Ex Parte Bak et al

Patent Trial and Appeal Board

Jun 21, 2017

13286249 (P.T.A.B. Jun. 21, 2017)

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.
13/286,249 11/01/2011 Michael Bak 2010P03855US 8340
46726 7590 06/23/2017
RS»H Home. Ann1ianrp.s Pomoratinn
EXAMINER
100 Bosch Boulevard
NEW BERN, NC 28562
GALLEGO, ANDRES F
ART UNIT PAPER NUMBER
3637
NOTIFICATION DATE DELIVERY MODE
06/23/2017 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
MBX-NBN-IntelProp@bshg.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MICHAEL BAK, MARCUS HOPFL, JURGEN KRATZER, and
UDO MAIER
Appeal 2015-006136
Application 13/2 86,2491
Technology Center 3600
Before JOHN C. KERINS, STEFAN STAICOVICI, and
ANTHONY KNIGHT, Administrative Patent Judges.
STAICOVICI, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Michael Bak et al. (Appellants) appeal under 35 U.S.C. § 134(a) from
the Examiner’s decision rejecting claims 1—34. We have jurisdiction over
this appeal under 35 U.S.C. § 6(b).
SUMMARY OF DECISION
We REVERSE and enter a NEW GROUND of REJECTION pursuant
to our authority under 37 C.F.R. 41.50(b).
1 According to Appellants, BSH Bosch und Siemens Hausgerate GmbH is
the real party in interest. Appeal Br. 3 (filed Nov. 25, 2014).
Appeal 2015-006136
Application 13/286,249
INVENTION
Appellants’ invention relates to a household appliance having a
packing element located on a side face of the household appliance and at
least one load-bearing structural part located in the uncovered region of the
side face. Spec. 1.
Claims 1,21, and 34 are independent. Claim 1 is illustrative of the
claimed invention and reads as follows:
1. A household appliance, comprising:
at least one packing element disposed on a side face of
the household appliance, wherein the packing element is
adapted to prevent damage to the household appliance due to
forces occurring during at least one of storage and
transportation of the household appliance; and
at least one load-bearing structural part,
wherein the packing element has at least one force
transfer region, which has a force action surface in direct
contact with the load-bearing structural part, and
the household appliance does not have housing outer
walls where the packing element is disposed.
REJECTIONS
The following rejections are before us for review:
I. The Examiner rejected claims 1—16, 19-28, and 31—34 under 35
U.S.C. § 102(b) as being anticipated by Becker (US 5,549,760,
iss. Aug. 27, 1996).
II. The Examiner rejected claims 1, 18, 21, and 30 under 35 U.S.C.
§ 102(b) as being anticipated by Flowers (US 6,764,147 B2, iss.
July 20, 2004).
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III. The Examiner rejected claims 21 and 32 under 35 U.S.C.
§ 102(b) as being anticipated by Muyskens (US 4,811,840, iss.
Mar. 14, 1989).
IV. The Examiner rejected claims 1 and 20 under 35 U.S.C.
§ 103(a) as being unpatentable over Muyskens and Laible et al.
(US 2010/0045150 Al, pub. Feb. 25, 2010, hereafter “Laible”).
V. The Examiner rejected claims 16 and 17 under 35 U.S.C.
§ 103(a) as being unpatentable over Muyskens, Laible, and
Blersch et al. (US 2010/0109497 Al, pub. May 6, 2010,
hereafter “Blersch”).
VI. The Examiner rejected claim 29 under 35 U.S.C. § 103(a) as
being unpatentable over Muyskens and Blersch.
ANALYSIS
Rejection I
Each of independent claims 1,21, and 34, requires inter alia, a
packing element that “is adapted to prevent damage to the household
appliance due to forces occurring during at least one of storage and
transportation of the household appliance.” Appeal Br. 12, 15, 17 (Claims
App.).
The Examiner finds that Becker discloses, inter alia, “a packing
element (sheet 32). . . and a load bearing structural part [10],” wherein
insulating sheet 32 “is adapted to prevent damage to the household appliance
due to forces occurring during at least one of storage and transportation of
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the household appliance.” Non-Final Act. 2 (citing Becker, col. 2,11. 60—64,
Fig. 3) (transmitted Sept. 29, 2014).
Appellants argue that “there is no disclosure in Becker that the sheet
of insulation is adapted to prevent damage to the household appliance due to
forces occurring during at least one of storage and transportation.” Appeal
Br. 9 (emphasis omitted).
In response, the Examiner takes the position that Becker’s insulating
sheet 32 “inherently possesses characteristic properties that provide some
protection to the load-bearing structural part [10]. . . due to its thickness.”
