Ex Parte Frank et al

Patent Trial and Appeal Board

Jul 28, 2014

11256717 (P.T.A.B. Jul. 28, 2014)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
11/256,717 10/24/2005 Peter L. Frank W92.12-0043 9223
117849 7590 07/29/2014
Kelly, Holt & Christenson, P.L.L.C.
113 West Main Street
Waconia, MN 55387
EXAMINER
COMLEY, ALEXANDER BRYANT
ART UNIT PAPER NUMBER
3746
MAIL DATE DELIVERY MODE
07/29/2014 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 PETER L. FRANK and SHAWN C. JOHNSON
____________

Appeal 2012-005804
Application 11/256,717
Technology Center 3700
____________

Before STEFAN STAICOVICI, ANNETTE R. REIMERS and
THOMAS F. SMEGAL, Administrative Patent Judges.

SMEGAL, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Peter L. Frank et al. (Appellants) seek our review under 35 U.S.C.
§ 134 of the Examiner’s Final rejection of claims 1, 3–17, 36 and 37, the
only claims pending in the application on appeal. We have jurisdiction under
35 U.S.C. § 6(b).
We REVERSE.

Appeal 2012-005804
Application 11/256,717

2
CLAIMED SUBJECT MATTER

An understanding of the invention can be derived from a reading of
independent claim 1, which is reproduced below.
1. A modular paint pump apparatus for a paint roller, the
apparatus configured to pump paint from a separate and
conventional paint container to the paint roller, the apparatus
comprising:
a housing having a surface engaging base and an upper
surface configured to removably receive and support a
conventional paint container resting on the upper surface, the
conventional paint container having an upper opening and a
closed bottom, the conventional paint container configured for
insertion on and removal from the apparatus during routine
operation;
a recess in the housing;
an access opening in the housing for providing access to
the recess;
a pump motor fixedly mounted within the housing;
a paint siphon tube having an inlet end and an outlet end,
the inlet end configured for inserting into the upper opening of
the paint container on the upper surface of the housing;
a wetted parts subassembly within the recess of the
housing, removably coupled to the pump motor and the outlet
end of the paint siphon tube, and removable from and
attachable to the motor and housing through the access opening
without requiring the use of tools, the wetted parts subassembly
including a pump cylinder, a piston received in the cylinder, an
inlet port removably connectable to the outlet end of the paint
siphon tube, an inlet check valve, an outlet port removably
connectable to a paint roller and an outlet check valve; and
a pump access door disposed on the housing, the pump
access door manually movable between a closed position over
the access opening and an open position with respect to the
access opening;
wherein when the pump access door is in the closed
position, the wetted parts subassembly is retained within the
recess and when the conventional paint container is removed
Appeal 2012-005804
Application 11/256,717

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from the housing and the pump access door is in the open
position, the wetted parts subassembly is releasable from the
pump motor and removable from the recess while the pump
motor remains disposed within the housing.

App. Br. 12., Clms. App.

REJECTIONS ON APPEAL
The following Examiner’s rejections are before us for review.
1. Claims 1, 3–9, 11–13, 36 and 37,1 are rejected under 35 U.S.C.
§ 103(a) as unpatentable over Frank (US 2002/0028103 A1, pub.
Mar. 7, 2002) and Howard (US 3,195,170, issued July 20, 1965).
2. Claims 10 and 14–17 are rejected under 35 U.S.C. §103(a) as
unpatentable over Frank, Howard and Bruggeman (US 4,810,123,
issued Mar. 7, 1989).

