Seonil Yu et al.

Patent Trials and Appeals Board

Apr 2, 2020

13501491 - (D) (P.T.A.B. Apr. 2, 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.
13/501,491 04/12/2012 Seonil Yu 20519-0135US1 1724
26171 7590 04/02/2020
FISH & RICHARDSON P.C. (DC)
P.O. BOX 1022
MINNEAPOLIS, MN 55440-1022
EXAMINER
TANENBAUM, TZVI SAMUEL
ART UNIT PAPER NUMBER
3763
NOTIFICATION DATE DELIVERY MODE
04/02/2020 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):
PATDOCTC@fr.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte SEONIL YU, KYEONGCHUL CHO,
INSUN YEO, and HONGSIK KWON
___________

Appeal 2018-003786
Application 13/501,491
Technology Center 3700
____________

Before ANNETTE R. REIMERS, GEORGE R. HOSKINS, and
SEAN P. O’HANLON, Administrative Patent Judges.

REIMERS, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE

Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
decision to reject claims 63–68, 70, 71, 73, and 103–113. Claims 1–62, 69,
72, and 74–102 have been canceled. We have jurisdiction under 35 U.S.C.
§ 6(b).
We AFFIRM IN PART.

1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R.
§ 1.42. Appellant identifies the real party in interest as LG Electronics Inc.
Appeal Brief (“Appeal Br.”) 1, filed Oct. 2, 2017.

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CLAIMED SUBJECT MATTER
The claimed subject matter relates to a refrigerator. Spec. ¶ 1, Figs. 5,
7, 8. Claim 63, the sole independent claim on appeal, is representative of the
claimed subject matter and recites:
63. A refrigerator door, comprising:
an outer case formed of a metal plate and constituting an
exterior of the refrigerator door, the outer case comprising:
a front part;
a first cut part formed by a cutting portion of the
front part at a position that is spaced apart from an upper
end of the outer case; and
a rounded part formed from the first cut part,
wherein both side edge portions of the rounded part are
formed in a manner that a portion of the front part is curved
to define a recess to receive a container;
an upper decor covering the first cut part; and
a water dispensing pipe positioned behind the front part of
the outer case and extending to pass through the first cut part.

REJECTIONS
I. Claims 107 and 110 stand rejected under 35 U.S.C. § 112, second
paragraph, as indefinite.
II. Claims 63, 64, 73, 110, and 111 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over Lu (WO 2010/023090 A2, published
Mar. 4, 2010).2

2 The Examiner states that “[t]he 103(a) rejections . . . are based on WIPO
Publication No. 2010/023090. The rejections rely on the specification[]
disclosed in [Lu] (US 2011/0139817[ A1, published June 16, 2011]). This
translation is deemed to comply with the translation requirements of MPEP
section 1207.02.” Final Office Action (“Final Act.”) 4, dated Mar. 9, 2017.
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III. Claims 65, 67, 68, 112, and 113 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over Lu and Jung (US 2004/0182103 A1,
published Sept. 23, 2004).
IV. Claims 66 and 104 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Lu, Jung, and Yang (US 2010/0319388 A1,
published Dec. 23, 2010).
V. Claims 70, 71, 105, 108, and 109 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over Lu and Park (US 2008/0120987 A1,
published May 29, 2008).
VI. Claim 103 stands rejected under 35 U.S.C. § 103(a) as
unpatentable over Lu and Buchstab (US 2009/0044560 A1,
published Feb. 19, 2009).
VII. Claims 106 and 107 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Lu, Park, and Kim (US 2009/0249818 A1,
published Oct. 8, 2009).

