Ex Parte SMITH

Patent Trial and Appeal Board

Mar 7, 2019

13649648 (P.T.A.B. Mar. 7, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/649,648 10/11/2012
28268 7590 03/08/2019
Stanley Black & Decker, Inc.
6201 Greenleigh Avenue, MR045
Middle River, MD 21220
FIRST NAMED INVENTOR
Kevin SMITH
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
P-US-CDIY-1083 4795
EXAMINER
SCRUGGS, ROBERT J
ART UNIT PAPER NUMBER
3723
MAIL DATE DELIVERY MODE
03/08/2019 PAPER
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte KEVIN SMITH
Appeal2017-003769
Application 13/649,648
Technology Center 3700
Before EDWARD A. BROWN, GEORGE R. HOSKINS, and
SEAN P. O'HANLON, Administrative Patent Judges.
HOSKINS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Kevin Smith ("Appellant") 1 appeals under 35 U.S.C. § 134 from the
Examiner's decision rejecting claims 1-14 in this application. 2 The Board
has jurisdiction over the appeal under 35 U.S.C. § 6(b ).
We REVERSE.
1 Black & Decker Inc. is the Applicant and is identified as the real party in
interest. 37 C.F.R. § 1.46; Br. (filed Mar. 8, 2016), 1.
2 The Examiner objects to claim 15 as dependent upon a rejected based
claim, but determines claim 15 would be allowable if rewritten in
independent form. See Final Act. ( dated Sept. 2, 2015), 7.
Appeal2017-003769
Application 13/649,648
CLAIMED SUBJECT MATTER
Claim 1 illustratively recites:
1. A cyclonic separation apparatus for a vacuum cleaner, the
cyclonic separation apparatus comprising:
a cyclone with a longitudinal central axis;
a discharge nozzle arranged at a longitudinal end of the
cyclone;
an air inlet port through a side of the cyclone, wherein the air
inlet port is arranged tangentially to the cyclone;
an air outlet port through an opposite longitudinal end of the
cyclone; and
a dirt container in communication with the cyclone,
wherein the dirt container comprises:
a base wall penetrated by the discharge nozzle;
a top wall spaced apart from the base wall; and
a perimeter wall interposing the base wall and the top wall;
wherein the dirt container is arranged to convey air flow from
the cyclone in an elongate circuit defined by the perimeter wall,
wherein the elongate circuit has an [sic] generally oval shape
having a first curved portion with a first radius, and a second
curved portion with a second radius, wherein the first radius is
smaller than the second radius, wherein the first and second
curved portions are connected by generally flat portions,
wherein, in use, air flow passes outbound away from the
discharge nozzle in proximity to the first curved portion of the
perimeter wall and is redirected by the second curved portion of
the perimeter wall to tum inbound towards the discharge nozzle.
Br. 19 (Claims App.).
REJECTIONS ON APPEAL
Claims 1-8 and 12-14 stand rejected under 35 U.S.C. § I02(b) as
anticipated by Conrad '194 (US 2008/0196194 Al, pub. Aug. 21, 2008).
Claims 1-8 and 12-14 stand rejected under 35 U.S.C. § I03(a) as
unpatentable over Conrad '194.
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Application 13/649,648
Claims 9--11 stand rejected under 35 U.S.C. § I03(a) as unpatentable
over Conrad '194, in view of either West (US 2003/0000186 Al, pub.
Jan. 2, 2003) or Conrad '258 (US 2012/0222258 Al, pub. Sept. 6, 2012).
ANALYSIS
A. Anticipation by Conrad '194 (claims 1-8 and 12-14)
Claim 1 recites a dirt container "arranged to convey air flow ... in an
elongate circuit defined by the perimeter wall," wherein the circuit has a
"generally oval shape having a first curved portion with a first radius, and a
second curved portion with a second radius," and "wherein the first and
second curved portions are connected by generally flat portions." Br. 19
(Claims App.). Independent claim 12 contains the same limitations. Id. at
21-22.
The Examiner finds Conrad '194 discloses a corresponding dirt
container in two embodiments: a first embodiment shown in Figures 1 a, 2a
and 6, and a second embodiment shown in Figures 1 b, 2b and 7. Final
Act. 3; see Conrad '194 ,r,r 27-28, 31-32, 3 8-39. 3 We consider each
embodiment separately. See, e.g., Net MoneyIN, Inc. v. VeriSign, Inc.,
545 F.3d 1359, 1368-71 (Fed. Cir. 2008) (to anticipate a claimed invention,
a prior art reference "must not only disclose all elements of the claim within
the four comers of the document, but must also disclose those elements
'arranged as in the claim"') (quoting Connell v. Sears, Roebuck & Co.,
722 F.2d 1542, 1548 (Fed. Cir. 1983)).
3 Paragraph 39 of Conrad '194 indicates Figure 7 is a perspective view of
the apparatus of Figure 2a, but an inspection of the Figures demonstrates
Figure 7 is a perspective view of the apparatus of Figure 2b.
