Ex Parte Selin et al

Patent Trials and Appeals Board

May 7, 2019

12992196 - (D) (P.T.A.B. May. 7, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/992,196 03/21/2011 Anders Selin
116 7590 05/09/2019
PEARNE & GORDON LLP
1801 EAST 9TH STREET
SUITE 1200
CLEVELAND, OH 44114-3108
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.
ABE-47339 5522
EXAMINER
ZERPHEY, CHRISTOPHER R
ART UNIT PAPER NUMBER
3763
NOTIFICATION DATE DELIVERY MODE
05/09/2019 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):
patdocket@peame.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ANDERS SELIN, MARKO TAPIO JOKILA,
SVEN BLOMBERG, KLAUS ANDERSSON, and BERNT ANDERSSON
Appeal2018-001688
Application 12/992, 196
Technology Center 3700
Before CYNTHIA L. MURPHY, BRADLEY B. BAY AT, and
AMEE A. SHAH, Administrative Patent Judges.
SHAH, Administrative Patent Judge.
DECISION ON APPEAL 1
The Appellants2 appeal under 35 U.S.C. § 134(a) from the Examiner's
decision rejecting claims 1-17 and 21-23, which are all of the pending
claims. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
1 Throughout this Decision, we refer to the Appellants' Appeal Brief
("Appeal Br.," filed Aug. 22, 2017), Reply Brief ("Reply Br.," filed Dec. 5,
2017), and Specification ("Spec.," filed Nov. 11, 2010), and to the
Examiner's Answer ("Ans.," mailed Oct. 6, 2017) and Final Office Action
("Final Act.," mailed Mar. 22, 2017).
2 According to the Appellants, the real party of interest is Aktiebolaget
Electrolux. Appeal Br. 3.
Appeal2018-001688
Application 12/992, 196
STATEMENT OF THE CASE
The Appellants' "invention relates to a cold appliance ... such as
refrigerators, ... pantries[,] ... wine coolers, ... freezers, ... [and] chest
freezers." Spec. 1.
Claims 1 and 13 are the independent claims on appeal. Claim 1
(Appeal Br. 16 (Claims App.)) is illustrative of the subject matter on appeal
and is reproduced below (with added bracketing for reference):
1. A cold appliance comprising:
[(a)] a cooling module and a cabinet comprising a cold
compartment, wherein the cabinet is a modular cabinet
constructed from a plurality of separable cabinet panels that
connect together in an assembled state to form the cabinet,
including two opposite pre-foamed side wall panels, each of
which connects to a pre-foamed rear wall panel, the pre-foamed
rear wall panel comprising a foam material arranged between
an inner sheet layer and an outer sheet layer, wherein the inner
sheet layer is arranged between the cold compartment and the
outer sheet layer and extends from one of the two pre-foamed
side wall panels to the other of the two pre-foamed side wall
panels, the cabinet further comprising a top part, a bottom part,
and a door, wherein
[ (b)] the cooling module comprises an outlet air duct
configured to deliver cooled air to the cold compartment of the
cabinet, and an inlet air duct configured to receive air from the
cold compartment, wherein the cold appliance further
comprises a rear wall lining arranged between the cold
compartment and the inner sheet layer of the pre-foamed rear
wall panel, wherein the rear wall lining is separate from the
inner sheet layer and comprises
[ ( c)] a center portion that is spaced from the inner sheet
layer, wherein the center portion protrudes outward in a
direction away from the inner sheet layer to form a center space
between the center portion of the rear wall lining and the inner
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Application 12/992, 196
sheet layer of the pre-foamed rear wall panel, wherein the rear
wall lining further comprises
[ ( d)] edge portions, a first one of which is arranged on a
first side of the center portion adjacent to one of the two pre-
foamed side wall panels and a second one of which is arranged
on a second side of the center portion adjacent to the other of
the two pre-foamed side wall panels, wherein a maximum
distance between the center portion and the inner sheet layer is
greater than a minimum distance between each of the first and
second edge portions and the inner sheet layer such that the
center portion and the center space are centered horizontally
between the two opposed pre-foamed side wall panels and the
first and second edge portions.
