Ex Parte B¿sing et al

Patent Trial and Appeal Board

Aug 26, 2016

12743379 (P.T.A.B. Aug. 26, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
121743,379 05/18/2010
46726 7590 08/30/2016
BSH Home Appliances Corporation
100 Bosch Boulevard
NEW BERN, NC 28562
FIRST NAMED INVENTOR
Johannes Blsing
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.
2007P01918WOUS 3560
EXAMINER
CORMIER, DAVID G
ART UNIT PAPER NUMBER
1711
NOTIFICATION DATE DELIVERY MODE
08/30/2016 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):
MBX-NBN-IntelProp@bshg.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JOHANNES BUSING, PETER GEISSLER, CENGIZ KUCUK,
MANFRED SEESSLE, and HERMANN STEMPFLE1
Appeal2015-000990
Application 12/743,379
Technology Center 1700
Before MARK NAGUMO, WESLEY B. DERRICK, and
JENNIFER R. GUPTA, Administrative Patent Judges.
DERRICK, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134 from the Examiner's
maintained rejection under 35 U.S.C. § 102(b) of claims 16-20, 22-27, and
31-35 over Jordan2 and under 35 U.S.C. § 103(a) of claims 21 and 28 over
Jordan in view of Schmidt. 3 We have jurisdiction pursuant to 35 U.S.C. § 6.
We REVERSE.
1 BSH Home Appliances Corporation is identified as the real party in
interest. Appeal Br. 3.
2 US 5,251,939, issued October 12, 1993.
3 US 5,582,199, issued December 10, 1996.
Appeal2015-000990
Application 12/743,379
BACKGROUND
Appellants' claimed invention is directed to water-carrying household
appliances, in particular dish-rinsing or dish-washing machines. Spec.
Abstract. Claims 16 and 31 are the sole independent claims.
Independent claim 31 is illustrative:
31. A water-carrying household appliance assembly
compnsmg:
an assembly base;
a water chamber assembled to the assembly base;
a water-carrying hose, an end of which is configured to
be connected to the water chamber; and
a holder structured to position the water-carrying hose
end at a connection position such that, when the water-carrying
hose end is in the connection position, attaching the water
chamber to the assembly base automatically connects the water
carrying hose end to a connection pipe of the water chamber.
Appeal Br. (Claims Appendix) 20.
Claim 16 similarly recites "a holder structured to position the line end
of the water-carrying line in a connection position for automatic connection
to the connection pipe when the water chamber is attached to the assembly
base."
DISCUSSION
Upon consideration of the evidence and Appellants' arguments, we
are persuaded that the Examiner has erred reversibly in finding that Jordan
anticipates claims 16-20, 22-27, and 31-35 and, in relying on Jordan in the
same manner, has also failed to meet the burden of establishing that
claims 21 and 28 are unpatentable for obviousness over Jordan in view of
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Application 12/743,379
Schmidt. 4 We are, therefore, constrained to reverse the Examiner's
rejections. In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992) ("[T]he
examiner bears the initial burden, on review of the prior art or on any other
ground, of presenting a primafacie case ofunpatentability.").
In order to anticipate, a "reference must disclose each and every
element of the claimed invention, whether it does so explicitly or inherently"
with the elements "arranged or combined in the same way as in the claim."
In re Gleave, 560 F.3d 1331, 1334 (Fed. Cir. 2009) (internal citations and
quotations omitted).
We begin our analysis by determining the meaning of the claims,
giving terms the broadest reasonable interpretation consistent with the
Specification as it would be interpreted by one of ordinary skill in the art.
See, e.g., In re Suitco Surface, Inc., 603 F.3d 1255, 1259-60 (Fed. Cir.
2010); In re Morris, 127 F.3d 1048, 1054-55 (Fed. Cir. 1997).
In the instant appeal, the critical issue is the proper meaning of the
language describing how the holder is structured with respect to positioning
the water-carrying hose end. In this respect, claim 31 recites:
a holder structured to position the water-carrying hose
end at a connection position such that, when the water-carrying
hose end is in the connection position, attaching the water
chamber to the assembly base automatically connects the water
carrying hose end to a connection pipe of the water chamber.
