Adams, Steven E. et al.

Patent Trials and Appeals Board

May 28, 2020

15380439 - (D) (P.T.A.B. May. 28, 2020)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
15/380,439 12/15/2016 Steven E. Adams 16-197-WI 3310
32118 7590 05/28/2020
LAMBERT SHORTELL & CONNAUGHTON
92 STATE STREET
BOSTON, MA 02109-2004
EXAMINER
TADESSE, YEWEBDAR T
ART UNIT PAPER NUMBER
1717
NOTIFICATION DATE DELIVERY MODE
05/28/2020 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
info@lambertpatentlaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte STEVEN E. ADAMS, ANDREW T. SINCLAIR,
ROBERT J. ROSE, and IAN L. CHURCHER
Appeal 2019-004301
Application 15/380,439
Technology Center 1700
Before JAMES C. HOUSEL, MICHELLE N. ANKENBRAND, and
JULIA HEANEY, Administrative Patent Judges.
HOUSEL, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–7, 10, and 12–21. We have
jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.

1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42(a). Appellant identifies the real party in interest as Worthen
Industries. Appeal Brief (“Appeal Br.”) filed December 4, 2018, at 2.
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Application 15/380,439

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CLAIMED SUBJECT MATTER2
The invention relates to a two component adhesive application system
having a first roller portion for applying a stabilized adhesive to a substrate,
and a second sprayer portion for spraying an activator to destabilize the
adhesive after it is applied to the substrate. Spec. 2:1–3. Appellant discloses
that this system allows a thinner layer of stabilized adhesive to be applied to
the substrate than can be done without stabilized adhesive. Id. at 2:7–9.
Appellant also discloses that the sprayed activator may be applied to a full
area, or substantially less area, of the adhesive application on the substrate.
Id. at 2:10–11.
Claim 1, reproduced below from the Claims Appendix to the Appeal
Brief with the limitation at issue in italics, is illustrative of the claimed
subject matter:
1. An adhesive application apparatus comprising:
a roll applicator configured to roll-apply an adhesive to a
substrate;
an activator sprayer positioned downstream of the
application direction, the activator sprayer positioned in a
direction to spray an adhesive activator on the substrate after
the application of the adhesive; and
wherein the activator sprayer is positioned to cause an
activator spray to contact approximately 5%–50% of the
surface area of the substrate.

2 This Decision also refers to the Specification (“Spec.”) filed December 15,
2016, the Final Office Action (“Final Act.”) dated July 9, 2018, the
Examiner’s Answer (“Ans.”) dated March 6, 2019, and the Reply Brief
(“Reply Br.”) filed May 6, 2019.
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Application 15/380,439

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Independent claim 14 recites an adhesive application conveyor
system including, inter alia, a roll applicator and a plurality of
adhesive applicator sprayers downstream of the roll applicator,
wherein the plurality of sprayers are positioned to spray activator on
approximately 5–50% of the substrate surface area. Appeal Br. 19
(Claim App’x).
REFERENCES
The Examiner relies on the following prior art:
Name Reference Date
MacLaurin US 2,118,212 May 24, 1938
Huber et al. (“Huber”) US 5,670,211 Sept. 23, 1997
Allman et al. (“Allman”) US 6,540,829 B2 Apr. 01, 2003
Doe et al. (“Doe”) US 6,730,411 B1 May 04, 2004
Frezza et al. (“Frezza”) US 7,014,724 B2 Mar. 21, 2006
Lee et al. (“Lee”) US 2008/0105200 A1 May 08, 2008
Parker et al. (“Parker”) US 2011/0311833 A1 Dec. 22, 2011