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Application 13/649,648
Conrad '194 Figures 1 a, 2 a, and 6
The first embodiment of Conrad '194 is representatively illustrated in
Figures 2a and 6. This apparatus includes cyclonic cleaning stage 116 to
separate water and/or dirt from an airflow entering at dirty fluid inlet 112,
and dirt chamber 144 to collect the water and/or dirt. Conrad '194 ,r,r 41--42,
46. Dirt chamber 144 is bounded by top wall 152, bottom wall 154, and
sidewall(s) 156, which form "two substantially rounded lobes having curved
sidewalls 156." Id. ,r,r 46, 49 (emphases added).
The Examiner finds the left-side lobe (underneath cyclonic cleaning
stage 116) contains the first curved portion of claim 1, and the opposite
right-side lobe contains the second curved portion of claim 1. Final Act. 3;
Adv. Act. ( dated Dec. 18, 2015). The Examiner finds those curved portions
are connected by generally flat portions, corresponding to the "bottom flat
portions" of sidewall 156 in Figure 2a, or "formed at" panel 166 in Figure 6.
Final Act. 3; Adv. Act; Ans. (dated Aug. 23, 2016), 3-5 (annotating Figs. 2a
and 6 to identify "flat" portions in the Figures).
Appellant responds that the Examiner errs because the dirt container
shown in Figures 2a and 6 has "a figure '8' (e.g. 'pinched' in the middle)
like configuration where the walls are ... completely curved with no
straight portions (Fig. 2a)." Br. 10 (emphasis added). Thus, Appellant's
view is that "the combination of 'curved portion[s]' and 'flat portions,' [is]
lacking in Conrad [' 194]." Id.
We agree with Appellant. As reflected in Figures 2a and 6 of
Conrad '194, sidewall 156 is continuously curved around the entire elongate
circuit defined by sidewall 156, including at the pinched middle portion that
connects the left and right lobes of the circuit. The Examiner identifies the
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Application 13/649,648
pinched middle portion of dirt chamber 144, perhaps particularly relying on
the inwardly sloping bottom portion of sidewall 156 at the pinched middle
portion, as being a "[f]lat portion[]" connecting the left and right lobes.
Ans. 4 (annotation to Fig. 2a).
We appreciate that sidewall 156 in Figures 2a and 6 of Conrad '194
has no radius of curvature in the vertical direction. See, e.g., Conrad '194,
Fig. 2a (at the cross-sectional cut line). We further appreciate that the
inwardly sloping bottom portion of sidewall 156, which leads to bottom
wall 154, similarly has no radius of curvature in its slanting direction. See
id. However, we determine that these properties of sidewall 156 in
Figures 2a and 6 of Conrad '194 do not establish that sidewall 156 is "flat"
at the pinched middle portion, as that term is used in claim 1.
The Examiner's finding rests upon an unreasonable construction of
the claim terms "curved" and "flat," because it is inconsistent with
Appellant's Specification.
[U]nder the broadest reasonable [claim] interpretation, the
Board's construction "cannot be divorced from the specification
and the record evidence," In re NTP, Inc., 654 F.3d 1279, 1288
(Fed. Cir. 2011 ), and "must be consistent with the one that those
skilled in the art would reach," In re Cortright, 165 F.3d 1353,
1358 (Fed. Cir. 1999). A construction that is "unreasonably
broad" and which does not "reasonably reflect the plain language
and disclosure" will not pass muster.
Microsoft Corp. v. Proxyconn, Inc., 789 F.3d 1292, 1298 (Fed. Cir. 2015)
(quoting In re Suitco Surface, Inc., 603 F.3d 1255, 1260 (Fed. Cir. 2010)).
Here, Appellant's Figure 24 illustrates an elongate circuit defined by
perimeter wall 522 and comprising two curved portions 522b, 522d
connected by two flat portions 522a, 522c. See Spec. ,r 169 (amended
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Application 13/649,648
Dec. 2, 2015). That is, portions 522b and 522d are curved, and therefore not
flat, even though they have no radius of curvature in the vertical direction.
See, e.g., Appellant's Figs. 23, 24, 26, 27. Thus, we conclude that
sidewall 156 in Figures 2a and 6 of Conrad '194 is, likewise, curved and not
flat, even though the sidewall has no radius of curvature in the vertical
direction. The Examiner's contrary finding is inconsistent with Appellant's
Specification.
The Examiner alternatively relies on a "second interpretation,"
identifying "the width portion of [ Conrad '194 's plate] 166 as being the flat
portion." Ans. 3 (description), 5 (annotation to Fig. 6); Conrad '194 ,r 57.
