Reichert, Craig Steven.

Patent Trials and Appeals Board

Jun 4, 2020

15481933 - (D) (P.T.A.B. Jun. 4, 2020)

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.
15/481,933 04/07/2017 Craig Steven Reichert 047177-9395-US01 1568
23409 7590 06/04/2020
MICHAEL BEST & FRIEDRICH LLP (Mke)
790 N WATER ST
SUITE 2500
MILWAUKEE, WI 53202
EXAMINER
TADESSE, MARTHA
ART UNIT PAPER NUMBER
3763
NOTIFICATION DATE DELIVERY MODE
06/04/2020 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 CRAIG STEVEN REICHERT

Appeal 2019-002165
Application 15/481,933
Technology Center 3700
____________

Before PHILIP J. HOFFMANN, JAMES A.WORTH, and
CYNTHIA L .MURPHY, Administrative Patent Judges.

MURPHY, Administrative Patent Judge.

DECISION ON APPEAL
The Appellant1 appeals from the Examiner’s rejections of claims 1–20.
We sustain none of the rejections of claims 1–17; and we sustain at least one
of the rejections of claims 18–20. Thus, we AFFIRM IN PART.2

1 The Appellant is the “applicant” (e.g., “the inventor or all of the joint
inventors”) as defined in 37 C.F.R. § 1.42. “The real party in interest is
Hussmann Corporation.” (Appeal Br. 2.)
2 We have jurisdiction over this appeal under 35 U.S.C. § 134(a) and
35 U.S.C. § 6(b).
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Application 15/481,933

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STATEMENT OF CASE
“The present invention relates to refrigerated merchandisers, and more
particularly to doors for refrigerated merchandisers.” (Spec. ¶ 2.)
Illustrative Claim
1. A door for a refrigerated merchandiser including a case
defining a product display area, the door comprising:
a frame;
a first glass pane coupled to the frame and having heat-
absorbing glass, the first glass pane configured to be positioned
adjacent an ambient environment surrounding the refrigerated
merchandiser to absorb radiation from the ambient
environment;
a second glass pane coupled to the frame and configured
to be positioned adjacent the product display area, the second
glass pane having a conductive coating; and
a third glass pane positioned between and spaced from
the first glass pane and the second glass pane, the third glass
pane having a low emissivity coating.

Evidence
Brown US 2,444,976 issued July 13, 1948
Roche US 6,401,399 B1 issued June 11, 2002
Artwohl US 2006/0103269 A1 published May 18, 2006
Roche152 US 2010/0062152 A1 published May 11, 2010
Reichert US 2011/0100044 A1 published May 5, 2011
Declaration Craig S. Reichert signed September 27, 20173

3 “This application is a continuation of U.S. Patent Application 13/186,623,
filed July 20, 2011, which was before the Board as Appeal No. 2015-
001902.” (Appeal Br. 3.) We note the Declaration was filed after this
earlier appeal was decided, and thus the Declaration was not evidence
weighed when reaching our earlier decision.
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Application 15/481,933

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Rejections
I. The Examiner rejects claims 1, 2, 4, 6–8, 11, 12, 14, 16,
and 18–20 under 35 U.S.C. § 103 as unpatentable over Reichert and Brown.
(Final Action 2.)
II. The Examiner rejects claims 3, 5, 9, 10, 13, 15, and 17 under
35 U.S.C. § 103 as unpatentable over Reichert, Brown, and Roche152.
(Final Action 7.)
III. The Examiner rejects claims 1–20 under 35 U.S.C. § 103 as
unpatentable over Roche and Artwohl. (Final Action 10.)
ANALYSIS
Claims 1, 11, and 18 are the independent claims on appeal, with the
rest of the appealed claims depending therefrom. (See Appeal Br., Claims
App.) Independent claim 1 sets forth “[a] door for a refrigerated
merchandiser,” independent claim 11 sets forth “[a] refrigerated
merchandiser” comprising a “door,” and independent claim 18 recites “[a]
method of preventing condensation on a door of a refrigerated
merchandiser.” (Id.)4 The door includes a “first glass pane” that is
positioned, or is configured to be positioned, adjacent to the “ambient
environment.” (Id.)
Independent claims 1 and 11 require the first glass pane to “hav[e]
heat-absorbing glass,” and independent claim 18 requires the step of
“absorbing radiation from the ambient environment and incident on the first
glass pane.” (Appeal Br., Claims App.)

