WHIRLPOOL CORPORATION

Patent Trials and Appeals Board

Mar 7, 2022

2021005036 (P.T.A.B. Mar. 7, 2022)

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. 16/309,040 12/11/2018 Giulia Marinello SUB-09021-US-PCT 8180 130333 7590 03/07/2022 PRICE HENEVELD LLP WHIRLPOOL CORPORATION - MD 3601 2000 NORTH M63 BENTON HARBOR, MI 49022 EXAMINER ZERPHEY, CHRISTOPHER R ART UNIT PAPER NUMBER 3763 NOTIFICATION DATE DELIVERY MODE 03/07/2022 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): PatentDocketing@whirlpool.com deborah_tomaszewski@whirlpool.com ptomail@priceheneveld.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte GIULIA MARINELLO, SANJESH KUMAR PATHAK, and GUSTAVO FRATTINI ____________________ Appeal 2021-005036 Application 16/309,040 Technology Center 3700 ____________________ Before JENNIFER D. BAHR, PHILLIP J. KAUFFMAN, and SEAN P. O’HANLON, Administrative Patent Judges. BAHR, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s decision rejecting claims 21, 22, 25-29, and 31-40. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM IN PART. 1 We use the term “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies the real party in interest as Whirlpool Corporation. Appeal Br. 1. Appeal 2021-005036 Application 16/309,040 2 THE CLAIMED SUBJECT MATTER Claim 21, reproduced below, is illustrative of the claimed subject matter. 21. A refrigerator, comprising: an exterior wrapper having a plurality of exterior walls exposed to ambient conditions, wherein one of the exterior walls includes an outer surface and an inset portion that is inwardly disposed relative to the outer surface of the exterior wall; and a skin condenser system disposed within the inset portion along an outer surface thereof, the skin condenser system comprising: a coil array defined by a coil disposed in a coil pattern; and a cover assembly covering the coil array and in thermal communication with the coil array, wherein the cover assembly includes a planar body portion directly coupled to the outer surface of the inset portion, and further wherein the cover assembly includes a channel system extending rearwardly from the planar body portion of the cover assembly. EVIDENCE The prior art relied upon by the Examiner is: Name Reference Date Lee US 6,955,064 B2 Oct. 18, 2005 Junge US 9,175,893 B2 Nov. 3, 2015 Takanashi WO 03/089859 A1 Oct. 30, 2003 REJECTIONS I. Claims 28, 29, and 31-36 stand rejected under 35 U.S.C. § 112(b) as indefinite. II. Claims 21, 22, and 25-27 stand rejected under 35 U.S.C. § 103 as unpatentable over Lee and Junge. Appeal 2021-005036 Application 16/309,040 3 III. Claims 28, 29, and 31-40 stand rejected under 35 U.S.C. § 103 as unpatentable over Lee, Junge, and Takanishi.2 OPINION Rejection I - Indefiniteness Independent claim 28 recites, in relevant part, “the cover assembly includes a planar body and a channel system extending rearwardly from the planar body portion of the cover assembly.” Appeal Br. 17 (Claims App.). The Examiner determines that the above limitation renders the claim indefinite because “[i]t is unclear if the portion is the same or a subset of the planar body.” Final Act. 2. The Examiner explains that, “[f]or examination purposes ‘a planar body’ will be read as []a planar body portion.” Id. Appellant argues “that the claim language, while inconsistent in this regard, did not hinder a proper examination of the claims, as the Examiner properly interpreted the term ‘planar body’ to mean ‘planar body portion.’” Appeal Br. 4 (citing Final Act. 2). We agree with Appellant. Although “the planar body portion” lacks explicit antecedent basis in claim 28, a claim lacking explicit antecedent basis is not necessarily indefinite when the scope of the claim is reasonably ascertainable to those of ordinary skill in the art. See Energizer Holdings, Inc. v. Int’l Trade Comm’n, 435 F.3d 1366, 1370-71 (Fed. Cir. 2006) (explaining that recitation of an element without proper antecedent basis, while disfavored, does not necessarily indicate that the claim as a whole is indefinite); see also 2 Although the Examiner omits claims 31 and 32 from the statement of the rejection on page 5 of the Final Action, the Examiner discusses claims 31 and 32 on pages 6-7 of the Final Action in the detailed explanation of the rejection. Appeal 2021-005036 Application 16/309,040 4 MPEP § 2173.05(e). Here, the Examiner has not set forth a cogent explanation of why the scope of claim 28 would