Ex Parte Gammack et alDownload PDFPatent Trial and Appeal BoardMay 6, 201612716749 (P.T.A.B. May. 6, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 121716,749 03/03/2010 25227 7590 05/10/2016 MORRISON & FOERSTER LLP 1650 TYSONS BOULEVARD SUITE400 MCLEAN, VA 22102 FIRST NAMED INVENTOR Peter David Gammack 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 ATTORNEY DOCKET NO. CONFIRMATION NO. 424662032800 1325 EXAMINER YOUNGER, SEAN JERRARD ART UNIT PAPER NUMBER 3745 NOTIFICATION DATE DELIVERY MODE 05/10/2016 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): EOfficeVA@mofo.com PatentDocket@mofo.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte PETER DAVID GAMMACK, JAMES DYSON, and ALEXANDER STUART KNOX Appeal2014-002946 Application 12/716,749 1 Technology Center 3700 Before EDWARD A. BROWN, ANNETTE R. REIMERS, and ERIC C. JESCHKE, Administrative Patent Judges. JESCHKE, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Peter David Gammack et al. (Appellants) seek review, under 35 U.S.C. § 134(a), of the Examiner's decision to reject claims 1, 6, 8, 12, 13, 16, 28-30, and 37--42. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM-IN-PART. 1 According to Appellants, Dyson Technology Limited is the real party in interest. Appeal Br. 2. Appeal2014-002946 Application 12/716,749 BACKGROUND The disclosed subject matter "relates to a domestic fan, such as a desk fan, for creating air circulation and air current in a room, in an office or other domestic environment." Spec. 1, 11. 9-10. Claim 1, the sole independent claim, is reproduced below: 1. A fan assembly for creating an air current, the fan assembly comprising: an air outlet mounted on a stand comprising a base and a body tiltable relative to the base from an untilted position to a tilted position, each of the base and the body having an outer surface shaped so that adjoining portions of the outer surfaces are substantially flush when the body is in the untilted position, and wherein the stand comprises a device for creating an air flow through the fan assembly, the device for creating an air flow through the fan assembly being located within the body of the stand and comprising an impeller and a motor for rotating the impeller, and wherein the air outlet comprises a nozzle mounted on the body of the stand, the nozzle comprising a mouth for emitting the air flow, the nozzle extending about an opening through which air from outside the nozzle is drawn by the air flow emitted from the mouth. REJECTIONS ON APPEAL 1. Claims 1, 6, 8, 12, 13, 28, 29, and 38--42 are rejected under 35 U.S.C. § 102(b) as anticipated by Wang (US 5,518,370, issued May 21, 1996). 2 Appeal2014-002946 Application 12/716,749 2. Claim 16 is rejected under 35 U.S.C. § 103(a) as unpatentable over Wang and Shin-Chin '539 (US 4,732,539, issued Mar. 22, 1988). 3. Claim 30 is rejected under 35 U.S.C. § 103(a) as unpatentable over Wang and Shin-Chin '152 (US 4,703,152, issued Oct. 27, 1987). 4. Claim 1 is rejected under 35 U.S.C. § 103(a) as unpatentable over De Lisio (US 2,488,467, issued Nov. 15, 1949) and Hsu (US 6,155,782, issued Dec. 5, 2000). 5. Claim 37 is rejected under 35 U.S.C. § 103(a) as unpatentable over De Lisio, Hsu, and Mocarski (US 3,795,367, issued Mar. 5, 1974). DISCUSSION Rejection 1- The rejection of claims 1, 6, 8, 12, 13, 28, 29, and 38--42 under 35 U.S.C. § 102(b) Independent claim 1 recites "the nozzle extending about an opening through which air from outside the nozzle is drawn." Appeal Br. 15 (Claims App.) (emphasis added). In rejecting claim 1 as anticipated by Wang, the Examiner addressed this limitation by stating, "[t ]he nozzle comprises a mouth (21) for emitting the air flow, and extending about an opening (30) through which air from the outside is drawn." Final Act. 9 (dated Jan. 7, 2013) (citing Wang, col. 4, 11. 17-20). The Examiner also provided the following annotated versions of portions of Figures 4 and 6 from Wang: 3 Appeal2014-002946 Application 12/716,749 ~ .......... ·,· ..... "" .... f ~t.... . ............ , .......... . Id. at 4, 5. Figure 4 (prior to annotation) depicts "a rear view of the fan shown in FIG. 1" whereas Figure 6 (prior to annotation) depicts "a partial sectional view of the fan shown in FIG. 1 with a fan housing portion in a different operating position." Wang, col. 2, 11. 24, 27-28. Appellants argue that "[ o ]utlet grill 22 does not extend about vent openings 30 because the outlet grill 22 and vent openings 30 are spaced apart from each other" and that "[ v Jent openings 30 do not cross any plane of outlet grill 22 and thus outlet grill 22 cannot be reasonably considered to extend about vent openings 30." Appeal Br. 5; see also Wang, Fig. 2 (showing outlet opening 21 and outlet grill 22). The Examiner responds that "the definition of 'about' does not imply an interaction of planes" and that Appellants do not "apply a special definition of 'about' to the parts of the device in the [S]pecification." Ans. 9. Relying on the Merriam-Webster English Dictionary, the Examiner states that "the definition [of 'about'] includes 'in the vicinity; near' where none of the definitions espouse a definition where an object extending 'about' another object must be in the same plane." Id. 4 Appeal2014-002946 Application 12/716,749 On the record here, we determine that the Examiner has applied an unreasonably broad construction of "extending about" when considering that claim language in light of the Specification. See In re Bond, 910 F .2d 831, 833 (Fed. Cir. 1990). Specifically, construing "extending about" as extending "in the vicinity" of or "near," based solely on extrinsic evidence, results in a construction that, at its broadest, is inconsistent with the Specification. See Reply Br. 3 (arguing that "the definition applied by the Examiner is ... inconsistent with Appellants' [S]pecification" and, relying on MPEP § 2111. 01 (III), stating that "if extrinsic reference sources such as dictionaries evidence more than one definition for the term, the intrinsic record must be consulted to identify which of the different possible definitions is most consistent with applicant's use of the terms"). Here, the remaining language of claim 1 does not appear to provide significant guidance as to the meaning of "extending about." The written description provides guidance, however, showing that "extending about" includes, but is not necessarily limited to, surrounding. See Spec. 7, 11. 1--4 ( discussing "the nozzle extending about an opening" and disclosing that, "[p ]referably, the nozzle surrounds the opening"); see also, e.g., Fig. 2 (showing nozzle 14 and opening 24). As to extrinsic evidence, in addition to the definition from the Examiner, "about" can also be defined as "[ o Jn all sides of; surrounding." See The American Heritage® Dictionary of the English Language (2011 ), http://literati.credoreference.com/content/ entry/hmdictenglang/about (Definition 1 (preposition)) (last visited Apr. 27, 2016). Considering the evidence as a whole, we construe "extending about" as requiring the nozzle to extend around at least some portion of-but not necessarily entirely surround-the opening. 5 Appeal2014-002946 Application 12/716,749 Under this construction, the structures identified in Wang do not satisfy the limitation at issue. The fact that the outer perimeter of the identified "nozzle" may, if extended axially, encompass the identified "opening" does not necessarily meet this construction.2 See Final Act. 4, 5. Here, given the axial displacement, the identified "nozzle" does not "extend[] about" at least some portion of the identified "opening." Thus, we do not sustain the rejection of claim 1, nor the rejection of claims 6, 8, 12, 13, 28, 29, and 38--42, which depend from claim 1. Rejections 2 and 3 - The rejections of claims 16 and 30 under 35 U.S.C. § 103(a) Claims 16 and 30 depend from claim 1. Appeal Br. 15, 16 (Claims App.). The Examiner's reliance on Shin-Chin '539 (Rejection 2) and Shin- Chin '152 (Rejection 3) does not remedy the deficiencies in the teachings of Wang, discussed above (see supra Rejection 1). Thus, for the same reasons discussed above, we do not sustain the rejections of claims 16 and 30. Rejection 4 - The rejection of claim 1 under 35 U.S.C. § 103(a) In rejecting claim 1 based on De Lisio and Hsu, the Examiner relied on De Lisio for many of the recited limitations, but stated that "De Lisio does not disclose that the base and body are tiltable relative to each other." Final Act. 12. The Examiner found, however, that Hsu teaches "a fan assembly and a stand for a fan assembly comprising an air outlet mounted on a stand comprising a base (10) and a body (21) tiltable relative to the base 2 By the "outer perimeter," we refer to the added circumferential line identified as "Nozzle" in the annotated version of Figure 4 of Wang. See Final Act. 4. 