Ex Parte Graham

Patent Trial and Appeal Board

Sep 27, 2017

12653242 (P.T.A.B. Sep. 27, 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.
12/653,242 12/10/2009 Thomas Graham 139650.67 9140
7590 09/28/2017
Francis C. Hand, Esq.
c/o Carella, Byrne, Bain, Gilfillan, Cecchi,
Stewart & Olstein
5 Becker Farm Road
Roseland, NJ 07068
EXAMINER
HAMILTON, FRANCES F
ART UNIT PAPER NUMBER
3749
MAIL DATE DELIVERY MODE
09/28/2017 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 THOMAS GRAHAM
Appeal 2016-006530
Application 12/653,242
Technology Center 3700
Before: JILL D. HILL, LEE L. STEPINA, and
ARTHUR M. PESLAK, Administrative Patent Judges.
STEPINA, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Thomas Graham (Appellant) appeals under 35 U.S.C. § 134 from a
rejection of claims 1, 3—7, 9, 10, 18—20 and 23—26.1 We have jurisdiction
under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART and enter a NEW GROUND OF
REJECTION pursuant to our authority under 37 C.F.R. § 41.50(b).
1 Claims 11—13, 15—17, and 22 are withdrawn, and claims 2, 8, 14, and 21
are canceled. Appeal Br. 1 (filed Oct. 27, 2015).
Appeal 2016-006530
Application 12/653,242
CLAIMED SUBJECT MATTER
The claims are directed to a vent port for a refrigerated cabinet. Claim
1, reproduced below, is illustrative of the claimed subject matter:
1. A vent port for a refrigerated cabinet comprising
at least one heat conducting metal bracket of rectangular
construction having an aperture therein for a flow of air
therethrough and a channel along a bottom edge thereof;
a flap of resilient material mounted on said bracket in
overlying relation to said aperture for movement between a first
position in abutment with said bracket to close said aperture and
a second position spaced from said aperture to allow passage of
air therethrough; and
a resistor mounted in said channel of said bracket for
generating and delivering heat into said bracket sufficient to melt
ice thereon.
Appeal Br. (Claims App.).
The prior art relied upon by the Examiner in rejecting the claims on
2 The Examiner and Appellant both refer to JP 09-269183 A (JP ’ 183) as
Kaisan-cho, which is part of the address of the assignee, Showa Aluminum
Corp. The named inventors of JP ’183 are Minoru Asahata and Shinsei
Tono. For consistency, the decision refers to JP ’183 as Kaisan-cho.
3 The Examiner and Appellant both refer to JP 05-090287 U (JP ’287) as
Higashi-Shinagawa, which is part of the address of the assignee, Nippon
REFERENCES
appeal is:
Berkowitz
Cook
Fiddler
Hohider
Schnorf
Honda
Kaisan-cho2
Higashi-Shinagawa3
US 3,952,542 Apr. 27, 1976
US 4,257,445 Mar. 24, 1981
US 4,662,270 May 5, 1987
US 4,968,962 Nov. 6, 1990
US 5,296,678 Mar. 22, 1994
US 5,421,775 June 6, 1995
JP 09-269183 A Oct. 14, 1997
JP 05-090287 U Dec. 12, 1993
2
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Application 12/653,242
REJECTIONS
(I) Claims 1,3, and 4 are rejected under 35 U.S.C. § 102(b) as
anticipated by Kaisan-cho.
(II) Claims 5 and 23* * 4 are rejected under 35 U.S.C. § 102(b) as
anticipated by Higashi-Shinagawa.
(III) Claims 1, 3, and 4 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Kaisan-cho and Fiddler.
(IV) Claims 5, 18, 23, and 24 are rejected under 35 U.S.C. § 103(a)
as unpatentable over Higashi-Shinagawa and Fiddler.
(V) Claims 6, 7, and 9 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Higashi-Shinagawa, Fiddler, and Kaisan-cho.
(VI) Claims 5, 23, and 24 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Higashi-Shinagawa and Schnorf.
(VII) Claims 6, 7, and 9 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Higashi-Shinagawa, Schnorf, and Kaisan-cho.
(VIII) Claim 5 is rejected under 35 U.S.C. § 103(a) as unpatentable
over Honda, Kaisan-cho, and Higashi-Shinagawa.
(IX) Claim 10 is rejected under 35 U.S.C. § 103(a) as unpatentable
over Honda, Kaisan-cho, Higashi-Shinagawa, and Berkowitz.
