Ex Parte Mohebbi et alDownload PDFPatent Trial and Appeal BoardAug 27, 201411852355 (P.T.A.B. Aug. 27, 2014) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte BEHROOZ MOHEBBI, RON ANDERSON, BRUCE KOPF, XIAOYONG FU, JON FREESMEIER, and LOU MONTUORO1 ____________________ Appeal 2012-006763 Application 11/852,355 Technology Center 3700 ____________________ Before, RICHARD E. SCHAFER, SALLY G. LANE, and ROBERT L. KINDER, Administrative Patent Judges. Opinion for the Board filed by Administrative Patent Judge KINDER. Opinion expressing additional views filed by Administrative Patent Judge SCHAFER. KINDER, Administrative Patent Judge. DECISION ON APPEAL Appellants seek our review under 35 U.S.C. § 134(a) of the Examiner’s Final Rejection of claims 1–21. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. 1 The real party in interest is Whirlpool Corporation. Appeal 2012-006763 Application 11/852,355 2 STATEMENT OF THE CASE Appellants’ Invention The present invention relates generally to the field of refrigeration and more particularly to a compartment for a refrigerated appliance that uses a magneto-caloric effect to quickly thaw or chill food items on a surface. Claims on Appeal Claims 1–21 are the claims on appeal. Because Appellants make the same arguments for all of the claims on appeal, we select independent claim 1 as representative. See 37 C.F.R. § 41.37(c)(1)(vii) (2011). Claim 1 recites: 1. A food refrigeration appliance comprising: a refrigerated cabinet; a thaw/chill compartment located within the refrigerated cabinet, the thaw/chill compartment comprising a thaw/chill surface configured to be selectively heated or cooled by a magneto-caloric element in order to thaw or chill food within the thaw/chill compartment; and a controller electrically coupled to the magneto-caloric element for selectively operating the thaw/chill compartment to thaw or to chill food within the thaw/chill compartment. App. Br. 24, Claims Appendix. Evidence Considered Kahn US 3,108,444 Oct. 29, 1963 Dean US 6,446,441 B1 Sept. 10, 2002 Miozza et al. US 2004/0231339 Al Nov. 25, 2004 Wayburn et al. US 7,100,389 Bl Sept. 5, 2006 Appeal 2012-006763 Application 11/852,355 3 Examiner’s Rejections Appellants seek review of the following rejections: I. Claims 1–5, 9–12 and 15–19 are rejected under 35 U.S.C. § 103(a) as unpatentable over Miozza and Kahn. II. Claims 6, 7, 13, 14, and 20 are rejected under 35 U.S.C. § 103(a) as unpatentable over Miozza, Kahn and Wayburn. III. Claims 8 and 21 are rejected under 35 U.S.C. § 103(a) as unpatentable over Miozza, Kahn and Dean. Issues on Appeal The dispositive issue on appeal is whether the Examiner erred in rejecting claims 1–21 under 35 U.S.C. § 103(a) as being unpatentable. In particular, the appeal turns on whether the Examiner established that one skilled in the art would have had sufficient reason to combine Miozza and Kahn. ANALYSIS Appellants argue, inter alia, that the combination of Miozza and Kahn would render the prior art invention unsatisfactory for the intended purpose set forth in each of Appellants’ claims. App. Br 7. Appellants note that each of the claims in the application is directed to a food refrigeration appliance having a structure to thaw or chill food. Reply Br. 2. To the contrary, “Kahn has nothing to do with and is completely incapable of being used to thaw or chill food.” Id. While Kahn is directed to a magneto-caloric cryogenic refrigerator, the system of Kahn is only concerned with the magneto-caloric effect at extremely low temperatures in the order of Appeal 2012-006763 Application 11/852,355 4 4 Kelvin (-269o C) up to temperatures of 18 Kelvin (-255° C) based on the phenomena of superconductivity of certain materials. App. Br. 7. The Appellants also contend that even if the system of Kahn could be bodily incorporated into the refrigerator of Miozza, one of skill in the art would be discouraged from adopting the combination because it would not function for the intended purpose of the claimed invention. The primary reason being that the system of Kahn operates at such extremely low temperatures it simply would not work for thawing or chilling food. The Examiner concludes that it would have been obvious to replace the thermoelectric module of Miozza with the superconductive rod (magneto-caloric element) of Kahn in order to utilize the characteristic of a magneto-caloric system. Ans. 20–21. The Examiner responds that a recitation of the intended use of the claimed invention (to thaw or chill