4 According to the Appellant, “[r]efrigerated merchandisers are used by
grocers to store and display food items in a product display area that must be
kept at a predetermined temperature.” (Spec. ¶ 3.)
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Rejections I and II
The Examiner rejects claims 1–20 as being obvious over Reichert and
Brown, alone, or further in view of Roche152. (See Final Action 2, 7.)
When “a structure already known in the prior art [] is altered by the
mere substitution of one element for another known in the field, the
combination must do more than yield a predictable result” in order to be
considered nonobvious. (KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416
(2007).) However, “rejections on obviousness grounds cannot be sustained
by mere conclusory statements; instead, there must be some articulated
reasoning with some rational underpinning to support the legal conclusion of
obviousness.” (Id. at 418.) Thus, such a simple-substitution rationale must
be underpinned by a factual finding that a person of ordinary skill in the art
would have recognized that the proposed substitution would yield a
predictable result. And the record must contain sufficient evidentiary
support for this finding of fact.
The Examiner’s rejections rely upon a determination that it would
have been obvious “to modify the door of Reichert by substituting [a] glass
pane that absorbs radiation as taught by Brown.” (Final Action 3.) Thus,
the Examiner articulates a simple-substitution rationale for the proposed
combination of Reichert and Brown. And the Examiner underpins this
articulated rationale with a factual finding regarding the result yielded by the
proposed substitution. (See id.)
Specifically, the Examiner finds that a person of ordinary skill in the
art would have inferred that the proposed substitution would “reduce the
amount of heat transmitted through the system, thus maintaining the device
cooler by absorbing radiant heat while having a relatively high light
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transmission.” (Final Action 3.)5 Brown provides evidence that, when a
heat-absorbing glass pane is installed in an airplane’s window, this keeps the
airplane “cooler while flying by absorbing radiant heat.” (Brown 1:26–30.)
According to the Examiner, a person of ordinary skill in the art would infer
that a “similar effect” would occur if the heat-absorbing glass pane was
instead installed in the door of a refrigerated merchandiser. (Answer 4.)
The Appellant seems to argue that, because Brown “is in the field of
aviation,” one of ordinary skill in the art would not consider a glass pane
disclosed thereby to be a suitable/predictable substitute for a glass pane in a
refrigerator door. (See e.g., Appeal Br. 8–9.) To the extent that this
argument is being made, it is not persuasive. We agree with the Examiner
that a circumstance could certainly arise in which a person of ordinary skill
in the art would correctly infer that a glass pane used in an aircraft window
is a suitable, and predictable, substitute for a glass pane in a refrigerator
door. (See e.g., Answer 3–5.)
However, in the circumstance at hand, the proposed substitute is a
heat-absorbing glass pane, and the Appellant provides declaratory evidence
that a person of ordinary skill in the art would not consider such a glass pane
to be a suitable/predictable substitute for a glass pane in a refrigerator door.
Specifically, the Declaration explains why, prior to the Appellant’s
invention, one of ordinary skill in the art would have “considered it
undesirable to add heat to any of the glass panels in an uncontrolled manner,