(X) Claim 18 is rejected under 35 U.S.C. § 103(a) as unpatentable
over Higashi-Shinagawa, Schnorf, and Fiddler.
(XI) Claims 19 and 20 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Higashi-Shinagawa, Fiddler, and Kaisan-cho.
Light Metal Company, Ltd. For consistency, the decision refers to JP ’287
as Higashi-Shinagawa.
4 The Examiner withdraws a rejection of claim 24, over the same reference,
in the Answer. Ans. 41.
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(XII) Claim 25 is rejected under 35 U.S.C. § 103(a) as unpatentable
over Higashi-Shinagawa, Kaisan-cho, and Fiddler.
(XIII) Claim 26 is rejected under 35 U.S.C. § 103(a) as unpatentable
over Higashi-Shinagawa, Kaisan-cho, Fiddler, and Hohider.
(XIV) Claims 5—7, 9, 10, and 18—20 are rejected under 35 U.S.C.
§ 103(a) as unpatentable over Cook, Fiddler, and Kaisan-cho.
OPINION
Rejection (I); Claims 1, 3, and 4
The Examiner finds that Kaisan-cho discloses each of the limitations
of claim 1 including that Kaisan-cho’s body (4) has metal brackets (6, 7) of
rectangular construction, and that electric heater wire (14) is a resistor.
Final Act. 6—7. The Examiner reasons that because “all wires inherently
implement some measure of electrical resistance; electric heater wires act as
resistors when current passes through them.” Id.
Appellant argues that Kaisan-cho’s body (4) is not rectangular, and
rather, is “a three-dimensional structure with a V-shaped cross-section in
part.” Appeal Br. 7. According to Appellant, the “sideways bottomed
rectangular pipe as illustrated in Drawing 2 of Kaisan-cho,” is not “a metal
bracket of rectangular construction,” consistent with how a person of
ordinary skill in the art would understand this term in light of the
Specification. Id. at 8.
The Examiner responds that Kaisan-cho’s body (4) includes two
brackets (6, 7) that are rectangular “[ijnasmuch as Appellant’s bracket is
rectangular.” Ans. 31.
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The Examiner has the better position here. Kaisan-cho shows wall
(4c) having two rectangular wall parts {6,1). Kaisan-cho, Fig. 2; see also
Ans. 30-31. Although wall parts (6, 7) are connected to form a “V,” as
shown in Figure 1 of Kaisan-cho, Appellant does not define the term
“rectangular construction” in a manner that would exclude connected
rectangular brackets (6, 7) of Kaisan-cho.
Appellant also argues that a resistor is described and illustrated in the
Specification. Appeal Br. 9 (citing Spec., 7,11. 3—14, Fig. 1). According to
Appellant, “a person of ordinary skill in the art would not understand the
annular electrical heater line 14 of Kaisan-cho to be a ‘resistor’ as described,
illustrated and claimed by Applicant.” Id. at 9-10.
The Examiner responds that sufficient evidence supports the “position
that a wire acts as a resistor when current is run th[r]ough it.” Ans. 33.
According to the Examiner, the resistors in the portion of Appellant’s
Specification cited by Appellants are merely exemplary, and the Examiner
declines to import “limitations from the specification . . . into the claims.”
Ans. 35. The Examiner maintains that the wire of Kaisan-cho is a resistor,
because it “operates to control current — the resulting product being the
generation of heat.” Id.
Appellant replies that even if “a wire offers a resistance to the flow of
an electrical current does not mean that the wire is a ‘resistor’ pre se [sic].”
Reply Br. 3. Appellant argues that “it is an unreasonable interpretation to
equate a wire that per se does not generate heat with a ‘resistor for
generating and delivering heat.’” Id. Appellant asserts that under a broadest
reasonable interpretation in light of the Specification, a resistor is “a passive
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two-terminal electrical component that implements electrical resistance as a
circuit element,” and the wire of Kaisan-cho is not a resistor. Id. at 4.
Appellant’s arguments are not persuasive. Although not all wires
would be considered resistors, Kaisan-cho discloses more than just a wire.
Consistent with Appellant’s requirement that a resistor has two terminals,
Kaisan-cho discloses that “both ends of electric heater line (14) are
connected to the lead.” Kaisan-cho 116. Moreover, Kaisan-cho’s electric
heater line (14) is part of a circuit that includes at least thermostat (16) and
leads (18), and is positioned within the circuit so that an “exchange of an
electric heater line (14) can also be performed easily.” Id. H 15, 22.
