Ex Parte Najewicz

Board of Patent Appeals and Interferences

Nov 28, 2011

11437003 (B.P.A.I. Nov. 28, 2011)

UNITED STATES PATENT AND TRADEMARK OFFICE
_____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________

Ex parte DAVID JOSEPH NAJEWICZ
_____________

Appeal 2012-001032
Application 11/437,003
Technology Center 3700
______________

Before, ROBERT E. NAPPI, KALYAN K. DESHPANDE, and
DAVID M. KOHUT, Administrative Patent Judges.

KOHUT, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) of the final
rejection of claims 1, 4, 6, 10, 11, 13, 14, 21-23, 26-29, 31-34, 38, 40, 43,
44, 48, and 50-57.1 We have jurisdiction under 35 U.S.C. § 6(b).

1 Claims 2, 3, 30, 39, 41, 42, and 49 were previously cancelled. Claims 17-
20 have been allowed. Final Rej. 4. Claims 5, 7-9, 12, 15, 16, 24, 25, 35-
37, 45-47, 58, and 59 are objected to but indicated as allowable if rewritten
in independent form including all of the limitations of the base claim and
any intervening claims. Final Rej. 4.
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Application 11/437,003

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We affirm the Examiner’s rejection of these claims.

INVENTION
The invention is directed to a bottom mount freezer type refrigerator
wherein an ice maker and dispenser is provided in the fresh food
compartment located above the freezer compartment. Air from the freezer is
extended up and into the ice maker located in the fresh food compartment
via an air flow control device in order to produce ice. See Summary of
Invention Section of US 6,735,959 B1.2 Claim 1 is representative of the
invention and is reproduced below:
1. A bottom mount refrigerator, comprising: a freezer
compartment; a freezer door configured to close said freezer
compartment; a fresh food compartment located over said
freezer compartment; a fresh food door configured to close said
fresh food compartment, said fresh food door comprising an ice
dispenser; an ice maker mounted in said fresh food
compartment, said ice maker comprising an ice mold positioned
so that ice from said ice mold can be dispensed by said ice
dispenser in said fresh food door; a freezer air duct extending
from said freezer compartment to said ice mold; and an air flow
control device for controlling flow of freezer air through said
freezer air duct.

REFERENCES
Gould US 3,146,601 Sept. 1, 1964

Grimes US 3,146,606 Sept. 1, 1964

Jacobs US 3,247,682 April 26, 1966

Cur US 5,375,432 Dec. 27, 1994

2 This invention is a Reissue of the listed patent, granted May 18, 2004.
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Application 11/437,003

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REJECTIONS AT ISSUE
Claims 1, 4, 6, 10, 11, 13, 14, 21-23, 29, 31-34, 38, 40, 43, 44, 48, and
50-57 are rejected under 35 U.S.C. § 103(a) as being unpatentable over
Grimes in view of Cur and Gould. Ans. 4-6.
Claims 26 and 28 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Grimes in view of Jacobs. Ans. 6.
Claim 27 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Grimes in view of Jacobs and Gould.3 Final Rej. 4.

ISSUES
The issues presented to us are:
(1) Did the Examiner err in finding that Grimes, Cur, and Gould teach
or suggest a freezer air duct that extends from the freezer
compartment to the ice mold and an air flow control device that
controls flow of freezer air through the freezer air duct?
(2) Did the Examiner err in combining Cur and Gould with Grimes?
(3) Did the Examiner err in finding that Grimes in view of Jacobs
teaches or suggests a freezer air duct that extends from the freezer
compartment to the ice mold and an air flow control device that
controls flow of freezer air through the freezer air duct?