5 The Examiner “need not seek out precise teachings directed to the specific
subject matter of the challenged claim[]” as “the inferences and creative
steps that a person of ordinary skill in the art would employ” can be taken
into account. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007).)
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because this added heat could result in high internal temperatures and greater
refrigeration costs.” (Declaration ¶ 8.)6
The Examiner maintains that the Appellant’s declaratory evidence is
“opinion” and, therefore, not entitled to any evidentiary weight. (Final
Action 21.) Insofar as the Examiner is saying that a declarant’s stance on
the ultimate patentability of a claim does not tilt the evidence scale one way
or the other, we agree. (See In re Chilowsky, 306 F.2d 908, 916 (CCPA
1962).) But “some weight ought to given to a persuasively supported
statement of one skilled in the art on what was not obvious to him.” (In re
Lindell, 385 F.2d 453, 456 (CCPA 1967).) Inasmuch as the Appellant’s
evidence might be outweighed by opposing evidence on the record, the
Examiner makes no attempt to do so.7
Thus, based on the record before us, we do not sustain the Examiner’s
rejection of claims 1, 2, 4, 6–8, 11, 12, 14, 16, and 18–20 as obvious over
Reichert and Brown; and we do not sustain the Examiner’s rejection of
claims 3, 5, 9, 10, 13, 15, and 17 as obvious over Reichert, Brown, and
Roche152.
Rejection III
The Examiner rejects claims 1–20 as being obvious over Roche and
Artwohl. (See Final Action 10.)

6 There seems to be no dispute that the Declaration qualifies the declarant as
“a person of at least ordinary skill in the art of merchandiser design and
construction.” (Declaration ¶ 1.)
7 The Examiner maintains that the Appellant’s Declaration does not establish
“skepticism by experts.” (Answer 21.) However such skepticism is not
necessary to call into question whether the Examiner’s factual finding
regarding predictability is sufficiently supported by the record.
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A rejection on obvious grounds cannot be sustained when a proposed
combination of the prior art, “even if supported by a motivation to
combine,” does not possess all of the elements required by a claim. (CFMT,
Inc. v. Yieldup Int’l Corp., 349 F.3d 1333, 1342 (Fed. Cir. 2003).) Thus,
when a claimed element has an explicit definition set forth in the
specification, the proposed combination of the prior art must possess an
element satisfying this definition. (See e.g., Toro Co. v. White Consolidated
Industries Inc., 199 F.3d 1295, 1301 (Fed. Cir. 1999).)
As for claims 1–17, this rejection relies upon a determination that
Artwohl teaches a glass pane having “heat absorbing glass” as required by
the claim language. (Final Action 11.) The Examiner maintains that there is
“no requirement in the claims language” that the heat absorbing glass be
“specifically constructed” and/or “include[] glass containing quantities of
ferrous iron or other material selected.” (Answer 12.) However, the
Specification explicitly defines the claim term “heat absorbing glass” in this
manner. (Spec. ¶ 18.) And the Examiner does not maintain that Artwohl
teaches a glass pane satisfying this definition. Indeed, in Artwohl, heat
absorption is accomplished by applying a “low emissivity soft coating” to
the surface of a glass pane. (Artwohl ¶ 25.)
As for claims 18–20, they rely upon a determination that Artwohl
teaches the heat absorbing step (“absorbing radiation from the ambient
environment and incident on the first glass pane”) required by the claim
language. The Appellant argues Artwohl “does not teach or suggest using a
glass pane to absorb radiation from the ambient environment.” (Appeal
Br. 14.) However, the Appellant does not adequately address why Artwohl
fails to perform this step (albeit without specifically-constructed glass) when
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Artwohl prevents condensation on a glass pane’s surface by “capturing the
transmission of such non-visible wavelengths.” (Artwohl ¶ 20.)
Thus, in light of the record before us, we do not sustain the
Examiner’s rejection of claims 1–17 as obvious over Roche and Artwohl,
but we do sustain the Examiner’s rejection of claims 18–20 as obvious over
Roche and Artwohl.
CONCLUSION

Claims
Rejected
35 U. S. C.
§
Reference(s)/Basis Affirmed Reversed
1, 2, 4, 6–8,
11, 12, 14,
16, 18–20
103 Reichert, Brown 1, 2, 4,
6–8, 11,
12, 14, 16,
18–20
3, 5, 9, 10,
13, 15, 17
103 Reichert, Brown,
Roche152
3, 5, 9, 10,
13, 15, 17
1–20 103 Roche, Artwohl 18–20 1–17
Overall
Outcome
18–20 1–17

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED IN PART