Douglas B. Waineo et al.Download PDFPatent Trials and Appeals BoardNov 1, 201914065780 - (D) (P.T.A.B. Nov. 1, 2019) Copy Citation 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. 14/065,780 10/29/2013 Douglas B. Waineo 205827/17977-1 1018 43935 7590 11/01/2019 Shumaker, Loop & Kendrick, LLP 1000 Jackson Street Toledo, OH 43604-5573 EXAMINER UTT, ETHAN A ART UNIT PAPER NUMBER 1783 NOTIFICATION DATE DELIVERY MODE 11/01/2019 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): cgolupski@shumaker.com dmiller@shumaker.com tlopez@shumaker.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte DOUGLAS B. WAINEO and ERNEST M. OTANI Appeal 2019-002593 Application 14/065,780 Technology Center 1700 BEFORE BEVERLY A. FRANKLIN, JEFFREY B. ROBERTSON, and MICHAEL G. McMANUS, Administrative Patent Judges. ROBERTSON, Administrative Patent Judge. Appeal 2019-002593 Application 14/065,780 2 DECISION ON APPEAL1 STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), Appellant2 appeals from the Examiner’s decision to reject claims 21–40. Appeal Br. 4. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. CLAIMED SUBJECT MATTER Appellant states the invention relates to a robotic electrostatic painting system for applying electrically conductive paint to an object including an electrostatic barrier formed between an electrostatically charged paint reservoir and a grounded paint reservoir. Spec. ¶ 1. According to the Specification, the electrostatic barrier prevents deterioration of the robotic electrostatic painting system. Id. Claim 21, reproduced below, is illustrative of the claimed subject matter (Appeal Br. 30, Claims Appendix): 21. A robotic painting apparatus including two adjacent paint reservoirs mounted side-by-side on a robot arm and adapted to operate as an electrostatic direct charge painting system, comprising: an electrostatic barrier formed from an electrical insulating material, the barrier being disposed on the robot arm between the 1 This Decision includes citations to the following documents: Specification filed October 29, 2013 (“Spec.”); Final Office Action mailed November 1, 2017 (“Final Act.”); Advisory Action mailed March 1, 2018 (“Advisory Act.”); Appeal Brief filed November 2, 2018 (“Appeal Br.”); Examiner’s Answer mailed December 14, 2018 (“Ans.”); and Reply Brief filed February 12, 2019 (“Reply Br.”). 2 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 FANUC America Corporation. Appeal Br. 4. Appeal 2019-002593 Application 14/065,780 3 two adjacent paint reservoirs wherein there is no straight line path between the paint reservoirs that does not pass through the barrier, the barrier electrostatically insulating the paint reservoirs from each other thereby preventing formation of a ground path or short circuit between the paint reservoirs. Claims 30 and 38 are also independent and recite a robotic painting apparatus including an electrostatic barrier located between first and second paint reservoirs, and an apparatus for electrostatically insulating two adjacent paint reservoirs mounted on a robot arm including an electrostatic barrier located between the paint reservoirs, respectively. Id. at 31, 33. REFERENCES The prior art relied upon by the Examiner is: Name Reference Date Herre et al. hereinafter “Herre ’018” US 2005/0173018 A1 August 11, 2005 Herre et al. hereinafter “Melcher”3 US 2006/0019036 A1 January 26, 2006 Polyoxymethylene Wikipedia, http://en.wikipedia.org/wiki/ Polyoxymethylene May 9, 2012 Insulating Materials List hereinafter “Professional Plastics” Professional Plastics, www.professionalplastics.co m/professsionalplastics/Insul atingMaterialsList.pdf February 1, 2001 Flange Wikipedia, http://en.wikipedia.org/wiki/ Flange September 16, 2012 3 Because both the Examiner and Appellant refer to this reference by the second named inventor, we do the same in order to avoid confusion. Appeal 2019-002593 Application 14/065,780 4 REJECTIONS The Examiner rejected the claims on appeal under 35 U.S.C. § 103 as follows: 1. Claims 21, and 25–27 as obvious over Herre ’018 and Melcher; 2. Claims 22 and 24 as obvious over Herre ’018, Melcher, and Polyoxymethylene; 3. Claim 23 as obvious over Herre ’018, Melcher, Polyoxymethylene, and Professional Plastics; 4. Claims 28 and 29 as obvious over Herre ’018, Melcher, and