Ex Parte Collins et al

Board of Patent Appeals and Interferences

Sep 22, 2010

11033533 (B.P.A.I. Sep. 22, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte CLINT J. COLLINS, LAWRENCE J. ERTZ and
JONATHAN J. TIEMEIER
__________

Appeal 2009-008162
Application 11/033,533
Technology Center 3600
__________

Before RICHARD TORCZON, SALLY C. MEDLEY and
MICHAEL P. TIERNEY Administrative Patent Judges.

TIERNEY, Administrative Patent Judge.

DECISION ON APPEAL1

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.
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A. STATEMENT OF THE CASE
This is a decision on appeal by the real party in interest, Maytag
Corporation (Maytag), under 35 U.S.C. § 134(a) from a final rejection of
claims 1-19, the only claims on appeal. Maytag requests reversal of the
Examiner’s rejection of claims 1-19. We have jurisdiction under 35 U.S.C.
§ 6(b). We affirm-in-part.

References Relied on by the Examiner
Lye U.S. 6,227,636 B1 May 8, 2001
Giesler U.S. 4,770,314 September 13, 1988
Lemoine U.S. 3,709,576 January 9, 1973
Rundell U.S. 2,453,387 November 9, 1948

The Invention
The invention relates to a refrigerator door retainer that prevents tall
food items from falling from a door shelf. Claim 1 is reproduced below:
1. A refrigerator comprising:
a cabinet defining a food compartment;
a door attached to and movable relative to the cabinet in order
to selectively access the food compartment, said door including an
outer panel and an inner liner;
a shelving unit attached to the liner; and
a retainer including a front wall, a back wall, and two opposing
side walls which are interconnected to define a ring with a central
opening, the retainer being removably attached to the liner at a
position spaced vertically above the shelving unit, wherein a tall food
item can be positioned with a lower portion supported on the shelving
unit and an upper portion extending through the central opening of the
retainer, such that the retainer aids in preventing the tall food item
from falling from the shelving unit. (App. Br. Claims App’x. 1).
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Figure 2 is illustrative of the claimed invention and is reproduced
below:

Maytag’s Figure 2 depicts a lower refrigerator door shelf and an upwardly
spaced tall food retainer with slidable divider.

The Rejections on Appeal
1. The Examiner rejected claims 1-13 under 35 U.S.C.
§ 103(a) as being unpatentable over Lye et al. and Lemoine and further in
view of Giesler.
2. The Examiner rejected claims 14-19 under 35 U.S.C. § 103(a)
as being unpatentable over Lye et al., Lemoine, and Giesler, and further in
view of Rundell.

B. ISSUES
1. Has the Examiner shown that the art suggested the combination
of known refrigeration shelving components to form a retainer where it was
known in the art that tall food items fall off refrigerator door shelves?
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2. Has Maytag shown that Lye’s refrigerator shelf support is non-
analogous art?

C. FINDINGS OF FACT
1. Maytag acknowledges that it was known in the art that tall food
items fall from refrigerator door shelves due to abrupt door movement and
that others have addressed this problem. (Spec. 2:13-24).
2. Maytag acknowledges that it was known in the art to employ a
divider for a refrigerator shelf to limit the shifting of food items and that
slidable dividers exist. (Id. at 2:3-11).
3. Lye discloses a refrigerator shelf support frame 27 that is
removably attached to and vertically adjustable on a refrigerator wall. (Lye
col. 2, l. 65 to col. 3, l. 10).
4. Lye’s shelf support frame 27 is an open frame with rearwardly
projecting connectors (38, 39) and is depicted in Lye’s Figure 2, reproduced
below. (Lye col. 2, ll. 59-67).

Lye’s Figure 2 shows adjustable shelf support frame and removable tray.
5. Lemoine discloses a shelf retaining stirrup 11 that secures a
removable wire grid shelf 7 to a refrigerator door. (Lemoine col. 1, ll. 39-
50).
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6. Lemoine’s stirrup 11 has side arm projections (pegs 13) that are
inserted into apertures 10 in a refrigerator door’s liner as depicted in
Lemoine’s Figure reproduced below. (Lemoine col. 1, l. 48 to col. 2, l. 9)

Lemoine’s Figure shows a stirrup 11 secured to a refrigerator door.
7. Giesler discloses a slidable slider 18 attached to a vertical plate
10 of an insert affixed to a refrigerator door shelf. (Giesler col. 2, ll. 55-65).
8. Giesler’s slider 18 moves along a recess formed by walkway 17
that secures a T-shaped bar to vertical plate 10. Giesler’s slider 18 has a
tongue 19 that extends to safely support food items and moves in
conjunction with the slider. (Giesler col. 2, l. 57 to col. 3, l. 6, claim 1, and
as shown in Giesler’s Figure 6, reproduced below).

