12312899 (P.T.A.B. Mar. 14, 2017)

Ex Parte Wiest et al

Patent Trial and Appeal BoardMar 14, 2017

12312899 (P.T.A.B. Mar. 14, 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. 298-467 9981 EXAMINER ALOSH, TAREQ M ART UNIT PAPER NUMBER 3744 MAIL DATE DELIVERY MODE 12/312,899 05/29/2009 28249 7590 03/15/2017 DILWORTH & BARRESE, LLP Dilworth & Barrese, LLP 1000 WOODBURY ROAD SUITE 405 WOODBURY, NY 11797 Matthias Wiest 03/15/2017 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 MATTHIAS WIEST and DIDIER SIEGEL Appeal 2015-006077 Application 12/312,899 Technology Center 3700 Before LINDA E. HORNER, LYNNE H. BROWNE, and NATHAN A. ENGELS, Administrative Patent Judges. BROWNE, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Matthias Wiest and Didier Siegel (Appellants) appeal under 35 U.S.C. §134 from the rejection of claims 1—20. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. Appeal 2015-006077 Application 12/312,899 CLAIMED SUBJECT MATTER Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. A refrigerator unit and/or a freezer unit having a magnetic refrigerator (10), having a cold heat exchanger (20) for refrigeration of a refrigerator space and/or freezer space of the unit, having a hot heat exchanger (50) as well as control means, said refrigerator unit being operable in and changeable between a refrigerating mode and a defrosting mode, wherein the control means are made such that, in the refrigerating mode of the unit, a heat carrier medium refrigerated in the magnetic refrigerator (10) is supplied to the cold heat exchanger (20), and the heat carrier medium heated in the magnetic refrigerator (10) is supplied to the heat exchanger (50), and the control means are furthermore made such that in the defrosting mode of the unit the heat carrier medium heated in the magnetic refrigerator (10) is supplied to the cold heat exchanger (20) and the heat carrier refrigerated in the magnetic refrigerator (10) is supplied to the hot heat exchanger. REFERENCES The prior art relied upon by the Examiner in rejecting the claims on appeal is: Harshbarger US 4,852,360 Aug. 1, 1989 Wada US 6,826,915 B2 Dec. 7,2004 Kobayashi US 2006/0218936 A1 Oct. 5, 2006 REJECTIONS I. Claims 1—20 stand rejected under 35 U.S.C. § 112, second paragraph, as being indefinite. II. Claims 1—6 and 8—20 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Wada and Harshbarger. 2 Appeal 2015-006077 Application 12/312,899 III. Claim 7 stands rejected under 35 U.S.C. § 103(a) as unpatentable over Wada, Harshbarger, and Kobayashi. DISCUSSION Rejection I Claims 1—20 The Examiner determines that claim 1 is indefinite because it is unclear if the reference to “the head carrier medium heated in the magnetic refrigerator is supplied to the heat exchanger” refers “to the hot heat exchanger or the cold heat exchanger.” Final Act. 2. The Examiner rejects claims 2—20 based on their dependency from claim 1. Appellants argue that the recitation of “a ‘heat exchanger (50)’ which is clearly the same heat exchanger as the ‘hot heat exchanger (50)’. Claim 1 is definite.” Appeal Br. 6. However, “[t]he use of reference characters is to be considered as having no effect on the scope of the claims.” MPEP § 608.01 (m); see also MPEP § 2173.05(e) (providing an example of indefinite claim language in the instance in which “if two different levers are recited earlier in the claim, the recitation of ‘said lever’ in the same or subsequent claim would be unclear where it is uncertain which of the two levers was intended”). Accordingly, the use of the reference numeral “(50)” fails to distinguish the recitation of “the heat exchanger” from either the hot or cold heat exchangers previously recited in the claim. Thus, the Examiner correctly determines that it is unclear whether the limitation at issue refers to the hot heat exchanger or the cold heat exchanger. We sustain the Examiner’s decision rejecting claims 1—20. 