Ex Parte LaibleDownload PDFPatent Trial and Appeal BoardSep 13, 201311801072 (P.T.A.B. Sep. 13, 2013) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte KARL-FRIEDRICH LAIBLE ____________ Appeal 2011-008172 Application 11/801,072 Technology Center 3600 ____________ Before MICHAEL C. ASTORINO, HYUN J. JUNG, and GEORGE R. HOSKINS, Administrative Patent Judges. ASTORINO, Administrative Patent Judge. DECISION ON APPEAL Appeal 2011-008172 Application 11/801,072 2 STATEMENT OF THE CASE The Appellant appeals under 35 U.S.C. § 134 from the Examiner’s decision finally rejecting claims 16-20 and 24.1 The Examiner rejects: claim 17 under 35 U.S.C. § 112, second paragraph, as indefinite; claims 16 and 18 under 35 U.S.C. § 102(b) as anticipated by Chekal2; and, claims 17, 19, 20, and 24 under 35 U.S.C. § 103(a) as unpatentable over Chekal and Erickson3. We have jurisdiction over the appeal under 35 U.S.C. § 6(b). We AFFIRM-IN-PART. Claimed Subject Matter Claim 16, the sole independent claim on appeal, is reproduced below and is representative of the subject matter on appeal: 16. A refrigeration device comprising: a body having at least one inner chamber provided therein; a first door and a second door that jointly close the inner chamber; and an upright member pivotally mounted on the first door, the upright member having an inner side that extends between the first door and the second door when the first door and the second door are disposed to jointly close the inner chamber, the upright member being pivotable in connection with an opening movement of the first door and the upright member being adjustable in height relative to at least one of the body and the first door. 1 Claims 1-15, 26, and 27 are cancelled. App. Br. 3. The Appellant appeals the rejections of claims 16-25 and 28-30. Id. However, claims 21-23, 25, and 28-30 are objected to as being dependent upon rejected base claims, and the Examiner indicated that each claim would be allowable if rewritten in independent form to include all of the limitations of the base claim and any intervening claims. Final Off. Act. 7; see Ans. 2. 2 US 2005/0046319 A1, pub. Mar. 3, 2005. 3 US 7,334,293 B2, iss. Feb. 26, 2008 Appeal 2011-008172 Application 11/801,072 3 OPINION Indefiniteness Claim 17 recites, “[t]he refrigeration device according to claim 16, wherein the upright member is arranged so that it can be adjusted continuously in height to one of a plurality of different height mounting dispositions.” App. Br., Claims Appendix. The Examiner explains that claim 17 “is unclear in describing how the upright member can be arranged so that it can be adjusted continuously in height, a limitation that is not adequately supported in light of the specification or drawings.” Ans. 4 (emphasis added). The Appellant contends that in light of the Specification one of ordinary skill in the art would have understood the continuous adjustment limitation of claim 17. See App. Br. 10 (citing Spec. 1:29-31 and 6:5-15). The Appellant’s contention is persuasive for the following reasons. The Appellant asserts that the Specification discloses that “[t]he height adjustment can be embodied in steps or continuously, in which case an eccentric arrangement which acts positively on the supporting bolt could be envisaged, for example, for the continuous height adjustment.” App. Br. 10 (citing Spec. 1, ll. 29-31 (emphasis added)). In response, Examiner explains that “[t]he description, ‘Eccentric arrangement which acts positively on the supporting bolt’, leaves out adequate structural details as to how the upright member will be adjusted continuously in height.” Ans. 11. However, the specific structural details are not required to make claim 17 definite. In this case, a skilled artisan would understand what is claimed when claim 17 is read in light of the Specification. Orthokinetics, Inc. v. Safety Travel Chairs, Inc., 806 F.2d 1565, 1576 (Fed. Cir. 1986) (The test for definiteness under 35 U.S.C. § 112, second paragraph is whether “those Appeal 2011-008172 Application 11/801,072 4 skilled in the art would understand what is claimed when the claim is read in light of