Ex Parte Carlsen et al

Patent Trial and Appeal Board

Mar 7, 2016

12193389 (P.T.A.B. Mar. 7, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/193,389 08/18/2008
63759 7590 03/09/2016
DUKEW. YEE
YEE & AS SOCIA TES, P.C.
P.O. BOX 802333
DALLAS, TX 75380
FIRST NAMED INVENTOR
Joshua P. Carlsen
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.
08-0281-US-NP 4735
EXAMINER
NGUYEN, TUAN N
ART UNIT PAPER NUMBER
3754
NOTIFICATION DATE DELIVERY MODE
03/09/2016 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):
ptonotifs@yeeiplaw.com
mgamez@yeeiplaw.com
patentadmin@boeing.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JOSHUA P. CARLSEN, DAVID ALLEN TRIGGS, and
MICHAEL B. FLANNIGAN
Appeal 2014-001520 1,2
Application 12/193,389
Technology Center 3700
Before BIBHU R. MOHANTY, PHILIP J. HOFFMANN, and
CYNTHIA L. MURPHY, Administrative Patent Judges.
HOFFMANN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the rejections of
claims 1-8, 10-15, and 21. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
1 Our decision references Appellants' Specification ("Spec.," filed Aug. 18,
2008), Appeal Brief ("Appeal Br.," filed June 17, 2013), and Reply Brief
("Reply Br.," filed Nov. 9, 2013), as well as the Final Office Action ("Final
Action," mailed Mar. 15, 2013) and the Examiner's Answer ("Answer,"
mailed Oct. 3, 2013).
2 According to Appellants, The Boeing Company is the real party in
interest. Appeal Br. 2.
Appeal2014-001520
Application 12/193,389
According to Appellants, the invention "relates to a method and
apparatus for applying a seal material to a surface of an object." Spec. i-f 1.
Claims 1 and 15 are the only independent claims under appeal. We
reproduce below claims 1 and 15 as representative of the appealed claims.
1. An apparatus comprising:
a housing having a cavity;
a moveable applicator moveably attached to the housing;
at least one channel having an inlet in communication with
the cavity and an outlet in communication with the moveable
applicator; and
a flow control mechanism for changing an amount of
communication between the cavity and the inlet for the at least
one channel.
15. An apparatus for applying a sealant, the apparatus
compnsmg:
a housing having a cavity;
a wheel moveably attached to the housing;
a number of posts iocated adjacent to the wheei, the
number of posts configured to redistribute excess sealant onto the
wheel; and
at least one channel having an inlet in communication with
the cavity and an outlet in communication with the wheel.
Appeal Br., Claims App.
REJECTIONS AND PRIOR ART
The Examiner rejects the claims as follows:
claim 12 under 35 U.S.C. § 112, second paragraph, as indefinite; and
claims 1-8, 10-15, and 21under35 U.S.C. § 102(b) as anticipated by
Major (US 7 ,086,800 B2, iss. Aug. 8, 2006). See Final Action 2--4.
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Appeal2014-001520
Application 12/193,389
Indefiniteness Rejection
ANALYSIS
The Examiner rejects claim 12 under 35 U.S.C. § 112, second
paragraph, as indefinite, finding " [ i ]t is unclear as to how the guides 416 and
418[,] which are part of the housing 402[,] can be replaceable; therefore, it is
unclear as to what structure is being claimed." Final Action 2. The
Examiner further finds
the mere recitation of "guide 338 and guide 340 may be
removable and/or replaceable" [in paragraph 49 of Appellant's
Specification] does not explain the necessary structures required
for allowing "the number of guides is replaceable" as claimed[,]
since the drawings merely show the guides to be a part of the
housing. One of ordinary skill in the art cannot ascertain the
scope of claim 12 since there are infinite solutions and it is
unclear as to which one Applicant is trying to claim.
Answer 2. We agree with Appellants, however, that the Examiner fails to
establish that the claim is indefinite (as opposed to broad) or that one of
ordinary skill would be unable to determine the scope of the claim. See
Appeal Br. 6, Reply Br. 2-3. We, therefore, do not sustain the indefiniteness
rejection of claim 12.
Anticipation rejection
Independent claim 1, from which claims 2-8, 10-14, and 21 depend,
recites, "a flow control mechanism for changing an amount of
communication between the cavity and the inlet for the at least one channel."
Appeal Br., Claims App. The Examiner finds that Major discloses the
claimed flow control mechanism because "screw cap 100 inherently
control[ s] the liquid flow by tightening and loosening[,] which control[ s] the
amount of air into the cavity[,] which control[ s] the amount of liquid output
at 70." Final Action 3. We agree with Appellants, however, that the
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Appeal2014-001520
Application 12/193,389
Examiner fails to establish that screw cap l 00 changes an amount of
communication between the space in body 20 (that the Examiner relies on to
teach the claimed cavity) and dispensing aperture 70 (that the Examiner
relies on to teach the claimed channel). See Appeal Br. 9-10; Final
Action 3. Thus, we do not sustain the rejection of claims 1-8, 10-14,
and 21.
Independent claim 15 recites "a number of posts located adjacent to
the wheel, the number of posts configured to redistribute excess sealant onto
the wheel." Appeal Br., Claims App. The Examiner determines that in
Major "the number of posts (30, 30) is inherently configured to redistribute
excess sealant onto the side of the wheel since the liquid flowing down
inherently splash onto side of posts (30, 30) and is inherently get [sic]
deflected back onto the wheel." Final Action 4. We agree with Appellants,
however, that the Examiner does not establish, such as by reference to
anything in Major or any other evidence, or by a persuasive line of technical
reasoning, that Major's posts 30 redistribute the liquid flowing from the
chamber back onto dispensing wheel 40. See Appeal Br. 13. Thus, we do
not sustain the rejection of claim 15.
DECISION
We REVERSE the Examiner's rejections of claims 1-8, 10-15,
and 21under35 U.S.C. §§ 112 and 102(b).
REVERSED
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