Ex Parte 7,600,292 B2 et alDownload PDFPatent Trial and Appeal BoardSep 9, 201695002102 (P.T.A.B. Sep. 9, 2016) Copy Citation APPLICATION NO, FILING DATE FIRST NAMED INVENTOR 95/002,102 08/24/2012 7,600,292 B2 7590 12/19/2017 MORRISON & FOERSTER LLP 707 WILSHIRE BOULEY ARD LOS ANGELES, CA 90017 UNITED STATES DEPARTMENT OF COMMERCE United States Pntent and Trademark Office Address: COMMISSIONER FOR PA TENTS P.O. Box 1450 Alexandria, Virginia 22313-1450 www.uspto.gov ATTORNEY DOCKET NO. CONFIRMATION NO. 14670-5 3909 EXAMINER ENGLISH, PETER C ARTUNIT PAPER NUMBER 3993 MAIL DATE DELIVERY MODE I 2/19/2017 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 2015-007928 Reexamination Control 95/002,102 Patent 7,600,292 C1 Technology Center 3900 ____________ Before CHUNG K. PAK, JEFFREY B. ROBERTSON, and RAE LYNN P. GUEST, Administrative Patent Judges. ROBERTSON, Administrative Patent Judge. DECISION ON REQUEST FOR REHEARING In a Decision on Appeal issued September 9, 2016 (“Decision”), the panel reversed the Examiner’s refusal to reject claims 1, 3, 4, 11, 18, 28, and 36 and entered a new ground of rejection of claims 1, 3, 4, 11, 18, 28, and 36 pursuant to 37 C.F.R. § 41.77(b). (Decision 2, 6–17.) In particular, the panel enter a new rejection of claims 1, 3, 4, 11, 18, 28, and 36 under 35 U.S.C. § 103(a) as obvious over Lee (U.S. Patent No. Appeal 2015-007928 Reexamination Control 95/002,102 Patent 7,600,292 C1 2 5,842,254), Uratani (EP 1129657 A1), and Redding (U.S. Patent No. 5,584,095). Pursuant to 37 C.F.R. § 41.77(b)(2), Patent Owner Dyson Technology Ltd. (“Patent Owner”) requests rehearing of the decision affirming the Examiner’s rejection of the claims under 37 C.F.R. § 41.79(a)(2). Request for Rehearing (“Request” or “Req. Reh’g”) dated October 11, 2016. Third- Party Requesters LG Electronics, Inc. and LG Electronics USA, Inc. (“Requesters”) submitted comments on Patent Owner’s Request for Rehearing on November 10, 2016 (hereinafter “Comments”). Patent Owner contends that the Board overlooked the following points (Request 2): 1. Even with the addition of Redding, the combination does not meet and is incapable of meeting all the recitations of claim 1; and 2. The Board’s rationale for adding Redding is faulty given the geometry of the Lee/Uratani combination. 1. Combination does not meet Claim 1 Patent Owner contends that the Board overlooked that the combination of Lee and Uratani does not meet the recitation in claim 1 that the handle and support assembly rotate along the handle’s longitudinal axis, a deficiency that is not remedied by the addition of Redding. (Request 6.) Patent Owner argues that the portions of the record cited by the Board (Decision 14, App. Br. 17–18, Slocum Decl. paras. 38–39) do not support the rationale in the Decision for concluding that a vacuum cleaner in which Appeal 2015-007928 Reexamination Control 95/002,102 Patent 7,600,292 C1 3 the handle and support assembly rotate along the handle’s longitudinal axis is obvious in view of Lee and Uratani. (Request 6–8.)1 Patent Owner contends that Redding does not address the deficiencies of Lee in view of Uratani, because the combination of Lee and Uratani includes an offset between the longitudinal axis of the handle and the wheel axis of the vacuum cleaner’s body, which is fixed, such that even with Redding the support assembly and handle cannot be rotated about the handle’s longitudinal axis while the appliance is rolled along the surface. (Request 8–14.) Requesters contend that the claimed linkage encompasses any structure that is capable of performing the claimed handle rotation function such that the geometry of the Lee-Uratani combination is irrelevant as long as the combination can perform the claimed function. (Comments 8.) Requesters argue that Patent Owner does not point to any objective evidence that Lee’s handle cannot be rotated about the longitudinal axis, and that the spherical universal joint of Lee enables rotational movement of Lee’s handle. (Comments 9.) Requesters argue that the fixed offset of the Lee- Uratani combination enables rotating the support assembly and handle about the longitudinal axis while the appliance is rolled along the surface. (Comments 10–20.) 