Ex Parte 6,991,666 B2 et al

Patent Trial and Appeal Board

Feb 29, 2016

95002101 (P.T.A.B. Feb. 29, 2016)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
95/002,101 08/24/2012 6,991,666 B2 14670-4 8086
7590 02/29/2016
MORRISON & FOERSTER LLP
707 WILSHIRE BOULEVARD
LOS ANGELES, CA 90017
EXAMINER
TILL, TERRENCE R
ART UNIT PAPER NUMBER
3991
MAIL DATE DELIVERY MODE
02/29/2016 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
____________

LG ELECTRONICS, INC. and LG ELECTRONICS USA, INC.,
Requesters and Appellants,

v.

Patent of DYSON TECHNOLOGY LTD,
Patent Owner and Respondent
____________

Appeal 2015-005091
Reexamination Control 95/002,101
Patent 6,991,666 B2
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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Third-Party Requesters LG Electronics, Inc. and LG Electronics USA,
Inc. (“Requesters”) appeals under 35 U.S.C. §§ 134(c) and 315(b) (pre-AIA)
from the Examiner’s refusal to reject claims 1, 2, 6-8, 11, 14-17, 22-24, and
29-391 on various grounds.2 Patent Owner Dyson Technology Limited
urges that the Examiner’s decision must be affirmed.3 We have jurisdiction
under 35 U.S.C. §§ 134(c) and 315(b) (pre-AIA).
We REVERSE the Examiner’s decision not to adopt certain proposed
rejections. By operation of rule, our reversal constitutes a new ground of
rejection of claims 1, 2, 6-8, 11, 14-17, 22-24, and 29-39 under 37 C.F.R.
§ 41.77(b).

STATEMENT OF THE CASE
United States Patent 6,991,666 B2 (hereinafter the “’666 Patent”),
which is the subject of the current inter partes reexamination, issued to
Stephen Paul Organ on January 31, 2006. The ’666 Patent states that the
invention relates to a collecting chamber for a bagless vacuum cleaner and a
vacuum cleaner incorporating the collecting chamber. (Col. 1, ll. 5-8.)
Figure 3 of the ’666 Patent is reproduced below:

1 Claims 3, 9, 10, 13, and 18-21 were not subject to reexamination. Claims
25-39 were added during the reexamination and claims 4, 5, 12, 18, and
25-28 were cancelled. See Requesters’ Appeal Brief filed November 10,
2014, hereinafter “App. Br.,” at 3; Right of Appeal Notice mailed August
25, 2014, hereinafter “RAN” 3.
2 App. Br. 3; Requesters’ Rebuttal Brief filed March 6, 2015, hereinafter
“Reb. Br.,” Examiner’s Answer mailed February 4, 2015, hereinafter
“Ans.;” RAN.
3 See Patent Owner’s Respondent Brief filed December 11, 2014,
hereinafter “Resp’t Br.”
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Figure 3 is a cross-section of a dirt and dust separation unit of a
vacuum cleaner in a closed position. (Col. 3, ll. 26-32.) The dirt and dust
separation unit includes a first separation stage, which is a substantially
cylindrically-walled cyclonic chamber 205 that separates large debris and
dirt from the airflow. The airflow continues through an apertured annular
wall (shroud 235) into a second separation stage. The second separation
stage is a set of tapered cyclonic chambers 240, each having a tangential
inlet 242, an outlet 243 for separated dirt and dust, and cleaned air outlet
244. (’666 Patent, col. 4, ll. 18-37.) Of particular relevance to this appeal is
the presence of base 210, which is hinged at 214 to the chamber 205 to allow
pivotal movement between the base 210 and the chamber 205. (’666 Patent,
col. 5, ll. 19-25.) When the base 210 is opened, material from a collection
area formed between chamber 205 and inner wall 206 and collection area
270 may be emptied. (’666 Patent, col. 5, ll. 26-31.) When the base 210 is
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closed, seal 212 fits tightly against the inner wall chamber 205 to maintain
an air and dust-tight seal. (’666 Patent, col. 5, ll. 26-31.) The base 210 is
held in the closed position by a locking mechanism 260, 262, which is
controlled by a manually operable trigger 220. (’666 Patent, col. 5, ll.
29-42.) A linking mechanism including lever arm 222 and spring 223 joins
the trigger to the locking mechanism, and the remote end of the lever arm
pushes downwardly against the upper end 231 of push rod 230. (’666
Patent, col. 5, ll. 42-50.) In operation, the trigger 220 is pulled, which will
cause base 210 to swing open as a result of the push rod 230 operating catch
260 and pushing against base 210 overcoming the resistance of seal 212.
(’666 Patent, col. 6, ll. 29-45.) The trigger 220 may be inhibited from
moving, an embodiment of which, is depicted in Figures 6 and 6A of the
’666 Patent, reproduced below:
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Figures 6 and 6A are cross sections of the dirt and dust separation unit
mounted on the chassis of the vacuum cleaner. (’666 Patent, col. 3, ll.
39-41.) In Figure 6A, the chassis 50 (Figure 6) has a projection 218 which
fits inside a notch 217 on the trigger 220 such that when the separator unit
20 (reference number not shown) is fitted to the chassis 50, the trigger 220 is
inhibited from operating. (’666 Patent, col. 7, ll. 28-33.)
Claims 1 and 14, which are illustrative of the appealed subject matter,
read as follows (with underlining indicating additions and bracketing
indication deletions, respectively, relative to the originally issued patent
claims):
1. A bagless vacuum cleaner, comprising a walled
collecting chamber, a cleaner head, an inlet for receiving a dirt-
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laden airflow from the cleaner head, an air outlet and a
collection area for collecting dirt and dust which has been
separated from the airflow by cyclonic separation,
wherein part of the chamber wall in the region of the
collection area comprises a closure member which is movable
between a closed position in which the closure member seals
the chamber and an open position in which dirt and dust can
escape from the collection area, the chamber further comprising
a releasing mechanism for releasing the closure member from
the closed position,
wherein the releasing mechanism comprises a manually
operable actuating member which is located remotely from the
closure member and
wherein the releasing mechanism is operable to apply an
opening push force to the closure member,
wherein the wall of the chamber is impermeable to air,
and
wherein the closure member and the actuating member
are physically detached from each other in the open position.