ANALYSIS
Indefiniteness3
Claim 107
Claim 107 recites “the electronic part includes the LED lighting device
and the switch.” Appeal Br. 17 (Claims App.). The Examiner determines

All references to Lu in this decision are to the US publication.
3 Appellant contends that an amendment filed concurrently with the Appeal
Brief canceled claims 107 and 110. See Appeal Br. 2. However, the
Examiner notes in the Answer that “no amendment has been filed
concurrently” with the Appeal Brief. See Examiner’s Answer (“Ans.”) 3,
dated Dec. 15, 2017.
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that “claim 106, from which claim 107 depends, recites that the electronic
part only includes at least one of an LED lighting device or a switch.” Final
Act. 3. Thus, “claim 107 relies upon a component (e.g. an LED lighting
device or a switch) that may or may not be required in claim 106. Therefore,
there is insufficient antecedent basis for this limitation in the claim.” Id. at
3–4.
We disagree with the Examiner’s position that the limitation of claim
107 lacks proper antecedent basis from claim 106. See id. Claim 106 recites
“the electronic part includes at least one of an LED lighting device or a
switch.” Appeal Br. 17 (Claims App.) (emphasis added). Stated differently,
the above-cited limitation means that the electronic part includes one or
more of an LED lighting device or one or more of a switch. See id. Claim
107 further limits claim 106 by requiring the electronic part to include both
“the LED lighting device and the switch.” See id. (emphasis added); see
also 35 U.S.C. § 112(d).
Accordingly, we do not sustain the Examiner’s rejection of claim 107
for indefiniteness.
Claim 110
Claim 110 recites “the recess has a depth corresponding to a diameter
of the water dispensing pipe.” Appeal Br. 17 (Claims App.). The Examiner
determines that “the recitation corresponding renders claim 110 indefinite as
it is unclear how exactly the metes and bounds of claim 110 is defined by the
term corresponding.” Final Act. 4; see also Ans. 9 (“The recitation
corresponding provides no direction as to the [metes] and bounds of claim
110, as it is unclear what depth of the recess would correspond to a diameter
of the water dispensing pipe.”). The Examiner also takes the position that
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“the term depth is broadly interpreted to refer to any direction within which
the diameter of the water dispensing pipe can fit within.” Final Act. 4; see
also Ans. 9.
Appellant contends that as to the term “corresponding to,” “the
Examiner interprets this term to mean that ‘the diameter of the water
dispensing pipe can fit within a depth of the recess’” and that “[t]his
construction is unreasonably broad in light of how the term ‘corresponding
to’ is used in the [S]pecification.” Reply Br. 5 (citing Ans. 9); see also Final
Act. 4.4
Appellant has the better position here. Appellant correctly points out
that throughout the Specification the term “corresponding to” is consistently
used to mean “having the same (or nearly the same) size.” See Reply Br. 5–
8, 10. For example, the Specification describes that “[t]he sub door 200
opens and closes the storage members 314, and has a size corresponding to
the opening 320,” which as shown in Figure 3 of the subject application
“means that the sub door 200 and the opening 320 have the same (or nearly
the same) size.” See Spec. ¶ 49 (emphasis added); see also Reply Br. 6
(Appellant’s annotated version of Figure 3 of the subject application). The
Specification further describes that “[t]he sub door 200 may have a width
corresponding to the display 28 disposed in the lower end of the freezer door
22,” which as shown in Figure 1 of the subject application means that “the
sub door 200 and the display 28 have the same (or nearly the same) width.”
See Spec. ¶ 54 (emphasis added); see also Reply Br. 6 (Appellant’s
annotated version of Figure 3 of the subject application).

