Ex Parte SteigerDownload PDFPatent Trial and Appeal BoardJan 31, 201712769849 (P.T.A.B. Jan. 31, 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. 12/769,849 04/29/2010 Ronald STEIGER 5375-001U 8512 22429 7590 02/02/2017 HAUPTMAN HAM, LLP 2318 Mill Road Suite 1400 ALEXANDRIA, VA 22314 EXAMINER KIM, CHRISTOPHER S ART UNIT PAPER NUMBER 3752 NOTIFICATION DATE DELIVERY MODE 02/02/2017 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): docketing @ ipfirm. com pair_lhhb @ firsttofile. com EAnastasio @ IPFirm.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte RONALD STEIGER Appeal 2014-008642 Application 12/769,849 Technology Center 3700 Before EDWARD A. BROWN, WILLIAM A. CAPP, and BRENT M. DOUGAL, Administrative Patent Judges. BROWN, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Ronald Steiger (Appellant)1 appeals under 35 U.S.C. § 134(a) from the Examiner’s final decision rejecting claims 1, 2, 4, 5, 7, and 9-12, which are the pending claims. An oral hearing was conducted on January 23, 2017. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. 1 Finishing Brands Holdings Inc. is identified as the real party in interest. Appeal Br. 2. Appeal 2014-008642 Application 12/769,849 INVENTION Appellant’s disclosure “relates to a spray coating apparatus for coating material, in particular coating liquid, the spray coating apparatus comprising a spray coating gun with a gun body and a coating material tube, by means of which coating material is fed to a nozzle provided at the front end of the coating material tube.” Spec. 1,11. 3—8. Claims 1,10, and 11 are independent. Claim 1, reproduced below, illustrates the claimed subject matter. 1. A spray coating apparatus for coating material, comprising a gun body, a cylindrical coating material tube, which includes a front end and a rear end and extends through the gun body, a nozzle provided at the front end of the cylindrical coating material tube, and arranged to spray coating material fed to the nozzle by the coating material tube, a connection piece at the rear end of the coating material tube, and a metering system connected to the coating material tube by means of the connection piece for setting an amount of coating material that is fed to the nozzle per unit of time, wherein the diameter of the front end of the cylindrical coating material tube is same as the diameter of the rear end of the cylindrical coating material tube, and wherein the front end of the cylindrical coating material tube defines the part of the coating apparatus from which the coating material enters the nozzle. Appeal Br. 67 (Claims App.). REJECTIONS Claims 1, 2, 4, 5, 7, 9, and 10 are rejected under 35 U.S.C. § 112, second paragraph, as being indefinite. 2 Appeal 2014-008642 Application 12/769,849 Claims 1, 2, 4, 5, 7, and 9—12 are rejected under 35 U.S.C. § 112, first paragraph, as failing to comply with the written description requirement. Claims 1, 2, 4, 5, 7, and 9—12 are rejected under 35 U.S.C. § 102(b) as anticipated by Gilbert (US 2,714,833, issued Aug. 9, 1955). ANALYSIS Claims 1, 2, 4, 5, 7, 9, and 10 under 35 U.S.C. § 112, second paragraph The Examiner notes that claims 1 and 10 recite “a nozzle provided at the front end of the cylindrical coating material tube” and “wherein the front end of the cylindrical coating material tube defines the part of the coating apparatus from which the coating material enters the nozzle." Final Act 4; see Appeal Br. 67—70 (Claims App.) (emphasis added). The Examiner finds that tube 2 extends beyond nozzle 4, and it is uncertain how nozzle 4 is at the “front end” of tube 2. Id. The Examiner also finds that, if tube 2 extends beyond nozzle 4, as shown in Figure 2, it is uncertain how coating material enters nozzle 4 from the front end of tube 2. Id. 4—5. Appellant contests the rejection. Appeal Br. 13—20; Reply Br. 9—14. Appellant contends that “[sjimply because the tube 2 extends past the nozzle 4 does not mean it is not at the front end of the tube 2.” Appeal Br. 15. Appellant also contends that the recitation of “the front end of the cylindrical coating material tube defines the part of the coating apparatus from which the coating material enters the nozzle” (emphasis added) is not indefinite. Id. at 15—16. The Examiner responds: The term “front” is defined as: the foremost part or surface of anything; the part or side of anything that faces forward. The term “end” is defined as: the last part or extremity, lengthwise, of anything that is longer than it is wide or broad; a part or place 3 Appeal 2014-008642 Application 12/769,849 at or adjacent to an extremity. Therefore, a