Ex Parte Gammack et al

Patent Trial and Appeal Board

Nov 27, 2017

13314974 (P.T.A.B. Nov. 27, 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.
13/314,974 12/08/2011 Peter David GAMMACK 424662032801 9386
25227 7590 11/29/2017
MORRTSON fr FOFRSTFR T T P
EXAMINER
1650 TYSONS BOULEVARD YOUNGER, SEAN JERRARD
SUITE 400
MCLEAN, VA 22102 ART UNIT PAPER NUMBER
3745
NOTIFICATION DATE DELIVERY MODE
11/29/2017 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):
EOfficeVA @ mofo.com
PatentDocket @ mofo. com
pair_mofo @ firsttofile. 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
Appeal 2016-005267
Application 13/314,9741
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”)2 seek review under
35 U.S.C. § 134(a) of the Examiner’s decision, as set forth in the Final
Office Action dated October 23, 2014 (“Final Act.”), rejecting claims 1-30.
We have jurisdiction under 35 U.S.C. § 6(b).
We affirm in part.
1 Appellants identified several related applications, in some of which
the Board has rendered decisions on appeal. Appeal Br. 2. We have
reviewed those decisions, and to the extent relevant to the issues in the
present appeal, we have taken them into account in our review.
2 Appellants identify Dyson Technology Limited as the real party in
interest. Appeal Br. 2.
Appeal 2016-005267
Application 13/314,974
BACKGROUND
The disclosed subject matter “relates to a fan assembly.” Spec. 1,1. 9.
Claims 1 and 18 are independent. Claim 1 is reproduced below, reformatted
from the version provided by Appellants:
1. A fan assembly for creating an air current, the
fan assembly comprising
an annular 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,
and interlocking members for retaining the
body on the base,
wherein the interlocking members are
enclosed by the outer surfaces of the base and the
body when the body is in the untilted position, and
comprise a first plurality of parallel elongate guide
rails having a first plurality of elongate flanges
connected to the base, and a second plurality of
parallel elongate guide rails having a second
plurality of elongate flanges connected to the body,
and
wherein in the untilted position each of the
guide rails extends in a direction substantially
parallel to a central axis of the annular outlet.
REJECTIONS
1. Claims 18-30 stand rejected under 35 U.S.C. § 112, second
paragraph, as failing to particularly point out and distinctly claim the subject
matter regarded as the invention.
2. Claims 1-15 and 18-29 stand rejected under 35 U.S.C. § 103(a)
as unpatentable over De Lisio (US 2,488,467, issued Nov. 15, 1949) and
Cornwell (US 4,533,105, issued Aug. 6, 1985).
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Application 13/314,974
3. Claim 16 stands rejected under 35 U.S.C. § 103(a) as
unpatentable over De Lisio, Cornwell, and Shin-Chin (US 4,732,539, issued
Mar. 22, 1988).
4. Claims 17 and 30 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over De Lisio, Cornwell, and Wang (US 5,518,370, issued May
21, 1996).
DISCUSSION
Rejection 1 — The rejection of claims 18—30 under
35 U.S.C. § 112, second paragraph
The Examiner rejected independent claim 18, stating that the phrase
“the annular outlet” lacks antecedent basis. Final Act. 3. The Examiner
rejected claims 19-30 based on their dependence from claim 18. Id.
Appellants do not present any arguments addressing this Rejection.
See Appeal Br. 3-14; Reply Br. 2-12. Thus, we summarily affirm. See
37 C.F.R. § 41.31(c) (2014) (“An appeal, when taken, is presumed to be
taken from the rejection of all claims under rejection unless cancelled by an
amendment filed by the applicant and entered by the Office.”).
Rejection 2 — The rejection of claims 1—15
and 18—29 under 35 U.S.C. § 103(a)
For claims 1 and 18, the Examiner found that “De Fisio discloses a
fan assembly for creating an air current, comprising an annular air outlet (13,
14, 15) mounted on a stand comprising a base (11) and a body (10)” but
stated that De Fisio “does not disclose that the body is tiltable relative to the
base with interlocking members for retaining the body on the base.” Final
Act. 3; see also, e.g., De Fisio Fig. 1. The Examiner found, however, that
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Application 13/314,974
“Cornwell teaches an assembly for mounting a tiltable body (14) on a
stationary base (10) having curved interlocking members (24, 26, 28, 44, 60,
62) for retaining the body on the base.” Final Act. 3—4; see also, e.g.,
Cornwell Figs. 1—4. According to the Examiner, it would have been obvious
for one of ordinary skill in the art at the time of the invention
to modify the fan assembly of De Lisio by including an
adjustable tilting mechanism, as taught by Cornwell, in order to
allow for an output in various directions, selectable by a user, and
since it has been held that addition of adjustability to a known
device involves only routine skill in the art.
Final Act. 4 (citing In re Stevens, 212 F.2d 197 (CCPA 1954)).
Appellants argue that the “modification as proposed by the Examiner
would render the fan of De Lisio either inoperable or unsuitable for its
intended purpose.” Appeal Br. 7-8.3 Appellants provide two sets of
arguments: first, addressing the possibility of the inlet of De Lisio remaining
at the bottom of base member 10 (see, e.g., De Lisio 1:21-22) in the
modified device (the “first possible configuration”) and second, addressing
the possibility of “replacing the air inlet in the bottom wall of the De Lisio
fan with holes in the side wall” of base member 10 of De Lisio (Appeal Br.
9) (the “second possible configuration”).
As to the first possible configuration, Appellants argue that
[t]o replace legs 11 [of De Lisio] with support base 10 of the
monitor of Cornwell would result in the opening in the bottom of
base member 10 of De Lisio being totally obscured by body
portion 10, 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 support base 10 of Cornwell.
3 Appellants address the rejection of independent claim 1, and rely on
the same arguments for independent claim 18. See Appeal Br. 4, 7-12.
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Appeal 2016-005267
Application 13/314,974
