Ex Parte Schulze et al

Patent Trial and Appeal Board

Feb 28, 2017

12665774 (P.T.A.B. Feb. 28, 2017)

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.
12/665,774 05/28/2010 Ingo Schulze PTB-6032-61 3707
23117 7590 03/02/2017
NIXON & VANDERHYE, PC
901 NORTH GLEBE ROAD, 11TH FLOOR
ARLINGTON, VA 22203
EXAMINER
KHAN, AMINA S
ART UNIT PAPER NUMBER
1761
NOTIFICATION DATE DELIVERY MODE
03/02/2017 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):
PTOMAIL@nixonvan.com
pair_nixon @ firsttofile. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte INGO SCHULZE
and HARALD MOSCHUTZ
Appeal 2016-001029
Application 12/665,774
Technology Center 1700
Before KAREN M. HASTINGS, GEORGE C. BEST, and
N. WHITNEY WILSON, Administrative Patent Judges.
WILSON, Administrative Patent Judge.
DECISION ON APPEAL
Appellants1 appeal under 35 U.S.C. § 134(a) from the Examiner’s
October 20, 2014 decision finally rejecting claims 19-55. We have
jurisdiction over the appeal under 35 U.S.C. § 6(b).
We affirm-in-part.
1 Appellants identify the real party in interest as BSH Hausgerate GmbH
(Appeal Br. 3).
Appeal 2016-001029
Application 12/665,774
CLAIMED SUBJECT MATTER
Appellants’ invention is directed to a washing machine and a method
for treating laundry using foam (Spec. p. 1,11. 3). Independent claims 19,
29, 30, 38, 39, and 45 are representative and are reproduced below from the
Claims Appendix of the Appeal Brief (key claim limitations shown in
italics)'.
19. A washing machine, comprising:
a lye container;
a drum in the lye container, said drum being rotatable such
that a washing item within the drum is caused to cyclically
repeatedly rise and fall within the drum during washing;
a foam generator adapted to generate a quantity of foam
from a washing liquid in the lye container to fill the drum to a
height of at least 1/3 of the interior diameter of the drum with the
foam, the foam rising to a height that is above a height of the
washing liquid such that a laundry item falls directly into the
foam due to rotation of the drum.
29. A washing machine, comprising:
a lye container;
a drum in the lye container;
a foam generator adapted to generate a quantity of foam
from a washing liquid in the lye container, wherein the foam
washes items in the drum and wherein the washing liquid only
touches a lowest end of the drum.
30. A method for treating laundry in a washing machine
including a lye container and a rotatable drum in the lye
container, the method comprising:
generating a quantity offoam from a washing liquid in the
lye container to fill the drum to a height of at least 1/3 of the
interior diameter of the drum with the foam, the foam rising to a
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Application 12/665,774
height that is above a height of the washing liquid such that the
laundry falls directly into the foam due to rotation of the drum.
38. A method for treating laundry in a washing machine
including a lye container and a drum in the lye container, the
method comprising:
providing a washing liquid to a height that touches\,] but
does not exceed a lowest end of the drum;
generating foam from the washing liquid in the lye
container; and
washing items in the drum container with the generated
foam.
39. A method for treating delicate laundry items in a washing
machine having a drum, the method comprising:
rotating the drum to induce repeated rising and falling of
the laundry items in the drum; and
providing a quantity of foam in the drum that rises above
washing liquid in or touching the drum, the quantity of foam
being sufficient to cause the laundry items to fall directly into the
foam during falling, resulting in an effective shortening of a fall
path of the laundry items.
45. A washing machine comprising:
a rotatable drum to induce repeated rising and falling of
laundry items in the drum; and
a foam generator to provide a quantity of foam in the drum
that rises above washing liquid in or touching the drum, the
quantity of foam being sufficient to cause the laundry items to
fall directly into the foam during falling, resulting in an effective
shortening of a fall path of the laundry items.
(Appeal Br. 19, 20, 21—22, and 22—23 (Claims App.)).
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Application 12/665,774
REJECTIONS
I. Claims 19, 20, 25, 26, 28-31, 36-41, 45^17, and 51-55 are
rejected under 35 U.S.C. § 103(a) as unpatentable over
Minayoshi.2
II. Claims 19, 20, 25, 26, 28-31, 36-41, 45^17. and 51-55 are
rejected under 35 U.S.C. § 103(a) as unpatentable over
Minayoshi and further in view of Wilsberg.3
III. Claims 25, 26, 36, 41, 47, and 52—55 are rejected under
35 U.S.C. § 103(a) as unpatentable over Minayoshi, Wilsberg,
and further in view of No.4
IV. Claims 25, 26, 36, 41, 47, and 52—55 are rejected under
35 U.S.C. § 103(a) as unpatentable over Minayoshi and further
in view of No.
