Ex Parte 6553611 et al

Patent Trial and Appeal Board

Apr 23, 2013

95000070 (P.T.A.B. Apr. 23, 2013)

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.
95/000,070 01/07/2005 6553611 06337/8200569-000 9512
58249 7590 04/24/2013
COOLEY LLP
ATTN: Patent Group
1299 Pennsylvania Avenue, NW
Suite 700
Washington, DC 20004
EXAMINER
TILL, TERRENCE R
ART UNIT PAPER NUMBER
3991
MAIL DATE DELIVERY MODE
04/24/2013 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
____________________

PORTAGE ELECTRIC PRODUCTS, INC.
Requester, Cross-Appellant, Respondent

v.

ELECTROLUX HOME CARE1
Patent Owner, Appellant, Respondent
____________________

Appeal 2013-000143
Inter partes Reexamination Control 95/000,070
Patent US 6,553,611 B22
Technology Center 3900
____________________

Before RICHARD M. LEBOVITZ, JEFFREY B. ROBERTSON, and
DANIEL S. SONG, Administrative Patent Judges.

SONG, Administrative Patent Judge

DECISION ON APPEAL

1 Electrolux Home Care is the Patent Owner and the real party in interest
(Appeal Brief of Patent Owner 1).
2 Patent US 6,553,611 B2 (hereinafter "'611 patent") issued April 29, 2003 to
Huebsch et al.
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STATEMENT OF THE CASE
Claims 1, 2 and 5-29 are subject to reexamination, claims 5-29 having
been newly added during the course of the reexamination (RAN3 1). The
Patent Owner appeals under 35 U.S.C. §§ 134(b) and 315 from the
Examiner's rejections of all of the claims (RAN PTOL-2066; ABPO 1). The
Requester cross-appeals under 35 U.S.C. §§ 134 and 315 from the
Examiner's refusal to adopt certain proposed rejections of claims 5 and 6
(CABR 8-9). We have jurisdiction under 35 U.S.C. §§ 134(b) and 315.
An oral hearing with the representative of the Patent Owner was held
before the Patent Trial and Appeal Board on February 20, 2013, a transcript
of which will be entered into the electronic record in due course. In addition
to the submitted briefs (appeal, respondent and rebuttal), the Patent Owner
also relies on numerous declarations of Mssrs. Finnegan, Keim, Huebsch,
Komer, Sepke and Bever, and exhibits submitted therewith. The Requester
relies on its submitted briefs (cross-appeal, respondent and rebuttal), as well

3 Because the Examiner's Answer merely incorporates by reference, the
Right of Appeal Notice mailed on March 14, 2011, we cite to the same in
this decision.
While we have considered the entirety of the appeal record, we refer to and
address only specific portions thereof dispositive to the appeal, abbreviating
the briefing documents as follows:
1. Right of Appeal Notice = RAN
2. Appeal Brief of Patent Owner = ABPO
3. Rebuttal Brief of Patent Owner = Reb. Br. PO
4. Respondent Brief of Patent Owner = Resp. Br. PO
5. Cross-Appeal Brief of Requester = CABR
6. Rebuttal Brief of Requester = Reb. Br. R
7. Respondent Brief of Requester = Resp. Br. R
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as the declarations of Mssrs. Wehl and Müller, and exhibits submitted
therewith.
We AFFIRM-IN-PART with respect to the appeal of the Patent
Owner, and AFFIRM with respect to the cross-appeal of the Requester.

THE INVENTION
The '611 patent is directed to a vacuum cleaner having a thermal
device. Representative independent claims 1 and 5 read as follows (ABPO,
Claims App'x, formatting showing amendments removed, italics added):
1. A vacuum cleaner comprising:
a lower base unit;
an upper enclosure being pivotable with respect to the
lower base unit;
a motor disposed within the lower base unit;
a power cord having a first end affixed to at least one of
said upper portion and said base unit, and a second end adapted
for connecting to an electrical power source;
electrical conductors extending between said first end of
said power cord and said motor, said electrical conductors
defining an electrical power circuit to said motor; and
a thermal cutoff assembly including a temperature sensor
disposed proximate to said motor for measuring the temperature
of said motor and terminating the operation of the motor when
the motor is locked, said thermal cutoff assembly further
including a switching element in the electrical power circuit
and wired in series with the motor, wherein upon the
temperature sensor sensing a temperature greater than a
predetermined temperature setpoint, said switching element
opens said electrical power circuit;
wherein once said switching element has opened said
electrical power circuit, said switching element closes said
electrical power circuit only upon the temperature sensor
sensing a temperature less than the predetermined temperature
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setpoint and after said thermal cutoff assembly has been
disconnected from said electrical power source.

5. A vacuum cleaner comprising:
a lower base unit:
an upper enclosure being pivotable with respect to the
lower base unit;
a motor disposed within the lower base unit;
a power cord having a first end affixed to at least one of
said upper portion and said base unit, and a second end adapted
for connecting to an electrical power source;
electrical conductors extending between said first end of
said power cord and said motor, said electrical conductors
defining an electrical power circuit to said motor; and
a thermal cutoff assembly including a temperature sensor
disposed proximate to said motor for measuring the temperature
of said motor, said thermal cutoff assembly further including a
switching element in electrical association with said electrical
conductors, wherein upon the temperature sensor sensing a
temperature greater than a predetermined temperature setpoint,
said switching element opens said electrical power circuit;
wherein once said switching element has opened said
electrical power circuit, said switching element closes said
electrical power circuit only upon the temperature sensor
sensing a temperature less than the predetermined temperature
setpoint and after said thermal cutoff assembly has been
disconnected from said electrical power source.

