NORDSON CORPORATION

Patent Trials and Appeals Board

Oct 1, 2021

2020006069 (P.T.A.B. Oct. 1, 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.
15/337,292 10/28/2016 Robert W. Springhorn 098974.022123 2311
75534 7590 10/01/2021
BakerHostetler
Cira Centre, 12th Floor
2929 Arch Street
Philadelphia, PA 19104
EXAMINER
SOOHOO, TONY GLEN
ART UNIT PAPER NUMBER
1774
NOTIFICATION DATE DELIVERY MODE
10/01/2021 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):
eofficemonitor@bakerlaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD

Ex parte ROBERT W. SPRINGHORN

Appeal 2020-006069
Application 15/337,292
Technology Center 1700
Before MICHAEL P. COLAIANNI, DEBRA L. DENNETT, and
SHELDON M. MCGEE, Administrative Patent Judges.
DENNETT, Administrative Patent Judge.
DECISION ON APPEAL1

1 In our Decision, we refer to the Specification (“Spec.”) of Application
15/337,292 filed Oct. 28, 2016 (“the ’292 App.”); the Final Office Action
dated Sept. 23, 2019 (“Final Act.”); the Appeal Brief filed Apr. 9, 2020
(“Appeal Br.”); the Examiner’s Answer dated June 23, 2020 (“Ans.”); and
the Reply Brief filed Aug. 21, 2020 (“Reply Br.”).
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STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant2 appeals from the
Examiner’s decision to reject claims 1, 4–15, 24, and 26. See Final Act. 1.
We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
CLAIMED SUBJECT MATTER
The claims are directed to an integrated multicomponent dispensing
system, which is configured for mixing and dispensing. Claim 1; Spec. ¶ 2.
The Specification describes that the integrated multicomponent dispensing
system combines various elements of a fluid dispenser. Spec. ¶ 2.
Conventionally, the elements of fluid dispensers are manufactured as
separate pieces, but assembling the elements together collectively is said to
be complex, costly, and time consuming. Id. ¶ 4. A reduction in the number
of pieces and operations to produce a fluid dispenser is desirable to reduce
the cost of assembly, work in-process, and inventories. Id. Claim 1,
reproduced below from the Claim Appendix of the Appeal Brief, is
illustrative of the claimed subject matter:
1. A dispensing system configured to dispense a mixture of
multiple fluid components, the dispensing system comprising:
a static mixer including an elongate tubular body defining
a fluid passageway configured to receive first and second fluid
components and a plurality of mixing baffles located within the
fluid passageway, the plurality of mixing baffles being
configured to mix the first and second fluid components when
received in the fluid passageway,

