Ex Parte Wing

Patent Trial and Appeal Board

Jun 11, 2013

11412832 (P.T.A.B. Jun. 11, 2013)

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.
11/412,832 04/28/2006 Forrest F. Wing WIN004-108 8853
7590 06/11/2013
Whirlpool Patents Company - MD 0750
Suite 102
500 Renaissance Drive
St. Joseph, MI 49085
EXAMINER
ING, MATTHEW W
ART UNIT PAPER NUMBER
3637
MAIL DATE DELIVERY MODE
06/11/2013 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 FORREST F. WING
____________________

Appeal 2011-004101
Application 11/412,832
Technology Center 3600
____________________

Before BIBHU R. MOHANTY, MICHAEL W. KIM, and
PHILIP J. HOFFMANN, Administrative Patent Judges.

HOFFMANN, Administrative Patent Judge.

DECISION ON APPEAL
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Application 11/412,832

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STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from the final rejection of
claims 1-8 and 10-25.1 We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.
The rejected claims are directed to a refrigerator having a
repositionable rail system, as well as a corresponding method of using such a
rail system. Claims 1, 12, and 21 are independent claims.
EXEMPLARY CLAIM
Claim 1, reproduced below, is illustrative of the claimed subject
matter:
1. In a refrigerator comprising a cabinet
shell and a liner disposed in the cabinet shell, the
liner including opposing, fore-to-aft extending side
walls and a back wall defining, at least in part, a
food storage compartment, a rail system for
removably supporting side sliding shelves
comprising:
first and second horizontally spaced rails
positioned adjacent the back wall, each of the first
and second rails including a plurality of spaced-
apart apertures;
a crossbar having a first end and a second
end, with the first end being removably supported
in a select one of the plurality of apertures of the
first rail and the second end being removably
supported in a select one of the plurality of

1 Our decision will refer to Appellant’s Specification (“Spec.,” filed April
28, 2006), Appeal Brief (“App. Br.,” filed September 2, 2010), and Reply
Brief (“Reply Br.,” filed December 15, 2010), as well as the Examiner’s
Answer (“Ans.,” mailed November 19, 2010).

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apertures of the second rail, wherein each of the
plurality of apertures of the first and second rails is
defined by first and second slots extending along
intersecting axes, with the crossbar being
removably supported by each of the first and
second rails after being inserted into the first slot
and rotated into the second slot; and
a shelf having at least one hook, said shelf
being removably hung upon the crossbar by the
hook and extending from the crossbar in
cantilevered fashion.

