Ford Motor Company et al.

Patent Trials and Appeals Board

Dec 3, 2021

2021000421 (P.T.A.B. Dec. 3, 2021)

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.
15/195,110 06/28/2016 Alexander MARROCCO 83680144 7351
28395 7590 12/03/2021
BROOKS KUSHMAN P.C./FGTL
1000 TOWN CENTER
22ND FLOOR
SOUTHFIELD, MI 48075-1238
EXAMINER
SCHATZ, CHRISTOPHER T
ART UNIT PAPER NUMBER
1748
NOTIFICATION DATE DELIVERY MODE
12/03/2021 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@brookskushman.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte ALEXANDER MARROCCO, HOSSEIN FIROOZGAN,
JOOSOK JINN, ISAAC ZOLOTAREV, and ARNOLD BELL1
____________

Appeal 2021-000421
Application 15/195,110
Technology Center 1700
____________

Before N. WHITNEY WILSON, CHRISTOPHER C. KENNEDY, and
SHELDON M. MCGEE, Administrative Patent Judges.

KENNEDY, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) from the Examiner’s
decision rejecting claims 1–6 and 16. We have jurisdiction under 35 U.S.C.
§ 6(b). We AFFIRM.
BACKGROUND
The subject matter on appeal relates to systems for dispensing
lubricant/sealer. E.g., Spec. ¶ 1; Claim 1. Claim 1 is reproduced below
from page A-1 (Claims Appendix) of the Appeal Brief:

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. The Appellant identifies the real party in interest as Ford
Motor Company. Appeal Br. 1.
Appeal 2021-000421
Application 15/195,110

2
1. A lubricant/sealer dispenser system comprising:
a pressurized reservoir containing a lubricant/scaler;
a nozzle receiving the lubricant/sealer from the pressurized
reservoir, the nozzle including a tube for wicking the
lubricant/sealer;
a motor configured to rotate the nozzle within an opening in a
part at a selected depth within the opening; and
a robot moving the part in coordination with rotation of the
nozzle, wherein the nozzle follows an inner sidewall surface of
the opening and the tube applies a bead of the lubricant/sealer
directly on the inner sidewall surface.
REJECTIONS ON APPEAL
The claims stand rejected under 35 U.S.C. § 103 as follows:
1. Claims 1, 2, 5, and 6 over Perego2 and Kotoyori3.
2. Claims 3 and 4 over Perego, Kotoyori, and Cordray4.
3. Claim 16 over Perego, Kotoyori, and Naoki5.
ANALYSIS
After review of the cited evidence in the appeal record and the
opposing positions of the Appellant and the Examiner, we determine that the
Appellant has not identified reversible error in the Examiner’s rejections.
Accordingly, we affirm the rejections for reasons set forth below, in the
Final Action dated December 2, 2019, and in the Examiner’s Answer.

2 US 5,993,592 (issued Nov. 30, 1999).
3 US 6,228,203 B1 (issued May 8, 2001).
4 US 8,342,478 B1 (issued Jan. 1, 2013).
5 US 2007/0141951 A1 (published June 21, 2007).
Appeal 2021-000421
Application 15/195,110

3
Rejection 1
The Appellant argues the claims as a group. We select claim 1 as
representative, and the remaining claims subject to Rejection 1 will stand or
fall with claim 1. See 37 C.F.R. § 41.37(c)(1)(iv).
The Examiner finds that Perego discloses each element of claim 1
except the pressurized reservoir. Final Act. 3–4. Of particular relevance to
the issues raised by the Appellant, the Examiner finds that Perego’s nozzle
includes a tube because a “nozzle is inherently a tube because delivering of
glue requires tube.” Id. at 3. As to the recitation that “the tube applies a
bead of the lubricant/sealer directly on the inner sidewall surface [of the
workpiece],” the Examiner finds that “the [workpiece] and lubricant/sealer
are considered material to be worked upon and do not further limit the
apparatus” id., and that Perego’s nozzle and tube are structurally capable
performing the recited function because, “when the part is thick enough,
direct contact between the lubricant/sealer and part will occur[].” Id. at 3–4
(citing Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1469
(Fed. Cir. 1990) (“[A]pparatus claims cover what a device is, not what a
device does.”)).
As to the pressurized reservoir, the Examiner finds that Kotoyori
discloses a lubricant/sealer dispenser system comprising a pressurized
reservoir. Id. at 4. The Examiner finds that it would have been obvious to
use a reservoir such as that of Kotoyori with the system of Perego “as such a
modification enables effective storage of the lubricant/sealer before it is
supplied. Additionally, use of the reservoir enables controlled distribution
of the lubricant/sealer.” Id.
Appeal 2021-000421
Application 15/195,110

