the
rejection is predicated upon a combination of prior art disclosures. See In re
Merck & Co. Inc., 800 F.2d 1091, 1097, (Fed. Cir. 1986). “[I]t is not
necessary that the inventions of the references be physically combinable to
render obvious the invention under review.” In re Sneed, 710 F.2d 1544,
1550 (Fed. Cir. 1983). The relevant inquiry is whether the claimed subject
matter would have been obvious to those of ordinary skill in the art in light
of the combined teachings of those references. See In re Keller, 642 F.2d
413, 425 (CCPA 1981). “Combining the teachings of references does not
involve an ability to combine their specific structures.” In re Nievelt, 482
F.2d 965, 968 (CCPA 1973).
The Examiner concluded that the claim limitations are rendered
obvious by the combined disclosures of Troll and Suse. Appellants’
arguments, however, focus on what each reference individually teaches and
not on whether the combined teachings of Troll and Suse describe the
claimed subject matter.
Moreover, in our view, claim 1 is simply an arrangement of known
elements, each performing the same function as it had been known to
perform. In KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398 (2007), the Supreme
Court emphasized “the need for caution in granting a patent based on the
combination of elements found in the prior art,” id. at 415, and discussed
circumstances in which a patent claim might be determined to be obvious.
One of these circumstances is when the claim is directed to a simple
arrangement of old elements with each element performing the same
function as the element had been known to perform before and where the
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arrangement yields no more than a person of ordinary skill in the art would
expect from such an arrangement. Id. at 417 (citing to Sakraida v. Ag Pro,
Inc., 425 U.S. 273, 282 (1976)).
Here, Appellants have neither argued that the claim elements perform
a different function nor that the arrangement yields more than a person of
ordinary skill would expect from such an arrangement. As such, the claimed
arrangement simply consists of old elements, with each element performing
the same function as that element had been known to perform, and yielding
no more than a person of ordinary skill in the art would expect from such an
arrangement. Accordingly, we conclude that the claimed arrangement is
obvious in light of the combined teachings of Troll and Suse.
Concerning claim 41, Appellants’ arguments essentially paraphrase
the claimed invention, summarize the disclosures of Troll and Suse, and
conclude “it is not seen how one of ordinary skill in the art would apply the
teachings of Suse to modify Troll.” App. Br. 10. Appellants’ arguments are
unconvincing because they provide little analysis as to why a person of
ordinary skill in the art could not apply the teachings of Suse to modify the
teachings of Troll. Moreover, “[a] person of ordinary skill is also a person
of ordinary creativity, not an automaton.” KSR, 550 U.S. at 421. As such,
“a person of ordinary skill will be able to fit the teachings of multiple patents
together like pieces of a puzzle.” Id. at 420. Thus, in our view, a person
having ordinary skill in the art would be readily able to combine the
teachings of Troll and Suse to provide a static freezer capable of estimating a
quantity of ice based on the temperature difference between inside the
refrigerator and the ambient temperature.
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In view of the foregoing, we will sustain the Examiner’s rejection of
claims 1 and 41. Claims 2, 3, 8, 10, 13, 20, 22, 24, and 40 fall with claim 1.
Rejection B
Claim 4 is representative of the claims rejected over Troll and Suse
concerning claims 14, 15, 18, and 23 since Appellant does not separately
argue claims 14, 15, 18, and 23. Claim 9 is treated separately since it
appears to be is argued separately. 37 C.F.R. § 41.37(c)(1)(vii).
Appellants contend that the Davis disclosure “has nothing to do with
having an interface connected to a data network, with the interface
transmitting a warning signal into the data network as related in the present
claim 4.” App. Br. 10. The Examiner explains that, in Davis, “the interface
and network exist between the sensors and annunciators or alarms because
the signal has to be transmitted from the sensor to [the] controller and to the
output elements 38 and 40.” Ans. 9. In our view, the Examiner has set forth
a sound basis for concluding the Davis disclosure satisfies the limitations set
forth in claim 4 and Appellants’ argument does not show that the Examiner
made an error in either (1) the underlying finding of fact, viz., the Davis
disclosure referred to at para. [0015], upon which the conclusion of
obviousness was based; or (2) the reasoning used to reach the conclusion of
obviousness, viz., an interface and network exists since signals have to be
transmitted between the sensors and annunciators or alarms.
Appellants acknowledge that Davis does disclose monitoring a door
open alarm. However, Appellants contend the Davis disclosure “does not
disclose a measured time for which a door has been left open since a fixed
point in time.” App. Br. 10. The Examiner explains how a person having
ordinary skill in the art would select the time periods to initiate the defrost
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operation. Ans. 10. In our view, the Examiner has set forth a sound basis
for concluding the Davis disclosure satisfies the limitations set forth in claim
9. Appellants’ argument does not show that the Examiner made an error in
either (1) the underlying finding of fact, viz., the Davis disclosure referred to
at para. [0032], upon which the conclusion of obviousness was based; or (2)
the reasoning used to reach the conclusion of obviousness, viz., a person of
skill in the art would select the appropriate time periods to initiate a defrost
operation.
Appellants appear to argue that the complexity of Davis would have
taught away from combining the prior art teachings. We find this argument
unconvincing because in order for a reference to teach away, the reference
must “criticize, discredit, or otherwise discourage the solution claimed . . .”
In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004). A conclusory statement
concerning the complexity of Davis does not provide a convincing argument
that the Davis disclosure teaches away from Appellants’ claimed solution
such that the argument shows reversible error on the part of the Examiner by
concluding that it would have been obvious to substitute the defrost
determination part in the refrigerator to initiate the defrost or initiate the