Furthermore, Appellant’s argument that the wire of Kaisan-cho does
not generate heat is unavailing. Kaisan-cho discloses that electric heater line
(14) is in contact with body (4) to become “excellent in the efficiency of
heat transfer from an electric heater line (14) to a body (4).” Kaisan-cho
115; see also Final Act. 7. Kaisan-cho also discloses that “[i]f the
temperature near a body (4) becomes more than prescribed temperature, the
energization to an electric heater line (14) will be stopped by work of a
thermostat (16).” Kaisan-cho 122. We agree with the Examiner that heater
line (14) is a resistor controlled by thermostat (16) to generate and deliver
heat to a bracket. See Final Act. 7.
Accordingly, we affirm the rejection of claim 1 under 35 U.S.C.
§102 (b) as anticipated by Kaisan-cho. Claims 3 and 4 fall with claim 1.
See Appeal Br. 10.
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Rejection (II); Claims 5 and 23
Claim 5
The Examiner finds that Higashi-Shinagawa discloses each of the
limitations of claim 5 including a housing having parts “secured together in
mating relation (‘snap engagement of the locking claw (34)... and the
locking receiving part (35)) to define a space therebetween,’” brackets (13),
and a pair of resistors (50, 50). Final Act. 7 (alteration in original).
According to the Examiner, “[t]he heater wire has been understood to be a
resistance element, or a resistor.” Id. at 8.
Appellant argues that mounting flange 30 is not a housing and, in any
event, “the two parts 31 of the mounting flange 30 [do not] define a space
therebetween.” Appeal Br. 11. According to Appellant, although the
Examiner identifies elements 30/14 as the housing, “the two sleeve frames
14 of Higashi-Shinagawa constitute 4 parts and do not meet the requirement
of claim 5 of ‘a housing formed of a pair of plastic parts.’” Id.
The Examiner responds that at least space 11 is formed between
housing parts 31. Ans. 36. The Examiner notes that “a housing formed of’
does not exclude additional parts including part 14.
Appellant’s argument is not persuasive. The broadest reasonable
interpretation, in light of the Specification, of the term “space therebetween”
does not exclude the cited space (mounting slot 33) between housing parts
(31). See Higashi-Shinagawa 127, Fig. 11; see also Final Act. 7. Nor does
Appellant explain adequately why the space (at 11) for bracket 13 does not
extend between parts (31), as the Examiner finds. See Ans. 36. Moreover,
as the Examiner correctly notes, Appellant’s claim language does not
exclude additional parts that form the housing. See id.
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Appellant also argues that Higashi-Shinagawa does not discloses “a
pair of brackets each having an aperture for a flow of air mounted in the
mounting flange 30,” because “each body frame 13 that has a valve port
[aperture] 11 is mounted in a separate sleeve frame 14 not in the mounting
flange 30.” Appeal Br. 11—12.
The Examiner responds that Figures 6 and 10 of Higashi-Shinagawa
show that each bracket (13) “comprises an aperture (valve port (11)),” and
that “each bracket housing is comprised of housing elements ((30) or
(31/31)) and (14), and each bracket (13) is mounted in flange (33) of
housing (30/14).” Ans. 38.
Appellant’s argument is not persuasive. Notwithstanding that the
Examiner states that both sleeve frame (14) and mounting flange (30)
comprise the housing (see Final Act. 7), Higashi-Shinagawa discloses that
body frame (bracket) (13) and sleeve frame (14) together form frame (10),
and that frame (10) having aperture (11) is mounted in mounting slot (33) of
mounting flange (30) (Higashi-Shinagawa ^fl[ 16, 27, Figs. 6—12; see also
Ans. 37-38).
Appellant also argues that heater wires 50 of Higashi-Shinagawa are
on a flat flange, and that heater wires 50 are not a “resistor”, as described,
nor is a flat flange a channel, as claimed. Appeal Br. 12—13.
The Examiner responds that the “gutter shaped flange 15” of Higashi-
Shinagawa is a channel, and that heater wires (50) are a resistor mounted in
the channel. Ans. 39. The Examiner states that Higashi-Shinagawa’s heater
wires (50) are a resistor, because they “generate and deliver heat into a
bracket sufficient to melt ice thereon to assure bracket mounted valve
operation.” Id. at 39-40.
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Appellant repeats the argument from Rejection (I) that a wire is not a
“resistor” per se, and that under a broadest reasonable interpretation in light
of the Specification, the wire of Higashi-Shinagawa is not a resistor. Reply
Br. 3^4.