not be reasonably ascertainable by one of ordinary skill in the art. Although the terminology “planar body portion” could, in some circumstances, be a narrower subset of “planar body,” as posited by the Examiner (Final Act. 2), in our view, in this case, a person having ordinary skill in the art would readily ascertain that “a planar body” and “the planar body portion” refer to the same element. We note that such an interpretation is consistent with independent claims 21 and 37, each of which recites “the cover assembly including a planar body portion.” Appeal Br. 16, 18 (Claims App.). Accordingly, we do not sustain the rejection of claims 28, 29, and 31-36 under 35 U.S.C. § 112(b) as indefinite. Rejection II - Obviousness Based on Lee and Junge In contesting this rejection, Appellant presents arguments for independent claim 21, and does not separately argue claims 22 and 25-27. See Appeal Br. 4-11. We select claim 21 as representative of the claims subject to this rejection, and claims 22 and 25-27 stand or fall with claim 21. See 37 C.F.R. § 41.37(c)(1)(iv). The Examiner finds that Lee discloses a refrigerator with an exterior wall including “an outer surface and an inset portion that is inwardly disposed relative to the outer surface of the exterior wall (inset portion is shown in figures accommodating top several rows of condenser 520).” Final Act. 3. The Examiner finds that Lee discloses “a cover assembly (510) includ[ing] a plan[a]r body portion (periphery of cover assembly 510) that is at the outer surface of the inset portion, and further the cover assembly Appeal 2021-005036 Application 16/309,040 5 includes a channel system (340) extending outwardly from the planar body portion.” Id. at 3-4. The Examiner finds that “Lee is silent concerning the planar body portion (periphery of 510) being ‘directly coupled’ to the outer surface of the inset portion,” and “Lee lacks a channel system extending ‘rearwardly’ from the planar body portion.” Id. at 4. However, the Examiner finds that Junge discloses “a coil array (361) including a cover (374) having a planar body portion (distal top and bottom ends as shown in figure 7) coupled to an inset portion, and further including a channel system (376) extending away from the planar body portion of the cover assembly.” Id. The Examiner determines that it would have been obvious “to have provided Lee with the direct coupling as taught by Junge in order to provide support to the cover assembly.” Id. The Examiner also reasons that “the use of the channel system enhances heat exchange between the coil and cover.” Id.; see also id. (explaining that, “as the cover of Lee is towards the rear of the coil array and[,] as taught by Junge[,] the channel system extends further away from the coil, the channel system when applied to Lee would extend rearwardly”). Appellant initially argues that it is unclear what the Examiner considers to constitute the “periphery” of Lee’s machine room back cover 510, which is shown only in a cross-sectional view. Appeal Br. 4-5 (citing Lee, Fig. 5). According to Appellant, “the rejection is improper for failing to comply with 35 U.S.C. 132(a).” Id. at 5. This argument is unpersuasive. The Federal Circuit has repeatedly noted that “the prima facie case is merely a procedural device that enables an appropriate shift of the burden of production.” Hyatt v. Dudas, 492 F.3d 1365, 1369 (Fed. Cir. 2007) (citing In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992)). The court has, thus, Appeal 2021-005036 Application 16/309,040 6 held that the USPTO carries its procedural burden of establishing a prima facie case when its rejection satisfies the requirements of 35 U.S.C. § 132 by notifying the applicant of the reasons for rejection, “together with such information and references as may be useful in judging of the propriety of continuing the prosecution of [the] application.” See In re Jung, 637 F.3d 1356, 1362 (Fed. Cir. 2011). Here, the Examiner sets forth the statutory basis of rejection and references relied on in a sufficiently articulate and informative manner so as to meet the notice requirement of § 132. Id.; see also Chester v. Miller, 906 F.2d 1574, 1578 (Fed. Cir. 1990) (35 U.S.C. § 132 “is violated when a rejection is so uninformative that it prevents the applicant from recognizing and seeking to counter the grounds for rejection.”). Indeed, Appellant appears to acknowledge that the Examiner’s