Ex Parte Silverstein et al

Patent Trial and Appeal Board

May 11, 2018

14323585 (P.T.A.B. May. 11, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/323,585 07/03/2014
23446 7590 05/15/2018
MCANDREWS HELD & MALLOY, LTD
500 WEST MADISON STREET
SUITE 3400
CHICAGO, IL 60661
FIRST NAMED INVENTOR
Jason Silverstein
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.
27830US01 3925
EXAMINER
ROERSMA, ANDREW MARK
ART UNIT PAPER NUMBER
3637
NOTIFICATION DATE DELIVERY MODE
05/15/2018 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):
mhmpto@mcandrews-ip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JASON SILVERSTEIN and ANTHONY SHOEMAKER
Appeal2017-006283
Application 14/323,585
Technology Center 3600
Before WILLIAM A. CAPP, LEE L. STEPINA, and ANTHONY KNIGHT,
Administrative Patent Judges.
CAPP, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants 1 seek our review under 35 U.S.C. § 134(a) from the final
rejection of claims 1, 2, 4--9, and 11-17 under 35 U.S.C. § 103(a) as
unpatentable over Earle (US 2,432,397, iss. Dec. 9, 1947). 2 We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM, but designate our affirmance as a NEW GROUND OF
REJECTION pursuant to our authority under 37 C.F.R. § 41.50(b).
1 Appellants identify Sears Brands, LLC, the Applicant under 37 C.F.R.
§ l.46(a), as the real party in interest. Appeal Br. 2.
2 Alternative grounds of rejection in the Final Action have been withdrawn
by the Examiner. See Final Action 3-14; Ans. 2.
Appeal2017-006283
Application 14/323,585
THE INVENTION
Appellants' invention relates to refrigerators. Spec. ,r 4. Claim 1,
reproduced below, is illustrative of the subject matter on appeal.
1. A refrigerator having a stepped outer profile, the
refrigerator comprising:
a temperature-controlled storage cavity comprising a first
storage area and a second storage area, wherein the
temperature-controlled storage cavity is inside the refrigerator
having the stepped outer profile;
a front surface comprising at least one door extending over
and providing access to the second storage area and at least a
portion of the first storage area;
a rear surface opposite the front surface;
a top surface comprising:
a front portion adjacent and generally perpendicular to
the front surface,
a rear portion adjacent and generally perpendicular to
the rear surface, the rear portion being below the front
portion, and
a central portion connecting the front portion and the
rear portion;
a bottom surface generally perpendicular to the front
surface and the rear surface; and
generally parallel side surfaces extending between the front
surface and the rear surface and between the top surface and the
bottom surface, the side surfaces and the top surface providing
the stepped outer profile of the refrigerator,
wherein the first storage area is below the rear portion and
between the front surface and the rear surface,
wherein the second storage area is above the rear portion,
below the front portion, and between the front surface and the
central portion,
wherein above the rear portion of the top surface, below the
front portion of the top surface, and between the central portion
of the top surface and the rear surface is empty open space
defining the stepped outer profile of the refrigerator.
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Application 14/323,585
OPINION
Claim 1
The Examiner finds that Earle discloses the invention substantially as
claimed except for explicit disclosure that the side profiles on the left and
right side of Earle's refrigerator match each other. Final Action 7-8. The
Examiner concludes that it would have been obvious to a person of ordinary
skill in the art at the time the invention was made to make the refrigerator of
Earle so that the left and right sides have matching stepped profiles. Id. at 8.
According to the Examiner, a person of ordinary skill in the art would have
done this for aesthetic purposes. Id.
Appellants argue that Earle fails to satisfy the limitation directed to a
front surface comprising "at least one door" as claimed. Appeal Br. 18.
Appellants contend that Earle fails to disclose any one door that extends
over and provides access to both the first and second storage areas. Id. at 19.
According to Appellants, Earle's door 34 provides access to only the upper
portion of the storage area and not to its lower portion, which Appellants
insist is required by the claim language. Id. Similarly, Appellants insist that
elements 41--44 also do not provide access to both the upper and lower
storage areas. Id. Appellants further argue that Earle's elements 41--44 are
drawers and not doors within the meaning of the claim. Id. Therefore,
elements 41--44 do not satisfy the limitation directed to at least one "door."
Id.
The Examiner responds by pointing out that the claim merely requires
"at least" one door and, therefore, the claim language can be satisfied by a
plurality of doors. Ans. 3. Thus, according to the Examiner, Appellants'
arguments are not commensurate with the scope of the claim. Id. at 2. The
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Application 14/323,585
Examiner reiterates the findings of fact from the Final Action pointing out
that access to the first and second storage areas is provided via doors 34 and
drawers 41--44 collectively. Id. at 3.
With respect to Appellants' "drawers are not doors" argument, the
Examiner takes the position that Earle's drawers 41--44 are movable
structures used to close off an entrance consisting of a panel that slides. Id.
at 5. Thus, According to the Examiner, the front faces of Earle's drawers
may be considered as "doors" within the meaning of the claim. Id.