4 Reply Brief (“Reply Br.”), filed Feb. 15, 2018.
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As to the limitation recited in claim 110, the Specification describes
that “[t]he recess 430 may have a depth corresponding to the diameter of the
dispensing member 440,” which as shown in Figure 8 of the subject
application means that the depth of recess 430 is the same (or nearly the
same) as the diameter of dispensing member 440. See Spec. ¶ 74 (emphasis
added); see also Reply Br. 5 (Appellant’s annotated version of Figure 8 of
the subject application); In re Mraz, 455 F.2d 1069, 1072 (CCPA 1972)
(explaining that although it is true that drawings are not presumed to be
drawn to scale, this “[does] not mean that things patent drawings show
clearly are to be disregarded”).
Because Appellant’s Specification consistently uses the term
“corresponding to” to mean “having the same or nearly the same size,” we
agree with Appellant that the Examiner’s interpretation of the term
“corresponding to” in claim 110 is unreasonably broad and inconsistent with
how a skilled artisan would view the term “corresponding to” in light of the
Specification. Reply Br. 8. “[When giving claim] terms their broadest
reasonable construction, the construction cannot be divorced from the
specification.” In re NTP, 654 F.3d 1279, 1288 (Fed. Cir. 2011).
Accordingly, we do not sustain the Examiner’s rejection of claim 110
for indefiniteness.
Drawing Objections
The Examiner objects to the drawings on the ground that “[t]he
drawings must show every feature of the invention specified in the claims.
Therefore, the switch of claim 107 (and claim 106) must be shown or the
feature(s) canceled from the claim(s)” and that “the recess having a depth
corresponding to a diameter of the water dispensing pipe (see claim 110)
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must be shown or the feature(s) canceled from the claim(s).” See Final Act.
2–3. Ordinarily, an objection is reviewable by petition under 37 C.F.R.
§ 1.181, and a rejection is appealable to the Patent Trial and Appeal Board.
When the issue of new matter presented is the subject of both an objection
and a rejection, the issue is appealable. See Manual of Patent Examining
Procedure § 608.04(c) (9th ed., Rev. 08.2017, Jan. 2018) (providing that
“where the alleged new matter is introduced into or affects the claims, thus
necessitating their rejection on this ground, the question becomes an
appealable one, and should not be considered on petition even though that
new matter has been introduced into the specification also”).
As to claim 107, Appellant’s Specification discloses (1) “[t]he
manipulation member 460 may be pressed to operate it, like a button or a
lever” (Spec. ¶ 81 (emphasis added), Figs. 7, 8); (2) “[t]he installation part
436 may include an installation hole 438 in which electric/electronic parts
such as an LED lighting device 462 and a switch connected to the
manipulation member 460 can be installed” (id. ¶ 82 (emphasis added), Figs.
7, 8); and (3) “[a] button switch for driving the manipulation member 460
may be installed in the installation hole 438 of the installation part 436” (id.
¶ 94 (emphasis added), Figs. 7, 8). Based on Appellant’s disclosure, we
agree with Appellant that “the manipulation member 460 and the installation
part 436 that includes a switch are shown in [Figures] 7 and 8” of the subject
application. Appeal Br. 2.
As to claim 110, as discussed above, Appellant’s Specification
describes that “[t]he recess 430 may have a depth corresponding to the
diameter of the dispensing member 440,” which as shown in Figure 8 of the
subject application means that the depth of recess 430 is the same (or nearly
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the same) as the diameter of dispensing member 440. See Spec. ¶ 74
(emphasis added); see also Reply Br. 5 (Appellant’s annotated version of
Figure 8 of the subject application); In re Mraz, 455 F.2d at 1072.
As Figures 7 and 8 of the subject application illustrate the “switch” of
claims 106 and 107 and Figure 8 of the subject application illustrates “the
recess having a depth corresponding to a diameter of the water dispensing
pipe” of claim 110, we do not agree with the Examiner’s drawing objections
as to these claims. Therefore, to the extent that the objections to the
drawings in the Final Office Action turn on the same issue(s) as the rejection
under 35 U.S.C. § 112, second paragraph, our decision with respect to the
rejections is dispositive as to the corresponding objections.5
Obviousness over Lu
Claims 63, 64, and 73
Appellant does not offer arguments in favor of dependent claims 64
and 73 separate from those presented for independent claim 63. See Appeal
Br. 3–14. We select claim 63 as the representative claim, and claims 64 and
73 stand or fall with claim 63. 37 C.F.R. § 41.37(c)(1)(iv). We address
claims 110 and 111 separately below.
Independent claim 63 is directed to a refrigerator door including “an
outer case formed of a metal plate.” Appeal Br. 15 (Claims App.). The
Examiner finds that Lu discloses the refrigerator door of claim 1 except “Lu
does not teach that the outer case is formed of a metal plate.” See Final Act.

5 We note that the Examiner presents additional objections to claims 109 and
111; however, we do not reach them here as they are not tied to an
appealable matter. See Final Act. 2–3.