THE REJECTIONS
The Examiner rejects the claims as follows:
Claims 1-6, 10-15, and 18-24 under 35 U.S.C. § 103(a) as
unpatentable over Dasher (US 5,403,083, iss. Apr. 4, 1995) in view of
Travis (US 4,444,323, iss. Apr. 24, 1984); and
Claims 7, 8, 16, 17, and 25 under 35 U.S.C. § 103(a) as unpatentable
over Dasher in view of Travis, and further in view of Sheridan (US
4,809,947, iss. Mar. 7, 1989).
ANALYSIS
Independent claim 1 is rejected as obvious over a combination of
Dasher and Travis. Appellant argues the combination of references does not
teach or suggest the limitation of “the crossbar being removably supported
by each of the first and second rails after being inserted into the first slot and
rotated into the second slot” as recited in the independent claim (App. Br.
12, Reply. Br. 4-5). Notwithstanding the Examiner’s statements to the
contrary, we agree with Appellant. Functional claim language that is not
limited to a specific structure covers all devices that are capable of
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performing the recited function, and therefore, if the prior art discloses a
device that can inherently perform the claimed function, a rejection under 35
U.S.C. §§ 102 or 103 may be appropriate. In re Schreiber, 128 F.3d 1473,
1478 (Fed. Cir. 1997). In this case, however, we disagree with the
Examiner’s statement that “replacing rails 32, 34, [and] 36 of Dasher with
rails 12 [of] Travis[,] & [replacing] ends 50, 54 of Dasher with ends 28, 32,
[and] 42 of Travis” would result in a crossbar capable of being removably
supported by each of first and second rails after being inserted into a first
slot and rotated into a second slot, as required by claim 1. Ans. 4.
Specifically, we find , with reference to Travis, that attachment of brackets
16 (which includes elements 28, 32, and 42) to rails 12 requires insertion of
four pins 42 for each bracket 16 into four corresponding slots 36 in each rail
12. Disposing multiple pins 42 in slots 36 on both sides of each bracket 16
prevents the brackets from rotating relative to the rails. For these reasons,
we do not sustain the Examiner’s rejection of claim 1 under 35 U.S.C. §
103(a) as unpatentable over Dasher in view of Travis.
Inasmuch as we do not sustain the rejection of independent claim 1,
we also do not sustain the rejections of claims 2-8, 10, and 11, which depend
from claim 1.
Independent claim 12 is rejected as obvious over Dasher in view of
Travis. Appellant first argues “the Examiner has failed to provide an
apparent reason for one of ordinary skill in the art to combine the prior art”
(App. Br. 16). We are not persuaded by this argument. The Examiner states
it would be obvious to combine Dasher and Travis “to provide a more
stable/secure rail connection, and since the results of substituting one
known, equivalent, alternative mounting means for another would have been
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predictable; thereby providing the structure substantially as claimed” (Ans.
4). We agree with the Examiner, noting that the Supreme Court emphasized
“the need for caution in granting a patent based on the combination of
elements found in the prior art,” and discussed circumstances in which a
patent might be determined to be obvious without an explicit application of
the teaching, suggestion, motivation test. KSR Int’l Co. v. Teleflex, Inc., 550
U.S. 398, 415-16 (2007). In particular, the Supreme Court reaffirmed that
“[t]he combination of familiar elements according to known methods is
likely to be obvious when it does no more than yield predictable results.” Id.
at 416. Here, the first and second rails taught by Travis, as well as the
crossbar, shelf, and hook taught by Dasher, are all familiar elements, and the
combination proposed by the Examiner yields predictable results.
Appellant further argues that the Examiner
has failed to provide a combination of references that teach first
and second rails each including a mounting portion, a crossbar
support portion, a bent portion interconnecting the mounting
portion and the crossbar support portion and a plurality of
apertures extending from the bent portion to the crossbar
support portion
(App. Br. 16). We note, however, that the Examiner identifies these
elements in the combination of Dasher and Travis on page 5 of the
Examiner’s Answer. Appellant has not provided persuasive evidence to
establish why the identified portions of Travis do not teach the claimed
mounting portion, crossbar support portion, or bent portion. Thus, we are
not persuaded by this argument.
Finally, Appellant argues that the Examiner “has failed to point to a
shelf hook wherein the shelf is removably attached to the crossbar by the
hook” (App. Br. 16). We note, however, that the Examiner identifies hook
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68 of Dasher (Ans. 11-12) as teaching the claimed shelf hook. Therefore,
we are not persuaded by this argument.
In view of the above, we sustain the Examiner’s rejection of claim 12
under 35 U.S.C. § 103(a) as unpatentable over Dasher in view of Travis.
We also sustain the rejections of claims 13-20, which depend from
independent claim 12, as we are not persuaded of error by any of
Appellant’s arguments. With respect to claims 14 and 15, we agree with the
Examiner and find the combination of Dasher and Travis teaches the
claimed U-shaped cross-section for the rail (App. Br. 18). Regarding claims
16 and 17, we agree with the Examiner and find that the combination of
references teaches the claimed first and second mounting holes aligned with
one another (App. Br. 24-25). With respect to claim 20, we agree with the
Examiner and find that heads 44 of pins 42 of Travis teach the claimed notch
(App. Br. 18-19).
Independent claim 21 is rejected as obvious over Dasher in view of
Travis. Appellant argues the combination of references does not teach or
suggest the limitation “rotating the crossbar within the first and second
apertures such that the crossbar engages support structure on the first and
second rails and is retained within the first and second apertures in a fixed,
angled position” (App. Br. 20-21). We agree with Appellant for reasons
similar to those we discuss above with respect to independent claim 1. Thus,
we do not sustain the Examiner’s rejection of claim 21 under 35 U.S.C.
§ 103(a) as unpatentable over Dasher in view of Travis.
Inasmuch as we do not sustain the rejection of independent claim 21,
we also do not sustain the rejections of claims 22-25, which depend from
claim 21.
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DECISION
The Examiner’s rejection of claims 1-8, 10, 11, and 21-25 is
REVERSED; and
The Examiner’s rejection of claims 12-20 is 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)(1)(iv).
AFFIRMED-IN-PART

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