Ex Parte Seeley et al

Patent Trial and Appeal Board

Sep 22, 2017

13832428 (P.T.A.B. Sep. 22, 2017)

United States Patent and Trademark Office
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
13/832,428 03/15/2013 Michael S. Seeley SUB-02925-A-US-CIP 2141
173 7590 09/26/2017
WHIRLPOOL CORPORATION - MD 3601
2000 NORTH M63
BENTON HARBOR, MI 49022
EXAMINER
BADER, ROBERT N.
ART UNIT PAPER NUMBER
2614
NOTIFICATION DATE DELIVERY MODE
09/26/2017 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):
whirlpool_patents_co@whirlpool.com
mike_lafrenz @ whirlpool .com
deborah_tomaszewski@whirlpool.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MICHAEL S. SEELEY and KIRK W. GOODWIN
Appeal 2017-006659
Application 13/832,428
Technology Center 2600
Before JAMES R. HUGHES, JOHNNY A. KUMAR, and
JOHN P. PINKERTON, Administrative Patent Judges.
KUMAR, Administrative Patent Judge.
DECISION ON APPEAL
Appeal 2017-006659
Application 13/832,428
STATEMENT OF THE CASE
Appellants1 appeal under 35 U.S.C. § 134(a) from a Final Rejection of
claims 1—9 and 11. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
Rather than reiterate the arguments of Appellants and the Examiner,
we refer to the Final Office Action (“Final Act.,” mailed Apr. 7, 2016), the
Appeal Brief (“App. Br.,” filed Sept. 7, 2016), the Examiner’s Answer
(“Ans.,” mailed Jan. 20, 2017), and Appellants’ Reply Brief (“Reply Br.,”
filed Mar. 17, 2017). We have considered in this decision only those
arguments Appellants actually raised in the Briefs. Any other arguments
which Appellants could have made, but chose not to make in the Briefs are
deemed to be waived. See 37 C.F.R. § 41.37(c)(l)(iv).
Exemplary Claim
An understanding of the invention can be derived from a reading of
illustrative claim 1, which is reproduced below:
1. An interactive system for use with a wine cabinet or rack
to hold bottles of wine, comprising:
a scanning device configured to identify a bottle of wine
meeting a search criterion and located in the cabinet or rack;
a wine database, wherein the wine database contains
information about a plurality of wines;
an image database, wherein the image database contains
a plurality of images, where an image is associated with the
bottle of wine;
1 Appellants identify Whirlpool Corporation as the real party in interest.
App. Br. 3.
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Application 13/832,428
a display device configured to display information from
the wine database and/or the image database to facilitate
identification of the bottle of wine; and
a communications device configured to send information
associated with the bottle of wine to the cabinet or rack to form
a first indicator on a transparent door of the cabinet or rack
showing a physical location the bottle of wine in the cabinet or
rack, wherein the image stored in the image database is less
than a full image of a wine bottle, and when the image is to be
displayed by the display device, a rendering of a full image of
the bottle is shown by the display device by filling in the less
than the full image of the bottle with a virtual rendering.
Rejections
Claims 1—9 and 11 are rejected under 35U.S.C. § 112, first
paragraph, as failing to comply with the written description requirement.
Final Act. 4—5.
Claims 1—9 and 11 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Griffits,2 Robertson,3 Kjallstrom,4 and Bier.5 Final Act.
5-24.
ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellants’
contentions that the Examiner has erred. Further, we have reviewed the
Examiner’s response to representative claims 1, 8, 9, and 11 that have been
argued by the Appellants.
2 US 2007/0191983 A1 (Aug. 16, 2007).
3 US 2006/0164333 A1 (July 27, 2006).
4 US 2002/0010655 A1 (Jan. 24, 2002).
5 Eric A. Bier & Kenneth R. Sloan, Two-Part Texture Mappings, IEEE
Computer Graphics and Applications, Vol. 6, Issue 9, 40-53 (Sept. 1986).
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Application 13/832,428
Rejection under 35 U.S.C. §112
Appellants argue on pages 4—7 of the Appeal Brief, and pages 2—3 of
the Reply Brief, that the Examiner’s rejection under 35 U.S.C. § 112, first
paragraph, is in error. This argument presents us with the issue: did the
Examiner err in finding that the originally filed Specification demonstrates
that the Appellants possessed the limitation “wherein the image stored in the
image database is less than a full image of a wine bottle, and when the image
is to be displayed by the display device, a rendering of a full image of the
bottle is shown by the display device by filling in the less than the full image
of the bottle with a virtual rendering” (hereinafter “disputed limitation”) as
recited in exemplary independent claim 1?
We have reviewed Appellants’ arguments in the Briefs, the
Examiner’s rejection, and the Examiner’s response to Appellants’
arguments. We agree with Appellants’ arguments that the Examiner erred in
finding the originally filed Specification fails to demonstrate that Appellants
possessed the disputed limitation. Appellants cite to originally filed claim
106 and Figure 17 of the originally filed Specification as evidence that
Appellants possessed the disputed limitation. App. Br. 5—6; Reply Br. 2—3.
6 Originally filed claim 10 recites:
The sy stem of claim 1 wherein an image stored in the
image database is less than a full image of a wine bottle, and
when the wine bottle is displayed by the display device, a
rendering of a full bottle is shown by the display device by the
filling in the missing image of the bottle with a virtual
rendering, wherein such virtual rendering is either done by an
image database device or by the display device.
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Application 13/832,428