V. Claims 19-22, 24—33, and 35—55 are rejected under 35 U.S.C.
§ 103(a) as unpatentable over Minayoshi and further in view of
Giichi.5
VI. Claims 23 and 24 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Minayoshi, Giichi, and further in view of
Hoppe.6
2 Minayoshi et al., US Patent Pub. No. 2004/0040344 Al, published March
4, 2004.
3 Wilsberg, US Patent No. 4,714,479, issued December 22, 1987.
4 No et al., US Patent Pub. No. 2003/0074932 Al, published April 24, 2003.
5 Giichi et al., JP 2000-051562, published February 22, 2000. Giichi is in
Japanese. Because Giichi is in Japanese, we will refer to the machine
translation of its Abstract, as do both Appellants and the Examiner.
6 Hoppe, US Patent Pub. No. 2008/0155760 Al, published July 3, 2008.
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Application 12/665,774
Appellants do not offer separate arguments in support of any of the
dependent claims; arguments are directed to limitations recited in
independent claims 19, 29, 30, 38, 39, and 45 (see Appeal Br. 8—18; Reply
Br. 1—9). Accordingly, our discussion will focus on Rejections I, II, and V.
Dependent claims 23, 25, 26, 36, 41, 47, and 52—55 (subject to Rejections
III, IV, and/or VI) will stand or fall with their respective independent claims
37 C.F.R. § 41.37(c)(l)(iv).
DISCUSSION
Rejection I
The Examiner finds that Minayoshi’s disclosure teaches the elements
of the claimed washing machine and method for treating laundry using foam
except that Minayoshi does not teach filling the drum to a height of between
1/3 to 2/3 of the interior diameter (Ans. 2—3). The Examiner finds, however,
that Minayoshi teaches that “the laundry must be thoroughly poured onto the
laundry [sic] to soak it and that the bubbles are responsible for removing
soils and stains from the laundry” {id. at 3, citing Minayoshi || 50, 62).
Therefore, according to the Examiner, it would have been obvious to the
ordinary skilled artisan to optimize Minayoshi’s foam levels to the requisite
levels because “this would thoroughly soak laundry and improve detergency
by removing soils and stains from the clothes” (Ans. 3).
Appellants make the following principal arguments urging reversal of
Rejection I: (1) because the Examiner has not demonstrated that
Minayoshi’s foam height is recognized as a result effective variable, the
claimed foam height in claims 19 and 30 cannot be obvious based on routine
experimentation (Appeal Br. 8—9; Reply Br. 1—3); (2) Minayoshi does not
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Application 12/665,774
disclose laundry falling into foam as required by claims 19 and 30 (Appeal
Br. 9—11; Reply Br. 3^4); (3) Minayoshi neither discloses, nor renders
obvious “a lowest end of the drum” as recited in claims 29 and 38 (Appeal
Br. 11; Reply Br. 4—5); (4) Minayoshi fails to disclose, and would not have
rendered obvious, “an effective shortening of a fall path of the laundry
items” as recited in claims 39 and 45 (Appeal Br. 12; Reply Br. 5); and
(5) the claimed functional features recited in claims 19, 29, and 30 deserve
patentable weight because the principle articulated by In re Giannelli, 739
F.3d 1375, 1380 (Fed. Cir. 2014) applies to the claimed invention, whereas
the principle articulated by In re Schreiber, 128 F.3d 1473, 1478 (Fed. Cir.
1997) does not (Appeal Br. 12—14; Reply Br. 6—7).
With the exception of argument (3), Appellants’ arguments are not
persuasive.
Regarding argument (1), Appellants further argue that “[t]he
Examiner’s Answer neither addresses Antonie nor alleges where height of
foam achieves a result” (Reply Br. 2). We do not find Appellants’
arguments persuasive.
Our reviewing court’s predecessor has held that a variable must be
art-recognized as result-effective before it can be deemed to be subject to
routine optimization. In re Antonie, 559 F.2d 618, 620 (CCPA 1977).7 On
the record before us, the Examiner has made findings that Minayoshi
establishes that detergent concentration is a property which one skilled in the
7 The continuing viability of Antonie’s reasoning has been called
questionable in view of the Supreme Court’s decision in KSR Int’l Inc. v.
