Ex parte Whirlpool Corp.

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.
90/009,855 12/29/2010 6082130 04747.0316-00 6295
23640 7590 10/30/2013
Baker Botts L.L.P.
910 Louisiana Street, One Shell Plaza
HOUSTON, TX 77002
EXAMINER
ENGLE, PATRICIA LYNN
ART UNIT PAPER NUMBER
3993
MAIL DATE DELIVERY MODE
10/30/2013 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________
BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________
Ex parte WHIRLPOOL CORPORATION
____________________
Appeal 2013-008232
Reexamination Control No. 90/009,855
Patent 6,082,130
Technology Center 3900
____________________
Before STEVEN D. A. McCARTHY, DANIEL S. SONG, and
BENJAMIN D. M. WOOD, Administrative Patent Judges.
WOOD, Administrative Patent Judge.
DECISION ON APPEAL

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STATEMENT OF THE CASE
This proceeding arises from a third-party request from LG
Electronics, Inc. (“LG,” or “Requestor”) for ex parte reexamination of
claims 1, 2, 4, 6, 8, and 9 of US Patent 6,082,130 (the “‟130 patent”),
entitled “ICE DELIVERY SYSTEM FOR A REFRIGERATOR.” Req. 1;
‟130 patent, cover page. The ‟130 patent issued to Jim J. Pastryk, et al., on
July 4, 2000, with claims 1-25, and is assigned to Whirlpool Corporation
(“Whirlpool,” or “Patent Owner”). ‟130 patent, cover page; col. 12, l. 49 –
col. 16, l. 39. In the course of the Reexamination, Patent Owner amended
the ‟130 patent to add claims 26-94. Final Rej. 2. Patent Owner
subsequently amended claims 30, 51, 61, 80, 82, 84, 87, 90, 92, and 93; and
canceled claims 88, 89, 91, and 94. Id. The Examiner ultimately confirmed
the patentability of reexamined claims 2 and 9; deemed patentable claims
26-87, 90, 92, and 93; and finally rejected claims 1, 4, 6, and 8. Id. at 10-12.
Patent Owner appeals under 35 U.S.C. § 134(b) from the final rejection of
claims 1, 4, 6, and 8. An oral hearing in accordance with 37 C.F.R. § 41.47
was held on October 2, 2013. We have jurisdiction under 35 U.S.C. §§ 6(b),
134, and 306.
We reverse.
THE INVENTION
The claims are directed to a refrigerator with a freezer compartment
containing an ice delivery system mounted on the freezer door. Col. 1,
ll. 6-8. Specifically, an ice maker is mounted above an ice storage bin that is
mounted on the freezer door; a motor, also mounted on the freezer door,
turns an auger inside the ice storage bin. Col. 4, ll. 2-8; fig. 2. An

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embodiment of the claimed arrangement is depicted in Figures 2 and 3 of the
‟130 patent, reproduced below:
Fig. 2 Fig. 3
Figure 2, reproduced above left, is a fragmentary perspective view of a
refrigerator including the ice maker 22 and the ice storage receptacle or bin
28. Figure 3, reproduced above right, is a fragmentary, side sectional view
showing ice maker 22 and bin 28.
As depicted in Figure 2, ice maker 22 is mounted to the inside top
wall 24 of freezer compartment 16. ‟130 patent, col. 4, ll. 1-4. Ice
dispensing system 26 includes ice storage bin 28 and ice crushing system 30,
both mounted to freezer door 20. Id. at col. 4, ll. 4-8; fig. 2. As depicted in
Figure 3, ice dispensing system 26 comprises auger 172, disposed within ice
storage bin 28, and motor 200, mounted to freezer door 20 via motor mount
bracket 207. Id. at col. 11, ll. 19-22, 37-40. Motor 200 drives auger 172 via
drive shaft 178 to move ice through the door. Id. at col. 9, l. 60 – col. 10, l.
14; col. 11, ll. 10-18; fig. 3.

