Ex Parte VISIN

Patent Trials and Appeals Board

May 23, 2019

13670510 - (D) (P.T.A.B. May. 23, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/670,510 11/07/2012
135389 7590 05/28/2019
Whirlpool Corporation/Nyemaster
Nyemaster Goode, P.C.
2000 North M-63
MD3601
Benton Harbor, MI 49022
FIRST NAMED INVENTOR
JEROLD M. VISIN
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.
SUB-00663-US-NP 1384
EXAMINER
OSWALD, KIRSTIN U
ART UNIT PAPER NUMBER
3763
NOTIFICATION DATE DELIVERY MODE
05/28/2019 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):
deborah_tomaszewski@whirlpool.com
ptomail@nyemaster.com
PatentDocketing@w hirlpool. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JEROLD M. VISIN
Appeal 2018-001391 1
Application 13/670,5102
Technology Center 3700
Before MICHAEL C. ASTORINO, BRADLEY B. BA YAT, and
TARA L. HUTCHINGS, Administrative Patent Judges.
BAY AT, Administrative Patent Judge.
DECISION ON APPEAL
Jerold M. Visin (Appellant) appeals under 35 U.S.C. § 134(a) from
the Final Rejection of claims 1-3, 5, 6, 10-15, and 19-22, which are all the
claims pending in the application. We have jurisdiction under 35 U.S.C.
§ 6(b ).
We AFFIRM.
1 Our Decision references Appellant's Appeal Brief ("App. Br.," filed July
14, 2017), Reply Brief ("Reply Br.," filed Nov. 22, 2017), the Examiner's
Answer ("Ans.," mailed Sept. 22, 2017), and Final Office Action ("Final
Act.," mailed Feb. 17, 2017).
2 Appellant identifies "Whirlpool Corp." as the real party in interest. App.
Br. 3.
Appeal2018-001391
Application 13/670,510
CLAIMED SUBJECT MATTER
Apparatus claim 1 and method claim 11 are the only independent
claims on appeal. Claims 1 and 11 are reproduced below with added
formatting.
1. A refrigerator comprising:
a cabinet;
a door for providing access to the cabinet;
an ice maker mounted within the cabinet or on the door;
the ice maker having an ice mold including a plurality of
ice cube forming mold sections with upward facing openings,
the ice mold including an upward facing surface;
a supply of water provided to the ice cube forming mold
sections;
a rotatable member rotatable about an axis spaced apart
from the upward facing surface of the ice mold and having a
parked position and a harvest position;
fingers extending from the rotatable member to a first
distance from the axis, wherein the fingers are aligned with the
ice cube forming mold sections such that rotation of the
rotatable member about the axis causes the fingers to rotate and
contact ice cubes and thereby dislodge and harvest the ice cubes
from the ice cube forming mold sections; and
a cam projection extending from the rotatable member to
a second distance from the axis, the second distance being
lesser than the first distance, wherein rotation of the rotatable
member causes the cam projection to rotate and contact the
upward facing surface of the ice mold to thereby flex the ice
mold and at least partially break a bond between the ice cubes
and the ice cube forming mold sections to facilitate harvesting
of the ice cubes by the fingers;
wherein the rotatable member is configured to rotate not
more than 180 degrees between the parked position and the
harvest position and back to the parked position without
rotating the fingers significantly above the axis.
11. A method of making and harvesting ice cubes, the
method comprising:
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Application 13/670,510
providing a refrigerator with an ice maker including an
ice mold within the refrigerator, the ice mold including a
plurality of ice cube forming mold sections with upward facing
openings, the ice mold further including an upward facing
surface;
providing a rotatable member having an axis of rotation
in a parked position including rotatable fingers extending
radially from the rotatable member and in alignment with the
ice cube forming mold sections, the rotatable member further
having a rotatable cam projection extending radially from the
rotatable member;
providing water to the ice cube forming mold sections
removing heat from the water within the ice cube forming mold
sections to form ice cubes in the ice cube forming mold
sections;
breaking an adhesion between the ice cubes and the ice
cube forming mold sections by rotating the rotatable member to
bring the rotatable cam projection into contact with the upward
facing surface of the ice mold to thereby flex the ice mold; and
removing the ice cubes from the ice cube forming mold
sections by continuing to rotate the rotatable member such that
the rotatable fingers pass through the ice cube forming mold
sections to thereby remove the ice cubes;
stopping the removing the ice cubes step when the
rotatable fingers reach a rotational position not more than 180
degrees from the parked position and not significantly above the
axis of rotation;
returning the rotatable fingers to the parked position by
rotating in an opposite direction from the removing the ice
cubes step.
App. Br., Claims Appendix ( emphasis added).