1 Regarding Requesters’ arguments (Comments 5–7) that Patent Owner has improperly made new arguments relative to the arguments made in the briefing on appeal, 37 C.F.R. § 41.79(b)(3) permits new arguments in responding to a new ground of rejection made pursuant to 37 C.F.R. § 41.77(b). Appeal 2015-007928 Reexamination Control 95/002,102 Patent 7,600,292 C1 4 Lee-Uratani Handle Rotation Initially, we decline Patent Owner’s invitation to revisit the Lee- Uratani aspect of the new ground of rejection. Patent Owner’s argument relating to Uratani’s teaching of rotation “about the horizontal axis” focuses only on one portion of one sentence found pages 17–18 of Requesters’ Appeal Brief2 and ignores the express discussion of how the handle could rotate in the manner specified by the claims on page 18 of Requester’s Appeal Brief. (App. Br. 18, reproducing figures of Slocum Decl. ¶ 35.) Moreover, the focus of the analysis on page 14 of the Decision was the capability of the cleaner body in Uratani as incorporated into Lee to roll along the surface as recited in the claims as a result of its shape, which was supported by the citation to paragraphs 38 and 39 of the Slocum Declaration. In any case, as Requester points out, the ability of Lee’s handle to rotate in combination with Uratani is clearly indicated by Patent Owner’s expert in the record, and as such, Patent Owner’s attempt to now argue that such a rotation is not possible is without merit. (Comments 9, citing Jones Decl. ¶¶, 27, 29, 30, 31.) Lee-Uratani-Redding Regarding Patent Owner’s contention that even when Redding is considered, the handle would travel in an arc, but would not rotate about its 2 We note that Patent Owner does not address footnote 5 on page 17 of Requesters’ Appeal Brief, which states: “As demonstrated in further detail below, however, the RAN is wrong in stating that ‘the only rotation of the housing 20 taught by Uratani et al. is the rotation about the horizontal axis.’ (p. 21).” Appeal 2015-007928 Reexamination Control 95/002,102 Patent 7,600,292 C1 5 own longitudinal axis, again we are not persuaded for similar reasons as discussed above, namely that the handle in the Lee-Uratani combination is capable of being rotated. In this regard, Patent Owner attempts to argue that the “twisting” relied on in the Decision (Decision, 10-11 (citing to Redding, 3:47-65, Fig. 6) (“the operator twist the handle in a clockwise direction along its longitudinal axis.”)) is not possible as a result of a fixed offset between the longitudinal axis of the handle and the wheel axis of the vacuum cleaner body as depicted below. (Request 8–11, 13–14.) The figure above is reproduced from the Request for Rehearing and Jones Declaration, ¶ 60 of Lee’s vacuum cleaner with a dotted line representing the longitudinal axis of the handle and an X representing the wheel axis of the vacuum cleaner’s body. (Request 9.) Patent Owner argues that the offset results in the handle rotating about a different axis of rotation, between Redding’s universal joint and the wheel contact point on the floor. (Request 10, reproducing drawings from Jones Appeal 2015-007928 Reexamination Control 95/002,102 Patent 7,600,292 C1 6 Decl. ¶ 63.) The referenced drawings are reproduced from the Request for convenience: The left drawing allegedly is a side view of a vacuum cleaner resulting from the combination of Lee and Uratani, where the handle is not rotated and the right drawing allegedly is a side view of a combined vacuum cleaner with the handle rotated. However, the drawings relied on by Patent Owner are premised on the situation where “the handle height is not kept constant” and are part of a discussion in the Jones Declaration regarding the ergonomic suitability of the combination as well as the idea that the Lee-Uratani combination would have wheels that “would be inoperable to roll on the ground.” (Jones Decl. ¶ 63, ¶ 61, ¶¶ 64–67.) As stated in the Decision, such a particular manner of rotating the handle is not recited in the claims. (See Decision 14–15.) As a result, we agree with Requester that the claims do not distinguish a “rotation” from a “twist” and “arc.” (Comments 15.) In essence, Patent Owner’s argument is based on the position that the handle of the vacuum cleaner of the combined vacuum cleaner cannot be rotated. We are not persuaded by Patent Owner’s argument for the reasons Appeal 2015-007928 Reexamination Control 95/002,102 Patent 7,600,292 C1 7 discussed above. We addressed the portions of the Jones Declaration cited to by Patent Owner in the Decision and see no need to repeat that entire discussion here. (Decision 13–15.) However, we reproduce the following portion of the Decision for emphasis: Indeed, support assemblies of Lee and Uratani both include a pair of wheels 191 and 27, respectively, and, as such, were designed to be “rolled along the surface.” Having the assembly of Lee with the support assembly having the general shape of Uratani would have improved, and not have inhibited, the maneuverability of the upright mode of Lee, as taught by Uratani. Thus, we do not agree with Patent Owner that the combination of Lee and Uratani would result in a vacuum cleaner that would not roll along the surface as recited in the claims. (Decision 14.) The Decision also stated: We are also not persuaded by the arguments regarding stability and mobility of Lee and Uratani (Jones Decl. paras. 