Ex Parte Navarro et al

Patent Trial and Appeal Board

Jul 11, 2018

14036819 (P.T.A.B. Jul. 11, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/036,819 09/25/2013
23409 7590 07/13/2018
MICHAEL BEST & FRIEDRICH LLP (Mke)
100 E WISCONSIN A VENUE
Suite 3300
MILWAUKEE, WI 53202
UNITED ST A TES OF AMERICA
FIRST NAMED INVENTOR
Moisses Navarro
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.
047177-9411-USOl 7643
EXAMINER
MENDOZA-WILKENFE, ERIK
ART UNIT PAPER NUMBER
3744
NOTIFICATION DATE DELIVERY MODE
07/13/2018 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):
mkeipdocket@michaelbest.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MOISSES NAVARRO, DIEGO WOOD,
RAYMOND P. TWOHY, KEVIN A. MOODY,
MICHAEL A. GILLET, ANAND GANESH RAJAGOPALAN,
ROBERT MULLEN, and AL ARROSAGARA Y 1
Appeal2017-005709
Application 14/03 6,819
Technology Center 3700
Before CHARLES N. GREENHUT, MICHELLE R. OSINSKI, and
ERIC C. JESCHKE, Administrative Patent Judges.
OSINSKI, Administrative Patent Judge.
DECISION ON APPEAL
1 Hussmann Corporation ("Appellant") is the Applicant as provided in
37 C.F.R. § 1.46 and is identified as the real party in interest. Appeal Br. 2.
Appeal2017-005709
Application 14/036,819
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner's
decision rejecting claims 1-12, 14--16, and 19-22.2 We have jurisdiction
under 35 U.S.C. § 6(b).
We AFFIRM.
THE CLAIMED SUBJECT MATTER
Claims 1, 11, and 16 are independent. Claim 1, reproduced below, is
illustrative of the claimed subject matter on appeal.
1. An island merchandiser comprising:
a first merchandiser module including a first case having
side walls and a rear wall at least partially defining a first product
display area, and at least a portion of a refrigeration system
coupled to the case and including an evaporator in
communication with the first product display area to maintain the
first product display area within a predetermined temperature
range below approximately 41 degrees Fahrenheit such that the
first merchandiser module defines one of a medium temperature
module and a low temperature module;
a second merchandiser module positioned next to the first
merchandiser module, the second merchandiser module
including a second case having side walls and a rear wall at least
partially defining a second product display area, the rear wall of
the second case in communication with the rear wall of the first
case so that the first merchandiser module and the second
2 "Claim 13 is objected to as being dependent upon a rejected base claim,
but would be allowable if rewritten in independent form including all of the
limitations of the base claim and any intervening claims." Final Act. 26.
Appellant and the Examiner indicate that claims 17 and 18 are rejected and
on appeal. Appeal Br. 11-12; Final Act. 1. However, we find no rejection
of claims 17 and 18 in the Final Action. Thus, we do not consider claims 1 7
and 18 to be involved in this appeal.
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merchandiser module are positioned in a back-to-back
relationship, the second merchandiser module defining one of a
high temperature module, an ambient temperature module, a
medium temperature module, and a low temperature module; and
a single, unitary base positioned to at least partially
support each of the first and second merchandiser modules
relative to a support surface,
wherein the module defined by the second merchandiser
module is different from the module defined by the first
merchandiser module.
EVIDENCE
The Examiner relied on the following evidence in rejecting the claims
on appeal:
Graat US 5,626,028 May 6, 1997
Martin US 2004/0031280 Al Feb. 19, 2004
Yamazaki US 2004/0177634 Al Sept. 16, 2004
Keller US 2007/0119113 Al May 31, 2007
Swofford US 2010/0313588 Al Dec. 16, 2010
Hill Phoenix, Installation & Operation Handbook, Meat Cases, Rev. 5,
Aug. 2009 (hereinafter "Hill Phoenix")
THE REJECTIONS
I. Claims 1, 3-5, 7, 8, 11, 12, 14, 16, and 20-22 3 stand rejected under
35 U.S.C. § I03(a) as unpatentable over Hill Phoenix, Martin, and
Keller. Final Act. 3-19.
3 Claim 20 is not listed in the heading of this ground of rejection (Final Act.
3) but is addressed in the body of the rejection (id. at 18-19). Appellant
acknowledges that claim 20 is subject to a ground of rejection. Appeal Br.