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APPEAL OF THE PATENT OWNER
A. Examiner's Rejections4
The Patent Owner appeals the Examiner's decision to maintain the
following grounds of rejections of various claims under 35 U.S.C. § 103 as
obvious based on the combination of the noted prior art:
8. Claims 1, 2 and 6 obvious over Schmitz,5 Hofsäss6 and Senne7;
9. Claims 1, 2 and 6 obvious over Schmitz, Müller '5878 and Senne;
10. Claims 1, 2 and 6 obvious over Schmitz, Tabei9 and Senne;
12. Claim 5 obvious over Schmitz, Hofsäss and Senne;
13. Claim 5 obvious over Schmitz, Müller '587 and Senne;
14. Claim 5 obvious over Schmitz, Tabei and Senne;
15. Claims 1, 2 and 5-17 obvious over Schmitz, Hofsäss and APA10;
16. Claims 1, 2 and 5-17 obvious over Schmitz, Müller '587 and
APA;
17. Claims 1, 2 and 5-17 obvious over Schmitz, Tabei and APA;
19. Claims 1, 2 and 5-17 obvious over Schmitz, Müller '57411 and
Senne;

4 We utilize the same numbering of the maintained grounds of rejections as
used by the Examiner (RAN 5-6) for clarity.
5 U.S. Patent No. 3,763,635 issued October 9, 1973 to Schmitz.
6 U.S. Patent No. 5,309,131 issued May 3, 1994 to Hofsäss.
7 U.S. Patent No. 2,625,239 issued January 13, 1953 to Senne.
8 U.S. Patent No. 4,847,587 issued July 11, 1989 to Müller.
9 U.S. Patent No. 4,862,133 issued August 29, 1989 to Tabei.
10 '611 patent, col. 1, ll. 43-63; "APA" is "admitted prior art."
11 European Patent 0102574 published June 1, 1988 to Müller (citations to
English translation of record).
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20. Claims 1, 2 and 5-17 obvious over Schmitz, Müller '574 and
APA;
26. Claims 1, 2 and 5-17 obvious over Schmitz, Limitor Thermo-
switch12 and APA;
30. Claims 18-25, 28 and 29 obvious over Schmitz, Hofsäss, APA
and Bowerman13;
31. Claims 18-25, 28 and 29 obvious over Schmitz, Müller '587, APA
and Bowerman;
32. Claims 18-25, 28 and 29 obvious over Schmitz, Tabei, APA and
Bowerman;
34. Claims 18-25, 28 and 29 obvious over Schmitz, Müller '574, APA
and Bowerman;
35. Claims 26 and 27 obvious over Schmitz, Hofsäss, APA,
Bowerman and Yonkers14;
36. Claims 26 and 27 obvious over Schmitz, Müller '587, APA,
Bowerman and Yonkers; and
39. Claims 26 and 27 obvious over Schmitz, Müller '574, APA,
Bowerman and Yonkers.

12 "Thermo-switch with electrical self-holding: designed for dependability
today, according to tomorrow’s European Standards" (hereinafter "Limitor
Thermo-switch")
13 U.S. Patent No. 5,690,713 issued November 25, 1997 to Bowerman.
14 U.S. Patent No. 5,230,722 issued July 27, 1993 to Yonkers.
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B. Issues
1. Whether the Action Closing Prosecution of Oct. 28, 2010 was
improper.
2. Whether Hofsäss discloses a switching element that is "in series
with the motor" or "in electrical association" with electrical conductors, and
operates to open and close the electrical power circuit.
3. Whether Müller '587 discloses a switching element that is "in
series with the motor" or "in electrical association" with electrical
conductors, and operates to open and close the electrical power circuit.
4. Whether Tabei discloses a switching element that is "in series
with the motor" or "in electrical association" with electrical conductors, and
opens and closes the electrical power circuit.
5. Whether Limitor Thermo-switch Brochure discloses a switching
element that is "in series with the motor" or "in electrical association" with
electrical conductors, and opens and closes the electrical power circuit.
6. Whether the Examiner erred in concluding that the claims on
appeal would have been obvious in view of the combination of Schmitz,
Müller '574 and other prior art.
7. Whether the Patent Owner has demonstrated non-obviousness of
the claims on appeal based on secondary consideration evidence.

C. Analysis
Issue 1: Action Closing Prosecution
The Patent Owner initially argues that the Action Closing Prosecution
mailed October 28, 2010 was improper, that the Examiner should have
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reopened prosecution in rejecting claims 1, 2 and 7-12, and that the issuance
of the RAN was premature (App. Br. 3-4). The Patent Owner requests that
the Board reopen the prosecution so that the Patent Owner can consider any
amendments (App. Br. 4).
Whereas the Patent Owner asserts the issuance of the RAN is related
to the substantive rejection of claims, and thus, the Board has the authority
to review such matters (Reb. Br. PO 9), we disagree because this is a
procedural matter that should have been raised by a petition to the Director.
37 C.F.R. § 1.181; In re Hengehold, 440 F.2d 1395, 1403 (CCPA 1971).
The essence of the Patent Owner's argument is that the rejection of claims 1,
2 and 7-12 during the reexamination proceeding should have been
denominated as a new ground and prosecution reopened. However, such
denomination of new ground of rejection during examination and reopening
of prosecution are within the purview of the Director, not the Board.

Issue 2: Grounds Based on Hofsäss
Grounds 8, 12, 15, 30 and 35 maintained by the Examiner reject the
claims on appeal based on the combination of Schmitz and Hofsäss together
with other prior art of record. The Examiner concedes that Schmitz does not
disclose a thermal cutoff assembly as recited in the claims (RAN 9, 16). The
Examiner asserts that Hofsäss discloses the recited thermal cutoff assembly
(RAN 10, 16). According to the Examiner,
The bimetallic element 8 (switching element) of Hofsäss meets
the limitation of a temperature sensor and the claimed switching
element. The bimetallic element 8 of Hofsäss is wired in series
with the motor (see column 3, lines 40-60). The movable
contact 7 and the spring element 9 (switching element) also
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meet the limitations of the claimed switching element. Since
current flows through the switching element 7, 9 of Hofsäss it
has to be wired in series. The thermal switch of Hofsäss
functions as a self-holding switch by having a PTC resistor
positioned in electrical parallel with the switch to keep the
switch from closing again after cooling occurs (column 1, lines
13-31).
(RAN 10; see also, RAN 17-18).

