Ex Parte Hemsen et al

Patent Trials and Appeals BoardMar 28, 2019

13963716 - (D) (P.T.A.B. Mar. 28, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 13/963,716 31217 7590 Henkel Corporation One Henkel Way Rocky Hill, CT 06067 08/09/2013 04/01/2019 FIRST NAMED INVENTOR Steven J. Remsen 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. PT031220 7548 EXAMINER GRUBY, RANDALL A ART UNIT PAPER NUMBER 3754 NOTIFICATION DATE DELIVERY MODE 04/01/2019 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): rhpatentmail@henkel.com trish.russo@henkel.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte STEVEN J. REMSEN, BRYAN DESROCHES, and EDWARD A.Y. FISHER Appeal2018-003574 Application 13/963,716 1 Technology Center 3700 Before MURRIEL E. CRAWFORD, CYNTHIA L. MURPHY, and ROBERT J. SILVERMAN, Administrative Patent Judges. SILVERMAN, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE The Appellants appeal under 35 U.S.C. Â§ 134(a) from the Examiner's decision rejecting claims 1-7. We have jurisdiction under 35 U.S.C. Â§ 6(b). We REVERSE. 1 The Appellants identify Henkel IP & Holding GmbH as the real party in interest. Appeal Br. 2. Appeal2018-003574 Application 13/963,716 ILLUSTRATIVE CLAIM 1. A dispenser for dispensing an adhesive onto a surface, the dispenser comprising: a reservoir containing a flowable adhesive; a positive displacement pump for supplying a constant volume of said adhesive; a nozzle having a tapered tip, the tapered tip having a circular discharge port, wherein when dispensing the positive displacement pump delivers a predetermined amount of the flowable adhesive from the reservoir to the nozzle at predetermined intervals, and wherein the nozzle is not in contact with the surface and discharges the predetermined amount of adhesive onto the surface; a first conduit for directly connecting the reservoir and the positive displacement pump such that the adhesive is supplied directly from the reservoir to the positive displacement pump; and a second conduit for directly connecting the positive displacement pump and the nozzle such that the adhesive is supplied directly from the positive displacement pump to the nozzle. CITED REFERENCES The Examiner relies upon the following references: Geisel et al. US 4,787,332 Nov. 29, 1988 (hereinafter "Geisel") Batchelder et al. US 5,303,141 Apr. 12, 1994 (hereinafter "Batchelder") REJECTION Claims 1-7 are rejected under 35 U.S.C. Â§ 103(a) as unpatentable over Geisel and Batchelder. 2 Appeal2018-003574 Application 13/963,716 FINDINGS OF FACT The findings of fact relied upon, which are supported by a preponderance of the evidence, appear in the following Analysis. ANALYSIS The Appellants argue that independent claim 1 stands rejected erroneously, because Geisel does not teach or suggest claim 1 's recited features of "a first conduit for directly connecting the reservoir and the positive displacement pump such that the adhesive is supplied directly from the reservoir to the positive displacement pump." See Appeal Br. 3-7. The Examiner (see Final Action 1-2) finds that Geisel teaches these features in Figure 1, which is reproduced below: !Z /f'OBOT FUNCTIONS ROBOT CONTROL CQ/r'/POTER '--13 2l SERVO DRIVE M ELECTRONIC CONT!fOLt..E!? 19 //DI-IESIVE SUPPLY 15 OUTLcT PRESSLJRE REtJ-ULIITOR . INLET I PRESSURE - ......... Â·-Â·~---~ REGUL!JTOR Figure 1, reproduced above, depicts an adhesive-dispensing pump. Geisel col. 4, 11. 1-2. According to the Examiner, the Appellants' claimed "first conduit for directly connecting" is "understood to be the entirety of structure 3 Appeal2018-003574 Application 13/963,716 existing between" the outlet of the adhesive supply tank ( element 15) and the inlet of the gear pump (element 14). Answer 2. The Appellants contend that the identified structure of Geisel does not meet the claimed feature of "a first conduit for directly connecting the reservoir and the positive displacement pump," because Geisel's "inlet pressure regulator 16, which controls the flow of the adhesive, is installed/arranged within the conduit and between the supply tank 15 and the gear pump 14 such that it intervenes a direct connection of the conduit from the supply tank 15 to the gear pump 14." Appeal Br. 5. The disputed issue is whether a "conduit for directly connecting" the reservoir and the pump, as claimed, may include an intervening element, such as Geisel' s inlet pressure regulator ( element 16). The Specification does not employ the word "directly." Figure 1 of the Specification, however, shows "connecting tubing 18" between "a pressurized reservoir containing the adhesive 16" and the "rotary pump 12" -without any intervening structures (in the manner of Geisel's inlet pressure regulator). Spec. ,r 15, Fig. 1. Thus, the Appellants' position, regarding the "conduit for directly connecting" limitation, is not inconsistent with the Specification. In addition to the Specification and the claims, the prior art references considered by the Examiner, during the prosecution of a patent application, constitute intrinsic evidence that is available to aid in the construction of claim terms. See V-Formation, Inc. v. Benetton Grp. SpA, 401 F.3d 1307, 1311-12 (Fed. Cir. 2005) (construing claim language, in view of a prior art reference that was of record in the prosecution of the patent-in-suit and that employs the term at issue). Indeed, Geisel itself sheds some light on how a 4 Appeal2018-003574 Application 13/963,716 person of ordinary skill in the art, in view of the public record of the Application under review, would construe the "conduit for directly connecting" limitation. Specifically, with regard to Figure 1, Geisel indicates that - if the "outlet pressure regulator 17" intervening between the "gear pump 14" and the "nozzle 11" were omitted-then the pump would be "connected directly" to the nozzle: For systems where extreme changes in viscosity, due to changes in temperature, etc., do not occur, then the inclusion of the outlet pressure regulator 17 is not required. In such systems, the outlet port from the gear pump 14 would be connected directly through suitable conduits to the automatically controlled dispensing nozzle 11. (Geisel col. 5, 11. 32-39) (emphasis added). In view of the above-quoted passage from Geisel, we determine that - in the same manner as the "outlet pressure regulator 17" in the connection between the "gear pump 14" and the "nozzle 11" (id.)-the intervening presence of the inlet pressure regulator ( element 16) precludes Figure 1 from teaching a "conduit for directly connecting" Geisel's pump, between the outlet of the adhesive supply tank ( element 15) and the inlet of the gear pump (element 14). Accordingly, the Appellants persuade us of error in the rejection of independent claim 1. In view of the foregoing discussion, we do not sustain the rejection of independent claim 1 and dependent claims 2-7 under 35 U.S.C. Â§ 103(a). DECISION We REVERSE the Examiner's decision rejecting claims 1-7 under 35 U.S.C. Â§ 103(a). REVERSED 5