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Claim 1, reproduced below, is illustrative of the claimed subject
matter:
1. A refrigerator including a freezer compartment
having an access opening and a closure
member for closing the access opening, the
refrigerator comprising:
an ice maker being disposed within the
freezer compartment for forming ice pieces;
an ice storage bin mounted to the closure
member below the ice maker for receiving ice
from the ice maker, the ice storage bin having
a bottom opening;
a motor mounted on the closure member;
and
an auger disposed within the ice storage bin
and drivingly connected to the motor,
wherein upon energization of the motor, the
auger moves ice pieces from the ice storage bin
through the bottom opening for dispensing
from the ice storage bin.
‟130 patent, col. 11, ll. 49-63. Claims 4, 6, and 8 depend from claim 1 and
add limitations directed to a transparent ice-storage bin (claim 4), and an ice-
crushing region (claims 6 and 8). Id., col. 13, ll. 7-10, 16-30, 36-52.

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REFERENCES
Goetz et al. (“Goetz”)
Palmon
US 5,056,688
US 5,240,150
Oct. 15, 1991
Aug. 31, 1993
Yasukawa JP S51-21165 U Feb. 16, 19761
REJECTIONS
Claims 1, 6, and 8 stand rejected under 35 U.S.C. §103(a) as
unpatentable over Yasukawa and Goetz. Ans. 4.
Claim 4 stands rejected under 35 U.S.C. §103(a) as unpatentable over
Yasukawa, Goetz, and Palmon. Ans. 4.
ANALYSIS
Claims 1, 6, and 8 – Obviousness – Yasukawa and Goetz
Claim 1 – Prima Facie Case
The Examiner found that Yasukawa teaches all of the elements of
claim 1 – including an ice storage bin mounted to a freezer closure member
– except for an “automatic ice maker” 2 disposed above the ice storage bin.
Final Rej. 4 (citing Yasukawa (translation) at 1, ll. 13-17; 2, ll. 5-7; 3, l. 21 –
4. l. 4; fig. 3). The Examiner then found that Goetz “disclose[s] that the ice
1 References to “Yasukawa” will be to an English-language translation
sworn to by Florencia Agote on April 18, 2008 and attached as Exhibit 8 to
the Request.
2 While the Examiner found that that Yasukawa discloses an “ice maker,”
the Examiner found that Yasukawa “does not disclose whether the ice maker
is an automatic ice maker.” Final Rej. 4. The Examiner thus interprets the
claim term “ice maker” to mean “automatic ice maker,” as opposed to
“manual ice maker” (i.e., ice cube trays), which would need to be filled and
emptied manually. Id. at 4-5. We agree that the term “ice maker” does not
encompass ice cube trays, and hereinafter use the term “ice maker” to refer
to an automatic ice maker.

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maker (20) is an automatic ice maker.” Id. (citing Goetz, col. 4, l. 13; see
fig. 1). The Examiner concluded that it would have been obvious to replace
Yasukawa‟s manual ice maker with Goetz‟s automatic ice maker “to ensure
that the dispenser has ice automatically supplied to it.” Final Rej. 4.
Patent Owner disputes that the Examiner has established a prima facie
case of obviousness for claim 1. Patent Owner first argues that an automatic
ice maker such as that taught by Goetz would not fit above Yasukawa‟s ice
storage bin. App. Br. 29-31. According to the Patent Owner, too much
room would have been consumed by Yasukawa‟s door mounted ice storage
bin 3, so that the bottom of the dispenser would have had to extend below
the bottom of the freezer door, which, according to Patent Owner‟s expert
Mr. Greg Hortin, would not have been done unless absolutely necessary. Id.
at 29 (citing Hortin Decl., ¶¶ 6-9). Patent Owner reasons that “[b]ecause
Yasukawa teaches extending the dispenser into the lower refrigerator door, a
person of ordinary skill would understand . . . that there was no significant
room between the top of the bin and the freezer ceiling,” because if there had
been such room, “the ice dispensing assembly would have been lifted to
avoid the engineering challenges and expense in extending the dispenser to
the lower door.” Id. at 29-30 (citing Hortin Decl., ¶ 9).
We do not find this argument persuasive of Examiner error. This
argument is apparently based on two premises: (1) that Yasukawa‟s ice
delivery system requires components – particularly the ice storage bin – of a
particular size, installed on a refrigerator freezer of a particular size; and (2)
that a person of ordinary skill in the art at the time of the invention would
have used Yasukawa without any modification. As to the first premise,