Having considered the language of the claim, we determine the phrase above
recites a relation between elements that must be met, that is, positioning the
4 We refer to the Final Office Action mailed March 18, 2014, the Appeal
Brief filed July 2, 2014, the Examiner's Answer mailed September 25, 2014,
and the Reply Brief filed October 28, 2014.
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Appeal2015-000990
Application 12/743,379
water-carrying hose end such that when the water chamber is attached to the
assembly base the water-carrying hose end is connected to the connection
pipe of the water chamber. It follows that the required relation between
elements must be such that if the water chamber is attached to the assembly
base then the connection of the water carrying hose to a connection pipe of
the water chamber is also made. In reviewing the Specification carefully,
we find nothing contrary to this interpretation, particularly where assembly
is described, in reference to Figure 1, as including a pre-positioning of hose
end pieces 17 of the hose lines 15 in their connection position on the holder
23 when the heat exchanger 9 is still separate from the dishwashing machine
and that connection pipes 13 of the heat exchanger 9 are automatically
inserted into pre-positioned hose end piece 17 when the heat exchanger 9 is
assembled onto the washing chamber. Spec. iJ 29. Figure 1 further indicates
by arrows II that assembly is by moving heat exchanger 9 to contact where
as depicted, and described in paragraph 29, assembly is effected by
mounting the heat exchanger 9 on the washing chamber. While the claims
are by no means limited to the embodiment illustrated in Figure 1, the
relation between elements required by the claims must be met by an
anticipatory reference, or be obvious in view of the applied prior art.
Although claims directed to an apparatus must be distinguished from
the applied prior art in terms of structure rather than function, in order to
satisfy the relational limitations in such apparatus claims, the Examiner has
the burden of showing that the apparatus taught or suggested by the applied
prior art is inherently capable of performing the claimed function. In re
Schreiber, 128 F.3d 1473, 1477-78 (Fed. Cir. 1997); Typhoon Touch Techs.,
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Appeal2015-000990
Application 12/743,379
Inc. v. Dell, Inc., 659 F.3d 1376, 1380 (Fed. Cir. 2011). With this in mind,
we tum to the Examiner's rejection grounded on the cited prior art.
In rejecting claim 31, the Examiner relies on Jordan's disclosure for
an assembly base [tub 14], water chamber [water injector 46], and water-
carrying hose [water hose 48]. Final Act. 6; Jordan Fig. 5. As to the holder
structured to position the water-carrying hose end, the Examiner relies on
arcuate ribs 28 and 30 forming a curved channel 32. Final Act. 6; Jordan
Fig. 5, col. 4, 11. 2-3. As described in Jordan, the water injector 46 is
connected to the tub 14 and then rotated in a counter-clockwise position to a
vertical position thereby, in the view of the Examiner, causing hose 48 to fit
onto conduit 74. Final Act. 6; Jordan Fig. 5.
In maintaining the rejection, the Examiner reasons that the language
describing how the holder is structured, including use of "attaching" and
"automatically connects," merely describes a method of assembly and is not,
accordingly, a structural limitation. Alternatively, the Examiner finds that
"the combined act of placing the water injector 46 at the angled position and
rotating it to its vertical position would broadly and reasonably meet the
limitation of 'attaching' it to the assembly base." Ans. 4-5. The Examiner
relies on the legal principles that apparatus claims cover what a device is,
not what it does, and that claims directed to an apparatus must be
distinguished from the prior art in terms of structure rather than function.
Ans. 4 (citing Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464,
1469 (Fed. Cir. 1990); Schreiber, 128 F.3d at 1477-78.