intended meaning of the term “periphery” is inconsequential with respect to Appellant’s ability to contest the rejection presented. See Appeal Br. 5 (asserting that the rejection is deficient for reasons “[r]egardless of which portion of Lee is considered the ‘periphery’ by the Examiner”). Viewing Lee’s Figure 3 and Figure 5 in concert,3 back cover 510 appears to have a planar surface, at least at the top, bottom, and side peripheral portions thereof, but the identification of a peripheral portion does not appear to be material to the propriety of the rejection. Appellant argues that “it is clear in Lee that no portion of the machine room back cover 510 is directly coupled to the outer surface of the inset portion of the exterior wrapper as claimed in claim 21.” Appeal Br. 5. 3 Figure 5 illustrates a different embodiment than that of Figure 3, but the only difference between the two embodiments that Lee identifies is that back cover 510 of the Figure 5 embodiment has an increased area relative to cover 310 of the embodiment of Figures 3 and 4. See Lee, col. 4, ll. 28-37. Appeal 2021-005036 Application 16/309,040 7 Appellant asserts that “machine room back cover 510 of Lee is clearly spaced-apart from the outer surface of the inset portion of the wrapper of Lee.” Id. This argument is unpersuasive because, as discussed above, the Examiner relies on Junge, not Lee, for disclosing a direct coupling between a cover and an outer surface of an inset portion. See also Ans. 3 (explaining that “[p]aragraph ‘f’ of the [Final Office Action] explicitly states that Lee is silent concerning this feature”). In other words, Appellant’s argument appears to attack Lee individually rather than the combination of reference teachings relied on in the rejection. “Non-obviousness cannot be established by attacking references individually where the rejection is based upon the teachings of a combination of references.” In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986) (citing In re Keller, 642 F.2d 413, 425 (CCPA 1981). Appellant argues that “vents 340 of Lee are not a channel system, but rather cut out relief portions disposed through the machine room back cover 310.” Appeal Br. 8. Appellant asserts that Lee’s “vents 340 of the machine room back cover 310 cannot extend in any direction, much less a rearward direction as claimed.” Id. However, as discussed above, the Examiner finds that Lee fails to disclose a channel system extending rearwardly from the cover’s planar body and, instead, relies on Junge for teaching this feature. Final Act. 4. In other words, the Examiner determines that the combination of reference teachings renders obvious the disputed limitation. See id. (explaining that, “as the cover of Lee is towards the rear of the coil array and[,] as taught by Junge[,] the channel system extends further away from the coil, the channel system when applied to Lee would extend rearwardly”). Appeal 2021-005036 Application 16/309,040 8 Appellant’s argument against Lee individually does not apprise us of error in the Examiner’s rejection. See Merck, 800 F.2d at 1097. Appellant argues that the Examiner’s proposed modification of Lee based on the teachings of Junge would change Lee’s principle of operation and render Lee unsatisfactory for its intended purpose. Appeal Br. 8-11. In particular, Appellant asserts that Junge’s “heat-exchanging plate 374 is a solid plate configured to provide a sealing arrangement between the plate and the gasket 317,” whereas “machine room back covers 310, 510 disclosed in Lee are vented covers having a plurality of vents 340, 540, respectively, disposed therethrough to improve heat exchanging efficiency.” Id. at 9 (emphasis omitted); see also id. at 8-10 (citing Junge, col. 5, ll. 12-15; Lee, col. 3, l. 60-col. 4, l. 14, col. 5, ll. 22-38). Appellant asserts that modifying Lee to include “the solid or ventless heat-exchanging plate 374 of Junge would frustrate the intended purpose of the vented machine room back cover of Lee” because Junge’s plate would retain heat in Lee’s machine room rather than allow it to dissipate through the vents. Id. at 10. According to Appellant, “the principal operation of Lee, to provide a vented machine room back cover that allows for counter flow in emitting heat from a machine room compartment, is not only changed by the suggested modification of the Examiner,” but Lee’s back room cover is rendered “unsatisfactory for its