Dyson Technology Limited

Patent Trials and Appeals Board

Jun 26, 2020

2019003303 (P.T.A.B. Jun. 26, 2020)

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.
13/963,587 08/09/2013 Will Henry KERR 424662072500 1594
25227 7590 06/26/2020
MORRISON & FOERSTER LLP
1650 TYSONS BOULEVARD
SUITE 300
MCLEAN, VA 22102
EXAMINER
TAYLOR, JON S
ART UNIT PAPER NUMBER
3723
NOTIFICATION DATE DELIVERY MODE
06/26/2020 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):
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PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte WILL HENRY KERR and ALISTAIR WILLIAM SKUSE
Appeal 2019-003303
Application 13/963,587
Technology Center 3700

Before LINDA E. HORNER, DANIEL S. SONG, and JILL D. HILL,
Administrative Patent Judges.

SONG, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–19 and 23–25. We have jurisdiction
under 35 U.S.C. § 6(b).
We AFFIRM IN PART.

1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42(a). The Appellant identifies the real party in interest as Dyson
Technology Limited. Appeal Br. 2.
Appeal 2019-003303
Application 13/963,587
2
CLAIMED SUBJECT MATTER
The claims are directed to a cleaner head. Claim 1, reproduced below,
is illustrative of the claimed subject matter:
1. A cleaner head comprising an agitator and a drive
assembly for driving the agitator, the drive assembly comprising
a dog for transmitting torque to the agitator, wherein one of the
dog and the agitator comprises a tapered head, a shank that
extends from the head, and a screw thread formed around the
shank, the other of the dog and the agitator comprises a bore
having a countersink and a complementary screw thread formed
around a wall of the bore, the shank projects into the bore, and
the two threads mate such that, as the dog rotates, the agitator
screws on to the dog and the tapered head mates with the
countersink.
Appeal Br. 22, Claims App.
REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Stegens et al. US 6,591,440 B2 July 15, 2003
Rainey et al. US 2010/0032209 A1 Feb. 11, 2010
Hahn DE 10 2010 060 373 A1 May 10, 2012
REJECTIONS
The Examiner rejects various claims under 35 U.S.C. § 103(a) as
follows:
1. Claims 1–6 and 8 as unpatentable over Hahn in view of
Stegens. Final Act. 2.
2. Claim 7 as unpatentable over Hahn in view of Stegens and
Rainey. Final Act. 4.
3. Claims 9–15 and 17 as unpatentable over Hahn in view of
Rainey. Final Act. 5.
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Application 13/963,587
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4. Claim 16 as unpatentable over Hahn in view of Rainey and
Stegens. Final Act. 7.
5. Claims 18, 19, and 25 as unpatentable over Hahn. Final Act.
8.2
6. Claim 23 as unpatentable over Hahn in view of Rainey. Final
Act. 9.
7. Claim 24 as unpatentable over Hahn in view of Stegens. Final
Act. 9.
OPINION
Rejection 1: Hahn in view of Stegens
The Examiner rejects claims 1–6 and 8 as unpatentable over Hahn in
view of Stegens. Final Act. 2. As to independent claim 1, the Examiner
finds that Hahn discloses the invention substantially as claimed, but does not
disclose the limitation “wherein one of the dog and the agitator comprises a
tapered head, the other of the dog and the agitator comprises a bore having a
countersink, and the tapered head mates with the countersink.” Final Act. 3.
The Examiner finds that Stegens discloses “a head (38) and a shank (36)
with a taper (portion between 36 & 37) there between, and a corresponding
countersink to accommodate this taper.” Final Act 3‒4. The Examiner
concludes that it would have been obvious to a person of ordinary skill in the
art to have modified the device of Hahn to provide a taper between the shank
and the head to reduce the stress concentration. Final Act. 4.