The Patent Owner argues that Hofsäss does not disclose the particular
thermal cutoff assembly recited in the claims which "uses one element, the
switching element, to provide both the actuation function, which determines
when the current is to be interrupted and causes the system to change state,
and the interruption function, which includes the physical separation of
contacts and actual interruption of the electrical flow." (ABPO 8, emphasis
in original; see also ABPO 5, 6; Decl. Finnegan & Keim dated June 24,
2009, ¶ 43). The Patent Owner argues that the bimetallic element of Hofsäss
is not arranged "in series" or "in electrical association" as required by the
claims because the bimetallic element does not actually form a circuit during
operation and there is no current flowing therethrough (ABPO 8-10; see also
Decl. Finnegan dated July 31, 2006, ¶¶ 21, 22, 24-27). The Patent Owner
further argues that the spring element and movable contact of Hofsäss
cannot be considered to be "switching element" because it is the bimetallic
element of Hofsäss which actuates to opens the circuit (ABPO 10-11; see
also Decl. Finnegan & Keim dated June 24, 2009, ¶¶ 48).
We generally agree with the Patent Owner. The independent claims
require "a thermal cutoff assembly including a temperature sensor" and
"further including" a switching element. Thus, the claims explicitly recite
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that a switching element is "included" in it and therefore a component of the
recited thermal cutoff assembly. The independent claims further recite that
"said switching element opens said electrical power circuit" and "said
switching element closes said electrical power circuit." Thus, the claim
language specifies that it is the switching element itself, a component of the
thermal cutoff assembly, which opens and closes the electrical power circuit.
Independent claims 1 and 2 further recite that the switching element, not
merely the thermal cutoff assembly, is "wired in series with the motor,"
while independent claims 5 and 6 recite that the switching element is "in
electrical association with said electrical conductors."
The Examiner's rejection is based on the finding that the bimetallic
element 8 of Hofsäss corresponds to the recited switching element. The
bimetallic element is cantilevered and functions to displace those
components through which the current passes, namely, the movable contact
7 and the spring element 9 (see col. 3, ll. 27-36; Fig. 1). In contrast, the
claims require that the switching element of the thermal cutoff assembly be
in "series" or in "electrical association." As such, the cantilevered bimetallic
element of Hofsäss cannot reasonably be said to satisfy this limitation of the
claims because no current passes through it and thus is not in "electrical
association" with conductors as recited in the claim. In this regard, we also
generally agree with the Patent Owner that the limitation "electrical
associating" requires that electricity flow through the elements (ABPO 8-9).
As to the Examiner's alternative position that the movable contact 7
and the spring element 9 together correspond to the claimed switching
element, we observe that the spring element 9 and the movable contact 7 of
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Hofsäss cannot open the electrical power circuit as recited in the claims,
such opening being attained by the bimetallic element of Hofsäss that acts
against the spring element.
Thus, Grounds 8, 12, 15, 30, 35 are not sustained, the Examiner
exclusively relying on Hofsäss for disclosing the recited thermal cutoff
assembly recited in the independent claims.

Issue 3: Grounds Based on Müller '587
Grounds 9, 13, 16, 31 and 36 maintained by the Examiner reject the
claims on appeal based on the combination of Schmitz and Müller '587
together with other prior art of record. The Examiner asserts that Müller
'587 discloses the recited thermal cutoff assembly including a bimetallic
element 15 corresponding to the switching element recited in the claims, and
that the contact spring 8 and contact element 9 together also meet the
limitation requiring a switching element (RAN 11-13, 19-22). The Patent
Owner argues that like Hofsäss discussed in Issue 2, the bimetallic element
of Müller '587 is not arranged "in series" or "in electrical association," and
that the combination of the spring element and the movable contact cannot
be considered to satisfy the "switching element" limitation because it is the
bimetallic element of Müller '587 that opens the circuit (ABPO 8-11).
Thus, the issues based on Müller '587 are substantively the same as
those raised in Issue 2. Indeed, the bimetallic element 15 of Müller '587, or
alternatively, the combination of the contact spring and contact element, (see
col. 8, ll. 21-32, 40-46; Figs. 1-3) both fail to satisfy the limitations of the
independent claims for substantially the same reasons discussed supra in
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Issue 2 with respect to Hofsäss. Correspondingly, we do not sustain the
Examiner's Grounds 9, 13, 16, 31 and 36 for substantially the same reasons
already discussed with in Issue 2.

Issue 4: Grounds Based on Tabei
Grounds 10, 14, 17 and 32 maintained by the Examiner reject the
claims on appeal based on the combination of Schmitz and Tabei together
with other prior art of record. The Examiner asserts that Tabei discloses the
recited thermal cutoff assembly (RAN 14-16, 22-25). The Patent Owner
contends that like Hofsäss of Issue 2, the bimetallic element of Tabei is not
arranged "in series" or "in electrical association," and that the spring element
and movable contact cannot be considered to be "switching element"
because it is the bimetallic element of Tabei which opens the circuit (ABPO
8-11).
Thus, the issues pertaining to these grounds of rejection based on
Tabei are substantively the same as those raised in Issue 2. Indeed, the
bimetallic element 2 of Tabei, or alternatively, the combination of the leaf
spring 3 and movable contact 4 (see col. 3, ll. 30-47; col. 5, ll. 29-50; Figs.
1, 2), both fail to satisfy the limitations of the independent claims for
substantially the same reasons discussed supra in Issue 2 with respect to
Hofsäss. Correspondingly, we do not sustain the Examiner's Grounds 10,
14, 17 and 32 for substantially the same reasons already discussed in Issue 2.

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Issue 5: Grounds Based on Limitor Thermo-switch Brochure
Ground 26 maintained by the Examiner rejects claims 1, 2 and 5-17
on appeal based on the combination of Schmitz, Limitor Thermo-switch
Brochure and APA. The Examiner asserts that the only difference between
the APA and the claimed invention is that the thermal cutoff assembly "has
the additional feature of being a self-holding switch." (RAN 33). The
Examiner relies on Limitor Thermo-switch Brochure as disclosing a thermal
cutoff assembly having such a self-holding feature, and concludes the claims
would have been obvious to one of ordinary skill (RAN 33).
The Patent Owner disputes the Examiner's contention that the only
difference between the claims and the APA is the self-holding feature, and
refers to arguments submitted with respect to Issues 2-4 as establishing
further distinctions (ABPO 11). The Patent Owner further argues that the
reference fails to teach a switching element "wired in series" or "in electrical
association" as required by the claims (ABPO 14).
We agree with the Patent Owner. As the Examiner stated, the Limitor
Thermo-switch Brochure does disclose a thermo-switch having a self-
holding feature (see Title; col. 1, second header). However, the Limitor
Thermo-switch Brochure does not provide the level of detail necessary to
establish that the thermo-switch disclosed therein includes a switching
element that opens and closes the electrical power circuit, and whether such
element is either wired in series or is in electrical association with the
conductors as required by the claims. Thus, Ground 26 is not sustained.

