Ex Parte Rogers et al

Patent Trial and Appeal Board

Jun 9, 2016

12404581 (P.T.A.B. Jun. 9, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/404,581 03/16/2009
173 7590 06/13/2016
WHIRLPOOL CORPORATION - MD 3601
2000 NORTH M63
BENTON HARBOR, MI 49022
FIRST NAMED INVENTOR
PAUL ROSS ROGERS
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
US20080003 2031
EXAMINER
MASHRUWALA, NIKHIL P
ART UNIT PAPER NUMBER
3749
NOTIFICATION DATE DELIVERY MODE
06/13/2016 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address( es):
whirlpool_patents_co@whirlpool.com
mike_lafrenz@whirlpool.com
deborah_tomaszewski@whirlpool.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte PAUL ROSS ROGERS and DAVID RICHARD SAMPSON
Appeal2014-000330
Application 12/404,581
Technology Center 3700
Before JOSEPH A. FISCHETTI, NINA L. MEDLOCK, and
KENNETH G. SCHOPPER, Administrative Patent Judges.
SCHOPPER, Administrative Patent Judge.
DECISION ON REQUEST FOR REHEARING
Appellants request rehearing of the decision entered March 9, 2016,
("Decision"), which affirmed the Examiner's rejection of claims 1, 3-16 and
21-24 over Eke1 in view of Shiraichi2 and the rejection of claim 2 over Eke
in view of Shiraichi and Vroom. 3 Appellants contend that the Decision
overlooked or misapprehended six points of law or fact. Request for
Reconsideration ("Request") 2. As discussed below, we grant Appellants'
1 Eke, US 5,089,679, iss. Feb. 18, 1992.
2 Shiraichi et al., US 2007/0107712 Al, pub. May 17, 2007.
3 Vroom, US 6,904,903 Bl, iss. June 14, 2005.
Appeal2014-000330
Application 12/404,581
request to the extent that we designate our Decision as a new ground of
rejection.
DISCUSSION
Appellants first argue that the Board misapprehended Appellants'
argument about the propriety of the rejection "when the Board states that the
test for obvious[ ness] is not whether the features of one reference may be
bodily incorporated into the structure of another." Request 3. Appellants
contend that this was not the main argument presented, and Appellants
"[are] arguing that the Examiner is not using the references for what they
suggest to one of ordinary skill in the art." Id. at 3--4.
We disagree that we misapprehended Appellants' argument here. In
the Decision, we found that "the combined teachings of Eke and Shiraichi
would have suggested a convection device configured as the Examiner
proposes and as claimed." Decision 5. Thus, we specifically found that the
art would suggest the claimed device to one of ordinary skill in the art.
Further, we find that Appellants' argument that "the combination destroys
the base reference's goals ... "(Reply Br. 3) is an argument related to bodily
incorporation, i.e. the direct substitution of parts, from Shiraichi into Eke,
which is not the appropriate test for obviousness.
Second, Appellants argue that we "overlooked recent case law when
applying the Broadest Reasonable Interpretation standard." Request 4.
Specifically, Appellants take issue with our finding that "under the broadest
reasonable interpretation of the claim, when casing 32 is attached to panel
20, it reasonably may be said to form a part of the cavity of the devices
because it encloses apertures 22 and 24." Decision 5. Appellants assert that
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it is unreasonable to interpret casing 32 as forming part of the oven cavity
and one skilled in the art would understand that the oven cavity is the same
as food receiving cavity 10 in Eke. Request 5---6.
We are not persuaded that our finding here misapplies or overlooks
recent case law. The plain meaning of the claim requires only that the oven
cavity is "defined by interconnected top, bottom, rear and first and second,
opposing walls with the rear wall extending from the bottom wall to the top
wall and defining an overall height of the oven cavity." The rejection and
our Decision are consistent with this plain meaning of the claim as casing 32
may be considered an extension of Eke' s food receiving cavity to define a
broader oven cavity encompassing Eke' s ductwork. Further, regardless of
the Examiner's specific interpretation of the structure of Eke, Appellants'
arguments do not apprise us of any error in the rejection because one of
ordinary skill in the art would have found it obvious to provide an oven
cavity as claimed in light of the teachings of Eke and Shiraichi as identified
by the Examiner.