Appellant’s arguments are not persuasive. At the outset, we agree
with the Examiner that a gutter-shaped flange is a channel, because
“channel” is defined as “a long gutter, groove, or furrow.” Channel,
Merriam-Webster’s Collegiate Dictionary (11th ed. 2005). Further,
similar to Kaisan-cho discussed above in Rejection (I), Higashi-Shinagawa
discloses more than just a wire. Consistent with Appellant’s disclosure that
a resistor includes a “wound wire” (see Spec. 7,11. 3—10), Higashi-
Shinagawa discloses that wire (50) is “wound around the peripheral part of
the frame 10” (Higashi-Shinagawa Tflf 15—16). Furthermore, Appellant’s
argument that the wires of Higashi-Shinagawa do not generate heat is
unavailing. Notwithstanding that wires (50) are “heater wires,” wires (50)
are referred to as “anti-freeze means,” which one of ordinary skill in the art
would understand prevents freezing of the frame (by generating heat). Id.',
see also Final Act. 8. We agree with the Examiner that heater wires (50)
have a resistance, because they are wound around Higashi-Shinagawa’s
frame to create resistance and generate heat, and, thus, heater wires (50) are
resistors. See Final Act. 8.
Accordingly, we affirm the rejection of claim 5 under 35 U.S.C.
§102 (b) as anticipated by Higashi-Shinagawa.
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Claim 23
Appellant argues that claim 23 requires “two pairs of integral walls,
each said pair of walls defining a slot therebetween and receiving a
respective bracket of said pair of brackets,” but that the walls in the two
parts 31 of Higashi-Shinagawa “receive the sleeve frame 14 not the
‘bracket’13.” Appeal Br. 13.
The Examiner responds that “housing portion 14 of the housing
(30/14) receive bracket 13, as discussed above [for claim 5].” Ans. 40. The
Examiner states that “slot 33 formed in housing 30 by a pair of walls 31
receives element 14b of housing portion 14, and bracket 13 is mounted in
the housing.” Id.
Appellant’s argument is not persuasive. As discussed supra for claim
5, Appellant does not apprise us of Examiner error with respect to both
sleeve frame (14) and mounting flange (30) comprising the housing. Nor
does Appellant persuasively argue why Higashi-Shinagawa’s body frame
(bracket 13) and sleeve frame (14) that together form frame (10), and that
are then mounted in mounting slot (33) of mounting flange (30) do not meet
a bracket in the housing, as the Examiner finds. Ans. 37, 38, 40.
Accordingly, we affirm the rejection of claim 23 under 35 U.S.C.
§ 102(b) as anticipated by Higashi-Shinagawa.
Rejection (III); Claims 1, 3, and 4
For the reasons discussed supra in Rejection (I), Kaisan-cho
anticipates claims 1, 3, and 4, and thus, we do not reach the Examiner’s
additional reason for rejecting these claims as unpatentable over a
combination of Kaisan-cho and Fiddler.
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Rejection (IV); Claims 5, 18, 23, and 24
Claims 5 and 23
For the reasons discussed supra in Rejection (II), Higashi-Shinagawa
anticipates claims 5 and 23, and thus, we do not reach the Examiner’s
additional rejection of these claims as obvious over Higashi-Shinagawa and
Fiddler.
Claim 18
The Examiner finds that Higashi-Shinagawa discloses most of the
limitations of claim 18, but does not disclose a vent port mounted in a door
jamb of a refrigerated cabinet and a pair of louvered end covers secured to
opposite sides of the doorjamb. Final Act. 12—13. Nonetheless, the
Examiner finds that Fiddler teaches a vent valve (60) mounted in a door
jamb, and a pair of louvered end covers (40, 40a) secured to opposite sides
of a vent port. Id. at 13. The Examiner concludes that it would have been
obvious to modify Higashi-Shinagawa to mount the vent port in a doorjamb
and to have louvered end covers at both sides of the vent port, “to
accommodate installations where dimensional limitations and site
constraints prohibit an installation along a wall, and to protect the flaps from
damage and penetration by large foreign objects.” Id.
Appellant argues that because Higashi-Shinagawa requires a louver 42
on one side and a two part mounting part 30 on the other side, the
Examiner’s modification “would eliminate the two-part mounting flange 30
in favor of a one-piece second louver 42,” which would change the principle
of operation of Higashi-Shinagawa. Appeal Br. 18—19.
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The Examiner responds that Fiddler teaches louvered end covers (40,
40a) that are “independent of—the vent port bracket and flaps (60/64).”