Ans. 4 (transmitted Apr. 29, 2015) (emphasis added).
Our reviewing court has stated that the claim term “adapted to” “is
frequently used to mean ‘made to,’ ‘designed to,’ or ‘configured to,’ ...
[a] 1 though the phrase can also mean ‘capable of or ‘suitable for.’” In re
Giannelli, 739 F.3d 1375, 1379 (Fed. Cir. 2014) (citing Aspex Eyewear, Inc.
v. Marchon Eyewear, Inc., 672 F.3d 1335, 1349 (Fed. Cir. 2012)). In this
case, the Examiner has not explained adequately how Becker’s sheet 32 is
“made to,” “designed to,” or “configured to” “prevent damage to the
household appliance due to forces occurring during at least one of storage
and transportation of the household appliance.” Becker specifically
discloses that fiberglass sheet 32 “is suitable for limiting noise and
vibrations emanating from the tub 10 during a washing operation and also
retains heat in the tub.” Becker, col. 2,1. 66-col. 3,1. 1. As such, because
Becker discloses that sheet 23 acts as a noise, vibration, and heat insulator,
we do not agree with the Examiner’s finding that Becker’s insulating sheet
32 is adapted to prevent damage to the household appliance during storage
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or transportation merely because it has a thickness, as such a determination
requires speculation on the Examiner’s part.
Even if we interpret the phrase “adapted to” to mean “capable of,”
Appellants are correct in that, because Becker’s insulating fiberglass sheet
32 is “soft and flexible,” it does not necessarily have the capability to
prevent damage, as called for by each of independent claims 1,21, and 34.
See Reply Br. 6 (filed June 3, 2015); see also In re Robertson, 169 F.3d 743,
745 (Fed. Cir. 1999) (“Inherency, however, may not be established by
probabilities or possibilities. The mere fact that a certain thing may result
from a given set of circumstances is not sufficient.”).
In conclusion, for the foregoing reasons, we do not sustain the
rejection under 35 U.S.C. § 102(b) of claims 1—16, 19-28, and 31—34 as
anticipated by Becker.
Rejection II
The Examiner finds that Flowers discloses a household appliance
including, inter alia, a packing element 42 with legs 44L, 44R and load-
bearing structural part 12. See Non-Final Act. 5—6 (citing Flowers, Figs. 1—
3).
Appellants argue that portion 42 of Flowers constitutes “a load-
bearing part and not a packing element.” Appeal Br. 6—7. According to
Appellants, because intermediate frame portion 42 of Flowers is part of
frame 14, portion 42 constitutes a load-bearing part and not a packing
element because “load-bearing parts . . . [are] parts which contribute to the
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rigidity and dimensional stability of the household appliance.” Id. at 7
(citing Spec. para. 3).
In response, the Examiner takes the position that Flowers
distinguishes between load-bearing part 12 and packing element 42 and that
the features of a load-bearing part, as argued by Appellants, are not recited
and thus cannot be read into the claims. Ans. 2.
Although we appreciate that the features of a load-bearing part argued
by Appellants are not explicitly recited, nonetheless, “claims ... are to be
given their broadest reasonable interpretation consistent with the
specification, [ ] and .. . claim language should be read in light of the
specification as it would be interpreted by one of ordinary skill in the art.”
In re Bond, 910 F.2d 831, 833 (Fed. Cir. 1990) (alteration in original) (citing
In re Sneed, 710 F.2d 1544, 1548 (Fed. Cir. 1983). In this case, an ordinary
and customary meaning of the term “load-bearing” is “bearing the weight
that is carried by a structure.” See http://www.thefreedictionary.com/load-
bearing, last visited June 10, 2017. Such an interpretation is consistent with
the description of “load-bearing” in Appellants’ Specification, which, as
correctly noted by Appellants, “contribute[s] to the rigidity and dimensional
stability” of a structure. Spec. para. 3. Moreover, we note that Appellants’
Specification further describes a support frame surrounding a loading
opening of a dishwasher as a load-bearing structural part. Id. para. 13.
In a similar manner, frame and support member 14 attaches to and
supports dishwasher tub 12 on a floor or other supporting surface, and
surrounds opening 24 of dishwasher tub 12. Flowers, col. 1,11. 14—15 and
29-30, col. 2,11. 57—63, Fig. 1. As frame and support member 14 supports
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dishwasher tub 12 on a floor and surrounds opening 24, frame and support
member 14 bears the weight of dishwasher tub 12 and thus, in light of
Appellants’ Specification, constitutes a “load-bearing” part as understood by
a person of ordinary skill in the art. Therefore, because intermediate frame
portion 42 of Flowers is part of frame and support member 14, intermediate
frame portion 42 likewise constitutes a “load-bearing” part for the same
reasons discussed supra.