36-54), because, as Requester points out, these arguments appear to be directed to the bodily incorporation of Lee and Uratani and does not take into account any modifications that one of ordinary skill in the art would make in applying the teachings of the spherical, rather than drum shaped, support assembly of Uratani to the vacuum cleaner of Lee. (Reb. Br. 7-8; Slocum Decl. 50-56.) (Decision 15.) As to Patent Owner’s arguments regarding the drawings provided on page 18 of Requester’s Appeal Brief (Request 12; Slocum Decl. ¶¶ 34, 35), Requester’s expert describes the handle’s movement as a “rotation” of the longitudinal axis of the handle. (Slocum Decl. ¶ 35, “Longitudinal Axis of Appeal 2015-007928 Reexamination Control 95/002,102 Patent 7,600,292 C1 8 the Handle (rotated 30 degrees).”) The referenced drawings are reproduced from the Request for convenience: The left drawing and the right drawing are allegedly representations of a vacuum cleaner resulting from the combination of Lee and Uratani with the handle rotated about the longitudinal axis 30 degrees. Patent Owner provides no persuasive evidence that Requester’s drawings depict movement in the form of an “arc” and that such an “arc” distinguishes the claimed handle rotation. (See Comments 8–16.) 2. Obviousness Rationale Patent Owner argues that the Board overlooked the geometry of the Lee-Uratani combination in the obviousness analysis. (Request 14–15.) In this regard, Patent Owner argues that maneuvering the upright vacuum of Redding is possible because Redding’s handle is not constrained by a fixed offset body as in a combination involving Lee, Uratani, and Redding. (Request 15–16.) Appeal 2015-007928 Reexamination Control 95/002,102 Patent 7,600,292 C1 9 Patent Owner argues that: (1) because the Redding “twist” is impossible in the upright vacuum of Lee-Uratani-Redding, it would be impossible to push and twist the handle in the combined vacuum due to the fixed offset in Lee and Uratani, which is the criterion for the “improved maneuverability” in Redding; (2) the geometry of the combination of Lee, Uratani, and Redding prevents an operator from “continuing” to push and twist the handle of the vacuum cleaner; (3) Requesters’ drawings of the Lee and Uratani combination (Slocum Decl. ¶ 35) depict a wheel up off the ground that even in view of Redding presents strong evidence against a finding of obviousness; (4) Requesters’ proposed wheel-up design in the combination of Lee and Uratani would violate established design principles for vacuum cleaners because it would present ergonomic issues with respect to the user’s hand and wrist; and (5) even if the Requesters’ proposed design was capable of performing the claim recitations, capability is insufficient for obviousness, and one of ordinary skill in the art would not have modified a combination that turns with weight-bearing wheels that turns by lifting one weight-bearing wheel up. (Request 16–20.) Requesters responds that Patent Owner’s arguments are based upon the incorrect premise that Lee’s handle cannot rotate about the longitudinal axis. (Comments 22, 24.) Requesters contend that Patent Owner’s arguments ignore that the Lee-Uratani-Redding combination includes a spherical shaped support assembly. (Comments 22–24.) Requesters argue that the Board properly combined Redding with Lee and Uratani, and further contends that Redding rebuts Patent Owner’s argument because Redding expressly discloses twisting the handle to cause the handle and the body to Appeal 2015-007928 Reexamination Control 95/002,102 Patent 7,600,292 C1 10 turn for steering. (Comments 24–25.) Requesters contend that Patent Owner’s assertions that the drawings of Requester’s expert Dr. Slocum depict wheels off the ground are incorrect. (Comments 25–28.) Requesters argue that Patent Owner’s argument that the proposed combination would violate design principles for vacuum cleaners is misplaced because it is based on Patent Owner’s incorrect characterization of the Lee-Uratani combination. (Comments 28–29.) We are not persuaded by Patent Owner’s argument that there would be no resultant improved maneuverability in the combination of Lee, Uratani, and Redding, because as discussed above, we are not persuaded by Patent Owner’s premise that any offset between the longitudinal axis of the handle and the wheel axis of the vacuum cleaner body prevents the handle from rotating. As to Patent Owner’s arguments regarding the inability of the “continuation of pushing and twisting the handle of the vacuum cleaner” of Redding when Redding is combined with Lee and Uratani, we are not persuaded. Specifically, we have been directed to no persuasive evidence that combining