Giesler’s Figure 6 shows a refrigerator shelf slider 18.
9. Rundell teaches a refrigerator door assembly having a rod that
serves as an additional guard rail “to support tall bottles” and prevent their
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overturning “during opening and closing movements of the door.” (Rundell
col. 5, ll. 40-49).

D. PRINCIPLES OF LAW
Common sense teaches that familiar items may have obvious uses
beyond their primary purposes, and persons of ordinary skill can often fit the
teachings of multiple patents together like pieces of a puzzle. KSR Int’l Co.
v. Teleflex Inc., 550 U.S. 398, 420 (2007). Thus, it is not necessary that the
references be physically combinable, without change, to render obvious the
invention under review. In re Sneed, 710 F.2d 1544, 1550 (Fed. Cir. 1983).
The criteria instead is what these references would have meant to a person of
ordinary skill in the field of the invention. In re Gorman, 933 F.2d 982, 986
(Fed. Cir. 1991).

E. ANALYSIS
The Examiner contends that Maytag’s claims are obvious over prior
art. The Examiner set forth two grounds of rejection: 1) claims 1-13 were
rejected as obvious over the teachings of Lye, Lemoine and Giesler, and 2)
claims 14-19 were rejected as obvious over Lye, Lemoine, Giesler and
Rundell. Maytag responded to the rejections of its nineteen claims on appeal
by presenting twelve different claim groups along with arguments in support
of each group.2

2 Maytag groups its claims as follows: i) claims 1 and 2, ii) claim 3, iii)
claims 4, 5 and 7, iv) claim 6, v) claim 8, vi) claim 9, vii) claim 10, viii)
claims 11-13, ix) claims 14 and 18; x) claims 15 and 16, xi) claim 17 and
xii) claim 19. (App. Br. 27-45).
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Generally, the Examiner contends that it was known in the art that tall
items fall off refrigerator shelves and that persons of skill in the art were
aware of various solutions to this problem.
Lye teaches a refrigerator shelf support frame 27 that is removably
attached to and vertically adjustable on a refrigerator wall. (Lye col. 2, l. 65
to col. 3, l. 10). The shelf support frame 27 is an open frame with
rearwardly projecting connectors (38, 39). (Lye col. 2, ll. 59-67). Lye
however, does not teach that its frame is connected to a refrigerator door
liner. (Ans. 4). Lemoine teaches a refrigerator door liner having a shelf
supported by a removable stirrup 11 that is directly inserted into the liner.
(Lemoine col. 1, ll. 39-50). In particular, the stirrup 11 has side arm
projections, pegs 13, which are inserted into apertures 10 in the liner.
(Lemoine col. 1, l. 48 to col. 2, l. 9). Lemoine also teaches the use of ledges
(lugs) that are integral with the liner. (Lemoine col. 1, ll. 32-36). According
to the Examiner, one of ordinary skill in the art would have modified the
refrigerator of Lye by attaching the shelves and retainer to the door liner, as
taught by Lemoine for simplified construction and for retaining tall food
items on the shelves. (Ans. 3-4). We understand the Examiner to be
contending that use of the known refrigerator frame on a refrigerator door
liner in the claimed manner would have been obvious to one of ordinary skill
in the art, i.e., the combination entails nothing more than the use of known
parts to solve a recognized problem in a predictable manner.
Maytag disagrees and contends that its specifically claimed
combinations of prior art shelves, retainers and dividers are non-obvious as
there is no reason to combine the references in the manner presented. The
Examiner and Maytag’s specific contentions are discussed in detail below.
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1. Maytag Claims 1 and 2
Maytag argues claims 1 and 2 as a group. We exercise our discretion
and select independent claim 1 as representative of the group. 37 C.F.R.
§ 41.37(c)(1)(vii). Claim 1 requires a refrigerator having a retainer where
the retainer defines a ring with a central opening and the retainer is
removably attached to a refrigerator door liner.
Maytag disagrees with the Examiner’s rejection and contends that Lye
is non-analogous art. (Reply Br. 4). Maytag also contends that the proposed
combination of Lye and Lemoine runs contrary to their respective functions
and is the result of the Examiner relying on “pure hindsight.” (App. Br. 28-
30; Reply Br. 3-4).
A reference is analogous art if it is either in the field of the applicant’s
endeavor or is reasonably pertinent to the particular problem with which the
inventor was concerned. In re Kahn, 441 F.3d 977, 987 (Fed. Cir. 2006).
Lye is entitled “Refrigerator Shelf and Serving Tray Assembly” (Lye front
page) and is directed to a shelving structure for a refrigerator cabinet.
Accordingly, Lye is directed to the same field of endeavor as Maytag
because both Lye and Maytag are directed to supporting food items within a
refrigerator cabinet. Thus, Lye is analogous art.
Regarding Maytag’s contrary function and hindsight contentions, Lye
and Lemoine relate to the field of refrigerator shelving. One skilled in the
refrigerator shelving art was aware of the problem associated with tall food
items falling off refrigerator door shelves. Lye and Lemoine demonstrate
that Maytag’s claimed refrigerator shelf retainer is formed using known
refrigerator shelving components. The known shelving components have
been combined for their respective functions, i.e., Lye teaches a shelving
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frame attached to a refrigerator cabinet for supporting items in place (Lye
col. 1, ll. 49-52) and Lemoine teaches connecting refrigerator shelving
directly to a refrigerator liner using pegs. (Lemoine col. 1, ll. 45-50). While
we agree with Maytag that Lye does not specifically describe its shelving
frame as retaining tall items within its framework, the criteria for
obviousness is what a reference would have meant to a person of ordinary
skill in the field of the invention. Gorman, 933 F.2d at 986. On this record,
the Examiner has established that one skilled in the art would have
recognized that a frame, such as Lye’s, is capable of functioning as a retainer
as it aids in preventing a tall item from falling over. (Ans. 3-4 and 10-11;
compare with Ans. 6 citing Rundell, 5:40-49). Accordingly, the Examiner
has established that Maytag claim 1 reflects a combination of familiar
refrigerator shelving elements combined according to known methods
(putting pegs on a shelf frame) to yield a predictable result (a frame that
helps prevent tall food items from falling off a shelf and is removably
attached to the refrigerator door liner).

