Ex Parte MCLEODDownload PDFPatent Trial and Appeal BoardAug 28, 201812628656 (P.T.A.B. Aug. 28, 2018) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 12/628,656 12/01/2009 25227 7590 08/30/2018 MORRISON & FOERSTER LLP 1650 TYSONS BOULEVARD SUITE400 MCLEAN, VA 22102 FIRST NAMED INVENTOR David Andrew MCLEOD 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. 424662029900 6361 EXAMINER NOBREGA, TATIANA L ART UNIT PAPER NUMBER 3732 NOTIFICATION DATE DELIVERY MODE 08/30/2018 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 DAVID ANDREW MCLEOD Appeal 2016-008735 Application 12/628,656 1 Technology Center 3700 Before: STEVEN D.A. MCCARTHY, JILL D. HILL, and NATHAN A. ENGELS, Administrative Patent Judges. ENGELS, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellant appeals under 35 U.S.C. § 134 from a rejection of claims 10, 12, 13, and 22-38. Claims 1-9, 11, and 14--21 have been canceled. We have jurisdiction under 35 U.S.C. § 6(b ). We reverse. 1 The real party in interest is Dyson Technology Limited. App. Br. 2. Appeal2016-008735 Application 12/628,656 ILLUSTRATIVE CLAIM Claim 10, reproduced below, is illustrative of the claimed subject matter: 10. A floor tool for a cleaning appliance comprising a cleaner head rotatably attached to a conduit carried by a pair of wheels that converge beneath the conduit, wherein the wheels have axes of rotation that intersect above a line passing through the wheel centres. App. Br. 33 (Claims Appendix). THE REJECTIONS 1. Claims 24, 29, and 36 stand rejected under 35 U.S.C. § 112, second paragraph, as being indefinite. 2. Claims 10, 12, 13, 22-25, 28-32, and 34--36 stand rejected under 35 U.S.C. § I03(a) as being unpatentable in view of Kawai et al. (US 6,230,363 Bl; May 15, 2001) and Aghnides (US 2,967,580; Jan. 10, 1961). 3. Claims 10, 12, 13, and 22-38 stand rejected under 35 U.S.C. § I03(a) as being unpatentable in view of Inge et al. (GB 2,441,301 A; March 5, 2008) and Uratani et al. (US 2001/0029641 Al; Oct. 18, 2001). 4. Claims 12 and 30 stand rejected under 35 U.S.C. § I03(a) as being unpatentable in view of Inge, Uratani, and Aghnides. 5. Claims 10, 12, 13, and 22-38 stand rejected under 35 U.S.C. § I03(a) as being unpatentable in view of Courtney (GB 2,391,459 A; Feb. 11, 2004) and Uratani. 2 Appeal2016-008735 Application 12/628,656 ANALYSIS Rejection No. 1 (Indefiniteness) The Examiner rejects claims 24, 29, and 36 as indefinite in light of the claim language "a substantially continuous arcuate support." Final Act. 2-3. According to the Examiner, the term "substantially" is a relative term and Appellant's Specification does not define "substantially continuous" nor otherwise apprise a person of ordinary skill of the limitation's scope. Final Act. 2-3. Appellant argues, and we agree, that a relative term does not render a claim indefinite when the specification provides guidelines that would allow a person of ordinary skill to understand what is meant by the term. Appeal Br. 31 (citing Andrew Corp.v. Gabriel Elecs., 847 F.2d 819 (Fed. Cir. 1988); In re Mattison, 509 F.2d 563 (CCPA 1975); MPEP 2173.05(b )(III)(D)). Among other things, Appellant's Specification describes an "arcuate rolling support [that] includes a small discontinuity at the gap between the two wheels 15, 16. The discontinuity, however, is sufficiently small that, from the point of view of a user, the rolling support feels continuous." Spec. 7:19-21; accord Appeal Br. 31-32 (quoting Spec. 2:28-3:6, 7:17-21; citing Spec. Fig. 5). Reading claims 24, 29, and 36 in light of the Specification, we agree with Appellant that the claims provide adequate clarity regarding the meaning of "substantially continuous arcuate support," and we do not sustain the Examiner's indefiniteness rejection. Rejection No. 2 (Obviousness Based on Kawai and Aghnides) Regarding the combination of Kawai and Aghnides, Appellant argues the Examiner erred in finding that Kawai teaches "a cleaner head rotatably 3 Appeal2016-008735 Application 12/628,656 attached to a conduit carried by a pair of wheels" as recited in claim 10 and as similarly recited in independent claims 28 and 34. According to the Examiner, "[t]he cleaner head of Kawai are the brushes (14) where the[] brushes rotate to collect the debris on the floor. The brushes are attached to a debris collecting conduit 