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4–7. The Examiner takes the position that “[s]ince it has been held that the
selection of a known material based on its suitability for its intended use
supports a prima facie obviousness determination” (citing MPEP 2144.07),
“it would have been obvious to one of ordinary skill in the art at the time of
invention to modify Lu and arrive at the claimed invention in order to
provide a known suitable material for the outer case formed of a plate.” Id.
at 7.
Appellant contends that “all three cases mentioned in MPEP 2144.07
rely on evidentiary support and a prior art reference to show the missing
claim feature” and that the Examiner “provides no evidence that a metal
plate was a known material for an outer case, much less analysis that a metal
plate would have been a suitable option for Lu’s outer case.” Appeal
Br. 3–4.
In response to Appellant’s contention, the Examiner cites to
Leimkuehler,6 Kwon,7 Unger,8 and Mawby9 as extrinsic evidence to
establish that “a metal plate is a known and suitable material for an outer
case of a refrigerator.” Ans. 4. The Examiner states that, “[a]s a metal plate
is a known and suitable material for an outer case of a refrigerator (e.g., as
evidenced by Leimkuehler, Kwon, Ung[e]r, or Mawby),” it would have been
obvious to a skilled artisan “to modify Lu such that the outer case is formed
of a metal plate in order to provide a known and suitable material for the
outer case (e.g. to obtain the advantages of using a known and suitable

6 Leimkuehler (US 2006/0265960 A1, published Nov. 30, 2006).
7 Kwon (US 2004/0183414 A1, published Sept. 23, 2004).
8 Unger (US 5,442,933, issued Aug. 22, 1995). We note the Examiner refers
to this reference as “Ungar.” See Ans. 4.
9 Mawby (US 5,359,795, issued Nov. 1, 1994).
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material such as metal[)].” Ans. 4. Additionally, the Examiner notes that
the Leimkuehler, Kwon, Unger, and Mawby references “are used only to
provide evidence that [a skilled artisan] would be well versed in the use of a
metal plate for an outer case of a refrigerator and would consider a metal
plate as a known and suitable material for an outer case of a refrigerator”
and that these references “are not used to present new grounds of rejections.”
Id at 4–5 (emphasis added).
In response to the Examiner’s citation of extrinsic evidence to support
the finding that a metal plate is a known and suitable material for an outer
case of a refrigerator, Appellant presents arguments against the Kwon and
Mawby references only. See Reply Br. 2. As Appellant does not present
arguments for the Leimkuehler and Unger references, Appellant does not
apprise us of error in the Examiner’s citation of the Leimkuehler and Unger
references as extrinsic evidence to support the finding that “a metal plate is a
known and suitable material for an outer case of a refrigerator.” See Reply
Br. 2; see also Ans. 4–5.
As to the Kwon and Mawby references, Appellant contends that
(1) “Kwon’s outer case does not constitute the exterior of the refrigerator
door, as claimed, and that exterior is purposefully separate from the
dispenser section”; (2) “Kwon uses a detachable dispenser housing to define
its dispenser recess”; and (3) “similar to Kwon, Mawby uses a separate
structure (not a metal outer case constituting an exterior of the refrigerator
door) to define the dispenser recess.” Reply Br. 2. Appellant concludes that
because neither Kwon nor Mawby “uses a metal outer case constituting an
exterior of the refrigerator door to define a dispenser recess,” neither
reference “suggest[s] implementing Lu’s dispenser recess using a metal
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outer case.” Reply Br. 2.
Appellant does not dispute the Examiner’s finding that each of Kwon
and Mawby discloses an outer case formed of a metal plate. Rather,
Appellant presents arguments to the outer cases of Kwon and Mawby being
separate from the dispenser and not constituting the exterior of a refrigerator
door. Id. However, as noted by the Examiner in the Answer, the Kwon and
Mawby references are used “only to provide evidence that one of ordinary
skill in the art would be well versed in the use of a metal plate for an outer
case of a refrigerator and would recognize the suitability of the metal
material to form [an outer case of a refrigerator].” See Ans. 4–6 (emphasis
added). As such, Appellant does not apprise us of error in the Examiner’s
citation to the Kwon and Mawby references as extrinsic evidence to support
the finding that “a metal plate is a known and suitable material for an outer
case of a refrigerator” and that it would have been obvious to a skilled
artisan “to modify Lu such that the outer case is formed of a metal plate in
order to provide a known and suitable material for the outer case (e.g. to
obtain the advantages of using a known and suitable material such as
metal[)].” See id. at 4; see also Reply Br. 2.
Appellant contends that “[a]lthough Lu’s refrigerator includes a recess
2 configured to house a dispenser unit, Lu’s dispenser unit, like conventional
refrigerators in the art, is distinct and separate from the outer case of the
refrigerator door” and that “[i]n contrast, the claimed refrigerator door
includes a dispensing recess which is formed as a part of the metal outer
case by cutting a first cut part in the metal outer case, and rounding the first
cut part inwardly.” Appeal Br. 5.

