Ex Parte 6,840,972 et al

Patent Trial and Appeal Board

Feb 22, 2016

95002387 (P.T.A.B. Feb. 22, 2016)

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.
95/002,387 09/15/2012 6,840,972 424662803500 9913
30827 7590 02/22/2016
Dentons US LLP
1900 K. Street, N.W.
Washington, DC 20006
EXAMINER
TILL, TERRENCE R
ART UNIT PAPER NUMBER
3991
MAIL DATE DELIVERY MODE
02/22/2016 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

DYSON, INC. AND DYSON TECHNOLOGY LIMITED
Requester and Cross-Appellant

v.

LG ELECTRONICS, INC.
Patent Owner and Appellant
____________

Appeal 2015-001258
Reexamination Control 95/002,387
Patent 6,840,972 B1
Technology Center 3900
____________

Before CHUNG K. PAK, JEFFREY B. ROBERTSON, and
RAE LYNN P. GUEST, Administrative Patent Judges.

ROBERTSON, Administrative Patent Judge.

DECISION ON APPEAL
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Patent Owner LG Electronics, Inc. (“Patent Owner”) appeals under 35
U.S.C. §§ 134(b) and 315(a) (pre-AIA) the Examiner’s final decision to
reject claims 8, 9, 13, and 20-24.1 Third-Party Requesters Dyson, Inc. and
Dyson Technology Limited (“Requesters”) urge that the Examiner’s
decision must be affirmed.2 Requesters appeal under 35 U.S.C. §§ 134(b)
and 315(b) (pre-AIA) the Examiner’s decision not to reject claims 8, 9, and
20-24 under additional grounds.3
We have jurisdiction under 35 U.S.C. §§ 134(b) and 315(a), (b)
(pre-AIA). We affirm the Examiner’s decision to reject claims 8, 9, 13, and
20-24.

STATEMENT OF THE CASE
United States Patent 6,840,972 B1 (the “’972 Patent”), which is the
subject of the current inter partes reexamination, issued to Dae Chul Kim on
January 11, 2005. We are informed that the ’972 Patent is the subject of
litigation styled Dyson, Inc. and Dyson Technology Ltd. v. LG Electronics
US.A., Inc. and LG Electronics, Inc., Case No. ll-cv-7860 (N.D. I11.), which
involves three patents: the ’972 Patent, U.S. Patent 7,600,292 (the “’292

