Ex Parte Minayoshi et al

Patent Trial and Appeal Board

Sep 20, 2012

11838480 (P.T.A.B. Sep. 20, 2012)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
11/838,480 08/14/2007 Hiroko Minayoshi MAT-8371US1 6794
52473 7590 09/21/2012
RATNERPRESTIA
P.O. BOX 980
VALLEY FORGE, PA 19482-0980
EXAMINER
RIGGLEMAN, JASON PAUL
ART UNIT PAPER NUMBER
1711
MAIL DATE DELIVERY MODE
09/21/2012 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
_______________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
_______________

Ex parte HIROKO MINAYOSHI, EIJI MATSUDA,
KIYONOBU YOSHIDA, HARUO IDA and YUKIHIRO KITAZAKI
______________

Appeal 2011-002478
Application 11/838,480
Technology Center 1700
_______________

Before CHARLES F. WARREN, PETER F. KRATZ, and
BEVERLY A. FRANKLIN, Administrative Patent Judges.

PER CURIAM.

DECISION ON APPEAL
Applicants appeal to the Board from the final rejection of claims 1, 4
and 5 under 35 U.S.C. § 102(b) over Suau (EP 0 373 063 A1),1 and claims 1,
3 and 4 under 35 U.S.C. § 103(a) over Lattanzi (EP 0 677 609 A2). Ans. 3,
5; App. Br. 2. We have jurisdiction. 35 U.S.C. §§ 6 and 134(a) (2002);
37 C.F.R. § 41.31(a) (2010).
We reverse the decision of the Primary Examiner.
Opinion
I.

1 We refer to the translation of Suau prepared for the USPTO by Schreiber
Translations, Inc. (PTO 10-5307 August 2010) made of record in the
Answer. Ans. 3.
Appeal 2011-002478
Application 11/838,480
2
We agree with Appellants that the Examiner erred in finding that Suau
would have described to one skilled in the art a method of washing laundry
which comprises the step of, among other things, rotating a drum in the tub
of a washing machine “at a sufficient speed to cause the detergent bubbles to
rise between the rotating drum and the tub by centrifugal force so that the
rising detergent bubbles are in contact with the rotating drum and in order to
pour the detergent bubbles onto the laundry in the rotating drum” as
specified in claim 1 (emphasis supplied), thus anticipating the claimed
method of washing laundry encompassed by this claim within the meaning
of § 102(b). Ans. 3, 6; App. Br. 5-7; Reply Br. 4.
The Examiner bears the initial burden of establishing that as a matter
of fact, Suau would have described the claimed method of washing laundry
encompassed by claim 1, including each and every element of the claimed
method arranged as required therein, either expressly or under the principles
of inherency, in a manner sufficient to have placed one skilled in this art in
possession thereof within the meaning of § 102(b). See, e.g., In re
Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997), and cases cited therein; In
re Spada, 911 F.2d 705, 708 (Fed. Cir. 1990), and cases cited therein; In re
Bond, 910 F.2d 831, 832-33 (Fed. Cir. 1990), and cases cited therein;
Diversitech Corp. v. Century Steps, Inc., 850 F.2d 675, 677-78, (Fed. Cir.
1988); Lindemann Maschinenfabrik GMBH v. Am. Hoist and Derrick Co.,
730 F.2d 1452, 1458 (Fed. Cir. 1984).
The Examiner contends that ‘[i]t is expected that bubbles would be
produced by centrifugal forces and would rise between the drum and the tub
and ‘pour’ onto the laundry in the rotating drum (generally agitation
produces sudsing when soap is present),” but does not support the contention
Appeal 2011-002478
Application 11/838,480
3
with evidence in Suau. Ans. 3, 6. See App. Br. 7. Indeed, the Examiner’s
contention that “[a]dditionally, many factors would be expected to play a
role in the behavior of the bubbles rising including the amount of detergent
and the distance between the drum and tub” does not establish that Suau
describes a method wherein bubbles would in fact rise between the rotating
drum and the tub as claimed. Ans. 6.
Accordingly, in the absence of a prima facie case of anticipation we
reverse the rejection of claims 1, 4 and 5 under 35 U.S.C. § 102(b) over
Suau.
II.
We agree with Appellants that the Examiner erred in determining that
one of ordinary skill in the art would have been led by Lattanzi to operate
Lattanzi’s laundry washing machine by rotating the drum in the tub “at a
sufficient speed to cause the detergent bubbles to rise between the rotating
drum and the tub by centrifugal force so that the rising detergent bubbles are
in contact with the rotating drum and in order to pour the detergent bubbles
onto the laundry in the rotating drum” as specified in claim 1 (emphasis
supplied), instead of following Lattanzi’s method in which auxiliary duct 6,
union sump 8 and drainage duct 4 are used to recirculate detergents in the
washing machine. Lattanzi abstract, col.2 ll.13-24, col.2 l.52 to col.5 l.43,
Figs. 1, 2, 4. Ans. 5, 7; App. Br. 8-9; Reply Br. 1-2.
The Examiner bears the initial burden of adducing evidence or
scientific reasoning in support of the position that the claimed method of
washing laundry encompassed by claim 1 would have been obvious to one
of ordinary skill in the art over Latinize in order to establish a prima facie
case of obviousness and shift the burden to Appellants to rebut the position.
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Application 11/838,480
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See, e.g., KSR Int’l. Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007)
(‘[R]ejections on obviousness grounds cannot be sustained by mere
conclusory statements; instead, there must be some articulated reasoning
with some rational underpinning to support the legal conclusion of
obviousness.” (quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)); In
re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992); In re Warner, 379 F.2d
1011, 1017 (CCPA 1967) (“A rejection based on section 103 clearly must
rest on a factual basis, and these facts must be interpreted without hindsight
reconstruction of the invention from the prior art”).
The Examiner does not respond to Appellants’ contentions that
detergent bubbles would not rise between the rotating drum and the tub of
Lattanzi’s washing machine because of the recirculation of detergents using
auxiliary duct 6, union sump 8 and drainage duct 4, and that the Examiner
does not explain how Lattanzi’s washing machine would be operated to meet
the subject limitation of claim 1. App. Br. 8-9; Ans. 7; Reply Br. 1-2. In the
absence of such a showing by the Examiner, we determine that the
Examiner’s position is based on impermissible hindsight. Br. 3-4. See, e.g.,
In re Rouffet, 149 F.3d 1350, 1358 (Fed. Cir. 1998) (“hindsight” is inferred
when the specific understanding or principal within the knowledge of one of
prior art in order to arrive at appellant’s claimed invention has not been
explained).
Accordingly, in the absence of a prima facie case of anticipation we
reverse the rejection of claim 1, 3 and 4 under 35 U.S.C. § 103(a) over
Lattanzi.

Appeal 2011-002478
Application 11/838,480
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The Primary Examiner’s decision is reversed.
REVERSED

tc/cam