Black & Decker (U.S.) Inc.v.Christy, Inc.

Patent Trial and Appeal Board

Jun 17, 2016

10623356 (P.T.A.B. Jun. 17, 2016)

Trials@uspto.gov Paper 24
571-272-7822 Entered: June 17, 2016

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

BLACK & DECKER (U.S.) INC. and
STANLEY BLACK & DECKER, INC.,
Petitioner,

v.

CHRISTY, INC.,
Patent Owner.
____________

Case IPR2015-00468
Patent 7,082,640 B2
____________

Before MICHAEL W. KIM, DONNA M. PRAISS, and
KRISTINA M. KALAN, Administrative Patent Judges.

PRAISS, Administrative Patent Judge.

FINAL WRITTEN DECISION
35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
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I. BACKGROUND
Black & Decker (U.S.) Inc. and Stanley Black & Decker, Inc.
(collectively, “Petitioner”) filed a Petition to institute an inter partes review
of claims 1–18 (the “challenged claims”) of U.S. Patent No. 7,082,640 B2
(Ex. 1001, “the ’640 patent”) pursuant to 35 U.S.C. §§ 311–319. Paper 1
(“Pet.”). A Preliminary Response was filed by Christy, Inc. (“Patent
Owner”). Paper 12 (“Prelim. Resp.”). The Board granted the Petition as to
certain grounds and instituted trial. Paper 13 (“Dec. on Inst.”). Although
Petitioner proposed fourteen grounds of unpatentability, the panel instituted
trial only on the following five grounds:1
(1) Claims 1 and 10 as anticipated by Hayden;
(2) Claims 1, 4–6, 10, and 13–15 as obvious over Hayden and
Wellan;
(3) Claims 7–9 and 16–18 as obvious over Hayden, DE219, and
Howeth;
(4) Claims 9 and 18 as obvious over Hayden, DE219, Howeth, and
Wellan; and
(5) Claims 2, 3, 11, and 12 as obvious over Hayden and von
Stackelberg.

1 US Patent No. 5,108,473, Apr. 28, 1992 (Ex. 1003) (“Hayden”); US Patent
No. 3,680,285, Aug. 1, 1972 (Ex. 1004) (“Wellan”); DE 101 01 219 A1,
July 25, 2002 (Ex. 1006; Ex. 1008 (translation)) (“DE219”) (citations herein
are to the translation, Ex. 1008); US Patent No. 4,465,497, Aug. 14, 1984
(Ex. 1007) (“Howeth”); and US Patent No. 6,767,380 B2, July 27, 2004 (Ex.
1010) (“von Stackelberg”).
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Id. at 22.2
During trial, Patent Owner filed a Patent Owner Response.3 Paper 16
(“PO Resp.”). Petitioner filed a Reply to Patent Owner’s Response relying
on the Declaration of Jeffrey P. Grant (Ex. 1013) and the Second
Declaration of Jeffrey P. Grant (Ex. 1015). Paper 17 (“Pet. Reply”). An
oral hearing was held on March 22, 2016, and a transcript of the hearing is
included in the record. Paper 23 (“Tr.”).
We have jurisdiction under 35 U.S.C. § 6(c). This final written
decision is issued pursuant to 35 U.S.C. § 318(a) and 37 C.F.R. § 42.73. For
the reasons that follow, we determine that Petitioner has met its burden to
prove by a preponderance of the evidence that claims 1–18 of the ’640
patent are unpatentable.
A. Related Proceedings
The ’640 patent is the subject of CDC Larue Indus., Inc. v. Black &
Decker Corp., Civil Action No. 4:14-cv-00286 (N.D. Okla.). Pet. 1; Paper

2 The Decision on Institution contains a typographical error on page 21. We
instituted trial only on claims 9 and 18 over Hayden, DE219, Howeth, and
Wellan, and we did not institute trial on all of claims 7–9 and 16–18 over
Hayden, DE219, Howeth, and Wellan. Compare Dec. on Inst. 6–7, with id.
at 22.
3 Patent Owner includes the Declaration of David L. McCutchen (Ex. 2001)
in a list of exhibits on page iii of Patent Owner’s Response without citing or
relying on it in Patent Owner’s Response. See generally PO Resp.
Incorporation of arguments from one document into another document by
reference is not permitted; arguments not raised in the response itself are
deemed waived. 37 C.F.R. § 42.6(a)(3); Paper 14 (Scheduling Order), 3.
Therefore, we give no weight to the Declaration of David L. McCutchen for
purposes of this Decision.
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10, 2. It is also the subject of concurrently-filed inter partes review
proceeding IPR2015-00472.
B. The ’640 Patent (Ex. 1001)
The ’640 patent, titled “Ambient Air Backflushed Filter Vacuum,” is
directed to a filtered vacuum system in which dust is cleaned from the filters
with backflushed ambient air. Ex. 1001, 1:6–8. The device comprises a
canister4 having at least two filters, an inlet port, and at least two outlet ports
that are in pneumatic communication with each of the filters. Id. at Abstr.
At least two valves are disposed outside of the canister, each in pneumatic
communication between a vacuum source and an outlet port so as to permit
air to be drawn through the filters. Id. The valves are operated by a
controller which switches “the filters from the vacuum source to ambient air
so as to permit ambient air to be sequentially intermittently drawn through
corresponding valves and filters.” Id. Figure 1 below is a block diagram of
the ambient air backflushed filter vacuum system. Id. at 3:1–2.