1 See Patent Owner’s Appeal Brief 1 (filed April 27, 2014) (hereinafter “PO
App. Br.”); Examiner’s Answer (mailed July 23, 2014) (hereinafter “Ans.”);
Right of Appeal Notice (mailed January 15, 2014) (hereinafter “RAN.”).
2 See Requesters’ Respondent Brief (filed May 28, 2014) (hereinafter “Req.
Resp’t Br.”).
3 See Requesters’ Cross Appeal Brief 5 (filed May 15, 2014) (hereinafter
“Req. App. Br.”); Patent Owner’s Respondent Brief (filed June 16, 2014)
(hereinafter “PO Resp’t Br.”); RAN 3-4, 15-16, 23-24.
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Patent”) and U.S. Patent 6,991,666 (the “’666 Patent”), each assigned to
Dyson Technology Limited. (PO App. Br. 1; Req. App. Br. 4.) The ’292
Patent is subject to inter partes reexamination control 95/002,102 and ex
parte reexamination control 90/012,904. (Req. App. Br. 4.) The ’666 Patent
is currently being reexamined in inter partes reexamination control
95/002,101. (Req. App. Br. 4.) The litigation is currently stayed pending
the outcome of these reexamination proceedings. (PO App. Br. 1; Req. App.
Br. 4.)
We heard oral argument in this appeal from both Patent Owner and
Requester on May 13, 2015, a transcript of which was entered into the
electronic record on June 3, 2015.
The ’972 Patent relates to a vacuum cleaner provided with a cyclone
dust collector. Claim 8, which is illustrative of the appealed subject matter,
reads as follows:
8. A multiple cyclone vacuum cleaner in a vacuum
cleaner having a cyclone dust collector removably provided in a
cleaner body, wherein the cyclone dust collector sucks air
containing foreign matters, separates the foreign matters from
the sucked air by way of a cyclone principle, collects the
foreign matters in a dust tank and exhausts the air to a space for
mounting a fan via an air outlet passage,
the multiple cyclone vacuum cleaner comprising a filter
receiver removably provided in the cleaner body, the filter
receiver having a separate dust collecting space between the air
outlet passage of the cyclone dust collector and the fan
mounting space, and being provided with a dust filter for a
second dust collection of fine dusts contained in the air.
(PO App. Br. 35 Claims App’x.)
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Patent Owner contests the Examiner’s final decision to reject the
claims as follows:
I. Claims 21-24 under 35 U.S.C. § 103(a) as obvious over the
DC01/DC02 Brochure in combination with WO 98/27857
(“WO ’857”) (Ground 10);
II. Claims 8 and 9 under 35 U.S.C. § 103(a) as obvious over WO
99/30602 (“WO ’602”) in combination with the DC03
Brochure (Ground 2);
III. Claims 8 and 9 under 35 U.S.C. § 103(a) as obvious over WO
99/30604 (“ WO ’604”) in combination with WO ’602 (Ground
3);
IV. Claims 8 and 9 under 35 U.S.C. § 103(a) as obvious over the
DC03 Brochure in combination with WO ’857 and the Dyson
98/99 Catalogue (Ground 4);
V. Claims 8 and 9 under 35 U.S.C. § 103(a) as obvious over the
DC03 Brochure in combination with WO ’602 and the Dyson
98/99 Catalogue (Ground 5);
VI. Claims 8, 9, and 13 under 35 U.S.C. § 103(a) as obvious over
the DC01/DC02 Brochure in combination with WO ’857
(Ground 7);
VII. Claim 20 under 35 U.S.C. § 103(a) as obvious over the
DC01/DC02 Brochure in combination with WO ’857 (Ground
8);
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VIII. Claim 24 under 35 U.S.C. § 103(a) as obvious over the
DC01/DC02 Brochure in combination with WO ’857 and van
Berkel (US 2,171,248, issued Aug. 29, 1939) (Ground 11); and
IX. Claim 24 under 35 U.S.C. § 103(a) as obvious over WO ’604 in
combination with WO ’602 (Ground 12).

Requester contests the Examiner’s refusal to reject:
X. Claims 8 and 9 under 35 U.S.C. § 102 as anticipated by van
Berkel (Ground 1);
XI. Claims 8 and 9 under 35 U.S.C. § 103(a) as obvious over van
Berkel in combination with the DC01/DC02 Brochure (Ground
6); and
XII. Claims 21-24 under 35 U.S.C. § 103(a) as obvious over van
Berkel in combination with the DC01/DC02 Brochure (Ground
9).

PATENT OWNER’S APPEAL
Status of the DC01/DC02 Brochure, the DC03 Brochure, and the
Dyson 98/99 Catalogue as printed publications
As an initial matter, Patent Owner contends that there is insufficient
evidence to support the Examiner’s position that the DC01/DC02 Brochure,
DC03 Brochure, and the Dyson 98/99 Catalogue are printed publications.
(PO App. Br. 3.) Specifically, Patent Owner argues that the Declaration of
Mr. James Andrew Turner executed on August 29, 2012 (“the Turner
Declaration”) (See PO App. Br., Ex. 1; Req. Resp’t Br. 28) provided by
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Requester is insufficient to establish that the documents relied on were
publically accessible due to lack of corroboration that the documents were
actually received by any recipients and lack of evidence of routine business
practice that would establish that the documents would have been accessible
to the public. (PO App. Br. 4-8.) Patent Owner contends that with respect
to the Dyson 98/99 Catalogue, the message from CEO James Dyson dated
June 1998, undermines the testimony in the Turner Declaration that the
Dyson 98/99 Catalogue was finally approved on April 22, 1998. (PO App.
Br. 7-8.)
Requester contends that substantial evidence supports the position that
the documents at issue were publically accessible. (Req. Resp’t Br. 5.)
Requester contends that the Turner Declaration is corroborated by two
articles describing that the subject devices of the documents were on sale.
(Req. Resp’t Br. 8.)
The issue with respect to the availability of the DC01/DC02 Brochure,
DC03 Brochure, and the Dyson 98/99 Catalogue as prior art is: Is there
sufficient evidence to support the position that the particular documents of
record were publically accessible prior to the filing date of the ’972 Patent?