In conclusion, because intermediate frame portion 42 of Flowers
constitutes a “load-bearing” part, it cannot also constitute a “packing
element,” as called for by each of claims 1, 18, 21, and 30, and as per the
Examiner’s findings. See Engel Indus., Inc. v. Lockformer Co., 96 F.3d
1398, 1404—1405 (Fed. Cir. 1996) (construing separate claim terms as
reciting separate structures).
Accordingly, for the foregoing reasons, we do not sustain the rejection
under 35 U.S.C. § 102(b) of claims 1, 18, 21, and 30 as anticipated by
Flowers.
Rejection III
Independent claim 21 requires, inter alia, “at least one packing
element. . . [having] a force transfer region, which is in contact with a load-
bearing structural part of the household appliance.” See Appeal Br. 15
(Claims App.).
The Examiner finds that Muyskens discloses a packing element for a
household appliance including, inter alia, a packing element (protectors 80)
having a thickness that is in contact with a load-bearing structural part of the
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household appliance. Non-Final Act. 7 (citing Muyskens, Figs. 1, 3).
According to the Examiner, appliance 18 constitutes a load bearing
structural part that is in contact with packing element 80. Ans. 3.
Appellants argue that the Examiner’s interpretation of the comers of
Muyskens’s appliance 18 as a load-bearing stmctural part is inconsistent
with Appellants’ Specification. Appeal Br. 7. According to Appellants,
because the Specification distinguishes between a load-bearing element and
housing sidewalls, a person of ordinary skill in the art, in light of Appellants’
Specification, would not interpret Muyskens’s protectors 80 as contacting a
load-bearing part, but rather as contacting a housing sidewall. Id. at 8 (citing
Spec, paras. 3, 4, 6, 26).
In response, the Examiner takes the position that the limitation of “at
least one packing element. . . which is in direct contact with a load-bearing
stmctural part of the household appliance” is a functional or intended use
limitation. Thus, according to the Examiner, “the manner in which a
claimed apparatus is intended to be employed does not structurally
differentiate the claimed household appliance from that of Muyskens.” Ans.
3. The Examiner further asserts that the features of a load-bearing part and a
housing sidewall, as argued by Appellants, are not recited and thus cannot be
read into the claims. Id.
We agree with Appellants that given the descriptions in the
Specification, the Examiner’s interpretation that a “load-bearing stmctural
part of the household appliance” corresponds to Muyskens’s appliance 18 is
unreasonably broad, and is therefore in error. The plain language of claim
21 requires that the “load-bearing stmctural part of the household appliance”
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be an element of the household appliance. Therefore, interpreting the “load-
bearing structural part of the household appliance” as Muyskens’s entire
appliance 18, as the Examiner does, is inconsistent with the plain language
of claim 21. “A construction that is ‘unreasonably broad’ and which does
not ‘reasonably reflect the plain language and disclosure’ will not pass
muster.” Microsoft Corp. v. Proxyconn, Inc., 789 F.3d 1292, 1298 (Fed. Cir.
2015) (quoting In re Suitco Surface, Inc., 603 F.3d 1255, 1260 (Fed. Cir.
2010)).
Nonetheless, as the Examiner opines, claim 21 does not positively
require “a load-bearing structural part of the household appliance.” Rather,
Appellants are correct in that claim 21 recites a “structural cooperative
relationship” between the claimed packing element and a load-bearing
element of a household appliance. Reply Br. 2. In other words, claim 21
requires that the “at least one packing element. . . [have] a force transfer
region” that is used or functions in “direct contact with a load-bearing
structural part of the household appliance.” Hence, it is not apparent, and
the Examiner does not adequately explain, how Muyskens’s protectors 80
can be used or can function in such a manner, because protectors 80 come
into direct contact with appliance 18, which as discussed above, does not
constitute a “load-bearing structural” element. See Muyskens, Fig. 3. In
other words, as the “load-bearing structural part of the household appliance”
is a part of Muyskens’s appliance 18, it is not clear from the Examiner’s
rejection how protectors 80 can be used or function in such a manner as to
come into “direct contact” with the “load-bearing structural part of the
household appliance.”
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Accordingly, for the foregoing reasons, we do not sustain the rejection
under 35 U.S.C. § 102(b) of claims 21 and 32 as anticipated by Muyskens.
Rejection IV
In contrast to independent claim 21, claim 1 positively recites “at least
one load-bearing structural part.” Appeal Br. 12 (Claims App.). The
Examiner finds that Muyskens discloses “a load bearing structural part
(defined by the appliance 18).” Non-Final Act. 8.