food) must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. Ans. 21. The Examiner finds that the prior art structure is capable of thawing food because the system of Kahn teaches raising the temperature of the superconductive material from about 4 Kelvin to about 18 Kelvin. Id. We agree with Appellant that the Examiner has failed to establish a prima facie case of obviousness based upon the combination of Miozza and Kahn. A person of ordinary skill in the art would not have had reason to follow the path set out in Kahn, because the system of Kahn relates only to an extremely low temperature environment where superconductivity occurs in certain elements. As taught by Kahn, a temperature variation from about 4 to 18 Kelvin may be achieved through the magneto-caloric effect only after the rod is placed into a superconductive state. Kahn, col. 1, ll. 11–16; Appeal 2012-006763 Application 11/852,355 5 col. 6, ll. 43–56. Thus, one of ordinary skill in the art would not have looked to the magneto-caloric cryogenic refrigerator of Kahn to combine with Miozza, a household refrigeration system, because doing so would create an inoperable, and perhaps hazardous, system operating in a range less than 18 Kelvin. See In re Gordon, 733 F.2d 900, 902 (Fed. Cir. 1984) (finding no suggestion to modify a prior art device where the modification would render the device inoperable for its intended purpose). The claims each require a food refrigeration appliance with “a thaw/chill surface configured to” either “thaw or chill food.” Claim 1. Even under the broadest reasonable interpretation of these terms, one of skill in the art would not have had reason to combine Kahn with Miozza because the combination would produce a device that is not useful in household refrigeration. The Examiner determined that because “the appellant does not disclose a different structural manner in which the magneto-caloric element is kept at the ultra-low temperatures in order to be effective” apart from the ultra-low temperature structure taught by Kahn, Kahn should be combinable with Miozza. Ans. 22. Without pointing to supporting evidence, the Examiner determined, “the previous problem present when trying to use Gadolinium in every day refrigerators remains, since, at room temperatures, said material is incapable of rapidly changing temperatures, as claimed.” Id. We do not see how these determinations support the Examiner’s rejection pursuant to Section 103. If anything, these determinations appear to be directed to whether the claims are supported by the Specification pursuant to 35 U.S.C. § 112. However, there is no Section 112 rejection before us. Appeal 2012-006763 Application 11/852,355 6 Because the rejection of each claim as unpatentable pursuant to 35 U.S.C. § 103 depends upon the combination of Miozza and Kahn, we reverse the Examiner’s rejection of claims 1–21. CONCLUSION The rejection of claims 1–21 as unpatentable pursuant to 35 U.S.C. § 103(a) is reversed. DECISION As such, we REVERSE the Examiner’s Final Rejection of claims 1–21. REVERSED UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte BEHROOZ MOHEBBI, RON ANDERSON, BRUCE KOPF, XIAOYONG FU, JON FREESMEIER, and LOU MONTUORO ____________________ Appeal 2012-006763 Application 11/852,355 Technology Center 3700 ____________________ Before, RICHARD E. SCHAFER, SALLY G. LANE, and ROBERT L. KINDER, Administrative Patent Judges. SCHAFER, Administrative Patent Judge, additional views I join in the reversal of the rejection for the reasons stated by my colleagues. The Examiner justified the combination of the references, in part, because “the functional language of the claim and its intended use allows Kahn to be combined with Miozza, since the structural elements claimed are explicitly taught by Kahn (magneto-caloric element and the controller).” Ans. 21–22. While the claims are functional at the point of novelty in the sense of Halliburton Oil Well Cementing Co. v. Walker, 329 U.S. 1 (1946) and Ex part Miyazaki, 89 USPQ2d 1207 (BPAI 2008), the breadth of functional language does not lessen the requirement for an adequate reason to combine the references to arrive at the claimed subject matter. The Appeal 2012-006763 Application 11/852,355 2 significant difference in operating temperatures between Miozza’s and Kahn’s refrigerators would not suggest a reason to utilize the concept of magneto-caloric cooling as taught by Kahn as the source of cooling in Miozza’s refrigerator. lp Copy with citationCopy as parenthetical citation