Ans. 46. According to the Examiner, Higashi-Shinagawa’s louvered end
cover (42) is also independent of the bracket and flap and that an additional
vent cover would operate in the same manner as vent cover (42). Id.
Appellant’s arguments are not persuasive. As the Examiner correctly
finds, Higashi-Shinagawa’s louvered end cover (42) does not interfere with
the vent port and flaps and includes step (42a) to accommodate housing (14).
Ans. 46; see also Higashi-Shinagawa 124, Fig. 2. Appellant has not
persuasively argued why a similar end cover on the opposite end would not
operate in the same manner as vent cover (42), as the Examiner proposes, by
accommodating flange (30), and instead would require flange (30) to be
eliminated.
Accordingly, we affirm the rejection of claim 18 as obvious over
Higashi-Shinagawa and Fiddler.
Claim 24
The Examiner finds that Higashi-Shinagawa discloses most of the
limitations of claim 24 including a channel, but that the channel does not
have “a bottom edge turned upwardly.” Final Act. 12. The Examiner
reasons that “it would have been an obvious matter of design choice” of
modifying the channel so that the channel “bottom edge turns upwardly
since the applicant had not shown that the limitation is for a particular reason
or solves a particular problem (paragraph [0034]), and the vent port would
perform equally well in either configuration.” Id.
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Appellant argues that “the Examiner provides no evidence to support
this position,” and “provides no evidence that a flange of the body frame 13
of Higashi-Shinagawa can provide a mounting for a resistor.” Appeal Br.
14.
Appellant’s arguments are not persuasive. As discussed above in
Rejection (II), Higashi-Shinagawa’s heater wires (50) are a resistor mounted
in channel (15) of bracket (13), and, thus, the Examiner provides evidence
that Higashi-Shinagawa provides a mounting for a resistor. The Examiner
proposes to turn the bottom edge of channel (15) upwardly and uses design
choice as the reasoning to do so. Appellant does explain adequately why the
Examiner’s proposed modification is improper, and, thus, does not argue
persuasively that design choice as a rationale, in the present circumstances,
is inadequate. Nor has Appellant argued that the modification would have
been beyond the abilities of one of ordinary skill in the art.
Accordingly, we affirm the rejection of claim 24 as obvious over
Higashi-Shinagawa and Fiddler.
Rejection (V); Claims 6, 7, and 9
Claims 6 and 7
Appellant does not separately argue claims 6 and 7 and states that
these claims stand or fall with claim 5. Appeal Br. 19.
For the reasons discussed supra in Rejection (II) Appellant has not
shown Examiner error in rejecting claim 5. Claims 6 and 7 fall with claim 5.
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Claim 9
Appellant argues that the Examiner’s modification “would eliminate
the mounting flange 30 of Higashi-Shinagawa in favor of [Kaisan-cho’s]
second louver 42,” which would change the principle of operation of
Higashi-Shinagawa, and, thus, “one of ordinary skill in the art would not be
motivated by the teachings of Kaisan-cho to modify Higashi-Shinagawa as
proposed by the Examiner.” Appeal Br. 19.
The Examiner responds that Kaisan-cho teaches louvered end covers
that are “independent of — the vent port bracket and flaps.” Ans. 47.
According to the Examiner, Higashi-Shinagawa’s louvered end cover (42) is
also independent of the bracket and flap and that an additional vent cover
would operate in the same manner as vent cover (42). Ans. 47-48.
Appellant’s arguments are not persuasive. As the Examiner correctly
notes, Higashi-Shinagawa’s louvered end cover (42) does not interfere with
the vent port and flaps and includes step (42a) to accommodate housing (14).
Ans. 47-48; see also Higashi-Shinagawa 124, Fig. 2. Appellant has not
persuasively argued why a similar end cover on the opposite end would not
work in the same manner and accommodate flange (30), as the Examiner
proposes, and rather would require flange (30) to be eliminated.
Accordingly, we affirm the rejection of claim 9 as obvious over
Higashi-Shinagawa, Fiddler, and Kaisan-cho.
Rejection (VI); Claims 5, 23, and 24
Claims 5 and 23
For the reasons discussed supra in Rejection (11), Higashi-Shinagawa
anticipates claims 5 and 23, and thus, we do not reach the Examiner’s
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additional rejection of these claims as obvious over Higashi-Shinagawa and
Schnorf.
Claim 24
The Examiner does not rely on Schnorf in any manner in rejecting
claim 24. See Final Act. 16. However, the affirmance of the rejection of
claim 24 above (see Rejection (IV)) constitutes a general affirmance of the
decision of the Examiner to reject claim 24. 37 C.F.R. § 41.50(a)(1).
