Ex Parte StrongDownload PDFPatent Trial and Appeal BoardJul 23, 201511077273 (P.T.A.B. Jul. 23, 2015) Copy Citation 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. 11/077,273 03/09/2005 Christopher L. Strong 12554.61/YOD/SWA ITWO:006 4972 7590 07/23/2015 Patrick S. Yoder FLETCHER YODER P.O. Box 692289 Houston, TX 77269-2289 EXAMINER KIM, CHRISTOPHER S ART UNIT PAPER NUMBER 3752 MAIL DATE DELIVERY MODE 07/23/2015 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte CHRISTOPHER L. STRONG ____________ Appeal 2013-004099 Application 11/077,273 Technology Center 3700 ____________ Before ANTON W. FETTING, JOSEPH A. FISCHETTI, and CYNTHIA L. MURPHY, Administrative Patent Judges. MURPHY, Administrative Patent Judge. DECISION ON APPEAL The Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s rejections of claims 30–40 and 43–53. We have jurisdiction over this appeal under 35 U.S.C. § 6(b). We AFFIRM. 1 “The real party in interest is Finishing Brands Holdings Inc.” (Appeal Br. 2.) Appeal 2013-004099 Application 11/077,273 2 STATEMENT OF THE CASE The Appellant’s claimed invention relates to a system “for reducing fluid drainage into air passageways of a spray device during disassembly,” by providing “an internally mountable fluid nozzle” having “a relatively small internal volume, which reduces the amount of fluid that can be spilled during disassembly of the spray device.” (See Spec. ¶ 34.) Illustrative Claim2 30. A system, comprising: a threadless nozzle that is a one-piece structure, comprising: a liquid passage extending through the threadless nozzle from a liquid inlet at a first axial end of the threadless nozzle to a liquid outlet at a second axial end of the threadless nozzle opposite the first axial end of the threadless nozzle, wherein the liquid passage comprises a first conical passage inside the threadless nozzle adjacent the liquid inlet, a cylindrical passage inside the threadless nozzle adjacent the liquid outlet, and a second conical passage inside the threadless nozzle extending directly from the first conical passage to the cylindrical passage, wherein the first conical passage converges at a first constant angle in a downstream direction, the second conical passage converges at a second constant angle in the downstream direction, and the first and second constant angles are different from one another; and an exterior surface surrounding the liquid passage, wherein the exterior surface comprises a first conical exterior surface surrounding the first conical passage, and the first conical exterior surface diverges at a third constant angle in the downstream direction. 2 This illustrative claim was quoted from the Claims Appendix (hereinafter “Claims App.”) contained on pages 35–39 of the Appeal Brief. Appeal 2013-004099 Application 11/077,273 3 Rejections I. The Examiner rejects claims 37, 47–51, and 53 under 35 U.S.C. § 112, first paragraph, as failing to comply with the written description requirement. (Answer 4.) II. The Examiner rejects claims 30–40 and 43–53 under 35 U.S.C. § 112, second paragraph, as indefinite. (Id.at 6.) III. The Examiner rejects claims 30–36, 38–40, 43–46, 52, and 53 under 35 U.S.C. § 102(e) as anticipated by Haruch (US 6,776,360 B2 issued Aug. 17, 2004). (Id. at 7.) ANALYSIS Independent claims 30, 39, and 47 are each directed to a “system” comprising a “threadless nozzle that is a one-piece structure.” (Claims App.) The nozzle comprises a “liquid passage” and an “exterior surface surrounding the liquid passage.” (Id.) The rest of the claims on appeal (i.e., claims 31–38, 40, 43–46, and 48–53) depend directly or ultimately from claim 30, claim 39, or claim 47, so they are likewise directed to a system comprising such a threadless nozzle. (Id.) Rejection I Dependent Claim 37 Claim 37 depends ultimately from independent claim 30, which requires the liquid passage to comprise “a liquid inlet,” “a liquid outlet,” “a first conical passage” and “a second conical passage.” (Claims App.) Dependent claim 37 recites the limitation “wherein the first and second conical passages collectively extend along at least half of an entire length of Appeal 2013-004099 Application 11/077,273 4 the threadless nozzle between the liquid inlet and the liquid outlet.” (Id.) The Examiner