14. A bagless vacuum cleaner [according to claim 1, 2,
or 3], comprising a walled collecting chamber, a cleaner head,
an inlet for receiving a dirt-laden airflow from the cleaner head,
an air outlet and a collection area for collecting dirt and dust
which has been separated from the airflow,
wherein part of the chamber wall in the region of the
collection area comprises a closure member which is movable
between a closed position in which the closure member seals
the chamber and an open position in which dirt and dust can
escape from the collection area, the chamber further comprising
a releasing mechanism for releasing the closure member from
the closed position,
wherein the releasing mechanism comprises a manually
operable actuating member which is located remotely from the
closure member,
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wherein the releasing mechanism is operable to apply an
opening force to the closure member and
wherein the collecting chamber is configured to be
removable from a stowed position on a chassis of the vacuum
cleaner and the actuating member is inhibited from opening the
closure member when the collecting chamber is in the stowed
position.
(Req. App. Br. 50-52, Claims App’x.)

Requester contests the Examiner’s refusal to reject claims 1, 2, 6-8,
11, 14-17, 22-24, and 29-39 as follows:
I. Claims 14, 29, and 31-37 under 35 U.S.C. § 102(b) as
anticipated by Smith (U.S. Patent No. 3,055,039) (App. Br.
12-20; RAN 4-6) (Ground 1);
II. Claims 31 and 32 under 35 U.S.C. § 103(a) as obvious over
Smith and Hamada (U.S. Patent No. 6,192,550) (App. Br.
20-21; RAN 24 (Ground 16);
III. Claims 1, 2, 6-8, 11, 14-17, 22-24, and 29-39 under 35 U.S.C.
§ 103(a) as obvious over EP ’992 (EP 0 932 992) in view of
Smith (App. Br. 21-34; RAN 22-23) (Ground 15);
IV. Claims 1, 2, 6-8, 11, 14-16, 29, and 31-37 under 35 U.S.C.
§ 103(a) as obvious over Hamada in view of Smith (App. Br.
34-40; RAN 29-30) (Ground 22);
V. Claims 1, 11, 15, and 16 under 35 U.S.C. § 103(a) as obvious
over EP ’992 in view of Krammes (U.S. Patent No. 3,040,362)
(App. Br. 41-45; RAN 32-34) (Ground 26);
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VI. Claims 1, 2, 6-8, 11, 15, and 16 under 35 U.S.C. § 103(a) as
obvious over Hamada, Smith and Krammes (App. Br. 45; RAN
36-38) (Ground 28);4 and
VII. Claims 17, and 22-24 under 35 U.S.C. § 103(a) as obvious over
EP ’096 (EP 0 557 096 A1) and CH ’734 (Switzerland
Publication No. CH 688734 (Ground 12) (Req. App. Br. 46-48;
RAN 16-17).

Anticipation by Smith (Rejection I, Ground 1)
ISSUE
The dispositive issue with respect to this rejection is whether Smith
discloses the limitation in claim 14 of “the actuating member is inhibited
from opening the closure member when the collecting chamber is in the
stowed position.”