the specification.”) Additionally, the Appellant also asserts that the Specification includes an embodiment of the continuous adjustment feature at page 6, lines 5-15. Id. The Specification at page 6, lines 5-15, along with the drawings, discloses three discrete height positions of the upright member 16 relative to the door 1 based on the orientation of locking element 10. Spec. figs. 4, 5; see Spec. 6, ll. 3-5; see also Ans. 4, 11. Further, the Specification at page 6, lines 3, 6, and 8 discloses that the locking member 10 “is inserted” and “is removed” which suggests that the upright member is adjustable. Accordingly, a person of ordinary skill in the art reading claim 17 in light of the Specification would understand that the upright member can be adjusted continuously from one of the three different heights to another of the three different heights. Thus, the rejection of claim 17 as indefinite is not sustained. Anticipation by Chekal Claim 16 The Examiner correctly finds that Chekal’s rotating/pivoting mullion assembly 145 corresponds to the claimed “upright member.” Ans. 4-5 (citing paras. [0031]-[0032], figs. 7-11). See also [0029]. Chekal’s rotating/ pivoting mullion assembly 145 “includes a mullion bar 148 having first and second mullion bar members 153 and 154” and “first and second hinge members 206 and 207 which pivotally secure mullion bar 148 to door member 28.” Paras. [0029], [0031] (emphasis omitted). Appeal 2011-008172 Application 11/801,072 5 The Appellant contends that Chekal’s “separate first and second mullen [sic] bar members with hinge elements mounted to both the doors and the mullon [sic] would not anticipate the claimed upright member.” App. Br. 6. However, the Appellant does not persuasively explain why Chekal’s rotating/pivoting mullion assembly 145 does not correspond to the claimed “upright member.” Rather, the Appellant merely recites the limitation of claim 16 directed to the “upright member” and reiterates the Examiner’s findings pertaining to that limitation. See App. Br. 5, 7. The Appellant also contends that Chekal teaches away from the present invention because the Background of the Invention section of the Chekal patent expresses awareness of the added cost of the design of a rotating or pivoting mullion bar that requires additional parts and manufacturing steps due to retaining and locking mechanisms. App. Br. 6 (citing Chekal, para. [0007]). However, the question of whether a prior art reference “teaches away” from the claimed subject matter is irrelevant to an anticipation analysis. See Celeritas Techs., Ltd. v. Rockwell Int’l Corp., 150 F.3d 1354, 1361 (Fed. Cir. 1998) (“A reference is no less anticipatory if, after disclosing the invention, the reference then disparages it. Thus, the question whether a reference ‘teaches away’ from the invention is inapplicable to an anticipation analysis.”) (citations omitted). Additionally, although the invention disclosed in the Appellant’s Specification includes a locking mechanism, claim 16 is not so limiting. For example, claim 16 uses the “open-ended” transitional term “comprising” and does not call for a locking mechanism. See Ans. 9; Genentech, Inc. v. Chiron Corp., 112 F.3d 495, 501 (Fed. Cir. 1997) (“‘Comprising’ is a term of art used in claim language which means that the named elements are essential, but other Appeal 2011-008172 Application 11/801,072 6 elements may be added and still form a construct within the scope of the claim.”). As such, the Appellant does not cogently explain error in the Examiner’s rejection of claim 16. Thus, the Examiner’s rejection of claim 16 is sustained. Claim 18 Claim 18 recites, “[t]he refrigeration device according to claim 16, wherein the upright member is arranged so that it can be adjusted in height in steps.” App. Br., Claims Appendix (emphasis added). The Examiner finds that Chekal’s upright member (rotating/pivoting mullion assembly) 145 is arranged so that it can be adjusted in height in steps by use of the multi-lobed cam (214, 226) which moves against a bias of spring 236. See Ans. 5, 9 (citing paras. [0031], [0032], [0035]). The Appellant contends “that