4 The ’640 patent uses the spelling “cannister.” See Ex. 1001, passim. We
use the common spelling “canister” for purposes of this decision.
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Figure 1 shows multiple filters 21, 22, 23 in canister 10 having inlet port 14
through which ambient air 16 flows, and outlet ports 11, 12, 13 through
which the filters are in pneumatic communication with vacuum source 15.
Id. at 3:29–31, 46–48. Controller 17 causes valves 31, 32, 33 disposed
outside of canister 10 to switch between an open position “a” to vacuum
source 15 and a closed position “b” that draws in ambient air 16 to filters 21,
22, 23. Id. at 3:28–48.
Figure 2 below is a side elevation of the ambient air backflushed filter
vacuum. Id. at 3:3–4.
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Figure 2 shows cylindrical canister 10 topped with plate 19. Filters 21, 22,
23 are mounted to the bottom of plate 19 and pneumatically communicate
through outlet ports in plate 19 to vacuum source 15 (not shown) mounted
above plate 19. Vacuum source 15 is protected by cover 25 seated on plate
19 and secured with latches 29. Id. at 4:13–34. Opening 26 in cover 25
exhausts air discharged from vacuum source 15. Id. at 4:26–27. Inlet port
14 is shown with duct 41 extending below filters 21, 22, 23. Baffle 42 is
positioned below the outlet end of duct 41 to redirect air flow such that (1)
there is little turbulence below baffle 42 and (2) particles that settle to
bottom 24 of canister 10 are less likely to be recycled through filters 21, 22,
23. Id. at 4:35–54.
C. Illustrative Claim
Claims 1 and 10 of the ’640 patent are the only independent claims at
issue. Claim 1, reproduced below, is illustrative of the claimed subject
matter:
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1. A vacuum cleaning machine comprising
a cannister having an inlet port and at least two outlet ports,
at least two filters disposed inside of said cannister, one in
pneumatic communication through a corresponding one of each
of said outlet ports,
a vacuum source,
at least two valves disposed outside of said cannister, each said
valve being in pneumatic communication between said vacuum
source and a corresponding one of each of said outlet ports and
permitting air to be drawn by said vacuum source from said
inlet port simultaneously through corresponding ones of said
filters and
means for sequentially operating said valves to switch said
filters from connection to said vacuum source to connection to
ambient air and permitting ambient air to be drawn through
corresponding ones of said valves and said filters which are
connected to ambient air by said vacuum via corresponding
ones of said valves and filters which are connected to said
vacuum.
Ex. 1001, 8:4–20 (paragraphing added).

