Ex Parte Fritz et al

Patent Trials and Appeals Board

Mar 20, 2019

13128068 - (D) (P.T.A.B. Mar. 20, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/128,068
109973 7590
Bejin Bieneman PLC
2000 Town Center
Suite 800
Southfield, MI 48075
07/18/2011
03/22/2019
FIRST NAMED INVENTOR
Hans-Georg Fritz
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.
66835-0125 6784
EXAMINER
KURPLE,KARL
ART UNIT PAPER NUMBER
1717
NOTIFICATION DATE DELIVERY MODE
03/22/2019 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):
docket@b2iplaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte HANS-GEORG FRITZ,
STEFFEN WESSELKY, and TIMO BEYL
Appeal 2018-002671 1
Application 13/128,068
Technology Center 1700
Before BRADLEY R. GARRIS, JEFFREY T. SMITH, and
BRIAND. RANGE, Administrative Patent Judges.
SMITH, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 from a final rejection of
claims 1, 24--28, 31, 33, 34, 44, and 45. We have jurisdiction under
35 U.S.C. § 6.
1 Appellants identify Duerr Systems GmbH as the real party in interest.
(App. Br. 2).
Appeal2018-002671
Application 13/128,068
Appellants' invention is generally directed to a rotatable bell cup for
atomizing paint that has the lowest possible weight and the highest possible
strength. (Spec. ,r 8). Claims 1 and 44 illustrate the subject matter on appeal
and are reproduced below:
1. A rotatable bell cup for atomizing paint comprising:
a form shaping base body made of plastic, the base body having
a thickness, the form shaping base body having a plurality of
sides plurality of sides [sic], the plurality of sides including an
exterior side having an outer surface and a concave recess, and
an inner side in a cavity y,
wherein the cavity is separated from the concave recess by a
wall and
a functional element configured to provide mechanical
stiffening of the [sic] to increase rigidity of the bell cup,
wherein the functional element is made out of a material with a
greater mass density than the base body, and
wherein the functional element is a coating, having a thickness,
that covers the plurality of sides of the base body, and the base
body thickness and the coating thickness lying in a ratio of 20: 1
to 2: 1.
44. A rotatable bell cup for atomizing paint comprising:
a form shaping base body formed of plastic; and
a coating on the base body, the coating being formed of metal
having a greater mass density than the plastic of the base body
and having a greater tensile strength than the plastic of the base
body wherein the coating increases the rigidity of the bell cup;
the base body including a concave recess having a concave
surface;
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Application 13/128,068
the base body including an outer surface extending annularly
about the concave surface;
and
the base body including a wall extending between and
separating the concave recess and the cavity;
the coating covering the concave surface of the concave recess,
and the outer surface of the base body.
The Examiner maintains the following rejections from the Final
Office Action for our review:
I. Claims 1 and 24 rejected under 35 U.S.C. § I03(a) as obvious over
the combination ofNolte2 (DE 102006022057), McLaughlin (US
20040195395 Al), Tada (US 4,148,932), and Ballu (US 6,659,367
B2).
II. Claims 25-27 and 31 rejected under 35 U.S.C. § I03(a) as obvious
over the combination of Nolte, McLaughlin, Tada, Ballu, "Effects of
pretreatment by ion implantation and interlayer on adhesion between
aluminum substrate and TiN film" Thin Solid Films 493 (2005), pages
152-159 by Liu et al (hereinafter Liu) and further in view of Saxler3
(US 2008/0220555 Al).
2 US 2009/0212122 Al is cited as an English language translation for DE
102006022057.
3 Saxler US Pat. Pub. Num. 20110312159 is used for all reference citations
for the priority document publication US 2008/0220555 Al).
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Appeal2018-002671
Application 13/128,068
III. Claims 25-28 rejected under 35 U.S.C. § I03(a) as obvious over
the combination of Nolte, McLaughlin, Tada, Ballu, Liu and Werger
(WO 2008/011642).
IV. Claim 33 rejected under 35 U.S.C. § I03(a) as obvious over the
combination of Nolte, McLaughlin, Tada, Ballu, Liu and Fiala (US
6,409,104 Bl).
V. Claim 34 rejected under 35 U.S.C. § I03(a) as obvious over the
combination of Nolte, McLaughlin, Tada, Ballu, Liu, Fiala and
Fischer (US 2011/0086166).
