13298768 (P.T.A.B. Sep. 25, 2017)

Ex Parte Szprengiel et al

Patent Trial and Appeal BoardSep 25, 2017

13298768 (P.T.A.B. Sep. 25, 2017)

UNITED STATES PATENT AND TRADEMARK OFFICE 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. 13/298,768 11/17/2011 Stanley Szprengiel 139650.155 5917 7590 09/25/2017 Carella, Byrne et al 5 Becker Farm Road Roseland, NJ 07068-1739 EXAMINER OSWALD, KIRSTIN U ART UNIT PAPER NUMBER 3744 MAIL DATE DELIVERY MODE 09/25/2017 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 STANLEY SZPRENGIEL and THOMAS GRAHAM ____________ Appeal 2016-0023951 Application 13/298,7682 Technology Center 3700 ____________ Before BIBHU R. MOHANTY, BRUCE. T. WIEDER, and KENNETH G. SCHOPFER, Administrative Patent Judges. SCHOPFER, Administrative Patent Judge. DECISION ON REQUEST FOR REHEARING Appellants request rehearing of the Decision entered August 14, 2017, which affirmed the Examiner’s rejection of claims 1, 3–9, 11, and 12 as obvious over combinations of prior art including Heyer,3 Hoffmann,4 1 We may reference herein Appellants’ Appeal Brief (“Appeal Br.,” filed Aug. 14, 2015), Reply Brief (“Reply Br.,” filed Dec. 28, 2015), and Request for Rehearing (“Request,” filed Sept. 5, 2017); the Examiner’s Answer (“Ans.,” mailed Dec. 18, 2015) and Final Office Action (“Final Act.,” mailed Apr. 8, 2015); and the Decision on Appeal (“Decision,” mailed Aug. 15, 2017). 2 According to Appellants, the real party in interest is Component Hardware Group, Inc. Appeal Br. 1. 3 Heyer, US 3,683,153, iss. Aug. 8, 1972. 4 Hoffmann, US 5,072,095, iss. Dec. 10, 1991. Appeal 2016-002395 Application 13/298,768 2 Galliou,5 Balentine,6 Coe,7 and Song.8 Appellants contend that we erred “as a matter of law in not basing a conclusion of obviousness on what the combined teachings, knowledge of one of ordinary skill in the art, and the nature of the problem to be solved as a whole would have suggested to those of ordinary skill in the art” and that “[t]he Decision institutes a new ground of rejection of claim 3.” Request 1. We find no point of law or fact that we overlooked or misapprehended in arriving at our Decision. However, out of an abundance of caution, we will designate our affirmance as to claim 3 as a new ground of rejection under 37 C.F.R. § 41.50(b). Our analysis in the Decision, and findings of the record related thereto, are hereby adopted for this new ground of rejection. DISCUSSION Appellants raise three issues in their Request. We address each in turn below. First, Appellants argue that the Examiner’s conclusion of obviousness is unsupported by the references and that “the Examiner and the Decision fail to understand the teachings of Heyer.” Request 5. In support, Appellants provide their understanding of the teachings of Heyer and Hoffmann and what the combined teachings of Heyer and Hoffmann in order to show that “[t]he Examiner’s conclusion of obviousness is unsupported by Heyer and Hoffmann.” Id. at 2–5. In short, Appellants assert that Heyer discloses that in the event “the thermostat mechanism 82 5 Galliou et al., US 2004/0084439 A1, pub. May 6, 2004. 6 Balentine, US 5,694,785, iss. Dec. 9, 1997. 7 Coe, US 3,387,653, iss. June 11, 1968. 8 Song, US 2009/0188231 A1, pub. July 30, 2009. Appeal 2016-002395 Application 13/298,768 3 fail[s], the flow of current would be unrestricted to the heating element 46 [and t]here would be no need to provide an alternate method to activate the heating element 46 as concluded by the Examiner as the heating element 46 remains activated.” Id. at 4. Appellants further assert that Heyer solves this problem by employing a fuse that protects the operating circuit. Id. at 4–5. Appellants conclude that the Examiner’s conclusion “is unsupported by the references . . . [because] the Examiner fails to provide any factual evidence of any objective teaching in Hoffman[n] that would lead one of ordinary skill in the art” to make the modification proposed in the rejection. Id. at 5. As an initial matter with respect to this rejection, we note that Appellants previously raised the same argument in their Appeal Brief, which we addressed in our Decision. Decision at 5. We consider Appellants’ new assertions in support of this argument, which could and should have been raised previously, to be untimely. Further, even if those arguments were properly raised and considered here, we would not be persuaded of error. In rejecting the claims, the Examiner concluded that it would have been obvious to modify Heyer with Hoffmann’s switch “to provide an alternative way to activate [Heyer’s] heating element . . . in the event that the thermostat mechanism fails to detect a significant enough temperature change despite a high level of condensate or when the thermostat mechanism has complete failure.” Final Act. 10–11. Thus, the Examiner’s conclusion contemplates providing an alternative method for activating the heater in the event the heater fails to turn on. In contrast, the portions of Heyer relied upon in Appellants’ Request relate to the situation in which “the thermostatic control should fail in the ‘on’ position to permit unrestricted flow of electrical energy to the heating element 46.” Heyer col. 5, ll. 22–24. Thus, Appeal 2016-002395 Application 13/298,768 4 Appellants’ argument does not address the proposed modification in the rejection and does not adequately explain why the Examiner’s conclusion is unsupported. Second, Appellants argue that “[t]he Decision in affirming the rejection of claims 3 and 6 does not recognize the differences in interpretation of claim 3 and 6 by the Examiner.” Request 8. Our Decision affirming the rejection of claim 3 relies on the Examiner’s findings with respect to claims 3 and 6 together. See Decision 8–9 (citing Final Act. 3–7). However, to the extent our findings differ from the Examiner’s with respect to claim 3, we will designate our affirmance as to claim 3 as a new ground of rejection. Third, Appellants argue that “Balentine requires that the frame 12 should remain fixed within the refrigerator indefinitely” and thus, “making the frame 12 pivotable . . . would change the principle of operation of Balentine that requires the frame 12 to be fixed not pivotable.” Request 8– 9. Initially, we note that this argument is untimely as it could and should have been raised in Appellants’ Appeal Brief. Further, even if the argument were timely, we would not consider it persuasive. We do not consider providing Balentine’s device the ability to pivot slightly in order to activate the thermostat to be changing any principle of operation of Balentine. Appellants do not adequately explain why the position of the frame in Balentine is related to any principle of operation of the device. Even if the frame were pivotable, the device would continue to operate to evaporate condensate through the use of a heating element. Appeal 2016-002395 Application 13/298,768 5 CONCLUSION We have carefully reviewed the original Decision in light of Appellants’ Request, but we find no point of law or fact that we overlooked or misapprehended in arriving at our decision. However, we grant Appellants’ request for rehearing to the extent that we now designate our affirmance of the rejection of claim 3 as a new ground of rejection. This decision contains new grounds of rejection pursuant to 37 C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides “[a] new ground of rejection pursuant to this paragraph shall not be considered final for judicial review.” 37 C.F.R. § 41.50(b) also provides that the Appellant, WITHIN TWO MONTHS FROM THE DATE OF THE DECISION, must exercise one of the following two options with respect to the new grounds 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)(1)(iv). GRANTED-IN-PART; 37 C.F.R. § 41.50(B)