4 Patent Owner asserts that Grounds 26 and 28 are not proper issues for
appeal, because the Examiner’s non-adoption of those rejections in the
Action Closing Prosecution indicates that the Examiner determined there
was no reasonable likelihood of prevailing on those grounds, such that the
appropriate remedy with respect to those grounds was by way of petition to
the Director. (Resp’t Br. 4, 20, 22.) Patent Owner’s argument is without
merit. See Airbus S.A.S. v. Firepass Corp., 793 F.3d 1376, 1379 (Fed. Cir.
2015) (holding that “[o]nce reexamination has been instituted, it is only 37
C.F.R. § 1.948(a)(2) that limits the prior art that can be raised by the third-
party requester in proposed rejections to newly-added or amended claims.
Although § 312(a) requires the Director to ‘determine whether a substantial
new question of patentability affecting any claim of the patent concerned is
raised by the request,’ the statute notably does not contain the same
requirement for proposed rejections to claims added or amended after
institution of the reexamination. 35 U.S.C. § 312(a) (2006). Section 312 is
expressly limited to the pre-institution request from the third party.”)
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The Examiner determined that nothing inhibits operating knob 76 in
Smith, which the Examiner found to be an actuating member, from operating
even when tank 16 is in the stowed position. (RAN 5, para. 17.) The
Examiner found that Smith discloses an intentional axial clearance between
the tank 16 and brackets 12, and 14 such that when the tank of Smith is in
the stowed position, any movement of the tank vertically upward will allow
a small gap between the sealing plate 34 and closure 36, 68. (RAN 5-6,
para. 17.) Thus, the Examiner’s position is that when the knob 76 in Smith
is depressed forcing push rod 74 downward, the closure would open by a
few degrees, which is distinct from the claim language requiring the
actuating member to be inhibited. Id.
Requester contends that claim 14 does not require any particular
structure or mechanism that inhibits the operation of the actuating member,
but only requires that the operation of the actuating member does not open
the closure member when the collecting chamber is in the stowed position.
(App. Br. 14.) Requester contends that the nesting relation between the
lower end of the tank at closure 36 and the seating plate 34 prevents
accidental displacement of the tank during use locking the tank in place
when the lower end of the tank has been engaged in the seating plate 34.
(App. Br. 15, 18.) In this regard, Requester argues that claim 14 does not
require that opening the closure member very slightly be impossible in any
circumstance. (App. Br. 16.) Requester argues also that if the user lifts the
collection chamber, the collection chamber is no longer in a stowed position.
(App. Br. 16.)
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Patent Owner contends that Smith discloses a latch pin 40 that is
slideable vertically while the collection chamber is in a stowed position and
that Smith’s apparatus is designed to accommodate various displacement
forces while the tank is in the stowed position indicating that Smith’s
actuating member is not inhibited from opening the closure member when
the collecting chamber is in the stowed position. (Resp’t Br. 5-7.)

FINDINGS OF FACT (“FF”)
1. Smith discloses an apparatus that among other things
“provide[s] [a] means for emptying the tanks when necessary
and provide[s] an apparatus which is efficient, durable and
attractive in appearance.” (Col. 1, ll. 22-24.)
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2. Figure 2 of Smith is reproduced below:

Figure 2 depicts a sectional view of a vacuum cleaner apparatus
including a rigid tube 10 having brackets 12 and 14, and a tank
16, which may be placed between brackets 12 and 14. (Col. 1,
ll. 59-61, col. 2, ll. 7-19.)
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3. Figure 3 of Smith is reproduced below:

Figure 3 depicts a side elevation of the vacuum cleaner of
Figure 2 with the tank depicted partially in phantom in a
removed position. (Col. 1, ll. 62-63.)
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4. Figure 4 of Smith is depicted below:

Figure 4 depicts a longitudinal section of the dust tank removed
from the frame including end member 56, closure 68, latch 69,
flange 78, rod 74, and knob 76. (Col. 1, ll. 63-64, col. 3, ll.
21-30.)
5. Figure 10 of Smith is reproduced below:

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Figure 10 depicts a fragmentary section of the closure latch for
the dust tank where the closure 68 is held closed by latch 69,
which is engaged with nub 71 on end member 56. (Col. 2, ll.
1-2, col. 3, ll. 21-25.)
6. Smith discloses that when knob 76 is pushed downward, it
pushes rod 74 downward and disengages the closure latch 69
from the nub 71 to permit the closure 68 to open in order to
empty the tank. (Col. 3, ll. 20-33.)
7. Smith discloses that a tank 16 is secured in place against a
seating plate 34 by the engagement of the tank’s depression 42
with a spring pressed latch pin 40 mounted on an upper support
14. (Smith, col. 2, ll. 35-48, Figs. 2, 3, and 9.)
8. Figure 9 of Smith is reproduced below:

Figure 9 depicts an enlarged view of the latch pin 40 engaged
with depression 42 of tank 16. (Col. 1, l. 72.)
9. The latch pin 40 is disclosed as being slidable vertically in a
sleeve 44 (see Fig. 3, not labelled in Fig. 9), where the
movement of pin 40 is limited by a pin 46 engaged with a slot
48 in the sleeve. (Smith, col. 2, ll. 48-51, Figs. 3, 9.)
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10. A spring 50 surrounds the sleeve 44 “for yieldingly forcing
latch pin 40 downwardly for engagement with the recess 52.”
(Smith, col. 2, ll. 52-54.)
11. The tank “comes into registration with the latch pin, thereby
locking the tank in place.” (Smith, col. 2, ll. 59-62.)
12. The nesting relation between the seating plate and the lower end
of the tank “prevent[s] accidental displacement of the tank
during use and of insuring registration of the intake port [38] of
the tank [16] with the discharge port [26] on the housing.”
(Smith, col. 2, ll. 39-44 and Fig. 2.)
13. Smith discloses that “[a]n elastic gasket 27 is disposed about
the port 26 and this, together with the endwise thrust of the
spring pressed pin on the tank, insures an air and liquid-tight
seal between the ports 26 and 38.” (Col. 2, ll. 62-65 and Fig.
3.)

PRINCIPLES OF LAW
We determine the scope of the claims in patent applications not solely
on the basis of the claim language, but upon giving claims their broadest
reasonable construction in light of the Specification as it would be
interpreted by one of ordinary skill in the art. In re Am. Acad. of Sci. Tech.
Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004).
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ANALYSIS
Requester has argued claims 14, 29, and 31-37 together. Accordingly,
we confine our discussion to claim 14 as representative of the grouped
claims. See 37 C.F.R. § 41.67(c)(1)(vii).
We begin by interpreting the term “inhibiting.” We observe that
claim 14 does recite any particular structural features that inhibit the
actuating member. Although the ’666 Patent describes an embodiment of as
discussed above in conjunction with Figures 6 and 6A, the ’666 Patent does
not provide an express definition of “inhibiting.” Accordingly, we turn to
the plain and ordinary meaning of the term. Requester has provided a
definition of “inhibit” from various dictionaries to mean “to hinder, prohibit,
restrain, or discourage.” (Supplemental Declaration of Donald A. Coates
(with Appendices A-B) executed on November 29, 2013 “Suppl. Coates
Decl.” para. 3.) We agree with and adopt Requester’s definition of “inhibit”
as the broadest reasonable definition of the term. Thus, under the broadest
reasonable interpretation, claim 14 does not require that the actuating
member or the closure be rendered completely immobile, only that the
actuating member is restrained or hindered from functioning in some way.
As a result of our interpretation of “inhibiting,” we agree with
Requester that the Examiner erred in not adopting the rejection of claim 14
as anticipated by Smith. That is, in the context of Smith, the knob (actuating
member) 76 is inhibited from opening the closure member 68 when the tank
16 is in the stowed position because the closure member 68 rests against
seating plate 34 when the tank is locked in position by virtue of latch pin 40
and the thrust of spring 50 on spring pressed pin 46, which is further
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imparted to the tank. (See FF 3, 4, and 7-12.) Thus, when the knob 76 is
depressed, rod 74, even if it is able to disengage closure latch 69 to some
extent, would be hindered or restrained from opening the closure member
68. (See FF 4, 5.) Even if the amount of force applied to the knob 76 were
sufficient to overcome the force of the spring 50 on spring pressed pin 46 to
allow the closure 68 to open slightly, the force applied by the spring 50 is
still an inhibiting force, which further hinders the ability of the knob 76 to
open the closure 68 because pin 40 is engaged with slot 42 of tank 16. (See
FF 9, 10.) We agree with Requester that, to the extent the tank can be raised
vertically within a space between arm 14 and tank 16 in Figure 2, it would
no longer be in the stowed or “locked” position, because there would no
longer be an air and liquid-tight seal between the ports 26 and 38, which we
find to be a required characteristic of the stowed or locked position of the
tank in Smith. (See FF 13.) Accordingly, Smith discloses that the actuating
member is inhibited from opening the closure member when the collection
chamber is in the stowed position.
As a result, we reverse the Examiner’s decision not to adopt the
rejection of claims 14, 29, and 31-37 as anticipated by Smith.