VI. Claim 1 and 24 rejected under 35 U.S.C. § I03(a) as obvious over
the combination of Nolte, Tada, Fiala and Ballu.
VII. Claim 44 rejected under 35 U.S.C. § I03(a) as obvious over the
combination of Nolte, McLaughlin, Ballu and Foumes (US
6,659,367).
VIII. Claim 45 rejected under 35 U.S.C. § I03(a) as obvious over the
combination ofNolte, McLaughlin, Ballu, Foumes and Werger.
IX. Claim 1 provisionally rejected on the ground of nonstatutory
double patenting as being unpatentable over claim 1 of copending
Application No. 13/514,454 in view of McLaughlin and Tada.
The complete statements of the rejections on appeal appear in
the Examiner's Answer. 4 (Ans. 3-26).
4 The Examiner has restated and clarified the rejections presented in this
appeal in the Examiner's Answer.
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Application 13/128,068
OPINION
The Examiner found Nolte teaches a coating machine component-a
bell cup for a rotary atomizer- that includes a form shaping base body
coated with a chemical functional element coating. (Ans. 4). The Examiner
found Nolte does not describe the functional coating is applied to the
exterior surface as required by the claimed invention. (Ans. 5). Addressing
this difference, the Examiner found "McLaughlin teaches coating on exterior
of the nozzle prevents spallation of threaded surface (22)." (Ans. 5 citing
McLaughlin ,r 28). The Examiner specifically stated "McLaughlin is being
used to teach a coating on the exterior sides of the nozzle for long term
durability purposes." (Ans. 35).
The Examiner cited Tada for teaching a rotary atomizing device that
would have suggested modifying Nolte's base body to have a coating
thickness within the range of20:1 to 2:1. (Ans. 6). The Examiner cited
Ballu for teaching a rotary atomizing device that would have suggested
forming Nolte's base body from plastic. (Ans. 6).
Addressing claim 44, the Examiner cited Fournes for teaching internal
cavities that were coated with a coating to provide protection at high
temperatures. (Ans. 22). However, claim 44 does not require the coating of
internal cavities.
Appellants argue Nolte' s functional coating ( 11) is a friction reducing
coating and the Examiner has not provided an adequate reason for replacing
the friction reducing coating with a corrosion resisting coating as described
by McLaughlin. (App. Br. 11).
Appellants argue there is no reason to select the claimed thickness
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Appeal2018-002671
Application 13/128,068
ratio of20:1 to 2:1. (App. Br. 10). Appellants argue the Examiner
mischaracterizes Nolte's surface coating 11 thickness by using the paint
thickness 10. Appellants argue the Examiner mischaracterizes Tada by
claiming that the spacing between serrations (identified as width "b") is the
thickness of the base body. (App. Br. 10).
Appellants also argue there is no reason to form the base body from
plastic. (App. Br. 11 ). Appellants argue the trumpet shaped distribution
surface 18 of Ballu is the base body that has not been shown to be suitable to
form out a plastic. (App. Br. 10-11). Appellants further argue changing
Nolte's base body to be formed from plastic would have rendered Nolte's
atomizer inoperable because the friction reducing coating layer 11 would not
have provided any stiffening effect. (App. Br. 11-12).
Rejections over the combination of Nolte and McLaughlin 5
The Examiner rejected independent claim 1 over the combination of
Nolte, McLaughlin, Tada and Ballu. The Examiner also rejected claim 44
over the combination of Nolte, McLaughlin, Ballu and Foumes. (Ans. 3-23).
Having considered the respective positions advanced by the Examiner
and Appellants in light of this appeal record, we reverse the Examiner's
rejections. We limit our discussion to independent claims 1 and 44.
During examination, the Examiner bears the initial burden of
establishing a prima facie case of obviousness. In re Oetiker, 977 F .2d
1443, 1445 (Fed. Cir. 1992). "Rejections on obviousness grounds cannot be
sustained by mere conclusory statements; instead, there must be some
5 Rejections I-V, VII and VIII.
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Application 13/128,068
articulated reasoning with some rational underpinning to support the legal
conclusion of obviousness." KSR Int 'l Co. v. Teleflex, Inc., 550 U.S. 398,
418 (2007) (quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)); see
also, Ball Aerosol & Specialty Container, Inc. v. Ltd. Brands, Inc., 555 F.3d
984, 993 (Fed. Cir. 2009) ("[T]he analysis that 'should be made explicit'
refers not to the teachings in the prior art of a motivation to combine, but to
the court's analysis.").