determines that the originally-filed application does not convey that the inventor had possession of the relative-length range connoted in this limitation (i.e., “at least half of an entire length of the threadless nozzle”) at the time the application was filed. (See Answer 4–5.) The Appellant argues that originally-filed Figure 4 conveys to one of ordinary skill in the art that the collective extent of the conical passages can be “at least half of an entire length of the threadless nozzle.” (See Appeal Br. 7–8.) We are not persuaded by this argument because Figure 4 depicts the conical passages collectively extending one particular length relative to the nozzle’s entire length. (See Spec., Fig. 4.) Figure 4 conveys, at most, one specific relative-length value (e.g., “one exact proportion”) that corresponds to the illustrated lengths of the conical passages and nozzle. (See Answer 4–5.) As such, we agree with the Examiner that Figure 4 does not convey to one of ordinary skill in the art that the collective extent of the illustrated conical passages can have a relative length that is “at least half of the entire length of the threadless nozzle.” (Id. at 11.) Thus, we sustain the Examiner’s rejection of claim 37 under 35 U.S.C. § 112, first paragraph. Independent Claim 47 Independent claim 47 recites the limitation “wherein the liquid passage comprises an angled annular interior surface along at least half of an entire length of the threadless nozzle.” (Claims App.) The Examiner determines that the originally-filed application does not convey possession of the recited relative-length range (i.e., “at least half of an entire length of the threadless nozzle”). (See Answer 5.) Appeal 2013-004099 Application 11/077,273 5 The Appellant argues that originally-filed Figure 4 conveys that the angled interior surface can be any of a range of relative lengths that is “at least half of the entire length of the threadless nozzle.” (See Appeal Br. 9– 10.) For the same reasons discussed above for claim 37, we are not persuaded by this argument. Thus, we sustain the Examiner’s rejection of claim 47 under 35 U.S.C. § 112, first paragraph. Dependent Claims 48–51 Claims 48–51 depend from independent claim 47, so they intrinsically include the limitation requiring the angled interior surface to be “at least half of an entire length of the threadless nozzle.” (Claims App.) As such, they fall with claim 47 for this rejection. Thus we sustain the Examiner’s rejection of claims 48–51 under 35 U.S.C. § 112, first paragraph. Dependent Claim 53 Claim 53 depends from independent claim 39, and recites the limitation “the one-piece structure consists of only the liquid passage and the exterior surface.” (Claims App.) The Examiner determines that the originally-filed application does not convey that the disclosed one-piece structure “consists of only” the liquid passage and exterior surface. (See Answer 5–6.) The Appellant argues that originally-filed Figure 4 shows that the recited consists-of-only feature was in the possession of the inventor at the time the application was filed. (See Appeal Br. 11.) We are persuaded by the Appellant’s argument because Figure 4 depicts a one-piece structure 86 Appeal 2013-004099 Application 11/077,273 6 comprising a liquid passage 98 and an exterior surface 94. (See Spec. Fig. 4.) The Examiner contends that “the one piece structure itself has a body that forms the passage and exterior surface” so it consists of more (i.e., the body material) than the liquid passage and the exterior surface. (Answer 12.) However, we agree with the Appellant that one of ordinary skill would not interpret this limitation as precluding the structure from having “a body though and around which the liquid passage and the exterior surface are formed.” (Reply Br. 4–5.) Thus, we do not sustain the Examiner’s rejection of claim 53 under 35 U.S.C. § 112, first paragraph. Rejection II Independent Claims 30, 39, and 47 As indicated above, the independent claims are each directed to a “system” comprising a “nozzle.” (Claims App.) The Examiner contends that these recitals are “indefinite” because the Appellant “elected ‘a fluid nozzle’ for prosecution on the merits” and these claims do not “appear to be directed to the elected invention.” (Answer 6.) In other words, the Examiner contends the claims are directed to a non-elected invention. However, the Examiner offers no explanation as to why the claims fail to particularly point out and distinctly claim the subject matter of the invention, albeit the claimed invention is directed to a “system” and/or a non-elected invention.3 As such, the Examiner does not sufficiently support a determination that independent claims 30, 39, and 47 are indefinite. 