Ex Parte Fountain et al

Patent Trial and Appeal Board

Feb 14, 2017

13164298 (P.T.A.B. Feb. 14, 2017)

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.
13/164,298 06/20/2011 JORDAN R. FOUNTAIN SUB-01089-US-NP 1573
173 7590 02/16/2017
WHIRLPOOL CORPORATION - MD 3601
2000 NORTH M63
BENTON HARBOR, MI 49022
EXAMINER
LEE, DOUGLAS
ART UNIT PAPER NUMBER
1714
NOTIFICATION DATE DELIVERY MODE
02/16/2017 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
whirlpool_patents_co@whirlpool.com
mike_lafrenz @ whirlpool .com
deborah_tomaszewski@whirlpool.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JORDAN R. FOUNTAIN, ANTONY M. RAPPETTE,
BARRY E. TULLER, and RODNEY M. WELCH1
Appeal 2015-006893
Application 13/164,298
Technology Center 1700
Before GEORGE C. BEST, WESLEY B. DERRICK, and
JULIA HEANEY, Administrative Patent Judges.
DERRICK, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on an appeal under 35 U.S.C. § 134 from the
Examiner’s rejection under 35 U.S.C. § 103 of claims 1—4, 7-9, 11, and 12
over Classen2 in view of Thies3 and of claims 5 and 6 and claim 10 in further
1 Appellants identify Whirlpool Corporation as the real party in interest.
Appeal Br. 2.
2 Classen et al., DE 10 2007 060 195 Al, published June 18, 2009. A
machine translation into English is used, which use is not contested.
3 Thies, US 5,803,100, issued September 8, 1998.
Appeal 2015-006893
Application 13/164,298
view of Alabaster4 and Marchetto,5 respectively. We have jurisdiction
pursuant to 35 U.S.C. § 6. We AFFIRM.
BACKGROUND
Appellants’ claimed invention relates to a method of treating utensils
in a dishwasher wherein wash liquid is recirculated and the wash liquid is
filtered by use of filters capable of removing particles from the wash liquid.
Spec. Abstract.
The sole independent claim—reproduced below—is representative of
the claims on appeal.
1. A method of treating utensils in a dishwasher having a
treating chamber for receiving utensils, a spray system for
spraying wash liquid in the treating chamber, and a
recirculating system for recirculating sprayed liquid from the
treating chamber to the spray system to treat the utensils
according to a cycle of operation, the method comprising:
spraying wash liquid from the spray system into the
treating chamber;
recirculating the sprayed wash liquid from the treating
chamber back to the spray system for subsequent spraying;
microfiltering the wash liquid, as it is recirculated, to
remove particles larger than 150 microns to form a
microfiltered wash liquid comprising only particles 150
microns or smaller; and
ultrafiltering at least a portion of the micro filtered wash
liquid to remove particles larger than 40 microns to form an
ultrafiltered wash liquid comprising only particles 40 microns
or smaller.
Appeal Br. (Claims Appendix) 21.
4 Alabaster, US 3,122,148, issued February 25, 1964.
5 Marchetto et al., EP 0 752 231 Al, published January 8, 1997.
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DISCUSSION6
To prevail in an appeal to this Board, Appellants must adequately
explain or identify reversible error in the Examiner’s rejection. See
37 C.F.R. § 41.37(c)(l)(iv) (2012); see also In re Jung, 637 F.3d 1356,
1365-66 (Fed. Cir. 2011) (explaining that even if the Examiner had failed to
make a prima facie case, it has long been the Board’s practice to require an
appellant to identify the alleged error in the examiner’s rejection); In re
Chapman, 595 F.3d 1330, 1338 (Fed. Cir. 2010) (“[T]he burden of showing
that the error is harmful normally falls upon the party attacking the agency’s
determination.” (quoting Shinseki v. Sanders, 556 U.S. 396, 409 (2009))).
On this record, we are not persuaded that the Examiner erred
reversibly in rejecting all claims as obvious in light of the teachings of the
cited prior art for reasons expressed by the Examiner in the Final Office
Action and the Answer. We add the following.
Classen discloses a dishwashing method in a dishwasher with a
plurality of filters, e.g., coarse filter 27, fine filter 26, and auxiliary filter 25,
of diminishing coarseness to remove debris from recirculating washing fluid.
Classen 112, 22-24, Fig. 1. Classen sets forth exemplary filtering effects of
coarser and finer filters as retaining particles of greater than 1 and 0.15 mm,
respectively. Classen 2, 23. The Examiner finds that Classen discloses,
inter alia, filtering of wash liquid through a coarse/fme filter to remove
larger particles followed by filtering of at least a portion of the filtered wash
liquid through an auxiliary filter 25 to remove smaller particles. Ans. 2
6 We refer to the Specification filed February 20, 2011, the Final Office
Action mailed June 20, 2014, the Appeal Brief filed January 8, 2015, the
Examiner’s Answer mailed May 21, 2015, and the Reply Brief filed July 17,
2015.