Teleflex Inc., 550 U.S. 398, 421 (2007). Ex parte Tatebe, No. 2011-006176,
2012 WL 253455 at *6 (BPAI January 23, 2012). We, however, remain
bound by Antonie until it is overruled.
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art would have recognized as a result-effective variable in the context of the
claimed invention (see Ans. 3, citing Minayoshi H 50, 62). For example,
Minayoshi explicitly discloses that “detergent in concentrated form soaks
into more laundry”, which results in “decrease[d] unevenness caused by
washing and improve[d] detergency” in drum type washing machines, such
as the one claimed (Minayoshi 1 62). We determine that, based on the
preponderance of the evidence of record, Appellants have not shown
reversible error in the Examiner’s findings that detergent concentration (i.e.,
foam height) affects cleaning power. Accordingly, we sustain Rejection I of
claims 19 and 30.
In connection with argument (2), Appellants assert that Minayoshi
cannot disclose laundry falling into foam because “bubbles passing through
laundry will break and [will] no longer be bubbles as they are absorbed”
(Reply Br. 4, citing Minayoshi 1 56). Appellants conclude that “when
Minayoshi's device slows down [from ‘e.g., 200 r/min’] to a speed where the
laundry begins to tumble, which is after the bubbles are introduced, the
bubbles will have been broken and the laundry will not fall into foam”
(Reply Br. 4, citing Minayoshi 156).
It is well established that when claimed and prior art products are
produced by identical or substantially identical processes, the PTO can
require an applicant to prove that the prior art products do not necessarily or
inherently possess the characteristics of his claimed product. In re Best, 562
F.2d 1252, 1255 (CCPA 1977). This is true whether the rejection is under
35 U.S.C. § 102 (anticipation) or 35 U.S.C. § 103 (obviousness), and is
based on the fact that the PTO is not in a position to manufacture products or
to obtain and compare prior art products. Id.
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In this instance, the Examiner has explained that Minayoshi discloses
low drum speed revolutions of 50 r/min in which foam and laundry are
present in the drum (Ans. 13, citing Minayoshi | 56—58). The Examiner
finds that Minayoshi’s washing machine and process for cleaning laundry
would reasonably be expected to create instances in which laundry would
fall into foam as set forth in appealed independent claims 19 and 30 (Ans. 4—
5). For example, Minayoshi discloses that “[w]hen the number of revolution
becomes low (e.g., 50 r/min), each of the laundry rubs each other and rotates
in the rotating drum 1”, which results in “the detergent bubbles thoroughly
act[ing] on the laundry . . .” (Minayoshi | 56). Placing the burden on
Appellants to show that Minayoshi’s washing machine and process for
cleaning laundry would not result in laundry falling into foam is appropriate
under these circumstances. Best, 562 F.2d at 1255.
Appellants have not met this burden. The record evidence is silent as
to any persuasive technical reasoning or evidence that the limitation reciting
that a “laundry item falls directly into the foam due to rotation of the drum”
would not occur in Minayoshi’s washing machine or process for cleaning
laundry. Accordingly, we sustain Rejection I of claims 19 and 30.
With respect to argument (3), Appellants cite several dictionary
references in support of their position that a “lowest end means a point at
which something no longer continues to happen or exist that extends or
reaches upward less than other points at which that thing no longer continues
to happen or exist” (Reply Br. 5; see also id. at 3^4).
On the other hand, the Examiner determines that Appellants have not
“defined the range that [the claimed limitation of ‘lowest end’] encompasses,
and in the absence of such a defmition[,] any level meets the claimed
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Application 12/665,774
limitation of lower portion such as the level described by Minayoshi in that
the water level is prevented from flowing into the rotatable drum” (Ans. 3,
citing Minayoshi Fig.2). The Examiner further determines that the term
‘“lowest end’” encompasses washing liquid heights that reach up to less than
50% of the drum height (see Ans. 13).
During prosecution, words in the claims under examination are given
their broadest reasonable interpretation. In re ICON Health & Fitness, Inc.,
496 F.3d 1374, 1379 (Fed. Cir. 2007). The Specification discloses that
embodiments of washing liquid heights include those that provide “a
quantity sufficient to touch the lower end of the drum” (Spec. p. 4,11. 2—3;
see also Spec. Fig. 2 (depicting a sufficient quantity of solution 6 to touch
the drum’s lower end)). Based on the language of the claim and the
Specification, we determine that claims 29 and 38 encompass a washing
liquid height that results in nominal amounts of washing liquid entering the
drum.