7. The Examiner's inclusion of claim 15 in the body of this ground of
rejection (Final Act. 14) appears to be a typographical error because the
rejection of claim 15 in Rejection IV (id. at 24--26) more fully addresses the
claimed subject matter (Appeal Br. 16 (Claims App.)).
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II. Claims 2, 6, 10,4 and 19 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Hill Phoenix, Martin, Keller, and Swofford. Id.
at 20-22, 23-24.
III. Claim 9 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over Hill Phoenix, Martin, Keller, and Graat. Id. at 22-23.
IV. Claim 15 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over Hill Phoenix, Martin, Keller, and Yamazaki. Id. at 24--26.
OPINION
Rejection I
Claims 1, 3, 4, 5, 7, and 8
Appellant argues claims 1, 3, 4, 5, 7, and 8 as a group. Appeal Br. 8.
We select claim 1 as the representative claim, and claims 3, 4, 5, 7, and 8
stand or fall therewith. 37 C.F.R. § 4I.37(c)(l)(iv).
The Examiner finds that Hill Phoenix discloses most of the limitations
of independent claim 1, including first and second merchandiser modules.
The Examiner acknowledges that Hill Phoenix "does not explicitly teach a
single, unitary base positioned to at least partially support each of the first
and second merchandiser modules relative to a support surface." Final
Act. 7. 5 The Examiner finds that "Keller teaches using a single, unitary
4 Even though the Examiner does not specifically identify Keller as being
part of the rejection of claim 10 (Final Act. 23), the rejection refers to claim
10 as unpatentable over Hill Phoenix and Martin "as applied to claim 1" and
the rejection of claim 1 includes Keller (id. at 3).
5 The Examiner also acknowledges that Hill Phoenix fails to teach a
refrigeration system coupled to a case of the first merchandiser module or
that the first and second merchandiser modules are maintained at any
particular temperatures. Final Act. 4--6. The Examiner turns to Martin for
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base ... positioned to at least partially support and elevate a merchandise
module relative to a support surface (the ground)." Id. ( citing Keller ,r 59).
The Examiner concludes that it would have been obvious to "us[ e] a single,
unitary base support as an alternative base" for the island merchandiser of
Hill Phoenix to provide "the predictable result of elevating the island
merchandiser relative to the ground or floor ... which would be beneficial
for raising the island merchandiser to bring food products closer to patrons
using the island merchandiser." Id. See also id. at 27 ("[T]he sole purpose
of modifying Hill-Phoenix by including a single unitary base was to elevate
the island merchandiser, which is plainly taught by Keller. Elevating the
display case can be beneficial to make the display case be raised to a desired
height that would be ergonomically preferred for people of different
heights.").
The Examiner further explains that "the single unitary base would
obviously be needed under both the first and second merchandiser modules
in order to keep each merchandiser module at the same level since Hill
Phoenix teaches that the modules are connected to each other." Ans. 27-28
(citing Hill Phoenix cover). According to the Examiner, "if the entirety of
the island merchandiser ( combination of the first and second merchandiser
modules) is considered a single display case, then the claim language is met
in view of Keller." Id. at 27.
Appellant argues that "Hill Phoenix teaches that each of the
merchandising sections includes a separate base, or a one-to-one relationship
these teachings and concludes that it would have been obvious to modify
Hill Phoenix in accordance with the teachings of Martin. Id. Appellant does
not challenge the Examiner's findings and conclusions with respect to
Martin.
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between the pedestals and the cases" and that Keller's stand 15 for
supporting display case lOA "can be a unitary structure such as a pedestal or
platform (i-f 59), [but] the unitary structure still only supports a single display
case." Appeal Br. 8. Appellant subsequently argues that the Examiner has
not adequately explained what would have led one of ordinary skill in the art
to "modify Hill Phoenix to include more than one merchandiser on a unitary
base when Hill Phoenix and Keller explicitly teach a one-to-one relationship
between a display case and a base that supports the display case." Id. at 9;
see also Reply Br. 3 ("[A] further modification is needed to go from the one-
to-one base per display case relationship taught by Hill Phoenix, Martin, and
Keller to the claimed invention, which is directed in part to a on[ e] base per
multiple display case relationship."). Appellant continues that "[n]eeding to
raise a merchandiser off the ground, which is not discussed in Hill Phoenix
or Martin, would not infer that multiple units could be attached to a single
base." Appeal Br. 9.
