Ex Parte 7430873 et al

Patent Trial and Appeal Board

Mar 13, 2013

95001563 (P.T.A.B. Mar. 13, 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.
95/001,563 03/03/2011 7430873 19688-0050RX4 1837
26171 7590 03/13/2013
FISH & RICHARDSON P.C. (DC)
P.O. BOX 1022
MINNEAPOLIS, MN 55440-1022
EXAMINER
ENGLE, PATRICIA LYNN
ART UNIT PAPER NUMBER
3993
MAIL DATE DELIVERY MODE
03/13/2013 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
____________________

WHIRLPOOL CORPORATION
Requester, Cross-Appellant, Respondent

v.

LG ELECTRONICS, INC.
Patent Owner, Appellant, Cross-Respondent
____________________

Appeal 2013-003110
Reexamination Control No. 95/001,563
Patent 7,430,873 B2
Technology Center 3900
____________________

Before JOSIAH C. COCKS, WILLIAM V. SAINDON, and
SCOTT E. KAMHOLZ, Administrative Patent Judges.

KAMHOLZ, Administrative Patent Judge.

DECISION ON APPEAL

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Reexamination Control 95/001,563
Patent 7,430,873 B2

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STATEMENT OF THE CASE
This proceeding arose from a request by Respondent Whirlpool
Corporation for an inter partes reexamination of U. S. Patent 7,430,873 B2
(hereinafter, the ’873 patent), entitled “Refrigerator,” and issued to LG
Electronics, Inc. (Oct. 7, 2008).
1

Claims 1-28 are the subject of the present appeal and cross-appeal.
Original patent claims 1-12, as well as new claims 13-28 presented during
the reexamination, have all been rejected. RAN
2
PTOL-2066.
Appellant, patent owner LG Electronics, Inc., appeals under 35 U.S.C.
§§ 134(b) and 315(a) (2002) from a decision of the primary examiner finally
rejecting claims 1-28 as discussed below under the heading “APPEAL OF
PATENT OWNER.” We have jurisdiction under 35 U.S.C. §§ 134(b) and

1
The ’873 patent was also the subject of a co-pending litigation styled LG
Electronics U.S.A., Inc., et al. v. Whirlpool Corp., et al., no. 1:10-cv-00311-
GMS (D. Del.). We understand that this litigation was dismissed with
prejudice on Oct. 3, 2012. See “Joint Stipulation and Order of Dismissal
With Prejudice” (paper no. 147). We will therefore not consider any
findings, conclusions, or judgments from that litigation. We find no
indication in the record of the present proceeding that Patent Owner brought
this result of the litigation to the attention of the Office or the Board. Patent
Owner is reminded of its continuing obligation under 37 C.F.R. § 1.985(a) to
notify the Office of concurrent proceedings, including litigation “and the
results of such proceedings” (emphasis added).

