14729167 (P.T.A.B. Sep. 24, 2018)

Ex Parte GIACOMINI et al

Patent Trial and Appeal BoardSep 24, 2018

14729167 (P.T.A.B. Sep. 24, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 14/729, 167 06/03/2015 27238 7590 09/26/2018 WHIRLPOOL CORPORATION - MD 3601 2000 North M63 Benton Harbor, MI 49022 FIRST NAMED INVENTOR NEOMAR GIACOMINI 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 ATTORNEY DOCKET NO. CONFIRMATION NO. SUB-06102-US-NP 7047 EXAMINER BURGDORF, STEPHEN R ART UNIT PAPER NUMBER 2684 NOTIFICATION DATE DELIVERY MODE 09/26/2018 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): MAIL@DWPATENTLAW.COM deborah_tomaszewski@whirlpool.com mike_lafrenz@whirlpool.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte NEOMAR GIACOMINI and AXEL JULIO RAMM Appeal2018-003273 Application 14/729,167 Technology Center 2600 Before JEREMY J. CURCURI, HUNG H. BUI, and PHILLIP A. BENNETT, Administrative Patent Judges. Opinion for the Board filed by Administrative Patent Judge CURCURI. Opinion Concurring filed by Administrative Patent Judge BUI. CURCURI, Administrative Patent Judge. DECISION ON APPEAL Appellants appeal under 35 U.S.C. Â§ 134(a) from the Examiner's rejection of claims 1, 2, 4--7, 9-16, and 18-20. See Final Act. 1. We have jurisdiction under 35 U.S.C. Â§ 6(b ). Claims 1, 4, 6, 7, 16, and 18 are rejected under 35 U.S.C. Â§ 103(a) as obvious over Janke (US 4,707,684; Nov. 17, 1987). Final Act. 2-9. Claims 2, 5, 14, and 15 are rejected under 35 U.S.C. Â§ 103(a) as obvious over Janke and Allinquant (4,163,970; Aug. 7, 1979). Final Act. 9- 13. Appeal2018-003273 Application 14/729,167 Claims 9-13, 19, and 20 are rejected under 35 U.S.C. Â§ I03(a) as obvious over Janke and Glasson (US 2007/0284232 Al; Dec. 13, 2007). Final Act. 14--18. We reverse. STATEMENT OF THE CASE Appellants' invention relates to "a door-ajar switch for a refrigerator." Spec. ,r 1. Claim 1 is illustrative and reproduced below: 1. A refrigerator comprising: a cabinet including a liner that defines a refrigerated compartment; a door configured to selectively seal the refrigerated compartment, the door being movable between an open position, wherein food items stored in the refrigerated compartment can be accessed, and a fully closed position, wherein the door extends across and seals the refrigerated compartment; an indicator configured to indicate a door-ajar condition; and a door-ajar switch for activating the indicator, said door ajar switch including: an actuator configured to move between a first position, when not contacted by the door, and a second position, when contacted by the door and the door is in the fully closed position; a spring configured to bias the actuator to the first position; a switch portion; and a damper portion, wherein the switch portion and the damper portion are located adjacent to one another in a common housing mounted to the cabinet or the door. PRINCIPLES OF LAW We review the appealed rejections for error based upon the issues identified by Appellants, and in light of the arguments and evidence 2 Appeal2018-003273 Application 14/729,167 produced thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential). ANALYSIS THE OBVIOUSNESS REJECTION OF CLAIMS 1, 4, 6, 7, 16, AND 18 OVER JANKE Contentions In particular, the Examiner finds Janke does not describe the compression spring ( 64) as a "damper", but the use of the spring to absorb door movement is consistent with the use of the term in the original specification and disclosure. The claim limitations do not preclude embodiments in which the spring and damper are the same structure. Janke also explicitly discloses that the switch itself comprises a second biasing spring. The switch internal structure is not specifically disclosed, but the presence of an actuating structure is implicit and would have been understood and obvious to one of ordinary skill in the art at the time of effective filing of the invention, where this structure is at least the portion of the switch contacted by the actuating pin (62) and thus a biasing spring (second spring in the switch) and a damper spring ( 64) to absorb door movement exist as separate structures mounted adjacent to one another within a common structure. Final Act. 4. Appellants present the following principal arguments: 1. "[T]he Examiner cannot properly rely on spring 64 as both the claimed spring for biasing the actuator to the first position and the claimed damper portion, nor can the Examiner properly rely on the internal spring of switch 34 as both the claimed spring and the claimed switch portion." App. Br. 8; see also Reply Br. 2-3. 11. 