DISCUSSION
In the Turner Declaration submitted by Requester, Mr. Turner
declared that he was the Graphics Manager for Dyson Appliances, Ltd.
during the 1997-1998 time-frame and that the DC01/DC02 Brochure, DC03
Brochure, and the Dyson 98/99 Catalogue were created by the internal
graphics design department, which he supervised. (Turner Decl. paras. 3-5.)
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Mr. Turner further declared that the DC01/DC02 Brochure has a final
approval date of March 16, 1998, the DC03 Brochure has an approval date
of January 7, 1998, and the Dyson 98/99 Catalogue has an approval date of
April 22, 1998. (Turner Decl. paras. 5-7.) Mr. Turner declared that the fact
that the message from James Dyson was dated June 1998 is confirmation
that the brochure was intended to be in public circulation no later than June
1998. (Turner Decl. para. 7.) Mr. Turner declared that “many thousands” of
catalogues and brochures, such as the DC01/DC02 Brochure, DC03
Brochure, and the Dyson 98/99 Catalogue, were printed for public
distribution and mailed to retail stores, journalists, and potential customers.
(Turner Decl. para. 8.) Mr. Turner declared further that it was Dyson’s
routine business practice to distribute brochures and catalogues within
approximately two months of the approval date, such that the DC01/DC02
Brochure would have been distributed to the public by at least May 16,
1998, DC03 Brochure would have been distributed to the public by at least
March 7, 1998, and the Dyson 98/99 Catalogue would have been distributed
to the public by at least June 22, 1998, but in any event all would have been
distributed no later than December 31, 1998. (Turner Decl. paras. 9 and 11.)
Requester has also provided two articles published in 1998 that
reference the DC01, DC02, and DC03 devices, which according to
Requester, corroborate Mr. Turner’s testimony providing evidence that such
devices were on sale in 1998, and as a result establishes that the DC01/DC02
Brochure, DC03 Brochure, and the Dyson 98/99 Catalogue were publically
accessible. (Req. Resp’t Br. 6; Articles titled “Make a clean sweep,” dated
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May 1998, and “Identikit Dyson DC03,” dated December 19, 1998,
hereinafter “the Articles”.)
Requester also cites Ex Parte Earlychildhood LLC, No. 2010-010427,
2010 WL 4876450 (BPAI Nov. 29, 2010) for the proposition that the Board
has previously accepted testimony from a company official as the only
source of evidence that a reference was publically accessible. (Req. Resp’t
Br. 8, citing Ex Parte Earlychildhood, 2010 WL 4876450 *5, 8.)
We agree with Requester, that there is sufficient evidence that the
DC01/DC02 Brochure, DC03 Brochure, and the Dyson 98/99 Catalogue
were publically accessible prior to the filing date of the ’972 Patent (March
16, 2000) and thus available as prior art. Patent Owner’s argument
essentially rests on the lack of corroboration of Mr. Turner’s statements
made in the Declaration and the alleged inconsistency between the approval
date of April 1998 of the Dyson 98/99 Catalogue and the June 1998 date of
Mr. Dyson’s statement included in the Dyson 98/99 Catalogue. We are not
persuaded by Patent Owner’s contentions, because, as pointed out in Mr.
Turner’s Declaration, the difference between the two dates is consistent with
Dyson’s routine business practice of distributing catalogues and brochures
approximately two months after final approval. (Turner Decl. para. 7.)
Patent Owner has not provided any persuasive evidence to support the
position that the Turner Declaration should not be given weight or to
contradict the statements made therein. See Ex parte Earlychildhood 2010
WL 4876450 *6, 8. In addition, there is no indication on the documents
themselves that they are not in final form.
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Moreover, although the Articles referring to the DC01, DC02, and
DC03 devices do not provide direct evidence that the DC01/DC02 Brochure,
DC03 Brochure, and the Dyson 98/99 Catalogue were disseminated to the
public, the Articles provide evidence that the public had been made aware of
such devices in a time frame that was contemporaneous with the distribution
of the catalogues and brochures. Therefore, an interested person would have
been able to obtain the catalogues and brochures in exercising reasonable
diligence, such as by contacting Dyson. Ex parte Earlychildhood 2010 WL
4876450 *5, citing Bruckelmyer v. Gound Heaters, Inc., 445 F.3d 1374,
1378 (Fed. Cir. 2006) (quoting I.C.E. Corp. v. Armco Steel Corp., 250
F.Supp. 738, 743 (S.D.N.Y. 1966)).
Accordingly, in view of the Turner Declaration, we conclude that the
DC01/DC02 Brochure, DC03 Brochure, and the Dyson 98/99 Catalogue
were publically accessible prior to the filing date of the ’972 Patent, and as a
result, are available as prior art.

