Ex Parte Strong

Patent Trial and Appeal Board

Jan 29, 2015

12137369 (P.T.A.B. Jan. 29, 2015)

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.
12/137,369 06/11/2008 Christopher L. Strong GRAC:0008-1/12557.01 7391
52145 7590 01/29/2015
FLETCHER YODER (ILLINOIS TOOL WORKS INC.)
P.O. BOX 692289
HOUSTON, TX 77269-2289
EXAMINER
KIM, CHRISTOPHER S
ART UNIT PAPER NUMBER
3752
MAIL DATE DELIVERY MODE
01/29/2015 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 CHRISTOPHER L. STRONG
____________

Appeal 2012-006234
Application 12/137,3691
Technology Center 3700
____________

Before MICHAEL C. ASTORINO, BART A. GERSTENBLITH, and
KEVIN W. CHERRY, Administrative Patent Judges.

ASTORINO, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
The Appellant appeals under 35 U.S.C. § 134 from the Examiner’s
decision rejecting claims 4, 5, 7–10, and 24–29. We have jurisdiction over
the appeal under 35 U.S.C. § 6(b).
We reverse.

1 According to the Appellant, “[t]he real party in interest is Illinois Tool
Works Inc.” Appeal Br. 2.
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Application 12/137,369

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Representative Claim
4. A spray system, comprising:
a spray device, comprising:
a body, comprising:
a first section comprising fluid and air exits
longitudinally offset from one another;
a removable fluid nozzle disposed in fluid
communication with the fluid exit; and
a second section disposed about the removable
fluid nozzle and removably coupleable to the first
section, wherein the second section comprises an air
passageway in pneumatic communication with the air
exit;
a repeatable positioning mount, comprising:
a first releasable coupling removably coupled to the
spray device and comprising a first axis of rotation
extending through the body of the spray device;
and
a second releasable coupling removably coupleable to an
external mounting member and comprising a
second axis of rotation relative to the external
mounting member;
wherein the first and second axes of rotation are fixed
relative to one another, are generally parallel in a
plane, and are independent of each other; and
a positioning system coupled to the repeatable positioning
mount.

Rejections
Claims 24–26 are rejected under 35 U.S.C. § 112, second paragraph,
as indefinite.
Claims 4, 5, 7–10, and 27–29 are rejected under 35 U.S.C. § 102(b) as
anticipated by Dooley (US 4,205,791, iss. June 3, 1980).

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Application 12/137,369

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ANALYSIS
Indefiniteness
Claim 4 requires a repeatable positioning mount, including “a first
releasable coupling” and “a second releasable coupling.” Appeal Br.,
Claims. App. Claim 24 depends from claim 4, and recites:
. . . wherein the repeatable positioning mount comprises:
a U-shaped body through which the first and second
releasable couplings are disposed, wherein the first
releasable coupling is removeably aligned with
opposite ends of a mounting bore of the body of the
spray device such that the first axis of rotation and
an axis of the mounting bore of the spray device
are coaxial;
a first shaft extending through the first releasable
coupling and the mounting bore of the body of the
spray device; . . . .
Appeal Br., Claims. App. (emphases added).
The Examiner determines that the “mounting bore” and “first shaft” of
claim 24 appear to be double inclusions of the “first releasable coupling”
required by claim 4 and as such, indefinite. See Answer 4. The Examiner
supports this determination by citing to the Specification at paragraph 19.
Answer 4. Paragraph 19 recites, among other things, “a first releasable
coupling, such as a mounting receptacle and a fastening mechanism”
(emphasis added). See Answer 8–9. The Examiner takes this example as a
suggestion that the term “coupling,” in light of the Specification, is defined
by two elements connected together. Answer 9.
The Appellant contends claim 24 is not indefinite due to “double
inclusion” because the term “coupling” “may include the receptacles (e.g.,
holes) that extend through the releasable positioning mount 64 without
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Application 12/137,369

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necessarily including additional features.” Reply Br. 2. The Appellant’s
contention is persuasive.
Considering the broadest reasonable interpretation of “coupling,” in
light of the Specification as would be understood by one of ordinary skill in
the art, we agree with the Appellant that a “coupling” may include a
receptacle, i.e., hole or opening, in a mount. Further, the Examiner’s
determination is based on an example provided by the Specification, rather
than broadest reasonable interpretation as understood by one of ordinary
skill in the art. As such, we disagree with the Examiner’s determination that
the “mounting bore” and “first shaft” of claim 24 appear to be double
inclusions of the “first releasable coupling” required by claim 4.
For similar reasons as those offered above, the Examiner determines
that “a pair of mounting holes” and “a pair of threaded fasteners,” as recited
in claim 24, appear to be double inclusions of the “second releasable
coupling” required by claim 4. For similar reasons as discussed above, we
disagree with the Examiner’s determination.
Thus, the Examiner’s rejection of claims 24–26 under 35 U.S.C.
§ 112, second paragraph, as indefinite is not sustained.

