John Grimes

Patent Trials and Appeals Board

Jun 10, 2021

2020003802 (P.T.A.B. Jun. 10, 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.
14/837,453 08/27/2015 John Grimes 87266-1US1/CJD 5507
23529 7590 06/10/2021
ADE & COMPANY INC.
2157 Henderson Highway
WINNIPEG, MANITOBA R2G1P9
CANADA
EXAMINER
TADAYYON ESLAMI, TABASSOM
ART UNIT PAPER NUMBER
1712
NOTIFICATION DATE DELIVERY MODE
06/10/2021 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):
djones@adeco.com
uspto@adeco.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JOHN GRIMES
Appeal 2020-003802
Application 14/837,453
Technology Center 1700
Before KAREN M. HASTINGS, N. WHITNEY WILSON, and
CHRISTOPHER C. KENNEDY, Administrative Patent Judges.
HASTINGS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 56–58, 71 and 72.2 We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 We use the term “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies the real party in interest as John
Grimes. Appeal Br. 1.
2 An amendment to cancel claim 73 was entered by the Examiner (Advisory
Act. 2, mailed Feb. 19, 2020).
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CLAIMED SUBJECT MATTER
The claims are directed to an automated paint application method.
Claim 71, reproduced below, is illustrative of the claimed subject matter:
71. A method for reproducing on a surface an image which is in
a format storable on a computing device, comprising:
providing a paint application system arranged for
dispensing paint including:
an applicator nozzle for spraying the paint onto the
surface;
the applicator nozzle being arranged to be movable
relative to the surface while being maintained in spaced
condition from the surface; and
a control system arranged to direct the applicator nozzle
about the surface;
providing to the paint application system the image which
has one or more constituent hues;
providing to the paint application system information
about the surface to be painted;
using a vectorized format of the image wherein each point
of the image is defined by a vector, and the information about the
surface to be painted, operating the paint application system to
generate one or more painting paths which are to be executed by
the paint application system to form the image on the surface,
each painting path:
corresponding to one of the constituent hues of the image;
and
forming a continuous spatial path across the surface along
which lies a plurality of adjacent points of the image of said one
of the constituent hues which can be painted during a single paint
dispensing action as the applicator nozzle is displaced across the
surface; and
after generating the painting paths based on which the
image is to be reproduced, executing each of the painting paths
one at a time to form the image on the surface, wherein the
applicator nozzle is displaced across the surface along the
predetermined spatial path of the painting path while
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simultaneously applying the paint of the corresponding
constituent hue to the surface.
REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Hartman US 5,296,256 Mar. 22, 1994
Manning US 6,074,693 June 13, 2000
Meyer US 6,439,473 B1 Aug. 27, 2002
Bustgens US 2005/0100680 A1 May 12, 2005

REJECTIONS ON APPEAL3

Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis
71 103 Manning
56, 58 103 Manning, Bustgens
56, 57 103 Manning, Hartman
72 103 Manning, Bustgens,
Meyer

OPINION
After considering the evidence presented in this appeal and each of
Appellant’s arguments, we are not persuaded that Appellant identifies
reversible error. We review the appealed rejections for error based upon the
issues identified by Appellant and in light of the arguments and evidence
produced thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010)
(precedential), cited with approval in In re Jung, 637 F.3d 1356, 1365 (Fed.