2
While we have considered the entire appeal record, we refer to and address
only specific portions of the record directly relevant to the disposition of the
appeal and cross-appeal, abbreviating the documents therein as follows:
Right of Appeal Notice: RAN
Appeal Brief of Patent Owner: ABPO
Cross-Appeal Brief of Requester: CABR
Respondent Brief of Requester in response to ABPO: RBR
Non-Final Office Action: NFOA
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315(a).
Cross-Appellant, requester Whirlpool Corporation, appeals under
§§ 134(c) and 315(b) (2002) from a final decision of the primary examiner
not to enter certain proposed rejections of claims 1-12 as discussed below
under the heading “CROSS-APPEAL OF REQUESTER.” We have
jurisdiction under 35 U.S.C. §§ 134(c) and 315(b).
We REVERSE with respect to the Appeal of Patent Owner. We
AFFIRM with respect to the Cross-Appeal of Requester. We limit our
discussion of the issues argued to those necessary for the disposition of the
appeal and cross-appeal.
THE CLAIMED SUBJECT MATTER
The ’873 patent describes refrigerators having ice-making structures
(col. 1, ll. 5-10). Claim 1 on appeal is illustrative and reads as follows:
1. A refrigerator comprising:
a refrigerating compartment and a freezing
compartment being configured to maintain operating
temperatures that differ, with the freezing
compartment having an operating temperature that is
lower than an operating temperature of the
refrigerating compartment;
an ice compartment located within the
refrigerating compartment and defined by insulating
walls, the insulating walls being configured to
facilitate maintenance of an operating temperature of
the ice compartment that is lower than the operating
temperature of the refrigerating compartment;
an ice maker located within the ice
compartment and configured to freeze liquid water
into ice;
a first refrigerator door configured to open and
close a first portion of the refrigerating
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compartment, the first refrigerator door covering at
least a portion of the ice compartment when the first
refrigerator door is in a closed position and exposing
the ice compartment when the first refrigerator door
is in an open position;
a second refrigerator door configured to open
and close a second portion of the refrigerating
compartment, the second portion of the refrigerating
compartment including a portion of the refrigerating
compartment other than the portion covered by the
first refrigerator door when the first refrigerator door
is in the closed position;
a dispenser, at least a portion of which being
located on the first refrigerator door, configured to
dispense ice made by the ice maker;
an ice storage bin located within the ice
compartment and configured to store ice made by
the ice maker;
an outlet that is provided in at least one of the
insulating walls that define the ice compartment and
that is configured to enable passage of ice from the
ice storage bin through the at least one of the
insulating walls; and
an ice transporting mechanism located within
the ice compartment and configured to promote
movement of ice stored in the ice storage bin
through the outlet and along a path from the ice
storage bin to the dispenser,
wherein the first refrigerator door, the second
refrigerator door, and the ice compartment have a
relative orientation that enables removal of at least a
portion of the ice compartment from the
refrigerating compartment when the first refrigerator
door is in the open position and the second
refrigerator door is in a closed position, the portion
of the ice compartment including at least the ice
storage bin and the at least one of the insulating
walls in which the outlet is provided.
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REFERENCES

The Examiner relies on the following prior art references:
Grimes
Swaneck
Fisher
Cur
Jackovin
Najewicz
Yasuzo
US 3,146,606
US 3,466,804
US 5,272,888
US 5,375,432
US 6,019,447
US 6,735,959 B1
JP 2000-9372A

Sep. 1, 1964
Sep. 16, 1969
Dec. 28, 1993
Dec. 27, 1994
Feb. 1, 2000
May 18, 2004
Jan. 14, 2000

OTHER EVIDENCE
Declaration of Norman L. Beck (“Beck Decl.”) (submitted by Appellant).

APPEAL OF PATENT OWNER
Examiner’s Rejections
Patent Owner seeks our review of the following rejections under
35 U.S.C. § 103(a) for obviousness set forth by the Examiner in the Right of
Appeal Notice, which was incorporated by reference into the Examiner’s
Answer:
1. Claims 1-12, 14, and 15 over Yasuzo and Fisher. RAN 7.3
2. Claims 13 and 19-21 over Yasuzo, Fisher and Swaneck. RAN 12.
3. Claims 16-18 and 22 over Yasuzo, Fisher, and Jackovin.
RAN 15.
4. Claims 23-28 over Yasuzo, Fisher, and Grimes. RAN 19.

3
This rejection addresses claims 14 and 15 at RAN 11, though the heading
for this rejection does not list them.
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5. Claims 1-4, 6-14, and 19-21 over Cur, Fisher, and Swaneck.
RAN 22.
4

6. Claims 5, 15-18, and 22 over Cur, Fisher, Swaneck, and Jackovin.
RAN 30, 37.
7. Claims 23-28 over Cur, Fisher, Swaneck, and Grimes. RAN 34.
Analysis
We focus our analysis on the rejection of claim 1 over Yasuzo and
Fisher. The Examiner found that Yasuzo discloses all elements of claim 1 in
the claimed arrangement, except as follows:
Yasuzo is silent as to an outlet that is provided in at least one of
the insulating walls that define the ice compartment and that is
configured to enable passage of ice from the ice storage bin
through the at least one of the insulating walls; and an ice
transporting mechanism located within the ice compartment and
configured to promote movement of ice stored in the ice storage
bin through the outlet and along a path from the ice storage bin
to the dispenser, wherein the first refrigerator door, the second
refrigerator door, and the ice compartment have a relative
orientation that enables removal of at least a portion of the ice
compartment from the refrigerating compartment when the first
refrigerator door is in the open position and the second
refrigerator door is in a closed position, the portion of the ice
compartment including at least the ice storage bin and the at
least one of the insulating walls in which the outlet is provided.
RAN 8. The Examiner further found that Fisher discloses these limitations.
Id. at 8-9. In particular, the Examiner found that Fisher’s platform
assembly 58, through which is defined chute 72, meets the “at least one of

