Steven Adams et al.

Patent Trials and Appeals Board

Dec 22, 2020

2020003113 (P.T.A.B. Dec. 22, 2020)

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.
14/626,352 02/19/2015 Steven E. Adams 15-010-WI 9526
32118 7590 12/22/2020
LAMBERT SHORTELL & CONNAUGHTON
92 STATE STREET
BOSTON, MA 02109-2004
EXAMINER
BOECKMANN, JASON J
ART UNIT PAPER NUMBER
3752
NOTIFICATION DATE DELIVERY MODE
12/22/2020 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):
info@lambertpatentlaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte STEVEN E. ADAMS, JOHN C. HANNON, TERRY NELSON,
IAN L. CHURCHER, and ANDREW T. SINCLAIR
Appeal 2020-003113
Application 14/626,352
Technology Center 3700
Before STEFAN STAICOVICI, BRANDON J. WARNER, and
LEE L. STEPINA, Administrative Patent Judges.
STEPINA, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1, 2, 4–10, and 21–25. We have
jurisdiction under 35 U.S.C. § 6(b).
We affirm in part.

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies Worthen Industries, Inc. as the real party
in interest. Appeal Br. 2.
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Application 14/626,352
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CLAIMED SUBJECT MATTER
The claims are directed to an airless adhesive spray system including
a quantity of adhesive, a nozzle including an orifice with an outer size within
a specified range, and a pressurizing structure that provides an operating
pressure of less than 150 psi. Spec. 5, 8.
Claim 1, reproduced below, is illustrative of the claimed subject
matter.
1. An airless adhesive spray gun system comprising:
an airless adhesive spray gun configured to spray only one
component comprising:
a handle;
a trigger attached to the handle, the trigger controlling the
position of an actuating needle, the needle movable between a
closed position and an open position;
a nozzle internal component connected to the handle
comprising an interior, an inlet end attached to the airless
adhesive spray gun, and an outlet end, an orifice at the outlet end,
and a needle seat configured to sealingly receive the actuating
needle when the needle is in the closed position, the needle
passing through the nozzle internal component interior, exposing
the orifice when in the open position;
a nozzle, the nozzle having a second orifice aligned with
the orifice of the nozzle internal component, the nozzle attached
to the nozzle internal component; and the nozzle internal
component consisting of a single inlet port in communication
with the second orifice of the nozzle, and consisting of a single
outlet at the orifice, the single inlet port and orifice being the only
inlet or outlet to the nozzle interior portion;
a quantity of adhesive connected to the airless adhesive
spray gun by a connector port formed into to the handle, a flow
path passing through the spray gun handle, and into and through
the inlet port, the quantity of adhesive being a water-based
adhesive, a pressurizing structure providing the quantity of
adhesive to the airless adhesive spray gun under a pressure of
less than 150 psi;
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wherein only the single inlet port provides fluid
communication to the nozzle interior, orifice, and nozzle second
orifice, the nozzle configured to atomize a quantity of adhesive
as it passes through the orifice when the adhesive is provided to
the airless adhesive spray gun at the pressure of under 150 psi;
wherein the nozzle second orifice has an outer size of
approximately 0.28 mm to 5.16 mm; and
wherein the quantity of adhesive is a water-based adhesive
having a polychloroprene base.
Appeal Br. 23 (Claims App.).
REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Teruyuki US 4,560,109 Dec. 24, 1985
Rowitsch US 2007/0224395 A1 Sept. 27, 2007
Williams US 2008/0128083 A1 June 5, 2008

EVIDENCE RELIED ON BY APPELLANT
Name Reference Date
Hammarth US 7,216,816 B2 May 15, 2007
Declaration of Steven E. Adams, filed under 37 C.F.R. § 1.132 on May 3,
2019 (hereinafter the “First Declaration”)
Declaration of Steven E. Adams, filed under 37 C.F.R. § 1.132 on
November 1, 2019 (hereinafter the “Second Declaration”)