Appellants argue that because “[a] load-bearing part is a part of the
appliance, [and] not the entire appliance,” “it is erroneous to allege the entire
appliance [18] in Muyskens discloses the load-bearing part of claim 1.”
Appeal Br. 8 (emphasis omitted).
For the reasons discussed supra, the Examiner’s interpretation of
Muyskens’s appliance 18 as a “load-bearing structural part” is unreasonably
broad, and is therefore in error. As such, Muyskens fails to disclose “at least
one load-bearing structural part,” as called for by independent claim 1. The
Examiner’s use of the Laible disclosure does not remedy the deficiency of
Muyskens, as discussed supra. See Non-Final Act. 8—9.
As such, for the foregoing reasons, we do not sustain the rejection
under 35 U.S.C. § 103(a) of claims 1 and 20 as unpatentable over Muyskens
and Laible.
Rejections V—VI
The Examiner’s use of the disclosure of Blersch does not remedy the
deficiencies of Muyskens as discussed supra. See Non-Final Act. 9-10.
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Therefore, for the same reasons discussed above, we also do not
sustain the rejections under 35 U.S.C. § 103(a) of claims 16 and 17 as
unpatentable over Muyskens, Laible, and Blersch and of claim 29 as
unpatentable over Muyskens and Blersch.
NEW GROUND OF REJECTION
We make the following new ground of rejection pursuant to
37 C.F.R. § 41.50(b).
Claims 1,21, and 34 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Becker or Flowers and Muyskens.
Becker discloses a dishwasher tub 10 (household appliance) without
housing outer walls, and including a load-bearing part defined by a
reinforcing frame located on the outside of tub 10. Becker, col. 2,11. 44^46,
Fig. 3. Flowers discloses a dishwasher tub 12 (household appliance) without
housing outer walls, and including a load-bearing part defined by frame and
support member 14. Flowers, col. 2,11. 21—23, Fig. 1. Neither Becker nor
Flowers discloses a packing element, as called for by each of independent
claims 1,21, and 34.
Nonetheless, a person of ordinary skill in the art would readily
recognize that packing elements are required for preventing damage from
occurring during transportation of either Becker’s or Flowers’s tub to an
installation site. An artisan must be presumed to know something about the
art apart from what the references disclose. See In re Jacoby, 309 F.2d 513,
516 (CCPA 1962). In this case, Muyskens discloses comer and edge
protectors 80, 82 (packing elements) in contact with refrigerator 18 along a
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surface of their respective interior portions (force transfer region with a force
action surface) adapted to protect refrigerator 18 from damage by handling
forks during its transportation. Muyskens, col. 4,11. 11—21, Fig. 3. Hence, it
would have been obvious for a person of ordinary skill in the art to provide
comer and edge protectors 80, 82 as taught by Muyskens in direct contact
with the reinforcing frame of Becker or the frame and support member 14 of
Flowers in order to protect the tubs of Becker and Flowers from damage
during their respective transportation to an installation site.
Although we decline to reject every claim using our discretionary
authority under 37 C.F.R. § 41.50(b), we emphasize that our decision does
not mean the remaining claims are patentable. Rather, we merely leave the
patentability determination of these claims to the Examiner. See MPEP
§ 1213.02.
SUMMARY
The Examiner’s decision to reject claims 1—34 is reversed.
We enter a new ground of rejection of claims 1,21, and 34 under 35
U.S.C. § 103 as being unpatentable over Becker or Flowers and Muyskens.
This decision contains a new ground of rejection pursuant to 37
C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides “[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review.”
37 C.F.R. § 41.50(b) also provides:
When the Board enters such a non-final decision, the appellant,
within two months from the date of the decision, must exercise
one of the following two options with respect to the new ground
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of rejection to avoid termination of the appeal as to the rejected
claims:
(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new Evidence relating to
the claims so rejected, or both, and have the matter reconsidered
by the Examiner, in which event the prosecution will be
remanded to the Examiner. The new ground of rejection is
binding upon the examiner unless an amendment or new
Evidence not previously of Record is made which, in the opinion
of the examiner, overcomes the new ground of rejection
designated in the decision. Should the examiner reject the
claims, appellant may again appeal to the Board pursuant to this
subpart.
(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same Record. The
request for rehearing must address any new ground of rejection
and state with particularity the points believed to have been
misapprehended or overlooked in entering the new ground of
rejection and also state all other grounds upon which rehearing
is sought.
Further guidance on responding to a new ground of rejection can be
found in the Manual of Patent Examining Procedure § 1214.01.
REVERSED: 37 C.F.R, $ 41.50(b)
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