DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
Drawings
The drawings were previously objected to under 37 CFR 1.83(a) as failing to show every feature of the invention specified in the claims. The claim containing the objected to feature has been canceled. Therefore, the objection to the drawings is withdrawn.
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claims 1-5, 9, 11-12, and 15 are rejected under 35 U.S.C. 103 as being unpatentable over Lawson et al. (US PGPub 2019/0183305, "Lawson") in view of Machida (JP 2011010887).
1. Lawson teaches a vacuum cleaner (4) for use with a serviceable filter assembly (44 is serviceable, see Lawson [0085]), wherein the vacuum cleaner is operable between ON and OFF states and comprises:
a cyclonic dust separation device (separator 50 includes two cyclonic separation stages, see Lawson fig. 3 and [0082]-[0083]) which is operable, when the vacuum cleaner is in the ON state, to provide separation of dust from an airflow through the vacuum cleaner (Lawson [0082]-[0083]);
a motor (42) for generating the airflow through the vacuum cleaner, the motor having a motor cover (motor housing 38) provided with at least one fluid opening (90) which defines a part of a fluid flow path for fluid originating from the serviceable filter assembly (air from the separator stages flows through a pre-motor filter 84 of filter assembly 44, through apertures 90 in housing 38, through motor 42, and out a post motor filter 86, see Lawson [0094]). Lawson does not teach the presence of a valve assembly operable between open and closed positions to open and close, respectively, the at least one fluid opening in the motor cover.
However, Machida teaches the use of a filter cleaning mechanism (28) and a valve assembly (26) configured to open and close a fluid opening (23), thereby allowing fine dust from a filter (14) located immediately upstream in a fluid flow path from a motor (10) to fall into a dust collection area (25) when the motor is not actively powered (see Machida figs. 2, 4, and 10, and Machida Translation [0010]).
Furthermore, the opening and flow path taught by Machida would be capable of transmitting liquid, and therefore would be capable of acting as a liquid opening in a liquid flow path for liquid originating from the serviceable filter assembly.
It would have been obvious to one of ordinary skill in the art before the effective filing date to combine the teachings of Machida regarding filter regeneration and valve assemblies with the cleaner of Lawson such that it included a valve assembly positioned on a motor casing (i.e., on a front portion of 38a such that waste was allowed to drop into second dirt collection chamber 78, see Lawson fig. 3) a operable between open and closed positions to open and close, respectively, at least one liquid opening in the motor cover, as doing so would allow for regeneration of the pre-motor filter while reducing re-adhesion to the filter by preventing waste material dropped into a collection area from directly re-adhering to the filter. See Machida Translation [0011].
2. Lawson as modified teaches the vacuum cleaner as claimed in claim 1, wherein the valve assembly is configured such that, when the vacuum cleaner is in the ON state, the valve assembly is in the closed position to prevent the airflow through the at least one liquid opening, and when the vacuum cleaner is in the OFF state the valve assembly is in the open position to open the liquid flow path through the at least one liquid opening (the valve taught by Machida is open when powered off and closed when powered on, see Machida figs. 2, 4, and 10, and Machida Translation [0010]).
3. Lawson as modified teaches the vacuum cleaner as claimed in claim 1, wherein the valve assembly includes a valve member which is received within the motor cover and is movable to open and close the at least one liquid opening in the motor cover when switching between the open and closed positions, respectively (the valve taught by Machida includes valve member 26, which is movable between open and closed positions see Machida figs. 2, 4, and 10; the combination with Lawson would result in the valve member being positioned on a front end of motor cover 38a so as to allow waste to drop into second dirt collection chamber 78, see Lawson fig. 3).
4. Lawson as modified teaches the vacuum cleaner as claimed in claim 3, wherein the valve member is received through a valve opening provided in the motor cover member (valve member 26 occupies a valve opening 23, such a member would include some linkage through the opening such as a hinge, see, e.g., Machida fig. 4).
5. Lawson as modified teaches the vacuum cleaner as claimed in claim 4, but does not explicitly teach that the valve opening is positioned on a central longitudinal axis of the vacuum cleaner.
However, Lawson teaches that the second dirt collection chamber (78) coaxial with a central axis and located radially inwards from an outer dust collection chamber (Lawson fig. 3 and [0083]). Furthermore, because the secondary cyclones (70) occupy an outer radius of the second dirt collection chamber entrance (see Lawson fig. 3), for waste to flow from pre-motor filter (84) into second dirt collection chamber (78), it would have been obvious for one of ordinary skill before the effective filing date to modify the valve opening such that it included a portion positioned on a central longitudinal axis of the vacuum cleaner, as doing so would provide a path for dust to travel from the pre-motor filter to the second dirty collection chamber without being blocked by the secondary cyclones.