We are not persuaded of error by the Examiner. Appellant
acknowledges that "Hill Phoenix teaches that the merchandiser units are
shipped in an assembled state with each of the individual cases having its
own baseframe." Appeal Br. 10. The assembled nature of the merchandiser
units of Hill Phoenix supports that they would be treated like a single display
when being raised off the ground through the addition of a unitary base
structure in accordance with the teachings of Keller. See, e.g., Hill Phoenix
11. As explained by the Examiner, even though the assembled structure
comprises multiple modules assembled together, the fact that the modules
are assembled together would have led one of ordinary skill in the art to
place the entire assembly (i.e., the assembled structure comprising multiple
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modules) at the same height on a single base. See Ans. 27-28. Accordingly,
we find the Examiner to have provided reasoning with rational underpinning
to explain why one of ordinary skill in the art would have been led to attach
a unitary base structure to the assembled structure of Hill Phoenix. That
each of the modules might have their own baseframe does not prevent the
positioning of a unitary base structure as taught by Keller to support the
plurality of modules after they have been assembled together. 6
We have also considered Appellant's argument that none of the
references describe elevating the merchandiser cases for ergonomic reasons.
Reply Br. 3. In particular, Appellant asserts that "Keller does not even
mention ergonomics" and that the Examiner's position "ignores the fact that
Hill Phoenix's merchandiser already has display cases that are already
elevated via respective bases as shown below." Id. at 4. Appellant also
asserts that "[ n ]othing has been identified by the Examiner that shows the
current height of Hill Phoenix's display cases is ergonomically unsuitable
for the intended use, or that elevating the merchandisers further would
provide an ergonomic advantage over the current height." Id. at 5.
The reasoning supporting the legal conclusion of obviousness need
not come directly from the references themselves. See Perfect Web Tech.,
Inc. v. InfoUSA, Inc., 587 F.3d 1324, 1329 (Fed. Cir. 2009) ("while an
analysis of obviousness always depends on evidence ... it also may include
6 We note that Appellant's Specification contemplates that, in some
constructions, a "unitary base 340 may be attached to each merchandiser
module ... after assembly next to each other." Spec. ,r 50. Consequently,
the Examiner's rejection based on positioning a unitary base under an
assembled structure in order to support the assembled structure is not
inconsistent with how a "unitary base" is interpreted in light of the
Specification.
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Application 14/036,819
recourse to logic, judgement, and common sense available to the person of
ordinary skill that do not necessarily require explication in any reference");
see also KSR Int 'l Co. v. Teleflex, Inc, 550 U.S. 398, 418 (2007) ("the
[obviousness] analysis need not seek out precise teachings directed to the
specific subject matter of the challenged claim, for a court can take account
of the inferences and creative steps that a person of ordinary skill in the art
would employ"). Despite the lack of explicit reference to "ergonomics" in
the cited prior art, we find such reasoning by the Examiner to have rational
underpinning; the Examiner has adequately explained the logical benefit to
elevating display cases relative to the ground or floor.
Moreover, Appellant's argument implies that unless Hill Phoenix
indicates a defect with its merchandiser, or alleges a disadvantage associated
with its merchandiser, that there would be no reason why one of ordinary
skill in the art would have been led to modify it. We find this argument
unpersuasive. It is not necessary for a determination of obviousness that the
reference being modified recognizes or acknowledges a deficiency with its
own design in order for one of ordinary skill in the art to have been led to
modify or improve it. As noted by the Court in KSR, "if a technique has
been used to improve one device, and a person of ordinary skill in the art
would recognize that it would improve similar devices in the same way,
using the technique is obvious unless its actual application is beyond that
person's skill." 550 U.S. at 401.
For the foregoing reasons, Appellant does not show error by the
Examiner in concluding that claim 1 is rendered obvious by Hill Phoenix,
Martin, and Keller. We sustain the rejection of claim 1, and claims 3, 4, 5,
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7, and 8 falling therewith, under 35 U.S.C. § 103(a) as unpatentable over
Hill Phoenix, Martin, and Keller.
Claims 11, 12, and 14
Appellant argues claims 11, 12, and 14 as a group. Appeal Br. 10-11.
We select claim 11 as the representative claim, and claims 12 and 14 stand
or fall therewith.
