Ex parte Person

Board of Patent Appeals and Interferences

Jul 13, 1999

08222547 (B.P.A.I. Jul. 13, 1999)

Application for patent filed April 1, 1994. According1
to appellant, this application is a division of Application
08/078,427, filed June 17, 1993.
1
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today
(1) was not written for publication in a law journal and
(2) is not binding precedent of the Board.
Paper No. 20
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte STEVEN M. PERSON
__________
Appeal No. 96-3650
Application 08/222,5471
__________
ON BRIEF
__________
Before GARRIS, WARREN, and OWENS, Administrative Patent
Judges.
GARRIS, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on an appeal from the final rejection
of claims 16 through 22 which are all of the claims remaining
Appeal No. 96-3650
Application No. 08/222,547
2
in the application.
The subject matter on appeal relates to a method for
preventing the migration of air bubbles from a first chamber
region of a reservoir to a second chamber region of the
reservoir comprising the step of partitioning the reservoir
with a fluid permeable member which defines a fluid permeable
boundary between the first chamber region and the second
chamber region as set forth in independent claim 16. The
appealed subject matter also relates to a method for applying
liquid material from a supply to an applicator roller
comprising a number of steps which are set forth in
independent claim 19. A copy of the appealed claims appear in
the Appendix of the appellant’s brief.
The references relied upon by the examiner as evidence of
obviousness are:
Zimmer 4,538,541 Sep. 3, 1985
Bruno 4,821,672 Apr. 18, 1989
Claims 16 through 22 stand rejected under 35 U.S.C. § 103
as being unpatentable over Bruno in view of Zimmer. In the
last paragraph on page 4 of the answer, the examiner expresses
his obviousness conclusion in the following manner:
It would have been obvious to one having
Appeal No. 96-3650
Application No. 08/222,547
3
ordinary skill in the art to have added a brush to
the coating liquid reservoir of Bruno because Zimmer
teaches that transfer roller operations (such as
that of Bruno) are susceptible to foaming which
deteriorates coating uniformity and the addition of
a brush prevents air entrapment and the resulting
foam formation. Thus, it would have been obvious to
the skilled artisan that the addition of a brush to
the Bruno process would prevent foaming and ensure
uniform coating application.
OPINION
We can not sustain this rejection.
As correctly argued by the appellant and graphically
displayed in Exhibit A of the reply brief, if Zimmer’s brush
were added to the reservoir of Bruno as proposed by the
examiner, the resulting method would not include the
appellant’s claimed step of “partitioning said reservoir with
a fluid permeable member which defines a fluid permeable
boundary between the first chamber region and the second
chamber region” (independent claim 16) or the step of
“partitioning the reservoir cavity into a first reservoir
chamber and a second reservoir chamber with a fluid permeable
member” (independent claim 19). Stated more simply, the
examiner’s rejection can not be sustained because, even if the
applied references were combined in the manner proposed, the
resulting combination would not correspond to the here claimed
Appeal No. 96-3650
Application No. 08/222,547
4
invention.
Other issues
The appellant and the examiner should consider and
address
on the record whether appealed claims 16 and 17 distinguish
over Zimmer. This is because the method of Zimmer, as
represented by the Figure 10 embodiment, includes partitioning
a reservoir 603 with a fluid permeable member 615 which
defines a fluid permeable boundary between a first chamber
region, which is immediately above member 615, and a second
chamber region, which is immediately below member 615, whereby
the migration of air bubbles from the first chamber region to
the second chamber region is prevented (e.g., see lines 58
through 62 in column 6) in accordance with the appealed claim
16 method. As for appealed claim 17, the aforenoted method of
Zimmer would necessarily and inherently include a pressure
differential across the fluid permeable member 615 by virtue
of the difference between the hydrostatic pressure of the
fluid above member 615 and the greater hydrostatic pressure of
the fluid below member 615.
SUMMARY
Appeal No. 96-3650
Application No. 08/222,547
5
We have not sustained the examiner’s section 103
rejection of claims 16 through 22 as being unpatentable over
Bruno in view of Zimmer.
Appeal No. 96-3650
Application No. 08/222,547
6
The decision of the examiner is reversed.
REVERSED
Bradley R. Garris )
Administrative Patent Judge )
)
)
)
Charles F. Warren ) BOARD OF
PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
Terry J. Owens )
Administrative Patent Judge )
tdc
Appeal No. 96-3650
Application No. 08/222,547
7
LOCKE PURNELL RAIN HARRELL, P.C.
Attn: Intellectual Property Section
2200 Ross Avenue
Suite 2200
Dallas, TX 75201