3 We note that claim 27 is dependent upon claim 26. As such, while the
Final Rejection only indicates unpatentability over Grimes in view of Gould,
the Examiner must have inadvertently left out Jacobs as indicated by
Appellant’s statement of rejection for claim 27 found in the Appeal Brief on
page 1.
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ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellant’s
arguments that the Examiner erred. We disagree with Appellant’s
conclusion that the Examiner erred in finding that Grimes in view of Cur and
Gould teach or suggest a freezer air duct that extends from the freezer
compartment to the ice mold and an air flow control device that controls
flow of freezer air through the freezer air duct. We additionally disagree
with Appellant’s conclusion that the Examiner erred in combining Cur and
Gould with Grimes. We adopt as our own (1) the findings and reasons set
forth by the Examiner in the action from which this appeal is taken and (2)
the reasons set forth by the Examiner in the Examiner’s Answer in response
to Appellant’s Appeal Brief. We concur with the conclusion reached by the
Examiner.
Specifically, Appellant argues that the combination of Grimes, Cur, or
Gould fails to teach or suggest a fresh food compartment located on top of a
freezer compartment with “a freezer air duct extending from said freezer
compartment to said ice mold; and an air flow control device for controlling
flow of freezer air through said freezer air duct,” as required by independent
claim 1.4 App. Br. 12. Appellant’s main argument is that this limitation is
not taught because Grimes’s ice body maker is not an ice mold. App. Br. 12.
The Examiner correctly indicates that it is the combination of Grimes with
Cur and Gould that teach the claimed features, not solely the teachings or

4 Independent claims 10, 21, 29, 38, 48, 52, and 54-56 contain similarly
argued limitations. App. Br. 13-25. Claims 4, 6, and 7; 11, 13, and 14; 22-
23; 31-34; 40, 43, and 44; 50-51; and 53 are dependent upon independent
claims 1, 10, 21, 29, 38, 48, and 52 (respectively) and are not argued
separately. App. Br. 13-25.
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suggestions of Grimes. Ans. 11-12. The Examiner finds that Grimes
discloses a freezer with a fresh food compartment 12 located above the
freezer compartment 11 and an air duct extending from the freezer
compartment 11 to the ice mold, wherein an air moving means, i.e., fan,
controls the flow of freezer air through the duct. Ans. 10. Additionally the
Examiner finds that Gould discloses an ice mold 46. Ans. 12. Thus, it is the
combination of Gould with Grimes that discloses the claimed features. Ans.
12. We agree with the Examiner’s findings.5
In response, Appellant argues that there is no motivation to combine
Gould and Cur with Grimes and that, as a result, the Examiner is
“improperly picking and choosing various elements of the prior art in
hindsight, and ignoring how the elements in the prior art interact.” App. Br.
8-9. We disagree.
The Supreme Court stated that an explicitly stated motivation to
combine the references is seen as “helpful insight,” KSR Int’l Co. v. Teleflex
Inc., 550 U.S. 398, 418 (2007), but that the combination of familiar elements
according to known methods is likely to be obvious when it does no more
than yield predictable results. Id. at 416. In this situation, all of the
references are directed to refrigeration systems that contain ice makers.
Therefore, we consider using the well for dispensing ice located in the door
of the fresh food compartment of Cur and the ice mold of Gould with
Grimes’s system having a freezer compartment above the fresh food
compartment and an air duct for supplying freezer air to the ice maker as

