Ex Parte 6266892 et al

Patent Trial and Appeal Board

Feb 25, 2016

95001235 (P.T.A.B. Feb. 25, 2016)

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.
95/001,235 11/18/2009 6266892 111989-003RE1 5223
36491 7590 02/26/2016
Kunzler Law Group
50 W. Broadway
10th Floor
SALT LAKE CITY, UT 84101
EXAMINER
CLARKE, SARA SACHIE
ART UNIT PAPER NUMBER
3993
MAIL DATE DELIVERY MODE
02/26/2016 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
________________

MYTEE PRODUCTS, INC.
Requester and Respondent

v.

Patent of HARRIS RESEARCH, INC.
Patent Owner and Appellant
________________

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Technology Center 3900
________________

Before STEVEN D.A. McCARTHY, DANIEL S. SONG and
WILLIAM V. SAINDON, Administrative Patent Judges.

McCARTHY, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE 1
The Appellant/Patent Owner appeals from the Examiner’s decision 2
rejecting original claims 8 and 16 under 35 U.S.C. § 102(b) as being 3
anticipated by Rowan (AU-B-68696/94, publ. Jan. 19, 1995) (“Action 4

1 Issued July 31, 2001 to Dan Haynie (the “’892 patent”). The ’892
patent issued from Appl. 09/617,376, filed July 17, 2000.
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Closing Prosecution,” mailed Nov. 2, 2010 (“ACP”), at 1), Kohlenberger 1
(US 4,275,478, issued June 30, 1981) (ACP 4), Smith (US 933,003, issued 2
Aug. 31, 1909) (ACP 6), Nowak (US 2,081,597, issued May 25, 1937) 3
(ACP 7), and Harbeck (US 4,334,336, issued June 15, 1982) (ACP 8). 4
(“Notice of Appeal from the Examiner to the Patent Trial and Appeal 5
Board” (Patent Owner), dated Aug. 1, 2013). Claims 1–7, 9–15, 17, and 21–6
23 are not subject to reexamination in this proceeding (see “Right of Appeal 7
Notice,” mailed July 1, 2013 (“RAN”),2 cover page and 2, para. 5); and the 8
Examiner’s decision confirming the patentability of claims 18–20 has not 9
been appealed (see generally “Notice of Appeal” (Requester), dated July 31, 10
2013; see also RAN, cover page and 2, para. 5). We have jurisdiction of the 11
appeal under pre-AIA 35 U.S.C. § 134(b) and 35 U.S.C. 12
§ 315(a)(1). 13
We AFFIRM the Examiner’s decision to reject claims 8 and 16 under 14
§ 102(b) as being anticipated by Smith, Nowak, and Harbeck. Because the 15
rejection of claims 8 and 16 on these grounds constitutes a general 16
affirmance of the decision of the Examiner to reject claims 8 and 16, see 17
37 C.F.R. § 41.77(a), we do not reach the remaining grounds of rejection of 18
claims 8 and 16. 19