Claim Interpretation
Patent Owner contends that the Examiner has incorrectly interpreted
the term “separate dust collecting space” as recited in claims 8 and 24 and
the term “defined space” as recited in claims 21-23, both terms Patent
Owner contends should be interpreted to have the same scope. (PO App. Br.
18, FN9.) Specifically, Patent Owner contends that the Examiner erred in
interpreting “a dust collecting space” as “any space that collects dust,” rather
than interpreting the dust filter and dust collecting space as two distinct
elements. (PO App. Br. 18-19.) Patent Owner points to Figure 10 for the
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proposition that one of ordinary skill in the art, in interpreting the claims
consistent with the ’972 Patent, would have recognized that the dust filter
and dust collecting space are two distinct elements. (PO App. Br. 19-20.)4
Requester contends that the “defined space” would be understood to
“include above the filter 510 but below the side walls of the filter guide
530.” (Req. Resp’t Br. 9; see RAN 34-35) (Emphasis in original.)

PRINCIPLES OF LAW
“‘During reexamination, as with original examination, the PTO must
give claims their broadest reasonable construction consistent with the
specification.’” In re Suitco Surface, Inc., 603 F.3d 1255, 1259 (Fed. Cir.
2010) (quoting In re ICON Health and Fitness, Inc., 496 F.3d 1374, 1379
(Fed. Cir. 2007)). Nevertheless, our reviewing court has repeatedly
“instructed that any such construction [must] be ‘consistent with the
specification, . . . and that claim language should be read in light of the
specification as it would be interpreted by one of ordinary skill in the art.’”
Id. at 1260.
DISCUSSION
We begin with the language of the claims. Claims 1 and 24 recite a
“filter receiver having a separate dust collecting space,” the filter receiver
also “being provided with a dust filter.” Claims 21-23 similarly recite a

4 Patent Owner also contends that the Examiner had interpreted the “dust
collecting space” as downstream from the filter. (PO App. Br. 21-22.)
However, the Examiner expressly rejected this argument. (RAN 39-40.)
We agree with the Examiner, and find it unnecessary to further address
Patent Owner’s argument.
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“filter receiver,” which is also “provided with a dust filter” and “a defined
space between an enclosing side of the filter receiver and an upper surface of
the dust filter.” Thus, the claims require the presence of both a “dust filter”
and either “a separate dust collecting space” or “a defined space” within a
“filter receiver.”
The ’972 Patent does not provide any particular details of the “dust
filter” in the Specification other than stating that the filter has an “iterative
profile” and depicting a general structure of the dust filter 510 in Figures 8
and 10. (See col. 6, ll. 24-30.) Figure 10 is reproduced below:

Figure 10 above depicts a schematic vertical cross-sectional view
showing the internal structure of “another embodiment” of a multiple
cyclone vacuum cleaner. (’972 Patent, col. 3, ll. 39-42.) Particularly, Figure
10 depicts a filter structure 500, including a dust filter 510, a filter body 520,
and a filter guide 530. (’972 Patent, col. 6, ll. 31-39.) As shown in Figure
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10, the dust filter has a repeating zig-zag pattern (an iterative profile). The
horizontal line (not labeled) tangential to the upstream “peaks” of the
iterative profile stretching across the width of the filter body 520 represents
the top of the side wall of filter guide 530, which is described in the ’972
patent as interacting “in a drawer like manner” with the filter body 520.5
Col. 6, ll. 41-50, col. 7, ll. 36-42, Figures 8 and 9. The presence of particles
is depicted in Figure 10 only above the top of the side wall of filter guide
530 in the space defined by the filter body 520. However, the ’972 Patent
discloses:
A defined space is formed between the top of the filter
guide 530 and the upper surface of the dust filter 510 as the
former is higher than the latter, so that various foreign matter
piling up on the dust filter 510 cannot leak out to the outside
even when the filter guide 530 is removed from the filter body
520 of the filter structure 500.

(Col. 7, ll. 43-49.)
The ’972 Patent does not limit the structure of the filter body or filter
guide. (See col. 6, ll. 31-51, disclosing that the profile of the filter body is
not specifically limited, and that the presence of the filter guide is optional.)
Accordingly, we decline to limit the structure of “a separate dust collecting
space” or “a defined space” as recited in the claims to the particular
structures and functions resulting therefrom disclosed in preferred
embodiments in the ’972 Patent. Indeed, the claims do not recite any
particular functions or benefits to the “dust collecting space” or “defined

5 In other words, the dust filter 510 is shown housed in a filter guide 530
“drawer” disposed within filter body 520.
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space” recited therein other than “to collect various foreign matter piling up
on the dust filter” (claims 21-23).
As a result, we interpret the claim language of “a separate dust
collecting space” or “a defined space” broadly, but reasonably, to require the
presence of a space available to collect dust, where the space is present in
addition to and separate from the dust filter.