II. ANALYSIS
A. Person of Ordinary Skill in the Art
Petitioner asserts that the field of the invention is “vacuum cleaning
machines” and “[t]he ordinary artisan in the field would typically have a
bachelor’s level degree in mechanical engineering (or gained such
knowledge by equivalent experience), and experience developing vacuum
machines that filter air.” Pet. 26 (citing Ex. 1001, 1:6–9; Ex. 1013 ¶ 8).
Patent Owner does not dispute Petitioner’s definition of a person of ordinary
skill in the art or provide an alternative definition in response.
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For purposes of this Decision, we consider the cited prior art as
representative of the level of ordinary skill in the art. See Okajima v.
Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (finding the absence of
specific findings on “level of skill in the art does not give rise to reversible
error ‘where the prior art itself reflects an appropriate level and a need for
testimony is not shown’” (quoting Litton Indus. Prods., Inc. v. Solid State
Sys. Corp., 755 F.2d 158, 163 (Fed. Cir. 1985))). To the extent that we need
to consider the parties’ positions on the issue, we adopt Petitioner’s position.
B. Claim Interpretation
In an inter partes review, claim terms in an unexpired patent are
interpreted according to their broadest reasonable construction in light of the
specification of the patent in which they appear. 37 C.F.R. § 42.100(b); see
also In re Cuozzo Speed Techs., LLC, No. 778 F.3d 1271, 1278 (Fed. Cir.
2015) (“We conclude that Congress implicitly adopted the broadest
reasonable interpretation standard in enacting the AIA.”), cert. granted sub
nom. Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 890 (mem.) (2016).
Under that standard, claim terms are given their ordinary and customary
meaning, as would be understood by one of ordinary skill in the art in the
context of the entire disclosure. In re Translogic Tech., Inc., 504 F.3d 1249,
1257 (Fed. Cir. 2007). Also, care is taken not to read a particular
embodiment appearing in the written description into the claim if the claim
language is broader than the embodiment. See In re Van Geuns, 988 F.2d
1181, 1184 (Fed. Cir. 1993) (“limitations are not to be read into the claims
from the specification”).
In the Decision on Institution, we interpreted various claim terms of
the ’640 patent as shown in the following two tables:
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Table 1. Claim Terms
Term Interpretation
“ambient air” “air surrounding the canister”
“drawn” “pulled in by negative
pressure”
“a piston reciprocally
disposed between said two
ports”
“a piston located between the
claimed ports of the valve
housing, and that moves back
and forth between the claimed
ports”
Dec. on Inst. 7–9.
Table 2. Means-Plus-Function Claim Terms
Term Function Structure
Means for
sequentially
operating
Switching the filters from connection
to said vacuum source to connection
to ambient air
Solenoid for
each valve
Means for setting
said intermittent
time
Actuating the solenoid after a length
of time to switch the valve to ambient
air
Cam motor or
backflush timer
in controller
Means for setting
a cycle time
Actuating the solenoid after a length
of time to switch the valve to ambient
air
Cam motor or
delay timer in
controller
Means biasing
said piston
Acts to bias the piston Coil spring
Means for over–
coming said bias
Overcoming spring bias when
sequentially operating the valves
Solenoid for
each valve
Means for
energizing . . . de–
energizing
Opening or closing or actuation of
switches to energize solenoids
Switches
Means cooperable
with said inlet port
Divides canister into an upper zone of
high velocity vortex air flow and a
lower zone of reduced velocity air
flow
Duct and baffle
Id. at 9–10.
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Patent Owner does not raise any claim construction issues in its
Response. See PO Resp. 4. Petitioner challenges only our construction of
the term “ambient air.” See Pet. Reply 14–15. Neither party requested
construction of the claim terms “canister” and “pneumatic communication.”
Because the parties dispute whether the evidence shows a “canister” and
“pneumatic communication” as claimed, however, we include claim
constructions for these terms. Our analysis of the terms “ambient air,”
“canister,” and “pneumatic communication” follows. Regarding the
remaining terms for which a claim construction was requested, after
reconsidering everything anew, we adopt the constructions as stated in
Tables 1 and 2 for the reasons stated in our Decision on Institution. Dec. on
Inst. 7–10.
Ambient Air
Petitioner proposes “ambient air” means “air from the area
surrounding the outside of the vacuum cleaning machine that has not been
forced or compressed.” Pet. 13. Petitioner asserts this construction is
consistent with the Specification, which confirms ambient air is outside the
vacuum machine, and that Patent Owner disavowed forced or compressed
air from being ambient air during prosecution. Id. at 13–14.
The district court found the meaning of “ambient air” was not limited
by clear and unmistakable evidence to either (1) air surrounding the outside
of the vacuum cleaning machine or (2) air that is not forced or compressed.
Opinion and Order, Ex. 2004, 6–14. In our Decision on Institution, we
agreed with the district court’s construction and analysis, which is broader
than Petitioner’s proposed construction, and found it consistent with the
Specification. Dec. on Inst. 8. Specifically, Figure 2 of the ’640 patent
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shows cover 25 “seated on” plate 19 to protect the valves, the operating
mechanisms, the controller, and the vacuum source, which are all “mounted
above” plate 19. Ex. 1001, 4:22–25. Thus, ambient air coming through the
valves may come from the vacuum head under the cover; it need not come
exclusively from outside the vacuum machine as Petitioner asserts. There is
no evidence in the record whether the ambient air under the cover
necessarily would have a particular pressure, including whether it is under
atmospheric pressure. See Tr. 43:13–44:2 (Patent Owner describing ambient
air as being “in comparison to what is inside of the cannister”).
Petitioner contends that its proposed construction should be adopted
because (1) it is not dependent upon what constitutes the canister and (2) the
’640 patent is ambiguous or silent regarding “whether the ducts drawing in
the ambient air receive re-circulated air from under the cover 25” or
“whether they lead outside the cover 25 to the exterior of the machine.” Pet.
Reply 14. Petitioner asserts that “intrinsic evidence shed[s] light on that
ambiguity” because prior art was distinguished during prosecution on the
basis of forced air being recirculated inside the prior art apparatus. Id. at
14–15 (citing Ex. 1002, 35–36, 59–60).
During prosecution, Patent Owner distinguished a pulse back cleaning
system for multiple reasons, including the reason that the claimed invention
“does not flip-flop between vacuuming and blowing.” File Wrapper of U.S.
Patent No. 7,082,640 B2, Ex. 1002, 36. Patent Owner also distinguished
other prior art for the reason that it “cannot function without a second
centrifugal fan and associated components and limitation (e.g., transverse
duct and array of parallel ducts)” whereas the invention was described as
“valve 31 and filter 21 are not connected to any other fan, compressor or
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vacuum source.” Id. at 59. We agree with the district court that the intrinsic
evidence does not present a clear and unmistakable disavowal of the source
of ambient air. Thorner v. Sony Comput. Entm’t Am. LLC, 669 F.3d 1362,
1366 (Fed. Cir. 2012) (the standard for disavowal of claim scope is
“exacting”). Figures 2–5 of the ’640 patent show three ambient air ducts 36
under cover 25. Ex. 1001, Figs. 2–5, 3:1–9, 4:22–27, 5:15–17. As the
district court found, “[i]t is not clear from the drawing where that duct
terminates, and the detailed description states only that ‘[t]he ambient air
duct 36 extends from the ambient air port 31b into the source of ambient air
16.’” Ex. 2004, 12. Similarly, the district court found that the statements in
the prosecution history regarding the ambient air also “do not exclude the
possibility that ‘ambient air’ could come from inside––or both inside and
outside––the vacuum head during backflushing.” Id. at 13. Moreover, the
distinctions over the prior art included “differences unrelated to the source of
the air used for backflushing.” Id. Based on the complete trial record,
including the prosecution history, we agree with the district court’s
construction of “air surrounding the canister” as the broadest reasonable
interpretation of the term “ambient air.” See Microsoft Corp. v. Proxyconn,
Inc., 789 F.3d 1292, 1298 (Fed. Cir. 2015) (“The PTO should also consult
the patent’s prosecution history in proceedings in which the patent has been
brought back to the agency for a second review.”). Accordingly, we
maintain our construction of “ambient air” to mean “air surrounding the
canister.”
Canister
A dictionary definition of “canister” is “[a] small box or case for
holding tea, coffee, etc.” WEBSTER’S NEW COLLEGIATE DICTIONARY, 121
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(2d ed. 1951) (Ex. 3001). The canister component of the vacuum cleaning
machine described in the ’640 patent holds filters and particles filtered by
the filters that may settle to the bottom of the canister. Ex. 1001, 3:30–31,
4:50–54. At oral hearing, Patent Owner stated “I believe we chose the word
cannister because we are talking about a small unit,” but added “[a]nd I’m
not saying this is a distinction.” Tr. 42:12–13, 16. According to Patent
Owner, the term is “a common word for this now” as opposed to being
uniquely defined by the Specification. Id. at 42:24–25. Patent Owner
summarized the generic manner in which the term is used in the ’640 patent
as: “We are saying, okay, it doesn’t matter. It’s cannister, a cabinet, a
compartment. They are all some form of container.” Tr. 42:25–43:2.
Petitioner implicitly construes this term as a “chamber” and not
limited to a particular configuration. Pet. Reply 2–5. Petitioner asserts that
there is no disavowal in the Specification of configurations for the canister.
Id. at 3. In further support of its position, Petitioner quotes the testimony of
Mr. Grant describing the prior art wherein he states “[t]he canister of the
vacuum is the part where the filters reside and dust is separated from the
incoming vacuumed air and collected.” Id. (quoting Ex. 1013 ¶ 10).
Based on the entire record, we determine that the ordinary and
customary meaning of the term “canister,” as would be understood by one of
ordinary skill in the art in the context of the entire disclosure, is “a
container.” See Translogic, 504 F.3d at 1257.
Pneumatic Communication
The term “pneumatic communication” is recited in claims 1 and 10 to
describe the relationship between one filter and “a corresponding one of
each of said outlet ports, a vacuum source, . . . valves disposed outside of
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said cannister.” Ex. 1001, 8:6–9, 8:62–65. It is also recited in claims 1 and
10 to describe the relationship between “each valve” and the “vacuum
source and a corresponding one of each of said outlet ports.” Id. at 8:9–11,
8:65–67. Each claim further recites “permitting air to be drawn by said
vacuum source from said inlet port simultaneously through corresponding
ones of said filters.” Id. at 8:11–13, 8:67–9:2. As construed above, the term
“drawn” means “pulled in by negative pressure.” See supra Section II.B.
Through their assertions concerning the applicability of the prior art, Patent
Owner asserts that a particular structure, such as a duct, is required to
achieve air being pulled in by negative pressure through a filter by a vacuum
source. There is no evidence presented to us in this record that supports
Patent Owner’s assertion. Both the context of the claims and the
Specification suggest that “pneumatic communication” is used broadly to
refer to the relative positioning of the vacuum source, filters, and ports such
that the air is drawn through the filters. Neither the claims nor the
Specification use the term “duct” or any particular connective structure
when describing air flow as “pneumatic communication.” See, e.g.,
Ex. 1001, 1:62–2:8. In comparison, a “duct” is identified in the
Specification as redirecting air flow from the inlet port to reduce recycling
particles through the filters. See, e.g., Ex. 1001, 2:52–61. Therefore, we
construe the term “pneumatic communication” as not limited to a “duct.”
C. Patentability of Claims
To prevail in its challenges to the patentability of claims, the
Petitioner must establish facts supporting its challenges by a preponderance
of the evidence. 35 U.S.C. § 316(e); 37 C.F.R. § 42.1(d). A claim is
anticipated, and, thus, unpatentable, if a single prior art reference discloses
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each and every element of the claimed invention. See Schering Corp. v.
Geneva Pharm., 339 F.3d 1373, 1377 (Fed. Cir. 2003). A claim is obvious,
and, thus, unpatentable, if the differences between the subject matter sought
to be patented and the prior art are such that the subject matter as a whole
would have been obvious at the time the invention was made to a person
having ordinary skill in the art. 35 U.S.C. § 103(a).
We analyze the instituted grounds of unpatentability in accordance
with the above-stated principles.
D. Anticipation of Claims 1 and 10 by Hayden
With respect to the alleged ground of unpatentability based on
anticipation by Hayden, we have reviewed the Petition, the Patent Owner
Response, and Petitioner’s Reply, as well as the relevant evidence discussed
in each of those papers. We are persuaded, by a preponderance of the
evidence, that claims 1 and 10 are anticipated by Hayden under 35 U.S.C.
§ 102(b).
1. Overview of Hayden (Ex. 1003)
Hayden describes a dust collector that filters dirty air and periodically
backflushes the filtration elements by sucking atmospheric air backwards
through the filtration elements. Ex. 1003, Abstr. A diverter valve switches
between normal usage and the backflush. Id. Figure 1 below is a
perspective view of the dust collector of Hayden with the cabinet cut away
to show diverter valve 11 (with air inlet port 13) on the left and separator
plate 8, on the right, that separates clean air chamber 10 from the dirty air
below. Id. at 2:64–67; 3:32–45; 3:52–55.
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Figure 1 above also shows outlet holes 9 in plate 8 for each filter 7 and that
diverter valve 11 rests on separator plate 8. Id. at 3:40–45. The Hayden
reference was considered the closest prior art to the ’640 patent claims by
the Examiner during prosecution. Ex. 1002, 17. However, the Examiner did
not reject any of the claims based on Hayden. As stated in the Reasons for
Allowance, the Examiner found that “Hayden has the valves located inside
the canister and the canister has only a single outlet.” Id.
2. Comparison of Hayden with Claims 1 and 10
Referring to Figure 1 of Hayden and claim 1 of the ’640 patent,
Petitioner identifies the presence of every claim limitation in Hayden’s
vacuum cleaning machine. Pet. 26–36. According to Petitioner, the canister
required by claim 1 corresponds to Hayden’s “dirty air chamber below plate
8 in which the filters 7 are located.” Id. at 26 (citing Ex. 1003, 3:34–37).
Petitioner further identifies on Hayden’s canister portion inlet port 2 and
multiple outlet ports 9 (one for each of the plurality of filters 7). Id. at 26–
27 (citing Ex. 1003, 3:34–37, 3:43–49). Petitioner asserts Hayden discloses