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In response, the Examiner correctly notes that “the features upon
which [A]ppellant relies (i.e., a dispensing recess formed as a part of the
metal outer case) are not recited in the rejected claim(s).” Ans. 5; see also In
re Self, 671 F.2d 1344, 1348 (CCPA 1982) (explaining that limitations not
appearing in the claims cannot be relied upon for patentability). Claim 63
more broadly recites “a recess to receive a container.” Appeal Br. 15
(Claims App.). There is no recitation of a “dispensing” recess in claim 63.
Id. Appellant’s Specification describes “the dispenser is integrally [formed]
with the outer case forming an appearance of the door.” Spec. ¶ 128; see
also id. ¶ 6 (“[A]n outer case is integrally formed with a dispenser.”).
However, claim 63 fails to recite a “dispenser,” let alone an outer case
integrally formed with a dispenser. Appeal Br. 15 (Claims App.); In re Self,
671 F.2d at 1348. Although the claims are interpreted in light of the
Specification, limitations from the Specification are not read into the claims.
In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993); see also Ans. 5.
The Examiner also notes “it appears that [A]ppellant refers to the
process by which the dispensing recess product is formed.” Ans. 5. In
response, Appellant contends the “Appeal Brief focuses on features of the
claimed refrigerator door (‘outer case formed of a metal plate,’ ‘a first cut
part,’ ‘a rounded part’), not the process by which the refrigerator door is
made.” Reply Br. 1.
As a general rule, the patentability of a product does not depend on its
method of production such that if the product in a product-by-process claim
is the same as or obvious from a product of the prior art, the claim is
unpatentable even though the prior art product was made by a different
process. In re Thorpe, 777 F.2d 695, 697 (Fed. Cir. 1985). “Where a
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product-by-process claim is rejected over a prior art product that appears to
be [substantially] identical, although produced by a different process, the
burden is upon the applicants to come forward with evidence establishing an
unobvious difference between the claimed product and the prior art
product.” In re Marosi, 710 F.2d 799, 803 (CCPA 1983).
In this case, the Examiner finds that Lu discloses an “outer case,” “a
first cut part,” “a rounded part,” and that the “rounded part” defines “a recess
to receive a container.” See Final Act. 4–7; see also id. at 6–7 (the
Examiner’s annotated versions of Figures 1 and 2 of Lu.).
Appellant contends that as shown in a comparison between Figure 1
of the subject application and Figure 1 of Lu, “Lu’s dispenser recess is deep
enough to accommodate an entire pitcher, whereas the recess of the present
application accommodates little more than a part of a glass.” Appeal Br. 6.
According to Appellant, “[t]his difference highlights the unsuitability of a
metal plate for Lu’s recess, as a person of ordinary skill in the art would not
have seen a rounded part in a metal plate sufficient to define a recess that is
large enough to accommodate an entire pitcher.” Id.
However, Appellant’s attorney argument is not evidence of any
nonobvious structural difference between the claimed product and the
modified refrigerator outer casing of Lu. In re Pearson, 494 F.2d 1399,
1405 (CCPA 1974) (“Attorney’s argument in a brief cannot take the place of
evidence.”). Stated differently, Appellant does not provide sufficient
evidence to establish how features that allegedly result from the process-
related limitations of “a first cut part formed by a cutting portion of the front
part at a position that is spaced apart from an upper end of the outer case”
and “a rounded part formed from the first cut part, wherein both side edge
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portions of the rounded part are formed in a manner that a portion of the
