Ex Parte Minion

Patent Trial and Appeal Board

Dec 8, 2016

12040145 (P.T.A.B. Dec. 8, 2016)

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.
12/040,145 02/29/2008 Corey Minion MINI P0101US 8846
7590 12/09/2016
COREY MINION
844 COUNTRY CLUB ROAD
BRIDGEWATER, NJ 08807
EXAMINER
BOECKMANN, JASON J
ART UNIT PAPER NUMBER
3752
MAIL DATE DELIVERY MODE
12/09/2016 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 COREY MINION
____________________

Appeal 2015-002404
Application 12/040,145
Technology Center 3700
____________________

Before: LINDA E. HORNER, CHARLES N. GREENHUT, and
BRENT M. DOUGAL, Administrative Patent Judges.

DOUGAL, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134 from a final rejection of
claims 1–9. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm-in-part.

Appeal 2015-002404
Application 12/040,145

2
CLAIMED SUBJECT MATTER
The claims are directed to an air spray glue gun. Claim 1, reproduced
below, is the only independent claim.
1. A spray gun for spraying an adhesive material comprising:
an adhesive pathway for receiving the adhesive material;
a heating element for melting the adhesive material into an
adhesive stream which flows within the adhesive pathway;
an air pathway for an air stream; and
a nozzle comprising an end of the adhesive pathway and
an end of the air pathway, wherein the end of the air pathway
runs in contact with the end of the adhesive pathway such that
the adhesive pathway and the air pathway have a laminar
configuration at the nozzle such that the air stream and adhesive
stream exit the nozzle flowing substantially laminarly and
adjacent to one another to interact pursuant to the Venturi effect.

REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Steinel US 4,642,158 Feb. 10, 1987
Kendall US 2008/0073448 A1 Mar. 27, 2008

REJECTIONS
Claims 1–3, 6, and 7 are rejected under 35 U.S.C. § 102(b) as being
anticipated by Steinel.
Claims 1–3 and 6–9 are rejected under 35 U.S.C. § 102(e) as being
anticipated by Kendall.
Claim 4 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Kendall.
Claim 5 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Steinel.
Appeal 2015-002404
Application 12/040,145

3
OPINION
Preliminary Matters
The drawings are objected to for not depicting features of claim 4.
Final Act. 3. We do not address the merits of the objection because the
Examiner's objection is a petitionable matter–not an appealable matter. 37
C.F.R. §§ 1.113(a), 1.181; see also MPEP § 2163.06(II) and MPEP § 706.01
(“[T]he Board will not hear or decide issues pertaining to objections and
formal matters which are not properly before the Board.”).

Steinel
Appellant argues that claim 1 is not anticipated because Steinel does
not teach:
the end of the air pathway runs in contact with the end of the
adhesive pathway such that the adhesive pathway and the air
pathway have a laminar configuration at the nozzle such that the
air stream and adhesive stream exit the nozzle flowing
substantially laminarly and adjacent to one another to interact
pursuant to the Venturi effect.
Appeal Br. 7. Rather, “[t]he glue dispenser 7 of Steinel is spaced apart
substantially from the end of the sleeve 18 that encompasses the hot air
blower 14. The air and adhesive pathways do not run in contact and there is
no laminar and adjacent flow from the gun as claimed.” Id. at 7.
The Examiner provides two lines of reasoning for how these features
are taught by Steinel. Answer 2. First, the Examiner states that “the term
‘air pathway’ and ‘adhesive pathway’ are being considered to mean the
pathway that the air or adhesive travel on, not the tube or structure that
surrounds the air or adhesive pathway.” Id. at 3. This interpretation is
inconsistent with the language of the claim that defines the respective ends
Appeal 2015-002404
Application 12/040,145

4
to be part of the nozzle (“a nozzle comprising an end of the adhesive
pathway and an end of the air pathway”).
Second, the Examiner states that as the claimed ends are not fully
defined, the nozzles 71 and 18 of Steinel are in contact with each other which
is all that is required to teach the claimed features. Id. This interpretation is
also inconsistent with the claim language. Claim 1 requires “a nozzle
comprising an end of the adhesive pathway and an end of the air pathway,
wherein the end of the air pathway runs in contact with the end of the
adhesive pathway.” It is not sufficient for the structure of the two nozzles to
contact each other; rather the claim requires the ends of the adhesive
pathway and the air pathway to “run[] in contact.”
For these reasons we do not sustain the anticipation rejection of claim
1 under Steinel. For this same reason, we do not sustain the rejections based
on Steinel of claims 2, 3, and 5–7, which depend from claim 1.

Kendall
Appellant argues that claim 1 is not anticipated because “Kendall
operates to produce essentially the opposite effect from the claimed
invention” and thus, “Kendall teaches away from the claimed invention.”
Appeal Br. 8–9.
But, as noted by the Examiner, under an anticipation rejection, “it
doesn't matter how different the prior art functions from the present
invention, what matters is how the prior art is structurally different from the
claimed invention.” Answer 5. See Celeritas Techs., Ltd. v. Rockwell Int'l

1 The Answer refers to reference number 18 for both the air pathway and the
adhesive pathway of Steinel, which appears to be a typographical error.
Appeal 2015-002404
Application 12/040,145

5
Corp., 150 F.3d 1354, 1361 (Fed. Cir. 1998) (“teaching away” is legally
irrelevant to the question of anticipation).
The Examiner found that “[s]ince Kendall discloses all structural
limitations of the claimed invention, it is fully capable of performing the
intend[ed] use of ‘the air stream and adhesive stream exit the nozzle to
interact pursuant to the Venturi effect.’” Answer 5. The Examiner further
concludes: “the flow in the adhesive pathway and the air pathway are fully
capable of flowing laminarly depending on the velocity of and the amount of
material and/or air. While in its use, Kendall is fully capable of providing
laminar flow that causes a Venturi effect just as the claim requires.” Id. at 6.
Appellant disagrees and argues that “reliance of the Venturi effect” is
a structural, as well as, functional difference. Reply Br. 2. It is argued that
this is because “use of the Venturi effect to draw out the glue bead into a
strand stems from the configuration of the air and adhesive pathways being
directly in contact and adjacent to each other at the end of the gun.” Id.
Appellant argues that Kendall does not teach “the end of the air pathway
runs in contact with the end of the adhesive pathway” and thus “there is no
laminar flow and no operation of the Venturi effect as claimed.” Appeal Br.
9. Appellant explains that this is because “the gas port 3 [of Kendall]
extends out of contact from the nozzle 1.” Id.
Though Kendall does teach that the gas port is in front of the adhesive
pathway (by as little as 5 mm (Kendall ¶ 49)), it is not clear why this would
prevent the claimed laminar flow. Rather Kendall appears to be consistent
with the teachings of Appellant’s Specification as shown by claim 6 which
states that “the air pathway exits the nozzle at a location substantially
adjacent to and with an offset upstream from where the adhesive pathway
Appeal 2015-002404
Application 12/040,145

6
exits the nozzle.” See also Specification 7:28‒29, Fig. 3. Appellant does
not explain why the slightly upstream air pathway exit of Kendall is not
capable of providing laminar flow while the similar design described in the
Specification is able to.
For these reasons we are not informed of error in the rejection of
claim 1 under Kendall. Claims 2 and 6–9, which depend from claim 1 and
are not separately argued, fall with claim 1 for the same reasons. See 37
C.F.R. § 41.37(c)(1)(iv).

Claims 3 and 4
Apparatus claim 3 depends from claim 1 and adds “wherein the spray
gun has a power rating, and an angle of attack of the air stream against the
adhesive stream exiting the nozzle is set based on the power rating of the
spray gun.” Apparatus claim 4 depends from claim 3 and adds “wherein the
spray gun has a power rating of at least eighty watts and the air stream and
the adhesive stream exit the nozzle parallel to one another.”
In rejecting claim 3, the Examiner found that it is inherent that “the
spray gun [of Kendall] has a power rating” and found that the angle of attack
of the air stream “is set to 0 degrees in fig 1.” Final Act. 6.
In rejecting claim 4, the Examiner found that Kendall teaches the
claimed parallel exits and that a power rating of 80 watts is obvious “in
order to adequately heat the glue in the glue gun.” Id. at 7–8.
Appellant argues that Kendall does not “relate[] the angle of the air
stream to the power rating of the gun in any manner.” Appeal Br. 10. It is
further argued:
Appeal 2015-002404
Application 12/040,145

7
claims 3–5 do not recite the mere presence of an angle of attack
and power rating, but further recite a specific configuration that
relates the angle of attack to the power rating. Accordingly, even
if it is assumed that the devices in the references inherently have
“an” angle of attack and “a” power rating in the general sense, it
is not inherent or otherwise disclosed that the angle of attack is
set based on the power rating as claimed.
Appeal Br. 10–11.
Appellant appears to be arguing that claims 3–5 are product-by-
process claims and that it is not enough for the Examiner to find the claimed
structural features in the prior art; rather, the Examiner also needs to find a
method-like teaching of determining the angle of attack based on the power
rating. But this is incorrect.
[E]ven though product-by-process claims are limited by and
defined by the process, determination of patentability is based on
the product itself.
The patentability of a product does not depend on its method of
production. If the product in the product-by-process claim is the
same as or obvious from a product of the prior art, the claim is
unpatentable even though the prior product was made by a
different process.
In re Thorpe, 777 F.2d 695, 697 (Fed. Cir. 1985) (citations omitted).
For this reason we are not informed of error in the rejection of claims
3 and 4 over Kendall.

DECISION
The Examiner’s rejections of claims 1–3 and 5–7 over Steinel are
reversed.
The Examiner’s rejections of claims 1–4 and 6–9 over Kendall are
affirmed.
Appeal 2015-002404
Application 12/040,145

8
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)(1)(iv).

AFFIRMED-IN-PART