Flange; 5. Claims 30 and 37 as obvious over Herre ’018, Melcher, Polyoxymethylene, and Flange; 6. Claims 38 and 39 as obvious over Herre ’018, Melcher, and Flange; and 7. Claim 40 as obvious over Herre ’018, Melcher, Flange, and Polyoxymethylene. (Final Act. 2–21.) Rejection 1 We limit our discussion to claim 21, which is sufficient for disposition of this rejection. OPINION The Examiner’s Rejection The Examiner found Herre ’018 discloses a robotic painting apparatus including two adjacent paint reservoirs mounted side-by-side on a robot arm as recited in claim 21, but Herre ’018 is silent as to the presence of an Appeal 2019-002593 Application 14/065,780 5 electrostatic barrier. Final Act. 2–3. The Examiner found Melcher discloses an apparatus for electrostatically separating two adjacent paint reservoirs in a robotic painting apparatus in the form of a voltage block module including an electrically insulated cabinet frame that separates the paint reservoirs from one another. Id. at 3. The Examiner stated “Herre [’018] appreciates that electrical isolation (i.e. electrical insulation) between the components of a robotic painting apparatus having different voltages is desirable for avoiding sparking (i.e. grounding) and shorting of pumps used to move the paint through the painting apparatus.” Id. citing Herre ’018, ¶ 11. The Examiner explained further that when one canister supplies paint to a charged applicator in accordance with Herre ’018, that paint is electrically conductive, whereas paint in the other canister, received from the color changer/paint switching device, is at a ground potential. Ans. 22–23, citing Advisory Act. 2–3. Thus, the Examiner determined that a mismatch in electrostatic charge between the two canisters is necessarily present in Herre ’018, which results in an avenue by which the undesired phenomenon of sparks and shorting occur. Id. at 23. The Examiner determined “[o]ne of ordinary skill in the art would appreciate sparks provide an ignition source for starting dangerous fires, where a fire is generally understood here as an undesirable phenomenon, and the shorting of pumps would result in the inability to paint as paint would be unable to be moved through the apparatus.” Final Act. 3. The Examiner determined also “it would have been obvious each component of Melcher’s ‘cabinet frame’ 42 should be formed from an electrically insulated material in order to avoid the undesirable phenomena Herre [’018] discloses can occur.” Id. The Examiner determined further “[i]n order to avoid the aforementioned fires Appeal 2019-002593 Application 14/065,780 6 and loss of ability to paint, it would have been obvious to modify the robotic paint apparatus 72 Herre [’018] discloses by separating the paint reservoirs 34, 36 thereon with an electrostatic barrier as Melcher suggests. Given the purpose of the electrostatic barrier is to prevent sparking or shorting, it follows the electrostatic barrier prevents formation of a ground path or short circuit between the two paint reservoirs 34, 36.” Id. at 3–4. Appellant’s Contentions Appellant argues neither Herre ’018 nor Melcher teach two adjacent paint reservoirs mounted on a robotic arm and an electrostatic barrier between the reservoirs configured to prevent formation of a ground path or short circuit path between reservoirs. Appeal Br. 12–13. Appellant contends Herre ’018 discloses two paint reservoirs adjacent to each other without any electrostatic barrier or discharge protection between them. Id. at 13. Appellant argues Melcher does not disclose an electrostatic barrier, but rather a “voltage block module,” which has a completely different design and function than Appellant’s claimed barrier. Id. Appellant argues the Examiner’s premise regarding avoidance of dangerous fires as a rationale is not expressed in either Herre ’018 or Melcher, and the shorting of pumps is obviated by the use of the pigging technology provided in Herre ’018. Id. at 14. Appellant argues Herre ’018 and Melcher are concerned with electrostatically insulating the paint applicator and the paint supply switching device from the paint canisters and not insulating the paint canisters from each other, and only the Specification has identified a different direction of electrical discharge between