front part is curved to define a recess to receive a container” are nonobvious
over the modified refrigerator outer casing of Lu. See Appeal Br. 6; see also
Reply Br. 1.
As discussed above, Appellant does not apprise us of error in the
Examiner’s citation to the Leimkuehler, Kwon, Unger, and Mawby
references as extrinsic evidence to support the finding that “a metal plate is a
known and suitable material for an outer case of a refrigerator” and that
based on this evidence it would have been obvious to a skilled artisan “to
modify Lu such that the outer case is formed of a metal plate in order to
provide a known and suitable material for the outer case (e.g. to obtain the
advantages of using a known and suitable material such as metal[)].” See
Ans. 4; see also Reply Br. 2.
In summary, and based on the record presented, we are not persuaded
the Examiner erred in rejecting independent claim 63 as unpatentable over
Lu. Accordingly, we sustain the Examiner’s rejection of claim 63. We
further sustain the rejection of claims 64 and 73, which fall with claim 63.
Claim 110
As discussed above, Appellant’s Specification describes that “[t]he
recess 430 may have a depth corresponding to the diameter of the dispensing
member 440” and Figure 8 of the subject application illustrates “the recess
having a depth corresponding to a diameter of the water dispensing pipe.”
See Spec. ¶ 74, Fig. 8; see also Reply Br. 5 (Appellant’s annotated version
of Figure 8 of the subject application); In re Mraz, 455 F.2d at 1072.
Based on Appellant’s disclosure and illustrations in Figure 8 of the
subject application, we agree with Appellant that “because the depth of Lu’s
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recess is much greater than a diameter of Lu’s hose 7, it does not correspond
to the diameter of Lu’s hose 7.” Reply Br. 8; see also Appeal Br. 11–12; id.
at 12 (Appellant’s annotated version of Figure 1 of Lu).
Accordingly, we do not sustain the Examiner’s rejection of claim 110
as unpatentable over Lu.
Claim 111
Claim 111 recites “the water dispensing pipe is integrally formed with
upper decor.” Appeal Br. 17 (Claims App.). The Examiner takes the
position that “the recitation integrally has been broadly interpreted such that
the hose 7 must be attached to the upper decor 9 to form a one piece
construction” and that “hose 7 of Lu is attached to the panel by at least tank
6 and door 1, if not attached directly via an opening in door 1 such that the
pipe 7 is held in place relative to the upper décor 9 to form a one piece
construction.” Ans. 9.
Lu discloses that “[a]n outlet end of a hose 7 connected to a cold
water tank 6 is fixed via the flap 5 in such a position that with the flap 5
closed, water can be tapped via the hose 7 from tank 6 into a vessel 8 placed
in the niche.” Lu ¶ 30 (emphasis added), Fig. 1; see also Appeal Br. 13. In
other words, hose 7 of Lu is fixed into position via attachment to flap 5. See
Lu ¶¶ 30, 32, Figs. 1, 2. Based on Lu’s disclosure, we agree with Appellant
that “Lu’s upper decor 9 and hose 7 are separate pieces that form separate
constructions,” as such, they “do not form a one piece construction” and are
not “integrally formed.” Reply Br. 8–9; see also Appeal Br. 12–13.
We also agree with Appellant that “the simple fact that Lu’s upper
decor 9 and Lu’s hose 7 attach to a common object (i.e., Lu’s door 1) does
not make them integrally formed” and that if the Examiner’s apparent
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position that two components are integrally formed as long as they both
attach to one or more common objects were correct, “every component in
Lu’s refrigerator would be integrally formed with every other component of
Lu’s refrigerator, which is an unreasonable result that does not reflect how [a
skilled artisan] would have viewed the term integrally formed.” Reply Br. 9;
see also Ans. 9.