2 We use the term “Appellant” to refer to “applicant” as defined in 37 C.F.R.
§ 1.42. Appellant identifies the real party in interest as Nordson
Corporation. Appeal Br. 1.
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a cartridge including a first cylinder defining a first
chamber for holding the first fluid component and a second
cylinder defining a second chamber for holding the second fluid
component, the first cylinder having a first fluid outlet in fluid
communication with the first chamber, the second cylinder
having a second fluid outlet in fluid communication with the
second chamber, and the first and second fluid outlets being in
fluid communication selectively with the fluid passageway of the
static mixer, and
an interior wall extending from the cartridge to the static
mixer, the interior wall defining portions of the fluid
passageway, the first chamber, and the second chamber,
wherein the first and second cylinders of the cartridge, the
elongate tubular body, and the plurality of mixing baffles of the
static mixer are an integrated unitary single piece.
REFERENCES
The Examiner relies on the following prior art in rejecting the claims
on appeal:
Name Reference Date
Gronemeyer US 3,029,987 Apr. 17, 1962
Falco US 4,913,553 Apr. 3, 1990
Rovellini WO 2007/113627 A1 Oct. 11, 2007
REJECTIONS
The Examiner maintains the following rejections:
1. Claims 1, 4, 12–15, 24, and 26 under 35 U.S.C. § 102(a)(1) as
anticipated by Falco. Final Act. 9–14.
2. Claims 1, 4, 12–15, 24, and 26 under 35 U.S.C. § 103 as
unpatentable over Falco in view of Rovellini. Final Act. 15–25.
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3. Claims 5–11 under 35 U.S.C. § 103 as unpatentable over Falco
in view of Rovellini, and further in view of Gronemeyer. Final
Act. 25–28.
OPINION
I. Rejection of claims 1, 4, 12–15, 24, and 26 under § 102(a)(1) as
anticipated by Falco
Anticipation is a question of fact. In re Suitco Surface, Inc., 603 F.3d
1255, 1259 (Fed. Cir. 2010). To serve as an anticipatory reference, “the
reference must disclose each and every element of the claimed invention,
whether it does so explicitly or inherently.” In re Gleave, 560 F.3d 1331,
1334 (Fed. Cir. 2009).
Appellant argues the rejection of claims 1, 4, 12–15, 24, and 26 as
anticipated by Falco as a group, based on similar features in the two
independent claims (claim 1 and clam 26). Appeal Br. 12–16. We select
claim 1 as representative of the group. 37 C.F.R. § 42.37(c)(1)(iv).
The Examiner finds that Falco discloses each component and
limitation of the dispensing system recited in claim 1, with the exception that
Falco does not explicitly describe “the first and second cylinders of the
cartridge, the elongate tubular body, and the plurality of mixing baffles of
the static mixer are an integrated unitary single piece.” Final Act. 10–11
(emphases omitted); see Appeal Br. 17 (Claims App.).
The Examiner finds that the only structural difference between
Falco’s known dispensing device and the dispensing system subject matter
of claim 1 is “in the formation of the parts as ‘an integrated unitary single
piece.’” Final Act. 11.
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Despite this finding, the Examiner determines that the claim “term
‘integrated unitary single piece’ is read . . . to broadly include different
method[s] of manufacture to produce a final single piece apparatus object.”
Id. at 3. The Examiner concludes that because the Specification describes
that multiple component 3-d printed layers elements may be
joined together . . . , or [a] separately made static mixer
component and [a] cartridge component may be formed into a
(single) “integrated multicomponent dispensing system[,]”[]
assembly of separate components into a unified single useable
object is read to meet [an] “integrated unitary single piece.”
Id. at 4. The Examiner finds that the claim term “an integrated unitary
single piece” is anticipated by Falco’s assembly of separate components into
a unified single useable dispensing system. Id. at 12.
Appellant argues that the Specification provides support for
construing the claim term “an integrated unitary single piece” recited in
claim 1 as a structural limitation. Appeal Br. 13. Appellant relies on the
Specification’s Figures 2–5 as depicting the disputed claim term. Id. at 5.