3 We note that issues related to “elected” and “non-elected” inventions are reviewable by petition (see MPEP § 821.03), not appeal. Appeal 2013-004099 Application 11/077,273 7 Thus, we do not sustain the Examiner’s rejection of claims 30, 39, and 47 under 35 U.S.C. § 112, second paragraph. Dependent Claims 31–37, 43–46, and 49–51 These claims depend directly or ultimately from independent claim 30, 39, or 47, and thus are directed to a “system” comprising a “nozzle.” (Claims App.) For the same reasons discussed above, the Examiner does not sufficiently support a determination that these claims are indefinite by virtue of being directed to a “system.”4 Thus, we do not sustain the Examiner’s rejection of claims 31–37, 43–46, and 49–51 under 35 U.S.C. § 112, second paragraph. Dependent Claims 38, 40, and 48 Claims 38, 40, and 48 each recites limitations regarding an “air flow exterior surface” and/or an “annular air flow.” (Claim App.) The Examiner finds air flow is only the result of, or only occurs within, a combination wherein the nozzle is mounted within a spray gun. (See Answer 6–7.) According to the Examiner, these limitations are directed to “structural and/or functional elements beyond that of the elected invention” and are therefore indefinite. (Id.) As discussed above, the non-elected status of a claim does not explain why it fails to particularly point out and distinctly claim the subject matter of the invention. As such, the Examiner does not sufficiently support a determination that dependent claims 38, 40, and 48 are indefinite. 4 Likewise, the Examiner does not sufficiently support a determination that dependent claims 38, 40, 48, 52, and 53 (discussed separately below with respect to other limitations) are indefinite by virtue of being directed to a “system.” Appeal 2013-004099 Application 11/077,273 8 Thus, we do not sustain the Examiner’s rejection of claims 38, 40, and 48 under 35 U.S.C. § 112, second paragraph. Dependent Claims 52 and 53 As indicated above, independent claims 30 and 39 each recite that the one-piece structure “comprises” a liquid passage and an exterior surface. (Claims App.) Claim 52, which depends from claim 30, recites that “the liquid passage is the only passage.” (Id.) Claim 53, which depends from claim 39, recites that “the one-piece structure consists of only the liquid passage and the exterior surface.” (Id.) The Examiner determines these recitals are indefinite because the “exclusionary” claim language (i.e., “only” and “consists of only”) is inconsistent with the “comprising” transitional phrase recited in claims 30 and 39. (Answer 7.) The Appellant argues that the language at issue further limits the subject matter of the independent claims, and does not conflict with their “comprising” transitional phrases. (Appeal Br. 15–16.) We agree. With respect to claim 52, a one-piece structure wherein a liquid passage “is the only passage,” would also be a one-piece structure “comprising” a liquid passage. With respect to claim 53, a one-piece structure that “consists of only” a liquid passage and an exterior surface, would also be a one-piece structure “comprising” a liquid passage and an exterior surface. Thus, we do not sustain the Examiner’s rejection of claims 52 and 53 under 35 U.S.C. § 112, second paragraph. Rejection III As we discuss in detail below, the Examiner finds that Haruch discloses a nozzle 46 comprising all of the elements set forth in claims 30–36, 38–40, Appeal 2013-004099 Application 11/077,273 9 43–46, 52, and 53. The Examiner’s findings as to each of the claimed elements are most effectively summarized by the annotated drawing of Haruch’s nozzle 46 on page 8 of the Answer, and reproduced below. The drawing shows a nozzle 46 extracted from Haruch’s Figure 4, with the