Ex Parte Steiger

Patent Trial and Appeal Board

Jan 31, 2017

12769849 (P.T.A.B. Jan. 31, 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.
12/769,849 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.
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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
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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
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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.
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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.”
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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
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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).
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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
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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
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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
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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.
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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
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