Ex Parte Eschenburg

Patent Trial and Appeal Board

May 21, 2015

12387764 (P.T.A.B. May. 21, 2015)

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.
12/387,764 05/07/2009 Jerry E. Eschenburg DISP-806 1203
41324 7590 05/21/2015
CHRISTOPHER JOHN RUDY
209 HURON AVENUE, SUITE 8
PORT HURON, MI 48060
EXAMINER
BOECKMANN, JASON J
ART UNIT PAPER NUMBER
3752
MAIL DATE DELIVERY MODE
05/21/2015 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 PATENT TRIAL AND APPEAL BOARD
____________

Ex parte JERRY E. ESCHENBURG
____________

Appeal 2013-003309
Application 12/387,764
Technology Center 3700
____________

Before ROBERT L. KINDER, CYNTHIA L. MURPHY, and
BRADLEY B. BAYAT, Administrative Patent Judges.

MURPHY, Administrative Patent Judge.

DECISION ON APPEAL

Jerry E. Eschenburg (Appellant) appeals under 35 U.S.C. § 134 from
the Examiner’s rejection of claims 1–6, 9, 11, 19, and 20.
1
We have
jurisdiction over this appeal under 35 U.S.C. § 6(b).
We REVERSE.

1
“Claims 7, 8, 10, and 12 have been cancelled,” “[c]laims 13–18 are
pending but withdrawn,” and “[c]laims 21–24 have been allowed.” (Appeal
Br. 1.)
Appeal 2013-003309
Application 12/387,764

2
STATEMENT OF THE CASE
The Appellant’s invention “concerns a device and method for
dispensing” a material within “a walled, hollow housing.” (Spec. 1.)

Illustrative Claim
1. A device for dispensing, which comprises a
walled, hollow housing having an inside wall surface and
having an opening on a first end; a piston, which sealingly
engages the inside wall surface along its path of traverse,
beginning at a position away from the first end, and which is
“pulled,” not “pushed,” through its course of travel: and an
actuating connection to the piston internal the housing – such
that a material for dispensing can be supplied to the inside of
the hollow housing above the piston, and dispensed through the
opening by actuation and movement of the piston, wherein:
the actuating connection includes a flexible gear rack of
one and only one integral piece of a flexible
member having teeth for engagement with a
protruding member that engages a tooth of the
flexible gear rack; and
the protruding member is present.
References
Pickles US 4,592,245 June 3, 1986
Webb US 4,793,526 Dec. 27, 1988
Kay US 4,874,117 Oct. 17, 1989
Rejections
The Examiner rejects claims 1–4, 19, and 20 under 35 U.S.C. § 103(a)
as unpatentable over Webb and Pickles.
The Examiner rejects claims 5, 6, 9, and 11 under 35 U.S.C. § 103(a)
as unpatentable over Webb, Pickles, and Kay.
Appeal 2013-003309
Application 12/387,764

3
ANALYSIS
We are persuaded by the Appellant’s position that the Examiner does
not establish that Pickles is analogous art. (See Appeal Br. 2–4.) The
claimed invention relates to a device for dispensing material from within a
walled, hollow housing having an inside wall surface and also having an
opening on a first end. (Claim 1.) Pickles, entitled “Window Regulator
Having C-Shaped Guide and Flexible Tape with Rack Teeth” relates to an
“[a]pparatus for converting rotary motion to linear motion” for use with, for
example, a motor vehicle window. (Pickles, col. 4, ll. 4–5 and 38–39.)
“Two separate tests define the scope of analogous prior art: (1)
whether the art is from the same field of endeavor, regardless of the problem
addressed and, (2) if the reference is not within the field of the inventor’s
endeavor, whether the reference still is reasonably pertinent to the particular
problem with which the inventor is involved.” (In re Bigio, 381 F.3d. 1320,
1325 (Fed. Cir. 2004).)
Accordingly, the Examiner can rely upon either of these two tests to
establish that Pickles is analogous art. Specifically, with the first test, the
Examiner can establish that Pickles is from the same field of endeavor as the
Appellant’s claimed invention. Alternatively, with the second test, the
Examiner can establish that Pickles is reasonably pertinent to a problem with
which the Appellant is involved. As discussed below, the Examiner does
not establish that Pickles is analogous art under either of these two tests.
The first test is premised upon the Examiner’s assessment of the
Appellant’s “field of endeavor” for comparison to that of Pickles. In this
regard, the Examiner finds that the “flexible gear rack (10) of Pickles is in
the same field of endeavor as the flexible gear rack of the present invention,”
Appeal 2013-003309
Application 12/387,764

4
because “[b]oth flexible gear racks are specifically designed to move a
single element, the window in Pickles, and the piston in the present
invention.” (Answer 3.) However, “the assessment of the field of endeavor”
is not “a wholly subjective call for the Examiner” and “the PTO must show
adequate support for its findings on the scope of the field of endeavor in the
application’s written description and claims, including the structure and
function of the invention.” (In re Bigio, 381 F.3d. at 1326.) Here, the
Specification seemingly “concerns a device and method for dispensing” (see
Spec. 1), and the Examiner does not explain, sufficiently, why the scope of
the Appellant’s field of endeavor extends beyond dispensing.
Thus, the Examiner’s finding regarding the field of endeavor of the
Appellant’s claimed invention is not adequately supported. As the
Examiner’s determination that Pickles is the same field of endeavor is based
on this finding (see Answer 3), the Examiner fails to establish that Pickles is
analogous art under the first test.
The second test is premised upon the Examiner’s identification of a
particular problem faced by the Appellant so that Pickles’ pertinence can be
evaluated relative thereto. In this regard, the Examiner finds “Pickles is
reasonably pertinent to the particular problem of moving a single element
(the window) in the same way as the present invention’s gear rack (44, 43) is
used to move piston (30).” (Answer 4.) However, “[i]n determining
whether a reference is reasonably pertinent, an examiner should consider the
problem faced by the inventor, as reflected—either explicitly or implicitly in
the specification.” (MPEP 2141.01(a), discussing In re Klein, 647 F. 3d
1343 (Fed. Cir. 2011).) Again, here, the Specification seemingly “concerns
a device and method for dispensing” (see Spec. 1), and the Examiner does
Appeal 2013-003309
Application 12/387,764

5
not explain, sufficiently, why the Specification reflects that the Appellant
faced a problem digressed from dispensing.
Thus, the Examiner’s finding regarding the particular problem faced
by the Appellant is not adequately supported. As the Examiner’s
determination of Pickles’ pertinence is based on this finding (see Answer 4),
the Examiner fails to establish that Pickles is analogous art under the second
test.
Accordingly, the Examiner fails to establish that Pickles satisfies
either of the two tests for analogous art. As the Examiner’s rejections are
both based upon prior art combinations involving Pickles, we do not sustain
these rejections.

DECISION
We REVERSE the Examiner’s rejections of claims 1–6, 9, 11, 19,
and 20.
REVERSED
mls