Ex Parte Dingert

Board of Patent Appeals and Interferences

Dec 11, 2008

10371815 (B.P.A.I. Dec. 11, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte UWE DINGERT
____________

Appeal 2008-3773
Application 10/371,815
Technology Center 3700
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Decided: December 11, 2008
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Before: JENNIFER D. BAHR, LINDA E. HORNER and
JOHN C. KERINS, Administrative Patent Judges.

HORNER, Administrative Patent Judge.

DECISION ON APPEAL

Appeal No. 2008-3773
Appl. No. 10/371,815

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STATEMENT OF THE CASE
Uwe Dingert (Appellant) seeks our review under 35 U.S.C. § 134
of the final rejection of claims 1, 2, 4-10.1 We have jurisdiction under
35 U.S.C. § 6(b) (2002).

SUMMARY OF DECISION
We REVERSE.

THE INVENTION
Appellant’s claimed invention is a self-wringing mop (Spec. 1:1).
Claim 1, reproduced below, is representative of the subject matter on appeal.
1. A self-wringing mop, comprising:
a handle, the handle including a first
longitudinal section having a polygonal cross
section with a plurality of edges running in an
axial direction;
an operating sleeve twistably disposed on
the handle so as to be twistable relative to the
handle in a wringing direction and in an opposite
direction;
a mop head disposed at a lower end of the
handle and including cleaning elements configured
to be wrung out by a twisting in the wringing
direction; and
at least one blocking element between the
handle and the operating sleeve, wherein a twisting

1 Claims 11-13 are objected to as dependent from a rejected base claim (Ans.
2). Claims 26-29 have been allowed (Final Rejection, Aug. 23, 2006).
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of the sleeve in the wringing direction relative to
the handle results in the blocking element moving
past the plurality of edges against an elastic force,
and a twisting of the sleeve in the opposite
direction relative to the handle results in at least
one of the plurality of edges pressing the blocking
element against the operating sleeve so as to block
a further twisting in the opposite direction;
the handle including a second longitudinal
section having a different cross section from the
first longitudinal section, the operating sleeve
being axially displaceable from a first position on
the first longitudinal section to a second position
on the second longitudinal section, wherein the
blocking element is disengaged and the operating
sleeve is freely twistable relative to the handle
when the operating sleeve is in the second
position.

THE REJECTIONS
The Examiner relies upon the following evidence:
Morad US 5,509,163 Apr. 23, 1996
Appellant seeks review of the following rejections:2
1. The Examiner rejected claims 1, 2, 4-8, and 10 under 35 U.S.C.
§ 102(b) as anticipated by Morad.
2. The Examiner rejected claim 9 under 35 U.S.C. §103(a) as
unpatentable over Morad.

2 The Examiner withdrew a double patenting rejection of claims 1, 2 and 4-
10 (Ans. 3).
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ISSUE
The Examiner found Morad discloses all the elements of claim 1.
Appellant contends Morad does not disclose a second position for the
operating sleeve where the blocking member is disengaged.
The issue presented is:
Has Appellant shown the Examiner erred in determining Morad
discloses a second position for the operating sleeve where the blocking
member is disengaged?

FINDINGS OF FACT
We find that the following enumerated facts are supported by at least
a preponderance of the evidence. Ethicon, Inc. v. Quigg, 849 F.2d 1422,
1427 (Fed. Cir. 1988) (explaining the general evidentiary standard for
proceedings before the Office).
1. Morad discloses a self-wringing mop 10 (Morad, col. 3, ll.
12-13), including:
a. Outer tubular member 18 disposed around inner shaft 12 so
that outer tubular member 18 can move longitudinally and
rotate around inner shaft 12 (Morad, col. 5, ll. 24-27 & 45-
48).
b. Inner shaft 12 comprised of proximal section 24 (nearest the
mop head 16), distal section 30 (furthest from the mop head
16), and middle section 28 (Morad, col. 5, ll. 28-30; Figures
1 & 7).
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c. Middle section 28 having a plurality of longitudinal ribs 64,
and proximal section 24 and distal section 30 having
exteriors without longitudinal ribs 64 (Morad, col. 6, ll. 27-
30; Figures 1 & 7).
d. Longitudinal ribs 64 are engaged by tip 66 of front curved
shaped claw portion 69 of spring biased pawl 65 (Morad,
col. 6, lines 41-46; Figure 4).
e. Spring biased pawl 65, located in side slot 67, adjacent
distal end 48 of outer tubular member 18, forming spring-
and-ratchet mechanism 20 (Morad, col. 6, ll. 35-52).
f. Spring-and-ratchet mechanism 20 forming a one-way
ratchet mechanism that permits rotation of outer tubular
member 18 with respect to inner shaft 12 in a clockwise
direction, and prohibits rotation in a counterclockwise
direction (Morad, col. 7, ll. 8-17; Figure 4 arrows) until the
user depresses pawl 65 (Morad, col. 6, ll. 50-52 & 57-63;
col. 7, ll. 3-7 & 42-46).
2. In particular, Morad discloses that to unlock the outer
tubular member 18:
A user can simply press the pawl against the
spring to disengage it from the longitudinal
ribs of the inner shaft to unlock the rotational
movement of the outer tube member, thereby
allowing the outer tubular member to
automatically and rapidly spring back to its
initial position and unwind the mop for use
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(Morad, col. 3, ll. 34-39).
3. Depressing pawl 65 is the only method of permitting
counterclockwise rotation explicitly disclosed by Morad
(Morad, passim).
4. Morad does not explicitly disclose outer tubular member 18
being movable longitudinally in relation to inner shaft 12
sufficiently so that tip 66 of pawl 65 is positioned beyond
ribs 64 of middle section 28 of inner shaft 12 (Morad,
passim).

