12594108 (P.T.A.B. May. 3, 2016)

Ex Parte Hazir et al

Patent Trial and Appeal BoardMay 3, 2016

12594108 (P.T.A.B. May. 3, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 12/594,108 0913012009 26948 7590 05/05/2016 VENJURIS, P,C 1938 E. OSBORN RD PHOENIX, AZ 85016-7234 FIRST NAMED INVENTOR Sefa Hazir 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. PHDL0860-048 1738 EXAMINER WHATLEY, KATELYNB ART UNIT PAPER NUMBER 1714 NOTIFICATION DATE DELIVERY MODE 05/05/2016 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): docketing@venjuris.com vclmdocket@venjuris.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte SEP A HAZIR and AHMET IHSAN YUCE Appeal2014-007430 Application 12/594, 108 Technology Center 1700 Before MICHAEL P. COLAIANNI, JACQUELINE WRIGHT BONILLA, and BRIAND. RANGE, Administrative Patent Judges. RANGE, Administrative Patent Judge. DECISION ON APPEAL SUMMARY Appellants appeal 1 under 35 U.S.C. Â§ 134(a) from a rejection of claims 1--4, 6-1 7, and 19-21. Appeal Br. 6. We have jurisdiction. 35 U.S.C. Â§ 6(b). We REVERSE. 1 According to the Appellants, the real party in interest is "Arcelik Anonim Sirketi a Turkish Joint Stock Company." Appeal Br. 4. Appeal2014-007430 Application 12/594, 108 STATEMENT OF CASE Appellants describe the present invention as relating to "a household appliance that is prevented to be set by the user to the program mode or the service mode erroneously." Spec. 1. In one embodiment, the appliance changes to service mode via a "reed relay, that is, it can be opened or closed by the magnetic field effect." Spec. 2. Claims 1, 11, and 21 are the only independent claims on appeal. These three claims are reproduced below with emphases added to limitations at issue in this appeal: 1. A household appliance comprising a control unit having a special mode other than operating and stand-by modes for controlling the household appliance and a switch that is activated by a magnet (M) which is separate from the household appliance and wherein the special mode of the control unit is prevented until the switch is activated by the magnet. 11. A household appliance and a magnet that is separate from the household appliance, the household appliance comprising: a control unit for controlling the employment of operating programs selected automatically or by the user and a switch which is separate from the control unit and whose location is selected from the group consisting of a rear side of the household appliance or a bottom of the household appliance and wherein the switch is activated by the magnet in order to change to a special mode other that an operating mode or stand-by mode. 21. A household appliance and a magnet that is separate from the household appliance, the household appliance comprising: a control unit that can be controlled by the user and a switch which is separate from the control unit and whose location is selected from the group consisting of a rear side of the household appliance or a bottom of the household appliance and 2 Appeal2014-007430 Application 12/594, 108 wherein the switch is activated by the magnet in order to change to a special mode other that [sic] an operating mode or stand-by mode and wherein the magnet near the control unit will not activate the switch. Appeal Br. 27-28, 30 (Claim Appendix). REFERENCES The Examiner relied upon the prior art below when rejecting the claims on appeal: Musone Dietrich et al. (hereinafter "Dietrich") US 7,380,423 Bl June 3, 2008 US 2005/0205395 Al Sept. 22, 2005 Shadrach GB 2212947 A Aug. 2, 1989 REJECTIONS The Examiner made the following rejections: Rejection 1. The Examiner rejected claims 1, 3, 4, 6, 8-11, 13-16, and 19-21under35 U.S.C. Â§ 103 as unpatentable over Dietrich. Ans. 2.2 Rejection 2. The Examiner rejected claims 2 and 12 under 35 U.S.C. Â§ 103 as unpatentable over Dietrich and Shadrach. Id. at 5. Rejection 3. The Examiner rejected claims 7 and 17 under 35 U.S.C. Â§ 103 as unpatentable over Dietrich and Musone. Id. ANALYSIS Each independent claim requires a magnet separate from the appliance. The Examiner admits that Dietrich "does not explicitly state that the magnet is separate from the appliance." Final Act. 3. The Examiner nonetheless concludes that the subject matter of each independent claim (claims 1, 11, and 21) would have been obvious over Dietrich because 2 The Examiner correctly notes that the Appellants incorrectly state the pending rejections at page 12 of the Appeal Brief. Ans. 2. 