3 Appeal 2015-006077 Application 12/312,899 Claims 8, 10-13, and 19 The Examiner determines that claim 8 is also indefinite because it is unclear how many valves are claimed. See Final Act. 3. In support of this determination, the Examiner explains that claim 8 contain numerous recitations of “a valve” and “the valve.” See id. at 2-3. The Examiner determines that claims 10—13 and 19 are indefinite based on their dependency from claim 8. Appellants argue that “[cjlaims 8, 10, 11 and 12 each recite ‘valve (30)’ and ‘valve (40)’ which are clearly different from each other. Claims 8, 10, 11 and 12 are definite.”1 Appeal Br. 6. However, as discussed supra, reference numerals in the claim have no effect on the scope of the claim, and thus, in this instance fail to distinguish between the valves claimed. We sustain the Examiner’s decision rejecting claims 8, 10-13, and 19 for this additional reason. Claims 10-12 The Examiner determines that claims 10—12 are also indefinite because “it is unclear how many valves are present and how many positions are operable.” Final Act. 3. Appellants do not respond to this rejection. See Appeal Br. 6. We sustain the Examiner’s decision rejecting claims 10—12 for this additional reason. Rejections II and III Appellants argue claims 1—6 and 8—20 together. See Appeal Br. 10. We select claim 1 as the representative claim, and claims 2—6 and 8—20 stand or fall with claim 1. Appellants group claim 7 with claims 1—6 and 8— 1 Appellants do not address claims 13 and 19. 4 Appeal 2015-006077 Application 12/312,899 20 even though claim 7 is subject to a different ground of rejection than claims 1—6 and 8—20. Accordingly, we understand Appellants to consider our resolution of the issues raised regarding claim 1 as dispositive as to claim 7 such that claim 7 stands or falls with claim 1 as well. The Examiner finds that Wada discloses all of the limitations of claim 1 except for a “refrigerator unit [that] is operable in and changeable between a refrigerating mode and a defrosting mode.” Final Act. 5. The Examiner further finds that “Harshbarger teaches a refrigerator unit (see fig. 2) that is operable in and changeable between a refrigerating mode and a defrosting mode.” Id. (citing Harshbarger 1:41—442). Based on these findings the Examiner determines that it would have been obvious to modify the control means (30) of Wada to be operable in and changeable between a refrigerating mode and a defrosting mode, as taught by Harshbarger, for the purpose of maintaining the cold heat exchanger in optimal refrigeration-producing condition by defrosting heat-transfer-impeding frost, as well as for providing heat to frosted areas without requiring external heaters. Id. at 5—6. Appellants contend that “the modification of Wada does not come from Wada or Harshbarger, but instead is a product of impermissible hindsight reconstruction, and the Examiner has improperly utilized Applicants’ specification as a roadmap.” Appeal Br. 9. However, we are not aware of any requirement that the reasoning for the proposed modification “come from” the prior art. Rather, as the Supreme Court noted in KSRInt’l. Co. v. Teleflex Inc., 550 U.S. 398 (2007), an obviousness analysis “need not seek out precise teachings directed to the specific subject 2 The Final Action refers to column 11 of Harshbarger; however, the quoted portion is found in column 1. 5 Appeal 2015-006077 Application 12/312,899 matter of the challenged claim, for a court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ.” Id. at 418. Here the Examiner sets forth reasoning for the proposed modification as quoted supra. Appellants do not contest this reasoning and thus, do not apprise us of error. Moreover, Appellants do not identify any knowledge relied upon by the Examiner that was gleaned only from Appellants’ disclosure and that was not otherwise within the level of ordinary' skill at the time of the invention, thereby obviating Appellants’ assertion of improper hindsight. See In re McLaughlin, 443 F.2d 1392 (CCPA 1971). For these reasons, we sustain the Examiner’s decision rejecting claim 1, and claims 2—20, which fall therewith. DECISION The Examiner’s rejections of claims 1—20 are AFFIRMED. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 1.136(a)(l)(iv). AFFIRMED 6