Ex Parte Wing

Patent Trial and Appeal Board

Jan 30, 2013

11033531 (P.T.A.B. Jan. 30, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte FORREST F. WING
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Appeal 2010-011100
Application 11/033,531
Technology Center 3600
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Before: STEVEN D.A. MCCARTHY, BRETT C. MARTIN, and
PATRICK R. SCANLON, Administrative Patent Judges.

MARTIN, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2010-011100
Application 11/033,531
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STATEMENT OF CASE
Forrest F. Wing (Appellant) appeals under 35 U.S.C. § 134 from the
Examiner’s rejection of claims 1-18. We have jurisdiction under 35 U.S.C.
§ 6(b).
We AFFIRM-IN-PART.

THE INVENTION
Appellant’s invention is directed generally “to a mounting
arrangement for a handle on a refrigerator.” Spec. 1, l. 6. Claim 1,
reproduced below, is illustrative of the claimed subject matter:
1. A refrigerator comprising:
a cabinet defining an interior compartment;
a door pivotally mounted to the cabinet for selectively
accessing the compartment, said door having a first side edge
pivotally attached to the cabinet and a second side edge defined
by an upper inner edge portion and a lower inner edge portion
which are offset by a lateral portion, said door further having
front and back sides, as well as an opening between the front
and back sides at the lateral portion; and
a handle assembly for pivoting the door relative to the
cabinet, said handle assembly including:
a first attachment member fixed to the door adjacent one
of the upper and lower inner edge portions;
a handle member including first and second end portions
separated by an intermediate portion, said second end portion
including an in-turned portion having a projection extending
substantially perpendicular therefrom, said handle member
being mounted to the front side of the door with the first end
portion of the handle member being connected to the first
attachment member and the projection of the in-turned portion
being received within the opening in the lateral portion of the
door.

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Application 11/033,531
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REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Weidner
Donaghy
Pohl
US 4,922,576
US 5,797,164
US 6,629,339 B2
May 8, 1990
Aug. 25, 1998
Oct. 7, 2003

THE REJECTIONS ON APPEAL
The Examiner made the following rejections:
Claims 1 and 6-15 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Pohl and Donaghy. Ans. 3.
Claims 2-5 and 16-18 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Pohl, Donaghy, and Weidner. Ans. 8.