4
In view of those findings, the Examiner concludes that the subject
matter of claim 1 would have been obvious to a person of ordinary skill in
the art. Final Act. 4.
The Appellant argues, without meaningful explanation, that “[t]he
Examiner erred in concluding without evidentiary support that [in Perego]
the nozzle contacts the disc for wicking a lubricant/sealer directly onto the
discs.” Appeal Br. 5.
That argument is unpersuasive. As an initial matter, we observe that
the claim does not require the nozzle or tube to contact the workpiece; it
requires only that the tube “appl[y] a bead of the lubricant/sealer directly on
the inner sidewall surface.” As described above, the Examiner makes
specific findings as to how Perego’s structure falls within the scope of the
claim language, and the Appellant does not acknowledge or address those
findings. The Appellant’s argument amounts to mere disagreement with the
Examiner’s rationale, which is inadequate to show reversible error in the
rejection.6 Cf. SmithKline Beecham Corp. v. Apotex Corp., 439 F.3d 1312,
1320 (Fed. Cir. 2006) (“[M]ere statements of disagreement . . . as to the
existence of factual disputes do not amount to a developed argument.”); see
also In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011) (“[I]t has long been
the Board’s practice to require an applicant to identify the alleged error in
the examiner’s rejections . . . .”).
The Appellant also argues, without elaboration, that Perego “fails to
disclose a tube for wicking a lubricant/sealer directly on the inner sidewall

6 Arguments raised for the first time in the Reply Brief (e.g., Perego teaches
a spray nozzle rather a wicking nozzle/tube, Reply Br. 2) are untimely, and
we decline to consider them. See 37 C.F.R. § 41.41(b)(2).
Appeal 2021-000421
Application 15/195,110

5
surface as claimed in claim 1.” Appeal Br. 5.
That argument is unpersuasive because it fails to meaningfully
address the Examiner’s specific findings concerning that limitation and,
thus, amounts to mere disagreement with the Examiner’s findings.
The Appellant also argues that “[t]he Examiner erred in concluding
that nozzles 27 of Kotoyori include a tube for wicking a lubricant/sealer
directly on a surface of a part as now claimed in amended claim 1.” Appeal
Br. 6. That argument is unpersuasive because, as set forth above, the
Examiner relies on Perego for the disclosure of a tube within the scope of
claim 1. In re Keller, 642 F.2d 413, 426 (CCPA 1981) (“[O]ne cannot show
non-obviousness by attacking references individually where, as here, the
rejections are based on combinations of references.”).
We affirm the Examiner’s rejection of claim 1.
Rejection 2
Rejection 2 encompasses claims 3 and 4. The Appellant presents
arguments only as to claim 3, so claim 4 will stand or fall with claim 3. See
37 C.F.R. § 41.37(c)(1)(iv).
Claim 3 requires “a valve receiving the lubricant/sealer from the
pressurized reservoir and providing the lubricant/sealer to the nozzle are
attached to a bracket, and wherein the motor rotates the valve, the nozzle and
the bracket as a unit.” The Examiner finds that Kotoyori discloses a valve
for receiving lubricant/sealer from its pressurized reservoir. Final Act. 5.
The Examiner finds that Cordray “discloses that it is known to place a valve
on a bracket 330 and rotate said valve with a motor.” Final Act. 5. The
Examiner determines that it would have been obvious “to attach the valve to
a bracket and rotate said valve and bracket with the motor as taught by
Appeal 2021-000421
Application 15/195,110