at least two filters 7 disposed inside the canister, each one in pneumatic
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communication through a corresponding outlet hole or port 9. Id. at 27
(citing Ex. 1003, 3:43–49, 4:67–5:23). Petitioner contends the required
vacuum source corresponds to suction blower 4 of Hayden “which sucks
dirty air from the source and causes the flow through filter 7.” Id. (quoting
Ex. 1003, 55–58). The required valves disposed outside of the canister
correspond to each “diverter valve 11 [which] rests on divider plate 8
directly over filter outlet hole Item 9.” Id. (quoting Ex. 1003, 3:40–45).
Regarding each valve “being in pneumatic communication between
said vacuum source and a corresponding one of each of said outlet ports,” as
recited in claim 1, Petitioner quotes Hayden’s disclosure that the valve
chamber is “open on the bottom to receive clean filtered air from filter outlet
hole 9 over which the diverter valve 11 sits. Valve chambers 31 [not
numbered in Figure 1] thus lie in the air flow path between the dirty air
chamber and clean air chamber 10.” Id. at 27–28 (quoting Ex. 1003, 4:26–
31). The recited “means for sequentially operating said valves to switch said
filters from connection to said vacuum source to connection to ambient air”
in claim 1 is identified in Hayden by Petitioner as the comparison between
Hayden’s Figures 4 and 6, as well as Hayden’s disclosures of a backflushing
operation, which switches the valve between an open and a closed position
that effectively alternates between ports and a backflushing and a non-
backflushing position. Id. at 28–29 (citing Ex. 1003, Figs. 4, 6, 2:28–51,
4:32–66, 5:12–15, 6:1–6). As shown by Petitioner, the backflushing
position of the valve “block[s] communication between valve chamber 31
and the clean air chamber 10, and open[s] valve chamber 31 to the ambient
air port 13.” Id. at 32 (citing Ex. 1003, Figs. 3, 4, 6; Ex. 1013 ¶¶ 18, 19).
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As for the additional structural limitations recited in claim 10, namely
“three outlet ports,” “three filters, and “three valves,” Petitioner identifies
Hayden’s disclosure of a “dozen or so” filters as encompassing at least three
filters and further states that each filter in Hayden is associated with an
outlet port 9 through filter plate 8 and into valve chamber 31 and diverter
valve 11. Id. at 30 (citing Ex. 1003, Fig. 1, 2:52–56, 3:43–49).
Patent Owner challenges the evidence of anticipation of claims 1 and
10 by Hayden on the basis that Hayden’s “canister” is not “the dirty air
chamber” as identified by Petitioner. PO Resp. 3. Instead, Patent Owner
asserts that Hayden’s “canister” is “divided by a plate into an upper negative
pressure clean air chamber and a lower dirty air chamber.” Id. As such,
Patent Owner argues that Hayden’s valves 11 are inside the canister instead
of outside the canister as required by claims 1 and 10. Id. at 3–4, 12–13.
Patent Owner points to the prosecution history of the ’640 patent in support
of its argument, in which the Examiner determined that Hayden has its
valves 11 inside the canister, instead of outside the canister as required by
claim 1 and 10. Id. at 20 n.7 (citing Ex. 1002, 17).
Patent Owner argues that its claimed canister “has only a single
chamber” and therefore “do[es] not correspond” to “Hayden’s two chamber
canister.” Id. at 21–22. Patent Owner further distinguishes Hayden from the
claimed invention on the basis that “Hayden’s ports 9 open into valves 11
which are inside the negative pressure clean air chamber 10 while Patent
Owner’s outlet ports 11, 12, 13 open into valves 31, 32, 33 which are in
ambient air 16.” Id. at 22 (emphasis omitted). Patent Owner asserts that
because Hayden draws atmospheric air from outside of chamber 10 into
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valve 11, Hayden’s valves are “not in ambient air outside of the canister.”
Id. at 24.
Patent Owner also argues that Hayden’s valves 11 are not in
pneumatic communication between the vacuum source 4 and outlet ports 9
because “Hayden’s common negative pressure chamber 10 is common to all
of Hayden’s valves 11 and access to the suction blower 4 is had only by
communication through the common negative pressure clean air chamber
10.” Id. at 23. Patent Owner asserts the claimed invention “has no clean air
chamber and Patent Owner’s vacuum source 15 is always connected to the
valves 31, 32, 33.” Id. at 24.
Based on the preponderance of the evidence in this record, we are
persuaded the ’640 patent claims read on Hayden’s embodiment shown in
Figure 1. We find the scope of the ’640 patent claims is broader than the
distinctions Patent Owner argues to differentiate the teachings of Hayden.
Patent Owner’s arguments focus on particular embodiments disclosed in the
’640 patent, but the ’640 patent claims are not so limited. For example,
Patent Owner contends that Hayden’s dirty air chamber cannot correspond
to a canister because “in order to access ambient air, Hayden must extend a
duct from each of the valves 11 through the negative pressure clean air
chamber 10 to ambient air outside of the chamber 10.” Id. at 21. Patent
Owner concludes that because the canister depicted in the ’640 patent as
item 10 and 19 has a single chamber, “Hayden’s two chamber canister and
Patent Owner’s single chamber canister 10, 19 do not correspond.” Id. at
21–22 (emphasis omitted). We are not persuaded.
Similarly, Patent Owner contends that Hayden’s diverter valves 11 do
not correspond to the claimed valves because they are situated differently
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from valves 31, 32, and 33 in the ’640 patent. Specifically, Patent Owner
contends that “Patent Owner’s vacuum source 15 is connected to each valve
31, 32, 33, not to a negative pressure chamber 10” while “Hayden’s clean air
chamber 10 is a negative pressure chamber common to and encasing all the
‘outlet’ ports 9 and valves 11.” Id. at 22 (emphasis omitted). Patent
Owner’s arguments are unpersuasive because limitations not appearing in
the claims cannot be relied upon for patentability. In re Self, 671 F.2d 1344,
1348 (CCPA 1982).
We are not persuaded by Patent Owner’s arguments because neither
the ’640 patent claims nor the teachings of Hayden preclude reading the
term “canister,” as construed herein, on Hayden’s “dirty air chamber below
plate 8 in which the filters 7 are located.” See Pet. 26 (citing Ex. 1003, Fig.
1). The ’640 patent itself describes such an embodiment in which the
canister component is located under a plate. Ex. 1001, 4:59–61 (“A central
housing 44 is preferably concentrically located on top of the circular plate 19
covering the cannister 10.”). In other words, Patent Owner’s plate 19 covers
canister 10 just as Hayden’s plate 8 covers Hayden’s canister. As such, we
find that Hayden discloses “at least two valves disposed outside of said
cannister” and “three valves disposed outside of said cannister” as recited in
claims 1 and 10, respectively.
We also find no limitation in the ’640 patent claims that would
preclude a common chamber between the valves and the vacuum source. No
specific connective structure between the valves and the vacuum source is
required by “each said valve being in pneumatic communication between
said vacuum source and a corresponding one of each of said outlet ports and
permitting air to be drawn by said vacuum source from said inlet port
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simultaneously through corresponding ones of said filters,” as recited in
claims 1 and 10. Referring to Figure 1 of Hayden, correspondence exists
between each valve 11, outlet port 9, and filter 7. Ex. 1003, Fig. 1, 3:40–45.
In addition, there is pneumatic communication between these elements of
Hayden due to an “air flow path between the dirty air chamber and clean air
chamber 10” in which valve chamber 31 lies. Id. at 4:26–31. Furthermore,
