Ex Parte Bauer et al

Patent Trial and Appeal Board

Mar 17, 2014

10543118 (P.T.A.B. Mar. 17, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte PETER BAUER, CHRISTOPH BECKE, ALEXANDER GOERZ,
HANS-REINHART JANSSEN, and RALF SPILLER
____________

Appeal 2011-009084
Application 10/543,118
Technology Center 3600
____________

Before NEAL E. ABRAMS, JENNIFER D. BAHR, and
MICHAEL L. HOELTER, Administrative Patent Judges.

ABRAMS, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE

Peter Bauer et al. (Appellants) seek our review under 35 U.S.C. § 134
from the Examiner’s decision rejecting claims 15-18, 20-24 and 27-36. We
have jurisdiction over the appeal under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.
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THE INVENTION
The claimed invention is directed to a refrigerating appliance and to a
door for a refrigerating appliance.
Claims 15 and 36, reproduced below, are illustrative of the subject
matter on appeal.
15. A door for a refrigerating appliance, the refrigerator
appliance having a body with a front side extending between an
upper front edge and a lower front edge, an opening formed in
the front side that is closeable by a door, and a control panel
mounted on the upper front edge of the front side of the body,
the door comprising:
an outer wall;
an inner wall;
said outer wall and said inner wall interconnected along
their longitudinal and transverse edges forming a space
therebetween to form a depth for the door;
an upper end element being attached to an upper
transverse edge of the door, the upper end element including a
plate extending horizontally between the inner and outer walls
across the depth of the door and an outer wall piece that
extends upward from a front edge of the plate, wherein a
grasping recess is formed between a rear side of the outer wall
piece and an upper surface of the plate, and wherein
a viewing window is formed in the outer wall piece, the
viewing window allowing a user visual access to a space behind
the viewing window.

36. A refrigerator appliance comprising:
a body with a back side, a front side extending between
an upper front edge and a lower front edge, an opening formed
in the front side, and a top surface extending to and between the
back side and the front side,
a control panel mounted on the upper front edge of the
front side of the body, the control panel extending to a height
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such that no portion of the control panel extends higher than the
top surface extending to and between the back side and the
front side; and
a door, the door being operable to close off the opening
formed in the front side of the body and the door having an
outer wall, an inner wall, the outer wall and the inner wall
interconnected along their longitudinal and transverse edges
forming a space therebetween to form a depth for the door, a
grasping aperture being formed in a top edge of the door, the
grasping aperture extending across almost an entire width of the
door, and the upper transverse edge of the door being formed
with a viewing window extending over the depth of the door,
wherein the door covers the body of the refrigerating appliance
to its upper edge and wherein the control panel mounted on the
upper front edge of the front side of the body of the
refrigerating appliance is visible through the viewing window.

THE PRIOR ART
The Examiner relied upon the following as evidence of
unpatentability:
Onaka US 6,101,819 Aug. 15, 2000
Antos
Carter
Licentia
Bukulmez
US 6,827,410 B2
US 7,031,144 B2
DE 9218613
WO 02/065036 A1

Dec. 7, 2004
Apr. 18, 2006
Oct. 6, 1994
Aug. 22, 2002
THE REJECTIONS
Claims 15-18, 20-24, 27, 35 and 36 stand rejected under 35 U.S.C.
§ 112, first paragraph, as failing to comply with the written description
requirement.
Claim 36 stands rejected under 35 U.S.C. § 112, second paragraph, as
being indefinite for failing to particularly point out and distinctly claim the
subject matter which Applicants regard as the invention.
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Claims 28-31 and 33 stand rejected under 35 U.S.C. § 102(e) as being
anticipated by Bukulmez.
Claim 32 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Bukulmez.
Claim 34 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Bukulmez and Licentia.
Claims 15-17, 20-24 and 35 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over Antos and Bukulmez.
Claim 27 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Antos, Bukulmez,1 and Licentia.
Claim 36 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Antos, Bukulmez, Onaka and Carter.
OPINION
Claims 15-18, 20-24, 27, 35 and 36
35 U.S.C. § 112, First Paragraph -
Written Description Requirement
It is the Examiner’s position that “the newly added limitation in claim
15 of a grasping recess being formed between a rear side of the outer wall
piece and an upper surface of the plate” of the door is considered to be new
matter since the original disclosure fails to provide adequate support
therefor, and the drawings show a handle on the front of the outer wall of the
door for opening and closing the door. Ans. 4. The Examiner has also