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Application 13/164,298
(citing Classen 2, 22-24). The Examiner determines the filtering to
remove debris larger than 1 mm in size, for example, to be analogous to the
recited microfiltering and that to remove the debris larger than 0.15 mm in
size, for example, to be analogous to ultrafiltering. Ans. 2.
The Examiner concedes that “Classen does not explicitly disclose that
the microfilter forms a liquid comprising only particles 150 microns or
smaller and that the ultrafilter forms a liquid comprising only particles of 40
microns or smaller.” Ans. 3. The Examiner relies on Thies—also relating to
the filtering of washing fluid—for its disclosure of filter “screen mesh of
between 0.0049" to 0.0106" and that ‘[depending on the media desired to
be filtered, a larger or smaller mesh filter may be used.’” Ans. 3 (citing
Thies col. 3,11. 25-32). Based on the teaching that larger or smaller mesh
filters may be used depending on what is to be filtered, the Examiner
concludes it would have been obvious to one of ordinary skill at the time of
the invention to have modified the screen size of the filters through routine
experimentation. Ans. 3. The Examiner de facto finds that screen size of
filters was recognized as a result effective variable for the removal of
particles as a function of their size and concludes that the skilled artisan
would have arrived at the claimed invention through no more than routine
experimentation.7 The Examiner finds the burden shifted to Appellants to
rebut the prima facie case. Ans. 9.
Appellants contend that the Examiner (i) has erred in regard to what is
taught by the prior art, (ii) has relied on impermissible hindsight in
7 In the event of further prosecution, Appellants and the Examiner may also
wish to consider Classen’s disclosure as to the fineness of particles that
remain in the filtered washing solution and removal of particles “to prevent
back contamination.” Classen 7-8.
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combining the teachings of Classen and Thies, and (iii) that the combination,
even if made, fails to provide the claimed invention.
Regarding what is taught, Appellants argue that the Classen does not
teach ultrafiltering, particularly to provide an ultrafiltered wash liquid
comprising only particles 40 microns or smaller, and that the Examiner erred
in citing Classen as teaching both microfiltering and ultrafiltering. Appeal
Br. 13-14. In particular, Appellants contend the Examiner erred in
characterizing the disclosed filtering through the auxiliary filter as
ultrafiltering. Appeal Br. 13-14 (citing Final Act. 3). Appellants argue that
having so erred in determining what is taught by the prior art, the Examiner
has failed to meet the burden of establishing a prima facie case of
obviousness. Appeal Br. 14.
Appellants further contend that the term “ultrafiltering” is clearly
defined in the Specification and that the meaning of this term is eviscerated
when Classen or Thies are found to teach or suggest ultrafiltering. Reply Br.
3 (citing Spec. ^ 23).
On this record, we are unpersuaded that the Examiner erred in
determining the content of the prior art where it is not disputed that Classen
teaches filtering through first a coarser filter, e.g., 27 and/or 26, and then a
finer filter, i.e., the auxiliary filter 25 (Appeal Br. 11), and the Examiner
does not rely on the screen size of the particular filters exemplified in
Classen or Thies (Ans. 2-3, 6-7). Appellants’ argument grounded on the
failure of the cited prior art to use the term “ultrafiltering” is without
persuasive merit because it would exalt form over substance. Cf. In re
Schaumann, 572 F. 312, (CCPA 1978) (“[Although appellants would have
us hold that Hildebrandt fails as an anticipation because it does not contain a
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description of the subject matter of the appealed claims, ipsissimis verbis,
we cannot countenance a result which so obviously exalts form over
substance.”).
Further, contrary to Appellants’ contention that the Specification
provides a clear definition for ultrafiltering that is contrary to how it is used
by the Examiner, we find the proper interpretation encompasses the
Examiner’s use of the term. Turning to the Specification, 23 states that
“[t]he term ‘ultrafiltering’ as used herein refers to removing grit particles
from the microfiltered wash liquid” and, while further describing what it
may refer to, Appellants have not directed us to any basis for requiring the
narrow interpretation on which their arguments rely. See, e.g., In re ICON
Health & Fitness, Inc., 496 F.3d 1374, 1379 (Fed. Cir. 2007) (It is well
established that “the PTO must give claims their broadest interpretation
consistent with the specification.”).
