Ex Parte Field et al

Board of Patent Appeals and Interferences

Apr 6, 2011

10909070 (B.P.A.I. Apr. 6, 2011)

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.
10/909,070 07/30/2004 Bruce F. Field T31.12-0008 5658
27367 7590 04/07/2011
WESTMAN CHAMPLIN & KELLY, P.A.
SUITE 1400
900 SECOND AVENUE SOUTH
MINNEAPOLIS, MN 55402
EXAMINER
YOO, REGINA M
ART UNIT PAPER NUMBER
1773
MAIL DATE DELIVERY MODE
04/07/2011 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte BRUCE F. FIELD and
JOSEPH L. POULIOT
____________

Appeal 2009-015300
Application 10/909,070
Technology Center 1700
____________

Before ADRIENE LEPIANE HANLON, BEVERLY A. FRANKLIN, and
KAREN M. HASTINGS, Administrative Patent Judges.

HASTINGS, Administrative Patent Judge.

DECISION ON APPEAL

Appellants appeal under 35 U.S.C. § 134 from the Examiner’s
rejection of claims 1, 4-8, and 41. We have jurisdiction under 35 U.S.C. § 6.

Appeal 2009-015300
Application 10/909,070

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STATEMENT OF THE CASE
Claim 1 is representative of the subject matter on appeal and is set
forth below:
1. A sanitization device comprising:
a mobile body configured to travel over a surface;
a cleaning liquid dispensing system supported on the
mobile body and configured to dispense a cleaning liquid to the
surface;
a squeegee coupled to a rear side of the mobile body and
configured to engage the surface;
a rotatable scrubber mounted to the mobile body and
configured to scrub the surface;
a source of UV radiation attached to the mobile body and
positioned at a rear side of the squeegee, the source of UV
radiation configured to direct UV radiation to the surface;
a tank mounted to the mobile body; and
a vacuum supported by the mobile body and configured
to remove liquid from the surface that is collected by the
squeegee and deposit the liquid into the tank.
THE REJECTIONS
1. Claims 1, 4, 5, 7, and 8 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Handke (US 5,006,694 issued Apr. 9, 1991) in view of
Hillenbrand ( US 6,245,392 B1 issued June 12, 2001) and Tuson (GB
910,229 published Nov. 14, 1962).
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2. Claims 6 and 41 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Handke in view of Hillenbrand and Tuson, and further in
view of Berg (US 6,096,383 issued Aug. 1, 2000).
ISSUE
Did the Examiner err in determining that the combination of Handke,
Hillenbrand, and Tuson renders the claimed device unpatentable?
We answer this question in the affirmative and REVERSE.
ANALYSIS
(with Findings of Fact and Principles of Law)
Appellants submit that the combination of references does not suggest
the claimed invention, is not properly combinable as proposed by the
Examiner, and that the proposed modification to Handke would render the
gas flow unit 7 and coating unit 9 of Handke unsuitable for their intended
purpose. We agree with Appellants (see pages 4-7 of the Brief, pages 4-7 of
the Reply Brief, and pages 3-5 of the Supplemental Reply Brief). We add
the following primarily for emphasis.
The Examiner may not use the claim as a “frame” and then employ
“individual, naked parts of separate prior art references . . . as a mosaic to
recreate a facsimile of the claimed invention.” W.L. Gore & Assocs., Inc. v.
Garlock, Inc., 721 F.2d 1540, 1552 (Fed. Cir. 1983).
In the instant case, the Examiner is combining the teachings of two
references that each apply a coating to a work piece (Handke and
Hillenbrand) with a third reference to a vacuum cleaning machine (Tuson) in
order to arrive at the claimed sanitization device. However, the Examiner
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does not explain how the blade coater 42 of Hillenbrand would have
operated as a squeegee to engage the surface and remove liquid from the
surface as required by claim 1, nor has the Examiner explained why this
blade coater 42 is suitable for addition to the laser welding and/or cutting
operation apparatus of Handke for numerous reasons as set out by the
Appellants in their briefs, nor why it would have been reasonable to have
located the blade coater 42 in the claimed position when modifying Handke
(generally Briefs). It is well established that claims directed to an apparatus
must be distinguished from the prior art in terms of structure rather than
function, see, e.g., In re Schreiber, 128 F.3d 1473, 1477-78 (Fed. Cir. 1997).
In order to satisfy the functional limitations in an apparatus claim, however,
the prior art apparatus must be capable of performing the claimed function.
Id. at 1478. In the instant case, the Examiner has not explained how the
Handke apparatus as modified by Hillenbrand would have been capable of
the claimed functions of sanitizing, dispensing a cleaning liquid, and
vacuum removal of liquid that was collected by the squeegee.
Under the above circumstances, it is apparent that the only teaching or
suggestion for modifying Handke in view of Hillenbrand and Tuson to arrive
at Appellants’ claimed invention is derived from Appellants’ own
Specification rather than the applied prior art. Therefore, we conclude that
the Examiner’s rejection is improperly based upon improper hindsight
reasoning. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007) (The fact
finder must be aware “of the distortion caused by hindsight bias and must be
cautious of arguments reliant upon ex post reasoning;” citing Graham v.
John Deere Co., 383 U.S. 1, 36 (1966) (warning against a “temptation to
read into the prior art the teachings of the invention in issue”)).
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The Examiner does not rely upon the other reference applied in the
other rejection to cure the deficiencies of the combination of Handke,
Hillenbrand, and Tuson.
In view of the above, we reverse the Examiner’s § 103 rejections.
CONCLUSIONS OF LAW AND DECISION
The Examiner’s rejections are reversed.
REVERSED

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