2 The Examiner’s Answer, mailed February 25, 2014, incorporates the
RAN by reference. The Examiner vacated an earlier Examiner’s Answer,
mailed May 24, 2013, and an earlier “Right of Appeal Notice,” mailed July
15, 2011, in response to the Examiner’s receipt of a “Decision on Petition,”
mailed April 26, 2013. (See RAN 1, para. 3). The RAN incorporates by
reference the statement of the grounds of rejection set forth in the ACP. (See
RAN 2, para. 5).
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The ’892 patent was at issue in Mytee Prods., Inc. v. Harris Research, 1
Inc., et al., Case No. 3:06-CV-1854 JLS (CAB) (S.D. Cal.).3 In a “Decision 2
on Petition,” mailed April 26, 2013 (“Decision on Petition” or “Pet. Dec.”), 3
the Office of Patent Legal Administration (“OPLA”) found that this 4
litigation had terminated in a final judgment in favor of the Patent Owner. 5
The final judgment of the district court held that the Requester had not 6
sustained the Requester’s burden of proving the invalidity of claims 1, 9 and 7
17 of the ’892 patent. (Pet. Dec. 3–4). The OPLA also found that the 8
Requester either raised, or could have raised, in the litigation the grounds of 9
rejection that the Requester proposed in the reexamination proceeding 10
against claims 1–4, 9, 12–14 and 17 of the ’892 patent. Based on these 11
findings, the OPLA concluded that the Patent and Trademark Office could 12
not maintain the reexamination proceeding to examine the grounds of 13
rejection that the Requester raised, or could have raised, in the litigation. 14
(Pet. Dec. 4 (citing 35 U.S.C. § 317(b)). The Examiner implemented this 15
decision by withdrawing all pending rejections of claims 1–4, 9, 12–14 and 16
17 (see RAN 1, paras. 1 and 2); and by allowing the reexamination to 17
proceed only with respect to claims 8, 16, and 18–20 (see RAN 2, para. 5). 18
The Requester cross-appeals from the USPTO’s “determination that 19
the issues raised by the Rowan, Kohlenberger, Harbeck, Smith, and Nowak 20
references with respect to claims 1–4, 9, 12–14 and 17 could have been 21
raised by the [R]equester in the litigation and that these claims are therefore 22