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Appeal2018-001391
Application 13/670,510
REJECTIONS 3
I. Claims 1-3, 5, 6, 10-15, and 19-22 are rejected under 35 U.S.C.
§ 112 (b ), as indefinite. 4
II. Claims 1, 3, 5, 6, 11, 12, 14, 15, 21, and 22 are rejected under 35
U.S.C. § 103(a) as unpatentable over Newberry, 5 Heath, 6 and Nelson. 7
III. Claims 2 and 13 are rejected under 35 U.S.C. § 103(a) as unpatentable
over Newberry, Heath, Nelson, and Simmons. 8
IV. Claims 10 and 19 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Newberry, Heath, Nelson, and Edwards. 9
V. Claim 20 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Newberry, Heath, Nelson, Edwards, and Rafalovich. 10
ANALYSIS
35 u.s.c. § 112 (b)
In rejecting independent claims I and 11 as indefinite, the Examiner
concludes that "[t]he term 'significantly above' is not defined by the claim,
the [S]pecification does not provide a standard for ascertaining the requisite
degree, and one of ordinary skill in the art would not be reasonably apprised
3 "The specification new matter rejection is withdrawn." Ans. 3.
4 The Examiner rejected the claims under 35 U.S.C. § 112 (pre-AIA), second
paragraph; however, because Appellant's application was filed after
September 16, 2012, the AIA version of the statute is applied.
5 Newberry, US 3,010,292, iss. Nov. 28, 1961.
6 Heath, US 2,840,507, iss. June 24, 1958.
7 Nelson, US 2,857,748, iss. Oct. 28, 1958.
8 Simmons et al., US 2,785,539, iss. Mar. 19, 1957 ("Simmons").
9 Edwards et al., US 5,889,243, iss. Mar. 30, 1999 ("Edwards").
10 Rafalovich et al., US 7,900,470 B2, iss. Mar. 8, 2011 ("Rafalovich").
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Appeal2018-001391
Application 13/670,510
of the scope of the invention." Final Act 4 ("Is significantly meaning 20°
above? 50° above?").
Appellant disagrees and argues that the Specification clearly describes
this limitation in paragraph 28, which states:
The rake 134 does not need to move more than 180 degrees
during the harvesting process. Therefore, to return the rake 134
to the parked position, the motor can optionally be reversed
such that the fingers 150 pass back through the mold sections
146 towards the parked position. This results in an overall
lower height of the module 128 because the rake 134 does not
need to be rotated significantly above the axis of rotation
[ emphasis added].
App. Br. 12. According to Appellant, the purpose of the ]imitation is an
alternative design for a low profile icemaker with a shortened overall height
such that "fingers must be prevented from rotating signi/icantly above the
axis (~frotation"; "[t]rom this description one of ordinary skill would
absolutely understand and clearly know the scope of the claimed invention."
Id. at 12-13. vVe disagree . .....,
Section 112 requires "claims particularly pointing out and distinctly
claiming subject matter which the inventor or joint inventor regards as the
invention." In determining whether a claim is definite under 35 U.S.C.
§ 112, "[t]he USPTO, in examining an application, is obliged to test the
claims for reasonable precision." In re Packard, 7 51 F. 3 d 13 07, 1313 (Fed.
Cir. 2014). "[A] claim is indefinite when it contains words or phrases whose
meaning is unclear." Id. at 1322; Ex Parte McAward, No. 2015-006416, 11
(PTAB Aug. 25, 2017) (precedential) (quoting In re Packard, 751 F.3d at
1314). The Office "determines the scope of claims ... not solely on the
basis of the claim language, but upon giving claims their broadest reasonable
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Application 13/670,510
construction 'in light of the specification as it would be interpreted by one of
ordinary skill in the art."' Phillips v. A WH Corp., 415 F.3d 1303, 1316
(Fed. Cir. 2005) (en bane) (quoting In re Am. Acad. Of Sci. Tech Ctr., 367
F.3d 1359, 1364 (Fed. Cir. 2004).
As the Examiner correctly observes. "significantlv above" is a term
; ; ~
of degree. See, e.g., Interval Licensing LLC v. AOL, Inc., 766 F.3d 1364,
1370 (Fed. Cir. 2014) (identifying "unobtrusive manner" as a term of
degree); Star Scientific, Inc. v. R.J. Reynolds Tobacco Co., 537 F.3d 1357,
1372 (Fed. Cir. 2008) ("Here, the term 'anaerobic condition' is in effect a
term of degree because its bounds depend on the degree of oxygen
deficiency."). "Claim language employing terms of degree has long been
found definite where it provided enough certainty to one of skill in the art
when read in the context of the invention." Interval Licensing, 766 F.3d at
1370 (citations omitted). However, "[t]he claims, when read in light of the
specification and the prosecution history, must provide objective boundaries
for those of skill in the art." Id. at 1371 ( citing Nautilus, Inc. v. Biosig
Instruments, Inc., 134 S. Ct. 2120, 2130 & n.8 (2014) (additional citation
omitted)); see Enzo Biochem Inc. v. Appiera Corp., 599 F.3d 1325, 1332
(Fed. Cir. 2010) (When a "word of degree" is used, a patent must provide a
"standard for measuring that degree.").