3 Appeal2018-003273 Application 14/729,167 Janke does not describe spring 64 as a damper because spring 64 is not a damper. Springs and dampers are fundamentally different mechanical devices. Therefore, the Examiner cannot properly rely on spring 64 for the claimed damper portion. A spring, as the Examiner points out in the Office Action, will absorb motion. As such, the spring will convert energy from kinetic energy represented by the motion to potential energy stored in the compressed coils of the spring. The potential energy is then available to be converted back to kinetic energy as the spring pushes back to its rest position. By contrast, a damper will absorb energy, which will be dissipated, i.e., kinetic energy is dissipated but not stored as potential energy. App. Br. 8; see also App. Br. 8-9 (discussing the differences between springs and dampers) and Reply Br. 4--6. In response, the Examiner explains "The three elements [ of Janke] therefore perform[] all four of the claimed functions, the spring both biasing the plunger and absorbing door movement." Ans. 3. The Examiner further explains Janke expressly discloses that spring (64) performs the damping function," ... will absorb and movement of the door" [Col. 3, 53- 61]. Assuming "in arguendo" that a spring is not a damper because it stores energy rather than dissipating it: (a) the argument is moot with respect to a closing door, where it is immaterial whether the absorbed energy is stored or dissipated, and (b) the argument assumes that a spring is perfectly inefficient [sic], and where it is understood that an actual spring is not perfectly inefficient [sic], and therefore at least a portion of the energy is dissipated. Ans. 3. Our Review The Examiner proposes two alternative mappings of Janke's components to the claim limitations, and both of these mappings map Janke's spring 64 to the "damper portion" of claim 1. See Final Act. 4. 4 Appeal2018-003273 Application 14/729,167 This appeal hinges on one question: is Janke's spring 64 a "damper portion" as recited in claim 1? A general purpose dictionary defines "damper" in the pertinent sense as follows: "1: a dulling or deadening influence." MERRIAM-WEBSTER'S COLLEGIATE DICTIONARY 314 (11 TH ED. 2012). Accordingly, we construe "damper portion" as a portion that provides a dulling or deadening influence (i.e., dissipates energy). Given this construction, the Examiner erred in finding Janke's spring 64 teaches a "damper portion" as recited in claim 1 because Janke's spring 64 does not provide a dulling or deadening influence (i.e., dissipate energy). In short, we agree with Appellants that springs and dampers are fundamentally different mechanical devices. See App. Br. 8-9 and Reply Br. 4---6. The Examiner's explanation in the Examiner's Answer (see Ans. 3) does not change the result here. To the extent Janke's spring 64 "absorbs" movement of the refrigerator door, spring 64 still does not function as a damper, providing a dulling or deadening influence (i.e., dissipate energy) because springs and dampers are fundamentally different mechanical devices. Regarding the Examiner's position that the spring 64 is not perfectly efficient, and therefore will dissipate some energy, construing the claimed "damper portion" so broad as to read on the energy losses of a spring is overly broad and unreasonable because such a construction would ignore the fact that springs and dampers are fundamentally different mechanical devices. 5 Appeal2018-003273 Application 14/729,167 We, therefore, do not sustain the Examiner's rejection of claim 1. We also do not sustain the Examiner's rejections of claims 4, 6, and 7, which depend from claim 1. Independent claim 16 recites "dampening movement of the door between the open position and the fully closed position with the damper portion." We, therefore, also do not sustain the Examiner's rejection of claim 16 for the same reasons discussed above for claim 1. We also do not sustain the Examiner's rejection of claim 18, which depends from claim 16. THE OBVIOUSNESS REJECTION OF CLAIMS 2, 5, 14, AND 15 OVER JANKE AND ALLINQUANT Contentions Regarding claim 2, the Examiner finds Allinquant discloses a pneumatic piston. Final Act. 10. The Examiner reasons, "the use[ s] of such pneumatic devices are known and obvious alternatives to mechanical spring alternatives." Final Act. 10-11; see also Ans. 5. Appellants argue, "Replacing spring 64 of Janke with piston 7 from Allinquant would not work because, as discussed above, springs and dampers are fundamentally different mechanical devices." App. Br. 13; see also Reply Br. 7. We agree with Appellants for reasons explained above when addressing claim 1. Thus, on the record before us, the Examiner's reasoning to modify Janke lacks a rational underpinning because springs and dampers are fundamentally different mechanical devices which serve different purposes, rather than known and obvious alternatives. We, therefore, do not sustain the Examiner's rejection of claim 2. 6 Appeal2018-003273 Application 14/729,167 Claim 5 recites, "wherein the damper includes a piston rod"; claim 14 recites, "wherein the damper portion includes a piston cylinder." We, therefore, do not sustain the Examiner's rejections of claims 5 and 14 for the same reasons discussed above when addressing claim 2. We also do not sustain the Examiner's rejection of claim 15, which depends from claim 14. THE OBVIOUSNESS REJECTION OF CLAIMS 9--13, 19, AND 20 OVER JANKE AND GLASSON The Examiner does not find Glasson cures the deficiency of Janke discussed above when addressing claim 1. See Final Act. 14--18; see also Ans. 6-8. We, therefore, do not sustain the Examiner's rejections of claims 9-- 13, 19, and 20. DECISION The Examiner's decision rejecting claims 1, 2, 4--7, 9--16, and 