Ex Parte ChickDownload PDFBoard of Patent Appeals and InterferencesMar 1, 201111261207 (B.P.A.I. Mar. 1, 2011) 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. 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 Copy with citationCopy as parenthetical citation