definitive interpretation of “front end” would be: the foremost extremity. Yet, when the claims are interpreted in light of the specification, the alternative interpretation is applicable: adjacent to the foremost extremity. What constitutes being adjacent/near the foremost extremity is relative because it is subjective. Neither the claims nor the specification provides a standard for ascertaining the requisite degree. It is uncertain how much of the tube can be considered a front end, especially when there is no general consensus or convention. Ans. 4—5 (emphasis added). As shown in Appellant’s Figure 2, the nozzle (unnumbered) is spaced from the bottom edge of coating material tube 2. Considering the bottom edge as the “foremost extremity” of coating material tube 2, we agree with the Examiner that the nozzle is not located at the “foremost extremity.” Appellant provides an annotated version of Figure 2 showing the location of the nozzle and the “front end” of coating material tube 2. Appeal Br. 30. The “front end” extends upward from the “foremost extremity” of coating material tube 2. Id. Annotated Figure 2 shows how the nozzle is provided at the “front end” of coating material tube 2. Id. The Examiner’s alternative reason why “front end” is indefinite is based on the definition of “end” as “adjacent to an extremity.” We find that the nozzle depicted in Appellant’s Figure 2 is “adjacent to an extremity [i.e., the bottom edge of coating material tube 2].” We agree with Appellant that the Examiner has not established that the term “adjacent” is a relative term, or there is “no general consensus or convention.” Reply Br. 9—11. We do not agree with the Examiner that the recited “front end of the cylindrical material tube” is unclear because “[i]t is uncertain how much of the tube can be considered a front end.” Rather, we determine that the meaning of this 4 Appeal 2014-008642 Application 12/769,849 language would be sufficiently clear to one of ordinary skill in the art when read in light of Appellant’s Specification and drawings. The Examiner also determines that the meaning of the term “fed” is unclear in the recitation of “a nozzle . . . arranged to spray coating material fed to the nozzle by the coating material tube.” Final Act. 5—6; see Appeal Br. 67 (Claims App., emphasis added). According to the Examiner, “[njozzle 4 does not spray the coating material. The coating material exits the device at the outlet of coating material tube 2. Nozzle 4 is not fed with the coating material by coating material tube 2. The coating material never contacts nozzle 4.” Ans. 5 (emphasis added). We disagree with the Examiner. First, the Examiner’s statement is inconsistent with the language of claim 1 reciting that the nozzle is “arranged to spray coating material fed to the nozzle by the coating material tube.” (Emphasis added). Second, Appellant’s annotated Figure 2 shows that the coating material travels through coating material tube 2, and enters the nozzle, which is arranged to surround coating material tube 2. Appeal Br. 30. The coating material that enters the nozzle is “fed” to the nozzle. The coating material travels through the nozzle, which sprays the coating material. As such, Figure 2 shows how the nozzle is “arranged to spray coating material fed to the nozzle by the coating material tube.” (Emphasis added). Accordingly, we determine that the meaning of this claim language would be sufficiently clear to one of ordinary skill in the art when read in light of Appellant’s Specification and drawings. We do not sustain the rejection of claims 1, 2, 4, 5, 7, 9, and 10 under 35 U.S.C. § 112, second paragraph. 5 Appeal 2014-008642 Application 12/769,849 Claims 1, 2, 4, 5, 7, and 9—12 under 35 U.S.C. § 112, first paragraph The Examiner notes that claim 1 recites “a nozzle provided at the front end of the cylindrical coating material tube, and arranged to spray coating material fed to the nozzle by the coating material tube,” and “wherein the front end of the cylindrical coating material tube defines the part of the coating apparatus from which the coating material enters the nozzle,” and that claims 10 and 11 recite substantially similar limitations. Final Act 4; see Appeal Br. 67—70 (Claims App.) (emphasis added). The Examiner determines that Appellant’s Specification discloses coating material tube 2 and nozzle 4, and Figure 2 shows coating material tube 2 passing through nozzle 4 and extending out of air cap 5. Final Act. 4. The Examiner states that the Specification discloses that “[t]he coating material tube 2 extends through the entire spray coating gun 1 and is supplied with coating material by the metering system [. . . .]” Id. (citing Spec. 7,11. 