4
This rejection addresses claim 14 at RAN 29, though the heading for this
rejection does not list it.

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the insulating walls in which the outlet is provided,” id. at 8, and “Fisher
discloses that the ice compartment is detachable to allow for mounting the
ice compartment at different locations depending on the arrangement of the
refrigerator (Fisher, col. 5, lines 62-68),”
5
id. at 9. Thus, the Examiner
relies on Fisher’s teaching that platform 58 can be mounted in various
locations as a disclosure that the “relative orientation of the ice compartment
enables removal of … the at least one of the insulating walls in which the
outlet is provided.”
6

Appellant argues that Fisher’s platform 58 is not removable because it
is disclosed as being “secured” by “fasteners.” ABPO 10 (citing Beck Decl.
paras. 11-12). Appellant refers to Fisher, col. 5, ll. 2-6 in support of this
argument.
7

Respondent argues that Fisher is relied upon for disclosing “a
removable wall with an outlet that facilitates passage of ice to the dispenser”
and that Appellant’s argument “points to nothing in Fisher that specifies

5
Fisher col. 5, ll. 62-68 reads: “As is apparent, the platform 58 could also be
used for shelf mounting the container assembly 30 on any shelf in freezer
compartment of any known form. Similarly, the support wall 44 can be used
for mounting a conventional ice making apparatus 28 to a right side of a
freezer compartment of any known form provided with exterior door service
on the right side.”
6
The parties and the Examiner appear to assume that the claim limitation
“that enables removal of … the at least one of the insulating walls in which
the outlet is provided” is properly construed as requiring that the insulating
wall be removable. We will adopt this construction for purposes of the
present appeal and cross-appeal.
7
Fisher col. 5, ll. 2-6 reads: “[A]n auger motor bracket 88 … is secured to
the rear wall 42 using fasteners 90 and to the platform 58 using fasteners 92,
see FIG. 3. Thus, the bracket 88 secures the platform 58, and thus also the
support wall 44, in the freezer compartment 16.”
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non-detachably securing or non-detachable fasteners.” RBR 2 (some
emphases omitted). Respondent further argues that a person having ordinary
skill in the art would have understood that “conventional fasteners may be
used [in Fisher], which would encompass those fasteners that allow for
unfastening, thereby allowing for removal.” Id. Respondent cites Fisher’s
Fig. 2 as “depict[ing] the components removed,” characterizes Fisher’s
disclosure as a “teaching of removable installation with fasteners,” and
argues that a person having ordinary skill in the art would have been
“motivated to use unfastenable fasteners in view of Fisher’s teachings.” Id.
at 2-3.
The Examiner argues in response to Appellant that “the teaching of
Fisher of being removable with fasteners is an equivalent teaching as
disclosed in the ’873 patent” because the ’873 patent “does not indicate that
the ice-making compartment is removable once the manufacturing is
completed and delivered to the user.” RAN 39. The Examiner also argues
that Fisher’s ice storage bin 74 and front insulating wall 80 must be
removable, otherwise Fisher would not have needed to include lip 100 and
post 96 on ice storage bin 74 to prevent movement of the bin during auger
82 operation. Id. at 40-41.
We agree with Appellant that Fisher does not disclose that
platform 58 is removable and, consequently (in the words of Respondent) “a
removable wall with an outlet that facilitates passage of ice to the
dispenser.” The Examiner relied on Fisher for the teaching that “the ice
compartment is detachable” (see RAN 9), but a preponderance of evidence
of record does not support this interpretation. Fisher does not describe that
platform 58 is movable, removable, detachably installed, or anything of the
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kind. The most that can be said of Fisher’s disclosure that platform 58 may
be installed in various places in the freezer compartment is that it is not
inconsistent with removability. That is not enough to show that Fisher
discloses removability. Cf. Rowe v. Dror, 112 F.3d 473, 480 (Fed. Cir.
1997) (finding no anticipation where the reference merely did “not explicitly
describe anything inconsistent” with the claim).
Fisher’s disclosure that platform 58 is “secured” by “fasteners”
similarly does not amount to a disclosure that the platform is removably
secured by unfastenable fasteners. Respondent offers little evidence, beyond
Fisher itself, to support its contention or to refute Mr. Beck’s declaration
evidence. The term “secured” in Fisher’s context means simply that one
object is attached firmly to another; it implies nothing about whether the
object is secured in a removable manner. Again, while Fisher might not be
inconsistent with removability, it fails to disclose expressly that platform 58
is removable; Fisher therefore does not disclose what it is relied upon for
disclosing.
Respondent’s argument that Fisher’s Fig. 2 shows the platform
removed fails to take into account the fact that Fig. 2 is an “exploded” view
of Fisher’s ice dispensing system. Fisher, col. 3, ll. 39-40. Exploded views
are used simply “to show the relationship or order of assembly” of the
constituent parts. 37 C.F.R. § 1.84(h)(1). They do not by themselves
indicate or imply that the constituent parts are removable.
The Examiner’s responsive arguments similarly do not persuade us of
the propriety of the rejections. The Examiner cites no authority for the
proposition that Appellant’s sparse disclosure concerning removability
justifies embellishing the supposedly sparse disclosure of the prior art. The
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Examiner is interpreting the prior art through the lens of Appellant’s
disclosure; this amounts to little more than impermissible hindsight.
The Examiner’s observations concerning removability of “the front
insulating wall (80)” (RAN 40-41) are inapposite, because it was
platform 58, not “the front insulating wall (80),” that was relied upon to
meet the “at least one of the insulating walls in which the outlet is provided.”
See RAN 8.
8

For these reasons, we determine that a preponderance of evidence of
record does not establish that Fisher discloses a removable insulating wall
defining the ice compartment and in which an outlet is defined. Because
each appealed rejection depends on Fisher for this disclosure, we reverse
each of them.
CROSS-APPEAL OF REQUESTER
Examiner’s Rejections
Requester seeks our review of the Examiner’s final decision not to
adopt the following rejections under 35 U.S.C. § 103(a) for obviousness, as
set forth by the Examiner in the RAN:
1. Claims 1-4 and 6-12 over Najewicz, Fisher and Swaneck.
RAN 38.
2. Claim 5 over Najewicz, Fisher, Swaneck, and Jackovin. RAN 38.

8
We also fail to understand on what basis the Examiner finds that Fisher’s
element 80 is an insulating wall of the ice compartment. Element 80 is
merely described as a “discharge opening” of housing 78. Fisher, col. 4,
ll. 57-60.
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Analysis
Requester’s argument that the above-identified grounds of rejection
should have been maintained rests entirely on attacking the sufficiency of
Patent Owner’s efforts to establish invention prior to the effective date of
Najewicz. CABR 4-9. Those rejections, however, both depend on Fisher
for disclosure of a removable insulating wall defining the ice compartment
and in which an outlet is defined. See NFOA 22-25. A preponderance of
the evidence of record does not support this finding, as discussed above. We
therefore affirm the Examiner’s decision not to adopt these rejections
without reaching the question of whether Patent Owner established invention
prior to Najewicz.

DECISION
The Examiner’s rejections of claims 1-28 are REVERSED. The
Examiner’s decision not to reject claims 1-12 for obviousness over Najewicz
in combination with other references is AFFIRMED.

Requests for extensions of time in this inter partes reexamination
proceeding are governed by 37 C.F.R. §§ 1.956, 41.77(g), and 41.79(e).

AFFIRMED-IN-PART
ak

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Patent Owner:

Fish & Richardson, PC (DC)
P.O. Box 1022
Minneapolis, MN 55440-1022

Third Party Requester:

Michael A. Hawes
One Shell Plaza
910 Louisiana Street
Houston, TX 77002