Accordingly, we do not sustain the Examiner’s rejection of claim 111
as unpatentable over Lu.
Obviousness over Lu and Jung, Lu, Jung, and Yang, Lu and Park, or
Lu and Buchstab
Claims 65–68, 70, 71, 103–105, 108, 109, 112, and 113
Appellant does not present arguments for claims 65–68, 70, 71, 103–
105, 108, 109, 112, and 113 separate from those presented for claim 63. See
Appeal Br. 2–14. As we find no deficiencies in the Examiner’s rejection of
claim 63 as unpatentable over Lu for the reasons discussed above, we
likewise sustain the Examiner’s obviousness rejections of claims 65–68, 70,
71, 103–105, 108, 109, 112, and 113.
Obviousness over Lu, Park, and Kim
Claims 106 and 107
The Examiner finds that the combined teachings of Lu and Park do
not disclose “an installation hole formed in the installation part; and an
electronic part installed in the installation hole, wherein the electronic part
includes at least one of an LED lighting device or switch,” as recited in
claim 106. Final Act. 18 (emphasis omitted); see also Appeal Br. 16–17
(Claims App.). The Examiner finds that Kim discloses an “installation hole;
and an electronic part 617 installed in the installation hole (e.g. as defined as
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the location in which the electronic part is housed), wherein the electronic
part includes at least one of an LED lighting device or switch (see par.
187).” Final Act. 18 (emphasis omitted); see also id. at 19–20 (the
Examiner’s annotated versions of Figures 18 and 19 of Kim). The Examiner
also finds that “Kim teaches that the lighting unit 617 may be used to
illuminate a container receiving dispensed ice or water or the like (see par.
186).” Id. at 20. The Examiner concludes that it would have been obvious
to modify Lu and Park with the teachings of Kim for “illuminating a
container receiving dispensed ice or water or the like.” Id. at 21.
Appellant contends that “Lu’s invention relates to adding appropriate
lighting to its dispenser cavity and a person of ordinary skill in the art would
have found [the] addition of Kim’s lighting unit 617 to be redundant and
unnecessary given the lighting already available in Lu’s design.” Appeal Br.
10–11 (citing Lu ¶¶ 2–13).
In response to Appellant’s contention, the Examiner states that
“although Lu may teach lighting devices, it would still have been obvious to
modify Lu in view of Park by Kim to comprise redundant lighting sources in
order to provide additional lighting and to provide backup lighting in case
the lighting devices of Lu malfunction.” Ans. 7.
As an initial matter, Appellant correctly notes that “[n]o evidence has
been provided to support [the Examiner’s] contentions.” Reply Br. 4. Lu
discloses that “[i]n the present case, the[] LEDs 18 are six in number” but
“can of course be greater or smaller according to their power and the desired
strength of illumination in the niche 2.” Lu ¶ 34, Fig. 2. We agree with
Appellant that “[b]ecause Lu already has lighting devices designed to
illuminate a container being filled, a [skilled artisan] would [] not have been
Appeal 2018-003786
Application 13/501,491

18
motivated to use Kim’s lighting device to light a container in the
combination of Lu and Park.” Reply Br. 4.
Accordingly, we do not sustain the Examiner’s rejection of claims 106
and 107 as unpatentable over Lu, Park, and Kim.
CONCLUSION
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
107, 110 112,
second
paragraph
Indefiniteness 107, 110
63, 64, 73,
110, 111
103(a) Lu 63, 64, 73 110, 111
65, 67, 68,
112, 113
103(a) Lu, Jung 65, 67, 68,
112, 113

66, 104 103(a) Lu, Jung, Yang 66, 104
70, 71, 105,
108, 109
103(a) Lu, Park 70, 71,
105, 108,
109

103 103(a) Lu, Buchstab 103
106, 107 103(a) Lu, Park, Kim 106, 107
Overall
Outcome
63–68, 70,
71, 73,
103–105,
108, 109,
112, 113
106, 107,
110, 111

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)(1)(iv).

AFFIRMED IN PART