9 in the embodiment of Figure 6 and to water supply conduits 81, 83 in the embodiments of Figures 21 and 22 .... " Ans. 16. Further, the Examiner finds that the brushes "rotate with respect to these conduits; thus, the brushes are rotatably attached to the conduits." Ans. 16. As argued by Appellant (see Reply Br. 5---6), Kawai discloses two brushes attached to a frame with water conduits also attached to the frame (see Kawai Figs. 20, 23). Reply Br. 5-6. Appellant argues, and we agree, that although Kawai's brushes rotate, Kawai's brushes are not "rotatably attached to a conduit," as claimed. See Appeal Br. 9. Reading claim 10 in light of the Specification, we conclude that the broadest reasonable interpretation of "a cleaner head rotatably attached to a conduit" requires the cleaner head to have at least some rotation relative to the conduit. See, e.g., Spec. 2:28-29 ("the conduit rotates relative to the cleaner head"). Without deciding whether the claims require a direct connection between the cleaner head and conduit, we find that Kawai' s brushes, which are attached to and rotate about a frame but not the conduit, do not fall within the scope of "a cleaner head rotatably attached to a conduit." Accordingly, we do not sustain the Examiner's obviousness rejection based on Kawai and Aghnides. Rejection No. 3 (Obviousness Based on Inge and Uratani) Among other things, the Examiner finds Inge discloses a floor tool for a cleaning appliance comprising a cleaner head rotatably attached to a 4 Appeal2016-008735 Application 12/628,656 conduit carried by a pair of wheels (Final Act. 7), and the Examiner additionally finds Uratani discloses dome-shaped or spherical wheels, where the wheels converge beneath the body/conduit of the device (Final Act. 8). According to the Examiner, Uratani "provide[ s] various wheel configurations which include wheels having arcuate portions." Ans. 17. Appellant argues a person of ordinary skill would not have combined the teachings of Inge and Uratani to arrive at the claimed invention. According to Appellant, Inge discloses a floor tool with a cleaner head attached to a conduit supported by a central barrel-shaped roller and a pair of wheels on opposite sides of the central roller. Appeal Br. 11. Appellant characterizes Uratani as disclosing a self-righting vacuum cleaner that is generally spherical in nature such that the vacuum can roll back to an upright position if it is knocked onto its side. Appeal Br. 12. Among other things, Appellant and the Examiner cite Uratani' s Figure 10, which is copied below. 51 ·' Figure 10 of Uratani Figure 10 of Uratani depicts "generally hemispherical" wheels 49 spaced on both sides of a cleaner housing and separated at the bottom by "a span 'W' 5 Appeal2016-008735 Application 12/628,656 between the wheels." Uratani ,r 51. Figure 10 also depicts that wheels 49 have canted axes of rotation 48, and Uratani explains that "hatched areas 50" represent additional spaces within the cleaner housing 20 that are made possible by the wheels' canted axes of rotation 48. In contrast to the embodiment's canted axes of rotation 48, Uratani explains that wheels with horizontal axes of rotation would require wheels the size of hatched areas 48 and a cleaner housing the size of "phantom line 51" in order to obtain span W between the wheels. Id. The Examiner contends that modifying the wheels of Inge's cleaning tool to be dome-shaped with canted axes of rotation based on teachings of Uratani would have been obvious "in order to allow the cleaning tool to move about on a side surface of the wheels when steering to facilitate maneuvering the device." Ans. 8; accord Final Act. 8. Appellant argues, and we agree, that nothing evidences that modifying Inge with the teachings ofUratani would have increased maneuverability or otherwise motivated a modification that would have arrived at the claimed invention. See Appeal Br. 16-17; Reply Br. 7-14. Among other things, Inge teaches an upright vacuum cleaner while Uratani teaches a self-righting vacuum cleaner that rolls across the floor behind a user. As Appellant argues, Uratani teaches the use of dome-shaped wheels to create a self-righting action and the use of canted axes of rotation 48 for the purpose of creating space in the vacuum housing, not for improving maneuverability. See