KONINKLIJKE PHILIPS N.V.

Patent Trials and Appeals Board

Mar 27, 2020

14760595 - (D) (P.T.A.B. Mar. 27, 2020)

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.
14/760,595 07/13/2015 BAN NEE CHOO 2012P00812WOUS 5275
24737 7590 03/27/2020
PHILIPS INTELLECTUAL PROPERTY & STANDARDS
465 Columbus Avenue
Suite 340
Valhalla, NY 10595
EXAMINER
AYALEW, TINSAE B
ART UNIT PAPER NUMBER
1711
NOTIFICATION DATE DELIVERY MODE
03/27/2020 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):
katelyn.mulroy@philips.com
marianne.fox@philips.com
patti.demichele@Philips.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte BAN NEE CHOO and BOON KHIAN CHING
Appeal 2019-004239
Application 14/760,595
Technology Center 1700
Before JULIA HEANEY, MONTÉ T. SQUIRE, and
SHELDON M. MCGEE, Administrative Patent Judges.
HEANEY, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE1
Pursuant to 35 U.S.C. § 134(a), Appellant2 appeals from the
Examiner’s decision to reject claims 1–13. See Final Act. 1. We have
jurisdiction under 35 U.S.C. § 6(b).

1 In this Decision, we refer to the Specification dated July 13, 2015
(“Spec.”), the Final Office Action dated July 25, 2018 (“Final Act.”), the
Appeal Brief dated December 18, 2018 (“Appeal Br.”), and the Examiner’s
Answer dated March 6, 2019 (“Ans.”).
2 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42. Appellant identifies the real party in interest as Koninklijke Philips
N.V. Appeal Br. 2.
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Application 14/760,595
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We REVERSE.
CLAIMED SUBJECT MATTER
The claims are directed to a handheld appliance, such as a steamer for
fabric articles. Spec. 1, ll. 2–7. According to the Specification, the
invention seeks to provide a handheld device that overcomes the problem of
inefficient steam generation when the device is held at an orientation that
draws air into its heating chamber, rather than water from the device’s
reservoir. Spec. 1, l. 23–2, l. 6. Claim 1, reproduced below with formatting
added for readability, is illustrative of the claimed subject matter:
1. A hand-held appliance comprising
a housing including a longitudinal axis,
a reservoir to contain water and a tube to convey water from
the reservoir for delivery to a surface,
wherein the tube has a portion that extends into the
reservoir,
wherein the tube comprises a secondary tube portion
including multiple tube inlets spaced from each other with at
least a portion of the secondary tube portion that extends as
a substantially continuous diagonal line, diagonally across
the longitudinal axis of the housing within the reservoir so
that,
when the reservoir contains water, a tube inlet is
submerged irrespective of the orientation of the housing,
the tube inlet also comprising a separate valve
assembly associated with each tube inlet so that a valve
assembly associated with a submerged tube inlet opens to
allow flow of water through that tube inlet and a valve
assembly associated with a non-submerged tube inlet closes
to prevent the flow of air through said non-submerged tube
inlet.
Appeal Br. 18 (Claims Appendix) (emphasis added).
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Application 14/760,595
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REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Nozawa US 4,277,001

