Ex Parte Mitchell

Board of Patent Appeals and Interferences

Aug 21, 2012

11373342 (B.P.A.I. Aug. 21, 2012)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
11/373,342 03/10/2006 Alan Joseph Mitchell US20050021 6156
173 7590 08/21/2012
WHIRLPOOL CORPORATION - MD 0750
500 RENAISSANCE DRIVE - SUITE 102
ST. JOSEPH, MI 49085
EXAMINER
GONZALEZ, MADELINE
ART UNIT PAPER NUMBER
1778
MAIL DATE DELIVERY MODE
08/21/2012 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
________________

Ex parte ALAN JOSEPH MITCHELL
________________

Appeal 2011-007272
Application 11/373,342
Technology Center 1700
________________

Before ROMULO H. DELMENDO, MICHAEL P. COLAIANNI, and
GEORGE C. BEST, Administrative Patent Judges.

BEST, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2011-007272
Application 11/373,342

2
The Examiner finally rejected claims 1-3, 5-14, and 16-25 of
Application 11/373,342 as obvious under 35 U.S.C. § 103(a). Appellant
seeks reversal of these rejections pursuant to 35 U.S.C. § 134(a). We have
jurisdiction under 35 U.S.C. § 6(b).
For the reasons set forth below, we REVERSE.
Background
The ’342 application is directed towards an improved filter indicator
for a refrigerator. Spec. ¶ [0001]. Filter indicators are often used on
refrigerator/freezers to remind consumers to order or replace the water filter
that is part of the ice making system. Id. at ¶ [0002]. Common types of
indicators include colored LEDs with associated text or graphics that instruct
the user on what needs to be done, a two digit display that shows the percent
of life remaining in the filter, color changing indicators, and indicators that
change position. Id. at ¶¶ [0002]-[0004]. Each of these indicators may be
overlooked by the user or fail to convey to the user what action must be
taken. Id.
The ’342 application describes an improved indicator that is located at
or near the filter position, is highly visible and instructive to the user, and is
intuitive. Id. at ¶ [0005]. The goal is to improve filter replacement rates,
resulting in improved refrigerator operation. Id.
The improved filter indicator is shown in Figure 4 of the ’342
application, which is reproduced below.
Appeal 2011-007272
Application 11/373,342

3

Figure 4 is a side sectional view of an embodiment of the apparatus
described in the ’342 application.
In this embodiment, housing 70, which includes openable cap 74,
encloses water filter cartridge 72. Id. at ¶ [0032]. Controller 76 includes
filter life determination system 78. Id. at ¶ [0034]. When the filter life has
been determined to have expired, controller 76 sends a signal, which may be
transmitted via wire 80, to illuminating component 82. Id. Illuminating
component 82 illuminates upon receipt of the signal from controller 76. Id.
Light from illuminating component 82 travels via light pipe 84 to the outer
surface 86 of cap 74. Id. At outer surface 86, light from illuminating
component 82 illuminates graphics 88 that instruct the user to replace filter
cartridge 72. Id. at ¶ [0035].
Claim 1 of the ’342 application is representative and is reproduced
below:
Appeal 2011-007272
Application 11/373,342

4
1. An indicator for a refrigerator filter comprising:
a body having a fluid inlet and a fluid outlet with a fluid path
therebetween and configured to contain a replaceable filter
cartridge in the fluid path and including a cap arranged to
enclose the filter cartridge within the body and to be removable
from the body to permit a removal and replacement of the filter
cartridge;
a control having a filter life determination mechanism and
arranged to emit a life expiration signal only when a life of the
filter cartridge is determined to be expired; and
a visual display arranged in association with the body which
comprises:
an illuminating component mounted away from the cap
and fixed relative to the body which illuminates only
upon receipt of the signal from the control;
a light pipe at least partially carried on the removable cap
and extending towards the illuminating component to
transmit light from the illuminating component to the
cap; and
permanent graphics arranged on the cap so as to be
illuminated by the illuminating component via the light
pipe which graphics are visible on the exterior surface of
the cap.
App. Br. A-1.
Rejection
The Examiner finally rejected claims 1-3, 5-14, and 16-25 of the ’342
application under 35 U.S.C. § 103(a) as obvious over the combination of
U.S. Patent No. 6,375,834 B1 (“Guess,” issued April 23, 2002), U.S. Patent
No. 5,128,034 (“Kool,” issued July 7, 1992), U.S. Patent No. 6,572,233 B1
Appeal 2011-007272
Application 11/373,342