We concur and do not sustain the Examiner’s rejection of claims 1—9 and 11
under 35 U.S.C. § 112 first paragraph.
Rejection under 35 U.S.C. § 103 - Claims 1, 8, 9, and 11
Based on Appellants’ arguments in the briefs (App. Br. 7—11; Reply
Br. 3—4), the principal and dispositive issue of whether the Examiner erred
in rejecting claim 1 turns on whether the combination of Griffits, Robertson,
Kjallstrom, and Bier teaches the above disputed limitation (App. Br. 9).
In particular, Appellants contend:
[Ejach of the applied references pertains to a different field of
endeavor: Griffits discloses wine cellars and containers with
various LED indicators; Robertson discloses transparent
programmable LED display panels; Kjallstrom discloses an
interactive display system showing various three dimensional
products to a user, wherein the display system may be browser
based and seen on a user’s computer, or may be an in-store
terminal type display; and finally Bier discloses a mathematical
technique for projecting/mapping a two dimensional pattern onto
a three dimensional surface. Furthermore, none of the
secondary references address the problems faced by the inventor
of rendering images of wine bottles. To arrive at the
combination, it is submitted that the Examiner is simply using
the benefit of hindsight to cite various references for different
bits and pieces of the claims, shown at least by the fact that four
references pertaining to different subject matter have been
combined to reject a single claim.
App. Br. 8 (emphasis ours).
We disagree with Appellants’ conclusions. We adopt as our own
(1) the findings and reasons set forth by the Examiner in the action from
which this appeal is taken and (2) the reasons set forth by the Examiner in
the Examiner’s Answer (Ans. 6—17) in response to Appellants’ Appeal Brief
(App. Br. 7—12). We concur with the conclusions reached by the Examiner.
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Application 13/832,428
However, we highlight and address specific findings for emphasis as
follows.
The Examiner relies upon Robertson for the “indicator on a
transparent door” limitation; Kjallstrom and Bier for the disputed limitation;
and on Griffits for the remaining limitations of claim 1. Final Act. 6—17;
Ans. 7—14. We agree with the Examiner’s findings and adopt them as our
own.
We also disagree with Appellants’ argument that the proposed
combination of Griffits, Robertson, Kjallstrom, and Bier is motivated by
impermissible hindsight. We are cognizant that our reviewing courts have
not established a bright-line test for hindsight. The U.S. Supreme Court
guides that “[a] factfinder should be aware, of course, of the distortion
caused by hindsight bias and must be cautious of arguments reliant upon ex
post reasoning.” KSRInt’l Co. v. Teleflex, Inc., 550 U.S. 398, 421 (2007)
(citing Graham v. John Deere Co. of Kansas City, 383 U.S. 1, 36 (1966)).
Nevertheless, the Court has also qualified the issue of hindsight by stating
“[rjigid preventative rules that deny factfinders recourse to common sense,
however, are neither necessary under our case law nor consistent with it.”
KSR, 550 U.S. at 421.
In the present case, we see the hindsight question before us as a
balancing test, specifically balancing whether: (1) the Examiner’s proffered
combination of references is merely “the predictable use of prior art
elements according to their established functions” (KSR, 550 U.S. at 417),
consistent with common sense; or (2) an artisan would not have reasonably
combined the cited references in the manner proffered by the Examiner but
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for having the benefit of the claim to use as a guide (i.e., impermissible
hindsight).
After reviewing the respective teachings and suggestions of the cited
references, we find the preponderance of the evidence shows the proffered
combination is merely a predictable use of prior art elements according to
their established functions. We further note Appellants have not provided
any objective evidence of secondary considerations, which our reviewing
court guides, “operates as a beneficial check on hindsight.” Cheese Systems,
Inc. v. Tetra Pak Cheese and Powder Systems, Inc., 725 F.3d 1341, 1352
(Fed. Cir. 2013). Therefore, on this record, we are not persuaded the
Examiner engaged in impermissible hindsight, as Appellants contend. App.
Br. 8. Moreover, Appellants have not demonstrated the Examiner’s
proffered combination of references would have been “uniquely challenging
or difficult for one of ordinary skill in the art.” Leapfrog Enters., Inc. v.
Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007) (citing KSR, 550
U.S. at 418).
For the reasons set forth above, we agree with the Examiner (Ans. 13)
that the combination of Griffits, Robertson, Kjallstrom, and Bier would have
taught or suggested all of the contested limitations of representative claim 1
to one of ordinary skill in the art.
Regarding claims 8, 9, and 11, while Appellants raise additional
arguments for patentability of these claims (App. Br. 11—12), we find the
Examiner has responded in the Answer to each and every one of those
arguments with sufficient evidence. Ans. 14—17. Therefore, we adopt the
Examiner’s findings and underlying reasoning, which are incorporated
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herein by reference. Consequently, we find no error in the Examiner’s
rejection of claims 1—9 and 11.
CONCLUSION
We sustain the Examiner’s rejection of claims 1—9 and 11 under
35 U.S.C. § 103(a). We do not sustain the Examiner’s rejection of claims 1—
9 and 11 under 35 U.S.C. § 112.
DECISION
The decision of the Examiner rejecting claims 1—9 and 11 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
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