ANALYSIS
Obviousness over Pohl and Donaghy
Claims 1, 6, 7, 11, and 15
Appellant argues claims 1, 6, 7, and 11 as a group. App. Br. 8-13.
Further, although Appellant submits a separate section containing argument
purportedly relating to claim 15, this argument restates the same argument
made with respect to claims 1, 6, 7, and 11 and presents no new argument
specific to the method limitations of claim 15. App. Br. 15-17. Appellant
also argues claims 1, 6, 7, 11, and 15 in one section in the Reply Brief.
Reply Br. 2-4. As such, we treat claims 1, 6, 7, 11, and 15 as argued as a
single group and choose claim 1 as representative of this group. See
37 C.F.R. § 41.37(c)(1)(vii) (2011).
As an initial matter, Appellant argues that “[t]he Examiner interprets
end portion 66 of Pohl et al. as corresponding to the claimed ‘projection’
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Application 11/033,531
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extending from an in-turned portion” (citing p. 3 of the Office Action),
which is in alleged contradiction to the Examiner’s later statement that Pohl
“does not disclose an in-turned portion being received between the front and
back sides at the lateral portion of the door, or an in-turned portion having a
projection extending substantially perpendicular therefrom.” App. Br. 9; see
also Reply Br. 2-3. This is likely due to what we see as a minor error in the
rejection where the Examiner states “the second end portion including an in-
turned potion having a projection (at 66) extending therefrom.” Ans. 4. As
we understand the Examiner’s rejection, the Examiner finds that Pohl
teaches an in-turned portion of the handle (at 66), but that the in-turned
portion does not extend as claimed, nor does it include the projection. It
appears that the Examiner merely placed the parenthetical notation to
element 66 in the incorrect location, but it is clear to us from the remainder
of the rejection that the Examiner finds an in-turned portion in Pohl, but
looks to Donaghy to supply the remainder of the claimed structure, including
the projection.
Appellant next asserts that the Examiner’s finding that Donaghy’s
screws amount to the claimed projections (Ans. 3-4) is improper because
“Donaghy shows no projection … with the projection being part of the
second end portion of the handle member” and that the screws “are separate
elements.” App. Br. 10. Although it is correct that Donaghy’s screws are
separate elements, we see no limitation in claim 1 that requires the
projection to be integral to the handle. As asserted by the Examiner, we
agree that the screws project perpendicularly from mounting bracket 36 as
claimed and the fact that they are separate is not precluded by the claims.
Appellant next argues that “Donaghy does not actually teach a ‘lateral
portion of the door’ as claimed, but instead simply teaches a standard door
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having a handle mounted to a top surface of the door.” Id. While it is true
that Donaghy teaches a standard door, we do not find this argument
persuasive because the Examiner uses Pohl for the specific configuration of
the door as claimed, with which Appellant does not argue. Whereas a pair
of normal side-by-side doors without the claimed “lateral portions” requires
two side-by-side handles, the presently claimed door configuration allows
the handles to be placed in-line as shown both in Pohl and in Appellant’s
figures. This is also the same kind of handle configuration found in the
over-under door configuration of Donaghy and thus the portion of the door
where the in-turned portion of Donaghy mounts is, in fact, a lateral portion.
As such, we agree with the Examiner that one of ordinary skill in the art
would understand the mounting of such in-line handles in all three cases to
be equivalent as it is the capability to utilize in-line handles, not the entirety
of the claimed door construction, that matters with respect to the in-turned
portion of the handle relative to the “lateral portion of the door.”
Appellant next attacks the Examiner’s motivation to combine the
references as “arbitrary and does not find any support in the prior art
supplied by the Examiner.” App. Br. 10. Appellant goes on to state that
“[a]t most, the prior art teaches that it is desirable to utilize but hide
mounting screws, which Pohl et al. already does by having the screws
inserted from behind the front panel of the door.” App. Br. 10-11. What the
Examiner actually states, however, is that Donaghy’s mounting allows “that
the in-turned portion and/or securement of the handle is not required on the
face of the door, thus aiding the appearance of the door.” Ans. 5. Albeit
hidden from behind, Pohl requires that the in-turned portion be mounted to
the door face, whereas the Examiner correctly points out that the mounting
of the in-turned portion in Donaghy is removed entirely from the face and is
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moved to the top at the “lateral portion.” This is not merely hiding the
screws, but moving them from the face entirely, which we accept as an
adequate reasoning with a rational underpinning for the Examiner’s
proposed combination of Donaghy with Pohl.1
Lastly, Appellant argues that the combination of Donaghy and Pohl is
improper because it would result in the handle assembly being inoperable.
See App. Br. 12. Appellant asserts that second end 66 “would scrape the
front of the door until it abutted cap 140, never reaching the upper lateral
portion of the door for final securement.” Id. This statement first assumes
that cap 140 would be in place before the handle is secured as well as that
such a cap is even necessary, and Appellant has not established that this
would necessarily be the case. Second, given that the Examiner has utilized
the handle and its equivalent “lateral portion” in Donaghy for the associated
mounting area, it is not clear that there even would be a cap as none is
clearly shown in Donaghy, nor has Appellant clearly shown that even if
there were one that the handle would be incapable of clearing it for
mounting. Lastly, while the alleged scraping might be considered a
disadvantage, if it indeed were to occur, such a disadvantage can merely be
weighed versus the other advantage(s) of the proposed combination.
Regardless, we do not agree that the alleged scraping rises to the level of
making the handle configuration inoperable as asserted by Appellant.
Accordingly, because we do not agree that the Examiner’s proposed
combination would be inoperable, we do not find this argument persuasive.