However, the Examiner's annotations in support of this second interpretation
rest upon the same claim construction of "flat" as the first interpretation
discussed above. See Ans. 5. Moreover, to the extent the Examiner intends
to rely on the flat bottom wall 154 of plate 166 as comprising the claimed
"generally flat portions," the Examiner errs because bottom wall 154 is not
part of the elongate circuit defined by perimeter wall 156, as required by
claim 1.
Thus, we conclude the Examiner errs in finding the apparatus
illustrated in Figures 1 a, 2a and 6 of Conrad '194 anticipates independent
claim 1 and its dependent claims 2-8, and independent claim 12 and its
dependent claims 13 and 14.
Conrad '194 Figures lb, 2b, and 7
The second embodiment of Conrad '194 is representatively illustrated
in Figures 2b and 7. In this apparatus, dirt chamber 144 is bounded by
sidewall(s) 156 forming "two lobes which comprise substantially straight
sidewalls 156." Conrad '194 ,r,r 46, 49 (emphasis added).
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The Examiner finds the left-side lobe (underneath cyclonic cleaning
stage 116) contains the first curved portion of claim 1, and the opposite
right-side lobe contains the second curved portion of claim 1. Final Act. 3;
Adv. Act. The Examiner finds those curved portions are connected by
generally flat portions, corresponding to the "bottom flat portions" of
sidewall 156 in Figure 2b. Final Act. 3; Adv. Act; Ans. 3--4 (annotating
Fig. 2b to identify two "[ f]lat portions").
Appellant responds that the Examiner errs because the dirt container
shown in Figures 2b and 7 has "a figure '8' ( e.g. 'pinched' in the middle)
like configuration where ... the walls are completely straight lines with no
curved portions." Br. 10 (emphases added). Thus, Appellant's view is that
"the combination of 'curved portion[s]' and 'flat portions,' [is] lacking in
Conrad [' 194]." Id. Further according to Appellant, even if a curved
portion were found to be present in these Figures, "the straight portions 156a
and 156b would necessarily be a part of the curved portions, and therefore
not eligible to be the separate 'generally flat portions' that connect to the
curved portions." Id.
We agree with Appellant. As reflected in Figures 2b and 7 of
Conrad '194, sidewall 156 is comprised of several flat panels that meet at
angles, to define an elongate circuit including a pinched middle portion that
connects left and right lobes of the circuit. Each one of the individual
sidewall panels is flat; none is curved. We appreciate that the respective
panels defining the two lobes combine to define an airflow pathway that is
"curved," in the sense that an incoming airflow on one side of a lobe is
turned around to exit the lobe on the opposite side of the lobe. See
Conrad '194, Figs. 2b and 7. However, we agree with Appellant's argument
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Application 13/649,648
that even if such a collection of flat panels were found, in combination, to
define a "curved portion" of an elongate circuit as recited in the claims, then
a necessary consequence of such a finding is that flat panels 156a and 156b
also combine to define a "curved portion." In particular, either
(a) panel 156a is part of the right lobe's curved portion, and panel 156b is
part of the left lobe's curved portion, thereby leaving no flat portion
connecting the two lobes, or (b) panels 156a and 156b combine to form a
curved portion that connects the left and right lobes. Either way, there is no
generally flat portion connecting two curved portions, as claimed.
Thus, we conclude the Examiner errs in finding the apparatus
illustrated in Figures 1 b, 2b and 7 of Conrad '194 anticipates independent
claim 1 and its dependent claims 2-8, and independent claim 12 and its
dependent claims 13 and 14.
B. Obviousness over Conrad '194 (claims 1---8 and 12-14)
In the event Conrad '194 is found not to disclose a generally
oval-shaped dirt container, the Examiner determines it would have been
obvious to modify the dirt containers of Conrad '194 to be oval-shaped.
Final Act. 3--4. This alternative rejection, however, does not address the
deficiencies of Conrad '194 noted above. See id. That is, the Examiner does
not explain why it would have been obvious to modify the curved
sidewall 156 of the Figure 2a embodiment to include generally flat portions
connecting first and second curved portions, or to modify the flat sidewall
portions 156 of the Figure 2b embodiment to include generally flat portions
connecting first and second curved portions. Therefore, we do not sustain
the rejection of claims 1-8 and 12-14 as having been obvious over
Conrad ' 194.
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Application 13/649,648
C. Obviousness over Conrad '194 and either West or Conrad '258
(claims 9--11)
The Examiner's additional consideration of dependent claims 9--11,
and of West and Conrad '258, does not address the deficiencies of
Conrad ' 194 identified above in relation to their common parent independent
claim 1. See Final Act. 6-7. Therefore, for the reasons provided above, we
do not sustain the rejections of claims 9--11 as having been obvious over
Conrad '194 and either West or Conrad '258.
DECISION
The Examiner's decision to reject claims 1-14 is reversed.
REVERSED
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