Ex Parte Hosoito et al

Board of Patent Appeals and Interferences

Mar 7, 2012

10528791 (B.P.A.I. Mar. 7, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte TSUYOSHI HOSOITO and YOJI OKAZAKI
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Appeal 2010-005212
Application 10/528,791
Technology Center 1700
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Before KAREN M. HASTINGS, MICHAEL P. COLAIANNI, and
DEBORAH KATZ, Administrative Patent Judges.

HASTINGS, Administrative Patent Judge.

DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134 from the Examiner's
rejections under 35 U.S.C. § 103(a) of claims 1 and 4 as unpatentable over
Fumiyoshi (JP2000-334194, pub. May 12, 2000; as transl.) in view of
Matsuura (US 6,163,912, issued Dec. 26, 2000), with or without Tawada
(US 5,864,104, issued Jan. 26, 1999), both alternatives also further in view
of Shimakage (US 2002/0046581 A1, pub. Apr. 25, 2002); and of claims 3
and 7 as unpatentable over these two alternative combination of references
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and further in view of Staley (US 7,097,140 B2, issued Aug. 29, 2006). We
have jurisdiction under 35 U.S.C. § 6.
We REVERSE.
Representative claim 1 reads as follows:
1. A drum washing machine comprising:

a rotating tub comprised of a cylindrical drum having a front formed
with a circular opening through which laundry is put into the rotating tub
and a rear closed;

a DC brushless motor configured to generate a driving force for wash,
rinse and dehydration operations and including a rotor;

a rotational shaft of the motor having a front end directly fixed to the
rotating tub and a rear end fixed to a core of the rotor so that torque
developed by the motor is directly transmitted to the rotating tub;

a current detector configured to detect electric current flowing into the
motor;

a torque control unit configured to perform a vector control for the
motor on the basis of the current detected by the current detector so that
torque developed by the motor is rendered optimum for at least the wash and
dehydration operations;

a speed control unit configured to control a rotational speed of the
motor, based on the current detected by the current detector; and

a laundry amount determining unit configured to determine an amount
of laundry in the rotating tub, based on a magnitude of an accumulated value
of torque current in a period when a rotational speed of the motor is
accelerated,

wherein an amount of detergent to be necessitated according to the
determined amount of laundry is displayed on a display.
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The Examiner bears the initial burden of presenting a prima facie case
of obviousness. In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992).
"[R]ejections on obviousness grounds cannot be sustained by mere
conclusory statements; instead, there must be some articulated reasoning
with some rational underpinning to support the legal conclusion of
obviousness." See In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) quoted
with approval in KSR Int’l. Co. v. Teleflex Inc., 550 U.S. 398, 417-18
(2007).
The fact finder must be aware “of the distortion caused by hindsight
bias and must be cautious of arguments reliant upon ex post reasoning.”
KSR Int'l Co. v. Teleflex Inc., 550 U.S. at 421(citing Graham v. John Deere
Co. of Kansas City, 383 U.S. 1, 36 (1966) (warning against a “temptation to
read into the prior art the teachings of the invention in issue”)).
After review of the respective positions provided by Appellants and
the Examiner, we agree with Appellants that the Examiner has not met the
burden in this case. We add the following for emphasis.
Appellants state that “Claim 1 recites that the laundry weight
detection is carried out only during an acceleration period.” (Br. 11; see also
Br. 14; Spec. 3, ll. 10-15 “since the operational control in the washing
machine is directed mainly to control for acceleration, an amount of laundry
can easily be determined during the acceleration period.”).1 Appellants

1 The Examiner does not specifically contest this interpretation of the claim
language (see generally Ans.). Accordingly, we conclude that consistent
with Appellants’ position, the broadest reasonable interpretation of instant
claim 1 is limited to a control wherein the “laundry weight detection is
carried out only during an acceleration period.” (Br. 11).
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contend that, in contrast, Matsuura must calculate the difference in torque
between an acceleration period and a deacceleration period, and must
compensate for a transmitting mechanism that is precluded by the claimed
direct transmission of the torque to the rotating tub (Br. 12-14).
Furthermore, Appellants contend that Tawada’s control for opening an
elevator door does not teach or suggest the claim limitations for which the
Examiner relies upon it, and further that combining or modifying Matsuura’s
laundry weight detection control scheme with Tawada’s elevator door
control scheme would not have resulted in the claimed invention (Br. 12-14).
A preponderance of the evidence supports Appellants’ arguments.
The Examiner’s rejection and response to argument presented in the Answer
does not adequately address the concerns raised by the Appellants outlined
above (Ans. generally). For the foregoing reasons, and those presented by
Appellants in the Brief, the Examiner has not satisfied the initial burden of
presenting a prima facie case of obviousness, and we conclude that on this
record, the Examiner’s rejection is improperly based upon improper
hindsight reasoning of Appellants' own disclosure. KSR, 550 U.S. at 421.
Furthermore, with respect to the rejections that do not include
Tawada, the Examiner repeatedly dismisses all of the claim limitations that
begin with “configured to” as “intended use and therefore carries no
patentable weight” (Ans. 7, 9). We disagree. To the extent that the
Examiner's position is that these claims recite only general purpose control
unit(s) as the claimed control units, determining unit, etc., the Examiner's
position is untenable. Although it is well established that claims directed to
an apparatus must be distinguished from the prior art in terms of structure
rather than function, see, e.g., In re Schreiber, 128 F.3d 1473, 1477-78 (Fed.
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Cir. 1997), in order to satisfy the functional limitations in an apparatus
claim, however, the prior art apparatus must be capable of performing the
claimed function. Id. at 1478. As such, to be capable of performing the
functional limitations in claim 1, the control units or comparable structure
must possess the necessary structure, that is, programming, to function as
claimed. The Examiner indeed defacto admits that Matsuura is not
programmed to function as claimed, and no other reference is relied upon by
the Examiner to remedy this deficiency (i.e., in the rejections that do not
include Tawada; see generally Ans.).
Accordingly, we will not sustain any of the rejections advanced by the
Examiner in this appeal.
The decision of the Examiner is reversed.

REVERSED

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