Prior Art Rejections
DC01/DC02 Brochure/WO ’857
Claims 8, 9, 13, 20, and 24(Grounds 7, 8, and 10-Rejections I,
VI-VIII)
Patent Owner does not provide separate arguments with respect to
claims 9 and 13, which depend from claim 8. As a result, we confine our
discussion to claim 8, with the patentability of claims 9 and 13 standing or
falling with claim 8. In addition, because Patent Owner’s arguments with
respect to claims 20 and 24 rely on the same arguments as made for claim 8,
our discussion of claim 8 applies equally to claims 20 and 24. (See PO App.
Br. 28-29.) Moreover, because the Examiner’s rejections and Patent
Owner’s arguments focus generally on the DC01 disclosures, we focus our
analysis on the DC01 filter assembly.
The Examiner found that the DC01/DC02 Brochure discloses a
multiple cyclone vacuum cleaner as recited in claims 8 and 9 including the
filter receiver structure with a dust collecting space. (RAN 16-19.) The
Examiner relied on WO ’857 in order to exemplify an arrangement of a
vacuum that exhausts air to a space for mounting a fan and concluded that it
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would have been obvious to provide the DC01/DC02 Brochure with the
motor configuration details of a fan as detailed in WO ’857. (RAN 18-19.)
Regarding the presence of a separate dust collecting space, the
Examiner further explained that “DC01 teaches a cage frame with bars on
the upstream wall,” wherein the bars are positioned diagonally on the
upstream side of the dust filter. (RAN 32; see RAN 31-32, 37.) The
Examiner’s position is that “dust is carried into and collects at the spaces
between the bars of the upstream wall” or, in the alternative, “under the
force of gravity [i.e., if the filter is positioned vertically], falling dust collects
on the ledges provided by the depth of the cage bars,” and thus the filter
cage frame satisfy the limitation of a “separate dust collecting space” recited
in the claims. (RAN 35.)
Patent Owner contends that the figures of the DC01/DC02 Brochure
do not show the upstream structure of its cage frame or describe that dust is
collected outside of the DC01 Brochure’s filter. (PO App. Br. 26.) In
addition, Patent Owner contends that the cage frame of the DC01 Brochure
is not a separate dust collecting space. (PO App. Br. 26.) Patent Owner
argues that, when the cage frame is positioned inside the vacuum cleaner,
the bars allow the excessive dust buildup on DC01’s filter to leak outside of
the cage frame. (PO App. Br. 27.)
Accordingly, the dispositive issue is: Does the DC01/DC02 Brochure
discloses a “separate dust collecting space” as recited in claim 8.

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DISCUSSION
In view of our claim interpretation above, we are unpersuaded by
Patent Owner’s arguments that the DC01/DC02 Brochure does not disclose
“a separate dust collecting space” as recited in claim 8. We are not
persuaded by Patent Owner’s argument that because the bars from the filter
cage frame on the upstream side of the filter are in direct contact with the
filter, there is no space available to collect dust. (See PO App. Br. 12-13,
FN 8, 26-27.) As discussed above, the Examiner found that the depth of the
bars of the cage frame on the upstream side of the dust filter results in the
“separate dust collecting space” recited in claim 8. We agree as further
explained below.
The DC01 vacuum cleaner is reproduced below:

The above reproduced Figure depicts a DC01 vacuum cleaner.
(DC01/02 Brochure page 6.)
The below Figure depicts a closer view of the DC01 filter structure
assembly as positioned with respect to the DC01 vacuum cleaner.
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(DC01/02 Brochure page 5.)
Initially, we observe that Patent Owner, Requester, and the Examiner
all discuss the diagonal bars that the DC01/DC02 Brochure discloses on the
upstream side of the dust filter.6 (P.O App. Br. 12-13; RAN 31-32 paras.
80-81; Req. Resp’t Br. 15-17.) In addition, the presence of the filter and
cage frame as separate components is confirmed by the Dyson 98/99
Catalogue which discloses a “Filter and cage” in a list of items. (Dyson
98/99 Catalogue, p. 18.) Accordingly, Patent Owner’s arguments that the
Examiner is relying on internal structures of the dust filter for the defined
space is not persuasive. (See PO App. Br. 16.) The cage bars present on the
upstream side of the DC01 filter define a “separate dust collecting space.”
That is, the depth of the bars either define spaces for dust to collect on the
filter or, if placed vertically, the ledges of the bars are available to collect
dust, and because the cage frame giving rise to the dust collecting space is in