3 The Examiner’s § 112 rejection was withdrawn (Advisory Act. 2, mailed
Feb. 19, 2020).
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Cir. 2011) (“[I]t has long been the Board’s practice to require an applicant to
identify the alleged error in the examiner’s rejections.”). We sustain the
Examiner’s rejection for the reasons expressed in the Non-Final Office
Action and the Answer.
Appellant’s arguments are solely directed to independent claim 71
(Appeal Br. 3). The Examiner relies on Manning for teaching or suggesting
all of the limitations of independent claim 71 (Non-Final Act. 3‒4).
Appellant’s arguments focus on the alleged failure of Manning to
teach three features of independent claim 71, indicated as (a) “each painting
path corresponding to one of the constituent hues of the image”; (b) “each
painting path forming a continuous spatial path across the surface along
which lies a plurality of adjacent points of the image of said one of the
constituent hues which can be painted during a single paint dispensing action
as the applicator nozzle is displaced across the surface”; and (c) “after
generating the painting paths based on which the image is to be reproduced,
executing each of the painting paths one at a time to form the image on the
surface, wherein the applicator nozzle is displaced across the surface along
the predetermined spatial path of the painting path while simultaneously
applying the paint of the corresponding constituent hue to the surface.”
(Appeal Br. 4).
With respect to feature (a), Appellant argues that there is no grouping
of the data points in Manning on the basis of their color (Appeal Br. 5‒6).
As correctly noted by the Examiner, the claim does not require limitations
argued by Appellant, such as grouping of the data points on the basis of their
color (Ans. 4). Limitations not appearing in the claims cannot be relied upon
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for patentability. In re Self, 671 F.2d 1344, 1348 (CCPA 1982). Therefore,
Appellant’s arguments with regard to feature (a) are not persuasive.
With respect to feature (b), Appellant asserts that Manning’s
determination of the color to be painted is made during the painting process,
while in the instant invention the color of paint to be deposited is determined
before the actual step of painting begins (Appeal Br. 7‒9; Reply Br. 2‒3).
The Examiner responds that Manning teaches a “continuous line mode”
where one has predetermined what and where to paint (Ans. 4; see Manning
col. 4, ll. 8‒14). Thus, Appellant’s argument is not persuasive of error as
Appellant fails to consider the applied prior art as a whole and the inferences
that one of ordinary skill would have made. Under the flexible inquiry set
forth by the Supreme Court, the PTO must take account of the “inferences
and creative steps,” or even routine steps, that an ordinary artisan would
employ. Ball Aerosol and Specialty Container, Inc. v. Limited Brands, Inc.,
555 F.3d 984, 993 (Fed. Cir. 2009) (citation omitted). Since claim 71
requires only “one or more” painting paths and “one or more” constituent
hues (Claims Appendix 16‒17), the painting of a stripe of a predetermined
single color on a road or in a parking lot as taught by Manning (col. 4, ll. 8‒
14) is encompassed by these limitations.
Regarding feature (c), Appellant alleges that the painting process of
Manning cannot be modified so that the spraying takes place simultaneously
while the paint sprayer is moved, as the GPS paint sprayer of Manning must
repeatedly open and close (Appeal Br. 10‒13; Reply Br. 3‒4). However,
“the PTO must give claims their broadest reasonable construction consistent
with the specification. . . . Therefore, we look to the specification to see if it
provides a definition for claim terms, but otherwise apply a broad
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interpretation.” In re ICON Health & Fitness, Inc., 496 F.3d 1374, 1379
(Fed. Cir. 2007). “[A]s applicants may amend claims to narrow their scope,
a broad construction during prosecution creates no unfairness to the
applicant or patentee.” Id. In the instant case, the claim at issue does not
exclude the opening and closing of the paint sprayer. As indicated by the
Examiner, the placing of an applicator nozzle on a vehicle and applying
paint while the vehicle is moving to provide a road marking as taught by
Manning (see col. 5 ll. 29‒35) suggests spraying simultaneously while the
nozzle is moved (Ans. 4).
Therefore, Appellant has not demonstrated reversible error in the
Examiner’s determination that the teachings of Manning render obvious the
invention of claim 71.
Accordingly, we sustain the Examiner’s rejection of independent
claim 71, as well as all claims dependent thereon, noting that Appellant
relies upon the arguments made for claim 71 for all the other claims, even
though claims 56–58 and 72 are separately rejected (Appeal Br. 3).

CONCLUSION
The Examiner’s rejections are AFFIRMED.

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DECISION SUMMARY
Claim(s)
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
71 103 Manning 71
56, 58 103 Manning, Bustgens 56, 58
56, 57 103 Manning, Hartman 56, 57
72 103 Manning,
Bustgens, Meyer
72
Overall
Outcome
56–58, 71,
72

TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED