Ex Parte Foster et al

Patent Trial and Appeal Board

Jun 14, 2017

12941725 (P.T.A.B. Jun. 14, 2017)

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
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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
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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
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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
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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
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