33—36). According to the Examiner, claims 1,10, and 11 appear to “define an embodiment where the coating material passes from the front end of cylindrical coating material tube 2 to nozzle 4.” Id. The Examiner determines, however, that the original disclosure fails to disclose that the coating material exits coating material tube 2 and then enters nozzle 4. Id. Appellant contests the Examiner’s rejection. Appeal Br. 21—31; Reply Br. 15—16. Appellant contends that the claims do not recite that the coating material exits the tube. Appeal Br. 23. For the written description requirement of 35 U.S.C. § 112, first paragraph, “the test for sufficiency is whether the disclosure of the application relied upon reasonably conveys to those skilled in the art that the inventor had possession of the claimed subject matter as of the filing date.” 6 Appeal 2014-008642 Application 12/769,849 See AriadPharm., Inc. v. EliLilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc) (emphasis added). To have “possession,” “the specification must describe an invention understandable to that skilled artisan and show that the inventor actually invented the invention claimed.” Id. (emphasis added). Claims 1,10, and 11 do not recite that “the coating material passes from the front end of cylindrical coating material tube [] to [the] nozzle,” as discussed by the Examiner. Final Act. 4. Accordingly, Appellant’s disclosure is not required to provide written description support for such hypothetical, unclaimed configuration. Further, Appellant identifies written support in the Specification for the claim recitation of “a nozzle provided at the front end of the cylindrical coating material tube.” Appeal Br. 25—27 (citing Spec. 1:3—8). The Specification states that “the spray coating apparatus comprising a ... a coating material tube, by means of which coating material is fed to a nozzle provided at the front end of the coating material tube.” See Spec. 1:3—8. Appellant also identifies written support in the Specification for the recitation of “and arranged to spray coating material fed to the nozzle by the coating material tube” is found. Appeal Br. 28—29 (citing Spec. 6:36—38, 1:3-8). Appellant’s position is that the recitation of “the front end of the cylindrical coating material tube defines the part of the coating apparatus from which the coating material enters the nozzle,” is supported by the Specification. Appeal Br. 29—31. The Examiner answers that in the above- quoted description at page 1, lines 3—8, of the Specification, “the ‘means’ must be read to refer to the spray coating apparatus.” Ans. 6. The Examiner states that “[t]he specification does not disclose that the coating material is 7 Appeal 2014-008642 Application 12/769,849 fed to the nozzle by coating material tube.” Id. (emphasis added). We disagree. It is clear that the term “means” refers to the “coating material tube.” Accordingly, the Specification does, in fact, disclose that the coating material is fed to the nozzle by coating material tube. The Examiner also states, “[e]ven if the literal terms of the claim can be found in the specification, the specification taken as a whole does not enable nozzle 4 being fed coating material by coating material tube 2. Ans. 6 (emphasis added). As the literal terms of the disputed claim limitations are found in the Specification, and Appellant’s drawings depict the claimed subject matter, the Examiner does not explain adequately why the inventor does not have “possession of the claimed subject matter,” that is, how the disclosure fails to provide adequate written description support for the claimed subject matter. To the extent, however, that it may actually be the Examiner’s position that the disclosure does not describe adequately how nozzle 4 shown in Figure 2 is made and used, that is, the Examiner’s position may actually be premised on lack of enablement and not inadequate written description, there is no such enablement rejection before us.2 We do not sustain the rejection of claims 1, 2, 4, 5, 7, and 9-12 under 35 U.S.C. § 112, first paragraph. 2 See, e.g., In re Wands, 858 F.2d 731, 737 (Fed. Cir. 1988) (explaining that the test for compliance with the enablement requirement is whether the disclosure, as filed, is sufficiently complete to enable one of ordinary skill in the art to make and use the claimed invention without undue experimentation). 