REJECTIONS
The Examiner maintains, and Appellant requests our review of, the
following rejections:
1. Claims 1, 3–5, 10, and 12 under 35 U.S.C. § 102(a)(1) as
anticipated by or, in the alternative, under 35 U.S.C. § 103 as
unpatentable over Lee;
2. Claims 1–5, 10, and 12 under 35 U.S.C. § 103 as unpatentable over
Huber;
3. Claims 14, 15, and 17–21 under 35 U.S.C. § 103 as unpatentable
over Huber in view of Parker and Doe;
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4. Claims 6 and 16 under 35 U.S.C. § 103 as unpatentable over Huber
alone, or in view of Parker and Doe, and further in view of
Allman;
5. Claim 7 under 35 U.S.C. § 103 as unpatentable over Huber in view
of Frezza; and
6. Claim 13 under 35 U.S.C. § 103 as unpatentable over Huber or Lee
in view of MacLaurin.
OPINION
Rejection 1: Anticipation/Obviousness based on Lee
The Examiner rejects claims 1, 3–5, 10, and 12 under 35 U.S.C.
§ 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. § 103 as
unpatentable over Lee. The Examiner finds that Lee discloses an adhesive
application apparatus comprising a roll applicator configured to roll-apply an
adhesive to a substrate, and an activator sprayer positioned downstream in
the application direction and configured to spray an adhesive activator on the
substrate, “wherein the activator sprayer is capable of causing an activator
spray contact on approximately 5%–50% of the surface of the substrate.”
Final Act. 5. The Examiner concludes that it would have been obvious to
position Lee’s activator sprayer causing an activator spray contact on
approximately 5–50% of the substrate surface “to apply different types of
texture surface on the substrate as desired.” Id.
Moreover, the Examiner finds that the “wherein” clause of claim 1 is
an intended use, and not a structural limitation, of the activator sprayer
positioned over the substrate. Ans. 4. The Examiner finds that as Lee’s
sprayer moves relative to the substrate, the amount of spraying material
coverage varies depending on the length of application time, and the size and
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type of substrate. Id. In this regard, the Examiner finds that Lee teaches
controlling the positioning of the sprayer relative to the substrate and that the
sprayer is automatically controlled. Id. The Examiner further finds that
because Appellant discloses spray coverage may range from 5–100%, “there
is no criticality or unexpected result taught with respect to the application
spray contact between 5%–50% of the surface of the substrate.” Id. at 5. The
Examiner concludes that
it would have been an obvious matter of design choice bounded
by well-known manufacturing constraints and ascertainable by
routine experimentation and optimization to choose these
particular dimensions/ranges because applicant has not disclosed
that the dimensions are for a particular unobvious purpose,
produce an unexpected result, or are otherwise critical, and it
appears prima facie that the process would possess utility using
another dimension.
Id.
Appellant argues that Lee fails to teach a sprayer positioned to cause
5–50% coverage of the substrate surface as required by claim 1. Appeal Br.
8. Appellant contends that the “wherein” clause of claim 1 is a structural
limitation involving the structural positioning of the sprayer, rather than an
intended use recitation. Id. Appellant urges that even if the clause recites a
functional limitation, the recited function imposes a structural limitation on
the configuration of the sprayer such that it must be arranged to function as
claimed. Id. Appellant also contends that Lee is not capable of 5–50%
substrate surface coverage because Lee completely coats the substrate with
sprayed paint and teaches away from less coating coverage. Id. at 10.
According to Appellant, Lee’s automatic control merely turns the sprayer on
when a substrate approaches and turns the sprayer off when the substrate is
not present. Id.
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Appellant’s arguments are persuasive of reversible error in both the
Examiner’s finding of anticipation and the Examiner’s conclusion of
obviousness of claim 1 based on Lee. To begin, we note that claim 1 recites
that “the activator sprayer is positioned to cause an activator spray to contact
approximately 5%–50% of the surface area of the substrate.” Claim 1
(emphasis added). This clause recites that the sprayer performs the function
of causing an activator spray to contact approximately 5–50% of the
substrate surface based on the sprayer’s structural positioning. As such, we
agree with Appellant that the clause at issue recites a structural limitation.3
In addition, Lee teaches that the sprayer’s automatic control operation
is based on the sensor sensing whether or not a substrate is approaching,
thereby operating the sprayer when the substrate approaches a predetermined
position, but not operating the sprayer when the substrate does not approach
the position. Lee ¶ 49. Lee further teaches that this is done to prevent any
unnecessary spraying of the texture paints. The Examiner does not direct us
to any disclosure in Lee teaching or suggesting that only part of the substrate
surface may or should be painted. To the contrary, Lee teaches that the
sensor and control ensure that the substrate is completely coated, without
wasting paint. Lee ¶¶ 18, 62, 63.
With regard to the Examiner’s position that the “wherein” clause of
claim 1 would have been an obvious matter of design choice bounded by
well-known manufacturing constraints and ascertainable by routine
experimentation and optimization, we note that, contrary to the Examiner’s
finding, the “wherein” clause is for a particular purpose. Specifically,