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Patent Owner has not identified, and we have been unable to find, any
disclosure in Yasukawa that limits the size of the ice storage bin or
refrigerator freezer to that specifically depicted. Moreover, the drawings
themselves “do not define the precise proportions of the elements and may
not be relied on to show particular sizes if the specification is completely
silent on the issue.” Hockerson-Halberstadt, Inc. v. Avia Group Int’l, 222
F.3d 951, 956 (Fed. Cir. 2000).
As to the second premise, a person of ordinary skill is not “compelled
to adopt every single aspect of [a reference] without the exercise of
independent judgment.” Lear Siegler, Inc. v. Aeroquip Corp., 733 F.2d 881,
889 (Fed. Cir. 1984). The Patent Owner does not show or explain why it
would be beyond the skill on an ordinary artisan to make room for an ice
maker by, e.g., lowering the entire ice dispensing mechanism (i.e.,
increasing the size of the notch in the refrigerator door), or reducing the size
of Yasukawa‟s ice storage bin. While designing a refrigerator with a
notched refrigerator door may entail certain “engineering challenges and
expense,” that does not necessarily mean that doing so would have been
beyond ordinary skill, or that increasing the size of the notch to
accommodate an automatic ice maker would have presented additional
difficulties beyond ordinary skill.
Second, Patent Owner argues that a person of ordinary skill in the art
at the time of the invention would be led away from adding an ice maker to
Yasukawa‟s freezer because (1) doing so would go against the space-saving
advantages of the disclosed door-mounted dispenser system; and (2)
Yasukawa‟s bin is not properly shaped for use with an ice maker. Regarding

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the freezer-space issue, Patent Owner notes that “[o]ne indicated advantage
of the system described in Yasukawa is that „volume of the freezer chamber
is used relatively efficiently.‟” App. Br. 31.3 Patent Owner contends that
“[t]his statement effectively teaches a person of ordinary skill in the art away
from combining Yasukawa with an ice maker above the bin because this
space-saving advantage would be eliminated by the traditional ice making
systems in existence at the time of the filing of the „130 Patent.” Id. at 31-32
(citing First Caligiuri Decl., ¶ 30).
We are not persuaded that Yasukawa teaches away from adding an ice
maker to its system. While Yasukawa teaches that its system would use
freezer space more effectively, and an ice maker would likely have taken up
more freezer space than Yasukawa‟s ice trays, an ice maker would also have
enhanced other benefits of Yasukawa‟s ice dispenser. Specifically,
Yasukawa teaches that its door-mounted ice delivery system reduces the loss
of cold air from the repeated opening and closing of the freezer door, and
reduces the need to directly touch the ice pieces. Yasukawa (translation) at
1. Adding an ice maker to Yasukawa‟s invention would further reduce or
eliminate these problems. See Goetz, col. 1, ll. 14-15 (an ice maker
“eliminate[s] the need to open the freezer door and let ambient air into the
3 We are unable to find this exact quote in the Yasukawa translation of
record. Instead, Yasukawa states regarding saving freezer space that:
By attaching the entire device on the inner side of door 2,
among other significant practical effects, the capacity of the
freezer compartment can be used more effectively, and the
operation of emptying ice cubes 4 from the ice maker tray into
the ice storage section 5 is more pleasant.
Yasukawa (translation) at 6.