3 Additional court litigations and reexamination proceedings involving
the ’892 patent and its parent, Haynie (US 6,298,577 B1, issued Oct. 9,
2001), are listed on page 3 of the Requester’s “Respondent Brief Under
37 C.F.R. § 41.66 (b) and 41.68,” dated October 31, 2013.
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subject to the estoppel provisions of [pre-AIA] 35 USC [§] 317(b).” 1
(“Notice of Appeal” (Requester), dated July 31, 2013). More specifically, 2
the cross-appeal challenges findings and conclusions reached by the OPLA 3
in the “Decision on Petition.” (See RAN 1, paras. 1 and 2). 4
We DISMISS the cross-appeal. 5
The issuance of a final court decision after all appeals (in a civil 6
action arising in whole or in part under 28 U.S.C. 1338) 7
upholding validity during an inter partes reexamination, where 8
the person who filed the request was a party to the litigation, 9
will have the effect that the Office will discontinue examination 10
of all claims affected by the validity holding if a grantable 11
petition under 37 CFR 1.182 to terminate reexamination of those 12
claims is filed in accordance with guidelines set forth in 13
subsection V. 14
(MANUAL OF PATENT EXAMINING PROCEDURE § 2686.04. IV (italics both in 15
original and added for emphasis)). By requiring the filing of a grantable 16
petition to terminate an inter partes reexamination in whole or in part, the 17
Patent and Trademark Office commits the issue (which is other than on the 18
merits of any decision of the Examiner to reject claims) to the expertise of 19
the OPLA rather than to the Board. Because the issues raised by the cross-20
appeal are subject to review by petition rather than by appeal to the Board, 21
we dismiss the cross-appeal. 22
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THE ’829 PATENT 1
The claims on appeal relate to a device “for increasing the efficiency 2
of a carpet cleaning machine and other extraction machines in removing 3
cleaning solution and other liquids from fabric, such as carpet.” (’892 4
patent, col. 1, ll. 10–13). Claims 8 and 16 recite: 5
8. A vacuum head device
configured to withdraw a fluid from
a carpeted surface, the device
comprising:
a) an elongated base
plate configured to be movably
disposed on the carpeted surface;
and
b) a plurality of
apertures, formed in an array in the
base plate, configured to withdraw
the fluid under a vacuum force.
16. A vacuum head device
configured to withdraw a fluid from
a carpeted surface, the device
comprising:
a) an elongated base
plate configured to be movably
disposed on the carpeted surface,
and having a tapering cross section
with a wider upper end and a
narrower lower end configured to
penetrate into the carpeted surface;
and
b) a plurality of
apertures, formed in an array in
the base plate, configured to
withdraw the fluid under a
vacuum force.
(“Appeal Brief” (Patent Owner), dated October 1, 2013 (“App. Br. PO”) at 24
16 (Claims Appendix)). 25
26
ISSUE 27
Only issues and findings of fact contested by the Patent Owner or the 28
Requester have been considered. See 37 C.F.R. § 41.67(c)(1)(vii); In re 29
Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011). The sole dispositive issue in 30
this appeal is whether each of Smith, Nowak, and Harbeck describes a 31
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vacuum head device including “a plurality of apertures, formed in an array 24
in the base plate, configured to withdraw the fluid under a vacuum force” as 25
recited in claims 8 and 16. (See App. Br. PO 11–14; “Respondent Brief 26
Under 37 C.F.R. § 41.66 (b) and 41.68” (Requester), dated October 31, 2013 27
(“Resp. Br. Req’r”), at 9–12; “Rebuttal Brief” (Patent Owner), dated March 28
25, 2014 (“Reb. Br. PO”), at 2–3). 29
30
FINDINGS OF FACT 31
The record supports the following findings of fact (“FF”) by a 32
preponderance of the evidence. See Rambus Inc. v. Rea, 731 F.3d 1248, 33
1255 (Fed Cir. 2013); Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 34
1988). 35
1. The Examiner correctly finds that Smith, Nowak, and Harbeck 36
each anticipate claims 8 and 16 of the ’892 patent. 37
2. We adopt and incorporate by reference the Examiner’s findings 38
of fact at pages 6–10 of the ACP supporting the Examiner’s finding that 39
Smith, Nowak, and Harbeck anticipate claims 8 and 16. 40
3. Smith describes a suction head or nozzle 1 for dust collector 41
(that is, vacuum cleaner) 4. (Smith 1, ll. 83–89; see also id., ll. 8–22). 42
Smith’s nozzle 1 includes a detachable cleaning head 5 that serves as a base 43
plate for the nozzle. (Smith 1, ll. 94–102; see also ACP 6, para. 4a). 44
Smith’s cleaning head 5 includes a plurality of linearly-aligned apertures 9 45
defined by circular walls. (Smith 1, ll. 103–09; see also id. at 2, ll. 7–9 (“It 46
will be seen that in the present instance the ribs 10 are formed integral with 47
the walls of the apertures.”); see also ACP 6, para. 4a). 48
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4. Nowak describes an intake and scraping nozzle 13 for removing 24
accumulated sediment from a cistern. The intake and scraping nozzle 13 is a 25
vacuum head device in the sense that it may be connected to a pump or other 26
suction source to remove sediment 9 from a liquid-filled cistern 7. (Nowak 27
1, second col., ll. 6–23 and Fig. 1). Nowak’s intake and scraping nozzle 13 28