5
(“Northman,” issued June 3, 2003), and U.S. Patent No. 6,848,817 B2
(“Bos,” issued Feb. 1, 2005).
Issues
Appellant separately argues for the patentability of five groups of
claims:
1. Claims 1-3, 5, and 7-12;
2. Claim 6;
3. Claims 13, 14, 16, 17, and 19-22;
4. Claim 18; and
5. Claims 23-25.
Prior Art
Guess. The Examiner cited this reference because it describes a
refrigerator/freezer that includes a water filter and a filter monitoring system
that includes a visual display of the filter’s status. Ans. 4. Figure 1 of Guess
is reproduced below:

Figure 1 is a perspective view of the refrigerator, shown with its doors open.
Among other things, Figure 1 shows filter 44, which is located on the lower
Appeal 2011-007272
Application 11/373,342

6
part of cabinet 12. Guess, col. 4, ll. 39-64. The refrigerator also includes a
water filter status monitoring and indicating system. Id. at col. 5, ll. 39-40.
The water filter status monitoring system includes an LED display that
indicates the water filter’s status. Id. at col. 3, ll. 19-27. The LED is
preferably located on the upper front surface of refrigerator door 20. Id.
Kool. The Examiner cited this reference because it describes a water
filter and housing. The water filter has a filter body, an inlet and an outlet.
Ans. 4-5. Kool also describes including a flow meter and an LED end-of-life
indicator in the cap of the pressure vessel used to contain the filter. Id. at 5.
Northman. The Examiner cited this reference because it describes the
use of an illuminating component to transmit light to a graphical indicia
panel to show users the status of a component. Id. Specifically, Northman
describes an automobile rear view mirror that incorporates an indicia panel.
Northman, col. 3, ll. 12-26.
Bos. The Examiner cited this reference because it describes the use of
a light pipe. Ans. 5. Specifically, Bos describes an automobile rear view
mirror that includes an LED light source that can be used to illuminate part
of the car’s interior. Bos, Abstract. In one embodiment, Bos describes using
a light pipe to transmit light from the LED and to project it into the car’s
interior. Id., col. 8, ll. 52-63.
Discussion
An issue that is dispositive of this appeal with respect to each of the
five groups of claims is whether or not the Examiner has properly
established a prima facie case of obviousness. For the reasons set forth
below, we find that the Examiner has not done so. Therefore, we cannot
sustain the rejections of the ’342 application’s claims.
Appeal 2011-007272
Application 11/373,342

7
Group 1. Claim 1 is the only independent claim in this group, and
Appellant does not substantively argue any of the limitations in the
dependent claims. For purposes of this appeal, claims 2, 3, 5, and 7-12 stand
or fall with claim 1. See 37 C.F.R. § 41.37(c)(1)(vii).
Appellant argues that the Examiner has not established a prima facie
case of obviousness because the cited prior art does not contain several of
the elements of claim 1. App. Br. 18-21. Appellant and Examiner agree that
there are three elements of claim 1 that are not disclosed in the combination
of asserted references: (1) the specific location of the light pipe, (2) the
specific location of the permanent graphics, and (3) the specific location of
the illuminating component. Id. at 19 (citing Final Office Action 4-5).1
The Examiner argues that these missing elements would have been
obvious to a person of ordinary skill in the art. Ans. 12-13. In support of this
argument, the Examiner cites In re Japikse, 181 F.2d 1019 (CCPA 1950).
The Examiner’s reliance on Japikse is misplaced. The Examiner cites
that case as standing for the broad proposition that “shifting the position of a
particular element is unpatentable as long as the operation of the device is
not modified.” Ans. 12. This is too broad a reading of the case. Japikse
involved an obviousness rejection where the only difference between the
claimed invention and a single reference was the location of a starting
switch. Japikse, 181 F.2d at 1023. This case involves multiple differences
between the claimed invention and a combination of references.