REJECTIONS
I. Claims 24 and 25 are rejected under 35 U.S.C. § 112(a) as
failing to comply with the written description requirement.
II. Claims 1, 2, 4–10, and 21–23 are rejected under 35 U.S.C.
§ 103 as unpatentable over Teruyuki and Rowitsch.
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III. Claims 24 and 25 are rejected under 35 U.S.C. § 103 as
unpatentable over Teruyuki, Rowitsch, Williams.
OPINION
Rejection I (Written Description)
The Examiner finds the original disclosure lacks sufficient written
description for the requirement in claims 24 and 25 that the polychloroprene
base of the adhesive does not contain polymeric microspheres. Final Act. 2–
3.
Appellant asserts that the Specification discloses two examples of
such an adhesive, namely, Fabond 1226 and Fabond 1404. Appeal Br. 7.
Appellant cites the Second Declaration as evidence these products contain
no polymeric microspheres. Id. at 7–8.
In response, the Examiner finds Appellant provides no evidence that
Fabond 1226 and Fabond 1404 contain no polymeric microspheres. Ans. 3.
The Examiner poses the inquiry, “[h]ow is one of ordinary skill in the art to
know what these adhesives are made of, or if these adhesives have changed
in composition over time?” Id. The Examiner takes the position that the
Second Declaration does not provide any basis for concluding that the
relevant products do not contain (and never have contained) polymeric
microspheres. See id. at 4. Further, the Examiner states, “it is unclear if
Fabond 1226 and 1405, will ever contain any polymeric microspheres in the
future.” Id.
The Second Declaration states “[n]either Fabond 1226, nor Fabond
1404 from Worthen Industries contain, or ever have contained in the past,
polymeric microspheres as are defined in the Rowitsch reference.” Second
Declaration ¶ 3. Contrary to the Examiner’s position, this factual statement
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itself, which is affirmed by the Declarant under 18 U.S.C. § 1001 (see
Second Declaration ¶ 4), is evidence supporting Appellant’s argument. The
Examiner does not identify any evidence supporting a finding that the
exemplary products contain polymeric microspheres.
As for the Examiner’s concern that Fabond 1226 and Fabond 1404
may, in the future, contain polymeric microspheres, the purpose of the
written description requirement is to convey with reasonable clarity to those
skilled in the art that, as of the filing date sought, applicant was in
possession of the invention as now claimed. Vas-Cath, Inc. v. Mahurkar,
935 F.2d 1555, 1563–64 (Fed. Cir. 1991). Thus, the relevant issue is
whether the exemplary materials contained polymeric microspheres at the
time of filing, and this is sufficiently addressed by the Second Declaration.
Accordingly, we do not sustain the rejection of claims 24 and 25 as failing to
comply with the written description requirement.
Rejection II (Teruyuki and Rowitsch)
Appellant argues for the patentability of the claims subject to the
second ground of rejection, i.e., claims 1, 2, 4–10, and 21–23, as a group.
See Appeal Br. 11, 19. We select claim 1 as representative of the group, and
claims 2, 4–10, and 21–23 stand or fall with claim 1. 37 C.F.R.
§ 41.37(c)(1)(iv).
The Examiner finds that Teruyuki discloses an airless spray gun
system with many of the elements recited in claim 1, but fails to disclose that
(i) its adhesive2 is water-based (with a polychloroprene base), (ii) the second
orifice of its spray gun has an outer size of approximately 0.28 mm to 5.16

