Ex Parte De Wit et al

Patent Trial and Appeal Board

Apr 25, 2018

13640364 (P.T.A.B. Apr. 25, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/640,364 10/10/2012 Bastiaan Johannes De Wit
24737 7590 04/27/2018
PHILIPS INTELLECTUAL PROPERTY & STANDARDS
465 Columbus A venue
Suite 340
Valhalla, NY 10595
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
201 OP00300WOUS 3925
EXAMINER
MILANIAN, ARMAN
ART UNIT PAPER NUMBER
3723
NOTIFICATION DATE DELIVERY MODE
04/27/2018 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):
patti. demichele@Philips.com
marianne.fox@philips.com
katelyn.mulroy@philips.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte BASTIAAN JOHANNES DE WIT,
FOKKE ROELOF VOORHORST,
JOHANNES TSEARD VANDERKOOI, and SEP AS SETA YESH
Appeal2017-005004
Application 13/640,364
Technology Center 3700
Before JOHN C. KERINS, WILLIAM A. CAPP, and
GEORGE R. HOSKINS, Administrative Patent Judges.
CAPP, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants 1 seek our review under 35 U.S.C. § 134(a) of the final
rejection of claims 1-15. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 Appellants identify Koninklijke Philips Electronics N.V. as the real-party-
in-interest. Appeal Br. 3.
Appeal2017-005004
Application 13/640,364
THE INVENTION
Appellants' invention relates to floor cleaning machines. Spec. 1.
Claim 1, reproduced below, is illustrative of the subject matter on appeal.
1. A cleaning device for movement across a surface to sweep dirt
particles and liquid from said surface, said cleaning device
compnsmg:
a. a brush arranged in the device for rotation about an axis and
including a multiplicity of radially extending flexible brush elements
having respective tip portions for contacting the surface, a linear mass
density of a majority of a total number of said tip portions of the brush
elements being lower than 150 g per 10 km; and
b. a drive apparatus coupled to the brush for rotating said brush
about said axis such that the tip portions repeatedly make momentary
contact with the surface and are thereby deformed to wipe across said
surface and pick up said dirt particles and liquid, said drive apparatus
being powered during operation to suddenly accelerate said tip
portions from a first lower rate, when deformed, to a second higher
rate of at least 3,000 m/sec2 as said tip portions break free from
contact with the surface and tend to straighten out, said accelerated tip
portions flinging the dirt particles and liquid into a channel of the
cleaning device for collection.
THE REJECTIONS
The Examiner relies upon the following as evidence in support of the
rejections:
Adams
Postonen
Rench
Ohara
Spooner
Boatman
us 1,543,972
us 4,654,916
us 5,086,539
JP 2003-52584A
US 7,143,461 B2
US 2007 /0221248 Al
June 30, 1925
Apr. 7, 1987
Feb. 11, 1992
Feb.25,2003
Dec. 5, 2006
Sept. 27, 2007
The following rejections are before us for review:
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Application 13/640,364
1. Claims 1, 3-10, 13, and 14 are rejected under 35 U.S.C. § 103(a)
as being unpatentable over Postonen and Ohara. 2
2. Claim 2 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Postonen, Ohara, and Adams.
3. Claim 11 is rejected under 35 U.S.C. § 103(a) as being
unpatentable over Postonen, Ohara, and Rench.
2. Claim 12 is rejected under 35 U.S.C. § 103(a) as being
unpatentable over Postonen, Ohara, and Spooner.
2. Claim 15 is rejected under 35 U.S.C. § 103(a) as being
unpatentable over Postonen, Ohara, and Boatman.
Claim 1
OPINION
Unpatentability of Claims 1, 3-10, 13, and 14
over Postonen and Ohara
The Examiner finds that Postonen discloses the invention substantially
as claimed except for the linear mass density of the brush elements and the
rotation rate of at least 3,000 m/sec2. Final Action 2-3. The Examiner relies
on Ohara as disclosing the linear mass density limitation. Id. at 3. The
Examiner relies on principles of routine optimization for the claimed 3,000
m/sec2 rotation rate. Id. The Examiner concludes that it would have been
obvious to a person of ordinary skill in the art at the time of the invention to
modify Postonen by using the lower linear mass density brush elements of
Ohara. Id. According to the Examiner, a person of ordinary skill in the art
2 The Examiner's initial listing of claims subject to the rejection (Final
Act. 2) does not include claim 10, but the underlying analysis (id. at 4)
indicates claim 10 is subject to the rejection.
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would have done this to inhibit thread, hair, etc. from getting twisted around
the pile sequence. Id.
Appellants traverse the Examiner's rejection by arguing that Ohara is
non-analogous art and, therefore, does not fall within the scope and content
of the prior art for purposes of an obviousness analysis. Appeal Br. 14--15.
Appellants contend that Ohara is not within their field of endeavor, which
they define as:
cleaning devices having brushes that rotate on a surface to be
cleaned at a speed sufficiently high to pick up dirt particles and
liquid from the surface and fling the dirt/liquid into the cleaning
device for collection, without the need for a vacuum.
Id. 14. Appellants also argue that Ohara is not pertinent to the problems
faced by the inventors. Id. at 14--15.
In response, the Examiner states that Ohara is used in cleaning a
surface using brushes. Ans. 2. The Examiner also finds that Ohara is
reasonably pertinent to the problem to be solved. Id.
A reference qualifies as prior art for an obviousness determination
when it is analogous to the claimed invention. Innovention Toys, LLC. v.
MGA Ent., Inc., 637 F.3d 1314, 1321 (Fed. Cir. 2011). "Two separate tests
define the scope of analogous art: (1) whether the art is from the same field
of endeavor, regardless of the problem addressed, and (2) if the reference is
not within the field of the inventor's endeavor, whether the reference still is
reasonably pertinent to the particular problem with which the inventor is
involved." In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004). The "field of
endeavor" test asks if the structure and function of the prior art is such that
it would be considered by a person of ordinary skill in the art because of
similarity to the structure and function of the claimed invention as disclosed
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in the application. Id. at 1325-26. "A reference is reasonably pertinent ...
if it is one which, because of the matter with which it deals, logically would
have commended itself to an inventor's attention in considering his
problem." In re Clay, 966 F.2d 656, 659 (Fed. Cir. 1992). "If a reference
disclosure has the same purpose as the claimed invention, the reference
relates to the same problem, and that fact supports use of that reference in an
obviousness rejection." Id. Whether a prior art reference is "analogous" is a
question of fact. Id. at 658.
Ohara is directed to a floor cleaning machine that uses rotating
brushes. Ohara ,r 6. As such, it is from the same field of endeavor as
Appellants' invention. 3 Ohara has the same purpose as Appellants'
invention, namely, to clean a floor. Id. As such, it is also reasonably related
to the problem to be solved by Appellants' invention. Ohara satisfies both
prongs of the Bigio test and, therefore, constitutes analogous art that falls
with the scope and content of the prior art for purposes of the Examiner's
obviousness analysis.
Appellants next argue that there is no reason why a person of ordinary
skill in the art would modify the brushes of Postonen to have a linear mass
density lower than 150 grams per 10 kilometers. Appeal Br. 16. Appellants
argue that Ohara is directed to heightening the dust collection capabilities of
a dry vacuum cleaner. Id. Appellants argue that the reason for using the
type of brush elements in Ohara "does not reasonably apply to the
3 Appellants' proposed field of endeavor, which is essentially co-extensive
in scope with their claims (Appeal Br. 14), is unrealistically narrow. See
Bigio, supra.
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structurally and functionally dissimilar cleaning apparatus in Postonen. Id.
at 17.4
Appellants' argument is not persuasive. It well settled that a skilled
artisan need not be motivated to combine the prior art for the reason
contemplated by an inventor. See In re Kahn, 441 F.3d 977, 990 (Fed. Cir.
2006); see also KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398, 418-19, 420
(2007) (it is error to look "only to the problem the patentee was trying to
solve."). A motivation to combine can be found in "any need or problem
known in the field of endeavor at the time of the invention and addressed by
the patent." KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398, 420 (2007). "[T]he
analysis need not seek out precise teachings directed to the specific subject
matter of the challenged claim, for a court can take account of the inferences
and creative steps that a person of ordinary skill in the art would employ."
