Ex Parte Laible et al

Patent Trial and Appeal Board

May 21, 2013

11919720 (P.T.A.B. May. 21, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
________________

Ex parte KARL-FRIEDRICH LAIBLE
and HELMUT STEICHELE
________________

Appeal 2011-004576
Application 11/919,720
Technology Center 3600
________________

Before MICHAEL L. HOELTER, RICHARD E. RICE and
CARL M. DeFRANCO, Administrative Patent Judges.

HOELTER, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2011-004576
Application 11/919,720

2
STATEMENT OF THE CASE
This is a decision on appeal, under 35 U.S.C. § 134(a), from a
rejection of claims 12-31. Br. 3. Claims 1-11 have been cancelled. Br. 3.
We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM.

CLAIMED SUBJECT MATTER
The disclosed subject matter “relates to a door for a household
appliance such as a refrigerator, a freezer, a dishwasher, or similar.” Spec.
1:2-3. Independent claim 21 is illustrative of the claims on appeal and is
reproduced below:
21. A door for a household appliance, comprising:
a door outer skin;
a decorative panel attached to the door outer skin, the
decorative panel and the door outer skin being separated by an
intermediate space;
a bridge attached to the decorative panel or the door outer
skin and located in the intermediate space, the bridge forming a
gap between the bridge and the decorative panel, the gap being
parallel to the decorative panel or the door outer skin; and
an angle piece having a first limb and a second limb,
wherein the decorative panel and the door outer skin are
connected together by the angle piece,
the first limb engages the gap, and
the second limb is attached to an edge of the door outer
skin or the decorative panel.

REFERENCES RELIED ON BY THE EXAMINER
Tabankin1 US 3,597,753 Aug. 3, 1971

1 Tabankin was relied on by the Examiner (Ans. 9) in response to a query by
Appellants “that a prior art reference be provided” in support of the
Examiner having taken “Official notice regarding the placement of bead
stops on metal structures.” Br. 8. See also Ans. 6 where Official Notice was
taken.
Appeal 2011-004576
Application 11/919,720

3
Tarantik2 EP 1245916 A2 Oct. 2, 2002

THE REJECTIONS ON APPEAL
1. Claims 12-15, 17 and 19-21 are rejected under 35 U.S.C. § 102(b) as
being anticipated by Tarantik. Ans. 3.
2. Claims 12, 16, 18 and 19 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Tarantik. Ans. 4.
3. Claims 12-31 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Tarantik. Ans. 5.

ANALYSIS
The Examiner’s last rejection is directed to all the claims on appeal.
We address that rejection first.
The rejection of claims 12-31
as being unpatentable over Tarantik
In responding to this rejection, Appellants address claims 12-21 and
rely on “the reasons presented above” where independent claim 21 and
dependent claim 15 were each separately argued. Br. 9, see also 5 and 7.
Appellants also present separate arguments directed to claims 22-31 but only
particularly address independent claim 22. Br. 9. We address each of
claims 21, 15 and 22 infra. Regarding dependent claims 12-14, 16-20 and
23-31, they stand or fall with their respective parent claim. See 37 C.F.R.
§ 41.37(c)(1)(vii) (2011).
The Examiner finds that Tarantik teaches all the claim limitations but
acknowledges that with respect to independent apparatus claims 21 and 22, 3

2 The Examiner relied on the figures of Tarantik. No English Language
translation has been provided.
Appeal 2011-004576
Application 11/919,720

4
“Tarantik fails to teach that the bridge is located completely between the
door and panel.” Ans. 6. Here, the Examiner finds that it “would have been
an obvious consideration” to “modify the door of Tarantik by simply
rearranging the location of the bridge(s) (35) so that it is (they are)
positioned completely between the door and panel and reversing the
connection of the angle piece(s) with the door so that the end piece(s) (34)
face(s) inward.” Ans. 6. The Examiner finds that “this rearrangement
would not affect the effectiveness of the connection and would yield
predictable (and the same) results.” Ans. 6, see also 8.
In addition to this rejection, the Examiner also provides a different
ground of rejection directed to the scope of the claim term “intermediate
space.” Ans. 5, see also 3-4, 7-8 and Examiner’s Attachment A. Appellants
dispute the Examiner’s assertion that “the intermediate space, as broadly
defined, does not have to end with the bottom portion of the door outer
skin.” Ans. 7. Instead, Appellants offer a definition that an area not
between the decorative panel and the door outer skin is outside the scope of
this term. Br. 5-7, see also 9. Assuming arguendo that Appellants’
definition is adopted, such adoption does not obviate the Examiner’s
alternative rejection stated supra that claims 21 and 22 are obvious in view
of Tarantik based on a rearrangement of parts. Ans. 6, 8.
In addressing this rejection, Appellants contend that “[t]here is
nothing in Tarantik that suggests rearranging profile 35 so that it is between

3 Claim 21 includes the limitation that the bridge is “located in the
intermediate space” (see infra for a discussion of the claim term
“intermediate space”) while claim 22 includes the limitation that the bridge
is “located completely between the decorative panel and the door outer skin
in the intermediate space.”
Appeal 2011-004576
Application 11/919,720

