Ex Parte Lim et al

Patent Trials and Appeals Board

May 30, 2019

14420771 - (D) (P.T.A.B. May. 30, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
14/420,771 02/10/2015 Gary Chi Yang Lim
24737 7590 06/03/2019
PHILIPS INTELLECTUAL PROPERTY & STANDARDS
465 Columbus A venue
Suite 340
Valhalla, NY 10595
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.
2011P02395WOUS 2167
EXAMINER
AYALEW, TINSAEB
ART UNIT PAPER NUMBER
1711
NOTIFICATION DATE DELIVERY MODE
06/03/2019 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):
patti. demichele@Philips.com
marianne.fox@philips.com
katelyn.mulroy@philips.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte GARY CHI YANG LIM,
BERKA Y BIRCAN, and BERND LAUDAHN
Appeal2018-003867
Application 14/420,771
Technology Center 1700
Before MICHAEL P. COLAIANNI, GEORGE C. BEST, and
N. WHITNEY WILSON, Administrative Patent Judges.
BEST, Administrative Patent Judge.
DECISION ON APPEAL
The Examiner rejected claims 1-17 of Application 14/420,771 under
35 U.S.C. § 103(a) as obvious. Final Act. (April 21, 2017). Pursuant to
35 U.S.C. § 134(a), Appellants 1 seek reversal of these rejections. We have
jurisdiction under 35 U.S.C. § 6(b).
For the reasons set forth below, we affirm-in-part.
1 Koninklijke Philips N.V. is identified as the applicant and real party in
interest. Appeal Br. 3.
Appeal2018-003867
Application 14/420,771
BACKGROUND
The '771 Application describes an enclosure for treating a fabric
article with steam to de-wrinkle, clean, and/or refresh the fabric article.
Spec. 1:2--4. Claims 1, 13, and 14 are representative of the '771
Application's claims and are reproduced below from the Claims Appendix:
1. An enclosure for use with a steam generator having a
hand operated steam nozzle for manually treating a fabric article
with steam emitted from said nozzle, the enclosure comprising a
space to receive fabric articles to be treated, characterised in
that the enclosure further comprises a steam nozzle receptacle
configured to releasably receive said hand operated steam
nozzle such that steam is directed into the enclosure from said
steam nozzle for hands-free steaming of fabric articles in said
enclosure.
13. Apparatus for treating a fabric article with steam,
comprising a steam generator and an enclosure according to
claim 1, said steam generator having a steam hose and steam
nozzle suitable for hand operated manual steaming of fabric
articles, said steam nozzle being optionally connectable to the
nozzle receptacle of the enclosure for supplying steam to the
enclosure for hands-free steaming of fabric articles received in
said enclosure.
14. Apparatus for treating a fabric article with steam,
comprising an enclosure to receive fabric articles to be steamed
and a base unit having a steam generator and a steam outlet,
said steam outlet being disposed within the enclosure for
hands-free steaming of fabric articles received in the enclosure
characterised in that the steam outlet comprises connecting
means configured to enable a user to connect a steam nozzle to
the steam outlet for hand operated manual steaming of fabric
articles.
Appeal Br. 31, 33-34 (Claims App.) (emphasis added).
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Application 14/420,771
REJECTIONS
On appeal, the Examiner maintains the following rejections:
1. Claims 1-10 and 13-17 are rejected under 35 U.S.C. § I03(a) as
unpatentable over the combination of Waldron2 and Leung. 3
Final Act. 4; Answer 3.
2. Claims 11 and 12 are rejected under 35 U.S.C. § I03(a) as
unpatentable over the combination of Walton, Leung, and
Kleker. 4 Final Act. 6; Answer 6.
DISCUSSION
Though Appellants present arguments with respect to 12 separate
groups of claims (Appeal Br. 21-29), Appellants argue for the reversal of
the obviousness rejections of claims 2-12 and 15-17 on the basis of
limitations present only in independent claims 1, 13, and 14. Id. at 15-21.
Accordingly, we select claims 1, 13, and 14 as representative. Claims 2-12
and 15-17 will stand or fall with each of their respective independent claims.
37 C.F.R. § 4I.37(c)(l)(iv).
Rejection 1. Claims 1-10 and 13-17 are rejected under 35 U.S.C.
§ I03(a) as unpatentable over the combination of Waldron and Leung. Final
Act. 4; Answer 3.