independent claims 1 and 10 each use the term “comprising,” signaling an
open-ended structure, allowing for the inclusion of a common chamber.
Regarding the prosecution history, we are persuaded by Petitioner that
the Examiner overlooked Hayden’s description of divider plate 8 separating
the dust collector into a dirty air chamber (not numbered) and a clean air
chamber 10. See Pet. 35. We are unpersuaded by Patent Owner that Hayden
does not disclose the claimed “cannister,” the claimed “valves disposed out
of said cannister,” and the claimed “connection to ambient air” recited in
claims 1 and 10. The broadest reasonable interpretations of “cannister” and
“ambient air” do not require the sort of structural connections between the
vacuum and the valves and between the valves and the ambient air that
Patent Owner proposes we read into the claims from Figures 1 and 2 in the
’640 patent showing canister 10, 19 and valves 31, 32, and 33. Indeed,
Figures 1 and 2 of the ’640 patent omit any particular ducts by which
ambient air is carried, including in the region above plate 19 and under cover
25 shown in Figure 2.
Nor do we incorporate any particular structural connections between
the components of the claimed vacuum cleaning machine through the term
“pneumatic communication” recited in claims 1 and 10. When asked about
“pneumatic communication” at oral hearing, Patent Owner stated that it
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refers to the pattern of flow dictated by how the claim tells you to put the
parts together to create a backflow situation in a vacuum cleaning machine.
See Tr. 32:14–33:4. Patent Owner asserts that the flow patterns are different
between the claimed machine and Hayden, and illustrates this difference in
diagrams. PO Resp. 5–21 (citing Ex. 2005 (’640 patent diagrams), Ex. 2006
(Hayden diagrams)). Any differences in the flow patterns drawn as colored
arrows by Patent Owner in Exhibits 2005 and 2006, however, are not due to
the omission of an element recited in claim 1 or 10. Compare Ex. 2005,
diagrams 5 and 6, with Ex. 2006, diagrams 9 and 12.
Patent Owner does not dispute that the Hayden device creates a
backflow situation. Nor does Patent Owner dispute that gas flow in
Hayden’s device is through Hayden’s valve between a vacuum source and
an outlet port to draw air through a corresponding filter. Patent Owner also
does not dispute that Hayden’s valve is switched from the vacuum source to
air from outside of the machine such that the air flows through the valve and
filters to create a backflush situation. In Exhibit 2006, Patent Owner draws a
box to indicate Hayden’s clean air chamber 10 is above the unnumbered
dirty air chamber contained by divider plate 8, and omits from Exhibit 2005
any reference to the ’640 patent’s disclosure of cover 25 above canister 10,
19. The only difference between the arrows drawn by Patent Owner in
Exhibits 2005 and 2006 is with respect to the regions above plates 19 (of the
’640 patent) and 8 (of Hayden) outside of their filter-containing
compartments. Patent Owner shows the gas drawn through the valves by a
negative pressure vacuum source as coming together either in what appears
to be a common duct for the invention (Ex. 2005, diagram 5) or clean air
chamber 10 of Hayden (Ex. 2006, diagram 9). During the backflush
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operation, Patent Owner shows the switch to ambient air being pulled
through the valves as coming from outside of the machine in both the
invention and Hayden. Ex. 2005, diagram 6; Ex. 2006, diagram 12. Thus,
the only difference between the invention and Hayden’s machine suggested
by Patent Owner’s diagrams is in the suggested ductwork above the plates
and valves. Claims 1 and 10 do not require any particular ductwork,
connector, or path (1) for the negative pressure vacuum source after it draws
air through the valve or (2) for the ambient air source to reach the valves.
Therefore, we do not find persuasive Patent Owner’s attorney arguments
presented as diagrams in Exhibits 2005 and 2006.
The preponderance of the evidence on the complete record after trial
shows that Hayden’s dust collector with atmospheric backflush anticipates
claims 1 and 10 for the reasons provided by Petitioner and as articulated
herein. Pet. 26–36; Pet. Reply 1–17.
E. Obviousness of Claims 1, 4–6, 10, and 13–15
Over Hayden and Wellan
Regarding claims 1 and 10, Petitioner asserts that, to the extent that
the term “means for sequentially operating” also requires timing features
from a controller, rather than just the solenoids controlled by the controller,
Wellan’s controller is equivalent to the structure in the ’640 patent’s
electronic embodiment. Pet. 39. Wellan’s electronic controller includes a
timer that has inputs for adjusting the frequency and length of time at which
a stepping switch moves between connections to the various individual
solenoids for valves 38. Id. at 41 (citing Ex. 1004, Fig. 7; 5:52–60; 7:42–47;
7:58–61). Petitioner’s rationale for selecting Wellan’s controller, for
Hayden’s device, is based on Hayden’s disclosure that its cleaning cycle
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controller provides for automatic, periodic cleaning cycles to keep the dust-
making equipment in continuous operation and “[i]t is considered within the
capacity of those skilled in the art to construct cleaning cycle controller 25.”
Id. at 40 (quoting Ex. 1003, 4:60–66). Therefore, Petitioner asserts that one
of ordinary skill in the art, looking for an appropriate controller with which
to construct the Hayden device, would have included the known controller
that Wellan discloses for actuating solenoids in a vacuum cleaning machine.
Id.
Regarding claims 4–6 and 13–15, Petitioner asserts that the electronic
controller of Wellan is equivalent to the electronic controller of the ’640
patent, and that Wellan’s electronic controller sets the intermittent time that
the valve is switched to ambient air in the same manner as the backflush
timer 103 in the ’640 patent. Id. at 44 (citing Ex. 1001, 6:40–50; 7:1–6;
Ex. 1004, 5:52–59; 7:42–47). Similarly, Petitioner asserts that Wellan’s
electronic controller is equivalent to the controller of the ’640 patent,
because both controllers turn the solenoid valves on and off individually,
and therefore set a cycle time of periods when the solenoids are energized
(on) and de-energized (off). Id. at 46–47 (citing Ex. 1001, 6:8–11, 6:17–33;
Ex. 1004, 5:55–59). Accordingly, Petitioner asserts that the combination of
Wellan’s controller with Hayden’s device meets the “means for setting said
intermittent time” recited in claims 5, 6, 14, and 15 and the “means for
setting a cycle time” recited in claims 4, 6, 13, and 15. Id. at 45–46, 47–48.
Patent Owner asserts that obviousness over the combination of
Hayden and Wellan is moot because Hayden does not disclose every
element of claims 1 and 10 for the reasons discussed above. PO Resp. 30–
31.
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For the reasons provided in the Petition and above, we are persuaded
that Hayden discloses the elements recited in claims 1 and 10. Based on the
trial record, Hayden suggests the use of known controllers, such as that
disclosed in Wellan, for sequentially operating valves in vacuum cleaning
devices. Petitioner also has shown adequately how the controller in Wellan
is equivalent to the controller in the ’640 patent to meet the “means for
setting a cycle time” and the “means for setting said intermittent time”
limitations required by dependent claims 4–6 and 13–15. Therefore, the
preponderance of the evidence demonstrates that substituting controller 25 in
Hayden’s device with Wellan’s controller would have been obvious as a
predictable variation in the same field. Accordingly, claims 1, 4–6, 10, and
13–15 would have been obvious in view of Hayden and Wellan for the
