Ex Parte Baltz

Patent Trial and Appeal Board

Sep 17, 2012

11203864 (P.T.A.B. Sep. 17, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte JAMES P. BALTZ
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Appeal 2010-009020
Application 11/203,864
Technology Center 3700
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Before: LINDA E. HORNER, PATRICK R. SCANLON, and
BRADFORD E. KILE, Administrative Patent Judges.

KILE, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2010-009020
Application 11/203,864

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STATEMENT OF THE CASE
James P. Baltz (Appellant) appeals under 35 U.S.C. § 134(a) from a
final rejection of claims 22-28. Claims 1-21 have been canceled. We have
jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
THE INVENTION
In one aspect of Appellant’s invention “a compressed gas-aided
coating dispensing device includes a valve controlling the flow of
compressed gas through the device.” Spec. 1, ll. 23-24.
Appellant’s Figures 1 and 6 are reproduced below:

Figure 1 is a side view of a compress gas fluid dispensing gun 21.
Block 23 is a source of fluid, such as for example a liquid coating material,
and block 28 is a source of compressed gas. Figure 6 is an axonometric
view of a valve seat 134 and a second valve closure member 136. Spec. 5,
ll. 5-6.
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Figure 5 is reproduced below:
Figure 5 discloses a first valve closure member 132 and a second
valve closure member 136 in a fully opened position. A trigger operated
actuator rod 152 serves to sequentially open the first valve member 132
against the bias of spring 130 and then the second valve 136 against the bias
of spring 138. Spec. 5, ll. 15-32; Spec. 6, ll.1-3.
Independent claim 22, reproduced below, is representative of the
subject matter on appeal.
22. A manually operated, compressed gas-aided
coating material dispensing device including a valve for
controlling the flow of compressed gas through the
device, the valve including:

a housing;

a first valve seat;

a first port upstream from first valve seat, the first
port adapted to be coupled to a source for supplying
compressed gas through the valve;

a first valve closure member for cooperating with
the first valve seat to close the valve, preventing the flow
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Application 11/203,864

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of compressed gas between the first valve closure
member and the first valve seat;

a second valve seat;

a second valve closure member downstream from
the first valve closure member in the flow of compressed
gas and cooperating with the second valve seat to prevent
the flow of compressed gas between second valve closure
member and second valve seat;

the second valve closure member being provided
with one or more passageways extending through the
second valve closure member from an upstream side of
the second valve closure member to a downstream side of
the second valve closure member;

an operating member adapted to be manipulated by
an operator to move the first closure member away from
the first valve seat in a first stage of opening of the valve,
permitting compressed gas to flow in a second port
downstream from the valve to bring the pressure on the
downstream side of the second valve closure member
closer to the source pressure so that less force is required
to move the second closure member away from the
second seat. (Italics added.)

THE REJECTION
Claims 22-28 stand rejected as unpatentable under 35 U.S.C. § 102(b)
as being anticipated by Botkin (US 3,102,555; iss. Sep. 3, 1963).

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Application 11/203,864

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OPINION
Independent Claim 22
The Botkin patent discloses a sequential dual valve operating system
with a vacuum trip nozzle for a fuel dispensing device that exhibits a small
change in inlet pressure over a relatively wide range of rates of fluid flow
through the nozzle. Col. 1, ll. 44-47; Col. 4, l. 7.
Figures 1 and 2 are reproduced below:

Figure 1 discloses a cross-sectional view of a vacuum trip fluid
dispenser particularly adapted for the overhead filling of fuel tanks and the
like. Col. 2, ll. 1-3; col. 4, l. 7. More specifically the Botkin patent discloses
a fluid valve body 10 that has in internal flow passage 12 and an outlet
coupler 14 to latch onto a tank to be filled with fluid. Internally, note
particularly Figure 2, the valve body carries a pilot valve member 40 and a
surrounding main valve member 22 composed of a resilient disc 24 that
directly engages valve seat 20. An actuating rod 42 extends through the
pilot valve and main valve and acts in cooperation with concentric biasing
springs 36 and 41 to operably actuate the pilot valve first and then the main
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valve to facilitate fluid flow through the valve body. See e.g. Col. 2, ll. 12-
66. An automatic vacuum trip mechanism is provided by the provision of a
control rod 50, latch element 80 and associated members. Col. 2, ll. 67-72;
Col. 3, ll.1-38.
Claim 22 stands rejected as being anticipated by the Botkin patent
disclosure. 35 U.S.C. § 102(b). Anticipation is the sole rejection of
Appellant’s claim 22 in the Final Office Action and is the only issue before
us regarding claim 22.
The Federal Circuit stated in one of the early cases of its own
jurisprudence styled Titanium Metals Corp. of America v. Banner, 778 F.2d
775, 780 (Fed. Cir. 1985):
[A]nticipation under §102 can be found only
when the reference discloses exactly what is
claimed and that where there are differences
between the reference disclosure and the
claim, the rejection must be based on §103
which takes differences into account.
(Emphasis added.)