Obviousness over EP’992 and Smith (Rejection III, Ground 15)
In not adopting the proposed rejection of claims 1, 2, 6-8, 11, 14-17,
22-24, and 29-39 over EP’992 and Smith, the Examiner agreed with Patent
Owner that incorporating the rod 74 of Smith into the frusto-conical portion
of EP’992 would render the cyclonic separating apparatus inoperable. (RAN
22; quoting Supplemental Declaration of Gareth E. L. Jones, executed on
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October 29, 2013 and considered by the Examiner in the Action Closing
Prosecution (ACP), “Supp. Jones Dec.” paras. 8-10.) Regarding claim 14,
the Examiner found that EP’992 in combination with Smith does not
disclose that the actuating member is inhibited from opening the closure
member when the collecting member is in the stowed position. (RAN
22-23.) Regarding claim 39, the Examiner found that EP’992 combined
with Smith does not teach the releasing mechanism configured to apply an
opening force to the center of the closure member. (RAN 23.)
Requester contends that the combination of EP’992 and Smith teaches
all the limitations of the claims. (Req. App. Br. 21-26.) Requester argues
that the combination of EP’992 and Smith is operable as evidenced by the
’666 Patent, which discloses the same combination. (Req. App. Br. 27.)
Requester contends that the claims do not require a certain level of
efficiency that would prevent placement of the push rod within the center of
the chamber. (Req. App. Br. 28.) Regarding claims 14 and 29-37,
Requester contends that there are sufficient reasons to combine EP’992 and
Smith to inhibit the actuating member from opening the closure member in
the stowed position. (Req. App. Br. 33-34.)
Patent Owner argues that the reasoning provided by Requester fails to
consider the different technical environments between EP’992, which
requires cyclonic airflow, and Smith, which has no cyclonic airflow to
maintain. (PO Resp’t Br. 10.) Patent Owner also points to the Supplemental
Declaration of Gareth Jones as evidence that the cyclonic airflow required
by EP’992 would be disrupted or destroyed as a result of the proposed
modification and that complete re-engineering of the exhaust of EP’992
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would be required. (PO Resp. Br. 10, 12.) Patent Owner argues that placing
Smith’s rod in a central location of the device of EP’992 would have been
undesirable and is not cured by Requester’s arguments related to reasonable
expectation of success or that no significant modification would be required.
(PO Resp’t Br. 13-15.) Regarding claims 14 and 29-37, Patent Owner
contends that Requester misapprehends the Examiner’s analysis that the
combination lacks the technical teachings to meet the claim limitations. (PO
Resp’t Br. 15-16.)
Accordingly, the dispositive issue with respect to this rejection is
whether it would have been obvious to have combined the disclosures of
EP’992 and Smith to arrive at the vacuum cleaner recited in the claims?

DISCUSSION
As stated above, the issue with respect to this rejection is whether one
of ordinary skill in the art would have combined EP’992 and Smith in the
manner set forth by Requester, thus rendering the claims of the ’666 Patent
obvious. Upon consideration of the evidence of record, we determine that a
preponderance of the evidence supports the Requester’s position that
incorporating the push rod mechanism of Smith into the cyclonic vacuum
device of EP’992 would have been obvious.
Although we observe that claim 1 does not require that the releasing
mechanism be present in any particular location within the collection
chamber, we focus our discussion on the proposed combination where the
push rod is located within the center of the cyclonic chamber of EP’992. We
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acknowledge that the Supplemental Declaration of Gareth Jones5 provided
by Patent Owner argues that “it would not be clear to one of ordinary skill in
the art how to actually implement Smith’s rod 74 without adversely affecting
the airflow.” (Supp. Jones Dec. para. 17, see also paras. 14 and 16-18.)
Requester has also provided evidence in the form of Declarations by
Alexander Slocum6 and Donald A. Coates,7 who both disagreed with Mr.
Jones and declared that placement of the releasing mechanism of Smith
along the centerline of the collection chamber would have had minimal
impact on the cyclonic airflow because the centerline “is at the zero velocity
point in the vortex so it would not disturb air flow.” (Slocum Decl. para. 23,
paras, 24-25, App. Br., Ex. H, Supp. Coates Decl. paras. 11-13.)
The opinions expressed in both the Slocum Declaration and the
Supplemental Coates Declaration are supported by other prior art