1 The rejection reads “unpatentable over Antos, as modified, as applied to
claim 20 above, and further in view of . . . Licentia.” Ans. 11(emphasis
added). Since Antos was modified in the rejection of claim 20 by the
teachings of Bukulmez (Ans. 9), it is apparent that the Examiner intended to
also include Bukulmez in this rejection.
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stated that the recitation in claim 36 of “a grasping aperture being formed in
a top edge of the door . . . [and] extending across almost an entire width of
the door” constitutes new matter. Ans. 4. Appellants argue that the claimed
recess, “extending across almost the entire width of the top of the door,” has
always been illustrated in the drawings. App. Br. 8.
It is our view that one of ordinary skill in the art would appreciate that
Figures 1, 4 and 6 of Appellants’ drawings show a grasping recess on the
upper edge of the door, and that this grasping recess extends across
sufficient width of the door to be considered “almost the entire width.”
Therefore, this rejection of independent claims 15 and 36 and dependent
claims 16-18, 20-24, 27, 35 is not sustained.
The Examiner also objected to Appellants’ amendment of Oct. 5,
2009, in which material describing the grasping aperture was entered on
page 5 of the Specification and in Figure 1 of the drawings. Ans. 3. To the
extent that this objection turns on the same issues as the rejection under 35
U.S.C. § 112, first paragraph, our decision with regard to the rejection
likewise is dispositive as to the corresponding objection.
Claim 36
35 U.S.C. § 112, Second Paragraph -
Indefiniteness
The Examiner’s position here is that claim 36 is indefinite because the
phrase “‘the upper’ transverse edge of the door lacks antecedent basis,” and
because the limitation in claim 36 of “the grasping structure extending
across almost the entire width of the door” fails to clearly define the metes
and bounds of the claimed invention. Ans. 4-5. Appellants argue that the
Examiner’s position is in error, because antecedent basis for “the upper”
transverse edge exists in that “the transverse edges of the door are recited
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earlier in claim 36 at line 11,” and the drawings “clearly indicate that the
grasping aperture extends across almost the [an] entire width of the door.”
App. Br. 10.
It is our view that the recitation in claim 36 that the door comprises
“the outer wall and the inner wall interconnected along their longitudinal and
transverse edges” is sufficient antecedent basis for the subsequent
designation of one of the transverse edges as “the upper transverse edge,”
and therefore this matter does not form the basis of a rejection for
indefiniteness.
We reach the opposite conclusion, however, with regard to whether
the recitation of the grasping structure as “extending across almost an entire
width of the door” is sufficient to establish the metes and bounds of the
invention. “Almost” is a term of degree, and when a term of degree is
presented in a claim, a determination must be made as to whether the
Specification provides some standard for measuring that degree. If it does
not, a determination must be made as to whether one of ordinary skill in the
art would be nevertheless reasonably apprised of the scope of the invention.
See MPEP § 2173.05(b). The common definition of “almost” is “very
nearly but not exactly or entirely.”2 Appellants have not pointed out where
in the Specification one of ordinary skill in the art would be reasonably
apprised of the scope to be accorded to the term “almost” as it relates to “an
entire width of the door.” Thus, it is unclear what degree of extension of the
grasping recess across the width of the door constitutes “very nearly but not

2 See, for example, the Merriam-Webster Online Dictionary. www.meriam-
webster.com/dictionary/almost

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exactly or entirely,” and when the scope of a claim is unclear a rejection
under 35 U.S.C. § 112, second paragraph, is proper. See in re Wiggins, 488
F. 2d 538, 541 (CCPA 1973).
This rejection of claim 36 is sustained.
Claims 28-31 and 33
Anticipation – Bukulmez
Appellants’ argument with regard to this rejection is that “Bukulmez
clearly discloses that the display element 3 is mounted on the top of the
body, not on the front edge of the body,” as is required by claim 28. App.
Br. 11. The Examiner responded to this assertion by pointing out that “(1)
the claimed language recited the display element mounted ‘at an upper front
edge’ of the body, not ‘on’ as alleged, and (2) Buklumez clearly shows the
display 3 being mounted ‘at an upper front edge’ of the body” (emphases
added). Ans. 16. Claim 28 does, in fact, require only that the display
element be mounted “at” an upper front edge of the body, and Bukulmez
clearly shows in Figure 3 such placement of display element 3.
The rejection of independent claim 28 therefore is sustained.
Inasmuch as Appellants have chosen not to argue the separate patentability
of claims 29-31 and 33, which depend from claim 28 (App. Br. 11), the like
rejection of these claims also is sustained.
Claim 32
Obviousness – Bukulmez
Claim 32 depends from claim 28. Appellants have chosen not to
argue the separate patentability of claim 32 (App. Br. 11), and therefore this
rejection is sustained.