Accordingly, we need not and do not reach the merits of this rejection of
claim 24.
Rejection (VII); Claims 6, 7, and 9
Claims 6 and 7
Appellant does not separately argue claims 6 and 7 and states that
these claims stand or fall with claim 5. Appeal Br. 21.
For the reasons discussed supra in Rejection (II) Appellant has not
shown Examiner error in rejecting claim 5. Claims 6 and 7 fall with claim 5.
Claim 9
Appellant relies on the arguments discussed above in Rejection (V) in
support of Rejection (VII). Appeal Br. 21.
For the reasons discussed supra in Rejection (V) Appellant has not
shown Examiner error in rejecting claim 9, and, thus, we also affirm
Rejection (VII).
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Rejection (VIII); Claim 5
The Examiner finds that Honda discloses most of the limitations of
claim 5, but does not disclose, inter alia, a plastic housing and flaps. Final
Act. 18—19. The Examiner finds that Higashi-Shinagawa teaches a plastic
housing and a flap. Id. at 19. The Examiner reasons that a plastic housing
would have been obvious in order to form a housing that “can be installed
(‘fixed’) easily without using adhesives,” and that it would have been
obvious to modify the vent port of Honda to include a flap “for a simple
construction that affords a basic check-valve operation to open and close the
airflow aperture.” Id.
Appellant argues that the Examiner’s modification of Honda “would
require elimination of’ several components, which “would change the
principle of operation of Honda that requires the biasing springs 19 to bias
the closing plates 8, 9 into a closed position.” Appeal Br. 24.
The Examiner responds that Honda’s elements 8 and 9 are flaps
because a flap is a valve. Ans. 52. The Examiner states that a flap performs
the same operation as plates 8 and 9, and that the “proposed modification
would provide a much simpler construction, affording a basic check-valve
operation to open and close the airflow aperture, for ease of flap operation
and a trouble-free system, lower first cost, thereby improving user
satisfaction.” Id. at 53—54.
Appellant’s arguments on this point are persuasive. Appellant’s
Specification discloses that “flap 26 is of rectangular shape and .. . secured
by a pair of rivets ... to bracket 23.” Spec. 6—7. The Specification further
discloses that the flap opens with a change in pressure and that gravity
assists in keeping the flap closed. Id. at 7. Thus, a “flap” consistent with the
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Specification is a pivotal member that pivots about one edge and uses
gravity to close. Honda discloses first and second closing plates 8, 9 that are
moved along guide shafts 13 and that abut against stoppers 14. Honda, col.
3,11. 49-60. Honda also discloses biasing springs 19 to bias plates 8, 9
against a partition element and that the biasing springs close plates 8, 9. Id.
at col. 4,11. 3—8, 51—59. Given that Honda’s plates 8, 9 do not pivot and are
closed by springs, one of ordinary skill in the art would not understand
plates 8, 9 to be a flap consistent with how this term would be interpreted in
light of the Specification. Further, it is not apparent whether the Examiner
proposes to make a wholesale modification and remove all elements
associated with valves 8 and 9 to make the valve a flap system, or just
replace plates 8 and 9 with flaps. If it is the former, although we appreciate
that cost is often a factor in making a modification, here, Honda uses two
rigid valves instead of the single prior art valve in order to make a more
robust system, and discloses that using springs 19 against rigid plates 8
allows “the user to adjust the apparatus of the present invention in its
operation pressure.” Honda, col. 5,11. 22—26. The Examiner lacks
persuasive evidence supporting the position that the benefit gained from a
reduced cost outweighs Honda’s express desire to have an adjustable system.
If the later modification was envisioned, plates 8 and 9 work against springs
19 (see Honda, col. 3,1. 65—col. 4,1. 8) and a pivoting flap that uses gravity
to close would not work against a spring. In either case, the Examiner’s
modification is a substantial reconstruction without sufficient reasoning, or
adequate explanation of what is being changed. The Examiner has not
adequately established that the proposed modification would have been
obvious to one of ordinary skill in the art.
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Accordingly, we reverse the Examiner’s rejection of claim 5 as
unpatentable over Honda, Kaisan-cho, and Higashi-Shinagawa.
Rejection (IX); Claim 10
Claim 10 depends from claim 5. The Examiner does not rely on
Berkowitz in any manner that would remedy the deficiency of the rejection
of claim 5 based on Honda, Kaisan-cho, and Higashi-Shinagawa.