5
door [23] and panel 10, and rearranging angle 30 so that leg 34 points in
between door [23] and panel 10 (upward in Fig. 12).” Br. 9. However, as
the Supreme Court has instructed us, the suggestion does not have to come
from the cited art. See KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 419
(2007). Appellants further contend that the Examiner has provided “no
reason” for this rejection (Br. 9) but the Examiner’s stated rationale is that
the simple rearrangement of parts involves only routine skill in the art (Ans.
6, see also 8) and Appellants have not shown that such a rearrangement is
beyond the ability of one skilled in the art.4 Appellants additionally contend
that any such “rearrangement would make assembly more difficult (if not
impossible)” because of a difficulty in pinching one of the legs and that “the
exact location” of a leg “is not known until door 23 is in place.” Br. 9-10.
Appellants’ contention is not persuasive because the claims are silent
regarding any “pinching.” Furthermore, “the exact location” of Appellants’
device is also not known prior to assembly and even after initial assembly,
Appellants permit three degrees of movement allowing for a subsequent
change in location. Spec. 5:7-8. Finally, Appellants contend that to
rearrange Tarantik as asserted would “complicate (and therefore increase the
expense of) the assembly of Tarantik.” Br. 10. Regarding an increase in
complexity or expense, our reviewing court has instructed us that “a given
course of action often has simultaneous advantages and disadvantages, and
this does not necessarily obviate motivation to combine.” Medichem, S.A. v.
Rolabo, S.L., 437 F.3d 1157, 1165 (Fed. Cir. 2006). Further, “[t]he fact that
the motivating benefit comes at the expense of another benefit, however,

4 Minor differences between the prior art and a claimed device may be a
matter of design choice absent evidence to the contrary. See In re Rice,
341 F.2d 309, 314 (CCPA 1965).
Appeal 2011-004576
Application 11/919,720

6
should not nullify its use as a basis to modify the disclosure of one reference
with the teachings of another. Instead, the benefits, both lost and gained,
should be weighed against one another.” Winner Int'l Royalty Corp. v.
Wang, 202 F.3d 1340, 1349 n.8 (Fed. Cir. 2000). While these instructions
are directed to a combination of references, there is no indication that such
guidance is not equally applicable to the rearrangement of parts as herein
contemplated by the Examiner. After all, the Supreme Court has provided
instruction that a “person of ordinary skill is also a person of ordinary
creativity, not an automaton.” KSR, 550 U.S. at 421. In short, Appellants
have not shown Examiner error in finding that “this rearrangement would
not affect the effectiveness of the connection and would yield predictable
(and the same) results.”5 Ans. 6, see also 8.
With respect to claim 15, this claim depends from claim 13 and
includes the further limitation that “the bridge has a span of at least one and
a half times a width of the first limb.” The Examiner initially relies on
Tarantik’s Figure 11 finding the “bridge appearing to have” the claimed
span. Ans. 4, see also 8. The Examiner also rejects claim 15 finding that it
“would have been an obvious consideration to one having ordinary skill in
the art, depending on the desired need of the person constructing the
connection pieces, e.g. to provide a larger gap for easier insertion of the
limb, etc.” Ans. 8.
Appellants dispute the Examiner’s initial reliance on what the
drawings “appear” to disclose indicating that Tarantik’s “drawings are not to
scale” and that they “do not disclose a bridge having a span with the claimed

5 See In re Kuhle, 526 F.2d 553, 555 (CCPA 1975) (claimed feature solves
no stated problem and presents no unexpected result and thus “would be an
obvious matter of design choice within the skill of the art”).
Appeal 2011-004576
Application 11/919,720

7
width.” Br. 8. We agree with this assessment by Appellants in view of
Hockerson-Halberstadt, Inc. v. Avia Group Int’l Inc., 222 F.3d 951 (Fed.
Cir. 2000) which provides instruction that “patent drawings do not define the
precise proportions of the elements and may not be relied on to show
particular sizes if the specification is completely silent on the issue.” Id. at
956.
However, Appellants do not address the Examiner’s additional basis
for the rejection of claim 15 and the finding that it is “an obvious
consideration . . . to provide a larger gap for easier insertion of the limb,
etc.” Ans. 8. Appellants do not indicate why it would not have been
obvious to do so.
We also wish to note that with respect to claim 18, Appellants address
the Examiner’s reliance on Official notice “and request that a prior art
reference be provided to show the features of claim 18.” Br. 8. The
Examiner complies (even though asserting that such a request is untimely)
by referencing Tabankin and indicating where such features can be found
therein. Ans. 9. As the Examiner’s rejection is based on Official notice
(Ans. 6) and as Appellants simply requested proof thereof (Br. 8), we agree
with the Examiner that the “inclusion of this patent in the answer is not a
new grounds of rejection” (Ans. 9).
Accordingly, and in view of the record presented, we are not
persuaded by Appellants’ arguments and as such, we sustain the Examiner’s
rejection of claims 12-31 as being obvious over Tarantik. It is noted that a
subset of these claims are also rejected on other grounds. Ans. 3, 4. While
we may address these additional rejections, we note that 37 C.F.R. §
41.50(a)(1) (2012) specifies that an affirmance of a rejection of a claim on
Appeal 2011-004576
Application 11/919,720

8
any grounds “constitutes a general affirmance of the decision of the
examiner on that claim.” Hence, as we affirm the rejection of all the claims
on appeal as being obvious over Tarantik, even a different outcome in these
other rejections would not alter the affirmance of the rejection of these same
claims as discussed supra. We thus decline to address these additional
rejections.

DECISION
The obviousness rejection of claims 12-31 is affirmed.
In view of the affirmance of the rejection of all the claims on appeal,
we decline to address the separate rejection of claims 12-15, 17 and 19-21 as
well as the separate rejection of claims 12, 16, 18 and 19.
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

mls