Anticipation by Dooley
Independent claim 4 requires a repeatable positioning mount,
including “a first releasable coupling . . . comprising a first axis of rotation
extending through the body of the spray device.” Appeal Br., Claims App.
(emphasis added).
The Examiner’s rejection of independent claim 4 relies on a finding
that Dooley’s reference number 64, which Dooley describes as a “second
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Application 12/137,369

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arm,” constitutes a part of the body of a spray device, as required by
independent claim 4. See Answer 5–6; Dooley, col. 5, l. 11.
The Appellant contends that the aforementioned finding is
unreasonable. See Appeal Br. 10, Reply Br. 3–4. The Appellant asserts that
Dooley’s second arm 64 is a component of manipulating/control
mechanism 20. Appeal Br. 9; see also Dooley, col. 5, ll. 1–41, Figs. 1–2.
The Appellant also asserts that merely because second arm 64 connects
indirectly to spray gun 26 through numerous brackets, e.g., first supporting
bracket 88, second supporting bracket 114, and mounting bracket 66, does
not mean that second arm 64 is part of spray gun 26, i.e., a spray device. See
Appeal Br. 10. The Appellant’s contention is persuasive.
In response, the Examiner advances a contrary position. Answer 10.
The Examiner explains:
Nothing in appellant’s specification or claims narrow the
definition of a “body” of the “device” to Dooley’s [spray]
gun 26. Dictionary.com defines “device” as a thing made for a
particular purpose. Dooley’s [spray] gun 26 plus arm 64 is a
device, or a thing, made for the particular purpose of an
articulating spray outlet at the end of arm 58. The structure of
gun 26 plus arm 64 constitutes a body.
Answer 10 (emphasis added).
At the outset, it is unclear if the Examiner statement that “Dooley’s
[spray] gun 26 plus arm 64 is a device, or a thing, made for the particular
purpose of an articulating spray outlet at the end of arm 58” should be taken
on its face, or if the Examiner meant to state Dooley’s spray gun 26 plus arm
64 is a device, or a thing, made for the particular purpose of articulating a
spray outlet at the end of arm 58. In the first instance, the Examiner is using
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“articulating” as an adjective, and in the second instance, “articulating” is
used as a verb.
In the first instance, we refer back to the Appellant’s persuasive
contention, which points out that Dooley’s second arm 64 is not part of
spray gun 26. Further, we note that the Examiner’s explanation fails to point
to a particular purpose of Dooley’s “articulating spray outlet,” i.e.,
“Dooley’s [spray] gun 26 plus arm 64.” Additionally, we note that
determining a purpose exists for separate structures of a device without
identifying the particular purpose does not offer a cogent response to the
Appellant’s contention.
In the second instance, we note that the Examiner does not explain,
and we do not understand, how articulating a spray outlet is a purpose that
overlaps with the purpose of “the body of the spray device,” as recited in
claim 4. See also Reply Br. 3–4. The Appellant’s Specification discloses
positioning system 24, which may include “a robotic arm, and a variety of
other positioning mechanisms controlled by [a] control system 20.” Spec.,
para. 16; see Fig. 1. The Specification also discloses that control system 20
may be coupled to spray device 12. Spec., para. 16. The Specification does
not disclose that a positioning system, e.g., positioning systems 24 or 34, for
a spray device, e.g., spray device 12, is part of the body of the spray device.
See also Spec., para. 16, Fig. 1. Hence, we understand that the purpose of
articulating a spray outlet is consistent with a purpose of control system 20,
which is not part of the body of spray device 12. See Spec., para. 18.
Consequentially, we do not understand Dooley’s second arm 64, which is a
component that helps to move spray gun 26, to be part of the body of spray
gun 26. Accordingly, we disagree with the Examiner’s explanation.
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Application 12/137,369

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Thus, for the foregoing reasons, the Examiner’s rejection of
independent claim 4, and its depending claims, under 35 U.S.C. § 102(b) as
anticipated by Dooley is not sustained.

DECISION
We reverse the rejections of claims 4, 5, 7–10, and 24–29.

REVERSED

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