REJECTI0NS 3
Claims 1-5, 7, 9-11, 14--1 7, and 23 stand rejected under pre-AIA
35 U.S.C. § I03(a) as being unpatentable over Hanifan (US 3,401,997, iss.
Sept. 17, 1968), Yun et al. (US 2005/0039483 Al, pub. Feb. 24, 2005)
("Yun"), and Jeong et al. (US 2004/0139763 Al, pub. July 22, 2004)
("Jeong").
Claims 6 and 12 stand rejected under 35 U.S.C. § I03(a) as being
unpatentable over Hanifan, Yun, Jeong, and Dasher et al. (US 5,540,492, iss.
July 30, 1996) ("Dasher").
Claims 8, 13, 21, and 22 stand rejected under 35 U.S.C. § I03(a) as
being unpatentable over Hanifan, Yun, Jeong, and Torcomian
(US 4,024,620, iss. May 24, 1977).
3 The rejection of claims 13, 21, and 22 under 3 5 U.S. C. § 112 has been
withdrawn. Ans. 2.
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Appeal2018-001688
Application 12/992, 196
ANALYSIS
We agree with the Appellants' contention that the Examiner does not
adequately show how the prior art teaches a rear wall lining between the
cold compartment an inner sheet of the rear wall panel, the lining being
separate from the inner sheet and comprising a center portion spaced from
the inner sheet, as recited in limitations (b) and ( c) of independent claim 1
and similarly recited in independent claim 13.
The Examiner finds, in pertinent part, that Hanifan teaches a cold
appliance comprising a cooling module and a cabinet comprising a cold
compartment wherein the cabinet is "constructed from a plurality of separate
cabinet panels (14, 16, 18, 20, and 22) that connect together in an assembled
state to form a cabinet including two foamed opposite side wall panels (14
and 16) each of which connects to a rear foamed wall panel (18)," as recited
in limitation (a). Final Act. 6. The Examiner acknowledges that Hanifan
does not teach "an inner and outer sheet layer having foam that is pre-
foamed," as recited in limitation (a). Id. at 7; see also id. at 16; Ans. 3--4.
For this feature, the Examiner relies on Yun as "disclos[ing] a modular
refrigerator in which a panel is formed having insulation (303) between an
inner sheet (101) and outer sheet (102) layers." Final Act. 8, 16 (citing Yun
,r 37, Fig. 9); Ans. 4--5. The Examiner determines that one of ordinary skill
in the art would have modified Hanifan "with the inner and outer sheet
layers including pre-foamed panel as taught by [Yun] in order to protect the
insulation from exposure to contaminants which may foul the insulation and
further the construction technique taught by Yun is considered to be 'simple
and a cost is reduced."' Final Act. 8, 17.
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Application 12/992, 196
The Examiner also finds that Hanifan teaches "a rear wall lining (3 6)
arranged between the cold compartment (38) and the rear wall panel (18),"
as recited in limitation (b ), wherein the lining comprises "a center portion
(best shown in figures 5 and 6 center portion includes duct 84/94) that is
spaced from the rear wall panel (18) and wherein the center portion
protrudes in a so as to form a space therebetween (84)," as recited in
limitation ( c ). Id. at 7; see also id. at 14--15. "Regarding the rear wall lining
being separate from the inner sheet layer and 'center space between the
center portion of the rear wall lining and the inner sheet layer of the pre-
foamed rear wall panel'" (id. at 8; see also id. at 17), the Examiner finds that
"Hanifan discloses the rear wall lining (36) and Yun provides for the inner
sheet layer as he discloses a panel construction technique of a prefoamed
panel between an inner and outer sheet layer" (id.). "[T]o evidence the
combination that an inner sheet layer and rear wall lining are separate in
construction" (id.), the Examiner cites to Jeong as "disclos[ing] a
refrigerator having an inner sheet layer (10b) an outer sheet layer (10a) with
foam therebetween (10c) and further including a rear wall lining (55) which
is spaced apart from the inner sheet layer (p0048) in order to provide for
center space" (id.). See also Ans. 5. The Examiner determines that "[i]t
would have been obvious to one of ordinary skill in the art at the time of the
invention to have provided Hanifan with the rear wall lining separate from
the inner sheet layer as is taught by Jeong in order to isolate insulation foam
from bacteria/fouling and maintain simple construction." Final Act. 8-9, 17.
