Ex Parte Foster et alDownload PDFPatent Trial and Appeal BoardJun 14, 201712941725 (P.T.A.B. Jun. 14, 2017) 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. 12/941,725 11/08/2010 Donald D. Foster 22117-USORD 1330 147365 7590 06/16/2017 Silaan Disinensiina SJvstp.ms EXAMINER 501 South 5th Street, 3rd Floor Richmond, VA 23219-0501 DURAND, PAUL R ART UNIT PAPER NUMBER 3754 NOTIFICATION DATE DELIVERY MODE 06/16/2017 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): patent@barjos.com sdslegaldocket @ silgands .com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte DONALD D. FOSTER and PHILIP L. NELSON Appeal 2015-007484 Application 12/941,725 Technology Center 3700 Before: CHARLES N. GREENHUT, JEFFREY A. STEPHENS, and ERIC C. JESCHKE, Administrative Patent Judges. GREENHUT, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellants appeal under 35 U.S.C. § 134 from a rejection of claims 1—3, 6, 10, and 13—27. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. Appeal 2015-007484 Application 12/941,725 CLAIMED SUBJECT MATTER The claims are directed to a sprayer. Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. A sprayer comprising: a housing, said housing having a piston bore, a piston reciprocally mounted within said piston bore, a flow passage within the housing for the passage of liquid, an actuator operable to reciprocate the piston within the piston bore between a vacuum stroke that is configured and adapted to create reduced pressure in the piston bore and a compression stroke that is configured and adapted to create increased pressure in the piston bore, a valve assembly within the flow passage for controlling the flow of liquid through the flow passage upon operation of the actuator, said valve assembly comprising a check valve and a priming valve, the check valve comprising a frusto-conical portion, and a component formed separately from and operatively connected to said housing and having a check valve seat in sealing engagement with the frusto-conical portion of the check valve during the compression stroke of the piston; wherein the frusto-conical portion of the check valve is received entirely within the component; and wherein the extreme top portion of the valve assembly provides a stop against an inside surface of the housing. The prior art relied upon by the Examiner in rejecting the claims on REFERENCES appeal is: Benson Gameau Foster Clynes US 3,715,060 Feb. 6, 1973 US 4,669,664 June 2, 1987 US 5,906,301 May 25, 1999 US 7,497,358 B2 Mar. 3, 2009 2 Appeal 2015-007484 Application 12/941,725 REJECTIONS Claims 17—23 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Clynes and Benson. Claims 1—3, 6, 10, and 13—16 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Clynes, Benson, and Gameau. Claims 26 and 27 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Clynes, Benson, and Foster. OPINION Independent claims 17 and 26, respectively rejected without and with Foster, are argued together based on the alleged shortcomings of the Examiner’s combination of Clynes and Benson. App. Br. 8—11. At the outset, we reject the premise of Appellants’ argument that the Examiner’s rejection is de facto deficient due to the Examiner not having addressed all aspects of either exemplary rationale B or G in MPEP § 2143. App. Br. 8— 11; Reply Br. 2—3. First, the rationales set forth in MPEP § 2143 are examples, not additional legal requirements to establish obviousness. The Supreme Court in KSR International Co. v. Teleflex Inc. stressed the importance of employing a “flexible approach” to the obviousness inquiry as opposed to relying on rigid rules. 550 U.S. 398, 414—15 (2007). Second, the Examiner’s use of the word “modify” or some form thereof, does not cause the Examiner’s rejection to necessarily be categorized as falling into either exemplary rationale B or exemplary rationale G of MPEP § 2143. See Reply Br. 2—3. The word “modify” or “modification” is a generic term used to connote addressing the differences-between-the-prior-art-and-the- claimed-subject-matter prong of the Graham inquiry. See Graham v. John 3 Appeal 2015-007484 Application 12/941,725 Deere Co., 383 U.S. 1 (1966). The discussion in exemplary rationale A also uses the terms modify and modification in addition to “improve” or “enhance,” which is also used by exemplary rationales B, C, and D. Exemplary rationale F uses the word “vary” to convey a similar