warning signal so as to use parts available in the commercial market. See
Ans. 10.
Rejection C
The Examiner’s rejection for claim 30 cannot be sustained because
Alsenz’s teachings of using a photo detector and a light source to assist in
determining the quantity of ice does not have the photo detector and a light
source in the same locations as set forth in the claim. Further, the Examiner
has not cogently explained how a person having ordinary skill in the art
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would be able to position Alsenz’s teachings of a photo detector and a light
source to satisfy the claimed relationship. Claim 30 sets forth the positional
relationship of the photo detector and light source. Both are disposed behind
the surface of the transparent body forming part of the sensor that is
disposed on a refrigerating surface or evaporator. Alsenz’s figures 3-6 fail
to satisfy such a positional relationship. Only the detector is behind a
transparent body as shown in figures 3 and 5. Further, the Examiner has not
explained how a person having ordinary skill in the art could render
Alsenz’s detector and emitter operational if both were behind a transparent
surface as set forth in claim 30 and the Examiner has not relied on Troll to
cure the deficiency of Alsenz.
Rejection D
The Examiner found that both Kamiyama and Nojiri teach a resonator
that is utilized to determine the thickness of frost in a refrigerator or freezer.
The Examiner determined that a person of ordinary skill in the art could
modify Troll’s defrosting indictor with a resonator. Thus, the Examiner
concluded claim 36 was obvious based on the combined teachings of Troll,
Kamiyama, and Nojiri. Ans. 6 and 7. Appellants contend that neither
Kamiyama nor Nojiri teach a resonator mounted on the refrigerating surface
such that the resonator ices over with the refrigerating surface because
Kamiyama and Nojiri operate on completely different principles than what is
set forth in claim 36 with respect to a resonator. App. Br. 12-13. The
Examiner explained, both in the rejection and response to Appellants’
arguments, that in Kamiyama, the resonance frequency of the piezoelectric
element changes by frost and by a detected change in impedance, and that in
Nojiri, the resonance frequency of the piezoelectric vibrator changes when
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frost adheres to the piezoelectric vibrator. Ans. 6-7 and 11-12. Appellants’
contentions essentially paraphrase the claimed invention, assert their
understandings of the teachings of Kamiyama, argue the references
individually, and request a claim construction for “resonator” that is not the
broadest reasonable interpretation in light of Appellants’ Specification. As
such, Appellants’ contentions do not demonstrate that the Examiner made an
error in either (1) the underlying finding of fact, viz., both Kamiyama and
Nojiri utilize a resonator as part of the frost indictor, upon which the
conclusion of obviousness was based; or (2) the reasoning used to reach the
conclusion of obviousness, viz., a person of ordinary skill in the art could
readily modify the Troll apparatus based on the teachings of Kamiyama and
Nojiri. Moreover, in our view, the modification of Troll’s apparatus with a
“resonator,” as taught by both Kamiyama and Nojiri, is another
circumstance where the Supreme Court emphasized the “the need for
caution in granting a patent based on the combination of elements found in
the prior art.” KSR, 550 U.S. at 415. Such a circumstance applies when a
claim is directed to a structure already known in the prior art that has been
altered by the mere substitution of one element for another element known
in the field, and where the combination claim does no more than yield a
predictable result. Id. at 416. Here, the combination that the Examiner
proposes in order to render the claim obvious alters the mechanical defrost
indicator in Troll by substituting for that indicator a resonator, which is a
well known element, as evidenced by both Kamiyama and Nojiri. As such,
the claim to the combination of elements must do more than yield a
predictable result. Neither the Specification nor Appellants’ arguments
persuade us that the combination of elements does no more than yield a
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predictable result of having a resonator’s frequency change as the quantity of
ice increases.
Rejection E
Appellants separately argue claims 40 and 41 for this ground of
rejection that also includes claims 20, 22, and 24. Claim 40 represents
claims 20, 22, and 24.
Appellants’ arguments are essentially a paraphrase of the claim
language associated with claims 40 and 41, their understanding of Lee, and
an urging that in light of the complexity of Lee “it is not seen how one of
ordinary skill would consider modifying Troll . . . to arrive at Appellant’s
claimed invention.” App. Br. 13-14. Inasmuch as complexity is a concern
of Appellants, again, “[a] person of ordinary skill is also a person of ordinary
creativity, not an automaton.” KSR, 550 U.S. at 421. As such, “a person of
ordinary skill will be able to fit the teachings of multiple patents together
like pieces of a puzzle.” Id. at 420. Thus, in our view, a person having
ordinary skill in the art would be readily able to combine the teachings of
Troll and Lee to provide a static freezer capable of estimating a quantity of
ice based on the number of times the door has been opened or the
temperature difference between the inside of the refrigerator and the ambient
temperature, as set forth in claims 40 and 41, respectively.

DECISION
The Examiner’s decision to reject claims 1-3, 8, 10, 13, 20, 22, 24, 40,
and 41 under 35 U.S.C. § 103(a) as being unpatentable over Troll in view of
Suse is affirmed.
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The Examiner’s decision to reject claims 4, 9, 14, 15, 18, and 23
under 35 U.S.C. § 103(a) as being unpatentable over Troll, Suse, and Davis
is affirmed.
The Examiner’s decision to reject claim 30 stands rejected under 35
U.S.C. § 103(a) as being unpatentable over Troll in view of Alsenz is
affirmed.
The Examiner’s decision to reject claim 36 under 35 U.S.C. § 103(a)
as being unpatentable over Troll in view of Kamiyama or Nojiri is reversed.
The Examiner’s decision to reject claims 20, 22, 24, 40, and 41 under
35 U.S.C. § 103(a) as being unpatentable over Troll and Lee 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)(1)(iv) (2007).

AFFIRMED-IN-PART

Klh

BSH HOME APPLIANCES CORPORATION
INTELLECTUAL PROPERTY DEPARTMENT
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