3 We note that claim 1 does not exclude plural sprayers, wherein each
sprayer is positioned to spray only 5–50% of a substrate surface.
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Appellant discloses applying the activator to less than the entire substrate
surface when bonding light or non-porous materials to achieve a bonding
that reinforces the activated adhesive bond area, which may result in less
activator and adhesive use. Spec. 3 ¶ 3, 5 ¶2; see In re Kuhle, 526 F.2d 553,
555 (CCPA 1975) (finding that the use of the claimed feature “would be an
obvious matter of design choice” when it “solves no stated problem” and
“presents no novel or unexpected result” over the disclosed alternatives).
Moreover, the Examiner fails to establish that Lee teaches or suggests that
the substrate area is a result effective variable that would be subject to
routine experimentation and optimization. See In re Antonie, 559 F.2d 618,
620, 195 USPQ 6, 8 (CCPA 1977) (where the parameter optimized was not
recognized in the prior art as one which would affect the results, the
discovery of an optimum value may be unobvious).
Accordingly, we cannot sustain the Examiner’s anticipation and
obviousness rejections of claim 1, and dependent claims 3–5, 10, and 12,
based on Lee.
Rejection 2: Obviousness over Huber
The Examiner rejects claims 1–5, 10, and 12 under 35 U.S.C. § 103 as
unpatentable over Huber. The Examiner finds that Huber discloses an
adhesive application apparatus comprising a roll applicator and an activator
sprayer positioned downstream of the application direction, wherein the
activator sprayer is capable of causing an activator spray contact on
approximately 5–50% of the substrate surface. Final Act. 6. The Examiner
concludes that it would have been obvious to position Huber’s sprayer to
cause an activator spray contact on approximately 5–50% or other
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percentage of the substrate surface to apply different patterns on the
substrate as desired. Id.
As before, the Examiner finds that the “wherein” clause of claim 1 is
an intended use, and not a structural limitation, of the activator sprayer
positioned over the substrate. Ans. 6. The Examiner finds that as Huber’s
sprayer moves relative to the substrate, the amount of spraying material
coverage varies depending on the length of application time, and the size and
type of substrate. Id. at 7. In this regard, the Examiner finds that Huber
provides independent control of the liquid and spray pattern. Final Act. 6.
The Examiner further finds that Huber’s sprayer is positioned over the
substrate in the same manner as in Appellant’s Figure 1. Ans. 7. The
Examiner concludes that the ordinary artisan “can apply spray on the
substrate for couple of seconds, minutes or hours to vary the coverage
depending [on] the size and type of the substrate.” Id.
Appellant argues that Huber fails to teach a sprayer positioned to
cause 5–50% coverage of the substrate surface as claim 1 requires. Appeal
Br. 12. As discussed above, Appellant contends that the “wherein” clause of
claim 1 is a structural limitation involving the structural positioning of the
sprayer, rather than an intended use recitation, which imposes a structural
limitation on the configuration of the sprayer such that it must be arranged to
function as claimed. Id. at 13–14. Appellant also contends that Huber is not
capable of 5–50% substrate surface coverage because Huber completely
coats the substrate with sprayed activator and teaches away from less coating
coverage. Id. at 14.
Appellant’s arguments are persuasive of reversible error in the
Examiner’s conclusion of obviousness of claim 1 based on Huber. As set