6 Patent Owner’s arguments regarding the legibility of the figures are
therefore not persuasive. The presence of the diagonal bars on the upstream
side of the cage frame is acknowledged and sufficient to resolve the
dispositive issue on appeal.
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addition to and separate from the dust filter, the space created by the bars of
the cage frame on the upstream side of the dust filter meet the limitation of
“a separate dust collecting space” recited in the claim.
In this regard, Patent Owner’s argument that the diagonal cage bars
highlighted by the Examiner have no depth is not persuasive. The cage bars
are three-dimensional structures that must inherently have some depth,
which would give rise to a dust collecting space as explained above. In
addition, Patent Owner’s argument that the dust collected on the ledges of
the cage bars may leak outside of the cage frame is not relevant, because, as
explained above the claims do not recite a particular size or function related
to the dust collecting space other than that the space be capable of collecting
dust. (See Req. Resp’t Br. 25.)
We have considered Patent Owner’s arguments related to the Lang
Declaration (Declaration of Charles Anthony Lang executed on February 13,
2013, App. Br., Ex. 5), and specifically the statements made therein that the
information known to one of ordinary skill in the art would have taught
away from the ’972 Patent, but find such arguments to be unpersuasive.
(PO. App. Br. 29-34.) As discussed above, the DC01/DC02 Brochure
discloses the separate dust collecting space recited in the claims. Thus,
testimony that one of ordinary skill in the art would not have incorporated a
separate dust collecting space into a vacuum cleaner is not persuasive.
As a result of the above discussion, we affirm the Examiner’s decision
to reject claims 8, 9, 13, 20, and 24.

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Claims 21-23 (Ground 10-Rejection I)
As discussed above, independent claims 21-23 recite “a defined space
between an enclosing side of the filter receiver and an upper surface of the
dust filter,” rather than “a separate dust collecting space” as recited in
independent claims 8 and 24. Patent Owner contends that the “defined
space” limitation should be interpreted to have the same scope as the
“separate dust collecting space” limitation. (PO App. Br. 18 FN 9.) Indeed,
Patent Owner’s arguments attempt to distinguish the combination of
DC01/DC02 Brochure and WO ’857 based on arguments that have been
addressed and found unpersuasive above. (See PO App. Br. 12-17.)
Accordingly, for the same reasons as articulated above with respect to
claims 8, 9, 13, 20, and 24, we affirm the Examiner’s rejection of claims
21-23.
Rejections based on WO ’602, DC03 Brochure, and WO ’604
(Grounds 2-5, and 12, Rejections II-V, and IX)
WO ’602 and DC03 Brochure
The issue with respect to WO ’602 and the DC03 Brochure is whether
those references disclose “a separate dust collecting space” as recited in
claims 8 and 24.
DISCUSSION
Patent Owner contends that the Examiner improperly relied on the
interior space present in the cylindrical filters of WO ’602 and the DC03
Brochure for the “separate dust collecting space” recited in the claims. (PO
App. Br. 22-23, 25.) Figure 4 of WO ’602 is reproduced below:
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Figure 4 is a sectional view of a pre-motor filter assembly 30
including a cylindrical filter 32 having caps 32a (top of filter, see Fig. 2) and
32a’ (bottom of filter, only labeled “32a” in Fig. 4, but see Fig. 2 and page 5,
1st full paragraph) to maintain the shape of the filter and located within a
housing 34 and a post-motor filter assembly 40 including a cylindrical filter
42 located within a housing 44. (Page 3, 3rd full paragraph, page 4, 2nd full
paragraph.)
The Examiner’s position appears to be that there is a dust collecting
space created by the presence of cap 32a’ within the cylindrical filter. (RAN
36-37; see Req. Resp’t Br. 22-23.)
In view of our claim interpretation set forth above, we agree with
Patent Owner, that WO ’602 does not disclose a “separate dust collecting
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space” as recited in claims 8 and 24. That is, in contrast to the DC01/DC02
Brochure, the space above cap 32a’ is located within and defined by the
cylindrical filter 32, and therefore is not a space present in addition to and
separate from the dust filter, as we interpret the language of the claims. As a
result, we are not persuaded by Requester’s argument relying on the
Declaration of Gareth E. L. Jones (executed on March 15, 2013, the “Jones
Declaration”) that the pre-motor filter 32 functions in a “technically
equivalent manner” as the filter assembly recited in the claims. (Req. Resp’t
Br. 23, Jones Decl. paras 28, 29.)
The Examiner’s position with respect to the DC03 Brochure is based
on the position that the DC03 Brochure discloses the same vacuum cleaner
as recited in WO ’602 (RAN 37, para. 89), and therefore the DC03 Brochure
does not disclose a “separate dust collecting space” as recited in claims 8
and 24 for the same reasons.