1 Appellant and the Examiner disagree about whether Guess describes or
suggests several other claim elements. See App. Br. 16-18; Ans. 10-12. We
need not address this dispute because we resolve this appeal on the basis of
the elements that Appellant and the Examiner agree are not described in the
cited references.
Appeal 2011-007272
Application 11/373,342

8
In essence, the Examiner is attempting to create a per se rule of
upatentability as a substitute for the detailed inquiry required by § 103.
Reliance on such per se rules is legal error. In re Ochiai, 71 F.3d 1565, 1570
(Fed. Cir. 1995). The Examiner compounds this error by addressing each of
the relocated elements in isolation, rather than considering the claimed
invention as a whole. When considered as a whole, it is clear that the
claimed invention operates in a different way than the various prior art
devices because it overcomes the deficiencies in the prior art that were
identified in the ’342 application’s Specification.
In this case, when the proper analysis is conducted, we find that the
Examiner has not established a prima facie case of obviousness. We cannot
sustain the rejection of claim 1 of the ’342 application. Because claims 2, 3,
5, and 7-12 depend from claim 1, we reverse the rejection of these claims for
the same reasons.
Group 2. Claim 6 is the only claim in this group and is reproduced
below:
6. An indicator according to claim 1, wherein the indicator
includes a second visual display operated by the control
providing a user with an indication of the remaining life of the
filter cartridge.
App. Br. A-2.
In addition to the arguments advanced in support of claim 1,
Appellant argues that the prior art does not teach the claimed second visual
display. App. Br. 25-26. The Examiner asserts that Guess teaches a second
visual display because the indicator described in Guess has both a red and a
green LED. Ans. 7.
Appeal 2011-007272
Application 11/373,342

9
The Examiner is incorrect. As Guess clearly explains, the red and
green LEDs are part of the same visual display, and are used to indicate
three different water filter status states. Guess, col. 7, ll. 24-51.
For this reason, in addition to those discussed in connection with
Group 1, supra, we cannot sustain the Examiner’s rejection of claim 6.
Group 3. This group consists of claims 13, 14, 16, 17, and 19-22.
Claim 13 is the only independent claim in this group. For purposes of this
appeal, claims 14, 16, 17, and 19-22 stand or fall with claim 13. See
37 C.F.R. § 41.37(c)(1)(vii).
Claim 13 is analogous to claim 1, and the arguments advanced in
support of its patentability are identical. App. Br. 27-29. For the reasons set
forth in our discussion of Group 1, we cannot sustain the Examiner’s
rejection of this claim.
Group 4. Claim 18 of the ’342 application is the only claim in this
group. This claim is analogous to claim 6, and the arguments advanced in
support of its patentability are identical. Id. at 29-30. For the reasons set
forth in our discussion of Group 2, we cannot sustain the Examiner’s
rejection of this claim.
Group 5. This group consists of claims 23-25. Claim 23 is the only
independent claim. For purposes of this appeal, claims 24 and 25 will stand
or fall with claim 23. See 37 C.F.R. § 41.37(c)(1)(vii).
Claim 23 is analogous to claim 1, and the arguments advanced in
support of its patentability are identical. App. Br. 31-33. For the reasons set
forth in our discussion of Group 1, we cannot sustain the Examiner’s
rejection of this claim.
Appeal 2011-007272
Application 11/373,342

10
Conclusion
For the foregoing reasons, we cannot sustain the Examiner’s rejection
of claims 1-3, 5-14, and 16-25 of the ’342 application.
REVERSED

bar