Third, Appellants assert that we "overlooked Applicant's argument
when [we] held that 'it is not necessary for the Examiner to set forth a reason
for making a combination of references that is more effective than the
references taken separately"' because Appellants argued that the Examiner's
reasoning was conclusory and without support. Request 6 (citing
Decision 5).
However, the Decision only noted that the Examiner need not identify
a reason that is more effective than the references taken separately, and we
specifically found that the Examiner's reasoning was sufficiently supported
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by Shiraichi' s disclosure. Decision 5---6. Thus, we are unpersuaded by this
argument.
Fourth, Appellants argue that "[t]he Board overlooks that there is
simply no disclosure in the portions of the applied references that were
relied upon by the Examiner, whether taken singly or in combination,
supporting the rejection." Request 7. Specifically, Appellants assert that the
Decision relies on Shiraichi's Figure 4, which was not cited in the rejection.
Id.
Although the Decision cited Figure 4 only as further evidence to
support the Examiner's reliance on design choice, to the extent our
reasoning differs from that of the Examiner, we designate our affirmance as
a new ground of rejection.
Fifth, Appellants assert that "[t]he Board overlooks the criticality of
the relative sizes of the endpoints of the cover." Request 7-8. However,
this argument only restates arguments made by Appellants in the Appeal
Brief and Reply Brief.
We disagree with Appellants. This argument was fully addressed in
the Decision and is unpersuasive here for the same reasons. See Decision 6.
Sixth, Appellants argue that "[t]he Board overlooks its own finding
when analyzing claim 11" (Request 8) because we found that the
Specification "indicates that the configuration of tapers in the cover is
desirable to achieve an effective air flow pattern" (Decision 6) and then
found it was obvious to add tapers to Eke. Appellants assert that Eke "at
best shows only one tapered section." Request 8.
We are not persuaded. The Decision finds that the claimed tapers
would have been obvious in light of the shape of the ductwork in Eke' s
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disclosure, and we are not persuaded, without further explanation, that Ekes
device includes only one tapered section in its ductwork. See Decision 9;
Eke, Fig. 3.
CONCLUSION
We have carefully reviewed the original Decision in light of
Appellants' request, and we find that Appellants' request should be granted
insofar as our Affirmance should have been designated as a new ground of
rejection.
This decision contains a new ground of rejection pursuant to
37 C.F.R. § 41.50(b). Section 41.50(b) provides "[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review." Section 41.50(b) also provides:
When the Board enters such a non-final decision, the appellant,
within two months from the date of the decision, must exercise
one of the following two options with respect to the new ground
of rejection to avoid termination of the appeal as to the rejected
claims:
(1) Reopen prosecution. Submit an appropriate amendment of
the claims so rejected or new Evidence relating to the claims so
rejected, or both, and have the matter reconsidered by the
examiner, in which event the prosecution will be remanded to the
examiner. The new ground of rejection is binding upon the
examiner unless an amendment or new Evidence not previously
of Record is made which, in the opinion of the examiner,
overcomes the new ground of rejection designated in the
decision. Should the examiner reject the claims, appellant may
again appeal to the Board pursuant to this subpart.
(2) Request rehearing. Request that the proceeding be reheard
under § 41.52 by the Board upon the same Record. The request
for rehearing must address any new ground of rejection and state
with particularity the points believed to have been
misapprehended or overlooked in entering the new ground of
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rejection and also state all other grounds upon which rehearing
is sought.
Further guidance on responding to a new ground of rejection can be
found in the Manual of Patent Examining Procedure§ 1214.01.
GRANTED-IN-PART; 37 C.F.R. § 41.50(b)
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