Appellants argue, inter alia, that Jordan's disclosure does not
anticipate claim 31 because the water injector 46 is initially attached to the
dishwasher at an angled position in which the water injector is separated
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Appeal2015-000990
Application 12/743,379
from the line end of the water hose and it is only after attachment that the
water injector 46 is rotated to the upright, final position where water injector
46 can receive the water hose 48. Appeal Br. 10 (citing Jordan Fig. 5, col. 5,
11. 8-38). As Appellants emphasize, the water injector 46 must be rotated
after being attached to tub 14 in order for the conduit 7 4 to even contact the
water hose 48. Appeal Br. 10. In doing so, Appellants highlight that the
Examiner has failed to establish that Jordan discloses structure that performs
or is inherently capable of performing the function required-positioning the
water-carrying hose end such that attaching the water chamber to the
assembly base concomitantly attaches the water carrying hose end to the
connection pipe of the water chamber. See also Reply Br. 2-5.5
On this record, the Examiner has failed to establish that Jordan
discloses the holder structure, albeit defined functionally, that is required by
claim 31.
Likewise, we are of the opinion that the Examiner has failed to
establish that claim 16, which recites "a holder structured to position the line
end of the water-carrying line in a connection position for automatic
connection to the connection pipe when the water chamber is attached to the
assembly base," is anticipated by Jordan. While the Examiner further relies
on different elements in Jordan in the alternative to those discussed above
(Final Act. 4), the Examiner similarly fails to establish that the elements are
arranged in the same way as in the claim, that is, to provide the required
relation between elements in the structure necessary for the functional
limitation. As to the alternatives, a flange 90 is relied on as "an assembly
5 As the Reply Brief lacks pagination, we refer to pages sequentially from
the first to the last.
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Application 12/743,379
base," a locking flap 84 is relied on as a holder, and elongated body 50 (of
water injector 46) and tub 14 are, depending on the interpretation, relied on
as a "water chamber" (Final Act. 4), however, we discern no reasonable
basis for the structure with elements in relation to one another as required by
the functional limitation in the Examiner's proffered alternatives. 6
Accordingly, to sustain the Examiner's rejection, we would be required to
rely on conjecture, which we will not do. In re Warner, 379 F.2d 1011,
1017 ( CCP A 1967) ("The Patent Office has the initial duty of supplying the
factual basis for its rejection. It may not ... resort to speculation, unfounded
assumptions or hindsight reconstruction to supply deficiencies in its factual
basis."). Likewise, we decline to scour the record in the first instance for
facts that might support the rejection, as our primary role is review, not
examination de novo.
In the obviousness rejection of claims 21 and 28 over Jordan in view
of Schmidt, the Examiner relies on Jordan as detailed above. Final Act. 7-8;
Ans. 8-9.
6 The Examiner relies on elements 14 or 90 as the assembly base and
elements 50 or 14 as the water chamber. Final Act. 4. Where element 14 is
relied on to be the assembly base (and element 50 as the water chamber), the
situation is the same as for claim 31 discussed above. Where element 90 is
taken as the assembly base-despite being an apparent component of water
injector 46-(i) taking element 50 as the water chamber provides a complete
water injector 46, but fails to provide for further assembly of the disclosed
apparatus, let alone establish the required concomitant connection to water
hose 48 (see Fig. 3); and (ii) taking element 14 as the water chamber
requires the assembly of the water chamber to the assembly base (i.e. flange
90) to be indirect through other elements, where such an indirect connection
is made when attaching water injector 46 to tub 14 prior to positioning to
make connection to, and then making a connection to, water hose 48 (see
Figs. 3, 5; col. 2, 1. 49 - col. 3, 1. 11 ).
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Appeal2015-000990
Application 12/743,379
It follows that we are unable to sustain the obviousness rejection as
the Examiner-having erred as to the independent claims' functional
limitations' meaning and import-likewise failed to set forth the requisite
basis for modification of the cited prior art to meet the functional limitations
of the base claim from which claims 21 and 28 depend.
CONCLUSION
The Examiner's rejection of claims 16-20, 22-27, and 31-35 under
35 U.S.C. § 102(b) is REVERSED.
The Examiner's rejection of claims 21 and 28 under 35 U.S.C.
§ 103(a) is REVERSED.
REVERSED
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