Id. at 418. Under the correct analysis, any need or problem known in the
field of endeavor at the time of invention and addressed by the patent can
provide a reason for combining the elements in the manner claimed. Id.
Furthermore, an implicit motivation to combine exists when the
improvement is technology-independent and the combination of references
results in a product or process that is more desirable. Dystar Textilfarben
GmBH & Co, v. CH Patrick Co., 464 F.3d 1356, 1368 (Fed. Cir. 2006).
Because the desire to enhance commercial opportunities by
improving a product or process is universal ... we have held
that there exists in these situations a motivation to combine
prior art references even absent any hint of suggestion in the
references themselves.
4 Appellants' argument that twisting hair around the pile sequence refers to a
problem that can occur during the weaving process explained in ,, 19-22 of
Ohara is not supported by fair reading of the Ohara reference.
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Id.
In the instant case, the Examiner finds that a person of ordinary skill
in the art would use lower weight brush elements, as taught by Ohara, to
inhibit thread and hair from getting twisted around the pile sequence. Final
Action 3 ( citing page 5 of Ohara translation). This reasoning is sufficient to
support the rejection. Dystar, 464 F.3d at 1368. Appellants provide neither
evidence nor persuasive technical reasoning that tends to show that
modifying the brush elements of Postonen as proposed by the Examiner
requires more than ordinary skill.
Appellants next argue that the Examiner errs in finding that arriving at
the claimed 3,000 m/sec2 rate is a matter of routine optimization. Appeal
Br. 18. Appellants attempt to distinguish their invention from the facts and
underlying technology of In re Aller, 220 F .2d 454 (CCP A 1955).
Appellants argue that "no already known values are disclosed for a cleaning
apparatus of the type disclosed in Postonen." Appeal Br. 19.
This argument is not persuasive. The principle annunciated in Aller is
not limited to the facts of that case. See e.g., In re Applied Materials, Inc.,
692 F.3d 1289, 1295 (Fed. Cir. 2012), quoting In re Aller, 220 F.2d 454, 456
( CCP A 19 5 5) ("Where the general conditions of a claim are disclosed in the
prior art, it is not inventive to discover the optimum or workable ranges by
routine experimentation."). Postonen discloses a cleaning machine with
rotating brush elements that bend and then straighten in response to
contacting the floor during rotation. Postonen, col. 4, 11. 26-30. The
Examiner finds that:
[I]t is well known to one of ordinary skill in the art that by
increasing the angular velocity of a roller brush scrubbing or
cleaning a floor there is an increase angular momentum exerted
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on the dirt particles therefore more particles are being removed
from the substrate that is being cleaned ...
Final Action 3. This finding of what is "well known" is not challenged by
Appellants. See In re Chevenard, 139 F.2d 711, 713 (CCPA 1943) ("In the
absence of anything in the record to contradict the examiner's holding, and
in the absence of any demand by appellant for the examiner to produce
authority for his statement, we will not consider this contention"). Thus, the
Examiner has sufficiently established that rotation speed is a result effective
variable that is subject to being optimized by routine experimentation. See
Applied Materials, 692 F.3d at 1297 (a recognition in the prior art that a
property is affected by a variable is sufficient to find the variable result-
effective ).
Contrary to Appellants' position, routine optimization does not
require starting from "already known values." Appeal Br. 19. "[A] claim to
a product does not become nonobvious simply because the patent
specification provides a more comprehensive explication of the known
relationships between the variables and the affected properties." Applied
Materials, 692 F.3d at 1297. The Examiner's finding that the rotation speed
of the brushes is a result effective variable that may be optimized by routine
experimentation is well supported in the record.
Finally, Appellants argue that acceleration forces on the brush
elements are affected by more than just rotation speed. Appeal Br. 19.
While this may be true, it does not negate the fact that rotation speed is a
result effective variable that can be optimized through routine
experimentation. Furthermore, the Examiner states:
Examiner would like to point out that the rotational velocity of
the tip portion of the brush is dependent on multiple variables
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which have not been claimed such as the distance of the brush
element to the ground[ ], the length of the bristles which have a
direct effect on the bristles' second higher rate.
Ans. 3. The Examiner then explains that claim 1 fails to recite any further
limitations that affect the acceleration forces on the brush elements. Id. Our
review of claim 1 reveals the correctness of the Examiner's observation,
namely, that Appellants have failed to claim limitations other than rotation
speed that affect the acceleration forces on the brush elements. Thus,
Appellants' argument is not commensurate with the scope of the claim.
We have considered Appellants' remaining arguments and find them
to be without merit. Accordingly, we sustain the Examiner's unpatentability
rejection of claim 1.
Claims 4, 5, 13, and 14
Appellants do not address dependent claims 4, 5, 13, and 14
separately from their common parent claim 1, so we likewise sustain the
Examiner's unpatentability rejection of those claims. See 37 C.F.R.
§ 4I.37(c)(l)(iv).
Claims 3 and 6-10
Claims 3 and 6-10 depend from claim 1. Claims App. The sole
argument raised against all of these claims, argued together as a group, is
that the principles of routine optimization do not apply to these claims for
"substantially the same reasons" argued in connection with the rejection of
claim 1. Appeal Br. 20. We find this argument unpersuasive for the same
reasons discussed above with respect to the rejection of claim 1.
We sustain the unpatentability rejection of claims 3 and 6-10.
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Unpatentability of Claim 2
over Postonen, Ohara, and Adams
Claim 2 depends from claim 1 and adds the limitation: "where a
distance between the brush and the surface is adjusted to establish, upon
contacting the surface, an indentation (I) of the brush elements that is in a
range from 2% to 12% of a diameter of the brush elements when in a fully
outstretched condition." Claims App. The Examiner relies on Adams as
disclosing an adjustment screw. Final Action 5 (citing Adams, Figs. 4--5).
The Examiner concludes that it would have been obvious to a person of
ordinary skill in the art at the time of the invention to incorporate a structure
to adjust a distance between the brush and surface. Id.
Appellants traverse the rejection by first arguing that Adams fails to
cure the alleged deficiencies in Postonen and Ohara. Appeal Br. 22. This
argument is unpersuasive as we disagree with Appellants' contention that
Postonen and Ohara are deficient.
Appellants further contend that Adams is silent as to the amount of
indentation of the brush elements. Id. The Examiner responds, and
Appellants do not dispute, that adjusting Adams to achieve the claimed
indentation is a matter of routine optimization. Ans. 4, Reply Br. 11.
Postonen discloses that brush elements are bent or deflected during rotation
and contact with the floor. Postonen, col. 4, 11. 22-39. The Examiner's
conclusion that the amount of bending is a result effective variable subject to
routine optimization is supported by the record before us.
We sustain the unpatentability rejection of claim 2.
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Unpatentability of Claim 11
over Postonen, Ohara, and Rench
Claim 11 depends from claim 1 and adds the limitation: "where, in
operation, an airflow is produced in an area where the brush contacts the
surface to be cleaned to compensate for an airflow produced by the brush
elements during operation of the device." Claims App. The Examiner relies
on Rench as disclosing a vacuum cleaner that generates an airflow where the
brush contacts the surface to be cleaned. Final Action 5. The Examiner
concludes that it would have been obvious to a person of ordinary skill in the
art at the time of the invention to produce an airflow in the claimed area. Id.
According to the Examiner, a person of ordinary skill in the art would have
done this to receive granules removed from the floor. Id.
Appellants traverse the rejection by arguing that Rench fails to cure
deficiencies in Postonen and Ohara. Appeal Br. 21. Appellants also argue
that Rench fails to disclose brushes adjacent vacuum nozzle 45 that produce
an airflow that needs to be compensated. Id.
In response, the Examiner states that Rench teaches that motor 19
causes rotation of brush elements 13. Ans. 4. According to the Examiner, a
person of ordinary skill in the art would have recognized that rotation of a
brush element produces an air flow. Id.
In their reply, Appellants do not dispute the Examiner's position that
rotation of a brush produces an airflow. See Reply Br. 10. We find the
Examiner's position on this point to be persuasive.
We sustain the unpatentability rejection of claim 11.
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Unpatentability of Claim 12
over Postonen, Ohara, and Spooner
Claim 12 depends from claim 1 and adds the limitation: "where in
'
operation, the brush elements are indented directly before the brush contacts
the surface to be cleaned." Claims App. The Examiner relies on Spooner as
disclosing a deflector 28 that protrudes rearwardly into the space defined by
the bristles to meet this limitation. Final Action 6.
Appellants traverse the rejection by arguing that Boatman fails to cure
deficiencies in Postonen and Ohara. Appeal Br. 23. Appellants also argue
that Spooner's brush elements are not indented "directly before" contacting
the surface, because they encounter deflector 28 approximately 90 degrees
of brush rotation before contacting the floor surface. Id. Appellants argue
that, unlike their invention, "the brush bristles are not deformed by the
surface being cleaned." Id.
The Examiner responds by stating that, under the broadest reasonable
interpretation, a person of ordinary skill in the art would understand that
Spooner deflects the brush elements before the brush contacts the surface to
be cleaned. Ans. 5. Appellants make no effort to rebut the Examiner's
position in their reply brief, relying instead only on their arguments for
claim 1. See Reply Br. 11.
The actual claim scope of "directly before" is somewhat uncertain
given Appellants' admission that their brush elements are not deformed until
after they come into contact with the floor surface. Appeal Br. 23. Under
the circumstances, we agree with the Examiner that Spooner's deflector
indents the brush elements "directly before" contacting the floor surface in
accordance with a broad, but reasonable, interpretation of "directly before."
We sustain the unpatentability rejection of claim 12.
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Unpatentability of Claim 15
over Postonen, Ohara, and Boatman
Claim 15 depends from claim 14 and adds the limitation: "including a
source for supplying a liquid to only one of the first and second brushes."
Claims App. The Examiner relies on Boatman as disclosing a source for
supplying liquid ( steam or other gas or liquid) to brush 1. Final Action 6-7.
The Examiner concludes that it would have been obvious to a person of
ordinary skill in the art at the time of the invention to supply liquid to a
single brush. Id. at 7.
Appellants traverse the rejection by arguing that Boatman fails to cure
deficiencies in Postonen and Ohara. Appeal Br. 24. Appellants also argue
that Boatman's brush cleans embossing or printing plate surfaces and that no
person of ordinary skill in the art would use such a brush on the types of
surfaces cleaned by Postonen and Ohara, i.e., floors. Id.
Appellants' argument is not persuasive. The obviousness inquiry does
not ask "whether the references could be physically combined but whether
the claimed inventions are rendered obvious by the teachings of the prior art
as a whole." In re Etter, 756 F.2d 852, 859 (Fed. Cir. 1985) (en bane). Here,
the Examiner merely relies on the teachings of Boatman concerning delivery
of fluid to a single brush. We do not understand the rejection to involve
wholesale bodily incorporation of Boatman's entire brush into Postonen's
cleaning machine.
Boatman teaches a rotating cleaning brush with a plurality of
apertures disposed on the peripheral wall of a hollow cylinder that permits
gas or liquid to emerge from the interior of the hollow cylinder to the bristles
disposed on the external surface of the cylinder. Boatman, Abstract. We
agree with the Examiner's position that it would have been obvious for a
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person of ordinary skill in the art to modify Postonen so that cleaning fluid is
dispensed through a single brush/cylinder in the manner taught by Boatman.
If a technique has been used to improve one device, and a person of ordinary
skill in the art would recognize that it would improve similar devices in the
same way, using the technique is obvious unless its actual application is
beyond his or her skill. KSR, 550 U.S. at 417. Appellants present neither
evidence nor persuasive technical reason that modifying Postonen by the
teachings of Boatman, as proposed by the Examiner, requires more than
ordinary skill.
We sustain the unpatentability rejection of claim 15.
DECISION
The decision of the Examiner to reject claims 1-15 is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED
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