Examiner’s typed identifications of the claimed elements. In the interest of succinctness, we refer to this drawing as “Annotated Nozzle 46.” Independent Claim 30 Independent claim 30 requires the liquid passage to extend “from a liquid inlet at a first axial end of the threadless nozzle” and to comprise a “first conical passage” that is “adjacent the liquid inlet.” (Claims App.) The Examiner considers a counterbore 80 (the wide cylindrical space upstream of shoulder 79) in nozzle 46 to be the “liquid inlet” and finds that a first conical passage is adjacent thereto. (See Annotated Nozzle 46.) The Examiner explains that claim 30 “does not require the ‘liquid inlet’ to be an orifice in a two dimensional plane with no length in the longitudinal direction.” (Answer 16.) Appeal 2013-004099 Application 11/077,273 10 The Appellant argues that Haruch’s conical passages are both “near the middle” of nozzle 46, and thus not “adjacent a liquid inlet at an axial end of the orifice member 46, as required by independent claim 30.” (Reply Br. 11, emphasis omitted.) We are not persuaded by this argument because claim 30 requires the liquid inlet to be “at a first axial end” and requires the first conical passageway to be “adjacent the liquid inlet.” (Claims App.) The open upstream end of counterbore 80 is shown flush with, or “at” the first axial end of nozzle 46; and the first conical passageway is shown “adjacent” the downstream end (i.e., shoulder 79) of counterbore 80. (See Annotated Nozzle 46.) Independent claim 30 further requires the exterior surface to comprise “a first conical exterior surface” that “surround[s] the first conical passage” and that “diverges” at a “constant angle” in the downstream direction. (Claims App.) The Examiner considers the “exterior upstream end chamfer of flange 62” to be this first conical exterior surface. (See Annotated Nozzle 46.) The Examiner explains that “[n]o matter how small the chamfer surface, the figures show it diverging in the downstream direction.” (Answer 21.) The Appellant argues that Haruch does not have a first conical passage so it cannot have a first conical exterior surface that “surrounds” a first conical passage. (Appeal Br. 19.) We are not persuaded by this argument because, as discussed above, the Examiner shows sufficiently that Haruch discloses the claimed first conical passage. We further note that the Examiner provides a dictionary definition for the word “surround” and we agree with the Examiner that the upstream end chamfer of flange 62 Appeal 2013-004099 Application 11/077,273 11 “surrounds” the first conical passage according to this definition. (See Answer 7, 9.) The Appellant also argues that “none of the exterior surfaces of the orifice member 46 of Haruch diverge in a downstream direction.” (Appeal Br. 19, emphasis omitted.) We are not persuaded by this argument because the identified chamfer in nozzle 46 slants outwardly (i.e., diverges) in the downstream direction. (See Annotated Nozzle 46.) The Appellant asserts that “there is no suggestion in Haruch that the small chamfer surfaces of the flange 62 converge or diverge at constant angles.” (Reply Br. 17, emphasis omitted.) However, we find that Haruch shows sufficiently that the downstream slant of the identified chamfer is at a “constant angle.” (See Haruch Figure 4.) Thus, we sustain the Examiner’s rejection of claim 30 under 35 U.S.C. § 102(e.) Dependent Claim 31 Claim 31 depends from independent claim 30 which recites the “first conical passage” discussed above, a “second conical passage,” and a “cylindrical passage.” (Claims App.) Claim 31 requires that the liquid passage “consists essentially of” these three recited passages. (Id.) The Examiner construes the transitional phrase “consisting essentially of” as “comprising” and finds that nozzle 46 comprises the three recited passages. (See Answer 19; see also Annotated Nozzle 46.) The Appellant argues that the Examiner’s “comprising” approach is improper and that nozzle 46 includes “several interior passages” in addition to the three recited passages. (See Appeal Brief 24–25.) We are not persuaded by this argument because the Appellant does not establish that the Appeal 2013-004099 Application 11/077,273 12 alleged “several” additional “interior surfaces” of nozzle 46 materially change basic and novel characteristics of the claimed invention. The Appellant’s comparison of illustrated embodiments of its nozzle and the prior art nozzle 46 (id.) is not persuasive evidence of such a material change. It is therefore sufficient for the Examiner to find that nozzle 46 “comprises” the three passages recited in claim 31. (See MPEP § 2111.03 and cases cited therein.) Thus, we sustain the Examiner’s rejection of claim 31 under 35 U.S.C. § 102(e). Dependent Claim 33 Claim 33 depends from independent claim 30 which, as discussed above, recites a “first conical exterior surface” that “diverges” in “the downstream direction.” (Claims App.) Claim 33 recites “a second conical exterior surface” that “converges” in “the downstream direction.” (Id.) In other words, claim 33 requires a “first” diverging conical exterior surface and a “second” converging conical exterior surface. The Examiner finds that Haruch discloses both of these conical exterior surfaces. (See Annotated Nozzle 46.) The Appellant argues, in essence, that Haruch does not disclose a “first” diverging conical exterior surface, so it cannot disclose a “second” conical exterior surface. (Appeal Br. 26.) We are not persuaded by this argument because, as discussed above, the Examiner shows sufficiently that Haruch discloses the “first” diverging conical exterior surface required by claim 30. (See Annotated Nozzle 46.) And the Appellant acknowledges that Haruch discloses a converging conical exterior surface as required by claim 33. (See Appeal Br. 26.) Appeal 2013-004099 Application 11/077,273 13 Thus, we sustain the Examiner’s rejection of claim 33 under 35 U.S.C. § 102(e). Dependent Claims 34 and 35 Claims 34 and 35 depend directly or ultimately from independent claim 30, and they recite additional exterior surfaces arranged in a certain manner relative to the “first conical exterior surface” set forth in claim 30. (Claims App.) The Examiner identifies corresponding exterior surfaces in nozzle 46 arranged in the claimed manner relative to the upstream chamfer of flange 62 (i.e., the “first conical exterior surface”). (See Annotated Nozzle 46.) The Appellant advances arguments premised upon Haruch not having a “first conical exterior surface” whereby the additionally-recited exterior surfaces cannot be arranged relative thereto. (See Reply Br. 17–18.) We are not persuaded by these arguments because, as discussed above, the Examiner shows sufficiently that the upstream chamfer of flange 62 can constitute the claimed “first conical exterior surface.” (See Annotated Nozzle 46.) The Appellant does not address, adequately, why the additional exterior surfaces recited in claims 34 and 35 are not arranged in the claimed manner relative to this upstream chamfer of flange 62. Thus, we sustain the Examiner’s rejection of claims 34 and 35 under 35 U.S.C. §102(e). Dependent Claim 36 Claim 36, which depends ultimately from independent claim 30, sets forth that the exterior surface “consists essentially of” five recited exterior surfaces. The Examiner construes “consisting essentially of” as equivalent Appeal 2013-004099 Application 11/077,273 14 to “comprising” (see Answer 22) and finds that nozzle 46 comprises the five recited exterior surfaces (see Annotated Nozzle 46). The Appellant argues that the Examiner’s “comprising” approach is improper and that “Haruch certainly does not disclose that the exterior surface of the orifice member 46 consists essentially of only these five recited exterior surfaces.” (Reply Br. 19–20.) We are not persuaded by this argument because, for the same reasons discussed above in connection with claim 31, the Examiner’s “comprising” approach is appropriate. (See MPEP § 2111.03 and cases cited therein.) Thus, we sustain the Examiner’s rejection of claim 36 under 35 U.S.C. § 102(e). Dependent Claims 32, 38, and 52 Claims 32, 38, and 52 depend from independent claim 30. (Claims App.) The Appellant does not argue these claims separately or further for this rejection (see Appeal Br. 20), so they fall with independent claim 30. Thus, we sustain the Examiner’s rejection of claims 32, 38, and 52 under 35 U.S.C. § 102(e). Independent Claim 39 Independent claim 39, like independent