Id.
The Final Office Action does not distinguish between drawers
and doors. Rather, the Final Office Action explains how
Earle's drawers 41-44 are reasonably interpreted as 'at least one
door' as claimed.
In reply, Appellants essentially just repeat and rephrase the "one
door" argument advanced in the Appeal Brief. Reply Br. 7-14.
Much of the dispute between the Examiner and Appellants revolves
around what it means for the front surface to comprise "at least one door
extending over and providing access to" the two storage areas. During
examination of a patent application, pending claims are given their broadest
reasonable construction consistent with the specification. In re Am. Acad. of
Sci. Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). However, even under
the broadest reasonable interpretation, the Boards construction "cannot be
divorced from the specification and the record evidence." In re NTP, Inc.,
654 F.3d 1279, 1288 (Fed. Cir. 2011). A construction that is "unreasonably
broad" and which does not "reasonably reflect the plain language and
disclosure" will not pass muster. Microsoft Corp. v. Proxyconn, Inc., 789
F.3d 1292, 1298 (Fed. Cir. 2015).
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Application 14/323,585
With respect to the term "door" in claim 1, we do not agree with the
Examiner that "door" includes the front face of a "drawer." A claim
construction analysis begins with, and is centered on, the claim language
itself. See Interactive Gift Express, Inc. v. Compuserve Inc., 256 F.3d 1323,
13 31 (Fed. Cir. 2001 ). Furthermore, "the context in which a term is used in
the asserted claim can be highly instructive." Phillips v. AWH Corp., 415
F.3d 1303, 1314 (Fed. Cir. 2005). Thus, "the context of the surrounding
words of the claim also must be considered in determining the ordinary and
customary meaning of those terms." ACTV, Inc. v. Walt Disney Co., 346
F.3d 1082, 1088 (Fed. Cir. 2003). Claim 1 recites a "door," but not a
"drawer." Claims App. Claim 14 recites "a French door refrigerator top with
bottom freezer drawer" indicating that Appellants differentiate between "door"
and "drawer" when drafting claims. Id. The Specification similarly
differentiates between "drawers" and "doors" and does not use the terms
interchangeably. Spec. ,r,r 5, 19.
While the plain and ordinary meaning of "door" may encompass a
"sliding door," we think a person of ordinary skill in the art would
differentiate between a "sliding door" and a drawer face that slides in and
out of a cabinet. In other words, a person of ordinary skill in the art would
understand that the direction of "sliding" in a well-known, common "sliding
door" relative to the door opening is perpendicular to the direction of sliding
of a drawer unit relative to the chest or cabinet in which the drawer resides.
Thus, the fact that a drawer "slides" does not transform it into a "door."
Properly construed, the "door" of claim 1 does not read on drawer
elements 41--44 of Earle. Thus, the Examiner errs in finding that that Earle's
drawers are "doors" within the meaning of claim 1.
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Application 14/323,585
Furthermore, we do not agree with the Examiner's construction of "at
least one" door "extending over and providing access" to both storage areas.
The language "at least" merely indicates that the "extending over" language
can be satisfied by a first door or by both a first and second ( or more)
drawers, each of which extends over both portions. Thus, we agree with
Appellants that the context of the claim requires that the "extending over"
language must be met by a single door.
The foregoing, however, does not conclude our analysis. We note that
Figure 2 of Earle discloses first and second storage areas, namely, upper
refrigerated portion 61 and lower refrigerated portion 62. See Earle, Fig. 2.
In addition, Figure 2 shows door 34 extending over and providing access to
upper refrigerated portion 61. Id. Earle's lower refrigerated portion 62 is
contiguous with upper refrigerated portion 61. Id. at Fig. 2, col. 3, 1. 73-
col. 4, 1. 30. Figure 2 shows drawer units 41--44, each with front faces that
extend over and provide access to lower refrigerator portion 62. The front
surface of the refrigerator illustrated in Figure 2 is substantially planar. Id.
at Fig. 2.
Earle provides access to its refrigerated storage areas through a variety
of configurations of doors and drawers. See Earle, col. 3, 11. 25-26 ( one or
more doors or drawers), Figs. 1--4. It would have been obvious to a person
of ordinary skill in the art at the time of the invention to modify door 34 of
Earle so that it extends not only over upper refrigerated portion 61, but also
over a portion of lower refrigerated portion 62. A person of ordinary skill in
the art would have been motivated to do this in order to gain access to both
refrigerated portions through a single opening as a matter of convenience to
avoid the necessity of opening two different doors and/or drawers to access
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Application 14/323,585
stored items in the refrigerator. In our opinion, modifying the size and shape
of Earle's door 34 to also extend over a portion of lower refrigerated
portion 62 is nothing more than a predictable variation of Earle. See KSR
Int'! Co. v. Teleflex Inc., 550 U.S. 398,417 (2007) (predictable variation);
see also In re Dailey, 357 F.2d 669, 673-74 (CCPA 1966) (one of numerous
container configurations that a person of ordinary skill in the art would find
obvious).