In addition to relying on the same arguments that we found
unpersuasive in connection with independent claim 1 (Appeal Br. 10-11),
Appellant argues that "[t]here is no objective reason ... why one of ordinary
skill in the art would modify what is taught in Hill Phoenix to include the
steps of attaching three different merchandisers to a unitary base" (id.). We
are not persuaded by this argument in that the claimed steps of positioning
first, second, and third merchandiser modules in a unitary base would
necessarily occur when combining the teachings of Hill Phoenix and Keller
in accordance with the Examiner's rejection. Final Act. 11-12. The
language of claim 11 does not preclude the Examiner from relying on Hill
Phoenix's teaching of initially attaching first, second, and third merchandiser
modules together and subsequently positioning the assembly (made up of the
first, second, and third merchandiser modules) into a single, unitary base, in
accordance with the teachings of Keller and as proposed by the Examiner in
the rejection (id.). See Interactive Gift Express, Inc. v. CompuServe, Inc.,
256 F.3d 1323, 1342 (Fed. Cir. 2001) ("Unless the steps of a method
actually recite an order, the steps are not ordinarily construed to require one.
However, such a result can ensue when the method steps implicitly require
that they be performed in the order written."). Appellant has not explained,
nor do we independently discern, where the claim language or the
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Specification, as a matter of logic or grammar, requires the first, second, and
third modules be positioned separately in the single, unitary base (before
being oriented relative to each other), as opposed to positioning them as an
attached assembly (in which the modules are first oriented relative to each
other).
For the foregoing reasons, Appellant does not show error by the
Examiner in concluding that claim 11 is rendered obvious by Hill Phoenix,
Martin, and Keller. We sustain the rejection of claim 11, and claims 12 and
14 falling therewith, under 35 U.S.C. § 103(a) as unpatentable over Hill
Phoenix, Martin, and Keller.
Claims 16 and 20-22
Appellant argues claims 16 and 20-22 as a group. Appeal Br. 11-12.
We select claim 16 as the representative claim, and claims 20-22 stand or
fall therewith.
In addition to relying on the same arguments that we found
unpersuasive in connection with independent claim 1 (Appeal Br. 11-12),
Appellant argues that "[t]here is no objective reason ... why one of ordinary
skill in the art would modify the Hill Phoenix merchandiser unit to include a
unitary base that at least partially supports three different-temperature
modules on a support surface" (id.). We are not persuaded by this argument
in that the Examiner has adequately explained how Hill Phoenix teaches
three different merchandiser modules assembled together and how one of
ordinary skill in the art would have been led to elevate the assembled
structure off the ground with a unitary structure as taught by Keller. Final
Act. 14--18.
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For the foregoing reasons, Appellant does not show error by the
Examiner in concluding that claim 16 is rendered obvious by Hill Phoenix,
Martin, and Keller. We sustain the rejection of claim 16, and claims 20-22
falling therewith, under 35 U.S.C. § 103(a) as unpatentable over Hill
Phoenix, Martin, and Keller.
Re} ections II-IV
In contesting the rejection of claims 2, 6, 9, 10, 15, and 19, Appellant
relies on the same arguments and reasoning we found unpersuasive in
connection with independent claims 1, 11, and 16. See Appeal Br. 10-12.
Accordingly, we also sustain the rejections, under 35 U.S.C. § 103(a), of:
claims 2, 6, 10, and 19 as unpatentable over Hill Phoenix, Martin, Keller,
and Swofford; claim 9 as unpatentable over Hill Phoenix, Martin, Keller,
and Graat; and claim 15 as unpatentable over Hill Phoenix, Martin, Keller,
and Yamazaki.
DECISION
The Examiner's decision to reject claims 1, 3, 4, 5, 7, 8, 11, 12, 14,
16, and 20-22 under 35 U.S.C. § 103(a) as unpatentable over Hill Phoenix,
Martin, and Keller is affirmed.
The Examiner's decision to reject claims 2, 6, 10, and 19 under
35 U.S.C. § 103(a) as unpatentable over Hill Phoenix, Martin, Keller, and
Swofford is affirmed.
The Examiner's decision to reject claim 9 under 35 U.S.C. § 103(a) as
unpatentable over Hill Phoenix, Martin, Keller, and Graat is affirmed.
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The Examiner's decision to reject claim 15 under 35 U.S.C. § 103(a)
as unpatentable over Hill Phoenix, Martin, Keller, and Yamazaki 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). See 37 C.F.R.
§ 1.136(a)(l )(iv).
AFFIRMED
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