Appellant notes the Specification’s paragraph 39 describes that
the system 10, 110 may be constructed by laying down and/or
modifying successive layers or dots of material under computer
control, thereby integrally forming at least some of the cartridge
12, nozzle 14, static mixer 16 (including complex baffles),
receptacle 186, and handle 188 as an integral, unitary single
piece.
Id. Appellant contends that claim 1 is not anticipated by Falco’s dispensing
system because each of Falco’s individual components are assembled
together. Id. at 11. Appellant argues that Falco’s device “can only perform
its operations when its unit is capable of disassembly.” Id. at 12.
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In response, the Examiner finds that the Specification’s paragraph 39
does not clearly point out that “a computer controlled dot/layer construction
is meant as a structural definition” for the claim term “an integrated unitary
single piece.” Ans. 5. The Examiner finds that the Specification’s
paragraph 39 “teaches that techniques to manufacture the system include[]
methods of a production assembly line (figure 9, left side of flow chart)
and/or additive manufacturing techniques (figure 9, right side of flow
chart).” Id. at 7. The Examiner argues that the Specification’s “description
[o]f the final assembly is also inclusive of the structural product being made
by other similar [known] additive manufacturing techniques, or by an
assembly line.” Id.
However, we agree with Appellant that the Specification clearly
describes that the claim term “an integrated unitary single piece,” as recited
in claim 1, “does not include separate multiple components connected and/or
assembled together.” Reply Br. 2 (citing Spec. ¶¶ 8, 9, 28, 39–43; Figs. 2–
5). See In re ICON Health & Fitness, Inc., 496 F.3d 1374, 1379 (Fed. Cir.
2007) (explaining that, during examination, “the PTO must give claims their
broadest reasonable construction consistent with the specification.”).
Although the Examiner points to the Specification’s paragraph 39 and
Figure 9 as describing embodiments in which a dispensing system may be
assembled from separate pieces, the Specification describes these
embodiments as alternatives to a dispensing system that is an integrally
formed unitary piece. Contrary to the Examiner’s construction of claim 1,
we read the Specification as supporting the distinction between: (i) a
component that is an integrated unitary single piece and (ii) separate
components that require manufacture and assembly. See Spec. ¶ 28
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(disclosing that “the nozzle 14 can be a separate added piece to the static
mixer 16 or can be integrally formed as a unitary piece with the static mixer
16”); Figs. 2–5 (distinguishing components that are not integrally formed as
a unitary piece from components that are by including cross-sectional
parallel lines in the latter components); Fig. 10 (depicting an alternative
embodiment in which the static mixer is formed integrally as a unitary piece
for subsequent connection to the cartridge). See also Reply Br. 5
(“Applicant’s Figure 10 is not representative of the claimed [integrated
unitary single piece] subject matter” because dispenser system 210 is an
assembly of a separate static mixer 216 and cartridge 212).
Appellant persuasively shows the Examiner reversibly erred in finding
claim 1 is anticipated by Falco. We do not sustain the rejection of claim 1.
For the same reasons, we do not sustain the anticipation rejection of claims
4, 12–15, 24, and 26.
II. Rejection of claims 1, 4, 12–15, 24, and 26 under § 103 as
unpatentable over Falco in view of Rovellini
Appellant argues the rejection of claims 1, 4, 12–15, 24, and 26 for
obviousness as a group. Appeal Br. 12–16. We select claim 1 as
representative of the group. 37 C.F.R. § 41.37(c)(1)(iv).
Obviousness is a question of law based on underlying factual findings.
In re Gartside, 203 F.3d 1305, 1315–16 (Fed. Cir. 2000). “Whether there is
a reason to combine prior art references is a question of fact.” Kinetic
Concepts, Inc. v. Smith & Nephew, Inc., 688 F.3d 1342, 1367 (Fed. Cir.
2012) (citing Transocean Offshore Deepwater Drilling, Inc. v. Maersk
Contractors USA, Inc., 617 F.3d 1296, 1303 (Fed. Cir. 2010) (citing
McGinley v. Franklin Sports, Inc., 262 F.3d 1339, 1352 (Fed. Cir. 2001)).