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Issue 6: Grounds Based on Müller '574
Grounds 19, 20, 34, 39 maintained by the Examiner reject the claims
on appeal based on the combination of Schmitz and Müller '574 together
with other prior art of record. The Examiner concedes that Schmitz does not
disclose a thermal cutoff assembly but relies on Müller '574 as disclosing
this limitation (RAN 26). The Examiner states, inter alia, that:
Alternatively, Müller '574 teaches that the contact spring (10)
itself is the bimetal element (page 4, lines 28-35 of the
translation and claim 4). The switch is self-holding in that the
open position is maintained until the current flow across the
resistor 18 is interrupted, such as by disconnection from an
electrical power source (page 5, line 36-page 6, line 3 of the
translation).
(RAN 26).
Indeed, we find that Müller '574 differs from the prior art already
discussed with respect to Issues 2-4 in that Müller '574 specifically discloses
that the contact spring 10 itself may be a bimetal element (Pg. 4, ¶ 6; Pg. 5,
last paragraph to end of paragraph on Pg. 6; claim 4). The Examiner
concludes that "it would have been obvious to one of ordinary skill in the art
to provide the thermal switch of Müller '574 in the vacuum cleaner of
Schmitz in order to allow for disconnection of the motor of Schmitz in the
event of excess temperature" as disclosed in Senne (RAN 27-28) or APA
(RAN 29-30). We agree with the Examiner's analysis.
The Patent Owner first argues that Müller '574 does not mention any
vacuum cleaner applications, but instead, only mentions "'small electrical
appliances, built-in thermostats, small motors, small transformers, kitchen
and household appliances, etc.'" that draw "far less current than vacuum
cleaners." (ABPO 12). This argument is unpersuasive because vacuum
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cleaners are "household appliances" and come in different sizes. In addition,
the claims do not mandate a specific electrical current capability.
The Patent Owner also argues that Müller '574 does not teach opening
an electrical circuit upon "sensing a temperature greater than a
predetermined temperature setpoint" because Müller '574 discloses a "circuit
breaker" instead of a thermal protector (ABPO 12). The Patent Owner relies
on the joint declaration of Mssrs. Finnegan and Keim dated June 24, 2009 to
assert that the switch of Müller '574 would not be responsive to "excessively
high temperatures that would arise, for example, in the event that the filter of
the vacuum cleaner became clogged" because Müller '574 responds to
current overload instead of temperature (ABPO 12). The Patent Owner also
argues that circuit breakers "can be used in any temperature within an
extremely broad range" whereas thermal protectors must be "set within
relatively precise limits to allow for normal operation of the device" and to
provide protection in abnormally high temperatures (ABPO 12).
The Patent Owner's argument that circuit breakers "can be used in any
temperature within an extremely broad range" and reliance on the statements
of declarants related thereto is unpersuasive for numerous reasons. In
particular, this argument is based on how circuit breakers may generally be
used and do not persuasively establish that the circuit breakers as taught in
Müller '574 cannot be used in a vacuum cleaner as claimed. Importantly, we
do not discern, nor does the Patent Owner persuasively argue, any pertinent
structural distinction between the bimetallic switching element taught in
Müller '574 and the switching element claimed. The claims also do not
recite any limitations requiring a specific temperature range, and the record
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lacks persuasive evidence that the claimed switching element operates in a
specific temperature range for which a bimetal circuit breaker specifically
taught in Müller '574 could not operate
In addition, as to the Patent Owner's argument that the device of
Müller '574 does not respond to temperature, the disclosure of Müller '574
specifically states that the invention is "[a] bimetal protective switch, which
in response to a temperature rise above a preselected value is opened by a
bimetal element which is held in an open state by a resistor that bypasses the
switch." (Pg. 6, claim 1). In this regard, the bimetal element of Müller '574
is clearly disclosed as being responsive to heat (pg. 3, ¶¶ 2, 4; pg. 4, ¶¶ 2, 4;
pg. 5, ¶ 8) and such responsiveness does not depend on the source of the
heat, whether it is generated by a resistor or by electrical current through the
element. As also explained by the Patent Owner, temperature increases with
increases in current (see, e.g., Decl. of Finnegan dated June 10, 2005, ¶ 51;
Decl. of Huebsch dated June 3, 2005, ¶ 29; Decl. of Komer dated June 3,
2005 (hereinafter "Decl. of Komer I"), ¶ 10).
The Patent Owner further argues that when a vacuum cleaner filter is
clogged, "the electric current flow actually decreases due to less strain being
placed on the motor as a result of less air is being pulled through the system
by the vacuum fan" and as such Müller '574 would not protect the vacuum
cleaner (ABPO 13). Patent Owner's argument is unpersuasive. This
argument appears to ignore the fact that, as explained by the Patent Owner in
prior occasions (see generally Decl. of Huebsch dated June 3, 2005, ¶ 20),
such lack of airflow would cause the temperature in the vacuum cleaner to
increase.
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Claims 13-15
Grounds 19 and 20 also reject dependent claims 13-15, which recite
"the thermal cutoff assembly further comprises a positive temperature
coefficient resistor." The Examiner asserts that the "thick film resistor of
Müller '574 is a positive temperature coefficient resistor." (RAN 27, 30).
The Patent Owner disagrees and argues that the device of Müller '574
utilizes a "thick film resistor" instead and "touts the advantages of thick film
resistors to the exclusion of other heaters." (ABPO 13). The Patent Owner
contends that "[o]ne of ordinary skill in the art would readily understand the
fundamental differences between PTC [positive temperature coefficient]
resistors and thick film resistors," and explains some of these differences,
relying on the joint declaration of Mssrs. Finnegan and Keim (ABPO 14;
Decl. of Finnegan and Keim dated June 24, 2009, ¶¶ 60-63).
"Positive temperature coefficient" or "PCT" is defined as "[t]he
condition wherein the resistance, length, or some other characteristic of a
substance increases when temperature increases."15 Thus, the PCT resistor
recited in claims 13-15 would increase in resistance when temperature
increases. A thick film resistor is defined as "fixed resistor whose resistance
element is a film well over 0.001 inch (25 micrometers) thick."16 Thus,
"thick film resistor" is of a film construction having a thickness that exceeds
0.001 inch but doesn't require it to have a positive temperature coefficient.
The thick film resistor of Müller '574 is not described therein as having the