reasons provided by Petitioner. See Pet. 39–48; Pet. Reply 17.
F. Obviousness of Claims 7–9 and 16–18
Over Hayden, DE219, and Howeth
After considering Petitioner’s and Patent Owner’s positions as to
claims 7–9 and 16–18, as well as their supporting evidence, we determine
that Petitioner has shown by a preponderance of the evidence that those
claims are unpatentable under 35 U.S.C. § 103(a) as obvious over the
combination of Hayden, DE219, and Howeth, and, for claims 9 and 18,
further in view of Wellan.
Petitioner asserts that DE219 teaches a piston reciprocally disposed
between two ports, as required by claims 7 and 16, and that such a valve is
interchangeable with other valve arrangements, including the flap valve type
taught by Hayden. Pet. 50 (citing Ex. 1008, Figs. 1, 2, ¶¶ 16, 20–45).
Petitioner asserts that the valve arrangement in DE219 includes rods that
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move linearly back and forth under the control of electromagnets, as in a
solenoid. Id. Petitioner asserts further that the recited “means biasing said
piston” to simultaneously (1) close one of said two ports and (2) open
another of said two ports, corresponds to a spring in the ’640 patent.
Petitioner asserts additionally that Howeth teaches such a spring in the
context of an ambient air backflushed vacuum device. Id. at 51 (citing Ex.
1007, Figs. 9, 10, 13:39–16:37, 14:14). Regarding claims 8 and 17, which
depend from claims 1 and 16, respectively, Petitioner asserts that the
required “means for overcoming said bias” corresponds to a solenoid for
each valve in the ’640 patent, and that a solenoid is present in Hayden. Id. at
52.
Claims 9 and 18 depend from claims 8 and 17, respectively, and
require “said bias overcoming means comprising at least two solenoids, one
corresponding to each said valve, and means for energizing said solenoids to
switch said valves to connect said filters to ambient air and for de-energizing
said solenoids to switch said valves to connect said filters to said vacuum
source.” Petitioner cites portions of Hayden, which apply electricity to
actuate its electrical solenoids, as corresponding to these claim limitations.
Id. at 52–53. To the extent that the claims require an actual switch to actuate
each solenoid, Petitioner further asserts that Wellan teaches that such
switches for energizing and de-energizing solenoids would have been
predictable and obvious in a vacuum device. Id. at 54 (citing Ex. 1004,
Fig. 7; Ex. 1013 ¶¶ 25, 36–37).
Patent Owner asserts that Petitioner’s obviousness challenges over the
combination of Hayden, DE219, and Howeth (and further in view of
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Wellan) all are moot because Hayden does not disclose every element of
claims 1 and 10 for the reasons discussed above. PO Resp. 31–32.
Based on the trial record, we are persuaded that the combination of
DE219, Howeth, and Wellan teach the interchangeability with a flap valve
of a piston reciprocally disposed between two ports, and the known,
predictable use of a spring for biasing a piston and a switch for energizing
and de-energizing an electrical solenoid. We also are persuaded that use of
the combination of an alternate valve arrangement and alternate solenoid is
nothing “more than the predictable use of prior art elements according to
their established functions.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398,
417 (2007). Therefore, for the reasons provided in the Petition and for the
reasons articulated herein, claims 7–9 and 16–18 would have been obvious
over Hayden, DE219, and Howeth. Pet. 49–54. For the same reasons, we
also are persuaded that the preponderance of the evidence demonstrates that
claims 9 and 18 would have been obvious over Hayden, DE219, and Howeth
in further view of Wellan. See id. at 54.
G. Obviousness of Claims 2, 3, 11, and 12
Over Hayden and Von Stackelberg
With respect to the asserted obviousness over the combination of
Hayden and von Stackelberg, we have reviewed the Petition, the Patent
Owner Response, and Petitioner’s Reply, as well as the relevant evidence
discussed in each of those papers. We are persuaded that the preponderance
of the evidence demonstrates that claims 2, 3, 11, and 12 would have been
obvious over Hayden in view of von Stackelberg under § 103(a).
Petitioner asserts that von Stackelberg teaches a hose and conduit that
directs air downward from an inlet port, as well as a baffle to modify air
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flow “to prevent filters and outlets from becoming clogged from foreign
particulates.” Pet. 58 (citing Ex. 1010, Fig. 2, 4:35–54). Petitioner contends
that one of ordinary skill in the art would have combined von Stackelberg’s
conduit and baffle with Hayden’s canister, because the references teach “the
benefits of preventing filters and outlets from becoming clogged from
foreign particulates,” and the proffered combination would “maximize the
efficacy of the vacuum” and “minimize the debris on a vacuum’s filter.” Id.
at 58–59. Petitioner further contends that the combination meets the
requirements of dependent claims 2 and 11, which require a duct and baffle
or equivalents thereof as the “means cooperable with said inlet port” (id. at
57–58; Ex. 1001, 8:22, 9:11), and also meets the requirements of dependent
claims 3 and 12, which additionally recite that the inlet be positioned “below
said filter and above a bottom of said cannister” (Pet. 59; Ex. 1001, 8:26–27,
9:15–16).
Patent Owner argues that the combination of Hayden and von
Stackelberg is improper because the purpose of von Stackelberg’s duct and
baffle is “preventing filters and outlets from becoming clogged from foreign
particles” whereas the purpose of Patent Owner’s duct and baffle “is to
allow particles backflushed from the filters 21, 22, 23 to settle to the bottom
24 of canister 10 so as to prevent recycling of the backflushed particles.”
PO Resp. 33. Patent Owner further argues that the combination of Hayden,
in view of von Stackelberg, is improper because the inlet taught by von
Stackelberg comes in from the top, not the side, such that it does not create
an upper high velocity zone and a lower low velocity zone, and it also does
not teach a filter. Id. at 34–35. Patent Owner also argues that Hayden
requires shields; therefore the location and purpose of von Stackelberg’s
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structure would be “inconsistent with and destructive of the flow paths
Hayden seeks to achieve.” Id. at 34.
We are unpersuaded by Patent Owner’s arguments, because the trial
record establishes that the duct and baffle arrangement in both the
combination and the challenged claims would allow particles to settle to the
bottom of the canister and minimize entrainment of particles in an upper
portion of the canister, where the air exits through the filters. See Pet. 58–59
(citing Ex. 1010, 4:35–65); Ex. 1010, 5:13–14 (providing “passage and
release of debris into the drum”), 4:64–65 (inlet port “less likely to be
blocked by bulky debris”); Ex. 1001, 4:52–53 (“the particles settle to the
bottom of the cannister”); Ex. 1015 ¶¶ 14–16. In addition, Hayden teaches a
dust collector having an inlet on the side and filters within a canister. See
Pet. Reply 21–22; Ex. 1003, Fig. 1. Therefore, Petitioner has provided an
adequate rationale for modifying the air inlet in Hayden’s canister with von
Stackelberg’s duct and baffle structure. We also agree with Petitioner that
Hayden’s disclosure of shields is an optional preferred embodiment and does
not preclude modification of the inlet port with von Stackelberg’s duct and
baffle. See Pet. Reply 20–21 (citing Ex. 1003, 2:20–25). As such, we find
the combination is proper and that claims 2, 3, 11, and 12 would have been
obvious over the combination of Hayden and von Stackelberg for the
reasons provided by Petitioner and as discussed herein. See Pet. 20–21; Pet.
Reply 17–24.