Claims 1 and 13. In rejecting claims 1 and 13, the Examiner found
that Waldron's clothes freshening device 10 teaches or suggests the claimed
apparatus for treating a fabric article with steam, comprising a steam
2 US 2004/0163184 Al, published Aug. 26, 2004.
3 US 2008/0040953 Al, published Feb. 21, 2008.
4 US 2006/0101867 Al, published May 18, 2006.
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Application 14/420,771
generator and an enclosure, with the exception that Waldron "does not
explicitly teach that the steam nozzle is for manually treating a fabric
article." Answer 3 (citing Waldron Abstract; ,r,r 23, 25, 28; Figure 1).
Waldron's Figure 1, which illustrates a front schematic view of a
clothes freshening device, is reproduced below.
Figure 1 illustrates features of clothes freshening device 10, which includes
garment enclosure bag 12, steam delivery base unit 16, bag opening 42,
steam delivery tube 64, and intermediate pipe 7 4.
According to the Examiner, Waldron's intermediate pipe 74 meets the
"steam nozzle" limitation of claims 1 and 13. Answer 3. The Examiner
found that "it is readily apparent that the pipe 7 4 may be utilized to treat a
fabric article outside of the enclosure" because Waldron's "pipe 74 is
removable from the enclosure 12 and the steam generation system remains
capable of providing steam." Id. at 3--4.
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Application 14/420,771
The Examiner further found that Leung demonstrates that "it is well
known in the art that steam nozzles may be handheld." Answer 4 (citing
Leung Abstract; ,r,r 36, 37, 43, 50; Figure 6).
Leung's Figure 6, which illustrates a frontal three-quarters view of an
appliance for ironing and steaming clothing, is reproduced below.
Figure 6 illustrates features of ironing and steaming appliance 10, which
includes steaming wand 18, T-nozzle 96, hanger 16, and steam providing
hose 20.
The Examiner determined that because:
both Waldron[] and Leung teach clothes freshening devices that
utilize steam provided from a steam generating base, it would
have been obvious to one of ordinary skill in the art that the
steam pipe by Waldron[] may be configured to include a hose
and handle so as to allow the user the ability to direct the steam
as desired to any particular portion of a surface to be steamed as
shown to be known and conventional by Leung.
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Application 14/420,771
Answer 4.
Appellants argue that the rejection of claims 1 and 13 should be
reversed because, inter alia, one of ordinary skill in the art of steamer
appliances,
with a goal of converting Waldron from a hand[s]-free steamer
to a hybrid steamer in view of L[eu]ngl] would not [have]
alter[ed] the steam outlet 64/hole 42/pipe 74 embodiment of
Waldron by incorporating a steam nozzle receptacle for
releasably receiving a steam nozzle as encompassed by claims
1-10, 13[,] and 14--16 of[the '771 Application], but [would
have] instead incorporate[ d] an additional steam line as
suggested by L[eu]ng consisting of a hands operated hose
connected to the base unit 16 of Waldron and having a steam
nozzle on the other end thereof.
Appeal Br. 18.
To the extent Appellants argue that Waldron's bag steam delivery
tube 64, opening 42, and intermediate pipe 74 components would not have
taught or suggested the steam distribution component required by claims 1
and 13, Appellants' arguments are persuasive. In particular, the Examiner
has not adequately explained why the ordinary skilled artisan would have
considered Waldron's intermediate pipe 7 4 as teaching or suggesting a
"steam nozzle," as recited in these claims. See Answer 3.
During prosecution, the PTO gives the language of the proposed
claims "the broadest reasonable meaning of the words in their ordinary
usage as they would be understood by one of ordinary skill in the art, taking
into account whatever enlightenment by way of definitions or otherwise that
may be afforded by the written description contained in the applicant's
specification." In re Morris, 127 F.3d 1048, 1054--55 (Fed. Cir. 1997). "[A
claim] construction is unreasonable [when] it comports with neither the plain
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meaning of the term nor the specification." In re Imes, 778 F.3d 1250, 1254
(Fed. Cir. 2015).
We first consider the ordinary meaning of the claim term "nozzle" to a
person of ordinary skill in the art at the time of the invention. In particular,
we must consider whether such a person would have considered Waldron's
intermediate pipe 7 4 as a "nozzle." Our review of various dictionaries
demonstrates that the plain meaning of the claim term "nozzle" does not
encompass a non-tapered pipe. See, e.g., Merriam Webster's Dictionary
(May 14, 2019), https://www.merriam-webster.com/dictionary/nozzle
( defining nozzle as "a short tube with a taper or constriction used ( as on a
hose) to speed up or direct a flow of fluid" ( emphasis added)); Cambridge
Dictionary (May 14, 2019),
https://dictionary.cambridge.org/us/dictionary/english/nozzle (defining
nozzle as "a narrow piece attached to the end of a tube so that the liquid or
air that comes out can be directed in a particular way" ( emphasis added)).