5 Mr. Jones has a mechanical engineering degree and a Master’s Degree in
Industrial Design Engineering and has worked in the field of design and
development of upright vacuum cleaners for Dyson. Declaration of Gareth
E.L. Jones executed on January 25, 2013 and entered by the Examiner as of
the August 29, 2013, paras. 2, 3. We find Mr. Jones to be qualified to render
opinions in the field of vacuum cleaner design.
6 Declaration of Alexander Slocum (with Appendices A, B, E) executed on
November 29, 2013. Dr. Slocum has a Ph.D. in mechanical engineering
from the Massachusetts Institute of Technology (MIT) and has taught
courses at MIT and written books in the field of machine design. (Paras. 3,
5, 6.) We find Dr. Slocum to be qualified to render opinions in the field of
vacuum cleaner design.
7 Dr. Coates has a Ph.D. in mechanical engineering and has experience in
studying and designing cyclonic vacuum cleaners at Hoover. (Declaration
of Donald A. Coates executed on February 26, 2013, paras 2, 4.) We find
Dr. Slocum to be qualified to render opinions in the field of vacuum cleaner
design.
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publications8 showing the placement of rods in the center of cyclonic
chambers. (App. Br. 28-29.) Indeed, the Supplemental Slocum Declaration
references Davis as showing that placement of rods in the center of vacuum
cyclone chambers was known. (Suppl. Slocum Decl. para. 25; see Davis,
Fig. 2, col. 4, ll. 1519, Rod 38.) As a result, we are persuaded that
implementing Smith’s release mechanism in the center of the cyclonic
chamber of EP’992 would have been expected to result in an operable
combination even though the apparatus of Smith is not directed to a cyclonic
device. Specifically, in view of the above discussion, we determine that
Requester’s Declaration evidence is supported by the prior art and outweighs
the Declaration evidence provided by Patent Owner.
As to the Examiner’s position that none of the additional prior art
references showing rods in the center of cyclonic devices were relied upon
in the proposed ground of rejection (RAN 56, para. 265), we observe that
those references were offered to rebut Patent Owner’s position that the
combination proposed would have resulted in an inoperable device.
Therefore, these additional references are indicative of what the skilled
artisan would have known regarding cyclonic vacuum cleaners, such as that
described by EP’992, at the time of the invention.
Regarding the desirability of the combination of EP’992 and Smith,
Requester and Patent Owner disagree as to the significance of Dorman,9

8 (App. Br., Exhibit F: Japanese Utility Model Publication No. H04-116932,
Fig. 1; Exhibit G: European Publication No. EP 0836827, Fig. 1; and Exhibit
H: U.S. Patent No. 2,542,635 “Davis”, Fig. 2).
9 R.G. Dorman, Dust Control and Air Cleaning, 236-239, 242 (Pergamon
Press 1974).
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relied upon by Requester in the Supplemental Coates Decl. (paras. 11, 13),
Patent Owner contending that Dorman supports the Examiner’s position that
significant technical problems would render the proposed combination of
EP’992 and Smith undesirable. (Resp’t Br. 12.) Specifically, Patent Owner
contends that one of ordinary skill in the art would not have put a rod in the
centerline of a cyclonic chamber because doing so would have disrupted the
upward flow of cleaned air along the central axis of the chamber. Id. On the
other hand, Dr. Coates relies on Dorman as support for the position that
positioning a rod in the centerline of the cyclonic chamber would have
“minimal effect on cyclonic operation” because the velocity proximate to the
central axis in cyclonic chamber is very small. (Supp. Coates Dec. para. 11.)
In addition, Dr. Coates relies on Dorman as evidence that “it was well
known that a baffle or cone can be added to the apex of a cyclone to reduce
the annular clearance and re-entrainment of dust with air moving toward the
vortex finder.” (Supp. Coates Decl. 13.)
Patent Owner further relies on the Supplemental Jones Declaration,
which discusses certain other design challenges that would be associated
with placement of a rod in the central location of a cyclone separation
apparatus. (Resp’t Br. 12; Supp. Jones Decl. paras. 14-18.) However, these
design concerns relate to the problem of “adversely affecting airflow,”
which, in view of the additional prior art of record and declaration evidence
demonstrating that such adverse effect would be “minimal,” we do not find
persuasive. In addition, as further noted by Requester, Smith as well as the
Declaration evidence submitted by Requester provides specific reasons for
providing a releasing mechanism in order to open a collection chamber.
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(Reb. Br. 9, citing Smith, col. 1, ll. 22-24; Slocum Decl. paras. 23-24, Supp.
Coates Decl. para. 11, Coates Decl. para. 32; FF1.) Accordingly, we are not
persuaded that modifying the vacuum of EP’922 to add a releasing
mechanism to open a collection chamber would not have been desirable.
Obviousness does not require that the combination produce the most
desirable result. See In re Fulton, 391 F.3d 1195, 1200 (Fed. Cir. 2004)
(“[T]he question is whether there is something in the prior art as a whole to
suggest the desirability, and thus the obviousness, of making the
combination,” not whether there is something in the prior art as a whole to
suggest that the combination is the most desirable combination available.)
Regarding the Examiner’s position that placing the rod 74 in the
center of the EP’992 device would interfere with the handle 54 of Smith
(RAN para. 264), we agree with Requester, that the focus of the rejection is
the combination of EP’992 and Smith and not on each of the references
individually. One cannot show nonobviousness by attacking references
individually where the rejections are based on combinations of references.
In re Keller, 642 F.2d 413, 426 (CCPA 1981); In re Merck & Co., Inc., 800
F.2d 1091, 1097 (Fed. Cir. 1986).
Regarding the other design concerns raised by the Examiner (RAN
paras. 256-266) and the Supplemental Jones Declaration (paras. 17-18) in
implementing the combination of EP’992 and Smith, Requester has
presented persuasive evidence that any modifications required in placing
Smith’s rod in the center of EP’992 would have been within ability of one of
ordinary skill in the art. (App. Br. 32, Slocum Declaration, paras 23-25;
Coates Supp. Declaration, para. 13.) Indeed, much of the discussion in the
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Supplemental Jones Declaration relates to bodily incorporation of the rod of
Smith into the device of EP’992, which is not sufficient to rebut a case of
obviousness. “[T]he test for combining references is not what the individual
references themselves suggest but rather what the combination of disclosures
taken as a whole would suggest to one of ordinary skill in the art.” In re
McLaughlin, 443 F.2d 1392, 1395 (CCPA 1971).
Similarly, the Examiner’s position that in view of the proposed
combination, the exhaust of EP’992 would require significant reengineering
is not persuasive in view of the evidence of record. (App. Br. 32, RAN
paras. 256-266.) The Examiner’s analysis focuses more on bodily
incorporation rather than what the ordinary skilled artisan would understand
from combination of references as a whole. In addition, there is no
indication that the proposed modification would have been beyond the skill
of the ordinary skilled artisan.

