Ex Parte Chick

Board of Patent Appeals and Interferences

Mar 1, 2011

11261207 (B.P.A.I. Mar. 1, 2011)

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.
11/261,207 10/28/2005 Mark C. Chick 7304 8140
7590 03/01/2011
Paul M. Denk
Ste. 170
763 S. New Ballas Road
St. Louis, MO 63141
EXAMINER
CARTAGENA, MELVIN A
ART UNIT PAPER NUMBER
3754
MAIL DATE DELIVERY MODE
03/01/2011 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte MARK C. CHICK
____________________

Appeal 2009-009875
Application 11/261,207
Technology Center 3700
____________________

Before: JENNIFER D. BAHR, LINDA E. HORNER, and STEVEN D. A.
MCCARTHY, Administrative Patent Judges.

BAHR, Administrative Patent Judge.

DECISION ON APPEAL1

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the "MAIL DATE"
(paper delivery mode) or the "NOTIFICATION DATE
(electronic delivery mode) shown on the PTOL-90A cover letter attached to
this decision.
Appeal 2009-009875
Application 11/261,207
2
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134 from the Examiner's
decision rejecting claim 10 under § 102(b) as anticipated by Jackson (US
5,137,184, iss. Aug. 11, 1992). Claims 1-9 have been canceled. We have
jurisdiction under 35 U.S.C. § 6(b).
Claim 10, reproduced below, is the sole claim on appeal:
For use in combination with a caulking tube, wherein a portion of the
caulk in the nozzle and in the front of the tube has become harden due to
prolong ambient exposure, and wherein the front of the caulking tube has
been cut off to remove said harden caulk, a replacement caulking tube nozzle
for use in application with the cut caulking tube, said replacement caulking
tube nozzle including an integral nozzle portion, said nozzle portion having
an inner passage through which the remaining fresh and pliable caulk may
pass, for discharge out of the replacement caulking tube nozzle tip, said
nozzle portion being connected with a base, an integral sleeve extending
downwardly from said base, said integral sleeve provided so as to be
operatively connected with the cut end of the caulking tube to allow for its
installation within the cut end of the caulking tube and to provide for
mounting of the said replacement caulking tube nozzle upon the front of the
cut end of the caulking tube, wherein the sleeve portion provides for its
contiguous sliding within the cut end of the caulking tube, and therein to
provide for its contiguous sliding for tightly fitting within the cut end of the
caulking tube, an integral flange extending around the perimeter of the base
of the replacement caulking tube nozzle tip, said flange extending externally
of the sleeve portion of the replacement nozzle, said flange disposed for a
pressure fit against the cut end of the caulking tube when the caulking tube
and its replacement nozzle are applied within a caulking gun and the gun is
operated to exert pressure upon the caulk for its dispensing from the caulking
tube during its operation, said base for the replacement caulking tube nozzle
tip extending inwardly of the circumference of the cut end of any caulking
tube to which the replacement caulking tube nozzle is applied and extends
outwardly therefrom, whereby the pressure exerted by the caulking gun upon
the caulking tube and its replacement tip provides for the tightening of the
integral flange against the cut end of the caulking tube and with its integral
sleeve portion preventing a leakage of the caulk from the caulking tube
during its application.
Appeal 2009-009875
Application 11/261,207
3

SUMMARY OF DECISION
We AFFIRM.

OPINION
Appellant makes several arguments as to whether Jackson describes a
nozzle used in the same way as Appellant, i.e., as a replacement nozzle.
Appeal Br. 8-9. However, claim 10 recites a particular device (a
replacement caulking tube nozzle), not a method for using that particular
device. It is well established that claims directed to an apparatus must be
distinguished from the prior art in terms of structure rather than function.
See, e.g., In re Schreiber, 128 F.3d 1473, 1477-78 (Fed. Cir. 1997). In order
to satisfy the functional limitations in an apparatus claim, the prior art
apparatus must be capable of performing the claimed function. Id. at 1478.
Thus, a prior art reference need not envision the device being actually used
to perform the claimed functions.
Appellant particularly challenges whether Jackson describes a sleeve
or integral flange as claimed. Appeal Br. 9. The Examiner found that
Jackson describes a sleeve and a flange as shown in figure 10, which serves
to seal the caulk. Ans. 3-4. Figure 10 is reproduced below with annotations
indicating the Examiner's findings:

Appeal 2009-009875
Application 11/261,207
4
Figure 10 depicts a sleeve and a flange on the end of a nozzle.
Reviewing the Examiner's findings, it is clear that figure 10 depicts a base
portion of a nozzle 85 with an inner lip 89 and outer lip 88 which serve to
seal the nozzle once slid onto the caulk tube. Col. 5, ll. 60-67. Given that
these lips serve to seal the nozzle after being slid onto the open end of the
caulk tube (see, e.g., fig. 9), the Examiner's findings that these elements
perform the claimed functions appear reasonable. Notably, the inner wall,
with inner lip 89, appears to perform the function of the claimed sleeve2 and
the portion of the nozzle 75 extending radially outwardly from the inner wall
appears to perform the function of the claimed flange3. Appellant does not
present any arguments or evidence that would cast doubt on the Examiner's
findings that these elements perform the claimed functions, but rather
focuses on whether the prior art teaches the elements being used exactly as
claimed. Claim 10 does not positively recite a cut end of a caulk tube nor is
there any evidence that the ability to seal an open end of a cut caulk tube is
different than sealing an open end of Jackson's caulk tube. Consequently,
we do not find error in the Examiner's finding that Jackson anticipates the
subject matter of claim 10.

2 The sleeve is functionally capable of being "operatively connected with the
cut end of the caulking tube…," of "provid[ing] for mounting…," and "for
its contiguous sliding for tightly fitting within the cut end."
3 The flange is functionally capable of being "disposed for a pressure fit
against the cut end of the caulking tube."
Appeal 2009-009875
Application 11/261,207
5
DECISION
For the above reasons, we affirm the Examiner's decision.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED

hh

Paul M. Denk
Ste. 170
763 S. New Ballas Road
St. Louis, MO 63141