Appellant asserts that claim 22 is limited to a “compressed gas-aided
coating material dispensing device including a valve for controlling the flow
of compressed gas through the device” as stated in the preamble. The
significance of that recitation of structure is made manifest in the third
paragraph of claim 22 which recites “a first port adapted to be coupled to a
source for supplying compressed gas through the valve.” In the sixth clause
of claim 22 Appellant continues “in the flow of compressed gas and
cooperating with the second valve seat to prevent the flow of compressed
gas between second valve closure member and second valve seat.” Finally
in the last clause of claim 22 Appellant claims that the structure is
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“permitting compressed gas to flow in a second port downstream of the
valve . . . .” Appellant asserts that the Examiner has essentially ignored
these limitations of claim 22. App. Br. 5-7.
The Examiner determined that claim 22 “does not rely on the
preamble for completeness” and is thus denied the effect of a limitation, and
that other limitations of claim 22 dealing with supplying or controlling the
flow of compressed gas through the valve are recitations of intended use that
do not result in a structural difference between the claimed invention and the
structure disclosed in Botkin. Ans. 4; see Ans. 6-7. We disagree with the
Examiner’s claim interpretation. “All words in a claim must be considered
in judging the patentability of that claim against the prior art.” In re Wilson,
424 F.2d 1382, 1385 (CCPA 1970). Botkin does not disclose a compressed
gas-aided coating material dispensing device. Botkin discloses a vacuum
trip dispensing nozzle for the overhead filling of fuel tanks. There is nothing
in Botkin to suggest that the Botkin fuel nozzle is a compressed gas-aided
coating material dispensing device. To the extent the Examiner did not give
weight to the limitation “a compressed gas-aided coating material dispensing
device” in Appellant’s claim 22 because the recitation is in the preamble we
hold that this limitation in the preamble has significance and is a part of the
claim limitations. In Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d
1298, 1305 (Fed. Cir. 1999) the Federal Circuit addressed a limitation in a
claim preamble as follows:
Although our initial discussion has focused on the
preamble, as opposed to the remainder of the claim
language, this does not undercut its significance. “[A]
claim preamble has the import that the claim as a
whole suggests for it.” . . . If the claim preamble,
when read in the context of the entire claim, recites
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limitations of the claim, or, if the claim preamble is
“necessary to give life, meaning, and vitality” to the
claim, then the claim preamble should be construed
as if in the balance of the claim.” (Citations
omitted.)

In this instance we accord the limitations recited in the preamble full
significance as defining limitations in claim 22 when read in the full context
of the claim. Moreover, the recitation in claim 22 of a “compressed gas-
aided coating material dispensing device including a valve” gives “necessary
life, meaning and vitality” to the balance of claim 22. Id. We find that claim
22 is not identically disclosed by the Botkin patent. Botkin does not disclose
“[a] manually operated, compressed gas-aided coating material dispensing
device including a valve . . . .” Thus the Examiner’s rejection of claim 22 as
anticipated by the Botkin patent is reversed. 1

1 Appellant raises in section II of its Appeal Brief an issue of non-analogous
art. “[T]he question whether a reference is analogous art is irrelevant to
whether that reference anticipates.” See In re Schreiber, 128 F.3d 1473,
1478 (Fed. Cir. 1997). Moreover, an issue of obviousness is discussed in
section III of Appellant’s brief. 35 U.S.C. § 103. None of the claims on
appeal, however, has been rejected on the grounds of obviousness and we
take no position with respect to the subjects of non-analogous art or
obviousness in view of the Botkin patent disclosure.
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Dependent Claims 23- 28
The remaining claims (viz. 23-28) are all directly or ultimately
dependent from independent claim 22 that we find is not anticipated by the
Botkin disclosure. Since dependent claim(s) by definition shall “contain a
reference to a claim previously set forth and then specify a further limitation
of the subject matter claimed” (35 U.S.C. § 112 ¶ 4) if an independent claim
is not anticipated a dependent claim cannot be anticipated. Accordingly
none of Appellants dependent claims are anticipated by the Botkin patent
disclosure. The rejection under 35 U.S.C. § 102(b) of claims 23-28 over
Botkin is also reversed.

DECISION
The decision of the Examiner to reject claims 22-28 is REVERSED.

REVERSED

Klh