15 McGraw-Hill Dictionary of Scientific and Technical Terms, 5th Ed.
(1994).
16 Id.
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characteristic wherein the resistance increases as temperature increases. The
Examiner does not direct us to persuasive evidence that positive temperature
coefficient characteristics would be inherently present in thick film resistors
such as that of Müller '574 in support of the position that the "thick film
resistor of Müller '574 is a positive temperature coefficient resistor."
Thus, in view of the above, we do not sustain the Examiner's
rejections of claims 13-15 in Grounds 19 and 20, and claim 17 that depends
from claim 13 also rejected in these grounds. Furthermore, we also do not
sustain the Examiner's rejections of claims 19, 21, 23, 25 and 29 in Ground
34 and claim 27 in Ground 39, these claims ultimately depending from claim
13.

Claims 20 and 21
Ground 34 rejects, inter alia, dependent claims 20 and 21 that recite
that the air is drawn through a bag filter, "and then through a motor shroud
which encloses the suction motor." The Examiner finds that lower portion
13 of housing 12 of Schmitz, as well as motor chamber 15 of Bowerman,
both satisfy the recited limitation of these claims (RAN 37).
The Patent Owner disagrees and asserts that both Schmitz and
Bowerman merely disclose a partition in the vacuum housing for the motor
whereas claims 20 and 21 require a motor shroud that is a separate element
from the vacuum housing (ABPO 15). The Patent Owner argues that
"[s]ince the suction motor shroud is a separate component part, which is
separate and distinct from the vacuum cleaner housing, it can be made
utilizing a more expensive thermoplastic material" as compared to the rest of
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the vacuum cleaner (ABPO 15). The Patent Owner cites to portions of the
specification of the '611 patent to assert that the term "shroud" is explicitly
defined therein to be an element separate from the motor chamber (ABPO
16).
In contrast to the assertion of the Patent Owner, we do not find an
explicit definition in the specification of the '611 patent that requires the
shroud to be a separate from the motor chamber. Instead, the cited portions
of the '611 patent merely describe a preferred embodiment in which this
configuration is used, but does not require or define the shroud to be so
limited to this arrangement. The specification instead utilizes qualifying
terms such as "preferred embodiment," "generally" and "preferably." (See
reproduced portions of the specification in ABPO 16). The claims
themselves do not require that the motor shroud be separate and distinct
from other components of the vacuum, or be made of a material which
differs from that of the vacuum cleaner housing. The only recited function
of the shroud is that it encloses the suction motor and air is drawn
therethrough. We also note that making elements of a device integral or
separable is generally considered to be an obvious design choice and does
not render an invention patentable. See In re Larson, 340 F.2d 965, 968
(CCPA 1965). Whereas some benefits of providing a separate shroud are
argued, we observe that the claims do not recite limitations corresponding
thereto, nor does the specification mandate such restrictive reading of the
recited shroud.
The Patent Owner further argues that the partition sections of Schmitz
and Bowerman do not enclose the suction motor because they provide an
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exhaust port or discharge opening (ABPO 15-16). However, we observe
that the specification of the '611 patent describes that the shroud includes an
outlet through which the air exits (col. 6, ll. 13-16). To the extent that the
Patent Owner may be arguing that there is no final filter after the shroud, the
Examiner has relied on Bowerman for disclosing such a final filter which is
positioned to filter the air discharged from the vacuum cleaner to the
surroundings (RAN 37).
Hence, we agree with the Examiner's finding that Schmitz discloses a
motor shroud that performs the recited function. The Examiner's optional
finding that Bowerman also discloses a shroud (RAN 37) is moot.
Correspondingly, we sustain the Examiner's rejection of claim 20. However,
as noted, because claim 21 ultimately depends from claim 13, the rejection
of claim 21 in Ground 34 is not sustained.

Claims 24 and 25
Ground 34 rejects, inter alia, dependent claims 24 and 25 that recite
"the air exits the vacuum cleaner through a laterally oriented airflow opening
along the side of the final filter." The Examiner asserts that the limitation
"side of the final filter" does not identify the particular "side." (RAN 37, 48).
As a result, if the side refers to "the inside of the airflow openings" of the
filter, Bowerman renders the claims obvious since "the air exits the vacuum
cleaner through laterally oriented airflow openings 81 along the side of the
final filter of Bowerman." (Id.).
The Patent Owner disagrees and argues Bowerman fails to disclose
the limitation recited in these claims because its exhaust port 104 is located
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on the lower side of housing and would scatter dirt and dust, whereas the
claimed laterally oriented airflow opening along the side of the final filter
results in a convoluted airflow path that diffuses the exiting air and reduces
scattering of dirt and dust as well as noise (ABPO 17-18). The Patent
Owner also cites to various portions of the specification of the '611 patent to
contend that the pertinent limitation is expressly defined therein (ABPO 18).
These arguments are not persuasive. We initially observe that the
cited portions of the '611 patent do not provide a definition of the limitation
as asserted by the Patent Owner, but rather, merely describe the disclosed
embodiment. Whereas the Patent Owner appears to rely on the specific
embodiment of the final filter illustrated in the drawings of the '611 patent,
as note by the Examiner, the claim does not specify which of the surfaces of
the final filter corresponds to the recited "side." In this regard, a particular
embodiment appearing in the written description must not be read into the
claim if the claim language is broader than the embodiment. See Superguide
Corp. v. DirecTV Enterprises, Inc., 358 F.3d 870, 875 (Fed. Cir. 2004).
Moreover, we also observe that the final filter 60 as disclosed in the
specification of the '611 patent generally refers to a filter element 490 in
combination with a structure which houses the filter element and directs the
airflow after the filter element, and not to the filter element 490 by itself (see
col. 7, l. 67-col. 8, l. 5; Figs. 2-2B, 4-4B, 6, 7). Thus, we find no error in the
Examiner's finding that Bowerman satisfies the recited limitation, where
Bowerman discloses a portion of the vacuum housing that directs the air to a
laterally oriented airflow along the side thereof which has the filter element
(see Figs. 1-3).
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In view of the above, we sustain the Examiner's rejection of claim 24.
However, because claim 25 ultimately depends from claim 13, the rejection
of which is not sustained, rejection of claim 25 of Ground 34 is not
sustained.

