Ex Parte Wiest et alDownload PDFPatent Trial and Appeal BoardMay 17, 201612312415 (P.T.A.B. May. 17, 2016) Copy Citation 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 Appeal 2014-003851 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 Appeal 2014-003851 Application 12/312,415 4 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 5 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.” Appeal 2014-003851 Application 12/312,415 6 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. Appeal 2014-003851 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 Copy with citationCopy as parenthetical citation