the operating positions of Chekal . . . do not correspond with height adjustments as claimed in claim 18.” App. Br. 8. The Appellant’s contention is persuasive. As pointed out by the Appellant, Chekal discloses “that the first and second cam members each include multiple lobes that are adapted to nest one within the other.” Id. (citing para. [0010]). Indeed, Chekal discloses that “multi-lobed cam member 226 rotates and raises upward relative to multi[-]lobed cam member 214.” Para. [0035]; see also paras. [0031], [0032], figs. 5, 6. The relative motion of the multi-lobed cam members 214 and 216, which move against the bias of spring 236, seems to follow along contours of the surfaces of each cam member. Since the contours of the surfaces of the cam members lack steps, the Examiner’s finding that the cam members can be adjusted in height in steps is inadequately supported. Thus, the Examiner’s rejection of claim 18 is not sustained. Appeal 2011-008172 Application 11/801,072 7 Obviousness over Chekal and Erickson Claim 17 Claim 17 recites, “[t]he refrigeration device according to claim 16, wherein the upright member is arranged so that it can be adjusted continuously in height to one of a plurality of different height mounting dispositions.” App. Br., Claims Appendix. The Examiner finds that Chekal does not disclose, but that the Erickson does disclose, the aforementioned limitation of claim 17. Ans. 5-6. The Examiner concludes that it would have been obvious “to modify the hinges of Chekal by substituting them for the suspension device (hinge) of Erickson, since such a modification would allow for the upright member to be adjusted and leveled in case of an uneven mounting of the upright member to the first door.” Ans. 6. The Appellant contends that a skilled artisan would not look to Erikson’s hinge design because Chekal’s hinge design has “the first hinge element . . . mounted to one of the French-style doors and the second hinge element . . . secured to the rotating mullion.” App. Br. 9. This contention is unpersuasive. The Examiner explains that Erickson is an obvious variant of other hinges, most notably, Chekal’s first and second hinge members 206 and 207. See Ans. 10. The Appellant also contends that Erickson’s hinge 10 “would not make up for the deficiency of the operating positions of Chekal . . . not corresponding with height adjustments as claimed.” App. Br. 9. Initially, we note that any alleged deficiency of Chekal’s hinge is irrelevant since the Examiner’s rejection replaces Chekal’s hinge with Erickson’s hinge. Since the Appellant does not contend that Erickson’s hinge does not correspond to Appeal 2011-008172 Application 11/801,072 8 the height adjustments as claimed, the Appellant’s contention is unpersuasive. Additionally, the Appellant contends that the substitution of Erickson’s hinge for Chekal’s hinges “would not achieve a desired action, particularly for the deficiency of the operating positions of Chekal . . . not corresponding with height adjustments as claimed.” Id. However, the Appellant does not persuasively explain why the Examiner’s substitution would not result in the invention of claim 17. Thus, the Examiner’s rejection of claim 17 is sustained. Claims 19, 20, and 24 The Appellant asserts that “[c]laims 19, 20, and 24 are allowable at least based on their dependency on claim 16, the deficiencies thereof not made up for by the disclosure of Erickson.” Id. However, as discussed above, the Appellant does not cogently explain an error with the Examiner’s rejection of claim 16. Thus, we sustain the Examiner’s rejection of claims 19, 20, and 24. DECISION We REVERSE the rejections of: claim 17 under 35 U.S.C. § 112, second paragraph, as indefinite; and, claim 18 under 35 U.S.C. § 102(b) as anticipated by Chekal. We AFFIRM the rejections of: claim 16 under 35 U.S.C. § 102(b) as anticipated by Chekal; and, claims 17, 19, 20, and 24 under 35 U.S.C. § 103(a) as unpatentable over Chekal and Erickson. Appeal 2011-008172 Application 11/801,072 9 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). AFFIRMED-IN-PART Klh Copy with citationCopy as parenthetical citation