ANALYSIS
Obviousness of claims 1, 3–9, 11–13, 36 and 37 based on Frank and
Howard.
Independent claim 1 recites a modular paint apparatus including, inter
alia, “a pump access door disposed on the housing, the pump access door
manually movable between a closed position . . . and an open position.”
App. Br. 12, Clms. App. The Examiner finds that Frank discloses a modular
paint apparatus including
[a] removable side support 26 (i.e. pump access door) [that]
encloses pump head 152 (within an access opening) when the

1 Claims 38 and 39 were canceled in an Amendment filed July 15, 2011.
Appeal 2012-005804
Application 11/256,717

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pump is in use, and thereby provides access to pump head [152]
when removed (see paragraph 78). Frank also discloses the use
of a cover (i.e. pump access door; not shown; see paragraph 77)
for covering the pump and recess of the housing 25, while also
supporting the bottom of paint container 29. Although not
specifically disclosed as being movable between an open and a
closed position, the pump view shown in Figure 11 (in which
an upper pump cover has been removed) indicates a two-
position function for this unlabeled pump cover . . . . .it is
apparent that when the paint can 29 and access door 26 are
removed from the base 25, the pump head 152 (i.e. wetted parts
assembly) can be accessed and removed if necessary.

Ans. 6.2 The Examiner further finds that
panel 26 is specifically disclosed by Frank as “enclosing the
pump head 152” (see paragraph 78). [Furthermore], even if one
does not consider element 26 to be an access door, Frank
specifically discloses a “cover” disposed over the top of
housing 25 and supporting the paint container [29] thereon (see
[p]aragraph 77). As such, no matter which of these panels is
considered to be an “access door[,]” both are designed to
enclose the pump assembly within housing 25.

Adv. Act. 2, and 3, mailed July 29, 2011; See also App. Br. 7. In other
words, the Examiner considers either the side support 26 of Frank or the
removed (i.e., not shown) upper pump cover of Figure 11 of Frank to
constitute the claimed pump access door. See Id.; See also Ans. 6, 12, 13,
and 15, 16.
Appellants contend that “Frank fails to describe or suggest a pump
access door that is manually movable between a closed position (relative to

2 The Examiner relies on Howard for disclosure of a piston-type pump and
the ability to disassemble the pump without tools. See Ans. 6–9.
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Application 11/256,717

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the access opening) . . . and an open position (relative to the access
opening).” App. Br. 6. Specifically, Appellants contend that
as described at paragraph [0043] of Frank, element 26 is a side
support. One of ordinary skill in the art will appreciate that side
support 26 forms part of the structure of the paint applicator
described by Frank. The side support 26 is configured to
accommodate tubing 24 that carries paint from within a paint
container. The side support 26 is configured to support or
provide a handle 27 disposed at or near a top of Frank’s paint
applicator. The side support 26 may also be configured to
releasably support a paint roller handle on a top thereof. That
the side support 26 is described as enclosing a pump head 152
does not make a pump access door.
Clearly, the side support 26 is not manually movable
between a closed position . . . and an open position . . . . Frank
does not describe or suggest the claimed pump access door.

Id. at 6, 7. Appellants further contend that
Frank does not describe a cover that is equivalent to the claimed
pump access door. Instead, Frank merely discloses that [its]
pump assembly 22 includes an aesthetically appealing cover
that preferably includes a substantially flat top surface to
support a paint container.
There is no disclosure within Frank that the
aforementioned cover is manually movable between a closed
position . . . and an open position . . . . Frank does not describe
or suggest the claimed pump access door.

Id. at 7, 8; See also Frank, para. 77. Appellants also contend that
the Examiner’s interpretation that the unlabeled cover of Frank,
which is apparently connected to and removed from base 153
by several screws (see Fig. 11), is equivalent to an “access
door” is improper. The unlabeled cover is merely the top of the
alleged pump housing that is screwed to base 153 and is not an
access door, let alone an “access door disposed on [a] housing”
as claimed.
Appeal 2012-005804
Application 11/256,717

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Reply Br. 2.
Appellants’ arguments are persuasive. Initially, we address the
Examiner’s first proposed scenario (i.e., side support 26 of Frank constitutes
“the pump access door”). Frank discloses that (1) “[t]he pump assembly 22
has a pump housing 25, a side support 26 and a handle 27” (para. 44); (2)
“[t]he side support 26 extends upwardly from the pump housing 25 adjacent
to a side of the paint container 29” (para. 44); (3) “[a] handle 27 is attached
to the upper margin of the side support 26 opposite the pump housing 25”
(para. 46); and (4) “[t]he pump assembly 22 also includes a side portion 26
that encloses the pump head 152 . . . . The side portion 26 preferably has a
curved inner surface that is shaped to substantially conform to an outer
surface of the paint container [29]” (para. 78). Frank is silent as to the side
support 26 being movable let alone being manually movable between a
closed position and an open position. Additionally, the Examiner has failed
to establish by a preponderance of evidence that the side support 26 of Frank
is manually movable between a closed position and an open position. See
Ans. 6, 15 and 16. Consequently, the Examiner has not established that the
side support 26 of Frank constitutes “the pump access door,” as recited in
claim 1.
We now address the Examiner’s second proposed scenario (i.e., the
removed (i.e., not shown) upper pump cover of Figure 11 of Frank
constitutes “the pump access door”). Frank discloses that (1) “[t]he pump
housing 25 not only provides space for a pump . . . but also has a
substantially circular top surface 28 defining a receiver in which a paint
container 29 may be placed and supported” (para. 44, fig. 1); and (2)
Appeal 2012-005804
Application 11/256,717

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“[i]nside of the pump assembly housing 25 is the pump assembly 22 . . . .
The pump assembly 22 is supported on a housing base 153, [coupleable] to
the housing 25, preferably by means of screws.” ¶ 79, fig. 11 (emphasis
added). Frank further discloses that in
[r]eferring to FIG. 1, the pump assembly housing 25 provides
an aesthetically appealing cover for the pump assembly 22 and
supports the paint container [29]. The pump assembly housing
25 preferably includes a substantially flat top surface 28 that is
preferably [] shaped to conform to a shape of a one-gallon paint
container [29], as most clearly illustrated in FIG. 1. . . . The
pump assembly 22 may also include a strap (not shown) to
attach the paint container 29 to the pump assembly housing 25.

Frank, para. 77 (emphasis added); See also Ans. 6, 13, 15; App. Br. 7.
At the outset, we agree with the Examiner that Frank discloses a
housing 25 having a surface engaging base 153 and an upper surface 28
configured to removably receive and support a conventional paint container
29 resting on the upper surface 28, as recited in claim 1. See Ans. 6, 12; See
also Frank, figs. 1, 11. However, we do not agree that Frank discloses a
“cover” that is “disposed on the housing,” as called for by independent claim
1. Emphasis added. When a claim requires two separate elements, using
one element construed as performing two separate functions will not suffice
to meet the terms of the claim. See In re Robertson, 169 F.3d 743 (Fed. Cir.
1999). In this case, the Examiner finds that pump assembly housing 25 of
Frank constitutes both “the housing” and the “pump access door.” See Ans.
5, 6. As such, the “pump access door” is not disposed on the housing, as
called for by independent claim 1. The Examiner has not set forth
persuasive evidence or technical reasoning to show that Frank “discloses a
‘cover’ disposed over the top of housing 25.” See Adv. Act. 2, 3 (emphasis
Appeal 2012-005804
Application 11/256,717

8
added). Rather, as shown in Frank’s Figures 1 and 11, housing 25 is also the
“cover” for supporting paint container 29 thereon. Thus, the Examiner has
used the same element or structure in Frank (i.e., pump assembly housing
25), to satisfy two different limitations from the claimed subject matter, (i.e.,
the housing and the pump access door).
Consequently, the Examiner has not established that Frank discloses
“a pump access door,” as called for by independent claim 1. The
Examiner’s use of the teachings of Howard does not remedy the deficiencies
of Frank as described supra.
Accordingly, we do not sustain the Examiner’s rejection of claims 1,
3–9, 11–13, 36, and 37 over the combined teachings of Frank and Howard.
Obviousness of claims 10 and 14–17 over Frank, Howard, and
Bruggeman.
The Examiner’s rejection of claims 10 and 14–17 over Frank,
Howard, and Bruggeman (see Ans. 10, 11) is based on the same unsupported
findings discussed above with respect to the disclosure of Frank. The
addition of Bruggeman does not remedy the deficiencies of Frank.
Accordingly, for similar reasons as discussed above, we do not sustain the
Examiner’s rejection claims 10 and 14–17 over Frank, Howard, and
Bruggeman.
DECISION
We REVERSE the Examiner’s rejections.

REVERSED
rvb