Regarding the contention of impermissible hindsight, Appellants
argue that the Examiner has failed to articulate any reasoning supported by
facts drawn from the references for making the combination. Appeal Br.
14-15. On this basis, Appellants contend the Examiner’s statements are
merely conclusory statements. Appeal Br. 15.
Appellants’ argument is unpersuasive of error, particularly as to the
contention that the motivation must be found in the cited prior art itself. See,
e.g., Perfect Web v. InfoUSA, Inc., 587 F.3d 1324, 1329 (Fed. Cir. 2009)
(“[T]he use of common sense [to support the combination of references]
does not require a ‘specific hint or suggestion in a particular reference,’ only
a reasoned explanation that avoids conclusory generalizations.” (citing
DyStar Textilfarben GmbHv. C.H. Patrick Co., 464 F.3d 1356, 1366 (Fed.
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Cir. 2006)). On this record, it is manifest that common sense supports the
combination for the purpose of optimizing the screen size of the filters and
that the Examiner did not err reversibly in articulating the motivation for the
combination.8 Not being persuaded the Examiner erred in combining
Classen and Thies, the contention that the Examiner relied on impermissible
hindsight is unfounded. See In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)
(requiring “some articulated reasoning with some rational underpinning to
support the legal conclusion of obviousness”) (cited with approval in KSR
Int'l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007)).
Regarding the combination not providing the claimed invention,
Appellants proffer arguments directed both to the particular filters
specifically disclosed in Classen and Thies, including the contention that the
combination teaches away (Appeal Br. 16), and to the Examiner’s rationale
grounded on optimization of pore size being no more than routine
experimentation of a result effective variable (Appeal Br. 17; Reply Br. 2).
Appellants’ argument grounded on the specific filters disclosed in
Classen and Thies is not persuasive of reversible error as it fails to address
the rejection as set forth by the Examiner grounded on optimization of a
recognized result effective variable of filter mesh size. As to the related
contention that the references teach away from the claimed invention,
nothing cited by Appellants reasonably leads the skilled artisan away from
the invention. DyStar Textilfarben, 464 F.3d at 1364 (“We will not read into
8 We note that, in In re Chaganti, the Federal Circuit held the Board did not
err in relying on common sense to support the combination, even where it
was not explicitly identified as such in the Board’s decision and also that
Chaganti is non-precedential. In re Chaganti, 554 Fed. Appx. 917, 922
(Fed. Cir. 2014).
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Application 13/164,298
a reference a teaching away from a process where no such language
exists.”).
Appellants’ argument as to the actual ground of rejection, i.e.,
optimization of a result effective variable, is grounded on the contention that
Classen fails to recognize any result effective variable concerned with the
desired result of “facilitating removal of grit debris from the wash liquid so
that it will not be re-deposited on the utensils during one or more cycles.”
Appeal Br. 17. Appellants argue that “[bjecause the reference cited by the
Examiner does not recognize the problem ... or that the variable is a result-
effective variable, the microfiltering of the wash liquid and ultrafiltering of
at least a portion of the microfiltered wash liquid cannot be merely the result
of routine optimization.” Appeal Br. 17 (emphasis added).
Appellants’ argument is wholly without merit as it fails to address the
explicit teaching in Thies relied on by the Examiner “that the filter mesh size
is a result-effective variable that can be optimized both within prior art
conditions and through routine experimentation.” Ans. 6-7; see also Final
Act. 3, 5-7 (citing Thies col. 3,11. 25-32). While Appellants address Thies
in the Reply Brief, Appellants fail to explain why the Examiner’s reliance
for mesh size being a result effective variable was not addressed in the
Appeal Brief and we deem the argument waived. 37 C.F.R. § 41.41(b)(2).
Further, we discern no sound basis for Appellants’ contention that removal
of grit from the washing liquid was not a recognized result of the variable of
pore size where it is manifest that the size of particles removed is dependent
on the mesh size of filters. See, e.g., Ans. 2 (citing Classen ^ 22-24).
For these reasons, we are not persuaded that the Examiner erred in
determining that one of ordinary skill in the art, armed with the cited
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references at the time of the invention, would have been led to the subject
matter of claim 1. We sustain, accordingly, the obviousness rejection of
claims 1—4, 7-9, 11, and 12 over Classen in view of Thies.
As to the remaining claims on appeal—claims 5, 6, and 10—we
likewise are not persuaded that the Examiner erred reversibly in rejecting the
claims for obviousness where Appellants rely on their arguments as to claim
1 and sustain the further rejections of these claims. Appeal Br. 18-20.
CONCLUSION
The Examiner’s rejections of claims 1-12 under 35 U.S.C. § 103 is
AFFIRMED.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1).
AFFIRMED
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