8 Appeal 2014-008642 Application 12/769,849 Claims 1, 2, 4, 5, 7, and 9—12 as anticipated by Gilbert Claims 1, 2, 4, 5, 7, and 9 The Examiner finds that Gilbert discloses all of the limitations of claim 1. Final Act. 5. Particularly, the Examiner finds that Gilbert discloses a spray coating apparatus, comprising, inter alia, cylindrical coating material tube 45 and nozzle 35. Final Act. 5. According to the Examiner, the term ‘“spray coating’ merely indicates the intended use of the apparatus.” Ans. 8. Appellant contends that Gilbert fails to disclose all of the limitations of claim 1. Appeal Br. 32-47; Reply Br. 17—25. Appellant contends, inter alia, that Gilbert does not disclose “a spray coating apparatus for coating material.” Appeal Br. 34; Reply Br. 18—20. Rather, Appellant contends, Gilbert discloses a “burner structure for producing spectral flames.” Id. at 35. In support, Appellant points out that Gilbert describes: My invention relates to the production of spectral flames useful in flame photometry and in other arts. More particularly it relates to a simplified burner structure for producing a source of light in the form of a flame whose spectrum is characteristic of the material to be analyzed. Id.', see also Gilbert, col. 1,11. 15—20. A preamble of a claim does not limit the claim’s scope when it merely recites an intended use or purpose of the invention. See Metabolite Lab. Inc. v. Laboratory Corp. of Am. Holdings, 370 F.3d 1354, 1362, cert, dismissed, 126 S.Ct. 2921 (U.S. 2006). In addition to the language of the claim preamble, claim 1 recites, in the body, “a cylindrical coating material tube”; “a nozzle . . . arranged to spray coating material fed to the nozzle by the coating material tube,” “metering system ... for setting an amount of coating material that is fed to the nozzle per unit of time,” and “the front end of the cylindrical coating material tube defines the part of the coating 9 Appeal 2014-008642 Application 12/769,849 apparatus from which the coating material enters the nozzle.” Appeal Br. 67 (Claims App.) (emphasis added). Appellant argues that the Examiner fails to establish that the preamble is not a limitation. But, it is not necessary for us to reach this question. Whether or not the preamble is a limitation, the Examiner is still required to establish that Gilbert satisfies the remaining limitations in the claim. The Examiner also determines that Gilbert does disclose a spray coating apparatus. In Gilbert, nozzle 35 is provided at the front end (adjacent the upper end of tube 45, figure 5) of the cylindrical coating material tube 45, and arranged to spray coating material 49 (liquid 49 constitutes a coating material because when it is sprayed, it eventually will settle on a surface) fed to the nozzle 35 by the coating material tube 45. Ans. 7 (emphasis added). The Examiner also states: Even so, Gilbert’s device is an atomizer (col[.] 4, [1.] 73 through col[.] 5, [1.] 3). It atomizes liquid sample 49. Therefore, it sprays liquid sample 49. When liquid sample 49 is atomized out of tube 45, it must eventually land somewhere. That surface is coated with the atomized fluid. Therefore, Gilbert’s device constitutes a spray coating apparatus. Ans. 8—9 (emphasis added). However, we agree with Appellant that Gilbert’s burner structure does not disclose all limitations of claim 1. Gilbert states, “it is an object of the invention to incorporate an atomizer in the burner and at a position to discharge an atomized liquid sample directly into the flame zone.” See Gilbert, col. 2,11. 7—10. Gilbert provides the following description as to how the burner structure operates: The inner gas tube 35 and the sample-conducting tube 45 form a part of an atomizer serving the duel [sic] purpose of 10 Appeal 2014-008642 Application 12/769,849 aspirating a minute stream of the sample liquid from the body 49 and subdividing or atomizing this sample liquid as it issues from the minute passage 56 of the sample conducting tube 45. Thus, in a typical operation, a pressured combustion-supporting gas such as oxygen is delivered through the inlet 64 to jet at extremely high velocity past the tip of the sample-conducting tube and into the flame zone 16. This aspirates and atomizes the sample liquid. The reduction in pressure at the end 46 due to the high velocity stream of gas is sufficient to elevate the sample liquid from the vessel 50. The sample liquid is then broken up into minute mist-like particles at the end 46 by the high velocity stream of gas. It is important to note that this atomization is directly into the base of the flame zone 16. The pressured gaseous fuel such as acetylene is simultaneously supplied from the container 11 through the inlet 39 to discharge through the outer annular orifice 38 into the flame zone in surrounding relationship with the combustion-supporting gas issuing from the inner annular orifice 60 containing the atomized sample liquid. The two streams intermix almost instantaneously in the open atmosphere at the bottom of the flame zone to form a combustible mixture which can be ignited to produce the flame 15. See Gilbert, col. 4,1. 