Ex Parte Wiest et al

Patent Trial and Appeal Board

May 17, 2016

12312415 (P.T.A.B. May. 17, 2016)

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.
12/312,415 05/08/2009 Matthias Wiest 298-452 1653
28249 7590 05/18/2016
DILWORTH & BARRESE, LLP
Dilworth & Barrese, LLP
1000 WOODBURY ROAD
SUITE 405
WOODBURY, NY 11797
EXAMINER
MENGESHA, WEBESHET
ART UNIT PAPER NUMBER
3744
MAIL DATE DELIVERY MODE
05/18/2016 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 2014-003851
Application 12/312,415
Technology Center 3700
____________________

Before LYNNE H. BROWNE, ANNETTE R. REIMERS, and
ERIC C. JESCHKE, Administrative Patent Judges.

BROWNE, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF CASE
Matthias Wiest and Didier Siegel (Appellants) appeal under 35 U.S.C.
§ 134 from the rejection of claims 1–20 under 35 U.S.C. § 103(a) as
unpatentable over Mohebbi (US 2009/0064686 A1, pub. March 12, 2009)
and Doke (US 5,315,830, iss. May 31, 1994).1 We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM-IN-PART.

1 We do not review Drawing objections as these issues pertain to
petitionable, not appealable, matters and are not within the jurisdiction of the
Board. See MPEP §§ 1002 and 1201.
Appeal 2014-003851
Application 12/312,415
2
CLAIMED SUBJECT MATTER
The claims are directed to a magnetic refrigerator and/or freezer.
Claim 1, reproduced below, is illustrative of the claimed subject matter:
1. A refrigerator and/or freezer which comprises an appliance
with an interior to be cooled for accommodating the goods to be
refrigerated and/or frozen and with a magnetic cooler, wherein
the magnetic cooler is at least partly arranged in the interior of
the appliance, wherein the magnetic cooler has a cold side which
is located in the interior of the appliance and a warm side located
outside of the appliance.