is a one-piece metal casting. (Id. at ll. 23–25 and Fig. 2.) An inclined 29
bottom portion 15 of Nowak’s nozzle 13 includes a plurality of linearly-30
arranged intake ports or apertures 16. (Nowak 1, second col., ll. 29–35 and 31
Fig. 3; see also ACP 7, para. 5a). 32
5. Harbeck describes a vacuum head device in the form of a 33
surface cleaning vacuum nozzle having a body 2 for connection to a suction 34
source. (Harbeck, col. 2, ll. 54–58 and 62–63). The body 2 of Harbeck’s 35
vacuum nozzle has a curved portion 10 corresponding to the base plate 36
recited in claims 8 and 16. (Harbeck, col. 2, ll. 61–62 and Fig. 3). The 37
curved portion 10 of Harbeck’s vacuum nozzle terminates in a plurality of 38
linearly-arranged apertures or intake orifices 12. (Harbeck, col. 2, ll. 61–62 39
and Fig. 4). 40
41
ANALYSIS 42
Claims 8 and 16 each recite a “vacuum head device . . . [including] a 43
plurality of apertures, formed in an array in the base plate.” In its “Claim 44
Construction Order for United States Patent Numbers 6,298,577 and 45
6,266,892,” dated April 24, 2008, the United States District Court for the 46
Southern District of California in Mytee Prods., Inc. v. Harris Research, 47
Inc., et al., Case No. 3:06-CV-1854 JLS (CAB), interpreted the term 48
“apertures” as used in the ’892 patent to mean “any holes, slots or openings 49
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that serve as liquid extraction nozzles.” (See 2008 WL 4855029 at *4). The 24
Requester, who was the plaintiff in the district court case, did not challenge 25
the interpretation on appeal. See Mytee Prods., Inc. v. Harris Research, Inc., 26
439 F. Appx. 882 (Fed. Cir. 2011). 27
We adopt the District Court’s interpretation as the broadest reasonable 28
interpretation for purposes of this reexamination proceeding. In doing so, 29
we do not adopt the Patent Owner’s interpretation of the term “apertures” as 30
limited to “holes, slots or openings forming tubes or ducts through which 31
fluid is pulled out.” (See App. Br. PO 12). Such a limited reading is 32
inconsistent with the written description of the ’892 patent. 33
The ’892 patent describes the embodiments depicted in Figures 1–3 34
and 6–10 as including “a base plate 18 with one or more apertures 22 which 35
serve as extraction nozzles to remove liquid from a fabric or carpet 14 when 36
the device 10 has been built into or retrofitted on a vacuum machine, such as 37
a carpet-cleaning machine.” (’892 patent, col. 2, ll. 63–67). The Examiner 38
correctly concludes that the ’892 patent uses “extraction nozzles” in 39
passages such as this merely to identify the intended use to which the 40
apertures are to be put in the vacuum head device, rather than to limit the 41
apertures to specific structures such as holes, slots or opening forming tubes 42
or ducts in the base plate. (See ACP 6, para. 3av). In addition, the 43
embodiment depicted in Figures 1–3, as best seen in section in Figure 2, has 44
a linear array of “apertures,” labeled 22, rendered as holes or openings 45
through the apex of a V-shaped base plate 18. Figure 2 does not depict any 46
tubes or ducts associated with the apertures 22. Thus, the ’892 patent uses 47
the name “aperture” to indicate holes or intake ports, with or without 48
associated tubes or ducts. This usage is consistent with the broadest 49
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reasonable interpretation (as well as the interpretation reached by the District 24
Court) but is inconsistent with the narrower interpretation advocated by the 25
Patent Owner in this proceeding. 26
Smith, Nowak, and Harbeck each describe a vacuum head device 27
including a plurality of apertures formed in an array in a base plate. (FF 3–28
5). The apertures 9 described by Smith are defined by circular walls that are 29
arguably tubes or ducts. (See FF 3). The apertures 16 described by Nowak 30
and the apertures 12 described by Harbeck take the form of openings or 31
intake ports rather than tubes or ducts. Nevertheless, the term “apertures,” 32
properly construed, is sufficiently broad to encompass the apertures 33
described by Smith, Nowak, and Harbeck. Therefore, we sustain the 34
rejection of claims 8 and 16 under § 102(b) as being anticipated by Smith, 35
Nowak, and Harbeck. Because the rejection of claims 8 and 16 on these 36
grounds constitutes a general affirmance of the decision of the Examiner to 37
reject claims 8 and 16, see 37 C.F.R. § 41.77(a), we do not reach the 38
remaining grounds of rejection adopted by the Examiner. 39
40
DECISION 41
We AFFIRM the Examiner’s decision rejecting claims 8 and 16. 42
Requests for extensions of time in this inter partes reexamination 43
proceeding are governed by 37 C.F.R. § 1.956 (2011). 44
In the event neither party files a request for rehearing within the time 45
provided in 37 C.F.R. § 41.79, and this decision becomes final and 46
appealable under 37 C.F.R. § 41.81, a party seeking judicial review must 47
timely serve notice on the Director of the United States Patent and 48
Trademark Office. See 37 C.F.R. § 90.1 and 37 C.F.R. § 1.983. 49
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24
AFFIRMED 25

Patent Owner:

KUNZLER LAW GROUP
50 W. BROADWAY, 10TH FLOOR
SALT LAKE CITY, UT 84101

Third Party Requester:

THEMIS LAW
7660 FAY AVENUE
SUITE H-535
LA JOLLA, CA 92037-4843