3 Appeal2014-007430 Application 12/594, 108 making a switch activated by a magnet that is separate from the household appliance involves constructing a previously integral structure in separate elements. Final Act. 3-5; Ans. 2--4, 7. According to the Examiner, constructing those previously integral structure in separate elements involved only routine skill in the art, citing In re Dulberg, 289 F.2d 522 (CCPA 1961). Final Act. 3. Appellants argue that it would not have been obvious to make Dietrich's magnet and appliance separate. Appeal Br. 14. Appellants explain that Dietrich teaches an appliance that includes a magnetic rotary selector. Id. at 15-16. Appellants also explain why it would make little sense to separate the magnetic selector from Dietrich's appliance. Id. at 19. As a threshold matter, we construe the claims' recited language concerning the separate magnet. Claim 1 recites "a switch that is activated by a magnet (M) which is separate from the household appliance." The preamble of claims 11 and 21 each recite "a magnet that is separate from the household appliance," and we construe this portion of the preambles as limiting because the body of these claims use this preamble recitation as antecedent basis for "the magnet" recited in the body of the claims. See, e.g., Pacing Techs., LLC v. Garmin Int 'l, Inc., 778 F.3d 1021, 1023-1024 (Fed. Cir. 2015) (holding that recitation of in preamble was limiting where it provided antecedent basis for recitation in body of claims). We also construe "separate" in the context of these claims and the Specification as "set or kept apart3." This construction is consistent with the ordinary 3 Merriam Webster's Collegiate Dictionary, Tenth Edition 1067 (Merriam- Webster, Inc., 1993) (defining "separate" as "set or kept apart: DETACHED"). 4 Appeal2014-007430 Application 12/594, 108 meaning and is consistent with the Specification's emphasis on the magnet not being attached to the appliance. See, e.g., Spec. 3--4; Figs. 1--4. With this construction in mind, we agree with Appellants that, based upon the record before us, the Examiner's stated rationale is inadequate to support a prima facie obviousness determination. The Examiner provides no evidence from Dietrich or the other cited references that suggests that Dietrich's magnetic selector be set or kept apart from Dietrich's appliance or that separating the magnetic selector is a predictable improvement. The Examiner's reliance on Dulberg is likewise misplaced. The facts of Dulberg are readily distinguishable from the present situation. There, the court considered a lipstick holder that was fully met by a prior art patent except for a removable cap (which allowed access to the bottom end of the tube for easier removal and replacement of lipstick). Dulberg, 289 F.2d at 523. The court upheld affirmance of the examiner's rejection, holding that "if it were considered desirable for any reason to obtain access to the end of Peterson's holder to which the cap is applied, it would be obvious to make the cap removable for that purpose." Id. The court also stated: "[n]o specific prior art teaching would be necessary to show that operation." Id. Where a prior art patent in Dulberg presented evident reason for modifying the prior art (i.e., to access the lipstick holding area), no reason to remove Dietrich's magnetic selector is evident sufficiently in the record before us in this case. Moreover, the present record does not support a finding that removal of the magnetic selector would be as trivial as removing a lipstick cap. Thus, the present facts differ substantially from those in Dulberg. As such, we decline to extend the reasoning of Dulberg under the present circumstances, and we hold that the Examiner has not adequately 5 Appeal2014-007430 Application 12/594, 108 explained why a magnet separate from the appliance would have been obvious in view of the cited art. We therefore reverse the Examiner's rejections of claims 1, 11, and 21. We likewise reverse the rejections of claims 2--4, 6-10, 12-17, 19, and 20 because each of those claims directly or indirectly depend upon claims 1 or 11 and thus include the same recitations concerning the separate magnet. DECISION For the above reasons, the Examiner's rejection of claims 1--4, 6-17, and 19-21 is reversed. REVERSED 6 Application/Control No. Applicant(s)/Patent Under Reexamination 12/594, 108 Sefa Hazir et al. Notice of References Cited Examiner Art Un it -4"7f"\f"\ I /UU Katelyn Whatley U.S. PATENT DOCUMENTS * DOCUMENT NO. DATE NAME CLASS SUBCLASS D A D B D c D D D E D F D G D H D I D J D K D L D M FOREIGN PATENT DOCUMENTS * DOCUMENT NO. DATE COUNTRY NAME CLASS SUBCLASS D N D 0 D p D Q D R D s D T NON-PATENT DOCUMENTS * DOCUMENT (Including Author, Title Date, Source, and Pertinent Pages) D u Merriam Webster's Collegiate Dictionary, Tenth Edition 1067 (Merriam-Webster, Inc., 1993). D v D w D x *A copy of this reference 1s not being furnished with this Office action. (See Manual of Patent Exam1n1ng Procedure, Section 707.05(a).) **APS encompasses any electronic search i.e. text, image, and Commercial Databases. 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