We cannot sustain the rejections of independent claims 1 and 44. The
Examiner has not adequately explained why either Nolte or McLaughlin
would have suggested the application of a functional coating that covers the
plurality of sides of the base body as required by independent claims 1 and
44. Nolte discloses a friction reducing coating (11) which is present on the
surface of the bell cup that would contact with the product spray (10) that
was to be applied to a surface. (Nolte ,r,r 42, 43; Fig. 2). The Examiner's
citation to McLaughlin paragraph 28 to support the rejection is misplaced.
Contrary to the Examiner's assertions, McLaughlin discloses the application
of lubricious material to the threads of a nozzle for the beneficial effect of
limiting galling of the threads. McLaughlin specifically states:
The plating with the impregnated lubricious material of the
threads 22 of the nozzle 10 has the beneficial effect of limiting galling
of the threads. As described above, galling results in the destruction of
the threads and local welding. While this may or may not effect the
life of the individual nozzle, the effects of galling on the delivery
device can be catastrophic, resulting in down time or possible
scrapping of the entire device. Galling is typically prevented by the
isolation of similar metals by a dissimilar metal. Accordingly, the
plating of the threads with nickel or other material as described herein
prevents galling. Further, the lubricious nature of a material such as
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Application 13/128,068
PTFE allows for smoother and easier insertion and removal of the
nozzle 10 from the delivery device.
(McLaughlin ,r 28).
The Examiner has not adequately explained how the prevention of
galling ( or spalling as stated in the rejection) would have suggested coating
the wear surfaces of Nolte or application to the plurality of sides of the base
body as required by independent claims 1 and 44.
Appellants argue there is no reason to select the claimed thickness
ratio of20:1 to 2:1 (App. Br. 10). Appellants argue the Examiner
mischaracterizes Nolte's surface coating 11 thickness by using the thickness
of paint film 10. Appellants also argue the Examiner mischaracterizes Tada
by claiming that the spacing between serrations (identified as width "b") is
the thickness of the base body (App. Br. 10).
We agree with Appellants that the Examiner is improperly utilizing
the thickness of the paint film 10 that has been applied to the surface
coatingl 1 of Nolte to achieve the claimed thickness. (App. Br. 10; Nolte ,r
21). We also agree with Appellants that the Examiner's reliance on Tada is
misplaced. The Examiner responding to Appellants' argument states:
"Under the broadest reasonable interpretation, Examiner is considering the
claim to read on the width of the end surface of the base body ( serrated tips)
in Tada as these end surfaces are part of the base body and this portion of the
base body has a thickness to define a thickness of the base body." (Answer
33). The Examiner has failed to explain how the width of the serrated tips
would have suggested coating the base body of Nolte to have a thickness
ratio of 20: 1 to 2: 1 as required by independent claim 1.
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Appeal2018-002671
Application 13/128,068
Rejections over the combination of Nolte and Fiala 6
We reverse the rejection of independent claim 1 over the combination
of Nolte, Fiala, Tada and Ballu because the Examiner has not adequately
explained how the prior art would have suggested the claimed thickness ratio
of20:1 to 2:1 as discussed above.
Accordingly, we reverse the 35 U.S.C. § 103(a) rejections of claims 1,
24--28, 31, 33, 34, 44, and 45 (Rejections I-VIII) for the reasons given
above.
Non-statutory Obviousness-Type Double Patenting Rejection
In view of our reversal of all of the prior art rejections, we decline to
reach the merits of the provisional obviousness-type double patenting
rejection over claim lof copending Application No. 13/514,454 in view of
McLaughlin and Tada. We refer this back to the Examiner to determine the
appropriateness of this rejection. See Ex parte Moncla, 95 USPQ2d 1884,
1885 (BPAI 2010) (precedential). The Examiner should process the
obviousness type double patenting rejection consistent with MPEP § 804
upon return of the present application to the jurisdiction of the Examiner.
6 Rejections VI.
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Appeal2018-002671
Application 13/128,068
DECISION
The Examiner's obviousness rejections of claims 1, 24--28, 31, 33, 34,
44, and 45 are reversed.
REVERSED
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