adjacent paint canisters. Id. at 14–19. Appeal 2019-002593 Application 14/065,780 7 Discussion We are persuaded by Appellant’s arguments. That is, Herre ’018 discloses the paint delivery and application systems of the invention disclosed therein electrically isolates the color changer from the applicator. Herre ’018, ¶ 8. Herre ’018 utilizes a “unique pigging technology”4 to electrically isolate the paint applicator from the paint supply switching device or color changer. Herre ’018, ¶¶ 11–15. Similarly, Melcher discloses a method and apparatus for delivering and applying paint that electrically isolates the color changer from the applicator. Melcher, ¶¶ 1, 6. Melcher also discloses use of pigging technology to accomplish the electrical isolation. Melcher, ¶ 20. Regarding the electrically insulated cabinet frame disclosed in Melcher, although Melcher discloses the insulated cabinet frame is formed of a nonconductive or electrically insulating polymer, Melcher expressly discloses the specific components of the electrical isolation cabinet “does not form a part of this invention.” Melcher, ¶ 16. Thus, as argued by Appellant, neither Herre ’018 nor Melcher discuss any concern with electrostatically isolating paint canisters. Despite the Examiner’s explanations to the contrary, discussed above and in the Answer (Ans. 23–24), we agree with Appellant that the direction of electrical discharge causing electrostatic etching or pinholing between adjacent paint canisters as one is charged and the other grounded is an issue identified by Appellant (Spec. ¶ 4), and the general concern expressed in Herre ’018 of avoiding shorting of pumps (Herre ’018 ¶ 11) is insufficient to 4 According to Appellant, “pigging” means “shooting a foam object through the paint line at the end of a color run with compressed air to force out remaining paint.” Appeal. Br. 14. See also Herre ’018, ¶ 13. Appeal 2019-002593 Application 14/065,780 8 provide a reason to utilize the electrically insulated cabinet frame disclosed in Melcher between the canisters disclosed in Herre ’018. Therefore, contrary to the Examiner’s position, we are of the view that the instant case bears more resemblance to the center seal plug in In re Sponnoble, 405 F.2d 578, 585 (CCPA 1969) than the grooved carbon disc brakes in In re Wiseman, 596 F.2d 1019, 1022 (CCPA 1979). See Ans. 23–24, quoting MPEP § 2141.02 II. See also KSR Int’l. Co. v. Teleflex, Inc., 550 U.S. 398, 421 (2007) (“A factfinder should be aware . . . of the distortion caused by hindsight bias and must be cautious of arguments reliant upon ex post reasoning.”). Accordingly, we reverse the Examiner’s rejection of claim 21 and claims 25–27. Rejections 2–7 Regarding Rejections 2–4, the claims subject to these rejections all depend directly or indirectly from claim 21. The addition of Polyoxymethylene, Professional Plastics, and Flange as references does not remedy the deficiencies discussed above for Rejection 1. Regarding Rejections 5–7, which include independent claims 30 and 38 as well as claims dependent therefrom, because claims 30 and 38 contain similar limitations as claim 21 regarding the presence of an electrostatic barrier, and these rejections rely on the base combination of Herre ’018 and Melcher, our rationale discussed above applies equally to the rejections of claims 30 and 38. The Examiner relies also on Polyoxymethylene and/or Flange to reject these claims, which as discussed above, do not remedy the deficiencies of the base combination. Appeal 2019-002593 Application 14/065,780 9 Accordingly, we reverse Rejections 2–7 for similar reasons as discussed above. CONCLUSION The Examiner’s rejections of claims 21–40 under 35 U.S.C. § 103 is reversed. DECISION SUMMARY In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 21, 25–27 103 Herre ’018, Melcher 21, 25–27 22, 24 103 Herre ’018, Melcher, Polyoxymethylene 22, 24 23 103 Herre ’018, Melcher, Polyoxymethylene, Professional Plastics 23 28, 29 103 Herre ’018, Melcher, Flange 28, 29 30, 37 103 Herre ’018, Melcher, Polyoxymethylene, Flange 30, 37 38, 39 103 Herre ’018, Melcher, Flange 38, 39 40 103 Herre ’018, Melcher, Flange, Polyoxymethylene 40 Overall Outcome 21–40 Appeal 2019-002593 Application 14/065,780 10 REVERSED Copy with citationCopy as parenthetical citation