2. Maytag Claim 3
Claim 3 depends from claim 2 and further requires a divider attached
to the front or back wall of the retainer.
The Examiner determined that it would have been obvious to place a
divider on the retainer suggested by Lye as Giesler teaches that it was known
in the refrigerator shelving art to attach a divider to a front wall of a retainer
to better secure items on a shelf. (Ans. 4-5 and 12-14). Maytag however,
contends that it would not have been apparent to one of ordinary skill in the
art to combine the slider of Giesler with Lye’s shelf support frame as
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modified by Lemoine and further that this proposed combination is not even
possible. (App. Br. 31-32; Reply Br. 5-6).
Giesler states that a slidable divider placed on a refrigerator shelf
provides lateral support to objects arranged on the shelf. (Giesler col. 1, ll.
21-31, and col. 3, ll. 1-6). One skilled in the art would have recognized that
the addition of a slidable divider, such as Giesler’s, to the suggested
combination of Lye and Lemoine would have provided lateral shelf support
to items retained by Lye’s frame.
Additionally, although the proposed combination of Giesler and Lye
and Lemoine would require some modification to their respective structures,
what matters in the context of obviousness is “whether a person of ordinary
skill in the art, having all of the teachings of the references before him, is
able to produce the structure defined by the claim.” Orthopedic Equip. Co.,
Inc. v. U. S., 702 F.2d 1005, 1013 (Fed. Cir. 1983). On this point, Giesler
teaches that its dividers “may be varied in many ways.” (Giesler col. 3, ll.
18-23). We find that one skilled in the art would have been able to connect a
divider to a retainer. See KSR, 550 U.S. at 421, (“A person of ordinary skill
is also a person of ordinary creativity, not an automaton.”). We hold that the
Examiner has established that one skilled in the art had both reason and
ability to combine the known sliders of Giesler to the combination suggested
by the teachings of Lye and Lemoine to achieve the predictable result of a
slidable divider on a retainer.

3. Maytag Claims 4, 5 and 7
Maytag argues claims 4, 5 and 7 as a group. Claim 4 depends from
claim 3 and further requires an elongated recess extending along the back
wall of the retainer with the divider attached at the recess portion. Claims 5
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and 7 depend from claim 4. We exercise our discretion and select claim 4 as
representative of the group. 37 C.F.R. § 41.37(c)(1)(vii).
The Examiner contends that, although Giesler does not depict a
divider attached to a back wall of a retainer, it would have been obvious to
move the recess and divider of Lye and Giesler to the back wall of the
retainer as it would make the divider less susceptible to accidental
repositioning and that such a modification was within the ordinary skill in
the art. (Ans. 5). Maytag disagrees, contending that the combination is not
reasonable as it would require modifying the references and because the
references do not teach a back wall having a recessed portion formed
therein. (App. Br. 32-33).
An obviousness determination does not require that the underlying
teachings of the references be physically combinable without modification.
Sneed, 710 F.2d at 1550. Specifically, it is not necessary to find precise
teachings in the prior art directed to the specific subject matter claimed
because inferences and creative steps that a person of ordinary skill in the art
would employ can be taken into account. KSR, 550 U.S. at 418.
We hold that the Examiner’s reasoning as to the obviousness of claim
4 is credible. One skilled in the art would have been able to form an
elongated recess along either the back or front wall of a refrigerator shelf
retainer for placement of a divider. Further, one skilled in the art would
have been able to vary the placement, front or back wall, to prevent the
divider from being accidentally repositioned.