5 While not specifically indicated by the Examiner, we also note that the ice
body maker of Grimes forms ice on its paddles as it moves through a body
of water. Col. 4, ll. 31-38. The paddles are a frame or model around or on
which ice is formed and therefore may also be considered a mold.
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nothing more than using known devices to perform their known functions.
As such, we find the combination of Cur and Gould with Grimes yields the
predictable result of creating ice using freezer air and dispensing the ice
through a door located in the fresh food compartment located above a
freezer compartment.
Appellant argues that the combination of the references creates “more
than the predictable use of prior art elements according to their established
functions” because the combination of Gould with Grimes eliminates the
need for air from the freezer compartment. Reply Br. 3, 5, 7. We disagree.
The Examiner uses Gould to mainly show that it was known to have an ice
maker located in the door of a fresh food compartment. Ans. 5. While
Gould discloses an ice maker that uses a thermoelectric cooler (Reply Br. 5),
there is nothing that precludes the additional use of freezer air, as suggested
by the Examiner (Ans. 13.). Thus, we do not find Appellant’s argument to
be persuasive.
Additionally, Appellant’s hindsight reasoning argument is not
persuasive of reversible error for the reasons stated in the Examiner’s
Answer. We add the following for emphasis.
First, as explained in In re McLaughlin:
Any judgment on obviousness is in a sense necessarily a
reconstruction based upon hindsight reasoning, but so long as it
takes into account only knowledge which was within the level
of ordinary skill at the time the claimed invention was made
and does not include knowledge gleaned only from applicant’s
disclosure, such a reconstruction is proper.
In re McLaughlin, 443 F.2d 1392, 1395 (CCPA 1971).
Our review of the record establishes that the Examiner’s case for
obviousness is only based on knowledge which was within the level of
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ordinary skill at the time of the Appellant’s invention and does not include
knowledge gleaned only from the Appellant’s disclosure.
Second, the Examiner identifies the relevant portions of each of the
references relied on throughout the Examiner’s Answer. See Ans. 4-6. To
the extent that the Examiner relies on the knowledge of one of ordinary skill
in the art to combine the teachings of the references, this practice is
consistent with current case law. For example, the Supreme Court explains:
Often, it will be necessary for a court to look to interrelated
teachings of multiple patents; the effects of demands known to
the design community or present in the marketplace; and the
background knowledge possessed by a person having ordinary
skill in the art, all in order to determine whether there was an
apparent reason to combine the known elements in the fashion
claimed by the patent at issue. To facilitate review, this
analysis should be made explicit. See In re Kahn, 441 F.3d
977, 988 (C.A.Fed.2006) (“[R]ejections on obviousness
grounds cannot be sustained by mere conclusory statements;
instead, there must be some articulated reasoning with some
rational underpinning to support the legal conclusion of
obviousness”). As our precedents make clear, however, the
analysis need not seek out precise teachings directed to the
specific subject matter of the challenged claim, for a court can
take account of the inferences and creative steps that a person
of ordinary skill in the art would employ.
KSR, 550 U.S. at 418.
In this case, the Examiner’s conclusions of obviousness are clearly
articulated and are based on detailed factual findings that are supported by
the references of record. See Ans. 4-6. Thus, we agree with the Examiner’s
finding.
Claim 26 contains similar limitations as claim 1, however, the
Examiner’s rejection uses Grimes in view of Jacobs rather than in view of
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Gould and Cur. Claim 28 is dependent upon claim 26. Appellant makes the
same arguments with respect to Grimes in claims 26 and 28 as with respect
to Grimes in claim 1. App. Br. 26. Regarding those arguments, we agree
with the Examiner for the same reasons listed above. Additionally,
Appellant argues that Jacobs does not make up for the deficiencies found in
Grimes because Jacobs “does not fully appreciate the engineering involved
with positioning the ice maker within a fresh food compartment.” App. Br.
26. We disagree. It is an obvious design choice to move an ice maker into
the door of a fresh food compartment, as taught by Jacobs. “Design choice”
is appropriate where the applicant fails to set forth any reasons why the
differences between the claimed invention and the prior art would result in a
different function. In re Chu, 66 F.3d 292, 298-99 (Fed. Cir. 1995).
Regarding claim 27, Appellant makes the same arguments with
respect to claims 26 and 28. App. Br. 26-27. Regarding those arguments,
we agree with the Examiner for the same reasons listed above.

CONCLUSION
(1) The Examiner did not err in finding that Grimes, Cur, and Gould
teach or suggest a freezer air duct that extends from the freezer compartment
to the ice mold and an air flow control device that controls flow of freezer
air through the freezer air duct.
(2) The Examiner did not err in combining Cur and Gould with
Grimes.
(3) The Examiner did not err in finding that Grimes in view of Jacobs
teaches or suggests a freezer air duct that extends from the freezer
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Application 11/437,003

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compartment to the ice mold and an air flow control device that controls
flow of freezer air through the freezer air duct.

SUMMARY
The Examiner’s decision to reject claims 1, 4, 6, 10, 11, 13, 14, 21-23,
26-29, 31-34, 38, 40, 43, 44, 48, and 50-57 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)(1)(iv).

AFFIRMED

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