6 Appeal2014-002946 Application 12/716,749 from an untilted position (see figure 6) to a tilted position (see figures 3A, 3B)." Id. The Examiner concluded that it would have been obvious Id. to modify the fan assembly of De Lisio by making the body tiltable relative to the base and, including a flush-surface profile in the untilted state, as taught by Hsu, in order to provide an adjustable fan which conforms to a flush profile when untilted, since the configuration was known in the art and could have been implemented by one of ordinary skill with predictable results. First, Appellants argue that the reasoning statement quoted above "is incorrect" because "[t]he configuration of providing an adjustable fan that has an air outlet and stand as defined in claim 1 was not known in the art." Appeal Br. 10. According to Appellants, "Hsu does not provide any indication as to how to provide a body tiltable relative to a base of a fan within the definition of claim 1." Id. We are not apprised of error because the "configuration" stated as "known in the art" by the Examiner (Final Act. 12) refers not to the configuration recited in claim 1, but rather to the configuration in Hsu. Thus, as noted by the Examiner (Ans. 10), this argument attacks Hsu individually. See In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986) ("Non-obviousness cannot be established by attacking references individually where the rejection is based upon the teachings of a combination of references."). Second, Appellants contend that "body portion 10 of the portable fan of Hsu is not designed to be located on a surface to bear the weight of the other components of a heavy table fan such as the fan of De Lisio" and that "[t]he pivotal feature of the portable fan of Hsu is simply incompatible with 7 Appeal2014-002946 Application 12/716,749 the non-pivotable table fan of De Lisio." Appeal Br. 10; see also Reply Br. 6 (arguing that "the adjustable parts of Hsu do not have air passing through them, whereas the construction of the De Lisio fan means that they would"). The Examiner states that "De Lisio discloses exactly a fan within the definition of claim 1" and that "Hsu teaches that fans, in general, can be made adjustable by tilting." Ans. 10. We are not apprised of error based on the identified differences in the relied-upon prior art because Appellants have not persuasively shown that these differences undermine the factual findings or reasoning relied on to support the conclusion of obviousness. See Final Act. 11-12; Ans. 10-11; see also KSR Int 'l Co. v. Teleflex Inc., 550 U.S. 398, 420 (2007) ("[F]amiliar items may have obvious uses beyond their primary purposes, and in many cases a person of ordinary skill will be able to fit the teachings of multiple patents together like pieces of a puzzle."). Appellants have also not persuasively shown that a person of ordinary skill in the art would not be able to overcome these differences within their level of skill. See KSR, 550 U.S. at 418; see also id. at 421 ("A person of ordinary skill is also a person of ordinary creativity, not an automaton."). Third, Appellants argue that "the modification proposed by the Examiner would render the fan of De Lisio either inoperable or unsuitable for its intended purpose" because "[t]o replace legs 11 [of De Lisio] with body portion 10 of the fan of Hsu would result in the opening in the bottom of base member 10 of De Lisio being totally obscured by body portion 1 O" of Hsu and thereby "restricting severely, if not totally, the flow of air into base member 10 of De Lisio when base member 10 of De Lisio is in an untilted position relative to body portion 10 of Hsu." Appeal Br 10-11. 