claim 30, requires the liquid passage to extend “from a liquid inlet at a first axial end of the threadless nozzle” and to comprise a “first conical passage” that is “adjacent the liquid inlet.” (Claims App.) The Appellant argues that nozzle 46 does not have a conical passage that is “adjacent” a liquid inlet “at an axial end.” (See Appeal Br. 21–22.) For the same reasons discussed above for independent claim 30, we are not persuaded by this argument. Appeal 2013-004099 Application 11/077,273 15 Independent claim 39 also recites that “the liquid passage converges along at least half of an entire length of the threadless nozzle between the liquid inlet and the liquid outlet.” (Claims App.) The Examiner finds that portions of the liquid passage (i.e., the first conical passage, the second conical passage, the cylindrical passage) together converge towards the liquid outlet of nozzle 46. (See Annotated Nozzle 46; Answer 10.) The Appellant argues that the first conical passage and the second conical passage “even taken together, only appear to extend approximately 20-25% of the entire length of the orifice member 46.” (Appeal Br. 22.) We are not persuaded by this argument because it does not take into consideration the contribution of cylindrical passage 61 to the “length” of the converging liquid passage. (See Annotated Nozzle 46.) Additionally, the Examiner provides a dictionary definition for the term “converge” and we agree with the Examiner that these three passages together converge towards the liquid outlet in nozzle 46 according to this definition. (See Answer 10.) Thus, we sustain the Examiner’s rejection of claim 39 under 35 U.S.C. § 102(e). Dependent Claim 45 Claim 45, which depends ultimately from independent claim 39, recites “a cylindrical passage inside the threadless nozzle adjacent the liquid outlet.” (Claims App.) The Examiner finds that nozzle 46 includes a cylindrical passage 61 adjacent the liquid outlet. (See Annotated Nozzle 46.) The Examiner explains that the “extreme downstream” diverging tip in nozzle 46 can be considered part of the liquid outlet and cylindrical passage 61 is adjacent thereto. (See Answer 22.) Appeal 2013-004099 Application 11/077,273 16 The Appellant argues that cylindrical passage 61 and the liquid outlet are separated by a diverging tip, so passage 61 is not “adjacent” the liquid outlet. (Reply Br. 20–21.) We are not persuaded by this argument because the Appellant does not address, adequately, why this diverging tip cannot be considered part of the liquid outlet and/or why it is not adjacent to cylindrical passage 61. Thus, we sustain the Examiner’s rejection of claim 45 under 35 U.S.C. § 102(e). Dependent Claim 46 Claim 46, which depends from independent claim 39, recites a “compression fitting exterior surface” that “is a conical exterior surface that diverges at the angle in the downstream direction.” (Claims App.) The Examiner equates this “compression fitting exterior surface” to the “second conical exterior surface” discussed above in connection with claim 33. (See Answer 10.) The Appellant advances the same arguments discussed above in connection with claim 33. (See Appeal Br. 32–33.) For the same reasons discussed above in connection with claim 33, we are not persuaded by these arguments. Thus, we sustain the Examiner’s rejection of claim 46 under 35 U.S.C. § 102(e). Dependent Claims 40, 43, 44, and 53 Claims 40, 43, 44, and 53 depend ultimately from independent claim 39. (Claims App.) The Appellant does not argue these claims further or separately (see Appeal Br. 22), so they fall with independent claim 39. Appeal 2013-004099 Application 11/077,273 17 Thus, we sustain the Examiner’s rejection of claims 40, 43, 44, and 53 under 35 U.S.C. § 102(e). DECISION We AFFIRM the Examiner’s rejection of claims 37 and 47–51 under 35 U.S.C. § 112, first paragraph. We REVERSE the Examiner’s rejection of claim 53 under 35 U.S.C. § 112, first paragraph. We REVERSE the Examiner’s rejection of claims 30–40 and 43–53 under 35 U.S.C. § 112, second paragraph. We AFFIRM the Examiner’s rejection of claims 30–36, 38–40, 43–46, 52, and 53 under 35 U.S.C. § 102(e). No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED cda Copy with citationCopy as parenthetical citation