The Specification, moreover, describes that "the steam emitting
portion 7 of the nozzle 5 has an outwardly tapered shape extending from the
substantially cylindrical handle portion 6." Spec. 7: 14--16 ( emphasis added);
see also id. at 9:15-16; Fig. lb.
Thus, we determine that the Examiner unreasonably construed the
term "nozzle" recited in claims 1 and 13 as encompassing Waldron's
intermediate pipe 7 4, which lacks tapered, constricted, or narrowing
features. See Waldron Fig. 1.
We, therefore, reverse Rejection 1 of claims 1-10, 13, 16, and 17.
37 C.F.R. § 4I.37(c)(l)(iv).
Claim 14. The Examiner's rejection of claim 14, however, is not
premised on a finding that Waldron's intermediate pipe 7 4 teaches or
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suggests the requisite "steam nozzle." Rather, the Examiner found that
Waldron's intermediate pipe 7 4 meets the "steam outlet" limitation recited
in claim 14. Answer 3. Accordingly, we tum next to whether Appellants'
arguments identify reversible error in the Examiner's conclusion that the
combination of Waldron and Leung renders claim 14 obvious.
In rejecting claim 14, the Examiner found that Waldron's clothes
freshening device 10 teaches or suggests the claimed apparatus for treating a
fabric article with steam, with the exception that Waldron "does not
explicitly teach that the steam nozzle is for manually treating a fabric
article." Id. ( citing Waldron Abstract; ,r,r 23, 25, 28; Figure 1 ). According
to the Examiner, Waldron's
enclosure 12 is made of a flexible construction, collapsible and
may be disconnected from the rest of the system, hence it is
made readily apparent that the bag may be removed from the
steam generation system and associated intermediate tube 7 4,
hence the pipe 74 is releasably received in the enclosure 12
through opening 4 2. Answer 3.
The Examiner further found that "Leung teaches ... that the
steam nozzle 96 ... may be attached to a steaming wand 18 ... and a
steam hose 20 that is connected to a steam providing base 34 that may
be used for manually treating a fabric article." Answer 4 ( citing
Leung Abstract; ,r,r 36, 37, 43, 50, Figure 6). The Examiner further
found that Leung' s steam nozzle 96 and steaming wand 18 meets the
"steam nozzle" and "steam outlet" limitations, respectively, recited in
claim 14. Answer 4.
The Examiner concludes that it would have been obvious to one
of ordinary skill in the art to combine the applied prior art for the
same reasons set forth above in the rejection of claims 1 and 13. Id.
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Appellants argue that the rejection of claim 14 as unpatentable
over Waldron and Leung should be reversed because: ( 1) the
ordinarily skilled artisan would not have converted Waldron's hands-
free steamer into one that can operate hands-free or manually in the
absence of any teaching by Leung "of a steam nozzle receptacle for
releasably receiving [Leung's] hand[] operated steam nozzle," Appeal
Br. 17; (2) although Waldron acknowledges that manual operation of
steam nozzles are known, Waldron's teachings are "exclusively
directed to a hands-free steaming of a fabric article received within
enclosure 12," id.; (3) the applied prior art would have motivated the
ordinarily skilled artisan to "instead incorporate [Leung' s] additional
steam line ... consisting of a hand[] operated hose connected to the
base unit 16 of Waldron and having a steam nozzle on the other end
thereof," id. at 18; (4) the permanently affixed enclosure 152
described in Waldron's second hands-free steam embodiment is
distinguished from the subject matter of claim 14, id. at 19-20; Reply
Br. 13; and (5) "Waldron fails to describe, teach or suggest a removal
of the garment bag enclosure from a base." Reply Br. 12. 5
5 Appellants' additional argument that the applied prior art fails to describe,
teach, or suggest a recess of a nozzle receptacle, as required by claims 4--8,
is untimely. Reply Br. 13. Appellants did not raise these arguments in the
Appeal Brief. We, therefore, will not consider them. Ex parte Nakashima,
93 USPQ2d 1834 (BP AI 2010) (informative) ( explaining that arguments and
evidence not timely presented in the principal Brief will not be considered
when filed in a Reply Brief, absent a showing of good cause explaining why
the argument could not have been presented in the Principal Brief); Ex parte
Borden, 93 USPQ2d 1473, 1477 (BPAI 2010) (informative) ("Properly
interpreted, the Rules do not require the Board to take up a belated argument
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Application 14/420,771
Appellants' arguments are not persuasive.