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The Examiner finds that claim 1 is unpatentable over Falco in view of
Rovellini. Final Act. 15–20. The Examiner finds that Falco discloses each
of the elements recited in claim 1, except that Falco does not describe “the
manner in which the article product is made so that the device has
elements[,]” which “are an integrated unitary single piece.” Id. at 16. The
Examiner finds that Rovellini teaches that a static mixer may be assembled
from separate parts, but the baffles (3) and elongated tube (2) “may be
constructed using a single sintering process (SLS) to form a single integrated
product ‘without discontinuities or mechanical joints.’” Id. at 16.
The Examiner concludes that it would have been obvious at the time
the invention was filed to have incorporated Rovellini’s method of integrally
forming separate elements “to form any combination of” Falco’s assembled
parts “so as to lower the number subcomponents of the device which must
be put together to provide a[] fully functioning operable device and lower
the amount of gaps and seams between elements.” Id. at 20. In doing so,
the Examiner reasoned that one of ordinary skill in the art would have
avoided “wast[ing] time to assemble the four parts together prior to using the
device.” Id. In addition, and citing Howard v. Detroit Stove Works, 150
U.S. 164 (1893) and In re Larson, 340 F.2d 965, 968 (CCPA 1965), the
Examiner further concluded “that the use of a one piece construction instead
of the structure disclosed in [the prior art] would be merely a matter of
obvious engineering choice,” i.e., “a matter of mechanical expedience in
construction and assembly techniques.” Final Act. 20.
Appellant argues that the Examiner fails to identify any disclosure in
either Falco or Rovellini that the proposed modification would have reduced
the number of: (i) subcomponents requiring assembly or (ii) gaps and seams
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between components connected to a static mixer. Appeal Br. 14. However,
Rovellini teaches the advantage of avoiding gaps and seams. See Rovellini,
5 (“[T]he static mixer 1 thus formed is fully free from welding lines, brasing
lines or other types of joints between different elements or components . . .
[allowing a perfect connection between inner structure 3 and outer
cylindrical portion 2 . . . free from any discontinuity which may cause the
formation of critical areas in which the flow stagnates.”). In addition, “the
[obviousness] analysis need not seek out precise teachings directed to the
specific subject matter of the challenged claim, for a court can take account
of the inferences and creative steps that a person of ordinary skill in the art
would employ.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007).
Moreover,
[A]n implicit motivation to combine exists not only when a
suggestion may be gleaned from the prior art as a whole, but
when the ‘improvement’ is technology-independent and the
combination of references results in a product or process that is
more desirable, for example because it is stronger, cheaper,
cleaner, faster, lighter, smaller, more durable, or more efficient.
Because the desire to enhance commercial opportunities by
improving a product or process is universal – and even common-
sensical – we have held that there exists in these situations a
motivation to combine prior art references even absent any hint
of suggestion in the references themselves. In such situations,
the proper question is whether the ordinary artisan possesses
knowledge and skills rendering him capable of combining the
prior art references.”
Dystar Textilfarben GmbH & Co. Deutschland KG v. C.H. Patrick Co., 464
F.3d 1356, 1368 (Fed. Cir. 2006). The Examiner’s reasoning is sufficient to
provide “some articulated reasoning with some rational underpinning to
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support the legal conclusion of obviousness.” See In re Kahn, 441 F.3d 977,
988 (Fed. Cir. 2006).
Appellant also asserts that “modifying Falco to include an integrated
unitary single piece would clearly limit Falco from performing each of its
intended operations, thereby rendering it unsatisfactory for its intended
purpose.” Appeal Br. 15. For support, Appellant points to Falco’s system
that “must be disassembled for cleaning, maintenance, and disposal of used
and/or worn components.” Id.; see also id. at 11 (arguing that “[t]he specific
operation of Falco includes not only the operation of mixing, but also the
operations of removal, cleaning, maintenance, and disposal of individual
components.” (citing Falco 9:5–10).
This argument fails to persuade us of reversible error in the
rejection. The portion of Falco’s disclosure relied on by Appellant makes no
reference to cleaning or maintenance that would be required for the device to
be operable. Falco 9:5–10. Rather, this disclosure relates to the
disposability of shutoff valves. Id. Appellants have not explained how
Falco’s disclosure evinces that the device would be inoperable if it were
formed as one integrated unit. Here, we observe that Falco’s cartridges 80
and 82 are also made “to be inexpensive and disposable.” Id. at 4:60–63.
On this record, Appellant has not explained with sufficient detail precisely
how Falco’s device––which has at least two disposable parts––would not
operate if formed as one integrated unit. For the reasons above, and those
provided by the Examiner, we affirm the rejection of claim 1 as obvious
over Falco in view of Rovellini. For the same reasons, we sustain the
obviousness rejection of claims 4, 12–15, 24, and 26 not separately argued.
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III. Rejection of claims 5–11 under § 103 as unpatentable over Falco
in view of Rovellini and further in view of Gronemeyer
Appellant does not argue for the nonobviousness of claims 5–11
separately from claim 1. Appeal Br. 16. Having affirmed the rejection of
claim 1 over Falco in view of Rovellini, we affirm the rejection of claims 5–
11 over Falco in view of Rovellini and Groenmeyer. 37 C.F.R.
§ 41.37(c)(1)(iv).
CONCLUSION
The Examiner’s rejections are affirmed.
More specifically,
DECISION SUMMARY
In summary:
Claim(s)
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1, 4, 12–
15, 24, 26
102(a)(1) Falco 1, 4, 12–
15, 24, 26
1, 4, 12–
15, 24, 26
103 Falco, Rovellini 1, 4, 12–
15, 24, 26

5–11 103 Falco, Rovellini,
Gronemeyer
5–11
Overall
Outcome
1, 4–15,
24, 26

TIME PERIOD FOR RESPONSE
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