Claims 26 and 27
Ground 39 rejects dependent claims 26 and 27, which require that the
final filter is a HEPA filter. The Examiner relies on Bowerman for
disclosing final filter capable of filtering less than one micron, and further
relies on Yonkers for disclosing a HEPA filter (RAN 39-40, 53; see also
RAN 50-52). The Examiner concludes that it would have been obvious to
use a HEPA final filter to clean the discharged air (RAN 40). The Patent
Owner argues that Yonkers does not teach a HEPA filter that can be
combined with the prior art to be a final filter because it is upstream of the
motor which automatically seals during use, whereas a final filter must be
sealed against exhaust pressure and temperature (ABPO 18).
We are not persuaded by the Patent Owner's argument. As stated by
the Examiner, Bowerman discloses an airtight final filter assembly
downstream of the motor, which provides filtration of less than one micron
for the discharged air (col. 8, l. 43-col. 9, l. 33). We agree with the
Examiner that it would have been obvious to provide a final filter assembly
as disclosed in Bowerman with HEPA filtration such as that suggested in the
vacuum of Yonkers. The Patent Owner's argument that the filter of Yonkers
would not be suitable for use as a final filter is unpersuasive because it is
based on bodily incorporation, which fails to take into consideration the
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teachings of these references, and the Examiner's rejection is based on
making the final filter as taught in Bowerman a HEPA filter. See In re
Keller, 642 F.2d 413, 425 (CCPA 1981) ("The test for obviousness is not
whether the features of a secondary reference may be bodily incorporated
into the structure of the primary reference; nor is it that the claimed
invention must be expressly suggested in any one or all of the references.
Rather, the test is what the combined teachings of the references would have
suggested to those of ordinary skill in the art").
In view of the above, we sustain the Examiner's rejection of claim 26.
However, because claim 27 ultimately depends from claim 13, the rejection
of which is not sustained, rejection of claim 27 in Ground 39 is not
sustained.

Issue 7: Secondary Considerations Evidence
Any initial obviousness determination is reconsidered anew in view of
the proffered evidence of nonobviousness. See In re Eli Lilly & Co., 902
F.2d 943, 945 (Fed. Cir. 1990). A "nexus" must be established between the
merits of the claimed invention and the evidence of secondary
considerations in order for the evidence to be given substantial weight. See
In re GPAC, Inc., 57 F.3d 1573, 1580 (Fed. Cir. 1995). As to commercial
success, the nexus requirement requires that the patentee establish a factually
and legally sufficient connection between the evidence of commercial
success and the claimed invention so that the evidence is of probative value
in the determination of nonobviousness. Demaco Corp. v. F. Von
Langsdorff Licensing Ltd., 851 F.2d 1387, 1392 (Fed. Cir. 1988). The
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patentee has the burden of proof of establishing a nexus between the claimed
invention and evidence of commercial success. Id. The patentee must
demonstrate that the successful product is the invention disclosed and
claimed in the patent, and that the success is due to the merits of the claimed
invention. J.T. Eaton & Co. v. Atlantic Paste & Glue Co., 106 F.3d 1563,
1571 (Fed. Cir. 1997); see also Demaco, 851 F.2d at 1392-93.
The Patent Owner argues that secondary considerations evidence of
commercial success and copying by infringers demonstrate the non-
obviousness of the claimed invention, and that the Examiner's previous
consideration of the evidence is inadequate (ABPO 20). The Patent Owner
refers to evidence such as the Declaration of Komer dated May 2, 2010
(hereinafter "Decl. of Komer II") as establishing that "since 1996, over 80%
current vacuum cleaners of the type referred to in the '611 patent have come
to use the claimed invention," and that manufacturers of the vast majority of
vacuum cleaners copy or license "the claimed invention for use in vacuum
cleaners that meet each element of one or more claims of the '611 patent."
(ABPO 19-20). Mr. Komer is Senior Vice-President of Thermol Corp, the
exclusive licensee of the ‘611 patent (Decl. of Komer II, ¶¶ 1-2.) The Patent
Owner also asserts that because Examiner's consideration of the submitted
evidence is not set forth in the RAN, the Examiner has abandoned the
previous arguments with respect to the evidence (Reb. Br. PO 1-2).
The Examiner's consideration of the Patent Owner's submitted
evidence is set forth in the Action Closing Prosecution dated March 2, 2010
(hereinafter "ACP I"), ¶¶ 128-137; Action Closing Prosecution dated
October 28, 2010 (hereinafter "ACP II"), ¶¶ 164-171, and the Non-Final
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Action dated March 23, 2007 (hereinafter "Non-Final"), pages 67-78. We
find no support in the record as to the Patent Owner's assertion that the
Examiner has abandoned the prior considerations of the secondary
considerations evidence, and further observe that the claims remain rejected
by the Examiner despite the submitted evidence. To the extent the Patent
Owner is objecting to the adequacy of the RAN, such formality matters are
petitionable, not appealable.
In considering the secondary considerations evidence, the Examiner
found, inter alia, that "[a]n affidavit or declaration attributing commercial
success to a product or process 'constructed according to the disclosure and
claims of [the] patent application' or other equivalent language does not
establish a nexus between the claimed invention and the commercial success
because there is no evidence that the product or process which has been sold
corresponds to the claimed invention, or that whatever commercial success
may have occurred is attributable to the product or process defined by the
claims." (Non-Final 73; see also, ACP I, ¶ 135; ACP II, ¶¶ 165, 168). The
Examiner further found that the Patent Owner failed to demonstrate that the
commercial vacuums such as EuroPro, Oreck and Ryno, necessarily had the
structural limitations required by the claims of the '611 patent (ACP I ¶¶
133, 136-137; Non-Final 75-78).
Thus, we understand the Examiner's position to be, inter alia, that the
Patent Owner has not sufficiently demonstrated that the device sold by
licensee Thermtrol asserted to be commercially successful actually embodies
the claimed invention, and has not shown that the commercially available
vacuums relied upon by the Patent Owner as demonstrating copying, in fact,
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satisfies the limitations of the claims. We agree with the Examiner that the
submitted evidence is insufficient to establish non-obviousness.
Setting aside the fact that the claims of the '611 are directed vacuum
cleaners and not merely to thermal cutoff assemblies to which much of the
submitted evidence is directed, we initially note that it is not clear from the
record what product of Thermtrol is being asserted to be commercially
successful. The two Declarations of Komer and Exhibit B relied upon by
the Patent Owner as establishing commercial success, do not identify what
product is being referred to or is encompassed by the sales information, but
rather, merely generally refer to Thermtrol's thermal cutoff assemblies that
are said to be constructed in accordance with the subject patent (Decl. of
Komer I, ¶¶ 12, 13; Decl. of Komer II, ¶¶ 13, 14).
The Declaration of Sepke appears to indicate that the Thermtrol 7AM
family of devices is the product to which the declarations of Komer rely in
view of the fact that Sepke discusses vacuums having a Thermtrol 7AM
device as being covered by the '611 patent and evincing commercial success
(see, e.g., Decl. of Sepke, ¶¶ 25, 30, 33, 37). A brochure regarding
Thermtrol 7AM was submitted as Exhibit 10 of the Declaration of Finnegan
and Keim which characterizes the Thermtrol 7AM device as "the motor
switching element in the '611 patent and sold by Thermtrol to vacuum
cleaner manufacturers for incorporation into the patented invention." (Decl.
Finnegan and Keim dated June 24, 2009, ¶ 84).
However, even if we infer that Thermtrol 7AM family of devices is
what the Patent Owner considers to be the commercially successful product,
the Patent Owner has not demonstrated that Thermtrol 7AM device in its
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brochure is the invention claimed in the '611 patent, at least with respect to
the limitations regarding the thermal cutoff assembly and its switching
element. As the Examiner noted, the Patent Owner and the declarants assert
that Thermtrol's thermal cutoff assemblies are "constructed in accordance
with the '611 patented invention" or "made in accordance with the claims of
the '611 patent." (Decl. of Komer I, ¶¶ 12, 13; see also Decl. of Finnegan
and Keim dated June 24, 2009, ¶ 84). However, we observe that it is not
readily apparent how the device depicted in Thermtrol 7AM Brochure
functions to open and close the power circuit in the manner recited in the
claims. We are not directed to any objective evidence that factually
demonstrates that the device depicted in Thermtrol 7AM Brochure opens
and closes the power circuit so as to correspond to the claims.
In its technical analysis, the declaration of Sepke considers Thermtrol
7AM devices to be the "thermal cutoff assembly" recited in the claims, and
considers how the thermal cutoff assembly of numerous commercially
available vacuum cleaners operates (see, e.g., Decl. of Sepke, ¶ 25-28, 33-
35).17 However, the declaration does not remedy the above noted
evidentiary deficiency as to Thermtrol 7AM devices, but instead, merely
states that it is the declarant's "understanding" that the thermal cutoff
assembly includes a switching element and is in accordance with the claims
of the '611 patent (see, e.g., Decl. of Sepke, ¶ 26, 34, 41).