For the foregoing reasons, we sustain the Examiner's unpatentability
rejection of claim 1, but we view our decision as departing from the initial
thrust of the Examiner's rejection such that we designate our affirmance as a
NEW GROUND OF REJECTION. See In re Biedermann, 733 F.3d 329,
337 (Fed. Cir. 2013) (applicants entitled to a fair opportunity to react to the
thrust of the rejection).
Claims 2, 4-9, and 11-17
Claims 2, 4--9, and 11-17 depend, directly or indirectly, from
claim 1. Claims App. While the Examiner's original rejection of these
claims suffers from the same infirmity that was identified above with respect
to claim 1, we deem that infirmity to be cured by entering a new ground of
rejection of claim 1 as set forth above. Except for the deficiencies noted
above with respect to the Examiner's rejection of claim 1, for purposes of
entry of a new ground of rejection of claims 2, 4--9, and 11-17 depending
therefrom, we hereby adopt as our own the Examiner's findings of fact
regarding these claims set forth in the final rejection. Final Action 8-10.
We take this opportunity to address the arguments raised by
Appellants with respect to claims 4--8, 11, and 12. Appeal Br. 21-22.
Claims 4--6, 9, 11, and 12 are all directed to linear dimensions of the various
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Application 14/323,585
sides of the refrigerator. Claims App. Claims 7 and 8 are directed to angles
related to the set back or "central" portion being at "approximately ninety
(90) degrees." Id. Appellants argue that the Examiner failed to present a
"convincing line of reasoning" as to why these limitations would have been
obvious. Appeal Br. 21-22. In particular, Appellants argue that the specific
claimed dimensions provide an advantage of allowing a refrigerator to
extend around an upper cabinet to solve the problem of increasing
refrigeration space without having to remove or modify existing upper
cabinetry. Id. at 22; Reply Br. 16. Appellants argue that Earle fails to
disclose upper cabinets, much less extending around upper cabinets. Id.
In response, the Examiner points out that Earle discloses structure
above and at the rear of the refrigerator, with the refrigerator extending
around such structure. Ans. 6.
Id.
While Earle's structure may not be cabinets like the
Appellant's, it is obvious to vary the dimensions of Earle based
on the dimensions of the deck (Fig. 2), basin (Fig. 1 ), or other
structure above and at the rear of the refrigerator.
We do not find Appellants' arguments persuasive. Earle is directed to
refrigerators that are adapted for special situations where the standard box-
type refrigerator is not satisfactory. Earle, col. 1, 11. 1--4. Earle addresses
special cases that arise in order to utilize the limited space available in small,
apartments, houses, or boats. Id. at col. 1, 11. 31-35. Earle addressed such
special cases by providing a refrigerator where the rear plane of the lower
portion of the refrigerator is located behind the rear plane of the upper
portion of the refrigerator. Id. col. 1, 11. 38--42. Earle teaches that the
invention can be used in motor boats or "other places" where, due to the
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Application 14/323,585
presence of a horizontal member, the vertical wall space is limited. Id.
col. 2, 11. 8-11. In this regard, Earle teaches a refrigerator where the front
portion of the upper portion is in the same plane as the lower portion, but
where the lower portion projects to the rear of the upper portion and extends
under the horizontal member. Id. col. 2, 11. 11-18.
Viewed in the context of Earle's disclosure, the particular dimensions
and angles claimed by Appellants in claims 4--8, 11, and 12 amount to little
more than a particular species of the generic invention disclosed in Earle.
We view the cabinets in Appellants' disclosure as nothing more than a
particular type of horizontal member that Earle already contemplates
designing around. A person of ordinary skill in the art, armed with the
teachings of Earle, would have found it obvious to design a refrigerator
around various types and dimensions of horizontal members. While the
specific example in Earle, Figure 2 is a boat deck, the teaching is readily
transferrable to other horizontal members using no more than ordinary skill,
including upper kitchen cabinets. Appellants present neither evidence, nor
persuasive technical reasoning, that shows that the recited linear dimensions
and angles achieve unexpected results. Thus, Appellants' invention is
nothing more than a predictable variation of Earle. KSR, 550 U.S. at 417
(predictable variations likely unpatentable ).
In view of the foregoing, we sustain the Examiner unpatentability
rejection of claims 2, 4--9, and 11-17, but for reasons previously discussed,
designate our affirmance as a NEW GROUND OF REJECTION.
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Application 14/323,585
DECISION
The decision of the Examiner to reject claims 1, 2, 4--9, and 11-17 is
affirmed, which affirmance is designated as a NEW GROUND OF
REJECTION.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
FINALITY OF DECISION
This decision contains new grounds of rejection pursuant to 37 C.F.R.
§ 4I.50(b). 37 C.F.R. § 4I.50(b) provides "[a] new ground of rejection
pursuant to this paragraph shall not be considered final for judicial review."
37 C.F.R. § 4I.50(b) also provides that the Appellants, 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 proceeding will be remanded to
the examiner. ...
(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same record ....
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED
37 C.F.R. § 4I.50(b)
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