Appellants’ arguments comport with our construction of “lowest end
of the drum.” Thus, the Examiner’s reliance on Minayoshi’s Figure 2 for
suggesting the limitation in dispute is misplaced. Rather, Figure 2D shows
that the water level within the drum may reach a height nearly 50% of the
drum height (Minayoshi Fig. 2D (see uppermost arrow depicting range of
water level N2)). Accordingly, we reverse Rejection I of claims 29 and 3 8.8
With regard to argument (4), Appellants rely on argument (2) above
(Appeal Br. 12: Reply Br. 5—6). For the reasons set forth above, Appellants’
8 Claim 55 depends from independent claim 29. Appellants fail to expressly
indicate that the rejections of claim 55 are challenged. We, however, will
treat this failure as a clerical oversight and reverse the Examiner’s rejections
as to claims 29, 38, and 55.
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argument (2) is not persuasive. Accordingly, we affirm Rejection I of
claims 39 and 45.
With regard to argument (5), we note that the language of claims 19,
29, and 30 is functional, indicating that the claimed foam generator provides
a quantity of foam from a washing liquid in the lye container to fill the drum
to a height of at least 1/3 of the interior diameter of the drum with the foam;
such foam rising to a height that is above a height of the washing liquid.
[Wjhere the Patent Office has reason to believe that a functional
limitation asserted to be critical for establishing novelty in the
claimed subject matter may, in fact, be an inherent characteristic
of the prior art, it possesses the authority to require the applicant
to prove that the subject matter shown to be in the prior art does
not possess the characteristic relied on.
Schreiber, 128 F.3d at 1478 (quoting In re Swinehart, 439 F.2d 210, 213
(CCPA 1971)); see also In re Spada, 911 F.2d 705, 708 (Fed. Cir. 1990).
According to Appellants, the present claims and the Examiner’s
applied prior art is distinguishable from the static device at issue in
Schreiber (Appeal Br. 13). Appellants argue that the claimed invention is
more like the moving mechanical device in Giannelli (id.). Appellants assert
that “Giannelli considered the function limitations of a claim directed to a
moving mechanical device (a rowing machine) and the court held that the
functions must be disclosed in the prior art” (id.). Appellants conclude that
the Examiner reversibly erred because “Minayoshi does not function in the
same manner as the present claims”, pursuant to Giannelli (id. at 14).
Appellants’ reliance on Giannelli is misplaced. The issue in Giannelli
was whether handles for a chest press device that enabled a pushing motion
by an operator were capable of being used as handles for a rowing, pulling
motion. In reversing the Board’s decision on whether the handles were
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Application 12/665,774
capable of being used as claimed, the Federal Circuit took into account the
posture and position of the operator in concluding that the handles were not
adapted for such use. Giannelli, 739 F.3d at 1380 (“anyone who has used
exercise machines knows that a sure-fire way to cause injury is to use a
machine in a manner not intended by the manufacturer.”).
In this instance, the Examiner finds, correctly, that Minayoshi is
capable of generating a quantity of foam from a washing liquid in the lye
container to fill the drum to a height of at least 1/3 of the interior diameter of
the drum with the foam; such foam rising to a height that is above a height
of the washing liquid (Ans. 12; see also id. at 14—15).
Unlike in Giannelli, the Examiner is not proposing that the prior art
Minayoshi washing machine be used for a different specified objective than
what it was designed to accomplish. Minayoshi’s washing machine is
designed to accomplish the same objective as the claimed invention; to clean
laundry by generating foam. Therefore, Giannelli’s holding does not apply
to the present facts.
Appellants have not met their burden to rebut the Examiner’s finding
that Minayoshi’s washing machine is capable of generating foam in the
manner claimed. The record evidence is silent as to any demonstration of
the criticality of the amount of foam height. Schreiber, 128 F.3d at 1478.
Accordingly, we affirm Rejection I of claims 19, 29, and 30.
Therefore, we affirm Rejection I in part. See supra fn.8.
Rejection II
Appellants urge reversal of the obviousness Rejection II by asserting,
inter alia, that because Wilsberg does not recognize foam height as a result
effective variable, determining the optimum value for such height cannot be
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considered routine (Appeal Br. 15; Reply Br. 7). Appellants’ argument is
not persuasive.