17 As previously noted, the Thermtrol 7AM family of devices was also
asserted by declarants Finnegan and Keim to be "the motor switching
element in the '611 patent" instead of a thermal cutoff assembly (see Decl. of
Finnegan and Keim, dated June 24, 2009, ¶ 84). This inconsistency further
highlights the inadequacy in the Patent Owner's burden of demonstrating
that Thermtrol 7AM device is the invention claimed in the '611 patent.
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This deficiency is additionally problematic in the Declaration of
Sepke which, as evidence of commercial success, relies on commercially
available vacuum cleaners that have a thermal cutoff assembly not
specifically identified as being Thermtrol 7AM that are also said to be
constructed according to the claims of the '611 Patent, but which require
disconnection from a power source in order for it to reset (Decl. of Sepke, ¶¶
55-60, 103-119). However, as advocated by the Patent Owner and discussed
supra, prior art devices of Hofsäss, Müller '587 and Tabei operate similarly
but do not include a switching element that opens and closes the power
circuit in the manner recited in the claim. In other words, while the
identified commercially available vacuum cleaners may generally operate so
as to require disconnection from the electrical power source to resume
operation, this functionality does not necessitate a switching element that
opens and closes the power circuit as recited in the claims, and is not a
reliable indicator as to the presence thereof.
Finally, the assertions of copying and infringement as set forth in
Declaration of Komer are not substantiated by supporting evidence together
with analysis of the competitor's products (see Decl. of Komer I, ¶¶ 17-19;
Decl. of Komer II, ¶¶ 18-20). In the absence of supporting evidence, such
assertions of copying and infringement are of little probative value in
demonstrating non-obviousness.
There is a substantive difference between asserting that a particular
product satisfies the language of the claim in declarations, and
demonstrating it through objective evidence. Assertions devoid of evidence
in support thereof can only be given little weight. For example, absent an
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explicit analysis, it is unclear how the declarants arrived at the determination
that the device sold by Thermtrol fell within the scope of the claim. The
patentee has the burden of proof of demonstrating that the successful product
is the invention disclosed and claimed in the patent, and setting forth a nexus
between the claimed invention and commercial success. Demaco, 851 F.2d
at 1392-93; J.T. Eaton, 106 F.3d at 1571. The evidence presented by the
Patent Owner does not adequately satisfy this burden.
Therefore, in considering the appropriate weight that can be given to
the evidence, we agree with the Examiner's conclusion that the Patent Owner
has not sufficiently shown non-obviousness through evidence of commercial
success and copying.

