Illinois Tool Works Inc.

Patent Trials and Appeals Board

May 3, 2021

2020005470 (P.T.A.B. May. 3, 2021)

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.
14/670,136 03/26/2015 Mel Steven Lessley 65448 (35371-96613) 9339
44986 7590 05/03/2021
Levenfeld Pearlstein, LLC (ILLINOIS TOOL WORKS)
2 North LaSalle Street
Suite 1300
Chicago, IL 60602
EXAMINER
BOECKMANN, JASON J
ART UNIT PAPER NUMBER
3752
NOTIFICATION DATE DELIVERY MODE
05/03/2021 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):
ipdocket@lplegal.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte MEL STEVEN LESSLEY

Appeal 2020-005470
Application 14/670,136
Technology Center 3700
____________

Before MICHAEL C. ASTORINO, JAMES A. WORTH, and
KENNETH G. SCHOPFER, Administrative Patent Judges.

ASTORINO, Administrative Patent Judge.

DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), the Appellant1 appeals from the
Examiner’s decision to reject claims 1–6, 8, 10–16, 18–20, 22, and 23. We
have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. The Appellant identifies the real party in interest as
Illinois Tool Works Inc. Appeal Br. 3.
Appeal 2020-005470
Application 14/670,136

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STATEMENT OF THE CASE
Claimed Subject Matter
Claims 1, 16, 18, and 19 are the independent claims on appeal.
Appeal Br. 5. Claim 1, reproduced below, is illustrative of the claimed
subject matter.
1. A fluid application device for applying a fluid on a material,
the fluid application device comprising:
a metering device configured to receive the fluid, the
metering device having a plurality of metering pumps
configured to meter the fluid flowing through each metering
pump;
a manifold fluidically connected to and disposed
downstream from the plurality of metering pumps;
a valve module fluidically connected to and disposed
downstream from the manifold, the valve module comprising a
plurality of valves;
a discrete fluid delivery conduit extending from each
metering pump of the plurality of metering pumps through the
manifold and the valve module, each fluid delivery conduit
configured to receive the metered fluid; and
a plurality of nozzles fluidically connected to the
metering device via the manifold and the valve module,
wherein each nozzle of the plurality of nozzles is removably
secured to the valve module, each nozzle has a plurality of
orifices for discharging the metered fluid;
wherein each metering pump is fluidically connected to
at least one orifice of the plurality of orifices of each nozzle via
a respective fluid delivery conduit, and
wherein the plurality of orifices of each nozzle discharge
the fluid directly to the atmosphere.
Appeal Br., Claims App.
Appeal 2020-005470
Application 14/670,136

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References
The prior art relied upon by the Examiner is:
Name Reference Date
Heindel et al. (“Heindel”) US 4,949,668 Aug. 21, 1990
Nakamura et al.
(“Nakamura”)
US 2002/0083895 A1 July 4, 2002
Harris et al. US 2005/0242108 A1 Nov. 3, 2005

Rejections
Claims 1–6, 8, 10–14, 16, 18–20, 22, and 23 are rejected under
35 U.S.C. § 103 as unpatentable over Heindel and Nakamura.
Claim 15 is rejected under 35 U.S.C. § 103 as unpatentable over
Heindel, Nakamura, and Harris.

ANALYSIS
The Examiner’s rejection of claim 1’s fluid application device is
based on a combination of teachings from Heindel and Nakamura. Final
Act. 2–3. The Examiner finds Heindel’s fluid application device, as shown
in Figure 2, includes many components that correspond to the claimed fluid
application device. Id. Specifically, the Examiner finds multi-stream
metering pumps 33, transfer plate 44, passage 84, and nozzle body 50 of
each nozzle unit 24 corresponds to the claimed “metering pumps,”
“manifold,” “discrete fluid delivery conduit,” and “nozzles,” respectively.
Id.
The Examiner finds that Heindel fails to disclose some of the
requirements of claim 1, including a valve module with a plurality of valves
and each nozzle having a plurality of orifices for discharging metered fluid
directly to the atmosphere, as required by claim 1. See id. at 3. The
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Application 14/670,136