concept. Thus, each and every example could be categorized as discussing a particular “modification” to the prior art, regardless of whether that exact term is used. In any case, what is most relevant is the rationale actually articulated by the Examiner, which in this case, goes generally unaddressed by Appellants. See 37 C.F.R. § 41.37(c)(l)(iv) (“The arguments shall explain why the examiner erred as to each ground of rejection contested by appellant”). The Examiner proposed to modify the plug 72 having disk-shaped valve 76 (collectively regarded by the Examiner as the recited “check valve”) in Clynes to include a frusto-conical shape as opposed to a flat disk because doing so would: provide a generally larger, and more secured sealing surface between the valve and seat (a flat disk whose end engages a seat can generally be more easily deformed and also inverted, allowing backflow), and since it allows for easier assembly (i.e. a larger frusto-conical valve will have a larger centering tolerance within the component versus Clynes small conical projection aligning with the central portion of the valve seat). Final Act. 3^4. The Examiner’s reasoning in this regard is both rational and uncontroverted. As the Examiner correctly points out (Ans. 3—4), neither the requirement for additional structural modifications to effectuate the proposed modification (App. Br. 9-10) nor the absence of an express statement of this motivation in the prior art (App. Br. 10—11; Reply Br. 2—3) demonstrates error in the Examiner’s rejection. One of ordinary skill can 4 Appeal 2015-007484 Application 12/941,725 use his or her ordinary skill, creativity, and common sense to make the necessary adjustments and further modifications to result in a properly functioning device. See KSR, 550 U.S. at 418 (in which the Court rejected the rigid requirement of a teaching or suggestion or motivation to combine known elements in order to show obviousness: “the [obviousness] analysis need not seek out precise teachings directed to the specific subject matter of the challenged claim, for a court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ”). The fact that judgment and mechanical skill may be required to effectuate a particular combination does not necessarily mean that particular combination constitutes a nonobvious invention. Graham, 383 U.S. at 10— 12 {discussing Hotchkiss v. Greenwood, 11 How. 248 (1851)). Accordingly, we sustain the rejections of claims 17 and 26, and of those claims argued based only on dependency therefrom (App. Br. 11—12). In addition to reiterating the arguments addressed above regarding claims 17 and 26 (App. Br. 12—13), Appellants argue the Examiner improperly characterized the difference between Clynes’s device and the stop of claim 1 as involving a mere “reversal of parts.” App. Br. 13—14. Again Appellants’ arguments are premised on the incorrect notion that the need for further modifications to Clynes to effectuate the Examiner’s proposed modification demonstrates nonobviousness. App. Br. 13—14; Reply Br. 3. Importantly, the main reasoning articulated and relied on by the Examiner explains how Clynes already has a “stop” structure, albeit depending from a lower inside surface of the housing (unenumerated but evident from Figure 1 as cooperating with an upper surface of an inner portion of plug member 72 along axis 24 to thereby prevent any further 5 Appeal 2015-007484 Application 12/941,725 upward movement of plug 72), as opposed to on an “extreme top portion” of the valve assembly. Final Act. 6. The Examiner explains how Gameau teaches a similar valve member 100 having an upper rod portion 102 having a stop at its “extreme top” (cooperating with the top 103 of a housing cavity). Final Act. 6 (see Gameau Figs. 2, 8; col. 5,11. 11—20). The Examiner articulates a sound rational basis to explain why it would have been obvious to a person skilled in the art to employ Gameau’s stop in place of that used in Clynes. Final Act. 6—7. The Examiner’s findings and analysis in this regard stand uncontroverted. Accordingly, Appellants have not apprised us of any reasons why the Examiner’s rejection of claim 1, or that of those claims depending therefrom (App. Br 14), should not be sustained. DECISION The Examiner’s rejections are affirmed. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 1.136(a)(l)(iv). AFFIRMED 6 Copy with citationCopy as parenthetical citation