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forth above, we note that claim 1 recites that “the activator sprayer is
positioned to cause an activator spray to contact approximately 5%–50% of
the surface area of the substrate.” Claim 1 (emphasis added). This clause
recites the function of causing an activator spray to contact approximately 5–
50% of the substrate surface is performed by the sprayer based on its
structural positioning. As such, we agree with Appellant that the clause at
issue recites a structural limitation.
In addition, Huber teaches that independent control of the spray
nozzles allows drop size and spray pattern to be controlled, but does not
teach or suggest that such control is for operating the sprayer to spray less
than the entire surface of the substrate. Huber 3:12–15. Rather, as Appellant
asserts, Huber intends to coat the entire substrate surface with the activator
to react with the roll applied adhesive. Id. at 2:19–29. The Examiner does
not direct us to any disclosure in Huber teaching or suggesting that only part
of the substrate surface may or should be coated with activator, nor do we
find any.
Accordingly, we cannot sustain the Examiner’s obviousness rejection
of claim 1, and dependent claims 3–5, 10, and 12, based on Huber.
Rejection 3: Obviousness over Huber, Parker, and Doe
The Examiner rejects claims 14, 15, and 17–21 under 35 U.S.C. § 103
as unpatentable over Huber in view of Parker and Doe. Claim 14 requires a
plurality of activator sprayers that, similarly to claim 1, are positioned to
spray activator on approximately 5–50% of the substrate surface area. As
discussed above, Huber fails to teach or suggest a sprayer is positioned to
spray approximately 5–50% of the substrate surface. Even more so, Huber
fails to teach or suggest that a plurality of sprayers are positioned to spray
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activator on approximately 5–50% of the substrate surface area. The
Examiner does not rely on Parker or Doe to remedy these deficiencies in
Huber. Accordingly, we cannot sustain the Examiner’s obviousness rejection
of claim 14, and dependent claims 15 and 17–21 based on the combination
of Huber, Parker, and Doe.
Rejections 4–6: Obviousness over Huber, Parker, Doe, Allman, and/or
Frezza, and Huber or Lee and MacLaurin
The Examiner rejects claims 6 and 16 under 35 U.S.C. § 103 as
unpatentable over Huber alone, or in view of Parker and Doe, and further in
view of Allman; claim 7 under 35 U.S.C. § 103 as unpatentable over Huber
in view of Frezza; and claim 13 under 35 U.S.C. § 103 as unpatentable over
Huber or Lee in view of MacLaurin. As discussed above, Lee and Huber fail
to teach or suggest that the sprayer(s) is/are positioned to spray activator on
approximately 5–50% of the substrate surface area. The Examiner does not
rely on any of the secondary and tertiary prior art references to remedy this
deficiency in Lee and Huber. Accordingly, we cannot sustain the Examiner’s
obviousness rejections of dependent claims 6, 7, 13, and 16 based on the
combination of Huber, alone or combined with Parker, Doe, Allman, and/or
Frezza, and Huber or Lee combined with MacLaurin.

CONCLUSION
The Examiner’s decision to reject claims 1–7, 10, and 12–21 is
reversed.
Appeal 2019-004301
Application 15/380,439

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DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1, 3–5, 10,
12
102(a)(1)/103 Lee 1, 3–5, 10,
12
1–5, 10,
12
103 Huber 1–5, 10,
12
14, 15,
17–21
103 Huber, Parker, Doe 14, 15,
17–21
6, 16 103 Huber, Parker,
Doe, Allman
6, 16
7 103 Huber, Frezza 7
13 103 Huber, Lee,
MacLaurin
13
Overall
Outcome
1–7, 10,
12–21

REVERSED