4. Maytag Claim 6
Claim 6 depends from claim 4 and further requires that the retainer
back wall have at least two portions, one abutting the door liner and another
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portion spaced apart from the door liner. (Spec. 7:19-23 and Figure 3, 84,
95 and 110).
The Examiner states that all limitations of claim 6 are taught by the
prior art as Lye teaches a retainer with a back wall abutting the lining it is
attached to and that Giesler teaches a divider fitting over a wall at an
elongated recess. (Ans. 5). Lye’s retainer does not abut the back wall and
the Examiner does not articulate a reason as to why one skilled in the art
would modify Lye to have both an abutting portion and a portion spaced
apart from the door liner. Accordingly, we reverse the Examiner’s rejection
of claim 6.

5. Maytag Claim 8
Claim 8 depends from claim 1 and further requires that the retainer
can be vertically repositioned on the door’s inner liner relative to the
shelving unit.
The Examiner contends that Lye teaches a repositionable retainer on a
liner relative to a shelving unit and that Lemoine teaches multiple positions
in which a retainer could be vertically repositioned. (Ans. 6). Maytag
however, contends that Lye has a different purpose from the claimed
invention and that Lemoine does not teach multiple retainer positions. (App.
Br. 34). We hold that the Examiner has established that, as shown by Lye,
one skilled in the art was aware that refrigerator shelves can be vertically
repositioned (adjustable shelving) and the benefits associated thereto were
known in the art. (Lye col. 3, ll. 2-7).

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6. Maytag Claims 9-13
Independent claim 9 differs from independent claim 1 in that claim 9
is directed to a retainer for a refrigerator but one which lacks integrally
formed attachment members, e.g., pegs. Claims 10-13 directly or indirectly
depend from claim 9 and are similar to claims 3-5 and 73.
Maytag contends that claims 9-13 are patentable for the reasons
presented above with respect to claims 1 and 3-4. (App. Br. 35-40). For the
reasons presented above with respect to claims 1 and 3-4, we likewise affirm
the Examiner’s rejection of claims 9-13.

7. Maytag Claims 14-19
Independent claim 14 is directed to a method of retaining a tall food
item on an inner liner of a refrigerator door where a tall food item is
positioned on a door having a retainer secured directly to the door liner.
Maytag claims 15-19 depend directly or indirectly from claim 14 and further
define the structure required for the door and retainer4.
Maytag contends that claims 14-19 are non-obvious and reiterates
arguments similar to those previously presented with respect to claims 1-13.
For example, Maytag contends that the Examiner lacked a reason to
combine Lye, Lemoine, Giesler and Rundell; that the references are not

3 Specifically, claims 10-13 further state that a divider is attached to the
retainer (claim 10), the back wall of the retainer has a recess (claim 11), the
divider has a support that slides along an elongated recess portion (claim 12)
and the retainer has end stops for the divider (claim 13).

4 Claim 15 requires a divider; claim 16 defines the sliding of the divider;
claim 17 limits the sliding by placing stops for the divider; claim 18 defines
a set of lugs on the liner; and claim 19 states that the retainer can be
vertically repositioned.
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physically combinable; that the references are directed to a different purpose
from the claimed invention; that the combination of references do not teach
the elements claimed; and that the Examiner is relying upon non-analogous
art. (App. Br. 40-45).
We affirm the rejection of method claims 14-19 for the same reasons
set forth above with respect to apparatus claims 1-13. As discussed above,
one skilled in the art was aware of the problem associated with retaining tall
food items on a refrigerator shelf and thus had reason to combine known
refrigerator shelving parts in a predictable fashion to address this problem.
We hold that the Examiner has established that the claimed method of
retaining tall food items on a refrigerator door where the retainer is attached
to the door liner above a shelving unit is obvious to one skilled in the art.

F. CONCLUSIONS OF LAW
1. One of ordinary skill in the art would have had reason to
combine the known refrigeration shelving components to form the claimed
retainer, as it was known in the art that tall food items fall off refrigerator
door shelves.
2. Lye’s refrigerator shelf support is analogous art.

G. ORDER
The rejection of claims 1-5, 7-19 under 35 U.S.C. § 103(a) is
affirmed.
The rejection of claim 6 under 35 U.S.C. § 103(a) is reversed.

AFFIRMED-IN-PART
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No time period for taking any subsequent action in connection with
the appeal may be extended under 37 C.F.R. § 1.136(a).

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