Ex Parte Mirza et alDownload PDFPatent Trial and Appeal BoardSep 29, 201612811348 (P.T.A.B. Sep. 29, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 12/811,348 10/02/2010 26948 7590 10/03/2016 VENJURIS, P,C 1938 E. OSBORN RD PHOENIX, AZ 85016-7234 FIRST NAMED INVENTOR Alper Mirza 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 ATTORNEY DOCKET NO. CONFIRMATION NO. PHDL0860-064 5868 EXAMINER MARTIN, ELIZABETH J ART UNIT PAPER NUMBER 3744 NOTIFICATION DATE DELIVERY MODE 10/03/2016 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): docketing@venjuris.com vclmdocket@venjuris.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte ALPER MIRZA and SATI MUTLU Appeal2015-001430 Application 12/811,348 Technology Center 3700 Before JOHN C. KERINS, BENJAMIN D. M. WOOD and ARTHUR M. PESLAK, Administrative Patent Judges. KERINS, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Alper Mirza and Sati Mutlu (Appellants) seek our review under 35 U.S.C. § 134 of the final rejection of claims 1-12. We have jurisdiction under 35 U.S.C. § 6(b ). We AFFIRM-IN-PART. THE INVENTION Appellants' claimed invention is directed to a cooling device having a shelf with first and second supporting walls. Claim 1, reproduced below, is illustrative: Appeal2015-001430 Application 12/811,348 1. A cooling device (1) comprising a body (2) wherein goods are disposed, at least one door (3) providing access to inside of the body (2) and at least one shelf (5) having a first supporting wall ( 4) and a second supporting wall ( 104) wherein the first supporting wall ( 4) and the second supporting wall ( 104) are of different sizes and forms and are joined almost vertically to each other by at least one edge each to form a base and a guard and wherein the at least one shelf can be coupled in different positions to the door (3) by selecting from the group consisting of either a I. position wherein the first supporting wall ( 4) is horizontal and the second supporting wall (104) is vertical above the first supporting wall (4) enabling the first supporting wall (4) to carry the goods by serving as the base and the second supporting wall ( 104) to serve as the guard above the base and support the goods, or a II. position wherein the second supporting wall (104) is horizontal and the first supporting wall ( 4) is vertical above the second supporting wall (104) enabling the second supporting wall ( 104) to carry the goods by serving as the base and the first supporting wall (4) to serve as the guard above the base and support the goods. THE REJECTIONS The Examiner has rejected: (i) claims 1, 2, and 4--7 under 35 U.S.C. § 102(b) as being anticipated by Thomson (US 4,186,978, issued Feb. 5, 1980); (ii) claims 3 and 8-12 under 35 U.S.C. § 103(a) as being unpatentable over Thomson in view of Samdan (WO 2006/011084 Al, published Feb. 2, 2006); and 2 Appeal2015-001430 Application 12/811,348 (iii) claims 5 and 6 under 35 U.S.C. §112, second paragraph, as being indefinite for failing to particularly point out and distinctly claim that which Appellants regard as the invention. ANALYSIS Claims 1, 2, and 4-7--Anticipation by Thomson The Examiner finds that the subject matter of these claims is disclosed in Thomson in the form of a tilt-down receptacle pivotably attached to a refrigerator door. Final Act. 3-5. Appellants challenge the rejection, asserting, inter alia, that the Examiner does not explicitly identify the element regarded as corresponding to the claimed "second supporting wall," nor has the Examiner shown such a wall that acts as a base in one position and as a guard in a second position. Appeal Br. 12. In response, the Examiner provides the following annotated versions of Figures 1 and 5 of Thomson: 3 Appeal2015-001430 Application 12/811,348 Annotated Figures 1 and 5 of Thomson, reproduced above, are elevation views of a refrigerator and refrigerator door, and a tiltable reservoir attached to the reservoir door, respectively. Ans 9. It can be seen from the above annotations that what the Examiner regards as the first and second walls in the Figure 1 reservoir orientation are not the same as what are regarded to be the first and second walls in the Figure 5 reservoir orientation. The first supporting wall in Figure 1 is neither of the first and second walls in Figure 5, and the second supporting wall in Figure 1 is designated as the first supporting wall in Figure 5. Claimed subject matter is anticipated only if the same device, including all the claim limitations, is shown in a single prior art reference. Every element of the claimed invention must be literally present, arranged as 4 Appeal2015-001430 Application 12/811,348 in the claim. Perkin-Elmer Corp. v. Computervision Corp., 732 F.2d 888, 894 (Fed.Cir.), cert. denied, 469 U.S. 857 (1984); Kalman v. Kimberly- Clark Corp., 713 F.2d 760, 771-72 (Fed. Cir. 1983), cert. denied, 465 U.S. 1026 (1984). The Examiner has not established that the Thomson patent meets these criteria. Claim 1 requires first and second supporting walls operating, in one position, as a base and a guard, respectively, and in another position, as a guard and a base. Claim 1 is not so broad as to encompass different supporting walls to act as the first and second supporting walls depending on the position of the shelf, or to have one wall serve as the first supporting wall in one orientation and as the second supporting wall in another orientation. The Examiner's rejection of claim 1, and of claims 2 and 4--7, as being anticipated by Thomson, is not sustained. Claims 3 and 8-12--Unpatentability--Thomson/Samdan The Examiner does not rely on Samdan in any manner that cures the deficiency noted above with respect to the teachings of Thomson. The rejection of claims 2 and 8-12 as being unpatentable over Thomson and Samdan is not sustained. Claims 5 and 6--Indefiniteness Claims 5 and 6 are rejected as being indefinite in that "the first position" in claim 5 and "the second position" in claim 6 lack proper 5 Appeal2015-001430 Application 12/811,348 antecedent basis. Final Act. 3. 1 Appellants do not present arguments directed to the rejection, and have thus waived any such arguments. Accordingly, the rejection is summarily sustained. DECISION The rejection of claims 1, 2, and 4--7 under 35 U.S.C. § 102(b) is reversed. The rejection of claims 3 and 8-12 under 35 U.S.C. § 103(a) is reversed. The rejection of claims 5 and 6 under 35 U.S.C. § 112, second paragraph, is affirmed. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv). AFFIRMED-IN-PART 1 The rejection is not repeated in the Examiner's Answer, but neither is it expressly withdrawn. The Answer includes a statement to the effect that all rejections from the Final Action are maintained on appeal unless listed under a subheading for "Withdrawn Rejections." Accordingly, we view the rejection as pending on appeal. 6 Copy with citationCopy as parenthetical citation