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freezer section”). Our reviewing court has recognized that a given course of
action often has simultaneous advantages and disadvantages, and this does
not necessarily obviate any or all reasons to combine teachings, much less
constitute teaching away from the combination. See Winner Int'l Royalty
Corp. v. Wang, 202 F.3d 1340, 1349 n. 8 (Fed. Cir. 2000) (“The fact that the
motivating benefit comes at the expense of another benefit, however, should
not nullify its use as a basis to modify the disclosure of one reference with
the teachings of another. Instead, the benefits, both lost and gained, should
be weighed against one another.”).
We are also not persuaded that a person of ordinary skill in the art at
the time of the invention would have been taught away from combining
Yasukawa and Goetz because of the specific shape of Yasukawa‟s ice
storage bin. Patent Owner contends that “the slope of the ramp is not very
steep and may not allow ice to fall freely down into the auger section;” that
“having sloped sections on both sides (i.e., a necked-down region before the
auger) presents the possibility that ice pieces from an ice maker would
clump and form a bridge of solid ice over the opening that the auger would
not contact;” and that “Yasukawa fails to disclose any structure for moving
the ice from the ice maker to the bin or any structure for preventing ice from
overflowing the bin.” App. Br. 32 (citing Ex. G (First Caligiuri Decl.),
¶¶ 26-29). But, again, a person of ordinary skill is not expected to adopt
“every single aspect [of Yasukawa] without the exercise of independent
judgment.” Lear Siegler, 733 F.2d at 889. Patent Owner has not provided
persuasive evidence or argument that an artisan of ordinary skill, exercising
independent judgment, would have been unable to adapt the shape of

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Yasukawa‟s ice bin to accommodate an ice maker, or to resolve the other
issues that Patent Owner identifies. Indeed, as acknowledged by the Patent
Owner and found by the Examiner, it was well known to mount an ice maker
above an ice storage bin. ‟130 patent, col. 1, ll. 12-16; Ans. 6.
Next, Patent Owner argues that Yasukawa does not disclose a motor
mounted to a closure member. App. Br. 33. Instead, Patent Owner argues,
Yasukawa‟s motor 13 is connected to speed reducer 12. Id. We note,
however, that Yasukawa‟s speed reducer 12 is mounted to the freezer
door 2, so the motor is mounted to the freezer door via the speed reducer.
We do not interpret the term “motor mounted on the closure member” to
require that the motor be directly mounted to the freezer door without any
intervening structure; indeed, such a requirement would exclude Patent
Owner‟s preferred embodiment wherein motor 200 is mounted to the freezer
door using bracket 207 within a cup-shaped support member or housing 208.
‟130 patent claim 1, col. 11, ll. 37-40, fig. 3; see Vitronics Corp. v.
Conceptronic, Inc., 90 F.3d 1576, 1583 (Fed. Cir. 1996) (holding that claim
interpretation that excludes all preferred embodiments is “rarely, if ever,
correct”).
Finally, Patent Owner argues that Yasukawa would not have enabled
one of ordinary skill to construct a motor that is both mounted to a closure
member and able to dispense ice from the ice storage bin. App. Br. 33.
Patent Owner contends that “Yasukawa does not describe how the motor 13
would be attached or wired, or how the weight or torque of the motor would
be managed.” App. Br. 34. According to Patent Owner, the weight,
spacing, location, and wiring of the motor and auger “presented substantial

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challenges to the inventors of the ‟130 Patent, and overcoming those
challenges required considerable time and effort.” Id. at 35 (citing Ex. C
(Hortin Decl.), ¶¶ 36-42).
We do not doubt that the named inventors of the ‟130 patent
encountered and overcame a number of engineering challenges. Nor do we
disagree that Yasukawa does not teach in exacting detail how to, e.g.,
successfully mount and wire its ice storage and dispensing system on a
freezer door. But we are not convinced that Yasukawa fails to enable a
person of ordinary skill to do so. The test for compliance with the
enablement requirement is whether the reference is sufficiently complete to
enable one of ordinary skill in the art to make the claimed invention without
undue experimentation. See In re Gleave, 560 F.3d 1331, (Fed. Cir.
2009)(discussing enablement of a reference under 35 U.S.C. § 102(b)). A
reference‟s failure to provide detailed instructions as to how to make an
invention does not, in itself, demonstrate that undue experimentation is
required. See Hybritech Inc. v. Monoclonal Antibodies, Inc., 802 F.2d 1367,
1384 (Fed. Cir. 1986) (“a patent need not teach, and preferably omits, what
is well known in the art.”). The fact that the named inventors of the ‟130
patent overcame a number of engineering challenges does not imply that the
solution to those challenges necessarily was beyond the level of ordinary
skill in the art or that one of ordinary skill in the art would have had to
engage in undue experimentation to meet the same challenges.
Claim 1 – Secondary Considerations
We also consider the issue of obviousness in light of Patent Owner‟s
objective evidence of nonobviousness. See, e.g., Apple Inc. v. Int'l Trade

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Comm'n, 725 F.3d 1356, 1365 (Fed. Cir. 2013). Objective evidence of
nonobviousness, i.e., evidence of secondary considerations, can establish
that “an invention appearing to have been obvious in light of the prior art
was not,” and may be “the most probative and cogent evidence in the
record.” Id. at 1366 (internal citations omitted). This evidence “guards
against the use of hindsight because it helps turn back the clock and place
the claims in the context that led to their invention.” Id. (internal citations
omitted).
Patent Owner has submitted 11 declarations, each with attached
exhibits, in an effort to establish that commercial embodiments of its
invention: (1) received industry praise; (2) were copied by the Requestor; (3)
have been commercially successful; and (4) met a long-felt but unmet need.
In support of its allegations of industry praise, Patent Owner has
submitted evidence that Whirlpool‟s “In-Door-Ice® System” refrigerators
(hereinafter, “IDI refrigerators”) practice claim 1 of the ‟130 patent. Ex. A
(Reinke Decl.), ¶¶ 3-4, ex. 1 thereto; Ex. B (5/30/12 Caligiuri Decl.), ¶¶ 6-
17. Patent Owner‟s expert witness, Mr. Robert Caligiuri, testified that since
2000, Whirlpool has designed, manufactured and sold “hundreds” of models
of IDA refrigerators under the KITCHEN AID, WHIRLPOOL, KENMORE,
and MAYTAG brand names. Ex. B (5/30/12 Caligiuri Decl.), ¶ 6; ex. 1 to
Ex. B. This includes the KENMORE ELITE 5059 refrigerator, sold in 2000.
Ex. A (Reinke Decl.) ¶¶ 1-4. Patent Owner submitted an October 2000
Consumer Reports article that praises the KENMORE ELITE 5059
refrigerator in part because the door-mounted ice storage bin provides “a bit
more usable volume within the freezer‟s main space.” Reply Br. 5; Ex. M.

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(Hawes Decl.), ex. 1 thereto. Other publications also praised this feature.
Ex. M, exs. 2, 3 thereto.
Further, Whirlpool employees Mary Bolger and Dean Martin testified
that in 2000, when they were then employed by a competitor of Whirlpool
(Amana), they attended a trade show in which an IDI refrigerator was
introduced. Ex. D. (Bolger Decl.), ¶¶ 1-9; Ex. E (Martin Decl.), ¶¶ 1-7. Ms.
Bolger and Mr. Martin considered the IDI refrigerator to be a “major
innovation” because of the IDI feature. Ex. D, ¶ 10; Ex. E, ¶ 8. Another
Whirlpool employee, Bruce Kopf, testified that in 2002, his employer at that
time, Maytag, considered developing its own “[i]ce in the [d]oor” system in
response to Whirlpool‟s IDI system. Ex. F (Kopf Decl.), ¶¶ 7-8; exs. 1, 2 to
Ex. F. Whirlpool acquired Maytag in 2006, which had acquired Amana in
2001. Id. at ¶ 4.
Patent Owner also submitted evidence in support of its allegations of
copying by LG. For example, Patent Owner presented internal LG
presentation documents from 2003 in which LG displayed an image of a
Whirlpool IDI refrigerator and described its door-mounted ice bin and
dispenser as “[a]dvanced.” Ex. M (Hawes Decl.), ex. 8 thereto (translation)
at 2. (Mr. Caligiuri testified that Requestor LG had learned of Whirlpool‟s
IDI refrigerators as early as February 2002. Ex. H (5/29/12 Caligiuri Decl.),
¶ 29.) LG also noted in these documents the “[p]ositive customer feedback
on Whirlpool‟s refrigerator with ice-bank attached on door.” Ex. M, ex. 8
thereto (translation) at 3. Further, a December 2003 LG document identified
the ‟130 patent as “expected to be problematic” to the development of LG‟s
own in-door ice dispenser. Ex. G (11/5/11 Caligiuri Decl.), ¶ 35. LG stated

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that “[s]ince Whirlpool has the uniquely advanced technology and rights in
this area, a dispute is expected when product is developed.” Id. LG
determined to design around the ‟130 patent to avoid such a dispute. Id.
However, LG was found to have sold refrigerators that infringed, inter alia,
claim 1 of the ‟130 patent. Ex. H (5/29/12 Caligiuri Decl.), ex. 3 thereto at
3; ex. 4 thereto at 14-17.
In support of its allegations of commercial success, Patent Owner
relies primarily on sales of Whirlpool IDI refrigerators (including those sold
under different brand names) from 2000-2005, and the testimony of its
expert, Dr. Seth T. Kaplan, interpreting the sales and market data relating to
such sales. Ex. J. (Kaplan Decl.), ¶¶ 19-20, 24. Dr. Kaplan testified that the
relevant market in which to view sales of IDI refrigerators is the market of
household refrigerators with attached freezers. Id., ¶ 21. Dr. Kaplan
testified that sales and revenue growth of IDI refrigerators greatly outpaced
that of all non-IDI refrigerators over that time period in this market. Id.,
¶ 32, table 5. Dr. Kaplan further testified that sales and revenue growth for
Whirlpool IDI refrigerators outpaced the growth of Whirlpool‟s non-IDI
refrigerators. According to Dr. Kaplan, IDI refrigerators made significant
gains in market share, rising from 0.6% of all household refrigerators sold in
2000 to 4.2% in 2005, despite the fact that IDI refrigerators generally cost
more. Id., ¶ 34. Dr. Kaplan asserted that this sales and market share growth
occurred even though Whirlpool‟s per-unit advertising costs declined over
much of the relevant time period, indicating that the commercial success of
IDI refrigerators was not due to increased marketing. Id., ¶ 50.

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The Examiner reviewed Patent Owner‟s objective evidence of
nonobviousness and determined that such evidence does not outweigh the
evidence of obviousness for claim 1. Ans. 5. The Examiner explained that
such evidence relied “at several places” on elements not found in claim 1,
such as the removability of the ice storage bin. Id. at 5-6. The Examiner
also found that “another point of praise” was “the ice bin on the door,” an
element found in the prior art. Id. Finally, in response to Patent Owner‟s
assertion of long-felt need based on the failure of anyone to commercialize a
refrigerator with a door-mounted ice storage system after Yasukawa‟s
publication date, the Examiner stated that “[c]ommercialization is not
relevant to patentability.” Id. at 6.
We view the Examiner‟s position to be that Patent Owner has not
established a nexus between the secondary-considerations evidence and
claim 1. “For objective evidence of secondary considerations to be accorded
substantial weight, its proponent must establish a nexus between the
evidence and the merits of the claimed invention.” In re Kao, 639 F.3d
1057, 1068 (Fed. Cir. 2011) (internal citations omitted) (emphasis in
original). “Where the offered secondary consideration actually results from
something other than what is both claimed and novel in the claim, there is no
nexus to the merits of the claimed invention.” Id. (emphasis in original).
We agree with the Examiner that some of Patent Owner‟s secondary-
considerations evidence, particularly praise for the invention found in trade
and other journals, refers to features of the IDI refrigerators not found in
claim 1, such as the removable ice bin feature. But we disagree that no
nexus is therefore shown. An invention may be praised or commercially

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successful for reasons other than the claimed invention but a nexus may still
exist as long as it can be shown that such praise or success is also due in part
to the claimed invention. See Apple, Inc. v. Int’l Trade Comm’n, 725 F.3d
1356, 1366 (Fed. Cir. 2013) (finding that Apple presented “compelling
secondary considerations evidence,” including industry praise received “in
part” because of the claimed invention). Here, it is undisputed that while
IDI refrigerators may have been praised for features not part of claim 1 –
i.e., a removable and transparent ice storage bin – the praise was also due to
the claimed door-mounted ice bin. See, e.g., Ex. M (Hawes Decl.), exs. 1-3
thereto.
We also disagree with the Examiner that praise for, and commercial
success caused by, the door-mounted ice bin lacks a nexus to claim 1
because a door-mounted ice bin was known in the art at the time of the
invention. As stated above, the offered secondary consideration must result
from “what is both claimed and novel.” Kao, 639 F.3d at 1068. What is
claimed and novel in claim 1 is, at a minimum, the combination of an ice
maker mounted above a door-mounted ice storage bin. Evidence that a
secondary consideration results from the door-mounted storage bin is
indicative of this claimed and novel combination, because, as LG puts it, an
“[i]ce-maker is a necessity in the North American [side-by-side] refrigerator
market.” Ex. M. (Hawes Decl.), ex. 8 thereto at 3. That is, the evidence of
record indicates that it is unlikely that a refrigerator with a door-mounted ice
storage bin but without an ice maker, such as that taught by Yasukawa,
would have been commercially successful because North American
consumers greatly preferred refrigerators with ice makers (despite the

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corresponding reduction in useable freezer space), and the full advantages of
a door-mounted ice storage and delivery system could not have been realized
without being combined with an ice maker mounted above the system.
Finally, we disagree with the Examiner that the lack of
commercialization of a door-mounted ice storage bin and dispenser after
Yasukawa‟s publication date is irrelevant. Recently our reviewing court
held that “[t]he length of the intervening time between the publication dates
of the prior art and the claimed invention can also qualify as an objective
indicator of nonobviousness.” Leo Pharma., Ltd. v. Rea, 726 F.3d 1346,
1359 (Fed. Cir. 2013). Here, 24 years passed between Yasukawa‟s
publication and the ‟103 patent‟s filing date, a not insubstantial period of
time.
We therefore find that Patent Owner has established a nexus between
its secondary-considerations evidence and the claimed invention. Further,
we find that Patent Owner‟s evidence of secondary considerations,
considered in sum, is probative and substantial, and sufficient to demonstrate
non-obviousness of claim 1. Patent Owner has provided evidence that its
IDI refrigerators (1) practice claim 1 of the ‟130 patent, (2) were praised in
part for features claimed and novel in claim 1; (3) were commercially
successful also as a result of features claimed and novel in claim 1; and (4)
satisfied a need that went unfulfilled for 24 years after the concept of a
freezer-door-mounted ice storage and dispensing system first became
known. Patent Owner‟s evidence also indicates that LG began its own in-
door-ice program in recognition of Whirlpool‟s commercial success. We

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therefore do not sustain the Examiner‟s rejection of claim 1 under 35 U.S.C.
§ 103 as unpatentable over Yasukawa and Goetz.
Claims 6 and 8
As stated above, claims 6 and 8 depend from claim 1 and add
limitations directed to an ice-crushing region. The Examiner rejected claims
6 and 8 based on the same combination of references as the claim 1
rejection. Ans. 4. Therefore, for the reasons stated above, we do not sustain
the Examiner‟s rejection of claims 6 and 8.
Claim 4 – Obviousness – Yasukawa, Goetz, and Palmon
The Examiner rejected claim 4 on the same combination of references
as claim 1, plus an additional reference, Palmon, which is relied on only to
teach the additional limitations found in claim 4. Ans. 4. Therefore, for the
reasons stated above, we do not sustain the Examiner‟s rejection of claim 4
DECISION
For the above reasons, the Examiner‟s rejection of claims 1, 4, 6, and
8 is reversed.
REVERSED
alw