WO ’604
The Examiner’s position with respect to WO ’604 is based on the
position that the interior of filter receiver 23 provides a separate dust
collecting space. (RAN 7) Figure 4 of WO ’604 is reproduced below:
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Figure 4 depicts the internal detail and air flow path of the vacuum
cleaner of Figure 1 (WO ’604, page 3, para. 8), including a pre-motor 23
stacked coaxially on top of a post-motor filter 21. (WO ’604, page 4, para.
4, page 5, para. 1.)
The Examiner relies on the interior of “receiver 23” as disclosing “a
separate dust collecting space.” (RAN 7.) Requester contends that the
rejection relies on the details of the pre-motor filter set forth in WO ’602.
(Req. Resp’t Br. 23-24.)
We agree with Patent Owner that WO ’604 does not provide any
particular detail regarding the pre-motor filter 23. (PO App. Br. 24.) WO
’604 provides no further description beyond the term “pre-motor filter 23.”
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In addition, as discussed above, WO ’602 does not disclose “a separate dust
collecting space” as recited in claims 9 and 24.
As a result we reverse the Examiner’s rejections based on WO ’602,
DC03 Brochure, and WO ’604 (Grounds 2-5, and 12, Rejections II-V, and
IX).
REQUESTER’S CROSS-APPEAL
Because we have affirmed the Examiner’s decision to reject all claims
subject to reexamination as discussed above, we find it unnecessary to reach
Requester’s cross-appeal.

CONCLUSION
On this record, the Examiner did not err in rejecting claims 8, 9, 13,
and 21-23 based on the combination of the DC01/DC02 Brochure and WO
’857. The Examiner did not err in rejecting claim 24 based on the
combination of the DC01/DC02 Brochure and WO ’857, separately or in
further combination with Van Berkel. In addition, the Examiner did not err
in rejecting claim 20 based on the combination of the DC01/DC02 Brochure,
WO ’857, and the Dyson 98/99 Catalogue.
We reverse, however, the Examiner’s rejections based on WO ’602,
DC03 Brochure, and WO ’604 (Grounds 2-5, and 12, Rejections II-V, and
IX).

DECISION
The Examiner’s decision to reject claims 8, 9, 13, and 20-24 is
affirmed.
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In accordance with 37 C.F.R. § 41.79(a)(1), the “[p]arties to the
appeal may file a request for rehearing of the decision within one month of
the date of: . . . [t]he original decision of the Board under § 41.77(a).” A
request for rehearing must be in compliance with 37 C.F.R. § 41.79(b).
Comments in opposition to the request and additional requests for rehearing
must be in accordance with 37 C.F.R. § 41.79(c) & (d), respectively. Under
37 C.F.R. § 41.79(e), the times for requesting rehearing under paragraph (a)
of this section, for requesting further rehearing under paragraph (d) of this
section, and for submitting comments under paragraph (c) of this section
may not be extended.
An appeal to the United States Court of Appeals for the Federal
Circuit under 35 U.S.C. §§ 141-144 and 315 and 37 C.F.R. § 1.983 for an
inter partes reexamination proceeding “commenced” on or after November
2, 2002 may not be taken “until all parties' rights to request rehearing have
been exhausted, at which time the decision of the Board is final and
appealable by any party to the appeal to the Board.” 37 C.F.R. § 41.81. See
also MPEP § 2682 (8th ed., Rev. 7, July 2008).

AFFIRMED

ack
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PATENT OWNER:

DENTONS US LLP
1900 K. Street, N.W.
Washington, DC 20006

THIRD-PARTY REQUESTER:

MORRISON & FOERSTER LLP
707 Wilshire Boulevard
Los Angeles, CA 90017