Ex Parte Oketani et al

Patent Trial and Appeal Board

Nov 22, 2013

12274599 (P.T.A.B. Nov. 22, 2013)

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.
12/274,599 11/20/2008 Tetsuya Oketani 080488 1559
23850 7590 11/25/2013
KRATZ, QUINTOS & HANSON, LLP
1420 K Street, N.W.
4th Floor
WASHINGTON, DC 20005
EXAMINER
LEE, JONG SUK
ART UNIT PAPER NUMBER
2885
MAIL DATE DELIVERY MODE
11/25/2013 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 PATENT TRIAL AND APPEAL BOARD
____________

Ex parte TETSUYA OKETANI, WATARU KANAI
and YOSHIKI MAKISHIMA
____________

Appeal 2011-008689
Application 12/274,599
Technology Center 2800
____________

Before CHARLES F. WARREN, JEFFREY T. SMITH,
and MICHAEL P. COLAIANNI, Administrative Patent Judges.

SMITH, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2011-008689
Application 12/274,599

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STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134 from a final rejection of
claims 1 and 4 through 8. We have jurisdiction under 35 U.S.C. § 6.
Appellants’ invention is directed to a showcase in which the inside of
a display chamber for displaying commodities is illuminated by a LED
illumination apparatus. Spec. 1. Claim 1 is illustrative of the subject matter
on appeal and is reproduced below:
1. A showcase in which the inside of a display
chamber is constituted in a main body so as to display
illuminated commodities, comprising:
an LED illumination apparatus;
a glass door which openably closes an opening of the
display chamber;
a metal door frame which is provided in the main body,
including outward-facing opening edge of the display chamber
and further including an outer surface on which the glass door
abuts, wherein the LED illumination apparatus is provided on
the surface of the door frame on an inner surface thereof, the
inner surface being separated from the outer surface;
an electric heater which heats the outer surface of the
door frame on the side of the glass door; and
a control apparatus that energizes the electric heater
when the LED illumination apparatus is turned off.
The Examiner relied on the following references in rejecting the
appealed subject matter:
Horvay US 4,358,933 Nov. 16, 1982
Richardson US 6,606,833 B2 Aug. 19, 2003
Noguchi US 2007/0014105 Al Jan. 18,2007
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Application 12/274,599

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Artwohl US 2007/0171647 Al Jul. 26, 2007
Kelly WO 2006/067777 A2 Jun. 29, 2006

Appellants, App. Br. 8, request review of the following rejections
from the Examiner’s final office action:
I. Claims 1 and 4-8 stand rejected under 35 U.S.C. § 112, second
paragraph, as being indefinite for failing to particularly point out and
distinctly claim the subject matter which applicant regards as the invention.
II. Claims 1 and 4 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Kelly and Horvay.
III. Claim 5 stands rejected under 35 U.S.C. 103(a) as being unpatentable
over Kelly, Horvay and Richardson.
IV. Claims 6 and 8 stand rejected under 35 U.S.C. 103(a) as being
unpatentable over Kelly, Horvay and Artwohl.
V. Claim 7 stands rejected under 35 U.S.C. 103(a) as being unpatentable
over Kelly, Horvay, Artwohl and Noguchi.

OPINION1
Rejection under 35 U.S.C. § 112, second paragraph
Definiteness is analyzed “not in a vacuum, but always in light of the
teachings of the prior art and of the particular application disclosure as it
would be interpreted by one possessing the ordinary level of skill in the
pertinent art.” In re Moore, 439 F.2d 1232, 1235 (CCPA 1971).
We REVERSE.
The Examiner contends that claim 1 is indefinite because the claim
terms “door frame[,]” “outward facing edge” and “outer surface” are unclear

1 In addressing the rejections, Appellants only present arguments with
respect to the patentability of independent claim 1. App. Br. 8. Therefore,
we limit our discussion to claim 1 as representative of the rejected claims
and dependent claims 4-8 stand or fall together with claim 1.
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Application 12/274,599

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because their scope cannot be determined in light of the Specification. Ans.
4. The Examiner also contends that claim 1 is indefinite because it is
unclear what constitutes the separated inner and outer surfaces recited to
distinguish the locations of the heaters and the illumination apparatus. Id. at
4-5.
We do not find the Examiner’s position persuasive for the reasons
provided by Appellants in the Reply Brief. As argued by Appellants, the
Specification and drawings provide the requisite guidance to one skilled in
the art to understand the scope of the disputed claim language. Reply Br. 7.
Accordingly, we reverse the Examiner’s rejection of claims 1 and 4-8
as indefinite under 35 U.S.C. § 112, second paragraph for the reason
presented by Appellants.