Claims 14 and 29-37
The Examiner relied on the position that Smith alone does not teach or
render obvious inhibiting the actuating member from opening the closure
member in the stowed position. (RAN 22-23, para. 124.) The Examiner
also determined that EP’992 does not disclose sufficient detail about the
housing disclosed therein to inhibit the closure member from opening when
the collecting chamber is in the stowed position. (Id.) Similarly, Patent
Owner agrees with the Examiner that the combination of EP ’992 and Smith
lacks technical teachings to meet the claim language and that there is
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insufficient guidance as to how to accommodate the modified collection
chamber of EP’992 in view of Smith. (Resp’t Br. 15-16.)
Requester contends that the Examiner did not consider that Smith
discloses preventing accidental displacement of the tank during use, that the
state of the art describes a need for inhibiting the actuator from opening the
closure member, and that there was a compelling design need to inhibit an
actuating member from opening the closure member in the stowed position
at the time of the invention. (App. Br. 33-34.)
We agree with Requester. Initially, we refer to our discussion above
that Smith discloses inhibiting an actuating member from opening the
closure member in the stowed position. In addition, we are persuaded by
Requester’s Declaration evidence, which discusses the design need that
vacuum cleaners not leak dirt. (App. Br. 33-34, citing Slocum Declaration,
para. 22; Coates Declaration, para. 21.) As discussed above, the
obviousness inquiry does not depend on the ability to combine specific
structures disclosed by the references, but rather on what the references as a
whole convey to one of ordinary skill in the art. Although, some design
elements of EP’992 may need to be adjusted as a result of the incorporation
of the rod of Smith, there is no indication that such modifications would be
beyond the capabilities of one of ordinary skill in the art.

Claim 39
Claim 39 recites that “the releasing mechanism is configured to apply
an opening force to the center of the closure member.” The Examiner
determined that because the retention mechanism (pin 40 and depression 42)
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of Smith “is located along the centerline,” it would prevent moving the
actuator to the middle of the collection chamber, and thus would prevent the
releasing mechanism from applying an opening force to the center of the
collection chamber. (RAN 23, para 125.) In addition, the Examiner
determined that EP’992 teaches an exhaust outlet 18 along the centerline of
the collection chamber such that one of ordinary skill in the art would need
to go beyond the teachings in the prior art to fashion a workable device with
the releasing mechanism applying an opening force to the center of the
closure member. Id. The Examiner further relies on similar positions as
discussed above such as a reduced separation efficiency, the lack of detail
with respect to the housing in EP’992, and the alleged vertical movement in
Smith. (RAN 57-58, paras. 268-271.)
Requester contended that placement of the rod in the center would
have been an obvious design choice. (Requester’s Comments to Patent
Owner’s Response and First Office Action filed February 27, 2013, pages
35-36.)
Similar to the rejections above, the Examiner relies on an interruption
of cyclonic airflow and lack of detail in implementing design changes in
accommodating the combination, which, for similar reasons as discussed
above with respect to claims 1 and 14, were not persuasive. The Examiner
also only considers the bodily incorporation of the design of Smith in the
cyclonic vacuum of EP’922. The Examiner and the Patent Owner have not
provided persuasive evidence to find that the modification would not have
been with the skill of the ordinary artisan.
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As a result, we reverse the Examiner’s decision not to reject claims 1,
2, 6-8, 11, 14-17, 22-24, and 29-39 as obvious over EP’992 and Smith.

A. Remaining Withdrawn or Non-Adopted Rejections
Because we have concluded that the Examiner erred in not adopting
other rejections of claims 1, 2, 6-8, 11, 14-17, 22-24, and 29-39, we find it
unnecessary to reach the propriety of the remaining withdrawn or proposed
rejections. See Beloit Corp. v. Valmet Oy, 742 F.2d 1421, 1423 (Fed. Cir.
1984); cf. In re Gleave, 560 F.3d 1331, 1338 (Fed. Cir. 2009). See also 37
C.F.R. 41.77 (a) (“The Patent Trial and Appeal Board … may affirm or
reverse each decision of the examiner on all issues raised on each appealed
claim”) and Gleave, 560 F.3d at 1338.

CONCLUSION
Requester has demonstrated that the Examiner erred in not adopting
the rejection of claims 14, 29, and 31-37 under 35 U.S.C. § 102(b) as
anticipated by Smith.
Requester has demonstrated that the Examiner erred in not adopting
claims 1, 2, 6-8, 11, 14-17, 22-24, and 29-39 under 35 U.S.C. § 103(a) as
obvious over EP ’992 in view of Smith.

DECISION
The Examiner’s decision refusing to reject claims 1, 2, 6-8, 11, 14-17,
22-24, and 29-39 is reversed.

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TIME PERIOD FOR RESPONSE
This decision contains new grounds of rejection pursuant to 37 C.F.R.
§ 41.77(b) which provides that “[a]ny decision which includes a new ground
of rejection pursuant to this paragraph shall not be considered final for
judicial review.” Correspondingly, no portion of the decision is final for
purposes of judicial review. A requester may also request rehearing under
37 C.F.R. § 41.79, if appropriate, however, the Board may elect to defer
issuing any decision on such request for rehearing until such time that a final
decision on appeal has been issued by the Board. For further guidance on
new grounds of rejection, see 37 C.F.R. § 41.77(b)–(g). The decision may
become final after it has returned to the Board. 37 C.F.R. § 41.77(f).
Section 41.77(b) of Title 37 of the Code of Federal Regulations also
provides that the Owner, WITHIN ONE MONTH FROM THE DATE OF
THE DECISION, must exercise one of the following two options with
respect to the new grounds of rejection to avoid termination of the appeal as
to the rejected claims:
(1) Reopen prosecution. The owner may file a response
requesting reopening of prosecution before the examiner.
Such a response must be either an amendment of the claims
so rejected or new evidence relating to the claims so
rejected, or both.

(2) Request rehearing. The owner may request that the
proceeding be reheard under § 41.79 by the Board upon the
same record . . . .

Any request to reopen prosecution before the examiner under 37
C.F.R. § 41.77(b)(1) shall be limited in scope to the “claims so rejected.”
Accordingly, a request to reopen prosecution is limited to issues raised by
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the new ground(s) of rejection entered by the Board. A request to reopen
prosecution that includes issues other than those raised by the new ground(s)
is unlikely to be granted. Furthermore, should the Owner seek to substitute
claims, there is a presumption that only one substitute claim would be
needed to replace a cancelled claim.
A requester may file comments in reply to Owner response. 37 C.F.R.
§ 41.77(c). Requester comments under 37 C.F.R. § 41.77(c) shall be limited
in scope to the issues raised by the Board’s opinion reflecting its decision to
reject the claims and the Owner's response under paragraph 37 C.F.R. §
41.77(b)(1). A newly proposed rejection is not permitted as a matter of
right. A newly proposed rejection may be appropriate if it is presented to
address an amendment and/or new evidence properly submitted by the
Owner, and is presented with a brief explanation as to why the newly
proposed rejection is now necessary and why it could not have been
presented earlier.
Compliance with the page limits pursuant to 37 C.F.R. § 1.943(b), for
all Owner responses and requester comments, is required.
The Examiner, after the Board’s entry of Owner response and
Requester comments, will issue a determination under 37 C.F.R. § 41.77(d)
as to whether the Board’s rejection is maintained or has been overcome.
The proceeding will then be returned to the Board together with any
comments and reply submitted by the Owner and/or Requester under 37
C.F.R. § 41.77(e) for reconsideration and issuance of a new decision by the
Board as provided by 37 C.F.R. § 41.77(f).
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Requests for extensions of time in this inter partes reexamination
proceeding are governed by 37 C.F.R. § 1.956. See 37 C.F.R. § 41.77(g).

REVERSED; 37 C.F.R. § 41.77(b)

ack
PATENT OWNER:
MORRISON & FOERSTER LLP
707 WILSHIRE BOULEVARD
LOS ANGELES, CA 90017

THIRD-PARTY REQUESTER:

BRINKS GILSON & LIONE
P.O.BOX 10395
CHICAGO, IL 60610