6
Cordray as such a modification provides support for the valve and stabilizes
said valve. Since in the modified system the valve and bracket are capable
of rotating via the motor that rotates the nozzle, it follows that the bracket,
valve and nozzle are all capable of rotating as a unit via the motor.” Id.
The Appellant argues that the Examiner “erred in interpreting
[Cordray] for its teaching of providing a valve on a bracket 330 and rotating
the valve with a motor.” Appeal Br. 6. The Appellant states that, in
Cordray, the bracket 330 “is connected by a mounting assembly to a support
structure 331 such as a wall or post,” and that “[a]n output assembly 340 is
coupled to a connector 240 that rotates the valve.” Id.
The Appellant’s argument is essentially a recitation of what is
disclosed by Cordray without an explanation of why that structure (or the
Examiner’s combination of it with Perego and Kotoyori) falls beyond the
scope of the claim. Such is inadequate to identify reversible error in the
Examiner’s rejection. Cf. SmithKline Beecham, 439 F.3d at 1320; Jung, 637
F.3d at 1365; Keller, 642 F.2d at 426. In addition, we note that, in the
Answer, the Examiner provides additional explanation of how the prior art
teaches or suggests the subject matter of claim 3, see Ans. 6, and the
Appellant fails to address that discussion in the Reply Brief.
The Appellant also argues that Cordray does not disclose the subject
matter of claim 2. Appeal Br. 6. Although it is unclear why the Appellant
argues about claim 2 in the context of Rejection 3 (which does not
encompass claim 2), that argument is not persuasive because the Examiner
relies on Perego, not Cordray, as disclosing the subject matter of claim 2.
The Appellant also argues that Cordray is nonanalogous art “in that it
relates to valves for undersea pipelines” and “addresses the different
Appeal 2021-000421
Application 15/195,110

7
problem of calibrating valve actuators and contaminants entering the
housing of the valve actuators.” Appeal Br. 7.
In the Answer, the Examiner responds that the relevant field of
endeavor is “controlling fluid flow through piping,” which encompasses
both the subject matter on appeal and Cordray. Ans. 6. The Examiner also
finds that one problem addressed by the application on appeal is “controlling
the flow of fluid through the tube with a valve,” and that “Cordray is
pertinent to this problem because Cordray discloses a detailed valve for
controlling such a flow.” Id. at 7.
Although the Appellant files a Reply Brief, the Appellant does not
challenge any of the Examiner’s findings in the Answer concerning
analogous art.
Art is analogous to the claimed invention if (1) the art is “from the
same field of endeavor, regardless of the problem addressed,” or (2) the art
is “reasonably pertinent to the particular problem with which the inventor is
involved.” In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004). “The
Supreme Court’s decision in KSR International Co. v. Teleflex, Inc. directs
us to construe the scope of analogous art broadly . . . .” Wyers v. Master
Lock Co., 616 F.3d 1231, 1238 (Fed. Cir. 2010) (internal citation omitted).
On this record, we are unpersuaded of reversible error in the
Examiner’s determination that Cordray constitutes analogous art at least
under the “reasonably pertinent” prong of Bigio because it is undisputed that
both Cordray and the application on appeal concern the problem of
controlling the flow of fluid through a tube with a valve. See Ans. 6. That
Cordray may also be pertinent to other problems, see Appeal Br. 7
(identifying other problems addressed by Cordray), does not establish that it
Appeal 2021-000421
Application 15/195,110

8
is nonanalogous art. Cf. Donner Tech., LLC v. Pro Stage Gear, LLC, 979
F.3d 1353, 1361 (Fed. Cir. 2020) (“In any event, a reference need not be
reasonably pertinent to every problem facing a field to be analogous prior
art, but rather need only be ‘reasonably pertinent to one or more of the
particular problems to which the claimed inventions relate.’”).
We affirm the Examiner’s rejection of claims 3 and 4.
Rejection 3
Claim 16 depends from claim 1 and requires that “the tube is a
polytetrafluoroethylene tube.”
The Examiner finds that Naoki discloses “a nozzle/tube 3 capable of
dispensing a lubricant/sealer, said tube made of PTFE.” Final Act. 6. The
Examiner determines that it would have been obvious “to modify Perego
such that the tube is made of PTFE as such a modification increases the
chemical resistance of the tube.” Id.
The Appellant argues that neither Naoki nor any of the other prior art
“disclose[s] wicking a lubricant/sealer onto a surface with a PTFE tube.”
Appeal Br. 7–8.
That argument is unpersuasive because it attacks the references
individually. The Examiner finds that it would have been obvious to use a
PTFE tube in the apparatus of the combined prior art (i.e., make the tube of
Perego from PTFE) because the PTFE tube provides chemical resistance.
The Appellant fails to address or otherwise identify error in that rationale.
We affirm the Examiner’s rejection of claim 16.
Appeal 2021-000421
Application 15/195,110

9
CONCLUSION
In summary:
Claims
Rejected
35
U.S.C. § References Affirmed Reversed
1, 2, 5, 6 103 Perego, Kotoyori 1, 2, 5, 6
3, 4 103 Perego, Kotoyori, Cordray 3, 4
16 103 Perego, Kotoyori, Naoki 16
Overall
Outcome 1–6, 16
No time period for taking any subsequent action in connection with this
appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED