Ex Parte De Wit et alDownload PDFPatent Trial and Appeal BoardApr 25, 201813640364 (P.T.A.B. Apr. 25, 2018) Copy Citation 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: 2 Appeal2017-005004 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. 3 Appeal2017-005004 Application 13/640,364 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 4 Appeal2017-005004 Application 13/640,364 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. 5 Appeal2017-005004 Application 13/640,364 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. 6 Appeal2017-005004 Application 13/640,364 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 7 Appeal2017-005004 Application 13/640,364 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 8 Appeal2017-005004 Application 13/640,364 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. 9 Appeal2017-005004 Application 13/640,364 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. 10 Appeal2017-005004 Application 13/640,364 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. 11 Appeal2017-005004 Application 13/640,364 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. 12 Appeal2017-005004 Application 13/640,364 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 13 Appeal2017-005004 Application 13/640,364 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 14 Copy with citationCopy as parenthetical citation