9. Lawson as modified teaches the vacuum cleaner as claimed in claim 3, further comprising retaining means to limit movement of the valve member when it moves into the open position (pivot attachment point on valve prevents the valve member from moving outside the designated arc of motion, see, e.g., Machida fig. 4 and Machida Translation [0027]).
11. Lawson as modified teaches the vacuum cleaner as claimed in claim l, comprising a plurality of liquid openings provided in the motor cover (plural outlets for a single filter, see Machida fig. 4).
12. Lawson as modified teaches the vacuum cleaner as claimed in claim 11, but does not explicitly teach that each of the plurality of liquid openings is of arc-shaped form. However,
it has been held that “[a] person of ordinary skill in the art is also a person of ordinary creativity, not an automaton.” KSR International Co. v. Teleflex Inc., 550 U.S. 398, 421, 82 USPQ2d 1385, 1397 (2007) “[I]n many cases a person of ordinary skill will be able to fit the teachings of multiple patents together like pieces of a puzzle.” Id. at 420, 82 USPQ2d at 1397. Office personnel may also take into account “the inferences and creative steps that a person of ordinary skill in the art would employ.” Id. at 418, 82 USPQ2d at 1396.
It would have been obvious for one of ordinary skill in the art before the effective filing date to, in the process of modifying Lawson to implement the valve of Machida, produce openings of arc-shaped form, as the rectangular openings of Machida (see, e.g. Machida fig. 4) are configured for use with a generally rectangular filter shape, while Lawson teaches a cylindrical filter (see Lawson figs. 3-4). In the process of adapting the valve of Machida to the cleaner of Lawson, using arc-shaped openings for the valve would have been logical to one of ordinary skill, as arc-shaped openings would better conform to the shape of the housing and filter.
15. Lawson as modified teaches the vacuum cleaner as claimed in claim l, but although Lawson teaches the presence of a display screen (100) and a set of control members (104a,104b, see Lawson [0042]-[0049]), that reside beneath an uppermost end of the serviceable filter assembly when the vacuum cleaner is in a stowed position (100, 104a, and 104b are positioned inward from end of 44, when positioned such that the end of the cleaner including 100 faces upward, the control members are slightly lower than an uppermost edge of 44, see Lawson figs. 3-4), it does not explicitly teach the presence of a printed circuit board including a controller for the motor, wherein the printed circuit board resides beneath the filter assembly when the vacuum cleaner is in a stowed position.
However, it has been held that “in considering the disclosure of a reference, it is proper to take into account not only specific teachings of the reference but also the inferences which one skilled in the art would reasonably be expected to draw therefrom.” MPEP § 2144.01, citing In re Preda, 401 F.2d 825, 826, 159 USPQ 342, 344 (CCPA 1968).
One of ordinary skill before the effective filing date would understand, given the disclosures from Lawson that the control members and display screen control operation of the motor (Lawson [0044]), that some sort of printed circuit board including a controller for the motor and associated with the explicitly disclosed display/control elements would be present, and that said circuit board would be located somewhere below the uppermost portion of the filter assembly when it was in the stowed position.
Response to Arguments
Applicant's arguments filed 20 May, 2026 have been fully considered but they are not persuasive.
In response to applicant's argument that neither Lawson nor Machida discuss liquid flow, a recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim. Because a structure capable of controlling the flow of dust and air would be capable of controlling the flow of liquid, the prior art structures would be capable of acting as a “liquid opening which defines part of a liquid flow path for liquid originating from the serviceable filter assembly”.
The fact that the inventor has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985).
In response to applicant’s arguments that placing a valve such as that taught by Machida on the fluid openings in the motor cover taught by Lawson would interfere with the airflow path described by Lawson, examiner notes that the rejection specifically described a combination wherein the valve of Machida was placed elsewhere on the motor casing, specifically, on a forward end of the motor casing such that it could release waste collected by the pre-motor filter into the primary chamber. Because applicant’s argument is directed to a different combination than was described, it is unpersuasive.
In response to applicant's additional arguments that the combination of Lawson and Machida would not have resulted in a valve having a portion positioned on a central longitudinal axis of the cleaner, 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. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981). As was noted in the rejection, a person of ordinary skill is a person of ordinary creativity, and would have been able to adapt the teachings from Machida’s rectangular filter to the annular filter and other aspects of vacuum cleaner geometry taught by Lawson to produce the claimed invention.
Allowable Subject Matter
Claims 6-7, 10, and 13-14 remain objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JONATHAN R ZAWORSKI whose telephone number is (571)272-7804. The examiner can normally be reached Monday-Thursday 8:00-5:00, Fridays 9:00-1:00.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Monica Carter can be reached at (571)-272-4475. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/J.R.Z./Examiner, Art Unit 3723
/MONICA S CARTER/Supervisory Patent Examiner, Art Unit 3723
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