1 Appellant goes on to further attack the Examiner’s additional statements
regarding motivation, but we do not address these further because we find
the Examiner’s statement regarding the desirability of moving the screws
from the face to the top of the door to be sufficient. See App. Br. 11-12; see
also Reply Br. 3-4.
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For the reasons stated above, we do not find Appellant’s arguments
persuasive and sustain the Examiner’s rejection of claims 1, 6, 7, 11, and 15
as obvious over Pohl and Donaghy.
Claims 8 and 9
Appellant asserts that the “mounting section 82 is not a clip member”
because there allegedly “is no clipping action associated with mounting
section 82.” App. Br. 13-14; see also Reply Br. 4. While Pohl does not
specifically refer to this as a clip, we agree with the Examiner that “there is
nothing in the claim to preclude such a reading.” Ans. 13. Further,
Appellant does not point to any portion of the Specification providing a
specialized definition of the term “clip member” that would exclude Pohl’s
mounting section 82. Given the Examiner’s stated broad, and reasonable,
interpretation of the term “clip member” we do not find Appellant’s
argument persuasive. Accordingly, we sustain the rejection of claims 8 and
9.
Claims 10 and 12-14
Although Appellant provides separate argument sections for claims
10, 12 &13, and 14, these arguments essentially repeat the argument with
respect to claims 8 and 9 that the elements put forth by the Examiner are not
“clip members.” For the same reasons stated above with respect to claims 8
and 9, we do not find this argument persuasive and as such we sustain the
Examiner’s rejection of claims 10 and 12-14.
Obviousness over Pohl, Donaghy, and Weidner
With respect to claim 2, the Examiner finds that Weidner teaches a
cap 27 that supposedly meets the limitations recited in claim 2. Ans. 8-9.
The Examiner does not provide much detail in the initial rejection as to the
limitations of claim 2, but in the Response to Arguments the Examiner
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asserts that “cap (27) [is] between a handle (26) and an opening in a door
(13).” Ans. 13. The specific language at issue in claim 2 is that the cap is
“positioned within the opening of the door.” The “opening” here refers to
the specific opening from claim 1, which is “in the lateral portion of the
door” and receives the “projection.” As Appellant states, however, “there
simply is no opening in Weidner et al. [that] receives a projection extending
from an in-turned portion of a handle assembly, let alone a cap positioned
within the opening.” App. Br. 18 (emphasis added). We agree with
Appellant that “[e]ven if part 27 [were] viewed as a separate cap, it would
not be received in any sort of opening,” let alone located “within the
opening” in the “lateral portion of the door” as claimed. App Br. 18.
Accordingly, we do not sustain the rejection of claim 2 as obvious over Pohl,
Donaghy, and Weidner.
Claims 3-5 each depend from claim 2 and as such we do not sustain
these rejections for the same reasons as stated above with respect to claim 2.
Each of claims 16 and 17, which depend from claim 15, contains a
similar limitation to claim 2 regarding a “cap” in “the opening” that is
“formed in the lateral portion” of the door. As such, we do not sustain the
rejection of claims 16 and 17 for the same reasons as stated above with
respect to claim 2.
The Examiner rejects claim 18 purportedly for the same reason as
claim 5 and finds “said in-turned portion of the handle member being
received between the additional wall portions (claims 5 and 18).” Ans. 8.
Claim 18, however, does not contain the same or even similar language to
that of claim 5. We agree with Appellant that the Examiner fails to
“specifically address the limitations of claim 18.” App. Br. 23.
Accordingly, we do not sustain the rejection of claim 18.
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DECISION
For the above reasons, we REVERSE the Examiner’s decision to
reject claims 2-5 and 16-18 and AFFIRM the Examiner’s decision to reject
claims 1 and 6-15.
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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