Ex Parte Mirza et al

Patent Trial and Appeal Board

Sep 29, 2016

12811348 (P.T.A.B. Sep. 29, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/811,348 10/02/2010
26948 7590 10/03/2016
VENJURIS, P,C
1938 E. OSBORN RD
PHOENIX, AZ 85016-7234
FIRST NAMED INVENTOR
Alper Mirza
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.
PHDL0860-064 5868
EXAMINER
MARTIN, ELIZABETH J
ART UNIT PAPER NUMBER
3744
NOTIFICATION DATE DELIVERY MODE
10/03/2016 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 ALPER MIRZA and SATI MUTLU
Appeal2015-001430
Application 12/811,348
Technology Center 3700
Before JOHN C. KERINS, BENJAMIN D. M. WOOD and
ARTHUR M. PESLAK, Administrative Patent Judges.
KERINS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Alper Mirza and Sati Mutlu (Appellants) seek our review under
35 U.S.C. § 134 of the final rejection of claims 1-12. We have jurisdiction
under 35 U.S.C. § 6(b ).
We AFFIRM-IN-PART.
THE INVENTION
Appellants' claimed invention is directed to a cooling device having a
shelf with first and second supporting walls. Claim 1, reproduced below, is
illustrative:
Appeal2015-001430
Application 12/811,348
1. A cooling device (1) comprising a body (2) wherein goods
are disposed, at least one door (3) providing access to inside of
the body (2) and at least one shelf (5) having a first supporting
wall ( 4) and a second supporting wall ( 104) wherein the first
supporting wall ( 4) and the second supporting wall ( 104) are of
different sizes and forms and are joined almost vertically to
each other by at least one edge each to form a base and a guard
and wherein the at least one shelf can be coupled in different
positions to the door (3) by selecting from the group consisting
of either
a I. position wherein the first supporting wall ( 4) is horizontal
and the second supporting wall (104) is vertical above the first
supporting wall (4) enabling the first supporting wall (4) to
carry the goods by serving as the base and the second
supporting wall ( 104) to serve as the guard above the base and
support the goods, or
a II. position wherein the second supporting wall (104) is
horizontal and the first supporting wall ( 4) is vertical above the
second supporting wall (104) enabling the second supporting
wall ( 104) to carry the goods by serving as the base and the first
supporting wall (4) to serve as the guard above the base and
support the goods.
THE REJECTIONS
The Examiner has rejected:
(i) claims 1, 2, and 4--7 under 35 U.S.C. § 102(b) as being anticipated
by Thomson (US 4,186,978, issued Feb. 5, 1980);
(ii) claims 3 and 8-12 under 35 U.S.C. § 103(a) as being unpatentable
over Thomson in view of Samdan (WO 2006/011084 Al, published Feb. 2,
2006); and
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Application 12/811,348
(iii) claims 5 and 6 under 35 U.S.C. §112, second paragraph, as being
indefinite for failing to particularly point out and distinctly claim that which
Appellants regard as the invention.
ANALYSIS
Claims 1, 2, and 4-7--Anticipation by Thomson
The Examiner finds that the subject matter of these claims is disclosed
in Thomson in the form of a tilt-down receptacle pivotably attached to a
refrigerator door. Final Act. 3-5. Appellants challenge the rejection,
asserting, inter alia, that the Examiner does not explicitly identify the
element regarded as corresponding to the claimed "second supporting wall,"
nor has the Examiner shown such a wall that acts as a base in one position
and as a guard in a second position. Appeal Br. 12.
In response, the Examiner provides the following annotated versions
of Figures 1 and 5 of Thomson:
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Application 12/811,348
Annotated Figures 1 and 5 of Thomson, reproduced above, are
elevation views of a refrigerator and refrigerator door, and a tiltable
reservoir attached to the reservoir door, respectively. Ans 9.
It can be seen from the above annotations that what the Examiner
regards as the first and second walls in the Figure 1 reservoir orientation are
not the same as what are regarded to be the first and second walls in the
Figure 5 reservoir orientation. The first supporting wall in Figure 1 is
neither of the first and second walls in Figure 5, and the second supporting
wall in Figure 1 is designated as the first supporting wall in Figure 5.
Claimed subject matter is anticipated only if the same device,
including all the claim limitations, is shown in a single prior art reference.
Every element of the claimed invention must be literally present, arranged as
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Application 12/811,348
in the claim. Perkin-Elmer Corp. v. Computervision Corp., 732 F.2d 888,
894 (Fed.Cir.), cert. denied, 469 U.S. 857 (1984); Kalman v. Kimberly-
Clark Corp., 713 F.2d 760, 771-72 (Fed. Cir. 1983), cert. denied, 465 U.S.
1026 (1984). The Examiner has not established that the Thomson patent
meets these criteria.
Claim 1 requires first and second supporting walls operating, in one
position, as a base and a guard, respectively, and in another position, as a
guard and a base. Claim 1 is not so broad as to encompass different
supporting walls to act as the first and second supporting walls depending on
the position of the shelf, or to have one wall serve as the first supporting
wall in one orientation and as the second supporting wall in another
orientation.
The Examiner's rejection of claim 1, and of claims 2 and 4--7, as
being anticipated by Thomson, is not sustained.
Claims 3 and 8-12--Unpatentability--Thomson/Samdan
The Examiner does not rely on Samdan in any manner that cures the
deficiency noted above with respect to the teachings of Thomson. The
rejection of claims 2 and 8-12 as being unpatentable over Thomson and
Samdan is not sustained.
Claims 5 and 6--Indefiniteness
Claims 5 and 6 are rejected as being indefinite in that "the first
position" in claim 5 and "the second position" in claim 6 lack proper
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Application 12/811,348
antecedent basis. Final Act. 3. 1 Appellants do not present arguments
directed to the rejection, and have thus waived any such arguments.
Accordingly, the rejection is summarily sustained.
DECISION
The rejection of claims 1, 2, and 4--7 under 35 U.S.C. § 102(b) is
reversed.
The rejection of claims 3 and 8-12 under 35 U.S.C. § 103(a) is
reversed.
The rejection of claims 5 and 6 under 35 U.S.C. § 112, second
paragraph, is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED-IN-PART
1 The rejection is not repeated in the Examiner's Answer, but neither is it
expressly withdrawn. The Answer includes a statement to the effect that all
rejections from the Final Action are maintained on appeal unless listed under
a subheading for "Withdrawn Rejections." Accordingly, we view the
rejection as pending on appeal.
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