The Examiner also determines that "it would have been obvious to one of
ordinary skill in the art at the time of the invention to have removed the
section of material of the rear wall lining (behind duct 84/94) as taught by
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Application 12/992, 196
Jeong as said material is unnecessary and thus its elimination reduces
material cost." Id. at 9, 17-18.
Thus, we understand the Examiner to rely on the combination of
Hanifan and Jeong for teaching the feature of the rear wall lining having a
center portion that is spaced from the inner sheet layer. Based on the record,
the Appellants interpret the Examiner's rejection in the same manner. See
Appeal Br. 11; Reply Br. 3. We are persuaded of Examiner error by the
Appellants' argument that the Examiner has not provided adequate
reasoning why one of ordinary skill in the art would combine Jeong with
Hanifan. See Appeal Br. 11-12, 14. Although the Examiner is not required
to find the "motivation" to combine the art in the references themselves ( cf
Appeal Br. 11; see KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398,419 (2007)
(rejecting this rigid requirement)), the Examiner must provide "some
articulated reasoning with some rational underpinning" to support a rejection
of obviousness (id. at 418). The Examiner's stated reasoning that the
combination would "isolate insulation foam from bacteria/fouling and
maintain simple construction" is not supported by evidence or technical
reasoning, i.e., lacks sufficient rational underpinning. As the Appellants
point out (Appeal Br. 11, 14), the Examiner has not established that bacteria
or fouling was a problem with Hanifan's appliance specifically or with
similar appliances generally. The Examiner has also not adequately
explained or established how isolating insulation foam would prevent
bacteria or fouling or would "maintain simple construction." Cf Ans. 10-11
( explaining how the combination is simpler by being similar to transporting
water with a bucket).
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Application 12/992, 196
In the Examiner's Answer, the Examiner states that "the teachings of
Jeong were provided, although not strictly necessary to meet claim 1, the
teachings support the features of a rear wall lining and inner sheet layer
being separate" (Ans. 5) and that "the rejection does not require Jeong, but
added Jeong as evidence and to further clarify the combination" (id. at 8).
To the extent the Examiner relies only on the combination of Hanifan and
Yun to teach the lining having a center portion spaced from the inner sheet
layer (see id. 5, 8-10), the Examiner does not articulate a reasoning with
rational underpinning why or how one of ordinary skill in the art would
combine Hanifan's center space from the rear panel with Yun's prefoamed
panels. The Examiner's reasoning for combining Hanifan and Yun, i.e., "to
protect the insulation from exposure to contaminants which may foul the
insulation and further the construction technique taught by Yun is
considered to be 'simple and a cost is reduced"' (Final Act. 8) does not
address that contamination was a problem, specifically to Hanifan's
appliance or generally, how having a space would protect the insulation
from contaminants, or how the combination would further a simpler and less
expensive construction technique.
Thus, we are persuaded of error in the Examiner's rejection under
35 U.S.C. § 103 of independent claims 1 and 13, and we do not sustain the
rejections of independent claims 1 and 13. The rejections of dependent
claims 2-12, 14--17, and 21-23 rely on the same deficiency as discussed
above. The deficiency is not cured by the additional findings and reasoning
of the remaining rejections. Thus, we do not sustain the rejections of
dependent claims 2-12, 14--17, and 21-23.
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Application 12/992, 196
DECISION
The Examiner's rejections of claims 1-17 and 21-23 under pre-AIA
35 U.S.C. § 103(a) are REVERSED.
REVERSED
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