2 The heading for this rejection also identifies claim 21 as being rejected.
Final Act. 8. However, claim 21 was canceled during prosecution. See
Amendment, filed July 17, 2017, pg. 5.
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Application 13/963,587
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The Appellant disagrees and argues that although Stegens discloses a
taper and a corresponding countersink, it “fails to disclose or suggest that
‘the tapered head mates with the countersink.’” Appeal Br. 7. In particular,
the Appellant points out that the Specification of Stegens does not describe
the taper and the countersink as mating with each other, and argues that the
assembled view shown in Figure 2 of Stegens is “merely schematic in nature
and insufficiently detailed to show whether or not the taper and the
countersink should or should not mate.” Appeal Br. 8.
In support of its position, the Appellant provides, inter alia, a
technical argument that in Stegens, “the concentric alignment function is
provided by the press fit between the stub shaft 36 and the pin 51 and the
axial alignment function is provided by the abutment between the end piece
38 and the seat 58.” Appeal Br. 9, citing Stegens, col. 3, ll. 22–24; see also
Stegens Figs. 2, 3. As such, the Appellant argues that although a person of
ordinary skill may have provided a taper transition in Hahn to reduce stress,
and a countersink to accommodate the added taper, there is no reason to
have the taper and countersink mate. Appeal Br. 10–11.
The Examiner responds that Figure 2 of Stegens “clearly shows the
taper and countersink mated with one another,” and explains that because
the Appellant did not provide a “special definition of the word ‘mating’ to
require two parts to exactly conform to one another, . . . insertion of the taper
into the countersink is correctly considered a ‘mating’ of the two parts,” and
“providing a countersink to accommodate a taper is a basic engineering
design feature.” Ans. 10–11; see also Ans. 11 (“One of ordinary skill in the
art would modify designs of Hahn to provide for flush abutment of
components by designing the countersink to accommodate the entirety of the
taper.”).
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We are persuaded by the Appellant’s arguments. The technical basis
of the Appellant’s argument as to Stegens is sound considering its specific
disclosure of a bearing 37 and the raised seat 58 for the bearing. See Stegens
Figs. 2, 3; col. 2, ll. 44–47, 59–61; col. 3, ll. 22–24. The seating of the
bearing 37 on the raised seat 58 indicates that, more likely than not, the
disclosed taper and countersink of Stegens do not mate with each other. The
Examiner appears to acknowledge the merit of this argument in interpreting
the limitation “mate” to merely require the insertion or accommodation of
the taper within the countersink. Ans. 10–11. However, we agree with the
Appellant that “[t]he Examiner’s interpretation of ‘mating,’ . . . is not
consistent with the customary and ordinary meaning of ‘mating,’ is not
consistent with the specification, and is not consistent with the claims.”
Reply Br. 7; see also Reply Br. 6 (citing DICTIONARY FOR
MECHANICAL ENGINEERING, 243 (1996) (4th ed., Society of
Automotive Engineers) (defining “mating” as describing “interlocking of
two surfaces or pieces”); Spec. 6, ll. 4–12) (“tapered head mates with and
tightens against the countersink. The mating of the countersink and the
tapered head acts to align concentrically the agitator and the dog.”). Thus,
the Examiner’s interpretation of “mate” is unreasonably broad.
Therefore, in view of the above considerations, we reverse the
Examiner’s rejection of claim 1, and claims 2–6 and 8 that ultimately depend
from claim 1.

Rejection 2: Hahn in view of Stegens and Rainey
The Examiner rejects claim 7 as unpatentable over Hahn in view of
Stegens and Rainey. Final Act. 4. The Appellant relies on dependency on
claim 1 for patentability of claim 7. Appeal Br. 3, 14. The Examiner’s
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application of Rainey for its teaching of a screw thread having a buttress
thread form does not remedy the deficiency of the combination of Hahn and
Stegens discussed above relative to claim 1. Accordingly, this rejection of
claim 7 is also reversed.

