Ex Parte Jiang et al

Patent Trial and Appeal BoardNov 28, 2012

10582908 (P.T.A.B. Nov. 28, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte YONG JIANG, BAS JEROEN OOSTERMAN, BOON KHIAN CHING, KAI HENG KWOK and MOHANKUMAR VALIYAMBATH KRISHNAN ____________________ Appeal 2010-008792 Application 10/582,908 Technology Center 3700 ____________________ Before KEN B. BARRETT, PATRICK R. SCANLON and JILL D. HILL, Administrative Patent Judges. SCANLON, Administrative Patent Judge. DECISION ON APPEAL Appeal 2010-008792 Application 10/582,908 2 STATEMENT OF THE CASE Yong Jiang et al. (Appellants) seek our review under 35 U.S.C. § 134 of the Examiner’s decision rejecting claims 1-8.1 We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. THE INVENTION The claimed subject matter relates to a steam ironing device. Spec. 1, l. 1. Independent claim 1, reproduced below, is illustrative of the subject matter on appeal. 1. A steam ironing device comprising a steam iron having a housing, a heatable soleplate at a bottom side of said housing, and at least one atomization device, said ironing device comprising a water supply device, a steam generator for generating steam, heating means for heating the steam generator, a flow path between the steam generator and the atomizing device, a valve provided in the flow path between the steam generator and the atomizing device, and an electric pump for delivering water from said water supply device to said steam generator, wherein the ironing device comprises control means for controlling a power of the heating means of the steam generator, for controlling a flow rate of the pump, and 1 Appellants also ask us to review the Examiner’s objection to the Specification. App. Br. 10. However, as correctly noted by the Examiner (Ans. 2), that issue is reviewable by petition under 37 C.F.R. § 1.181, and is not within the jurisdiction of the Board. In re Mindick, 371 F.2d 892, 894 (CCPA 1967). See Manual of Patent Examining Procedure (MPEP) §§ 706.01, 1002 and 1201 (8th Ed., Rev. 9, Aug. 2012). Appeal 2010-008792 Application 10/582,908 3 for controlling opening and closing of said valve, said valve being controlled to be open if a ratio between the flow rate (g/min) of the pump and the power (W) of the heating means is in a range of 1:20 to 1:38 to control wetness of steam delivered by the atomizing device otherwise said valve is controlled to be closed. REFERENCES The Examiner relies upon the following prior art references: Maykemper van der Meer Vogelman Netten Di Leta2 US 2,615,265 US 5,042,179 US 5,536,375 US 5,642,579 US 2006/0213092 A1 Oct. 28, 1952 Aug. 27, 1991 Jul. 16, 1996 Jul. 1, 1997 Sep. 28, 2006 THE REJECTIONS Appellants seek review of the following rejections: The rejection of claims 1-8 under 35 U.S.C. § 112, first paragraph, as failing to comply with the written description requirement. The rejection of claims 1-8 under 35 U.S.C. § 112, first paragraph, as failing to comply with the enablement requirement. The rejection of claims 1 and 2 under 35 U.S.C. § 103(a) as being unpatentable over Netten, van der Meer and Maykemper. The rejection of claims 3-8 under 35 U.S.C. § 103(a) as being unpatentable over Netten, van der Meer, Maykemper and Di Leta. The rejection of claims 1 and 2 under 35 U.S.C. § 103(a) as being unpatentable over Netten, van der Meer, Vogelman and Maykemper. 2 We note that the Examiner and Appellants refer to this reference as “Leta.” Appeal 2010-008792 Application 10/582,908 4 The rejection of claims 3-8 under 35 U.S.C. § 103(a) as being unpatentable over Netten, van der Meer, Vogelman, Maykemper and Di Leta. ANALYSIS Rejection of claims 1-8 for failing to comply with the written description requirement The Examiner contends that independent claim 1 does not comply with the written description requirement because the recitation of “otherwise said valve is controlled to be closed” is new matter. Ans. 3-4. Appellants dispute this finding, pointing to several passages in the Specification as providing that the valve is controlled to only be open under conditions of the claimed ratio range and from this it follows that the valve is otherwise closed. App. Br. 17-20. To satisfy the written description requirement, the disclosure must reasonably convey “to those skilled in the art that the inventor had possession of the claimed subject matter as of the filing date.” Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc) (citations omitted). The Examiner has the initial burden of presenting evidence or reasoning to explain why persons skilled in the art would not recognize in the original disclosure a description of the invention defined by the claims. See In re Wertheim, 541 F.2d 257, 263 (CCPA 1976). Although Appellants’ Specification does not expressly state that the valve is closed when the ratio is outside of the claimed range, “the disclosure as originally filed does not have to provide in haec verba support for the claimed subject matter at issue” to satisfy the written description requirement. Purdue Pharma L.P. v. Faulding, Inc., 230 F.3d 1320, 1323 (Fed. Cir. 2000). Based Appeal 2010-008792 Application 10/582,908 5 on the record before us, we cannot find by a preponderance of the evidence that Appellants did not have possession of the claimed invention as of the filing date. Accordingly, we do not sustain the rejection of claims 1-8 under 35 U.S.C. § 112, first paragraph, as failing to comply with the written description requirement. Rejection of claims 1-8 for failing to comply with the enablement requirement The Examiner finds that Appellants’ Specification provides no enabling disclosure of how “the control means controls the opening and closing of a valve dependent on the ratio and otherwise closing [the valve] if the ratio condition is not met.” Ans. 5. When rejecting a claim for lack of enablement, “the [United States Patent and Trademark Office] bears an initial burden of setting forth a reasonable explanation as to why it believes that the scope of protection provided by that claim is not adequately enabled by the description of the invention provided in the specification of the application ….” In re Wright, 999 F.2d 1557, 1561-62 (Fed. Cir. 1993) (citing In re Marzocchi, 439 F.2d 220, 223-24 (CCPA 1971)). The test for compliance with the enablement requirement is whether the disclosure, as filed, is sufficiently complete to enable one of ordinary skill in the art to make and use the claimed invention without undue experimentation. In re Wands, 858 F.2d 731, 737 (Fed. Cir. 1988) (setting forth eight factors to be considered to evaluate whether a disclosure would require undue experimentation). In making the finding of no enabling disclosure, the Examiner has not addressed the Wands factors or otherwise explained why one of ordinary skill in the art would have to engage in undue experimentation to practice Appeal 2010-008792 Application 10/582,908 6 the claimed invention. See Ans. 4-5. Moreover, the Specification discloses that the control means controls opening and closing of the valve and opens the valve when the ratio is within the claimed range. Spec. 1. It does not necessarily follow from this disclosure that undue experimentation would be required to make and use the claimed invention. Therefore, the Examiner has failed to establish a prima facie case of non-enablement of claims 1-8, and we are constrained to reverse the rejection. Rejections of claims 1 and 2 for obviousness The Examiner finds that Netten discloses a steam ironing device that lacks a valve provided between a steam generator and a steam outlet, control means for controlling opening and closing of the valve, and the valve being open if the ratio between the flow rate of the pump and the power of the heating means is in the claimed range. Ans. 8. The Examiner further finds that van der Meer teaches a steam iron having a valve located between the steam generator and the steam outlets (Ans. 8) and contends that van der Meer “fully meets” the limitation of a control means for opening and closing a valve if the ratio is in the claimed range (Ans. 11). The Examiner then concludes it would have been obvious to one of ordinary skill in the art to provide Netten with a steam valve between the steam generator and the steam outlet passages.3 Ans. 11. Appellants argue that van der Meer does not teach a control means that specifically controls the steam valve to open if the ratio between the flow rate and the power is in the claimed range and otherwise controls the 3 The Examiner also concludes that it would have been obvious to provide Netten with an atomization device as taught by Maykemper. Ans. 11. Appellants do not refute this contention. App. Br. 27. Appeal 2010-008792 Application 10/582,908 7 valve to be