III. CONCLUSION
Petitioner has demonstrated by a preponderance of the evidence that
(1) claims 1 and 10 are anticipated by Hayden; (2) claims 1, 4–6, 10, and
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13–15 would have been obvious over Hayden and Wellan; (3) claims 7–9
and 16–18 would have been obvious over Hayden, D219, and Howeth; (4)
claims 9 and 18 would have been obvious over Hayden, D219, Howeth, and
Wellan; and (5) claims 2, 3, 11, and 12 would have been obvious over
Hayden and von Stackelberg.
This is a final written decision of the Board under 35 U.S.C. § 318(a).
Parties to the proceeding seeking judicial review of this decision must
comply with the notice and service requirements of 37 C.F.R. § 90.2.

IV. ORDER
Accordingly, it is hereby:
ORDERED that, as set forth in Section III above, claims 1–18
of the ’640 patent have been shown to be unpatentable.
FURTHER ORDERED that the parties to the proceeding
seeking judicial review of this Final Written Decision must comply with the
notice and service requirements of 37 C.F.R. § 90.2.

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PETITIONER:
Jack S. Barufka
Bryan P. Collins
PILLSBURY WINTHROP SHAW PITTMAN LLP
Jack.barufka@pillsburylaw.com
Bryan.collins@pillsburylaw.com
docket_ip@pillsburylaw.com

PATENT OWNER:
Frank J. Catalano
Paul E. Rossler
GABLE & GOTWALS, P.C.
iplaw@gablelaw.com
prossler@gablelaw.com