Rejections under 35 U.S.C. § 103(a)
The dispositive issue on appeal for these rejections is: Did the
Examiner err in determining that the combined teachings of Kelly and
Horvay would have led one skilled in the art to a showcase having a control
apparatus that controls the electric heater unit and the LED-containing
illumination apparatus such that the control apparatus energizes the electric
heater unit when the LED-containing illumination apparatus is turned off as
required by the subject matter of independent claim 1?
After review of the respective positions provided by Appellants and
the Examiner, we AFFIRM for the reasons presented by the Examiner and
add the following.
The Examiner found that Kelly discloses a showcase comprising an
LED illumination apparatus and an electric heater which heats an outer
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Application 12/274,599

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surface of a door frame on the side of the glass door to prevent dew
condensation in the doors of the cabinet. Ans. 5-6; Kelly 6-7, Figure 13.
The Examiner also found that Kelly discloses that the heat generated by the
LED illumination device minimizes the need to prevent dew condensation
with just an anti-sweat heater. Ans. 6; Kelly 6-8. The Examiner also found
that Kelly does not disclose a control apparatus that energizes the electric
heater when the LED illumination apparatus is off as claimed. Ans. 7. The
Examiner found that Horvay teaches the use of a control device 34 to
energize and de-energize an anti-sweat heater 58 based on a manual energy
saving switch 60. Id. The Examiner also found the claim language "when
the LED illumination apparatus is turned off" does not structurally
distinguish the claimed invention from the prior art. Id. at 7-8. Thus, the
Examiner found that it would have been obvious to one of ordinary skill in
the art to modify Kelly’s showcase by incorporating a control device to
operate (energize and de-energize) anti-sweat heaters as a matter of applying
a known element [the thermostatic control] to a known device [the
showcase] to achieve selective operation of LED apparatus and the the anti-
sweat heater. Id. at 7.
Appellants’ principal argument is that Horvay discloses only manual
control of the anti-sweat heater and does not teach controlling two
components, such as a heater and a lamp, with the same control device.
App. Br. 10-11.
Appellants’ argument does not establish error in the Examiner’s
determination of obviousness. As noted by the Examiner, Kelly like the
present invention utilizes both the heat from an LED apparatus and an anti-
sweat heater to prevent dew condensation on the door of a showcase. Ans.
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6; Kelly 6-8. Horvay discloses the concept of energizing and de-energizing
two components with the same control device, such coordinating the
operation of the motor in the defrost control timer and the refrigerator
compressor using a control device to ensure efficient operation of a
refrigerator. Horvay col. 1, ll. 29-34; col. 2, ll. 3-11; col. 3, ll. 42-48. A
person of ordinary skill in the art has sufficient skill to coordinate the use of
the heat from the LED apparatus and the anti-sweat heater for maximum
efficiency in preventing dew condensation in the doors of a showcase based
on Horvay’s disclosure. See In re Sovish, 769 F.2d 738, 743 (Fed. Cir.
1985) (skill is presumed on the part of one of ordinary skill in the art); In re
Bozek, 416 F.2d 1385, 1390 (CCPA 1969). Appellants have not adequately
explained why the sequential control of a LED apparatus and an anti-sweat
heater would have been beyond the person of ordinary skill in the art given
Kelly’s suggestion of using both together to prevent due condensation on the
doors of a showcase. Kelly 7-8.
For the reasons stated above and those presented by the Examiner, we
affirm the Examiner’s rejection of claims 1 and 4 under 35 U.S.C. § 103(a)
as unpatentable over Kelly and Horvay.
Since Appellants did not separately argue the rejections of claims 5-8
under 35 U.S.C. § 103(a) (Rejections III-V). See App. Br. 10-12.
Accordingly, we also affirm these rejections for the reasons given above and
by the Examiner.

ORDER
The Examiner’s decision rejecting the claims 1 and 4-8 on appeal
under 35 U.S.C. § 112, second paragraph (Rejection I) is reversed.
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Application 12/274,599

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The Examiner’s decision rejecting the claims 1 and 4-8 on appeal
under 35 U.S.C. § 103(a) (Rejections II-V) is affirmed.

TIME PERIOD
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).

AFFIRMED

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