2 The Examiner finds that the paint disclosed by Teruyuki qualifies as an
adhesive. Final Act. 3.
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mm, and (iii) its pressurizing structure provides a quantity of adhesive to the
airless adhesive spray gun under a pressure of less than 150 psi. Final Act.
3–4.
To remedy the first of these deficiencies in Teruyuki, the Examiner
finds “Rowitsch teaches a water-based adhesive that is suitable for spraying
applications[, ]Rowitsch describes how the adhesive is set up to be sprayed[,
]Rowitsch teaches a pressurizing structure . . . providing the quantity of
adhesive to the airless adhesive spray gun under a pressure.” Id. at 5 (citing
Rowitsch ¶ 56). The Examiner reasons “it would have been obvious to one
of ordinary skill in the art to replace the adhesive paint of Teruyuki . . . with
the water based adhesive of Rowitsch in order to spray a sprayable adhesive
from the gun of Teruyuki . . . instead of paint.” Id. at 6.
As for the lack of disclosure in Teruyuki of the recited ranges of
nozzle size and pressure provided by the pressurizing structure, the
Examiner finds “it is well known that the specific orifice size of a nozzle is a
results effective variable. The size of the orifice determines in part the size
of the spray pattern.” Final Act. 5. The Examiner reasons that, as a matter
of routine optimization, “it would have been obvious to one of ordinary skill
in the art to make the outer size of the second orifice approximately [0.28–
5.16 mm] in order to produce the desired spray pattern.” Id. Further, the
Examiner finds that Appellant does not disclose any criticality of the
claimed orifice size range. Id. at 9 (citing Spec. 8:25–27).
The Examiner also finds “it is well known that the specific fluid
pressure of a fluid in a spray gun is a results effective variable. The higher
the pressure the faster the fluid is sprayed and vice versa.” Id. at 6. The
Examiner reasons that it would have been an obvious matter of optimization
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to provide adhesive to the airless adhesive spray gun at a pressure in the
recited range. Id.
Adhesive
Under the heading “A POSITA Knows that Teruyuki and Rowitsch
Cannot be Combined,” Appellant argues there is a known difficulty with
using traditional sprayed water-based adhesives with traditional airless spray
guns, namely, it causes rapid clogging of the gun. Appeal Br. 11. Appellant
contends an air atomized spray gun was thought to be required to spray
water based adhesives, and a person of ordinary skill in the art, at the time of
the invention, would have believed the adhesive for Rowistch was
impossible to use with the airless spray gun of Teruyuki because the sprayer
would clog. See id. at 11–12 (citing Spec. 5–6, 9; First Declaration;
Hammarth 1:41–50). In this regard, the First Declaration states, “[i]t is well
known in the art of adhesive spray application that one cannot use a paint
spray gun to spray a water-based adhesive having a polychloroprene base.
The combination would almost immediately clog, ruining the spray gun
system.” First Declaration ¶ 4.
In response, the Examiner states, “Teruyuki would at least partially
atomize the water based adhesive of Rowitsch, for at least a limited time
before it clogged.” Ans. 5. The Examiner takes the position that the claims
do not preclude clogging. Id. Additionally, the Examiner finds “the water
based adhesive of Rowitsch is designed to be sprayed and has been modified
to allow it to be sprayed easier . . . Rowitsch even goes on to state that
spraying is the preferred method of application of his adhesive.” Id. (citing
Rowitsch ¶¶ 8, 55).
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In reply, Appellant reiterates that the proposed use of Rowitsch’s
adhesive in Teruyuki’s sprayer would render Teruyuki’s sprayer inoperable.
Reply Br. 4.
We do not agree with Appellant’s argument on this issue. As the
Examiner points out, Rowitsch explicitly teaches that its adhesive is
intended to be sprayed. Rowitsch ¶ 8 (“the presence of the coated
microspheres unexpectedly causes the spray pattern of the water-based
adhesive to widen and soften, thereby making the adhesive much easier to
apply in a satisfactory manner to a substrate surface by spraying.”), id. ¶ 55
(“Spraying is a particularly preferred application method.”). Rowitsch
explains that one problem its adhesive is intended to solve is unwanted
coagulation occurring during spraying. See id. ¶ 6. Thus, the kind of
clogging problem Appellant alleges would occur due to the Examiner’s
proposed modification appears to be directly discussed and addressed by
Rowitsch’s adhesive. Accordingly, Rowitsch’s disclosure contradicts
Appellant’s contentions, based on the Specification, the First Declaration,
and Hammarth,3 that the prior art teaches away from the proposed
implementation of adhesive in Teruyuki’s sprayer or that this
implementation would be impossible. Instead, the use of Rowitsch’s