intended purpose.” Id. at 11. For the reasons that follow, we are not persuaded by this line of argument. The “principle of operation” referred to by Appellant relates to the “basic principles” under which the prior art device was designed to operate. In re Ratti, 270 F.2d 810, 813 (CCPA 1959) (“This suggested combination of references would require a substantial reconstruction and redesign of the Appeal 2021-005036 Application 16/309,040 9 elements shown in [the primary reference] as well as a change in the basic principles under which the [primary reference’s] construction was designed to operate.”) (emphasis added). Under Ratti, “a change in the basic principles” refers to change that is fundamental in scope so as to relate to scientific or technical principles under which the invention is designed to operate. Lee discloses that “machine room back cover 310 performs a function of a heat emission plate for emitting the heat emitted outside the pipes of the condenser 320.” Lee, col. 4, ll. 2-4. Junge discloses heat exchanger 370 comprising heat exchanging plate 374, which has a plurality of projections 376 extending outward, is coupled to serpentine portion 360A of fluid connection loop 360, and is attached to liner 232B. Junge, col. 5, ll. 1-7, 19-23. As the Examiner explains, Lee and Junge are both “used to exchange heat for a refrigerator wall mounted coil. While Lee uses vents, as shown in Junge a direct coil to cover mount is also usable for heat exchange applications.” Ans. 4. The Examiner takes the position that the purpose of Junge’s cover is to enhance heat transfer, and it would also enhance heat transfer in Lee to dissipate heat. See id. (explaining that “the arrangement of Junge to provide a cover with the addition of fins or projections 376 enhances heat transfer with the air” (citing Junge, col. 5, ll. 19-33)). In other words, Junge’s heat exchanging plate 374 appears to perform the same general function as Lee’s cover (i.e., to transfer heat between a refrigerant loop and air). See Ans. 4-5 (explaining that “Junge explicitly states that the arrangement enhances heat transfer which is the purpose of Lee, to exchange heat with the coil and surrounding air”). In this regard, Appellant does not proffer evidence or persuasive technical rationale explaining how the Appeal 2021-005036 Application 16/309,040 10 Examiner’s proposal to directly couple Lee’s cover to the inset portion and add projections, as taught by Junge, would result in a fundamental change in the basic principles (i.e., scientific principles) under which Lee’s system is designed to operate, or otherwise prevent the cover from suitably operating to transfer heat from the coil to the ambient air. Moreover, the Examiner’s proposed modification of Lee to use the direct-coupling heat exchanging cover arrangement of Junge does not appear to amount to more than the simple substitution of one known heat exchanging coil cover arrangement (Lee’s planar cover assembly with vents) for another (Junge’s planar cover assembly having projections extending rearwardly) or the mere application of a known technique to a piece of prior art ready for the improvement. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007) (noting that such modifications are obvious where they do no more than yield a predictable result). Appellant also argues that Lee teaches away from the proposed modification. Appeal Br. 10. In particular, Appellant asserts that the direct coupling of the heat-exchanging plate 374 of Junge to the outer surface of the inset portion of Lee would go against the teachings of Lee, which specifically note[s] that a spacing of ‘more than 10mm’ is required between the wall and the machine room back cover in order to use both sides of the machine room back cover for heat exchange, and thereby increase efficiency. Id. We are not persuaded by this argument. A reference teaches away from a claimed invention or a proposed modification if “a person of ordinary skill, upon reading the reference, would be discouraged from following the path set out in the reference, or would be led in a direction divergent from the path that was taken by the applicant.” In re Kubin, 561 F.3d 1351, 1357 (Fed. Cir. 2009) (quoting In re Appeal 2021-005036 Application 16/309,040 11 Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994)). Prior art does not teach away from claimed subject matter merely by disclosing a different solution to a similar problem unless the prior art also criticizes, discredits, or otherwise discourages the solution claimed. See In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004). Here, Appellant does not point to, nor do we discern, any disclosure in Lee criticizing, discrediting, or otherwise discouraging the combination of teachings proposed by the Examiner in the rejection. Lee disclosing an embodiment that uses spacing between the cover and inset portion to expose both sides of the cover to airflow for heat transfer (Lee, col. 4, ll. 54-61) does not constitute a teaching away from the Examiner’s proposal to directly couple the cover to the inset portion, as taught by Junge. Instead, Lee’s disclosure is merely a different solution to a similar heat exchange problem. Fulton, 391 F.3d at 1201. For the above reasons, Appellant’s arguments do not apprise us of error in the rejection of independent claim 21. Accordingly, we sustain the rejection of claim 21, and of claims 22 and 25-27 falling therewith, under 35 U.S.C. § 103 as unpatentable over Lee and Junge. Rejection III - Obviousness Based on Lee, Junge, and Takanishi (i) Claims 28, 29, and 32-40 In contesting this rejection of independent claims 28 and 37, Appellant relies on the same arguments and reasoning we found unpersuasive in connection with the rejection of independent claim 21. See Appeal Br. 11-12, 14-15 (asserting that the “periphery” of Lee’s cover does not render obvious the claimed planar body, Lee does not disclose the claimed channel system, and the proposed modification of Lee based on Appeal 2021-005036 Application 16/309,040 12 Junge would change Lee’s principle of operation and render it unsatisfactory for its intended purpose). Accordingly, for the same reasons discussed above with respect to Rejection II, we also sustain the rejection of independent claims 28 and 37, and dependent claims 29, 32-36, and 38-40, under 35 U.S.C. § 103 as unpatentable over Lee, Junge, and Takanishi. (ii) Claim 31 In rejecting claim 31, which depends from claim 28, the Examiner finds that Junge discloses “a continuous channel that is correlated to the coil pattern of the coil array such that the coil of the coil array is received within the channel system of the cover assembly along the continuous channel (as shown in figure[] 7 of Junge[,] the channel system pattern accommodates the coil pattern).” Final Act. 6-7. Appellant argues that the Examiner’s finding is in error because Junge’s channel system “is not a continuous channel system, but rather a channel system comprised of multiple separate channels that are configured to cover portions of a coil array.” Appeal Br. 13. We agree with Appellant. The Examiner does not dispute that Junge discloses multiple separate channels, as pointed out by Appellant, but, rather, takes the position that “each channel [of Junge] on its own may be regarded as its own is a continuous channel that correlates to the coil pattern.” Ans. 5. According to the Examiner, “the claim does not require any particular channel or coil arrangement and[,] therefor[e,] in breadth allows for a mere straight continuous channel and coil section to read on the claim.” Id. Although it is reasonable to consider each linear channel of Junge to be a continuous channel, a single linear section or pass of a coil array cannot reasonably be considered to constitute a coil array. Thus, the linear channel for receiving Appeal 2021-005036 Application 16/309,040 13 such linear section or pass cannot reasonably be considered to be “a continuous channel configured in a channel pattern that correlates to the coil pattern of the coil array,” as called for in claim 31. In other words, Junge’s multiple separate channels covering portions of the continuous coil do not constitute a continuous channel configured in a channel pattern correlating to the coil pattern of the coil array, such that the continuous coil of the coil array is received within the continuous channel, as claimed. Accordingly, we do not sustain the rejection of claim 31 under 35 U.S.C. § 103 as unpatentable over Lee, Junge, and Takanishi. CONCLUSION In summary: Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 28, 29, 31-36 112(b) Indefiniteness 28, 29, 31-36 21, 22, 25-27 103 Lee, Junge 21, 22, 25-27 28, 29, 31-40 103 Lee, Junge, Takanishi 28, 29, 32-40 31 Overall Outcome 21, 22, 25-29, 32-40 31 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