As the Examiner found, Wilsberg teaches that it is known that foam
forms during laundering with detergents, and that such foam settles above
the wash liquid to a height that may be half the empty space above the liquid
level (Ans. 5, citing Wilsberg 4:29—35). Appellants’ argument does not
identify reversible error in the Examiner’s reasoned determination that it
would have been obvious to the ordinary skilled artisan to modify
Minayoshi’s foam levels to the claimed levels, because Wilsberg teaches
such levels are known to be effective in washing machines for foam cleaning
fabrics (see Ans. 5). Furthermore, Appellants have not provided any
demonstration of the criticality of the amount of foam height. Schreiber,
128 F.3d at 1478.
Therefore, we affirm Rejection II in part. See supra fh.8.
Rejection V
Appellants urge reversal of the obviousness Rejection V by arguing
that it would not have been obvious to modify Minayoshi’s level of foam
based on Giichi’s disclosure “because the two disclosed devices treat, and
thus interact with, foam differently” (Appeal Br. 15). Appellants further
argue that “there is no reason to modify a level of foam in [Minayoshi’s]
front loading machine based upon [Giichi’s] disclosure of a top loading
machine because laundry does not rise and fall through the foam and/or
washing liquid in a top loading machine” {id. at 17).
Appellants’ argument is unpersuasive, because it is not directed to the
Examiner’s rationale for modifying Minayoshi’s washing machine and
process to clean laundry with foam to incorporate Giichi’s air pump and
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water level sensors to control bubbling (see Ans. 9). Rather, Appellants’
argument is directed to whether it was improper for the Examiner to
combine Minayoshi with Giichi when each reference discloses different
configurations for loading laundry.
The test for obviousness[, however,] is not whether the features
of a secondary reference may be bodily incorporated into the
structure of the primary reference; nor is it that the claimed
invention must be expressly suggested in any one or all of the
references. Rather, the test is what the combined teachings of
the references would have suggested to those of ordinary skill in
the art.
In re Keller, 642 F.2d 413, 425 (CCPA 1981). Appellants’ argument fails to
identify reversible error in the Examiner’s determination that it would have
been obvious to modify Minayoshi’s foam levels of to those presently
claimed, because Giichi teaches that bubbles must be formed in enough
quantity to cushion and clean fabric, while preventing overflow of the tub
plane (Ans. 8—9). “A person of ordinary skill is also a person of ordinary
creativity, not an automaton.” KSRInt’l Co. v. Teleflex Inc., 550 U.S. 398,
421 (2007).
Therefore, we affirm Rejection V in part. See supra fh.8.
CONCLUSION
We AFFIRM the rejection of claims 19, 20, 25, 26, 28, 30, 31, 36, 37, 39-
41, 45^47, and 51—54 under 35 U.S.C. § 103(a) over Minayoshi.
We REVERSE the rejection of claims 29, 38, and 55 under
35 U.S.C. § 103(a) over Minayoshi.
We AFFIRM the rejection of claims 19, 20, 25, 26, 28, 30, 31, 36, 37,
39-41, 45^47, and 51—54 under 35 U.S.C. § 103(a) over Minayoshi and
further in view of Wilsberg.
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We REVERSE the rejection of claims 29, 38, and 55 under
35 U.S.C. § 103(a) over Minayoshi and further in view of Wilsberg.
We AFFIRM the rejection of claims 25, 26, 36, 41, 47, and 52—54
under 35 U.S.C. § 103(a) over Minayoshi, Wilsberg, and further in view of
No.
We REVERSE the rejection of claim 55 under 35 U.S.C. § 103(a)
over Minayoshi, Wilsberg, and further in view of No.
We AFFIRM the rejection of claims 25, 26, 36, 41, 47, and 52—54
under 35 U.S.C. § 103(a) over Minayoshi and further in view of No.
We REVERSE the rejection of claim 55 under 35 U.S.C. § 103(a)
over Minayoshi and further in view of No.
We AFFIRM the rejection of claims 19—22, 24—33, and 35—54 under
35 U.S.C. § 103(a) over Minayoshi and further in view of Giichi.
We REVERSE the rejection of claim 55 under 35 U.S.C. § 103(a)
over Minayoshi and further in view of Giichi.
We AFFIRM the rejection of claims 23 and 24 under
35 U.S.C. § 103(a) over Minayoshi, Giichi, and further in view of Hoppe.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED-IN-PART
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