July 7, 1981

Hanada US 5,121,464 June 9, 1992
REJECTIONS
1. Claims 1–11 and 13 are rejected under pre–AIA 35 U.S.C.
§ 103(a) as being unpatentable over Nozawa. Final Act. 4.
2. Claim 12 is rejected under pre–AIA 35 U.S.C. § 103(a) as being
unpatentable over the combination of Nozawa and Hanada. Final
Act. 7.
OPINION
The Examiner finds that Nozawa teaches a hand held appliance
comprising a housing 1, 2, a reservoir 1 to contain liquid, and a tube 8, 14,
39, 44–49 to convey the liquid from the reservoir for delivery to a surface.
Final Act. 4 (citing Nozawa Fig. 1). The Examiner further finds that the
tube has a primary portion 8, 14 that extends into the reservoir, and a
secondary portion 39, 44–49 connected to a free end of the primary tube. Id.
The Examiner further finds that the tube includes multiple tube inlets 44–47
spaced from each other, so that when the reservoir contains a liquid, a tube
inlet is submerged irrespective of the orientation of the housing. Id. at 4–5.
The Examiner acknowledges that Nozawa does not teach that the secondary
tube portion extends diagonally across the longitudinal axis of the housing
(id. at 5), but finds that Nozawa describes that its atomizer is functional in
any orientation, and thus would function in the same way if its secondary
tubes were rearranged to a diagonal orientation. Ans. 7–8 (citing Nozawa
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Application 14/760,595
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1:52–56, 4:5–60). The Examiner therefore determines that changing the
arrangement of the secondary tubes to extend diagonally would not yield any
new and unexpected results and, as such, would have been an obvious
design choice to one of ordinary skill in the art. Id. at 5 (citing In re Japikse,
181 F.2d 1019 (CCPA 1950)).
Appellant argues that while Nozawa recognizes a problem with prior
art atomizers that could only be used in an upright or slightly inclined
position, and suggests that its invention would solve that problem, Nozawa’s
atomizer does not solve the problem completely because it only operates
properly when held upright or upside down (i.e., rotated 180 degrees).
Appeal Br. 9–10 (citing Nozawa Fig. 1, 1:32–56). Specifically, Appellant
argues that “Nozawa’s design is flawed in a non-obvious way in that when
the atomizer is held sideways (i.e., rotated 90 degrees in any rotational
direction from that shown in FIG. 1)” because in those positions, neither of
the secondary tubes would extend into the liquid. Id. at 10. Appellant thus
argues that the Examiner’s determination of obviousness is based on
hindsight, because a person of ordinary skill would not have had a reason to
change Nozawa’s vertical secondary tubes to a diagonal arrangement,
particularly in view of Nozawa’s teaching that vertical orientation of the
secondary tubes resolves the problem. Id. at 11.
Appellant’s argument persuasively identifies reversible error. We
find, as asserted by Appellant, that Nozawa’s vertical secondary tubes would
not extend into the liquid when the atomizer is rotated 90 degrees. Thus, the
structure of Nozawa’s secondary tubes does not achieve the purpose of the
diagonal secondary tube portion recited in the appealed claims, and the
difference in structure is not merely a rearrangement of parts. See In re Gal,
980 F.2d 717, 719–20 (Fed. Cir. 1992) (reversing as improper the Board’s
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Application 14/760,595
5
holding that a difference in structure between an applicant’s claimed
invention and the prior art was simply a matter of design choice, where the
different structures of the applicant and the prior art achieve different
purposes). Further, a person of ordinary skill in the art would not have had a
reason to change the arrangement of Nozawa’s vertical secondary tubes to a
diagonal secondary tube, because Nozawa states it is capable of atomizing
liquid regardless of the position of the atomizer. Nozawa Fig. 1, 1:40–56.
For these reasons, the Examiner reversibly erred in applying hindsight to the
reason for modifying Nozawa, and additionally erred in determining that
extension of the diagonal secondary tube into the liquid is not a patentable
distinction because it is a function of the amount of liquid present. See Ans.
7–8 (citing Ex Parte Thibault 164 USPQ 666, 667 (CCPA 1969)). The
claim limitation reciting a diagonal secondary tube portion is structural, and
not a description of intended operation. Accordingly, we reverse the
rejection of claim 1.
Independent claims 9 and 11 include limitations similar to the
limitation of claim 1 discussed above. Therefore, we reverse the rejection of
claims 9 and 11 for the same reasons as discussed above, as well as the
rejections of dependent claims 2–8, 10, 12 and 13. Because we find
reversible error, we need not reach Appellant’s additional arguments for
reversal.
CONCLUSION
The Examiner’s rejections are REVERSED.
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DECISION SUMMARY
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–11, 13 103(a) Nozawa 1–11, 13
12 103(a) Nozawa, Hanada 12
Overall
Outcome:
1–13

REVERSED