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Examiner finds that the remaining requirements of claim 1, including those
specified above, are taught by Nakamura. Id. The Examiner determines “it
would have been obvious to one of ordinary skill in the art . . . to replace
each nozzle (50) of Heindel with the valve module and nozzle combination
of Nakamura” to “allow the device of Heindel to have a valve module made
up of multiple valve modules (12) of Nakamura . . . , each having their own
valve (15) and corresponding nozzle (10) with multiple orifices (16a),”
which “would allow for the device of Heindel to spray liquid adhesive onto
multiple elastic strands as taught by Nakamura.” Id. In other words, the
modification “is merely replacing a single orifice nozzle of Heindel with a
valve and a multiple orifice nozzle of Nakamura.” Ans. 3. The Examiner
also refers to the modification as a simple substitution. Id. at 4.
The Appellant argues that the Examiner’s rejection of independent
claim 1 lacks articulated reasoning with rational underpinning to support the
conclusion of obviousness. Appeal Br. 10–11. We note that the Appellant
acknowledges that the Examiner’s rejection is based on a replacement or
simple substitution of Heindel’s nozzle bodies 50 with Nakamura’s teaching
of adapter 12, valve mechanism 15, and nozzle block 10. See id.; Reply
Br. 6. The Appellant argues that the Examiner fails to adequately explain on
the record how one of ordinary skill in the art would have understood the
substitution of Heindel’s nozzle for a nozzle and valve, as taught by
Nakamura, as a simple one, particularly in regards to the disparate mounting
arrangements taught by the references. See Reply Br. 6. The Appellant has
the better position.
The Examiner explains “that the modification is a simple substitution,
replacing nozzle with a single orifice that are located on a manifold with a
Appeal 2020-005470
Application 14/670,136

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valve and nozzles that have three orifices.” Ans. 4 (emphasis added). The
modification, however, is more than just a simple substitution of one known
element (i.e., a nozzle) for another known element (i.e., a nozzle), where
each element has the same function. Rather, the Examiner’s modification
further adds a valve and its functionality to Heindel’s fluid application
device. See id. Indeed, the Examiner explains that the modification includes
“replacing the nozzles having a single orifice with ones that have three
orifices” and “add[ing] valves of Nakamura will further allow Heindel to
select the pattern that the glue is deposited in.” See id. (emphasis added).
Accordingly, for the Examiner’s rejection to be adequately supported
the Examiner must articulate reasoning with some rational underpinning for
the addition of valves, as required by claim 1, to Heindel’s fluid application
device. Notably, the Examiner suggests that adding valves, like the valve
taught by Nakamura, would result in Heindel’s fluid application device
having the ability to select a pattern when dispensing adhesive. See id. The
Examiner’s suggestion only offers the result of the modification, i.e., the
ability to select a pattern when dispensing adhesive. The suggestion does
not adequately explain why one of ordinary skill in the art would have
modified Heindel’s fluid application device to add valves. An explanation
that the modified device has the ability to select a pattern when dispensing
adhesive does not offer a reason why a skilled artisan would have modified
Heindel’s fluid application device to add valves. Therefore, we determine
that, on this record, the Examiner fails to articulate an adequate reason for
adding a valve to Heindel’s fluid application device.
Further, the Examiner fails to adequately explain how one of ordinary
skill in the art would add valves, like the valve taught by Nakamura, to
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Application 14/670,136

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Heindel’s fluid application device in such a manner that would result in the
subject matter of claim 1. See Appeal Br. 15–16; Reply Br. 6. In this
regard, we note that the Examiner determines that one of ordinary skill in the
art would know how to make the simple modification. See Ans. 4–5. The
Appellant contends, “the Examiner relies on mere conclusory statements
without addressing the divergent and incompatible structures of Heindel’s
nozzle body 50 and the Nakamura’s adapter 12 / valve 15 / nozzle block 10
assembly.” Reply Br. 6. The Appellant has the better position.
We agree with the Appellant that the Examiner’s determination that
one of ordinary skill in the art would know how to make the simple
modification is conclusory. As discussed above, the Examiner’s
determination appears to be overlooking the fact that the modification is
more than a simple substitution. In this case, we determine that it is
necessary for the Examiner to provide additional details as to how one of
ordinary skill in the art would have implemented Nakamura’s teaching of
adapter 12 and valve mechanism 15 into Heindel’s fluid application device.
Thus, we do not sustain the Examiner’s rejection of independent
claim 1 and claims 2–6, 8, 10–14, and 22, which depend therefrom. The
Examiner’s rejection of independent claims 16, 18, and 19, includes the
same deficiency as the Examiner’s rejection of claim 1. See Final Act. 6–7.
The rejection of dependent claims 20 and 23 falls with the independent
claim from which they depend. Therefore, we likewise do not sustain the
Examiner’s rejection of claims 16, 18–20, and 23. Further, the Examiner
fails to rely on Harris’ teachings in any manner that would remedy the
deficiency in the Examiner’s rejection as discussed above. Hence, we also
do not sustain the Examiner’s rejection of claim 15.
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Application 14/670,136

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CONCLUSION
In summary:
Claim(s)
Rejected
35 U.S.C. § Reference(s)/Basis  Affirmed Reversed
1–6, 8,
10–14, 16,
18–20, 22,
23
103 Heindel, Nakamura

1–6, 8,
10–14, 16,
18–20, 22,
23
15 103 Heindel, Nakamura,
Harris
15
Overall
Outcome
1–6, 8,
10–16,
18–20, 22,
23

REVERSED