Id. at 8-9. Appellants also argue that “as base member 10 of De Lisio tilts
relative to support base 10 of Cornwell, the alignment of the opening in base
member 10 relative to support base 10 would change, resulting in a variation
in the flow rate of air through the opening.” Id. at 9. According to
Appellants, such “tilting movement would lead to a variation in the flow rate
of the air flow generated by the fan . . ., which would render the fan of De
Lisio either inoperable or unsuitable for its intended purpose.” Id.
As to the second possible configuration, 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” because “two air streams passing in
opposite directions within the base of the fan” “would merge into a swirling,
turbulent air flow within the base of the fan.” Appeal Br. 9. 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. at 10.
“In rejecting claims under 35 U.S.C. § 103, the examiner bears the
initial burden of presenting a prima facie case of obviousness. Only if that
burden is met, does the burden of coming forward with evidence or
argument shift to the applicant.” In re Rijckaert, 9F.3dl531, 1532 (Fed.
Cir. 1993) (citing In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992)). For
the reasons below, we determine that the Examiner has not provided
sufficient explanation regarding the air inlet of the modified device to
present a prima facie case of obviousness as to claims 1 and 18.
In the Final Office Action, the Examiner does not address the location
of the inlet in the modified device. See Final Act. 4. Moreover, in response
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Application 13/314,974
to the two possible configurations identified by Appellants in the Appeal
Brief, the Examiner (in the Answer) does not clarify which of those two
configurations would be present in the modified device (or identify some
other configuration that would be present). See Ans. 5-9.
Instead, as to the first possible configuration, the Examiner responds
that “the test for obviousness is not whether the features of a secondary
reference may be bodily incorporated into the structure of the primary
reference” and that “[i]n this case, Cornwell teaches the concept of a stand
with a supportive body tiltable relative to a base, which is readily applied to
other stands supporting other devices.” Ans. 5. This response does not
clarify the configuration of the air inlet in the modified device and also does
not adequately address the issues raised by Appellants. See Appeal Br. 8-9;
Reply Br. 4 (“The Examiner has not refuted the fact that the proposed
combination would obscure the air inlet of De Lisio’s fan.”).
As to the second possible configuration, the Examiner responds that
Appellants “appear[] to admit that the person o[f] ordinary skill would be
able to figure out how to solve the ‘covered inlet’ problem.” Ans. 7
(discussing Appeal Br. 9-10). We disagree that Appellants admitted that
one of ordinary skill in the art would have further modified the device of
De Lisio in view of Cornwell as proposed by the Examiner (Final Act. 3-4)
so as to locate the inlet of De Lisio on the side walls of base member 10.
Instead, we agree with Appellants that the discussion at issue involved a
“hypothetical configuration” to “demonstrate[] some of the problems one of
ordinary skill in the art would encounter if the fan of De Lisio . . . was
modified to allow air to enter the fan in a radial direction,” as present in the
second possible configuration. Reply Br. 4 (emphasis added). In other
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Application 13/314,974
words, in the relevant discussion, Appellants address what one of ordinary
skill in the art would have done assuming that the second possible
configuration was already present. See Appeal Br. 9-11.
The Examiner has not demonstrated, however, that it would have been
obvious for one of ordinary skill in the art to further modify the device of
De Lisio in view of Cornwell to arrive at the second possible configuration.
See Final Act. 3-4. First, as noted by Appellants, “[njeither De Fisio nor
Cornwell disclose or suggest relocating an air inlet away from the base of
the fan, much less replacing the air inlet in the bottom wall of the De Fisio
fan with holes in the side wall.” Reply Br. 4. Second, the Examiner has not
provided any “reasoning with some rational underpinning” to support the
further modification required to arrive at the second configuration. See In re
Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006), cited with approval in KSR Int’l
Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007).
For these reasons, we do not sustain the rejection of independent
claims 1 and 18, and also do not sustain the rejection of claims 2-14 (which
depend from claim 1) and claims 19-29 (which depend from claim 18).
Rejection 3 — The rejection of claim
16 under 35 U.S.C. § 103(a)
Claim 16 depends from claim 1. Appeal Br. 16 (Claims App.). The
Examiner’s added reliance on Shin-Chin does not remedy the deficiencies in
the rejection based on De Fisio and Cornwell, discussed above, regarding
claim 1 (see supra Rejection 2). Thus, for the same reasons discussed
above, we do not sustain the rejection of claim 16.
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Application 13/314,974
Rejection 4 — The rejection of claims
17 and 30 under 35 U.S.C. § 103(a)
Claim 17 depends from claim 1, and claim 30 depends from claim 18.
Appeal Br. 16, 18 (Claims App.). The Examiner’s added reliance on Wang
does not remedy the deficiencies in the rejection based on De Lisio and
Cornwell, discussed above, regarding claims 1 and 18 (see supra Rejection
2). Thus, for the same reasons discussed above, we do not sustain the
rejection of claims 17 and 30.
DECISION
We affirm the decision to reject claims 18-30 under 35 U.S.C. § 112,
second paragraph, and we reverse the decision to reject claims 1-30 under
35 U.S.C. § 103(a).4
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). See 37 C.F.R.
§ 1.136(a)(l)(iv).
AFFlRMED-fN-PART
4 See 37 C.F.R. § 41.50(a)(1) (“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.”).
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