closed. App. Br. 27-28. We agree with Appellants on this point. There is no indication in van der Meer of controlling the steam valve in response to the ratio between the flow rate and the power. As noted by Appellants (see App. Br. 28; Reply Br. 7), van der Meer discloses closing the steam valve when a position detector indicates the iron is in an unusual position. Van der Meer, col. 4, ll. 16-19. Van der Meer also discloses closing the steam valve at the beginning of the heating-up phase of the control program (van der Meer, col. 9, ll. 17-21) and once the program part that is run when the iron is ready for use, but is not being used, is completed (van der Meer, col. 10, ll. 63-67), but does not disclose closing the valve when a ratio is not within a particular range. Moreover, we disagree that van der Meer discloses operating the iron with a ratio between the flow rate and the power being in a range of 1:20 to 1:30. The Examiner takes the position that van der Meer teaches providing steam starting at a flow rate of 35 g/min at 600 W, being maintained at 15 g/min at 600 W, and an additional setting of 20 or 25 g/min at 600 W and notes that a flow rate of 20 g/min at 600 W would produce a ratio of 1:30 and a flow rate of 25 g/min at 600 W would produce a ratio of 1:24. Ans. 8- 9. However, van der Meer actually states: “[t]he steam level is stabilized at a particular level by supplying an adequate quantity of energy to the tank. For 15 g/min it is 600 W.” Van der Meer, col. 12, ll. 18-20 (emphasis added) (see also van der Meer, col. 10, ll. 49-50). Thus, van der Meer actually discloses supplying 600 W of power only when the flow rate is 15 g/min. There is no clear indication what power level would be used for other flow rates and no reason given to assume that the power level for other flow rates necessarily would be 600 W. Appeal 2010-008792 Application 10/582,908 8 For these reasons, we do not sustain the rejection of claims 1 and 2 under 35 U.S.C. § 103(a) as being unpatentable over Netten, van der Meer and Maykemper. Claims 1 and 2 are also rejected as being unpatentable over Netten, van der Meer, Vogelman and Maykemper, the Examiner providing the additional ground of rejection including Vogelman in the event “it can be argued that van der Meer’ does not disclose [the claimed control means].” Ans. 14. However, the Examiner relies on Vogelman for teaching using an electrically operated valve under control of a microprocessor to control the flow rate of fluid/water during operation of a steam generating apparatus. Ans. 16-17. Vogelman does not disclose opening or closing the valve based on the flow rate to power ratio. Appellants argue that Vogelman does not cure the deficiencies of the Netten, van der Meer and Maykemper combination. App. Br. 30. We agree with the Appellants’ argument and thus do not sustain the rejection of claims 1 and 2 under 35 U.S.C. § 103(a) as being unpatentable over Netten, van der Meer, Vogelman and Maykemper. Rejections of claims 3-8 for obviousness The Examiner finds that the combination of Netten, van der Meer and Maykemper does not include several limitations recited in claims 3-8 but concludes it would have been obvious to one of ordinary skill in the art to modify the combination to provide such features per the teachings of Di Leta. Ans. 12-13. We agree with the Appellants’ assertion that Di Leta does not cure the deficiencies of the Netten, van der Meer and Maykemper combination. App. Br. 29. Accordingly, we do not sustain the rejection of Appeal 2010-008792 Application 10/582,908 9 claims 3-8 under 35 U.S.C. § 103(a) as being unpatentable over Netten, van der Meer, Maykemper and Di Leta. The Examiner also rejects claims 3-8 as being obvious over Netten, van der Meer, Vogelman, Maykemper and Di Leta. Ans. 18. Vogelman is again relied on merely for teaching using an electrically operated valve under control of a microprocessor to control the flow rate of fluid/water during operation of a steam generating apparatus. Id. As noted above, we determine that neither Vogelman nor Di Leta cure the deficiencies of the Netten, van der Meer and Maykemper combination. The rejection of claims 3-8 under 35 U.S.C. § 103(a) as being unpatentable over Netten, van der Meer, Vogelman, Maykemper and Di Leta is thus not sustained. DECISION We reverse the decision of the Examiner rejecting claims 1-8. REVERSED hh