DISCUSSION
Claims 1, 2–4, 6–9, 11–14, 19, and 20
Appellants argue claims 1, 2–4, 6–9, 11–14, 19, and 20 together. See
Appeal Br. 8–10; see also Reply Br. 2–5. We select independent claim 1 as
the illustrative claim, and claims 2–4, 6–9, 11–14, 19, and 20 stand or fall
with claim 1.
The Examiner finds that Mohebbi discloses, inter alia, a refrigerator
that comprises an appliance 20 with an interior to be cooled for
accommodating the goods to be refrigerated and with a magnetic cooler 22
with a cold side 52. Final Act. 3. The Examiner further finds that Mohebbi
does not disclose that the magnetic cooler 22 has a warm side located
outside the appliance 20. Id. The Examiner additionally finds that Doke
discloses a refrigerator having a cooler 34 that has a cold side 38 located in
the interior of the refrigerator appliance 22 and a warm side 36 located
outside of the appliance 22. Id. Based on these findings, the Examiner
concludes that
it would have been obvious to one of ordinary skill in the art at
the time the invention was made to modify the magnetic cooler
(22) of Mohebbi to locate its inherent warm side outside of the
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Application 12/312,415
3
appliance (20), as taught by Doke, for the purpose of dissipating
all of the absorbed heat from the interior of the appliance to the
outside of the appliance, hence providing a direct path to the
exterior of the appliance for the absorbed heat to be transferred
to.
Id. at 3–4.
Appellants argue that Mohebbi “fails to disclose that the cold side of
the magnetic cooler is located in the interior of the appliance and its warm
side is located on the outside of the appliance.” Appeal Br. 8; see also Reply
Br. 2. Appellants further argue that “Doke fails to disclose a magnetic
cooler.” Appeal Br. 9–10; see also Reply Br. 2. Appellants’ arguments are
not responsive to the rejection as articulated by the Examiner. The rejection
relies on Doke, not Mohebbi, to teach a cold side on the interior and a warm
side on the outside of the appliance. See Final Act. 3–4. Similarly, the
rejection relies on Mohebbi rather than Doke for the disclosure of a
magnetic cooler. See id. at 3. Thus, it is the combined teachings of
Mohebbi and Doke that meet the limitations at issue. Nonobviousness
cannot be established by attacking the references individually when the
rejection is predicated upon a combination of prior art disclosures. See In re
Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986).
Appellants further argue that
both of the so-called hot side 36 and cold side 38 of the
thermoelectric device 32 are disposed within the end 22 of the
container 20, i.e., within the interior of the container 20, since the
modular thermoelectric assembly 30 is provided with covers 80
and 90 as shown in Fig. 3 of Doke. Thus, it is not disclosed in
Doke that the warm side of the magnetic cooler is located on the
outside of the appliance.
Appeal Br. 9 (emphasis omitted). In response to this argument, the
Examiner finds that
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Application 12/312,415
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even though the thermoelectric module (30) includes a cover (80)
(see figs. 1 and 3) the module clearly communicates thermally
and fluidly with the surrounding air. Further, this is what is
considered “outside the appliance,” not that the warm side must
extend past all exterior surfaces. Additionally in response to the
allegation that the warm side is not outside the appliance because
there exists a cover, it is noted that one can clearly see from fig.
3 by examining the cross-sectional hash marks that the cover (80)
is indeed not part of the outermost wall (22) of the
appliance/container.
Ans. 8. The Examiner is correct that Doke’s teaching includes a “warm side
located outside of the appliance.” See Final Act. 3. Doke discloses that
“[m]odular thermoelectric assembly 30 preferably includes cover 80
attached to heat sink 40. . . . The air is exhausted from slots 84 at each end of
cover 80[.]” Doke, col. 5, ll. 33–47 (emphasis omitted). Thus, in Doke, the
warm side is located outside the appliance due to the warm air exhausted
outside of the appliance. See id. Accordingly, Appellants do not apprise us
of error.
Noting that “Doke is silent about the magnetic cooler,” Appellants
contend that “[t]he technical field of Doke is unrelated to that of Mohebbi
and the present invention.” App. Br. 10; see also Reply Br. 2–3. Based on
this contention, Appellants argue that:
there is no hint or motivation for a skilled person to search the
teaching of Doke for the purpose of modifying the appliance of
Mohebbi, in order to achieve the feature that the cold side of the
magnetic cooler is located in the interior of the appliance and its
warm side is located on the outside of the appliance.
Id.
This argument is foreclosed by KSR International Co. v. Teleflex Inc.,
550 U.S. 398 (2007), in which the Court rejected the rigid requirement of a
teaching or suggestion or motivation to combine known elements in order to
Appeal 2014-003851
Application 12/312,415
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show obviousness. KSR, 550 U.S. at 415. The Court noted that an
obviousness analysis “need not seek out precise teachings directed to the
specific subject 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.
Moreover, to the extent that Appellants are arguing that Doke is non-
analogous art, we note that “[t]wo separate tests define the scope of
analogous prior art: (1) whether the art is from the same field of endeavor,
regardless of the problem addressed and, (2) if the reference is not within the
field of the inventor’s endeavor, whether the reference still is reasonably
pertinent to the particular problem with which the inventor is involved.” In
re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004) (citing In re Deminski, 796
F.2d 436, 442 (Fed. Cir. 1986); In re Wood, 599 F.2d 1032, 1036 (CCPA
1979)).
The Examiner finds that “Doke[] teaches a planar heat pump (element
32) used to cool the interior volume of a container (element 20 – see figs. 1
and 3).” Ans. 6–7. Based on this finding, the Examiner concludes that
Doke solves “the same problem of cooling the interior of a container, as the
instant invention.” Id. at 7. In other words, the Examiner concludes that
Doke is reasonably pertinent to the particular problem with which the
inventors are involved. Appellants do not explain why Doke is not
reasonably pertinent to the problem with which the inventors are involved.
Thus, Appellants do not apprise us of error.
Appellants further argue that “even if the cited references were to be
combined as suggested in the Office Action, essential elements of the claims
would not be disclosed or suggested. Accordingly, the rejection does not
raise even a prima facie case for obviousness and should be withdrawn.”
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App. Br. 10. However, Appellants do not identify what essential elements
are missing from the proposed rejection. Accordingly, Appellants do not
apprise us of error.
For these reasons, we sustain the Examiner’s decision rejecting
independent claim 1, and claims 2–4, 6–9, 11–14, 19, and 20, which fall
therewith.
Claims 5, 10, and 15–18
Appellants argue that
Mohebbi does not disclose conduits or thermal insulation outside
of the appliance. . . . Mohebbi discloses the circulation of heat
transferrable fluid in/around base 22. However, base 22 is
entirely within the interior of the appliance 20, as can be seen
from Fig. 2. There is no disclosure or suggestion of any conduits
outside of the appliance.
Appeal Br. 12.
The only disclosure of Mohebbi regarding conduits is that “[t]he
cooling element 24 can circulate water, refrigerant, or any other heat
transferable fluid medium within, or near, the base 22 to cool the same.”
Mohebbi, para. 23; see also Final Act. 5. As this disclosure does not make
any reference to conduits outside the appliance, Appellants’ argument is
persuasive.
For this reason, we do not sustain the Examiner’s decision rejecting
claims 5, 10, and 15–18.

DECISION
The Examiner’s rejection of claims 1–4, 6–9, 11–14, 19, and 20 is
AFFIRMED.
The Examiner’s rejection of claims 5, 10, and 15–18 is REVERSED.
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Application 12/312,415
7
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)(1)(iv).

AFFIRMED-IN-PART