PRINCIPLES OF LAW
Anticipation
"A claim is anticipated only if each and every element as set forth in
the claim is found, either expressly or inherently described, in a single prior
art reference." Verdegaal Bros. v. Union Oil Co. of California, 814 F.2d
628, 631 (Fed. Cir. 1987).

Inherency
"It is well settled that a prior art reference may anticipate when the
claim limitations not expressly found in that reference are nonetheless
inherent in it. Under the principles of inherency, if the prior art necessarily
functions in accordance with, or includes, the claimed limitations, it
anticipates." In re Cruciferous Sprout Litig., 301 F.3d 1343, 1349 (Fed. Cir.
2002) (citations and internal quotation marks omitted). "Inherency,
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however, may not be established by probabilities or possibilities. The mere
fact that a certain thing may result from a given set of circumstances is not
sufficient." In re Robertson, 169 F.3d 743, 745 (Fed. Cir. 1999) (citations
and internal quotation marks omitted).

ANALYSIS
Claims 1, 2, 4-8, and 10 under 35 U.S.C. § 102(b) as anticipated by Morad.
The Appellant argues claims 1, 2, 4-8, and 10 as a group (App. Br. 9).
As such, we select claim 1 as the representative claim, and claims 2, 4-8, and
10 stand or fall with claim 1. 37 C.F.R. § 41.37(c)(1)(vii) (2007).
The Examiner found Morad’s wringable mop anticipated claim 1. In
reaching this conclusion, the Examiner found Morad’s mop has a wringing
position and a mopping position (Ans. 4-5). The Examiner found that in the
wringing position, the outer tubular member 18 is located so that tip 66 of
spring-biased pawl 65 engages ribs 64 in the middle portion 28 of inner shaft
12. The Examiner found that in the mopping position, outer tubular member
18 is lowered3 so that spring-biased pawl 65 slides past the ribs 64 of the
middle section 28 to the smooth distal section 24 of inner shaft 12.4 The
Examiner maintains that in the mopping position, because tip 66 of pawl 65
no longer engages ribs 64, outer tubular member 18 is able to rotate freely.

3 Moves longitudinally in relation to inner shaft 12 to be closer to mop 16
(the mop head).
4 This explanation uses the nomenclature of Morad rather than that used by
the Examiner.
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In further support of this interpretation of Morad, the Examiner finds
that “mops of this type have wringing sleeves (18) that are axially movable
along the length of the handle (fig 1 and column 5, lines 45-55),” and cites
US 1,514,051 to Jumonville as a representative example (Ans. 5; Examiner’s
Response to Reply Br. 2).
Appellant contends Morad does not anticipate claim 1 because Morad
does not disclose the operating sleeve being axially displaceable to a second
position “wherein the blocking element is disengaged” (App. Br. 10).5 To
the contrary, Appellant argues, Morad does not explicitly disclose a second
position where the pawl (blocking member) is disengaged.
Morad anticipates the claim 1 if Morad expressly or inherently
describes each element of the claim. Verdegaal Bros. v. Union Oil Co. of
California, 814 F.2d 628, 631 (Fed. Cir. 1987). Morad does not expressly
describe a second longitudinal position for the operating sleeve (outer
tubular member 18) where the blocking member (tip 66 of spring-and-
ratchet member 20) is disengaged (Fact 4). The remaining question is
whether Morad inherently describes this element of the claim.
Though the Examiner does not expressly state the element in
contention is inherent in Morad, by stating that Morad must operate so that it
has that feature, the Examiner has raised the issue of inherency. We accept

5 Appellant also argues Morad does not teach a second position for the
operating sleeve where the operating sleeve is “freely twistable” relative to
the handle. Because we reverse based on the absence of a second position
where the blocking element is disengaged, we need not address the “freely
twistable” argument.
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for sake of argument the Examiner is correct that related prior art mops
operate by having a wringing and a mopping position, and that in the
mopping position the blocking member disengages and the operating sleeve
rotates freely.
While prior art mops may operate as described above, that does not
necessarily mean that Morad’s device operates that way. The Examiner
contends that the prior art mops move the operating sleeve to a second
position so that the mop head is released from being wrung, and is then
ready to mop. In contrast, Morad’s device releases the mop head from the
wrung position to the mopping position by depressing the pawl, and it is not
necessary to move the operating sleeve to a second longitudinal position to
release the mop head as with the prior art devices (Facts 1-3). Because it is
not necessary for Morad’s device to move the operating sleeve to a second
longitudinal position where the blocking device is disengaged, that element
is not inherent in Morad. In re Robertson, 169 F.3d 743, 745 (Fed. Cir.
1999).
Morad does not anticipate claim 1 because Morad does not expressly
or inherently disclose all elements of the claim. Likewise, claims 2, 4-8, and
10 stand with claim 1.

Claim 9 under 35 U.S.C. §103(a) as unpatentable over Morad.
Claim 9 depends from claim 1. The Examiner has failed to provide a
reason why one having ordinary skill in the art would have been led to
modify the mop of Morad to have a second position for the operating sleeve
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where the blocking member is disengaged, as recited in claim 1. Thus, the
Examiner has failed to set forth a prima facie case of obviousness of claim 9,
which depends from claim 1.

CONCLUSION
Appellant has shown the Examiner erred in determining that Morad
discloses a second position for the operating sleeve where the blocking
member is disengaged.

DECISION
We reverse the Examiner’s decision to reject claims 1, 2, 4-10.

REVERSED

vsh

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