Rejection 3: Hahn in view of Rainey
The Examiner rejects claims 9–15, and 17 as unpatentable over Hahn
in view of Rainey. Final Act. 5. Independent claim 9 differs from claim 1 in
that claim 9 does not require a tapered head or a countersink, but instead,
recites that “each of the screw threads has a buttress profile.” Appeal Br.
22–23, Claims App. As to independent claim 9, the Examiner finds that
Hahn discloses the invention substantially as claimed, but does not disclose
that each of the screw threads has a buttress profile. Final Act. 6. The
Examiner relies on Rainey for disclosing “a threaded coupling between two
rotatably coupled elements (102 and 136), wherein the threads are buttress
threads (143b; ¶ [0092]).” Final Act. 6. Accordingly, the Examiner
concludes that it would have been obvious to a person of ordinary skill in the
art to have modified the device of Hahn in view of Rainey to use buttress
threads, which “can resist relatively high axial forces in a preferred
direction, thereby making for a robust and durable coupling of the rotatable
parts.” Final Act. 6.
The Appellant disagrees and argues that there is no reason to modify
Hahn because “[t]he purpose of Rainey’s use of buttress profile threads is to
enable an overstrike force to be transferred without deformation of the
threads,” whereas “[t]he drive mechanism of Hahn does not impart an
overstrike force on the rotary brush.” Appeal Br. 16. In that regard, the
Appellant argues that “there is no evidence that the threads of Hahn are
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exposed to relatively high axial forces” (Appeal Br. 17), or that “one of skill
in the art would have thought that the threads in Hahn experience such high
axial loads that buttress threads would be warranted” (Reply Br. 9). The
Appellant further argues that, to the contrary, “one of ordinary skill in the art
would have recognized that Hahn’s threads likely experience relatively little
axial force.” Reply Br. 10; see also Reply Br. 9. Based thereon, the
Appellant argues that “the Examiner’s rationale for modifying Hahn to
include buttress threads can only be the result of impermissible hindsight.”
Appeal Br. 17.
The Examiner responds that “[b]uttress threads are well known in the
art of mechanical design,” and “Rainey teachings are pertinent to the
particular problem of how to rotatably connect two members in a threaded
manner,” and that “the members of Hahn, which are rotatably coupled, will
experience axial forces due to the nature of how they operate.” Ans. 13.
We agree with the Appellant for the reasons argued. Rainey is
directed to a rotary earth bit for drilling a well in which overstrike force is
applied to the earth bit. Title; Abstr. Based on their application, any applied
axial forces in Rainey would have been greater by many orders of magnitude
as compared to axial forces in a cleaner head of Hahn. Moreover, as the
Appellant argues, there is no evidence that high axial forces were of concern
in the art of cleaner heads, or that one of ordinary skill in that art would have
perceived Hahn as being subjected to such high axial forces. Accordingly,
the Examiner’s reasoning for providing buttress threads based on the rotary
earth bit of Rainey does not appear to be supported by rational
underpinnings, but instead, appears to be based on impermissible hindsight.
Therefore, in view of the above, we reverse the Examiner’s rejection
of claim 9, and claims 10–15, and 17 that ultimately depend from claim 9.
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Rejection 4: Hahn in view of Rainey and Stegens
The Examiner rejects claim 16 as unpatentable over Hahn in view of
Rainey and Stegens. Final Act. 7. The Appellant relies on dependency on
claim 9 for patentability of claim 16. Appeal Br. 14, 19. The Examiner’s
application of Stegens for the taper and countersink does not remedy the
deficiency of the combination of Hahn and Rainey. Accordingly, this
rejection of claim 16 is also reversed.

Rejection 5: Hahn
The Examiner rejects claims 18, 19, and 25 as unpatentable over
Hahn. Final Act. 8. Independent claim 18 differs from claim 1 in that claim
18 does not require a tapered head or a countersink, but instead, recites that
“each start turns through an angle of . . . no less than 120 degrees.” Appeal
Br. 23–24, Claims App.
As to independent claim 18, the Examiner finds that Hahn discloses
the invention substantially as claimed, and concludes that the angular
limitations would have been obvious design choices to one of ordinary skill,
and “would not yield any unexpected results.” Final Act. 8. The Examiner
further finds that Figure 5 of Hahn suggests “each start turns through an
angle of about 180 degrees.” Ans. 14–15; see id. at 15 (annotated Fig. 5 of
Hahn).
The Appellant argues that “the references fail to disclose or suggest
that ‘each start turns through an angle of . . . no less than 120 degrees.’”
Appeal Br. 19. The Appellant also argues that the Examiner has failed to
articulate adequate reasoning for the rejection, and has failed to state what
design characteristics are for the design of a turn angle. Appeal Br. 20.
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Application 13/963,587
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Referring to its Specification, the Appellant argues that “below an angle of
120 degrees, the lengths of the starts may be insufficient to bear the torque
required of a cleaner head of some embodiments.” Appeal Br. 19, citing
Spec. 3, ll. 1–5.
The Appellant appears to concede that Figure 5 of Hahn suggests
turning of about 180 degrees in arguing that “while the shank may include
the required threads, Hahn fails to disclose or suggest that the mating threads
meet the requirement that ‘each start turns through an angle of no more than
360 degrees and no less than 120 degrees.’” Reply Br. 11. In particular, the
Appellant points out that “the length over which the screw threads on the
bore extend is significantly less than the length over which the screw threads
on the shank extend.” Reply Br. 11. Thus, the Appellant argues that “while
the shank may include a screw thread that turns 180 degrees, as argued by
the Examiner, there is no evidence that the bore includes such screw
threads.” Reply Br. 12; see also id. (annotated Fig. 5 of Hahn).
We are not persuaded by the Appellant’s arguments. Figure 5
illustrates starts of the shank in Hahn that turn through an angle of
approximately 180 degrees as recited in claim 18. Ans. 15 (annotated Fig. 5
of Hahn). The Appellant is correct that the mating threads of the dog of
Hahn that engage the threads of the shank must turn less than 180 degrees
because the bore of the dog is shorter than the shank. See Hahn Fig. 5.
However, it is also evident from Figure 5 of Hahn that the magnitude of this
difference is not great, and the length of the bore appears to be
approximately one fourth shorter than the length of the shank. See id. This
suggests that the mating threads of the dog turns approximately 120 degrees
as also required by claim 18.
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Application 13/963,587
10
We are aware that extraction of quantitative values based on
measurements of a drawing are of little value. In re Wright, 569 F.2d 1124,
1127 (CCPA 1977). However, drawings can be relied on for what they
reasonably disclose and suggest to one of ordinary skill in the art. See In re
Mraz, 455 F.2d 1069, 1072 (CCPA 1972); In re Aslanian, 590 F.2d 911, 914
(CCPA 1979). Thus, although we do not find that Hahn discloses threads of
the dog turning 120 degrees, in view of the apparent disclosure of a bore
length that is approximately one fourth shorter than the length of the shank,
we agree with the Examiner that it would have been an obvious design
choice to one of ordinary skill to have designed the threads of the bore to
turn 120 degrees. Any deviation in Hahn from the recited 120 degrees
would have been relatively minor and an obvious variation.
Although the Appellant argues that “below an angle of 120 degrees,
the lengths of the starts may be insufficient to bear the torque required of a
cleaner head of some embodiments” (Appeal Br. 19), the extent of thread
engagement to ensure ability of a threaded joint to bear the anticipated
torque would have been an obvious parameter to consider by one of ordinary
skill in the design of threaded joints generally, and would have been a
consideration in the design of a cleaner head such as that of Hahn
specifically. Appeal Br. 19. See In re Dailey, 357 F.2d 669, 672–73 (CCPA
1966) (affirming design choice determination where “Appellants have
presented no argument which convinces us that the particular configuration
of their container is significant or is anything more than one of numerous
configurations a person of ordinary skill in the art would find obvious for the
purpose of providing mating surfaces in the collapsed container [of the prior
art]”).
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Finally, the Appellant asserts that the Examiner has improperly shifted
the burden to the Appellant to establish unexpected results to prove
patentability when a prima facie case of obviousness has not been
established. Appeal Br. 20. However, as discussed above, we agree with
the Examiner as to the rejection, and find that a prima facie case of
obviousness has been shown, and as such, we see no error in the Examiner’s
further explanation that no unexpected results has been demonstrated. See
In re Woodruff, 919 F.2d 1575, 1578 (Fed. Cir. 1990) (where the difference
between the claimed invention and the prior art is some range or other
variable within the claims, “the applicant must show that the particular range
is critical, generally by showing that the claimed range achieves unexpected
results relative to the prior art range.”).
Therefore, in view of the above considerations, we affirm the
Examiner’s rejection of independent claim 18. The Appellant does not
submit separate arguments for patentability of claims 19 and 25 that depend
from claim 18. Appeal Br. 19. Accordingly, we affirm this rejection as to
claims 19 and 25 as well.