3 The Examiner’s finding that Rowitsch is designed for spraying appears to
address Hammarth’s disclosure that certain properties of adhesives are
problematic and “can” result in clogging. In any event, Hammarth discloses
that, even without Rowitsch’s specially designed adhesive, clogging is
simply a disadvantage—Rowitsch does not disclose that the Teruyuki and
Rowitsch “cannot be combined,” as Appellant contends (see Appeal Br. 12).
Hammarth 1:44–47 (“Adhesive residue can build-up on the surfaces of the
dispenser, resulting in clogging. The adhesive residue must then be removed
by the user of the dispenser, which is time consuming and disruptive in the
adhesive application process.”).
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adhesive in a sprayer, such as that of Teruyuki, would merely have been the
use of that adhesive in the purpose for which this adhesive was designed.
In a related argument, Appellant notes that Rowitsch discloses its
adhesive includes particles (polymeric microspheres) of a size up to 500
microns, and, based on this, asserts that Rowitsch’s particles would clog an
orifice having a size within the claimed range of 0.28 mm to 5.16 mm.
Appeal Br. 18–19. Specifically, Appellant states, “[e]ven if the orifice were
larger, if two or three of these particles are aligned during spraying as often
happens, they likely will clog the orifice and lead to clogging of the spray
gun. Using the Rowitsch adhesive sprayed through the Teruyuki spray gun
and as further modified as the Examiner has alleged is ‘obvious’ would not
work.” Id. The First Declaration reiterates this argument. See First
Declaration ¶ 9.
In response, the Examiner finds that Rowitsch discloses particles
smaller than 500 microns, and these would fit through orifices in the size
range recited in claim 1, “especially if the orifice size was on the larger end
of the claimed range.” Ans. 7–8.
Rowitsch discloses that the size of the particles in its adhesive is not
critical, but is typically from about 5 to about 500 microns. Rowitsch ¶ 31.
Further, Rowitsch discloses “[i]n one embodiment, the particle size
(diameter) of the microspheres is from about 20 to about 60 microns.” Thus,
the Examiner’s finding that Rowitsch discloses particles of a size smaller
than 500 microns is supported by a preponderance of the evidence. We
agree with the Examiner that such particles would fit through an orifice
having a size within the range recited in claim 1. Indeed, even if three
particles 60 microns in diameter were aligned, the resulting 180 micron
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dimension would still be smaller than the 0.28 mm (280 micron) size at the
bottom of the range recited in claim 1.
Orifice Size and Pressure Range
Appellant asserts that the Examiner relies upon improper hindsight in
determining it would have been obvious to a skilled artisan to provide an
orifice size and apparatus for providing pressure in the ranges recited in
claim 1 because “neither the orifice size nor operational pressure are actually
results effective variables as the Examiner asserts.” Appeal Br. 13. In this
regard, Appellant contends “both the claimed orifice sizing and operational
pressure claimed in the present application yield a functional difference in
the spray gun over the prior art: the fact that the gun does not rapidly or
immediately clog.” Id. (citing Spec. 9) (emphasis added). Appellant argues
“[t]he combination of orifice sizing, adhesive selection, and pressure work
together to be critical to the operation of the claimed invention (allowing it
to spray without rapid clogging) and therefore a results effective variable
basis for obviousness is improper.” Id. at 14. Appellant argues “[t]he
unexpected result is ability to operate the spray gun without it clogging
almost immediately, as was a well-known problem in the art,” and this result
is “a change in kind rather than degree.” Id. at 17. The First Declaration
states “[t]he present invention claimed yields unexpected results not only in
not rapidly clogging, but also in an unexpected greater bond strength.” First
Declaration ¶ 8. As for the Examiner’s finding that Appellant’s
Specification discloses that the orifice size is not critical, Appellant argues
that this is contradicted by First Declaration. Id. Further, Appellant
contends the Examiner is reading this portion of the Specification out of
context, and, in any event, this language has been deleted from the
Specification by amendment. Id. at 17–18.
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In response, the Examiner finds “it is well known that the larger the
orifice size, the less of a chance the orifice will clog, the smaller the orifice
size, the better chance the orifice will clog” and determines “[o]ne of
ordinary skill in the art would know how to optimize the orifice size to
achieve a predictable result of the nozzle not clogging at a certain operating
pressure.” Ans. 6. The Examiner finds that the recited range of orifice sizes
is “very large,” and, again referring to page 8 of the Specification, finds that
the recited range is not critical. Id. at 7.
In reply, Appellant states, “six pages of detailed explanation [were
provided] in the Appeal Brief which clearly explain why pressure and orifice
size are not result-effective variables. These arguments remain unrebutted.”
Reply Br. 5.