73—col. 5,1. 27 (emphasis added). In Gilbert, the combustion-supporting gas issuing from inner annular orifice 60 containing the atomized sample liquid is mixed with gaseous fuel and ignited to form flame 15. See Gilbert, col. 5,11. 14—23. Appellant points out that Gilbert discloses that the liquid medium, which the Examiner states is sprayed to form a surface coating, is, rather, burned or combusted. Reply Br. 6. Consequently, Appellant contends, there would not be any of the liquid medium left to form such surface coating. Id. Appellant also points out that Gilbert’s burner structure 10 is operated vertically to produce flame 15, and fluid 49 in container 50 would spill if tilted away from the vertical direction. Reply Br. 6; see Gilbert, Fig. 2. “The Patent Office has the initial duty of supplying the factual basis for its rejection. It may not, because it 11 Appeal 2014-008642 Application 12/769,849 may doubt that the invention is patentable, resort to speculation, unfounded assumptions or hindsight reconstruction to supply deficiencies in its factual basis.” In re Warner, 379 F.2d 1011, 1017 (CCPA 1967) (emphasis added). Gilbert does not teach that burner structure 10, as disclosed, is capable of operating as a spray coating apparatus for spraying a coating material. The Examiner does not establish that Gilbert discloses “a cylindrical coating material tube,” “a nozzle . . . arranged to spray coating material fed to the nozzle by the coating material tube,” “metering system ... for setting an amount of coating material that is fed to the nozzle per unit of time,” and “the front end of the cylindrical coating material tube defines the part of the coating apparatus from which the coating material enters the nozzle,” as claimed. (Emphasis added). As the Examiner does not provide a factual basis to support the finding that Gilbert discloses all limitations of claim 1, we do not sustain the rejection of claim 1, or dependent claims 2, 4, 5, 7, and 9, as anticipated by Gilbert. Claim 10 Claim 10 recites a “spray coating apparatus for coating material,'1'’ comprising, inter alia, “a spray coating gun” including “a nozzle . . . arranged to spray coating material fed to the nozzle by the coating material tube,” and “the front end of the cylindrical coating material tube defines the part of the coating apparatus from which the coating material enters the nozzle.” Appeal Br. 69 (Claims App.) (emphasis added). The Examiner’s findings for claim 10 are the same as for claim 1. Final Act. 5. Accordingly, we agree with Appellant that the Examiner also has not established by a preponderance of the evidence that Gilbert discloses each of these limitations of claim 10. Id. at 51—57; Reply Br. 29—35. 12 Appeal 2014-008642 Application 12/769,849 Appellant also contends that Gilbert does not disclose “a machine adapter connected to the spray coating gun, and including a compressed air cooler for cooling pattern-forming and atomizing air fed to the nozzle,” as claimed. Appeal Br. 56. The Examiner finds that Gilbert discloses compressed air cooler 40 or 65. Final Act. 5. However, we agree with Appellant that rubber tubing 40 and 65 of Gilbert are not reasonably “a compressed air cooler for cooling pattern-forming and atomizing air fed to the nozzle assembly.” Appeal Br. 50. We do not sustain the rejection of claim 10 as anticipated by Gilbert for this additional reason. Claims 11 and 12 Claim 11 recites limitations similar to those discussed above for claims 1 and 10. Appeal Br. 69—70 (Claims App.). Appellant’s arguments for claim 11 are persuasive for reasons similar to those for claims 1 and 10. Appeal Br. 58—64; Reply Br. 35—38. Accordingly, we do not sustain the rejection of claim 11, or dependent claim 12, as anticipated by Gilbert. DECISION We reverse the rejection of claims 1, 2, 4, 5, 7, 9, and 10 under 35 U.S.C. § 112, second paragraph, as being indefinite. We reverse the rejection of claims 1, 2, 4, 5, 7, and 9—12 under 35 U.S.C. § 112, first paragraph, as failing to comply with the written description requirement. We reverse the rejection of claims 1, 2, 4, 5, 7, and 9—12 under 35 U.S.C. § 102(b) as anticipated by Gilbert. REVERSED 13 Copy with citationCopy as parenthetical citation