Appellant has not directed us to where the written description
provides some standard for measuring the degree imposed by the lower
profile embodiment to prevent finger rotation "significant1y above the axis."
See Ans. 15. 'fv1oreover, in the context of apparatus claim 1, it is unclear
how the term "significantly" modifies the rotatable member stn1cture
"without rotating the fingers significantly above the axis." \Vhen a term of
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Application 13/670,510
degree such as "significantly above" is used as recited in claims 1 and 11,
the Specification must provide some objective standard for measuring that
degree. See Datamize, LLC v. Plumtree Software, Inc., 417 F.3d 1342,
1350-55 (Fed. Cir. 2005). Even though the term "significantly above"
appears in paragraph 28 of the Specification, there is no standard provided
for measuring the requisite degree the rotatable fingers reach that is not
significantly above the axis of rotation.
We are unpersuaded by Appellant's comparison of the term
"substantially" to the term "significantly," which is at issue before us. See
Reply Br. 2--4. "It is well established that when the term 'substantially'
serves reasonably to describe the subject matter so that its scope would be
understood by persons in the field of the invention, and to distinguish the
claimed subject matter from the prior art, it is not indefinite." Verve, LLC v.
Crane Cams, Inc., 311 F.3d 1116, 1120 (Fed. Cir. 2002).
Expressions such as "substantially" are used in patent
documents when warranted by the nature of the invention, in
order to accommodate the minor variations that may be
appropriate to secure the invention. Such usage may well satisfy
the charge to "particularly point out and distinctly claim" the
invention, 35 U.S.C. § 112, and indeed may be necessary in order
to provide the inventor with the benefit of his invention. In
Andrew Corp. v. Gabriel Elecs. Inc., 847 F.2d 819, 821-22 (Fed.
Cir. 1988) the court explained that usages such as "substantially
equal" and "closely approximate" may serve to describe the
invention with precision appropriate to the technology and
without intruding on the prior art. The court again explained in
Ecolab Inc. v. Envirochem, Inc., 264 F.3d 1358, 1367 (Fed. Cir.
2001) that "like the term 'about,' the term 'substantially' is a
descriptive term commonly used in patent claims to 'avoid a
strict numerical boundary to the specified parameter,"' quoting
Pall Corp. v. Micron Separations, Inc., 66 F .3d 1211, 1217 (Fed.
Cir. 1995).
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Application 13/670,510
Id. (internal parallel citations omitted). In contrast, the term "significantly"
fails to reasonably describe the subject matter of claims 1 and 11 so that its
scope would be understood by persons skilled in the art. Section 112 places
the burden of precise claim drafting on applicants. See Packard, 751 F.3d at
1313 ("Given the role of the applicant in the process, it is a reasonable
implementation of the examination responsibility, as applied to§ 112, for
the [Office], upon providing the applicant a well-grounded identification of
clarity problems, to demand persuasive responses on pain of rejection.").
Accordingly, we sustain the rejection of independent claims 1 and 11,
including claims 3, 5, 6, 10, 12-15, and 19-22 which are dependent thereon,
under 35 U.S.C. § 112(b) as indefinite.
35 U.S.C. § 103(a)
Before a proper review of the rejections under§ 103(a) can be made,
the subject matter encompassed by the claims on appeal must be reasonably
understood without resort to speculation. Because the claims fail to satisfy
the requirements under 35 U.S.C. § 112, we are constrained to reverse, pro
forma, the Examiner's rejections under 35 U.S.C. § 103(a). See In re Steele,
305 F .2d 859, 862 (CCP A 1962) (A prior art rejection cannot be sustained if
the hypothetical person of ordinary skill in the art would have to make
speculative assumptions concerning the meaning of claim language).
It should be understood that our decision to reverse the rejections
under 35 U.S.C. § 103(a) is based solely on the indefiniteness of the claims,
and does not reflect on the merits of the underlying rejections.
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Appeal2018-001391
Application 13/670,510
DECISION
The Examiner's rejection under 35 U.S.C. § 112 is affirmed.
The Examiner's prior art rejections under 35 U.S.C. § 103 are
reversed proforma.
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
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