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 .
Priority
Acknowledgment is made of applicant’s claim for foreign priority under 35 U.S.C. 119 (a)-(d). The certified copy has been filed in parent Application No. 16/962,350, filed on July 15, 2020.
Reissue Applications
For reissue applications filed before September 16, 2012, all references to 35 U.S.C. 251 and 37 CFR 1.172, 1.175, and 3.73 are to the law and rules in effect on September 15, 2012. Where specifically designated, these are “pre-AIA ” provisions.
For reissue applications filed on or after September 16, 2012, all references to 35 U.S.C. 251 and 37 CFR 1.172, 1.175, and 3.73 are to the current provisions.
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.
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) 16-31 is/are rejected under 35 U.S.C. 103 as being unpatentable over Japanese Patent Application Publication JP 2002228317 A to Onishi et al (hereinafter “JP ‘317”) in view of US Patent No. 3,775,992 to Bright (hereinafter “Bright”).
JP ‘317 discloses an ice making device comprising a first ice maker including a first ice-making container configured to accommodate ice making water and a second ice maker including a second ice-making container configured to accommodate ice-making water and a controller to control the first and second ice maker. Bright shows an ice maker 28 for a refrigerator with tray 52 which is filled with water to be frozen and heater 60 to heat the water to be frozen to slow the freezing process to allow entrained gases to escape to produce clear ice. See the paragraph beginning on line 43 of column 7. Both systems use controllers to control the ice making. The controller of JP ‘317 produces ice in the two ice makers having similar transparency. The controller of Bright allows the production of ice with a higher transparency (which takes more time to produce ice). As the two disclosed controllers disclose two modes of making ice (faster or more transparent) it would have been obvious to an ordinary practitioner in the art at the time of filing of the ‘547 patent to combine the controllers to a single controller that has two modes of producing ice to enable the ice maker to better deliver ice meeting the user’s preference at the time.
In regard to claim 17, JP ‘317 gives different times for the freezing of the first and second ice containers. “When the operation of supplying water to the first ice making container 31 is completed, the routine proceeds to step 57, where the ice making is made to stand by. The ice making standby is to wait for a time until the water supplied to each ice making container is frozen and the ice making is completed. The waiting time is about 25 minutes in the first ice tray 11 and about 50 minutes in the second ice tray 12. Minutes.” It is also noted that Bright heats the water to slow the freezing, making increased freezing time inherent in the method of forming clear ice.
In regard to claims 18 and 19, Bright discusses a timer for the heater in the paragraph beginning on line 43 of column 7. The heater is used to form the clear ice of Bright and there is no heater in the second ice maker of JP ‘137. On and off is seen as different levels for the heater.
In regard to claim 20, as discussed in regard to claim 17, the freezing times are disclosed to be different for the different trays, so they will make different amounts of ice during a predetermined period.
In regard to claim 21, JP ‘137 shows ice compartment 14a under the first ice maker 11 and ice compartment 14b under the second ice maker 12.
In regard to claim 22, JP ‘137 shows supply device 17 which passes water through pipe 18a to the first ice maker and through line 18b to the second ice maker.
In regard to claim 23, ice making room 5 of JP ‘137 contains the first ice maker 11 and the second ice maker 12.
In regard to claim 24, as noted above JP ‘137 states, “When the operation of supplying water to the first ice making container 31 is completed, the routine proceeds to step 57, where the ice making is made to stand by. The ice making standby is to wait for a time until the water supplied to each ice making container is frozen and the ice making is completed. The waiting time is about 25 minutes in the first ice tray 11 and about 50 minutes in the second ice tray 12. Minutes.” This will produce more ice from the first ice maker than the second ice maker.
In regard to claim 25, It is considered obvious from the teaching of Bright that increasing the heat will delay the freezing to allow more entrained gases to escape which will produce more transparent ice. The trade off between freezing time and transparency is seen as a matter of design choice, with any number of intermediate steps producing cloudier ice faster being possible depending on user desires.
In regard to claim 26, JP ‘317 discloses a refrigerator with a freezing compartment 5 and a refrigeration compartment 2 as well as an ice making device comprising a first ice maker including a first ice-making container 11 configured to accommodate ice making water and a second ice maker including a second ice-making container 12 configured to accommodate ice-making water and a controller 21 to control the first and second ice maker. Bright shows an ice maker 28 for a refrigerator with tray 52 which is filled with water to be frozen and heater 60 to heat the water to be frozen to slow the freezing process to allow entrained gases to escape to produce clear ice. See the paragraph beginning on line 43 of column 7. Both systems use controllers to control the ice making. The controller of JP ‘317 produces ice in the two ice makers having similar transparency. The controller of Bright allows the production of ice with a higher transparency (which takes more time to produce ice). As the two disclosed controllers disclose two modes of making ice (faster or more transparent) it would have been obvious to an ordinary practitioner in the art at the time of filing of the ‘547 patent to combine the controllers to a single controller that has two modes of producing ice to enable the ice maker to better deliver ice meeting the user’s preference at the time.
In regard to claim 27, JP ‘317 gives different times for the freezing of the first and second ice containers. “When the operation of supplying water to the first ice making container 31 is completed, the routine proceeds to step 57, where the ice making is made to stand by. The ice making standby is to wait for a time until the water supplied to each ice making container is frozen and the ice making is completed. The waiting time is about 25 minutes in the first ice tray 11 and about 50 minutes in the second ice tray 12. Minutes.” It is also noted that Bright heats the water to slow the freezing, making increased freezing time inherent in the method of forming clear ice.
In regard to claim 28, Bright discusses a timer for the heater in the paragraph beginning on line 43 of column 7. The heater is used to form the clear ice of Bright and there is no heater in the second ice maker of JP ‘137. On and off is seen as different levels for the heater.
In regard to claim 29, as discussed in regard to claim 27, the freezing times are disclosed to be different for the different trays, so they will make different amounts of ice during a predetermined period.
In regard to claim 30, as noted above JP ‘137 states, “When the operation of supplying water to the first ice making container 31 is completed, the routine proceeds to step 57, where the ice making is made to stand by. The ice making standby is to wait for a time until the water supplied to each ice making container is frozen and the ice making is completed. The waiting time is about 25 minutes in the first ice tray 11 and about 50 minutes in the second ice tray 12. Minutes.” This will produce more ice from the first ice maker than the second ice maker.
In regard to claim 31, It is considered obvious from the teaching of Bright that increasing the heat will delay the freezing to allow more entrained gases to escape which will produce more transparent ice. The trade-off between freezing time and transparency is seen as a matter of design choice, with any number of intermediate steps producing cloudier ice faster being possible depending on user desires.
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.
Claims 16-31 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-34 of U.S. Patent No. RE50,415. Although the claims at issue are not identical, they are not patentably distinct from each other because both claim refrigerators having icemakers with heaters associated with the freezing water containers to allow for modes of ice production that slow the freezing process to allow entrained gases to escape to produce more transparent ice. The current application claims a second ice maker within the refrigerator, but this is seen as obvious duplication of parts.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to WILLIAM C DOERRLER whose telephone number is (571)272-4807. The examiner can normally be reached M-F, 7-5.
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/WILLIAM C DOERRLER/Reexamination Specialist, Art Unit 3993
Conferees:
/SARAH B MCPARTLIN/Reexamination Specialist, Art Unit 3993
/EILEEN D LILLIS/SPRS, Art Unit 3993
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