Adair George Wilmot. Williams et al.

Patent Trials and Appeals Board

Oct 1, 2019

14919581 - (D) (P.T.A.B. Oct. 1, 2019)

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.
14/919,581 10/21/2015 Adair George Wilmot WILLIAMS 424662097900 1005
25227 7590 10/01/2019
MORRISON & FOERSTER LLP
1650 TYSONS BOULEVARD
SUITE 400
MCLEAN, VA 22102
EXAMINER
BUI, DUNG H
ART UNIT PAPER NUMBER
1773
NOTIFICATION DATE DELIVERY MODE
10/01/2019 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):
EOfficeVA@mofo.com
PatentDocket@mofo.com
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PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte ADAIR GEORGE WILMOT WILLIAMS, DAVID MICHAEL
JONES, IAN ASHMORE, and RICARDO GOMICIAGA-PEREDA

Appeal 2019-001823
Application 14/919,581
Technology Center 1700
____________

Before CATHERINE Q. TIMM, JEFFREY T. SMITH, and
JEFFREY B. ROBERTSON, Administrative Patent Judges.

Opinion for the Board filed by Administrative Patent Judge SMITH.

Opinion Dissenting filed by Administrative Patent Judge TIMM.

SMITH, Administrative Patent Judge.

DECISION ON APPEAL

Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–15. We have jurisdiction under
35 U.S.C. § 6(b).

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies the real party in interest as Dyson Tech.
Ltd. Appeal Br. 2.
Appeal 2019-001823
Application 14/919,581

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We REVERSE.

The following rejections are presented for appeal:
I. Claims 1–7 and 15 are rejected under 35 U.S.C. § 102(a)(1) as
anticipated by GB 1549535 (hereinafter “GB’535”).
II. Claims 8–14 are rejected under 35 U.S.C. § 103 as unpatentable
over GB’535.
Appellant’s invention relates to an apparatus for separating particles
from an airflow. (Spec. ¶ 5.) Claim 1 is illustrative of the subject matter on
appeal and is reproduced below:
1. An apparatus for separating particles from an airflow, the
apparatus comprising:
a housing comprising an inner wall; and
a body positioned within the housing and separated
therefrom so as to define an annular flow path between the
body and the inner wall;
the housing being rotationally stationary, and the body
being rotatable relative to the housing about a rotational axis,
the body comprising:
an impeller section having a first set of blades
extending from the body into the annular flow path
towards the inner wall of the housing, the impeller
section being rotatable for generating airflow through the
apparatus and for generating swirl within the airflow, and
a turbine section located downstream of the
impeller section and spaced along the rotational axis
from the impeller section, the turbine section having a
second set of blades for recapturing rotational energy
from the airflow.

Appeal Br. 17.
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Application 14/919,581

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OPINION2
We have reviewed each of Appellant’s arguments for patentability.
We will not sustain the Examiner’s rejections for essentially those reasons
expressed by Appellant. (Appeal Br. 3–15.)
Appellant argues GB’535 fails to disclose an apparatus comprising a
turbine section located downstream of an impeller section and the turbine
section having a second set of blades for recapturing rotational energy from
the airflow as required by independent claim 1. (Appeal Br. 5.)

2 We limit our initial discussion to independent claim 1, the only
independent claim on appeal.
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Application 14/919,581

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An example of Appellant’s invention corresponding to claim 1 is
illustrated in Figure 3 of the Specification, which is reproduced below:

Specification Figure 3, depicting a schematic illustration of an
apparatus 20.
Specification Figure 3 depicts apparatus 20 for removing dirt from an
airflow comprising housing 21, the body 25 within the housing, and impeller
26 at the upstream end of the body 25 nearest the inlet 22 and a turbine 27 at
the downstream end of the body 25. (Spec. ¶¶ 55, 56.) Specification
paragraph 62, reproduced below, further describes the airflow within the
body:
The turbine 27 is located downstream of where the splitter 28
separates the two portions of airflow. Both the dirty and clean portions
of airflow downstream of the splitter still contain a large amount of
the energy that was introduced by the impeller 26. This energy is
useful in the dirty portion of airflow D as it can be used downstream
Appeal 2019-001823
Application 14/919,581

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of the apparatus 20 in a further separation stage in order to remove the
dirt from the relatively small amount of air that remains. However, the
residual energy contained within the clean portion of airflow can be
recaptured by the turbine 27. As the clean portion of airflow C passes
through the turbine which is connected to the body 25, the swirl
energy within the airflow results in a rotational force being transferred
from the clean portion of airflow C to the blades with the turbine 27.
As such, less energy is required from the motor in order to rotate the
body 25. This increases the energy efficiency of the apparatus 20.
(Spec. ¶ 62.)
The Examiner finds GB’535 describes an apparatus having the same
structure as the claimed invention. The Examiner finds GB’535 describes an
apparatus having first blades and a turbine comprising second blades that
anticipates the claimed invention. (Final Act. 3.) The Examiner refers to
GB’535 annotated Figure 2 reproduced from the final action below:

GB’535 annotated Figure 2, depicting an apparatus exemplifying
impeller 16 (second set of blades) and impeller 11 (first set of blades).
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The Examiner determined:
[A]nnotated fig. 2 of GB’535 discloses a turbine section (18)
having a second set of blades (19; col 2, ln 36–38). The rotor 19
of compressor 18 of GB’535 discloses the ‘turbine section’
captures rotational energy (even a very small amount of
capturing rotational energy) due to the airflow moving upwards
from the impeller section (11) but also generating rotational
energy.
(Ans. 4.)
We cannot sustain the Examiner’s anticipation rejection of
independent claim 1. GB’535 discloses an apparatus wherein the
compressor rotor 19, the impeller 11, and impeller 16 are configured to add
energy to the airflow through the vacuum cleaner. (GB’535, 2, ll. 33–34.)
Impeller 11 is located in the second whirl chamber 9 and produces a rotating
air current so that very light dust particles are moved to the inner wall of the
second whirl chamber 9. Impeller 16 is located in the intermediate chamber
10 to amplify the whirling action. (GB’535, 2, ll. 25–50.) Consequently
both impeller 11 and the impeller 16 add energy to the airflow. As depicted
in Specification Figure 3, the turbine section 27, comprising the second set
of blades for recapturing rotational energy from the airflow, is connected to
the central body 25 and is located downstream of the impeller section 26 and
spaced along the rotational axis from the impeller section. The Specification
discloses the residual energy contained within the clean portion of airflow is
recaptured by the turbine 27. (Spec. ¶ 62.) The Examiner has not directed
us to evidence that GB’535 necessarily or inherently describes an apparatus
comprising a turbine section located downstream of an impeller section and
the turbine section having a second set of blades for recapturing rotational
energy from the airflow. A
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For the reasons above, we do not sustain the Examiner’s rejection of
independent claim 1.

DECISION
The Examiner’s rejections are reversed.
DECISION SUMMARY
Claims
Rejected
Basis Affirmed Reversed
1–7 and 15 § 102(a)(1)
GB’535
1–7 and 15
8–14 § 103
GB’535
8–14
Overall Outcome 1–15

REVERSED

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Application 14/919,581

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TIMM, Administrative Patent Judge, dissenting.
I respectfully dissent from the decision of my colleagues. To be
patentable, a claim to an apparatus must set forth a structure that is
structurally distinguishable from that of the prior art. See Hewlett-Packard
Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1468 (Fed. Cir. 1990)
(“apparatus claims cover what a device is, not what a device does.”). In my
opinion, Appellant has not identified a reversible error in the Examiner’s
finding that GB’535 discloses the same structure as claimed.
As explained by Appellant, “GB’535 discloses an upright vacuum
cleaner that includes a compressor (18) having a rotor (19) for generating
suction through the vacuum cleaner and two impellers (11, 16) for
generating rotating air current in the airflow generated by the compressor.”
Appeal Br. 5–6 (citing GB’535 1:17-19, 2:18-50). As further pointed out by
Appellant, “[t]he compressor rotor 19 and the two impellers (11, 16) share a
common drive shaft and motor.” (Id.) Appellant also acknowledged that the
motor drives all three components (impellers 11, 16 and the rotor 19). (Id.)
Appellant contends that “none of these components recaptures
rotational energy from an airflow” and “none of these components is a
‘turbine section having a second set of blades for recapturing rotational
energy from the airflow,’ as required by claim 1.” (Appeal Br. 6.)
However, Appellant’s contention does not adequately address the
Examiner’s finding that “[t]he rotor 19 of compressor 18 of GB’535
discloses the ‘turbine section’ captures rotational energy (even a verv small
amount of capturing rotational energy) due to the airflow moving upwards
from the impeller section (11) but also generating rotational energy.” Ans.
4.
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According to Appellant, the Examiner’s finding is based on “pure
conjecture” and “the Examiner cites no evidence.” (Reply Br. 3.) However,
the Examiner finds that the structure of GB’535 is the same as that claimed
and would have the same operational function. (Ans. 5.) And the disclosure
of GB’535 supports the Examiner’s finding. GB’535 discloses a rotatable
body including impeller section with blades 11 and further including a
turbine section (combination of compressor 18 with rotor 19 and blades 16.
This structure is shown in GB’535 Figure 3. I reproduce the portion of
Figure 3 that shows the body below:

The above figure is a schematic cross-section of the body within
GB’535’s Figure 3.
Like Appellant’s body, the body of GB’535 includes an impeller
section with blades 11 and a turbine section (structure including intake spout
20, central opening 21, compressor 18, rotor 19, and blades 16). (See above
Fig.) The turbine section is located downstream from the airflow and spaced
along the rotational axis from the impeller section having blades 11 and
which has a second set of blades 16. (Id.)
Although GB’535 does not expressly state that the second set of
blades (blades 16) are “for recapturing rotational energy from the airflow,”
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blades 11 push air past blades 16 in the same, or in a similar manner, as
Appellant’s blades. Thus, the Examiner’s finding that some of the energy of
that air moving past blades 16 would translate into mechanical energy to
push the blades thereby recapturing rotational energy from the airflow is
reasonable. Because impeller 11 is forcing air past blades 16, the load on
the motor is lessened. Even a very small amount of energy translation meets
the requirements of the claims. “Under the principles of inherency, if a
structure in the prior art necessarily functions in accordance with the
limitations of a process or method claim of an application, the claim is
anticipated.” In re King, 801 F.2d 1324, 1326 (Fed. Cir. 1986).
Because Appellant has not rebutted the Examiner’s reasonable finding
of inherency, I determine that Appellant has not identified a reversible error
in the Examiner’s inherency finding.
Appellant further contends that the Examiner erred in finding that
GB’535 includes the turbine and impeller sections of the claims. Appeal Br.
10–14. For the reasons provided by the Examiner in the Advisory Action
and Answer, I disagree.