DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
At least claims 2, 17 are rejected on the ground of nonstatutory double patenting as being unpatentable over at least claims 1, 11 of U.S. Patent No. 12264864. Although the claims at issue are not identical, they are not patentably distinct from each other because at least claims 2, 17 are anticipated by at least claims 1, 11 of U.S. Patent No. 12264864.
Claim Rejections - 35 USC § 102
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claim(s) 2-5, 7-11, 13, 15-18, 20-21 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Son (US 2013/0014536).
Regarding claim 2,
Referring to Figs. 23, 24, Son teaches an ice maker 400, 500 comprising: a first tray 110 configured to define a portion of an ice chamber (not labeled) for making ice; a second tray 120 configured to define the other portion of the ice chamber; and a heater 564, 565 configured to apply heat to the second tray during an ice making process, wherein the second tray comprises a convex part (see Fig. 23, wherein pin 363 forms a convex part, not labeled) that is convexly disposed toward an inside of the ice chamber (see Fig. 23), and wherein the heater is disposed outside of the convex part (e.g. outside of the ice chamber, see Fig. 24).
Regarding claim 3,
Son teaches wherein the first tray comprises an upper tray body configured to define an upper chamber that is the portion of the ice chamber, wherein the second tray comprises a lower tray body configured to define a lower chamber that is the other portion of the ice chamber, and wherein the lower tray body comprises the convex part in which a portion of a lower portion of the lower tray body is convex upward (see Figs. 23-24).
Regarding claim 4,
Son teaches wherein an output of the heater is configured to be adjusted during the ice making process (e.g. is capable of being adjusted to be at least on or off).
Regarding claim 5,
Son teaches while ice is formed in a section including the convex part, the convex part is configured to deform (e.g. capable of deforming), and the heater is configured to output a maximum output of the heater (e.g. capable of outputting a maximum).
Regarding claim 7,
Son teaches wherein, after the ice is completely made, the convex part is deformed to be convex toward an outside of the ice chamber.
Regarding claim 8,
Son teaches a support 560 configured to support the second tray, wherein the convex part is disposed to face an opening (e.g. water supply holes 114, see Fig. 6) of the support.
Regarding claim 9,
Son teaches wherein water supplied to the ice chamber does not have a spherical shape before the ice is made, and wherein, after the ice is completely made, the convex part moves toward the opening, and thus, spherical ice is made.
Regarding claim 10,
Son teaches wherein at least a portion of the heater is disposed outside the opening.
Regarding claim 11,
Son teaches wherein the at least a portion of the heater is disposed adjacent to the opening.
Regarding claim 13,
Son teaches wherein at least a portion of the heater is disposed to surround the opening.
Regarding claim 15,
Son teaches an ejector (e.g. the structure comprising at least elements 362) configured to press the second tray to separate the ice from the second tray, the ejector comprising an ejector body (not labeled) and an ejecting pin 362 protruding from the ejector body, wherein the ejector passes through the opening during an ice separating process.
Regarding claim 16,
The subject matter of claim 16 is directed towards essentially the same subject matter as claim 1 and has been addressed in the rejection of claim 15.
Regarding claims 17-18,
The subject matter of claims 17-18 are directed towards essentially the same subject matter as claims 11, 13 and has been addressed in the rejection of claims 11, 13.
Regarding claims 20, 21,
Son teaches a refrigerator comprising the ice maker of claims 2, 17 (see Figs. 1-2).
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim(s) 6, 12, 14, 19 is/are rejected under 35 U.S.C. 103 as being unpatentable over Son.
Regarding claim 6,
Son does not teach wherein an amount of heat supplied to the second tray by the heater is varied but the examiner takes official notice that the use of, and advantages of, varied heaters would be well known to one of ordinary skill in the art; it would have been obvious to one of ordinary skill in the art before the filing date of the invention to modify son with the motivation of, for example, minimizing the amount of heat energy consumed when achieving ice formation or separation goals.
Regarding claim 12,
Son does not teach wherein the convex part has a diameter less than a diameter of the opening.
However, it has been held that claims directed to (the size of) a specific element were held unpatentable over prior art elements because limitations relating to the size of the elements were not sufficient to patentably distinguish over the prior art. Similarly, it has been held that, where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device (see MPEP 2144.04 IV A).
Regarding claim 14,
The subject matter of claim 14 is rejected for the same reasons as claim 12.
Regarding claim 19,
The subject matter of claims 19 is directed towards essentially the same subject matter as claims 12, 14 and has been addressed in the rejection of claims 12, 14.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Miller, Koo, Boarman, Lee, Son, Choi and Damikolas teach ice makers with heaters.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to STEVE S TANENBAUM whose telephone number is (313)446-6522. The examiner can normally be reached M-F 11 AM - 7 PM.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Frantz Jules can be reached at (571) 272-6681. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Steve S TANENBAUM/Examiner, Art Unit 3763
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