“A person of ordinary skill is also a person of ordinary creativity, not
an automaton,” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007), and
is not limited to physically combining references, see In re Mouttet, 686
F.3d 1322, 1332 (Fed. Cir. 2012) (citing In re Etter, 756 F.2d 852, 859 (Fed.
Cir. 1985) (en banc). Given that neither the Examiner nor Appellant has set
forth any assertion as to the relevant level of ordinary skill in the art, we will
consider the cited prior art as representative of this threshold. See Okajima
v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). Teruyuki is directed to
a shaft sealing device for an airless paint spray gun. See Teruyuki, Abstract.
Rowitsch is directed to a sprayable adhesive that reduces clogging. See
Rowitsch ¶ 8. Williams is directed to a sprayable adhesive containing
blends of polychloroprene dispersions. See Williams ¶ 2. Hammarth is
directed to an airless application system for adhesives with a tip cleaning
function. See Hammarth, 1:13–18. As Appellant points out, Hammarth is
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concerned with the issue of adhesive clogging. See Appeal Br. 12;
Hammarth 1:41–51.
Given the level of skill in the art established by the disclosures in
Teruyuki, Rowitsch, Williams, and Hammarth, a person of ordinary skill in
the art would understand that nozzle size and operating pressure are two of
the most basic variables for control of the flow of spray exiting a nozzle.
The most fundamental goal of the person of ordinary skill in the art would
be to make a functional spraying system. In light of this goal and the level
of skill in the art, we agree with the Examiner that a person of ordinary skill
in the art would have had the knowledge and motivation to fine tune the
orifice size of the spray system nozzle to achieve a predictable result of
reducing clogging of the nozzle. See Ans. 6. For the same reasons, we
agree with the Examiner that configuring a pressurizing structure to provide
adhesive to the airless adhesive spray gun under a pressure of less than 150
psi would have been an obvious matter of routine optimization.
Accordingly, we sustain the rejection of claim 1 as unpatentable over
Teruyuki and Rowitsch. Claims 2, 4–10 and 21–23 fall with claim 1.
Rejection III (Teruyuki, Rowitsch, and Williams)
Claims 24 and 25
Claim 24 depends from claim 1 and requires that “the water-based
adhesive having a polychloroprene base does not contain polymeric micro
spheres.” Appeal Br. (Claims App.). Claim 25 depends from claim 21 and
recites the same requirement. See id.
The Examiner finds that Teruyuki, modified as proposed in Rejection
II, fails to disclose that its adhesive does not contain polymeric
microspheres. Final Act. 8. Nonetheless, the Examiner finds Williams
discloses a water-based adhesive having a polychloroprene base that does
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not contain polymeric microspheres. Id. at 9 (citing Williams, Abstract).
The Examiner reasons “it would have been obvious to one of ordinary skill
in the art at the time the invention was [filed] to use the water based
adhesive or William in the device of Teruyuki . . . as modified above, in
order to have the adhesive be environmentally friendly as taught by
Williams.” Id.
Appellant contends “Examiner’s proposed combination of references
ignores the core teaching of Rowitsch: that the polymeric microspheres are
required for proper operation of the Rowitsch adhesive.” Appeal Br. 20.
Appellant also contends that nothing in Williams explicitly states that there
are no polymeric microspheres in its adhesive. Id. at 19.
In response, the Examiner states that the proposed modification
simply replaces the adhesive taught by Rowitsch with the adhesive of
Williams as a matter of simple substitution. Ans. 8. The Examiner
reiterates that this change would result in a more environmentally friendly
system. Id.
Appellant has the better position. Claims 24 and 25 depend from
claims 1 and 21, respectively. To the extent that Williams discloses an
adhesive without polymeric microspheres, its proposed substitution for the
adhesive of Rowitsch would undermine the Examiner’s reasoning in the
rejection of claims 1 and 21 for using the adhesive of Rowitsch in the spray
system of Teruyuki. As noted by the Examiner (Ans. 5) and discussed
above, Rowitsch’s adhesive is designed to be applied via spraying, and
polymeric microspheres contribute to this ability. See Rowitsch ¶¶ 8, 55.
This benefit disclosed by Rowitsch supports the Examiner’s rejection of
independent claims 1 and 21. Thus, the Examiner’s proposal, in the
rejection of dependent claims 24 and 25, to use an adhesive that (the
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Examiner finds) does not disclose polymeric microspheres is incongruent
with the Examiner’s reasoning for rejecting independent claims 1 and 21.
Accordingly, we do not sustain the rejection of claims 24 and 25 as
unpatentable over Teruyuki, Rowitsch, and Williams.

CONCLUSION
The Examiner’s rejections are affirmed in part.

DECISION SUMMARY

Claims
Rejected
35 U.S.C. § Basis  Affirmed Reversed
24, 25 112(a) Written Description  24, 25
1, 2, 4–10,
21–23
103 Teruyuki, Rowitsch  1, 2, 4–10,
21–23

24, 25 103 Teruyuki, Rowitsch,
Williams
24, 25
Overall
Outcome
1, 2, 4–10,
21–23
24, 25

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 IN PART