Ex Parte Ihle et al

Patent Trial and Appeal Board

Aug 27, 2013

11918458 (P.T.A.B. Aug. 27, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD

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Ex parte HANS IHLE and WOLFGANG KENTNER
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Appeal 2011-005085
Application 11/918,458
Technology Center 3700
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Before JENNIFER D. BAHR, STEFAN STAICOVICI, and
GAY ANN SPAHN, Administrative Patent Judges.

STAICOVICI, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF THE CASE
Hans Ihle and Wolfgang Kentner (Appellants) appeal under 35 U.S.C.
§ 134 from the Examiner’s decision rejecting claims 12-27. Claims 1-11
have been canceled. We have jurisdiction over this appeal under 35 U.S.C.
§ 6(b).

INVENTION
Appellants’ invention relates to “a refrigeration device having a water
supply pipe extending between cabinet and door of the refrigeration device.”
Spec. 1, ll. 5-6.
Claim 12 is illustrative of the claimed invention and reads as follows:
12. A refrigeration device comprising:
a.) a cabinet;
b.) a door, the door and the cabinet together
delimiting a cooling chamber and the door being
selectively openable to permit access to the
cooling chamber and closeable to restrict access to
the cooling chamber;
c.) a water supply pipe having a section
extending in the cabinet and another section
extending in the door; and
d.) a coupling, the coupling being disposed
between a connected state when the door is closed
in which the coupling interconnects the section
extending in the cabinet and the other section
extending in the door with one another, whereby a
supply of water can flow through the section
extending in the cabinet, the coupling, and the
other section extending in the door, and being
disposed in a separated state when the door is open
in which the coupling does not interconnect the
section extending in the cabinet and the other
section extending in the door.

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REJECTIONS
The following rejections are before us for review:
The Examiner rejected claims 12-14 and 16-27 under 35 U.S.C.
§ 103(a) as unpatentable over Nebbia (WO 2006/097838 A2,
published Sep. 21, 2006) and Oh (US 5,791,523, issued Aug. 11,
1998). 1
The Examiner rejected claim 15 under 35 U.S.C. § 103(a) as
unpatentable over Nebbia, Oh, and Klein (US 7,464,723 B2, issued
Dec. 16, 2008). 2

SUMMARY OF DECISION
We REVERSE.

ANALYSIS
The Examiner found that Nebbia discloses all the limitations of
independent claims 12 and 23 with the exception of a coupling having a first
part disposed in the cabinet and a second part disposed in the door such that
the first and second parts are engaged in fluid communication when the door
is closed and disengaged when the door is open. Ans. 3-4; see also App.
Br., Claims App’x. The Examiner further found that Oh discloses a

1 In view of Appellants’ After-Final Amendment, filed March 8, 2010,
the Examiner included in this rejection claims 12-14 and 16-22. Compare
Final Rej., mailed December 18, 2009, at 2, 5, and 7 and Examiner’s Answer
(“Ans.”), mailed September 17, 2010, at 3; see also Advisory Action, mailed
March 23, 2010. Arguments Appellants could have made but chose not to
make in the Briefs are waived. See 37 C.F.R. § 41.37(c)(1)(vii).
2 For the reasons expressed above in footnote [1], the Examiner
included the teachings of Oh in this rejection. Compare Final Rej. at 4 and
Ans. 3.
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refrigerator including a coupling having a first part, i.e., magnet 34, disposed
on storage vessel 40 and a second part, i.e., magnet 51, disposed on actuator
51 in door 22. Ans. 4.
The Examiner further explained that, “[a]lthough Oh does not teach
the exact arrangement as claimed, the teachings of Oh make the claimed
arrangement obvious” (see Ans. 14) because like the claimed invention, Oh
teaches “control elements on the door and the cabinet,” which due to their
relative position to each other control fluid dispensing (see Ans. 15).
Pointing to the valves described in Figures 16-20 of Nebbia, the Examiner
concludes that in view of the teachings of Oh, it would have been obvious to
a person of ordinary skill in the art “to modify the system of Nebbia to
include the coupling assembly that is the same type of valve as shown in
Figures 16-20 having a first part disposed in the cabinet and a second part
disposed in the door . . . in order to prevent unwanted dispensing of water
and to simplify the assembly arrangement.” Ans. 14; see also Nebbia, P. 22,
l. 8 through P. 24, l. 35.
Although we appreciate the Examiner’s position that Oh discloses a
coupling that allows for fluid communication between water vessel 40 in
compartment 21 and water discharge recess 23 in door 22, when the door is
closed, nonetheless, the Examiner has not made any findings as to the
particular modification of Nebbia’s refrigerating device.
Specifically, the Examiner has not made any findings as to the
location of parts 145 and 146 of Nebbia’s connectors on cabinet 2 and door
5, respectively. We note that in Nebbia, water supply tubing 24a rises
within cabinet 2 and passes over to door 5 which includes both water tank 12
and dispensing mechanism 9, 10. See Nebbia, fig. 4. The Examiner does
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not make findings regarding modifying the structure of Nebbia to
incorporate a “coupling,” such as the connectors of Figures 16-20 of Nebbia,
so as to provide fluid communication between a water supply pipe in
cabinet 2 and water supply pipe in door 5 when door 5 is closed, as called
for by each of independent claims 12 and 23.
Furthermore, the Examiner has not made any findings as to the
capability of Nebbia’s connectors 145, 146 to be used as a “coupling,” as
called for by independent claims12 and 23. In contrast to independent
claims 12 and 23, which require that “the first and second parts are . . .
disengaged when the door is open,” Nebbia’s connectors 145 and 146 are
not intended to be disconnected because Nebbia specifically discloses that a
proper mechanical coupling between parts 145 and 146 is obtained when
connector 146 is inserted into connector 145 such that a fluid-tight seal is
obtained. Nebbia, P. 23, ll. 23-32 and fig. 18.
Moreover, even assuming arguendo that a coupling mechanism is
provided in the refrigerator device of Nebbia between a water supply pipe in
cabinet 2 and a water supply pipe in door 5, we do not agree with the
Examiner that such a modification would prevent accidental water spillage
when door 5 is opened, as the Examiner proposes. See Ans. 4. Since in
Nebbia water tank 12 and dispensing mechanism 9, 10 are directly
connected and are both located within door 5, accidental water spillage can
still occur.
In conclusion, the Examiner has not made the initial factual findings
required to demonstrate a prima facie case of obviousness of independent
claims 12 and 23. See In re Warner, 379 F.2d 1011, 1017 (CCPA 1967) (the
examiner has the initial duty of supplying the requisite factual basis and may
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not, because of doubts that the invention is patentable, resort to speculation,
unfounded assumptions, or hindsight reconstruction to supply deficiencies in
the factual basis). We thus agree with Appellants that “[t]he explanation that
‘the teachings of Oh make the lacking subject matter obvious’ is insufficient
to support a rejection under § 103(a).” App. Br. 10. Therefore, we do not
sustain the rejection of claims 12-14 and 16-27 under 35 U.S.C. § 103(a) as
unpatentable over Nebbia and Oh.
With respect to the rejection of claim 15, the addition of Klein does
not remedy the deficiencies of Nebbia and Oh. Accordingly, we likewise do
not sustain the rejection of claim 15 as unpatentable over the combined
teachings of Nebbia, Oh, and Klein.

SUMMARY
The Examiner’s decision to reject claims 12-27 is reversed.

REVERSED

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