18-20 is reversed. No time period for taking any subsequent action in connection with this appeal maybe extended under 37 C.F.R. Â§ 1.136(a)(l). REVERSED 7 Appeal2018-003273 Application 14/729,167 BUI, Administrative Patent Judge, CONCURRING: I concur with the majority's decision to reverse the Examiner's obviousness rejection of independent claims 1 and 16 based on Janke because ( 1) Appellants' claims 1 and 16 recite two separate, distinct components of the claimed "door-ajar switch," i.e., (i) "a spring configured to bias the actuator" and (ii) "a damper portion, wherein the switch portion and the damper portion are located adjacent to one another in a common housing mounted to the cabinet or the door"; and (2) these two separate components cannot be broadly, but reasonably interpreted to encompass the same "compress spring (64)" shown in Figure 4 of Janke, even if Janke's "compression spring (64) were to perform the damping function (i.e., to absorb any movement of the door), as asserted by the Examiner (Ans. 3 (citing Janke 3:37----67, Fig. 4)). Janke's Figure 4 is reproduced below with additional markings for illustration: FIG. 4 64 CCifv1PRESS ,c:,PR'!N . ....,, 'a4, Â·Â· ,;:) ' Â· â€¢ b {,uÂ· J P â€¢.LlÂ· 1 NI â€¢'""': :.~ D.C' .. j ' \.'JI .:,_ .rs;, ,..,J (38, 40} Janke's Figure 4 shows an alarm (door-ajar) system for a refrigerator to indicate to a user whether a door is open. 8 Appeal2018-003273 Application 14/729,167 I also agree with the majority that springs and dampers are different mechanical devices. However, I would affirm the Examiner's obviousness rejections based on new articulated reasoning as follows. First, claims 1 and 16 are broadly worded to require only (i) "a spring configured to bias the actuator" and (ii) "a damper portion ... located adjacent to [the spring] in a common housing." The claimed "damper portion" could be interpreted to encompass Janke's "plunger" (38, 40), shown in Figure 4, because Janke's plunger (38, 40) could also be used as a damping element for Janke's spring (64) to absorb any movement of the door. Janke 3:37----67, Fig. 4; see also Allinquant 1: 12-16, 2:53-54 (using a plunger as a damming element for the spring). Second, the use of dampers to absorb energy when the door of a refrigerator closes is well-known by those skilled in the art, as acknowledged in paragraph [3] of Appellants' Specification. Springs and dampers are also known art equivalent, and available alternatives readily recognized by those skilled in the art. As such, I would find an ordinarily skilled artisan would have sufficient technical knowledge, based on the teachings of Janke 1 alone, and found it obvious to incorporate a damping element in the manner recited in Appellant's claims 1 and 16. Obviousness is a question of law based on underlying factual findings including the scope and content of the prior art, the differences between the claimed invention and the prior art, and the level of ordinary skill in the pertinent art. KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398,427 (2007); 1 Appellant's invention can be obvious in light of a single prior art reference if it would have been obvious to modify that reference to arrive at the invention. See, e.g., Takeda Chem. Indus., Ltd. v. Alp hap harm Pty, Ltd., 492 F.3d 1350, 1357 (Fed. Cir. 2007); SIEJA Neurosciences, Inc. v. Cadus Pharm. Corp., 225 F.3d 1349, 1356 (Fed. Cir. 2000). 9 Appeal2018-003273 Application 14/729,167 Graham v. John Deere Co., 383 U.S. 1, 17-18 (1966). However, in an obviousness analysis, precise teachings directed to the specific subject matter claimed need not be identified because the inferences and creative steps that a person of ordinary skill in the art would employ can be taken into account. See KSR, 550 U.S. at 418; see also In re Preda, 401 F.2d 825, 826 (CCPA 1968) ("[I]n considering the disclosure of a reference, it is proper to take into account not only specific teachings of the reference but also the inferences which one skilled in the art would reasonably be expected to draw therefrom."). In this regard, 11 [a] person of ordinary skill is also a person of ordinary creativity, not an automaton. 11 Id. at 421. "If a person of ordinary skill can implement a predictable variation [ of a work available in the prior art], Â§ 103 likely bars its patentability." KSR, 550 U.S. at 417. The reason for a person of ordinary skill to modify the prior art can be derived from "design incentives and other market forces" as well as from teachings in the literature. Id. "[T]he simple substitution of one known element for another or the mere application of a known technique to a piece of prior art ready for the improvement" should ordinarily result in a straightforward finding of obviousness. Id., at 417--418. Because ( 1) the use of dampers to absorb energy in the context of a refrigerator is well-known (see Appellants' Spec. ,r 3), (2) the art-recognized interchangeability and substitution between springs and dampers, and (3) the teachings of Janke, I would conclude an ordinarily skilled artisan would have found it obvious to incorporate both a spring and a damper in the manner recited in Appellant's claims 1 and 16. 10