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Claim 34
Obviousness – Bukulmez and Licentia
Claim 34 depends from claim 28. The extent of Appellants’
arguments with regard to claim 34 is that it is allowable over Bukulmez for
the reasons discussed in connection with claim 28, and that Licentia fails to
cure the deficiencies in Bukulmez. App. Br. 11. The rejection of claim 28
having been sustained, this rejection of claim 34 also is sustained.
Claims 15-17, 20-24 and 35
Obviousness – Antos and Bukulmez
The Examiner has found all of the subject matter recited in
independent claim 15 to be disclosed or taught by Antos, except for “a
viewing window being formed in the outer wall piece 30 [of the door], the
viewing window allowing a user visual access to a space behind the viewing
window,” and several other details of the construction of the door. Ans. 9.
However, it is the Examiner’s conclusion that these shortcomings are
disclosed in Bukulmez, and
it would have been obvious to modify the structure of Antos et
al by providing the control panel 16 with a display therein, a
viewing window formed in an outer wall piece of the upper
element, allowing a user visual access to a space behind the
viewing window . . . since both [references] teach alternate
conventional refrigerating appliance structure, having a control
panel provided thereto, thereby providing structure as claimed.
Ans. 10.
Appellants state that Antos discloses a refrigerator having control
elements 16 located on a control panel 20 mounted on the top surface, and
that “indicator lights on the control panel 20 can be distracting to users . . .
particularly at night when such indicator lights would glow brightly.” To
solve this problem, Appellants point out that “Antos teaches that it is
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desirable to mount a cap 28 on the top edge of the door 12 to visually block
any illuminated display elements on the control panel 20 . . . when the door
of a refrigerator is closed.” App. Br. 12. Thus, Appellants assert, if the
Antos refrigerator were to be modified by placing a viewing window in the
top of the door, as disclosed in Bukulmez, “one would be able to view the
indicator lights on a control panel mounted on the top of Antos’
refrigerator,” which would “destroy the utility of Antos’ end cap,” and
therefore one of ordinary skill in the art would not have done so. App Br.
12.
“If proposed modification would render the prior art invention being
modified unsatisfactory for its intended purpose, then there is no suggestion
or motivation to make the proposed modification. In re Gordon, 733 F.2d
900 (Fed. Cir. 1984).” MPEP § 2143.01 V. Antos solves the problem of
distracting illumination emanating from controls 16 by blocking it with a cap
portion 28 positioned on the upper edge of door 26. Modifying Antos by
replacing the cap which visually blocks the illuminated controls with the
transparent window of Bukulmez would render the Antos invention
incapable of performing its intended function, and we therefore agree with
Appellants that one of ordinary skill in the art would not have been
motivated to do so.
This rejection of independent claim 15 is not sustained nor, it follows,
is the like rejection of claims 16, 17, 20-24 and 35, all of which depend from
claim 15.

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Claim 27
Obviousness – Antos, Bukulmez and Licentia
Claim 27 depends from claim 15. Licentia was cited by the Examiner
for the teaching of providing a non-transparent decoration in a panel. Be
that as it may, Licentia does not overcome the deficiency noted above
regarding combining the teachings of Antos and Bukulmez in the rejection
of claim 15. Therefore, this rejection of claim 27 is not sustained.
Claim 36
Obviousness – Antos, Bukulmez, Onaka and Carter
In this rejection the Examiner initially relies upon modifying the
Antos device by replacing Antos’ cap, which visually blocks the illuminated
controls, with a transparent window, in view of the teachings of Bukulmez.
Ans. 13. As was the case with claim 15, it is our view that it would not have
been obvious to one of ordinary skill in the art to combine the teachings of
Antos and Bukulmez in the manner proposed by the Examiner, a defect that
is not cured by further consideration of the teachings of Onaka and Carter.
Thus, this rejection of claim 36 is not sustained.
DECISION
The rejection of claims 15-18, 20-24, 27, 35 and 36 under 35 U.S.C.
§ 112, first paragraph, is reversed.
The rejection of claim 36 under 35 U.S.C. § 112, second paragraph, is
affirmed.
The rejection of claims 28-31 and 33 under 35 U.S.C. § 102(e) is
affirmed.
The rejection of claim 32 under 35 U.S.C. § 103(a) is affirmed.
The rejection of claim 34 under 35 U.S.C. § 103(a) is affirmed.
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The rejection of claims 15-17, 20-24 and 35 under 35 U.S.C. § 103(a)
is reversed.
The rejection of claim 27 under 35 U.S.C. § 103(a) is reversed.
The rejection of claim 36 under 35 U.S.C. § 103(a) is reversed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED-IN-PART
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