Rejection 6: Hahn in view of Rainey
The Examiner rejects claim 23 as unpatentable over Hahn in view of
Rainey. Final Act. 9. Claim 23 depends on claim 18 discussed above, but
also requires each screw thread to have a buttress thread form. Appeal Br.
24, Claims App. The rejection of claim 23 applies Rainey in the same
manner as in Rejection 3 of claim 9. Final Act. 9. Accordingly, we reverse
this rejection of claim 23 for substantially the same reasons as claim 9.

Appeal 2019-003303
Application 13/963,587
12
Rejection 7: Hahn in view of Stegens
The Examiner rejects claim 24 as unpatentable over Hahn in view of
Stegens. Final Act. 9. Claim 24 depends from claim 18, but also requires a
tapered head that mates with a countersink. Appeal Br. 24, Claims App.
Thus, we reverse this rejection of claim 24 for substantially the same reasons
as claim 1.
CONCLUSION
The Examiner’s rejections are affirmed in part. More specifically,
1. Rejection of claims 1–6 and 8 as unpatentable over Hahn in
view of Stegens is reversed.
2. Rejection of claim 7 as unpatentable over Hahn in view of
Stegens and Rainey is reversed.
3. Rejection of claims 9–15 and 17 as unpatentable over Hahn in
view of Rainey is reversed.
4. Rejection of claim 16 as unpatentable over Hahn in view of
Rainey and Stegens is reversed.
5. Rejection of claims 18, 19, and 25 as unpatentable over Hahn is
affirmed.
6. Rejection of claim 23 as unpatentable over Hahn in view of
Rainey is reversed.
7. Rejection of claim 24 as unpatentable over Hahn in view of
Stegens is reversed.
Appeal 2019-003303
Application 13/963,587
13
DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1–6, 8 103 Hahn, Stegens 1–6, 8
7 103 Hahn, Stegens,
Rainey
7
9–15, 17 103 Hahn, Rainey 9–15, 17
16 103 Hahn, Rainey,
Stegens
16
18, 19, 25 103 Hahn 18, 19, 25
23 103 Hahn, Rainey 23
24 103 Hahn, Stegens 24
Overall
Outcome
18, 19, 25 1–17, 23, 24

TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv) (2017).
AFFIRMED IN PART