Accordingly, we reverse the Examiner’s rejection of claim 10 as
unpatentable over Honda, Kaisan-cho, Higashi-Shinagawa, and Berkowitz.
Rejection (X); Claim 18
Appellant relies on the arguments discussed above in Rejections (IV)
and (VI) in support of Rejection (X). Appeal Br. 28.
For the reasons discussed supra in Rejection (IV), we also affirm
Rejection (X).
Rejection (XI); Claims 19 and 20
Appellant does not separately argue claims 19 and 20 and states that
these claim stand or fall with claim 18. Appeal Br. 28. Accordingly, we
affirm rejection (XI) for the same reasons discussed above regarding
Rejections (IV) and (X).
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Rejection (XII); Claim 25
Appellant’s argument that claim 25 is patentable over Higashi-
Shinagawa, Kaisan-cho, and Fiddler for the same reasons as claims 5 and 6
(see Appeal Br. 28) is not persuasive for the reasons discussed above for
claims 5 and 6 in Rejections (I) and (V), and, thus, we also affirm Rejection
(XII).
Rejection (XIII); Claim 26
Appellant relies on the arguments discussed above in Rejection (XII)
in support of Rejection (XIII). Appeal Br. 28. For the same reasons
discussed supra in Rejection (XII), we also affirm Rejection (XIII).
Rejection (XIV); Claims 5—7, 9, 10, and 18—20
The Examiner finds that Cook discloses most of the limitations of
independent claims 5 and 18 including flaps 24. Final Act. 26—27.
Appellant argues that Cook’s riser 24 is “made of plastic or metal”
and is not a flap consistent with how one of ordinary skill in the art would
interpret “flap” in light of the Specification. Appeal Br. 30.
The Examiner responds that Cook’s element 24 is a flap because a
flap is a valve. Ans. 64.
Appellant’s arguments on this point are persuasive. As discussed
supra in Rejection (VIII), Appellant’s Specification discloses that “flap 26 is
of rectangular shape and . . . secured by a pair of rivets ... to bracket 23.”
Spec. 6—7. The Specification further discloses that the flap opens with a
change in pressure and that gravity assists in keeping the flap closed. Id. at
7. Thus, a “flap” consistent with the Specification is a pivotal member that
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pivots about one edge and uses gravity to close. Cook discloses a stiffened
plastic or metal riser that slides along a central spindle. See Cook, col. 3,11.
32—55, Figs. 2 & 7 (showing that riser 24 retains its shape when moved). In
addition, Cook discloses that riser 24 could be moved electronically prior to
any change in pressure. Id. at col. 4,11. 24—33. Given that Cook’s riser 24
does not pivot and can be controlled electronically, one of ordinary skill in
the art would not understand riser 24 to be a flap consistent with how this
term would be interpreted in light of the Specification.
The Examiner does not rely on the disclosures of Fiddler or Kaisan-
cho in any manner that would remedy the deficiencies of the rejection based
on Cook.
Accordingly, we reverse the rejection of claims 5—7, 9, 10, and 18—20
as unpatentable over Cook, Fiddler, and Kaisan-cho.
NEW GROUND OF REJECTION
We make the following new ground of rejection pursuant to 37 C.F.R.
§ 41.50(b).
Claim 10 is rejected under 35 U.S.C. § 103 as unpatentable over
Higashi-Shinagawa and Berkowitz.
Claim 10 depends from claim 5 and requires “an opening in at least
one of said housing parts for passage of an electrical line to at least one of
said resistors.”
Higashi-Shinagawa discloses all of the limitations of claim 5 as
discussed above regarding Rejection (II). Higashi-Shinagawa also shows
one end of heater wire 50 (resistor) extending through the front opening of
housing part (14). Higashi-Shinagawa, Figs. 4, 10 & 11. Claim 10 does not
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appear to exclude an opening in the front of the housing. Further, we agree
with the Examiner’s findings that “Berkowitz teaches a vent port for a
refrigerated cabinet (fig 1 (10)) wherein the vent port comprises a housing
(11/25/56), and an opening (47) in at least one of said housing parts for
passage of an electrical line (46) to at least one of said resistors (45).” Final
Act. 20 (citing Berkowitz, col. 5,1. 45—col. 6,1. 18). It would have been
obvious to a person having ordinary skill in the art at the time the invention
was made to modify a housing part of Higashi-Shinagawa to include an
opening in at least one of said housing parts for passage of an electrical line
to at least one of the resistors, as taught by Berkowitz, “thereby providing
the energy for the [resistor’s] operation” in a compact manner. See
Berkowitz, col. 6,11. 16—18, Fig. 1.