D. Orders With Respect to Appeal of the Patent Owner
The grounds of rejection of the Examiner appealed by the Patent
Owner are AFFIRMED-IN-PART as follows:
1. Grounds 8-10, 12-17, 26, 30-32, 35 and 36 are REVERSED.
2. Ground 19:
a. Rejection of claims 1, 2, 5-12 and 16 is AFFIRMED.
b. Rejection of claims 13-15 and 17 is REVERSED.
3. Ground 20:
a. Rejection of claims 1, 2, 5-12 and 16 is AFFIRMED.
b. Rejection of claims 13-15 and 17 is REVERSED.
4. Ground 34:
a. Rejection of claims 18, 20, 22, 24, and 28 is AFFIRMED.
b. Rejection of claims 19, 21, 23, 25 and 29 is REVERSED.
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5. Ground 39:
a. Rejection of claim 26 is AFFIRMED.
b. Rejection of claim 27 is REVERSED.

CROSS-APPEAL OF REQUESTER
A. Proposed Rejections Not Adopted or Withdrawn18
The Requester cross-appeals the Examiner's decision to not adopt or
withdraw the following proposed grounds of rejection of various claims
under 35 U.S.C. § 103 as being obvious based on the combination of the
noted evidence:
21. Claims 5, 6 obvious over Schmitz and Limitor Q6219;
22. Claims 5, 6 obvious over Schmitz and Limitor Y7220;
24. Claims 5, 6 obvious over Schmitz, Limitor Overload Protector
Brochure21 and APA; and
28. Claims 5, 6 obvious over Schmitz, Limitor General Brochure22
and APA.

18 We utilize the same numbering of the grounds of rejections not adopted or
withdrawn as used by the Examiner (RAN 5-6) for clarity.
19 Limitor brochure entitled "New Overload (Over temperature) Protector
<>" (hereinafter "Q62 Brochure").
20 Limitor brochure entitled "Fast Temperature-Rise with Limitor Y72
Safely in Hand" (hereinafter "Y72 Brochure").
21 Limitor brochure entitled "State of the Art H.V. Logic Thermal Overload
Protector" (hereinafter "Overload Protector Brochure").
22 Limitor brochure entitled "Always in the green zone" (hereinafter
"General Brochure").
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B. Analysis
The Requester contends that the Examiner erred in not adopting the
proposed grounds of rejection for claims 5 and 6 based on the combination
of Schmitz together with one of Limitor brochures (Q62, Y72, Overload
Protector, and General brochures as identified supra. We address these
proposed rejections together because the issues raised by the Limitor
Brochures are substantively the same and the Requester has argued these
proposed rejections together in its cross-appeal brief.
The Examiner concluded that a person of ordinary skill in the art
would not combine any of the devices disclosed in Limitor brochures
because their electrical current capacity is ill-suited for conventional vacuum
motors that operate in 10 Amps and can spike to 40 Amps during motor lock
(RAN 31, 32). The Patent Owner agrees with the Examiner's analysis that
Limitor devices are ill-suited for vacuums and asserts that the disclosures are
only aspirational (Resp. Br. PO 10). The Patent Owner also argues that the
Limitor brochures do not provide sufficient detail to determine whether they
including a switching element that is in electrical association with the
conductors as recited by claims 5 and 6 (Resp. Br. PO 9). The Patent Owner
further argues that the Limitor brochures are undated and prior art status
speculative and inadequately supported by declarations in evidence (Resp.
Br. PO 2-6).
The Requester argues that the Limitor brochures are prior art as
established by declarations and submitted dated evidence (Reb. Br. R 3-5).
The Requester also argues that the Examiner erred because the Limitor
brochures specifically teaches the use of the thermal protectors in vacuum
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cleaners (CABR 10), nothing in the claims specify particular power
requirement (CABR 11), and in European where electricity is 220-240V,
only half current drawn and thus, the lower current handling capacities
makes sense for Limitor devices that emanate from Europe and would make
no difference in obviousness analysis as the claims do not recite a current
capacity requirement (CABR 10-11; Reb. Br. R 5-6).
In our view, these proposed grounds of rejection based on the various
Limitor brochures are deficient and we decline to adopt them as a new
ground of rejection under 37 C.F.R. § 41.77(b). As discussed supra relative
to the Patent Owner's appeal, the claims require a thermal cutoff assembly
with a switching element in electrical association with conductors wherein
the switching element opens and closes the electrical power circuit. While
each of the Limitor brochures disclose a switch that operates to disconnect
from a power source upon reaching a designed temperature, and further
includes a self-holding feature that maintains the disconnection until it is
reset by interrupting the electrical power source, this functionality does not
necessitate a switching element that opens and closes the power circuit as
recited in the claims for the reasons already discussed with respect to the
prior art devices of Hofsäss, Müller '587 and Tabei.
None of the Limitor brochures disclose the level of detail necessary to
determine the presence of such a switching element that is necessitated by
the claims. In particular, while both Overload Protector Brochure and Y72
Brochure include a small drawing that appear to illustrate the construction
the disclosed devices (see Overload Protector Brochure, drawing under
"Technical Data"; Y72 Brochure, "Diagram 2"), these brochures lack any
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explanation as to the illustrated components that are pertinent to determining
the presence of the claimed switching element that opens and closes the
power circuit. The Q62 Brochure and General Brochures merely include
schematic diagrams (see Q62 Brochure, pg. 1; General Brochure, pgs. 4, 5)
which do not provide information as to the construction of the devices
disclosed therein, such schematic diagrams being inadequate to establish the
inclusion of a switching element as recited in the claims.
In view of the above, the Requester's proposed grounds of rejection
based on the various Limitor brochures are deficient and we affirm the
Examiner's refusal to adopt them.

C. Orders With Respect to the Cross-Appeal of the Requester
The Examiner's refusals to adopt Grounds 21, 22, 24 and 28 cross-
appealed by the Requester are AFFIRMED.

Requests for extensions of time in this inter partes reexamination
proceeding are governed by 37 C.F.R. §§ 1.956 and 41.77(g).

AFFIRMED-IN-PART

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PATENT OWNER:
COOLEY LLP
ATTN: PATENT GROUP
1299 PENNSYLVANIA AVE, NW
SUITE 700
WASHINGTON, DC 20001

THIRD PARTY REQUESTER:

PETER C. SCHECHTER
EDWARDS ANGELL PALMER & DODGE
P.O. BOX 55874
BOSTON, MA 02205

cu