Douglas B. Waineo et al.

Patent Trials and Appeals Board

Nov 1, 2019

14065780 - (D) (P.T.A.B. Nov. 1, 2019)

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.
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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.
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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.
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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
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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
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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.
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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.
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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.
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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
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REVERSED