Ex Parte Mohebbi et al

Patent Trial and Appeal Board

Aug 27, 2014

11852355 (P.T.A.B. Aug. 27, 2014)

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.
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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

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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
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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;
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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.
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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
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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.

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