DECISION
(I) The Examiner’s rejection of claims 1, 3, and 4 under 35 U.S.C.
§ 102(b) as anticipated by Kaisan-cho is affirmed.
(II) The Examiner’s rejection of claims 5 and 23 under 35 U.S.C.
§ 102(b) as anticipated by Higashi-Shinagawa is affirmed.
(III) We do not reach the rejection of claims 1,3, and 4 under 35
U.S.C. § 103(a) as unpatentable over Kaisan-cho and Fiddler.
(IV) We do not reach the rejection of claims 5 and 23 under 35
U.S.C. § 103(a) as unpatentable over Higashi-Shinagawa and Fiddler. The
Examiner’s rejection of claims 18 and 24 under 35 U.S.C. § 103(a) as
unpatentable over Higashi-Shinagawa and Fiddler is affirmed.
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(V) The Examiner’s rejection of claims 6, 7, and 9 under 35 U.S.C.
§ 103(a) as unpatentable over Higashi-Shinagawa, Fiddler, and Kaisan-cho
is affirmed.
(VI) We do not reach the rejection of claims 5 and 23 under 35
U.S.C. § 103(a) as unpatentable over Higashi-Shinagawa and Schnorf.
The Examiner’s rejection of claim 24 under 35 U.S.C. § 103(a) as
unpatentable over Higashi-Shinagawa and Schnorf is affirmed.
(VII) The Examiner’s rejection of claims 6, 7, and 9 under 35 U.S.C.
§ 103(a) as unpatentable over Higashi-Shinagawa, Schnorf, and Kaisan-cho
is affirmed.
(VIII) The Examiner’s rejection of claim 5 under 35 U.S.C. § 103(a)
as unpatentable over Honda, Kaisan-cho, and Higashi-Shinagawa is
reversed.
(IX) The Examiner’s rejection of claim 10 under 35 U.S.C. § 103(a)
as unpatentable over Honda, Kaisan-cho, Higashi-Shinagawa, and
Berkowitz is reversed.
(X) The Examiner’s rejection of claim 18 under 35 U.S.C. § 103(a)
as unpatentable over Higashi-Shinagawa, Schnorf, and Fiddler is affirmed.
(XI) The Examiner’s rejection of claims 19 and 20 under 35 U.S.C.
§ 103(a) as unpatentable over Higashi-Shinagawa, Fiddler, and Kaisan-cho
is affirmed.
(XII) The Examiner’s rejection of claim 25 under 35 U.S.C. § 103(a)
as unpatentable over Higashi-Shinagawa, Kaisan-cho, and Fiddler is
affirmed.
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(XIII) The Examiner’s rejection of claim 26 under 35 U.S.C. § 103(a)
as unpatentable over Higashi-Shinagawa, Kaisan-cho, Fiddler, and Hohider
is affirmed.
(XIV) The Examiner’s rejection of claims 5—7, 9, 10, and 18—20 under
35 U.S.C. § 103(a) as unpatentable over Cook, Fiddler, and Kaisan-cho is
reversed.
We enter a NEW GROUND OF REJECTION of claim 10 under
35 U.S.C. § 103(a) as unpatentable over Higashi-Shinagawa and Berkowitz.
FINALITY OF DECISION
This decision contains a new ground of rejection pursuant to 37
C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides “[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review.”
37 C.F.R. § 41.50(b) also provides:
When the Board enters such a non-final decision, [Appellant],
within two months from the date of the decision, must exercise
one of the following two options with respect to the new
ground[s] of rejection to avoid termination of the appeal as to the
rejected claims:
(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new Evidence relating to
the claims so rejected, or both, and have the matter reconsidered
by the [EJxaminer, in which event the prosecution will be
remanded to the [EJxaminer. The new ground[s] of rejection
[are] binding upon the [EJxaminer unless an amendment or new
Evidence not previously of Record is made which, in the opinion
of the [EJxaminer, overcomes the new ground[s] of rejection
designated in [this] decision. Should the Examiner reject the
claims, [Appellant] may again appeal to the Board pursuant to
this subpart.
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Application 12/653,242
(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same Record. The
request for rehearing must address any new ground of rejection
and state with particularity the points believed to have been
misapprehended or overlooked in entering the new ground of
rejection and also state all other grounds upon which rehearing
is sought.
Further guidance on responding to a new ground of rejection can be
found in the Manual of Patent Examining Procedure § 1214.01.
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-IN-PART; 37 C.F.R, $ 41.50(b)
24