8 Appeal2014-002946 Application 12/716,749 According to Appellants, "as base member 10 of De Lisio tilts relative to body portion 10 of Hsu, the alignment of the opening in base member 10 [of De Lisio] relative to body portion 10 [of Hsu] would change, resulting in a variation in the flow rate of air through the opening." Id. at 11. We are not apprised of error based on Appellants' third set of arguments. As an initial matter, Appellants do not address the rejection as articulated, which does not involve replacing legs 11 of De Lisio with body portion 10 of Hsu. See Final Act. 12. Further, we agree with the Examiner that if the proposed modification did adversely affect the air intake, relocation of the inlets of De Lisio without changing their function would have been obvious on the record here. See Final Act. 8 (i-f l 0), Ans. 11 (i-f 21) (citing In reJapiske, 181F.2d1019(CCPA1950)). Despite contending that this is based on "impermissible hindsight reconstruction" (Reply Br. 7), Appellants do not (for reasons discussed below) persuasively address the reasoning. Fourth, Appellants argue that "relocating the inlets in De Lisio-----e.g., replacing the air inlet in the bottom wall of the De Lisio fan with holes in the side wall-would significantly alter the air flow through the base." Appeal Br. 11 (addressing Final Act. 8 (i-f l 0) ). According to Appellants, such a modification would result in "two air streams passing in opposite directions" that would "merge into a swirling, turbulent air flow within the base of the fan." Id. at 12 (providing an annotated version of a portion of De Lisio, Fig. 1 ). Appellants contend that "[t]his turbulence would effectively choke the fan, significantly reducing the air flow emitted from the fan, and generate noise within the base of the fan." Id. Appellants also argue that, "to ensure that these two air streams remained isolated," one of ordinary skill in the art 9 Appeal2014-002946 Application 12/716,749 would have added "both an annular wall within the base of the fan so that the two air streams passed along opposite sides of the wall and an annular seal between the wall and the impeller." Id.; see also id. at 13 (providing another annotated version of a portion of De Lisio, Fig. 1 ). Appellants allege that this, in tum, would lead to two further issues----(1) noise and (2) wear of the seal-and that "[s]olving these problems requires a complete re- design of the base of the fan of De Lisio." Id. at 13. We are not apprised of error based on these arguments because Appellants have not identified record evidence supporting either (1) the technical issues that would have allegedly arisen based on the proposed relocation of the inlets or (2) the steps a person of ordinary skill in the art would have taken to address such issues, had they arisen. See In re Pearson, 494 F.2d 1399, 1405 (CCPA 1974) ("Attorney's argument in a brief cannot take the place of evidence."). For these reasons, we sustain the decision to reject claim 1 as unpatentable over De Lisio and Hsu. Rejection 5-The rejection of claim 37 under 35 U.S.C. § 103(a) Appellants do not separately argue claim 37 (Appeal Br. 13-14), which depends from claim 1. Thus, for the reasons discussed above (see supra Rejection 4), we sustain the rejection of claim 37. DECISION We (1) REVERSE the decision to reject claims 1, 6, 8, 12, 13, 28, 29, and 38--42 as anticipated by Wang, (2) REVERSE the decision to reject claim 16 as unpatentable over Wang and Shin-Chin '539, (3) REVERSE the decision to reject claim 30 as unpatentable over Wang and Shin-Chin' 152, 10 Appeal2014-002946 Application 12/716,749 ( 4) AFFIRM the decision to reject claim 1 as unpatentable over De Lisio and Hsu, and (5) AFFIRM the decision to reject claim 37 as unpatentable over De Lisio, Hsu, and Mocarski. 3 No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv). AFFIRMED-IN-PART 3 See 37 C.F.R. § 41.50(a)(l) ("The affirmance of the rejection of a claim on any of the grounds specified constitutes a general affirmance of the decision of the examiner on that claim, except as to any ground specifically reversed."). 11 Copy with citationCopy as parenthetical citation