Uratani ,r 51. Neither of Uratani' s stated benefits is applicable to the Examiner's proposed combination, and we agree with Appellant that the Examiner has not adequately evidenced that a person of ordinary skill would have modified Inge with the teachings of Uratani to 6 Appeal2016-008735 Application 12/628,656 "facilitate maneuvering of the device by increasing the degree of tilting which can be achieved by allowing for a greater extent or degree of contact to be established between individual wheels and the floor" (Ans. 21; accord Ans. 17-18). Similarly, the Examiner's position that "[ t ]he tilted, spherical wheel configurations of [Uratani] provides a more continuous arcuate rolling support surface as the distance (W, Refer to Figure 10) between the wheels near the floor is smaller" (Ans. 18) is contrary to Uratani's teachings of maintaining the distance W for both wheels having horizontal axes of rotation and wheels having canted axes of rotation. See Uratani ,r 51. Further, as explained by Appellant (Reply Br. 10-11 ), the Examiner's stated benefit of an arcuate rolling support surface would arise from a spherical or dome-shaped wheel without regard to the wheel being tilted such that "the wheels have axes of rotation that intersect above a line passing through the wheel centres," as claimed. Accordingly, we do not sustain the Examiner's obviousness rejection based on Inge and Uratani. Rejection No. 4 (Obviousness Based on Inge, Uratani, and Aghnides) Claims 12 and 30 depend from claims 10 and 28, respectively, and the Examiner's rejection of claims 12 and 30 based on Inge, Uratani, and Aghnides cites Aghnides only for the "gap" limitations added by claims 12 and 30. Final Act. 10-11. The Examiner does not find that Aghnides cures the deficiencies discussed above regarding independent claims 10 and 28. Accordingly, for the reasons discussed above, we do not sustain the Examiner's obviousness rejection based on Inge, Uratani, and Aghnides. 7 Appeal2016-008735 Application 12/628,656 Rejection No. 5 (Obviousness Based on Courtney and Uratani) The Examiner finds Courtney discloses a floor tool for a cleaning appliance that includes a cleaner head rotatably attached to a conduit carried by a pair of wheels. Final Act. 11-12. Further, the Examiner concludes that it would have been obvious to modify the wheels of Courtney based on the teachings of Uratani "in order to allow the cleaning tool to move about on a side surface of the wheels when steering to facilitate maneuvering the device." Final Act. 12-13. Appellant argues Courtney discloses an entire cleaning appliance, not a "floor tool for a cleaning appliance," as claimed. Appeal Br. 19-22. Specifically, Appellant argues Courtney describes an upright vacuum cleaner with a ball-shaped rolling support assembly that can remain in contact with a floor surface as the body is maneuvered through different positions. Appeal Br. 19. Stated differently, Appellant argues that, "[a]t best, Courtney discloses a cleaning appliance with a cleaner head rotatably attached to a conduit carried by a part of wheels," not a "floor tool for a cleaning apparatus," as claimed. Although we disagree with Appellant's arguments that the recited "floor tool for a cleaning apparatus" distinguishes Courtney2, we agree with Appellant's arguments that the Examiner has not provided an adequate rationale for combining the upright vacuum of Courtney with the self- righting vacuum ofUratani. For the same reasons discussed above regarding the teachings ofUratani as applied to modify Inge in Rejection 2 Nothing in Appellant's claims or Specification defines a "floor tool for a cleaning apparatus" or otherwise limits the claims to exclude the "cleaner head rotatably attached to a conduit" on an upright vacuum cleaner such as that disclosed in Courtney. 8 Appeal2016-008735 Application 12/628,656 No. 3, we agree with Appellant that the Examiner has not provided sufficient rationale to support the proposed modification of Courtney in view of Uratani to arrive at the claimed invention. Accordingly, for the reasons discussed above, we do not sustain the Examiner's obviousness rejection based on Courtney and Uratani. DECISION We reverse the Examiner's rejection of claims 10, 12, 13, and 22-38. REVERSED 9 Copy with citationCopy as parenthetical citation