Ex Parte ThomasonDownload PDFPatent Trial and Appeal BoardJun 14, 201612800097 (P.T.A.B. Jun. 14, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 12/800,097 05/07/2010 Michael C. Thomason 7590 06/15/2016 LC Begin & Associates, PLLC 510 Highland A venue PMB 403 Milford, MI 48381 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 ATTORNEY DOCKET NO. CONFIRMATION NO. 6059-01001 7824 EXAMINER PHAM, MINH CHAU THI ART UNIT PAPER NUMBER 1776 MAILDATE DELIVERY MODE 06/15/2016 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 MICHAEL C. THOMASON Appeal2014-003061 Application 12/800,097 Technology Center 1700 Before ADRIENE LEPIANE HANLON, GEORGE C. BEST, and WESLEY B. DERRICK, Administrative Patent Judges. DERRICK, Administrative Patent Judge. DECISION ON APPEAL This is a decision on an appeal under 35 U.S.C. § 134 from the Examiner's maintained rejection under 35 U.S.C. § 103(b) of claims 1-10 over Salazar1 in view of either Nystrom '2252 or Nystrom '270. 3, 4 A hearing was held on May 24, 2016. We have jurisdiction pursuant to 35 U.S.C. § 6. 1 Salazar et al. (US 6,093,250, issued July 25, 2000). 2 Nystrom et al. (US 5,976,225, issued November 2, 1999). 3 Nystrom et al. (US 6, 162,270, issued December 19, 2000). 4 The Examiner has withdrawn additional grounds under 35 U.S.C. § 103(a). Ans. 4-5. Appeal2014-003061 Application 12/800,097 We REVERSE and enter a NEW GROUND OF REJECTION pursuant to 37 C.F.R. § 41.50(b). CLAIMED SUBJECT MATTER Appellant's invention relates to a paint spray booth having an upper and lower portion with a flood plane panel at the lower portion where a metal mesh filter is positioned at least partially above the flood plane panel for filtering of paint spray booth contents. Spec. Abstract. Independent claims 1 and 4 are directed to paint spray booths. Independent claim 7 is directed to a method of constructing a paint spray booth. Claims 1 and 7, which are reproduced from the Appeal Brief with added emphasis, are illustrative: 1. A paint spray booth having an upper and lower portion compnsmg: a flood plane panel located at the lower portion of the paint spray booth; an annular region formed within said flood plane panel; and a metal mesh filter removably fixed within said annular region and at least partially above said flood plane panel, for filtering of paint spray booth contents. 7. A method of constructing a paint spray booth is also provided wherein the method comprises the following steps: providing a paint spray booth containing one or more flood sheets or flood plane panels; cutting one or more portions of the one or more flood plane panels, each portion consisting of a predetermined area, and each portion corresponding to an open area created by the removal of the portion; and 2 Appeal2014-003061 Application 12/800,097 installing a wire mesh or metallic mesh filter, or an equivalent thereof, into each open area. App. Br. 26-27. Claim 4 is similar to claim 1 in that it recites "said metal mesh filter extending above said flood plane panel." App. Br. 26. DISCUSSION We have reviewed the Examiner's rejections in light of Appellant's arguments that the Examiner has erred. 5 As to independent claims 1 and 4, and claims dependent thereon, we find that the Examiner has failed to meet the required burden to establish unpatentability of the claims. In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992) ("[T]he Examiner bears the initial burden, on review of the prior art or on any other ground, of presenting a prima facie case of unpatentability. "). The critical issue is whether the Examiner set forth a sufficient basis for a metal mesh filter extending at least partially above or extending above the flood plane panel. On this record, we find the Examiner did not. Accordingly, we reverse the rejections of claims 1-6, 9, and 10. As to independent claim 7, and claim 8 dependent thereon, we determine that the claims are rendered indefinite by the recitation of "installing a wire mesh or metallic mesh filter, or an equivalent thereof." Claim 7. The language of a claim only satisfies 35 U.S.C. § 112, second paragraph if "one skilled in the art would understand the bounds of the claim when read in light of the specification." Exxon Research & Eng 'g Co. v. 5 We cite the Specification ("Spec.") filed May 7, 2010; Final Office Action ("Final Act.") mailed December 19, 2012; the Appeal Brief ("Appeal Br.") filed September 19, 2013; Examiner's Answer ("Ans.") mailed October 11, 2013; and Reply Brief ("Reply Br.") filed December 11, 2013. 3 Appeal2014-003061 Application 12/800,097 United States, 265 F.3d 1371, 1375 (Fed. Cir. 2001). Accordingly, we enter a new ground of rejection of claims 7 and 8 under 35 U.S.C. § 112, second paragraph. In light of this new rejection, we do not reach the merits of the Examiner's obviousness rejection of claims 7 and 8, which we reverse pro forma. See In re Steele, 305 F.2d 859, 862 (CCPA 1962) (before a proper review of the prior art can be performed, the subject matter encompassed by the claims on appeal must be reasonably understood without resort to speculation). Our decision to reverse the rejection of claims 7 and 8 under 35 U.S.C. § 103(a) is based solely on the indefiniteness of the claims, and does not reflect on the merits of the underlying rejection. We add the following for clarity and explanation. The Examiner relies on Salazar for disclosing characteristics and features of the claimed paint spray booth comprising a flood plane panel with an annular region formed within the panel including that paint mist can be separated from the air exhaust stream using a filter or a screen instead of its preferred scrubbers. 6 Ans. 2-3; Final Act. 2 (identifying various elements from Salazar's paint spray booth in the paragraph indicating what is disclosed by Klobucar). The Examiner relies on Nystrom '225 or Nystrom '270 in the alternative for their teachings of a metal mesh filter removably fixed within 6 The Examiner inaptly refers to analogous portions of Klobucar et al. (US 6,716,272 B2, issued April 6, 2004) in setting forth the ground of rejection in the Final Office Action and Answer, but we find this harmless error where the relevant portions from Salazar are identified, albeit as coming from Klobucar, and Appellant recognizes the basis for the rejection grounded on Salazar and responds appropriately in the Appeal Brief at 11. 4 Appeal2014-003061 Application 12/800,097 the annular region formed in the flood plane panel. Ans. 3--4 (citing Nystrom '225 Fig. 1, col. 1, 11. 8-13, col. 4, 1. 53 to col. 7, 1. 58; Nystrom '270 Figs. 1 & 9, col. 1, 11. 9-16, col. 2, 11. 47-56). Appellant argues that independent claims 1 and 4 both require that the metal mesh filter extends above the flood plane panel and that the cited prior art does not teach or suggest this limitation. App. Br. 12-13, 18, 20, 21-22. Having considered the record, we find Appellant's position well- founded where we determine the Examiner has failed to provide sufficient reasoning or explanation why one of ordinary skill in the art at the time of the invention would have positioned the metal filter at least partially above the flood plane panel. Generally, Final Act.; Ans. The Examiner fails to identify how Salazar discloses positioning any metal filter at least partially above the flood plane panel. Similarly, the Examiner fails to do so for either Nystrom '225 or Nystrom '270 where in Nystrom '225 there is a perforated plate 64 with apertures (M) fixed over the filter (12) (Ans. 3, citing Nystrom '225 Fig. 1, col. 1, 11. 8-13) and in Nystrom '270 there are frame sections 20-treated as flood plane panels by the Examiner-that overlay a filter element 21 (Ans. 4, citing Nystrom '270 Fig. 1, col. 2, 11. 47-56). We will not tum to impermissible speculation or unfounded assumptions or rationales to cure the deficiencies in the rejections before us. In re Warner, 379 F.2d 1011, 1017 (CCPA 1967). We likewise decline to scour the record in the first instance for facts that might support the rejection, as our primary role is review, not examination de nova. We are unable, accordingly, to sustain the rejection of independent claim 1, and claims 2, 3, and 9 dependent therefrom, and claim 4, and claims 5, 6, and 10 dependent therefrom. 5 Appeal2014-003061 Application 12/800,097 As to independent claim 7, which recites "installing a wire mesh or metallic mesh filter, or an equivalent thereof, into each open area," we are of the opinion that the claim is rendered indefinite because we are unable to ascertain what, in light of the Specification, is an equivalent. See Exxon Research, 265 F.3d at 1375. In particular, the Specification sets forth that "[t]he filter is made from a fine mesh, and preferably a metallic mesh" (Spec. 6, 9), that "a paint spray booth constructed in accordance with the present invention will incorporate a metal mesh filter" (Spec. 7), that "[ o ]ther metal matrix filters are also contemplated" (Spec. 7), and that "wire mesh or metallic mesh filter, or an equivalent thereof' (emphasis added) can be used (Spec. 8). Critically, the Specification does not limit the filter to being a metallic filter and further fails to identify what is an equivalent to a wire mesh or metallic mesh filter or on what basis a filter or other element would be considered an equivalent. It follows, accordingly, that claim 7 and claim 8 dependent therefrom are indefinite. Because the subject matter encompassed by claims 7 and 8 cannot be reasonably understood without resorting to speculation as to what is an equivalent to a wire mesh or metallic mesh filter, we reverse proforma the obviousness rejection of claims 7 and 8. In particular, we note the cited prior art teaches removing paint mist from the air exhaust using, inter alia, filters, screens, or scrubbers which we cannot determine are, or are not, equivalent to a wire mesh or metallic mesh filter. It follows therefore that our decision to reverse the rejection of claims 7 and 8 under 35 U.S.C. § 103(a) is based solely on the indefiniteness of the claims, and does not reflect on the merits of the underlying rejection. 6 Appeal2014-003061 Application 12/800,097 CONCLUSION The Examiner's rejections of claims 1-10 are REVERSED. We enter a NEW GROUND OF REJECTION for claims 7 and 8 under 35 U.S.C. § 112, second paragraph as being indefinite. 37 C.F.R. § 41.50(b ), which provides that "[a] new ground of rejection pursuant to this paragraph shall not be considered final for judicial review." Section 41.50(b) also provides that the appellant, WITHIN TWO MONTHS FROM THE DATE OF THE DECISION, must exercise one of the following two options with respect to the new ground of rejection to avoid termination of the appeal as to the rejected claims: ( 1) Reopen prosecution. Submit an appropriate amendment of the claims so rejected or new Evidence relating to the claims so rejected, or both, and have the matter reconsidered by the examiner, in which event the proceeding will be remanded to the examiner. . .. (2) Request rehearing. Request that the proceeding be reheard under§ 41.52 by the Board upon the same record .... No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § l.136(a). REVERSED; NEW GROUND OF REJECTION PURSUANT TO 37 C.F.R. § 41.50(b) 7 Copy with citationCopy as parenthetical citation