First, we are not persuaded by arguments ( 1) and ( 5) because the
Examiner found that Leung's steam nozzle 96, which is attached to steaming
wand 18, is "releasably attached to a clothes hanger 16 via a pair of fingers
84 and 86." Answer 4. Thus, Leung teaches or suggests a steam nozzle
receptacle for releasably receiving a hand operated steam nozzle.
We, furthermore, agree with the Examiner that Waldron's garment
bag enclosure may be removed, which would have facilitated hand-held
steaming of garments following the attachment of Leung' s hose 20 to
Waldron's intermediate pipe 74, i.e., the requisite "steam outlet" (claim 14).
As the Examiner found, Waldron's
steam generation system is separate from the enclosure 12 and
... an intermediate pipe 7 4 is used to connect to the steam
delivery tube 64 of the steam generation system to the
enclosure 12 such that the steam generation system is capable
of generating steam and supplying it through the steam delivery
tube 64[,] regardless of whether or not the intermediate tube 74
is attached to the enclosure 12.
Answer 7 (citing Waldron Figs. 1, 3; ,r 28).
that has not been addressed by the Examiner, absent a showing of good
cause.").
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Application 14/420,771
Waldron's Figure 3, which illustrates a perspective view of a clothes
freshening device's base unit, is reproduced below.
Figure 3 illustrates features of base unit 16, which includes lid 52 covering
the steam generation system, and steam delivery tube 64.
We note that Waldron's Figure 3 does not depict broken lines for the
terminal end of steam delivery tube 64 ( or chemical mist delivery tube 104 ),
thereby indicating that tube 64 and base unit 16 are disassembled from bag
opening 42 and intermediate pipe 74. Thus, Appellants' arguments have not
identified reversible error in the Examiner's finding that garment enclosure
bag 12 is removable from base unit 16.
Second, Appellants' rebuttal argument (2) asserts that Waldron
teaches away from manual steaming by intentionally limiting the described
embodiments to hands-free steaming of fabric articles within enclosure 12.
Appeal Br. 1 7. The preponderance of the evidence, however, weighs in
favor of the Examiner's findings that Waldron, when combined with Leung,
discloses each component and requisite feature of the claimed apparatus.
See Para-Ordnance Mfg., Inc. v. SGS Imps. Int'!, Inc., 73 F.3d 1085, 1090
(Fed. Cir. 1995) ( explaining that the teachings of a reference that arguably
teaches away from a claimed feature must be weighed alongside the
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teachings of a cited reference that teaches the propriety of employing that
feature).
Third, argument (3) asserts that the applied prior art would have
motivated the ordinarily skilled artisan to modify Waldron with features
from Leung that are distinguishable from the claimed subject matter.
Appeal Br. 18-19. Appellants' arguments are not persuasive because
"arguments of counsel cannot take the place of evidence lacking in the
record." Estee Lauder Inc. v. L 'Orea!, S.A., 129 F.3d 588, 595 (Fed. Cir.
1997) (citation omitted); see also Icon Health & Fitness, Inc. v. Strava, Inc.,
849 F.3d 1034, 1043 (Fed. Cir. 2017) ("Attorney argument is not
evidence.").
As the Examiner found, each of the structural features of claim 14
"are well known in the art[,] as shown by ... Waldron[] and Leung[,]" and
"[t]he instant invention combines these known features in a way that does
not produce any unexpected results." Answer 8. In this case, the Examiner
has properly established a prima facie case of obviousness, and Appellants
have not presented sufficient evidence or argument to rebut that case.
Fourth, Appellants' argument (4) is unpersuasive that Waldron's
second hands-free steam embodiment is distinguished from the subject
matter of claim 14 because the Examiner's rejection is based on Waldron's
first hands-free steam embodiment. Id.
We, therefore, affirm Rejection 1 of claims 14 and 15. 37 C.F.R.
§ 4I.37(c)(l)(iv).
Rejection 2. Claims 11 and 12 are rejected under 35 U.S.C. § 103(a)
as unpatentable over the combination of Walton, Leung, and Kleker. Final
Act. 6; Answer 6.
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For the reasons set forth above, we reverse Rejection 2 of claims 11
and 12. 37 C.F.R. § 4I.37(c)(l)(iv).
CONCLUSION
For the reasons set forth above, we affirm-in-part the obviousness
rejections of claims 1-17 of the '771 Application. In particular, we affirm
the rejection of claims 14 and 15. We reverse the rejections of claims 1-13,
16, and 17.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED-IN-PART
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