Redding with Lee and Uratani would necessarily result in “syncopated tilting transitions between left-wheel-up and right-wheel-up balancing acts” (Request 16) and that would outweigh the improved maneuverability from employing the universal joint disclosed in Redding to the combination of Lee and Uratani. (Decision 10–11.) We are also not persuaded by Patent Owner’s arguments that Requesters’ drawings present strong evidence against a finding of obviousness. (Request 17, reproducing drawings from Slocum Decl. ¶ 34.) Appeal 2015-007928 Reexamination Control 95/002,102 Patent 7,600,292 C1 11 Patent Owner’s reference to Requesters’ drawings is to provide an opportunity to argue that Uratani “is actually designed to keep both of its wheels on the floor and, indeed, the whole point of Uratani is to restore the housing 20 to a positon in which both wheels are on the floor. (Uratani, ¶¶ 0005, 0012, 0017; claims 1, 20, 26.)” (Request 17.) Patent Owner further argues that both Lee and Redding depict wheels on the ground, such that the combination of Lee, Uratani, and Redding is outside the bounds of designed operation and an exercise in undue experimentation of a novel design. (Request 18.) We are not persuaded by these arguments. We disagree that Uratani is designed to keep wheels on the ground, but rather, as discussed in the portions cited by Patent Owner, Uratani is directed to keeping the housing upright as the vacuum cleaner is maneuvered. (Uratani, ¶¶ 0005, 0012, 0017; Figs. 4, 11, 14; claims 1, 20, 26.) Thus, Uratani is designed to roll on one wheel and return upright as needed. (See e.g., Uratani, Fig. 4.) As to combining the disclosures of Lee, Uratani, and Redding, as we stated in the Decision, page 15: [A]s Requester points out, these arguments appear to be directed to the bodily incorporation of Lee and Uratani and does not take into account any modifications that one of ordinary skill in the art would make in applying the teachings of the spherical, rather than drum shaped, support assembly of Uratani to the vacuum cleaner of Lee. (Reb. Br. 7-8; Slocum Decl. 50- 56.) We discern no reason to change our view as a result of Patent Owner’s contentions including the argument that Redding discloses wheels on the ground. (Request 18.) Appeal 2015-007928 Reexamination Control 95/002,102 Patent 7,600,292 C1 12 Patent Owner’s further arguments regarding the position that the proposed combination would be ergonomically unsound are also unpersuasive. (Request 18–19.) Although we agree that one of ordinary skill in the art make take into account ergonomic factors when designing vacuum cleaners, we agree with Requester that Patent Owner’s arguments are based on Patent Owner’s interpretation of the Lee-Uratani combination, with which we disagree. (Comments 28.) As pointed out by Requester, there is evidence of record to support the position that the proposed combination of Lee and Uratani would result in acceptable ergonomic characteristics to the user. (Comments 28; citing Slocum Decl. ¶¶ 33–44, 57–59, and Slocum Supp. Decl. ¶¶ 13, 32–35.) We are also not persuaded by Patent Owner’s argument that the combination is insufficient because capability is insufficient under an obviousness rationale as in In re Giannelli, 739 F.3d 1375, 1380 (Fed. Cir. 2014). We agree with Requester that Giannelli is distinguished on its facts. (Comments 30.) That is, in Giannelli, the claims were to a rowing apparatus and the prior art was based on a chest press machine, which involved opposite motions, pulling versus pushing. 739 F.3d at 1380-81. In the instant case, the apparatus in the prior art and the claims are both vacuum cleaners. As Requester states in the Comments, operation of vacuum cleaners involves pushing, pulling, swinging and sometimes twisting the handle depending on how the vacuum cleaner is used. (Comments 30; citing Redding, col. 3, ll. 30–35; Slocum Supp. Decl. ¶ 37; Reb. Br. 19–20.) As to Patent Owner’s argument that one of ordinary skill in the art would not have modified a combination that turns with weight-bearing Appeal 2015-007928 Reexamination Control 95/002,102 Patent 7,600,292 C1 13 wheels that turns by lifting one weight-bearing wheel up, Patent Owner again relies on Giannelli, which we find to be unpersuasive as discussed above. We are also unpersuaded by Patent Owner’s argument for the reasons discussed in the Decision and further discussed herein above. Therefore, we decline to make any changes in the Decision mailed September 28, 2016. Accordingly, the Request for Rehearing is denied. DENIED PATENT OWNER: Morrison & Foerster, LLP 707 Wilshire Blvd. Los Angeles, CA 90017 THIRD-PARTY REQUESTER: Brinkks, Hofer, Gilson & Lione P.O. Box 10395 Chicago, IL 60610 Copy with citationCopy as parenthetical citation