Ex Parte 7815384 et alDownload PDFPatent Trial and Appeal BoardJan 17, 201495001656 (P.T.A.B. Jan. 17, 2014) 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. 95/001,656 06/13/2011 7815384 PLP0067USR 1141 29180 7590 01/17/2014 K&L Gates LLP P.O. BOX 1135 CHICAGO, IL 60690 EXAMINER LEWIS, AARON J ART UNIT PAPER NUMBER 3993 MAIL DATE DELIVERY MODE 01/17/2014 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 ____________________ PLAS-PAK INDUSTRIES, INC. Requester, Appellant v. SULZER MIXPAC AG 1 Patent Owner, Respondent ____________________ Appeal 2013-007786 Inter partes Reexamination Control 95/001,656 Patent US 7,815,384 B2 2 Technology Center 3900 ____________________ Before STEVEN D.A. McCARTHY, JEFFREY B. ROBERTSON and DANIEL S. SONG, Administrative Patent Judges. SONG, Administrative Patent Judge DECISION ON APPEAL 1 Sulzer Mixpac AG is the real party in interest (Respondent Brief (hereinafter "Resp. Br.") 1). 2 Patent US 7,815,384 B2 (hereinafter "'384 patent") issued October 19, 2010 to Parks et al. Appeal 2013-007786 Reexamination Control 95/001,656 Patent US 7,815,384 B2 2 STATEMENT OF THE CASE Claims 1-15 are subject to reexamination and have been confirmed by the Examiner (Right of Appeal Notice 3 (hereinafter "RAN" 1)). The Requester appeals under 35 U.S.C. §§ 134 and 315 from the Examiner's withdrawal of certain previously adopted rejections, and the Examiner's refusal to adopt certain other proposed rejections of claims 1-15 (Appeal Brief (hereinafter also "App. Br.") 4, 7-8). We have jurisdiction under 35 U.S.C. §§ 134 and 315. The Requester relies on its Appeal Brief and Rebuttal Brief (hereinafter "Reb. Br."). The Patent Owner relies on a Respondent Brief (hereinafter "Resp. Br.") in support of the Examiner's decision. An oral hearing with the representatives of the involved parties was held before the Patent Trial and Appeal Board on October 23, 2013, a transcript of which will be entered into the electronic record in due course. The following proceedings have been identified as being related to the '384 patent (App. Br. 4; Resp. Br. 2): 1. Reexamination Control 95/001,371 (Appeal 2013-001649 4 ) for U.S. Patent No. 7,144,170, which issued from an application parent to the continuation application that issued as the '384 patent; and 3 The Examiner's Answer mailed December 12, 2012 merely incorporates by reference the RAN so we cite to the RAN herein. 4 The Decision for Appeal 2013-001649 was mailed July 1, 2013. A Request for Rehearing has been filed by the Requester on July 30, 2013, and Patent Owner's Comments were received August 29, 2013. The Request for Rehearing has not yet been decided. Appeal 2013-007786 Reexamination Control 95/001,656 Patent US 7,815,384 B2 3 2. Richard Parks Corrosion Tech Inc. v. Plas-Pak Indus Inc., V.O. Baker Co. Inc., Thomas Baker and Jason Baker, Civil Action No. 2010-cv- 00437 (D. Conn.), which is characterized by the Requester and the Patent Owner as a contract action. We AFFIRM. THE INVENTION The '384 patent is directed to a device for applying a coating, and methods for using the same. Representative independent claim 1 reads as follows (Claims App'x, italics added): 1. (Original) A device for applying a coating, comprising: at least two cylindrical cartridges, a static mixing nozzle in fluid communication with the cartridges, a spray tip, in fluid communication with the nozzle, a first flexible hose is disposed between and in fluid communication with the nozzle and the spray tip, and a second hose, in fluid communication with the spray tip, for supplying atomization air to the spray tip. Independent claims 7 and 10 are directed methods for applying a coating or a paint, respectively, using a device having the limitations of claim 1. Appeal 2013-007786 Reexamination Control 95/001,656 Patent US 7,815,384 B2 4 REJECTIONS PREVIOUSLY ADOPTED, NOW WITHDRAWN The Requester appeals from the Examiner's withdrawal of the following previously-adopted obviousness rejections under 35 U.S.C. § 103(a): 5 A) Claims 1-6 and 15 over Fukuta 6 in view of Morris 7 and Einbecker. 8 B) Claims 7-9 over Fukuta in view of Morris, Brogan 9 and Einbecker. C) Claims 10-12 over Fukuta in view of Morris and Einbecker. D) Claims 1-6 and 13-15 over Fukuta in view of Colin 10 and Einbecker. E) Claims 7-9 over Fukuta in view of Colin, Brogan and Einbecker. F) Claims 10-12 over Fukuta in view of Colin and Einbecker. PROPOSED REJECTIONS NOT ADOPTED The Requester further appeals from the Examiner's refusal to adopt the following proposed obviousness rejections under 35 U.S.C. §103(a): 11 5 We utilize the same sequential lettering used by the Requester in its Appeal Brief to identify the withdrawn rejections. 6 Patent US 4,745,011 issued May 17, 1988 to Fukuta et al. 7 Patent US 3,989,228 issued November 2, 1976 to Morris et al. 8 Patent US 2,511,627 issued June 13, 1950 to Einbecker. 9 US Patent Publication 2002/0110682 A1 to Brogan published August 15, 2002. 10 Patent US 5,033,650 issued July 23, 1991 to Colin et al. Appeal 2013-007786 Reexamination Control 95/001,656 Patent US 7,815,384 B2 5 G) Claims 1-6 and 13-15 over Jacobsen 12 in view of Hunter. 13 H) Claims 7-9 over Jacobsen in view of Hunter and Brogan. I) Claims 10-12 over Jacobsen in view of Hunter. PRINCIPLES OF LAW "[A] patent composed of several elements is not proved obvious merely by demonstrating that each of its elements was, independently, known in the prior art. … it can be important to identify a reason that would have prompted a person of ordinary skill . . . to combine the elements in the way the claimed new invention does." KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). "To facilitate review, [an obviousness] analysis should be made explicit." Id. (citing In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) ("[R]ejections on obviousness grounds cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness")). Combinations of references that render a prior art device inoperable, or that fundamentally change the manner of operation of the device, often will not support a finding of obviousness. See In re Ratti, 270 F.2d 810, 813 (CCPA 1959) ("This suggested combination of references would require a substantial reconstruction and redesign of the elements shown [in the prior 11 We utilize the same sequential lettering used by the Requester in its Appeal Brief to identify the proposed rejections not adopted by the Examiner. 12 Patent US 6,241,125 B1 issued June 5, 2001 to Jacobsen et al. 13 US Patent Publication 2002/0170982 A1 to Hunter, published November 21, 2002. Appeal 2013-007786 Reexamination Control 95/001,656 Patent US 7,815,384 B2 6 art] as well as a change in the basic principles under which [the prior art] construction was designed to operate."). In addition, if a proposed modification would render the prior art invention being modified unsatisfactory for its intended purpose, then there is unlikely to be a persuasive suggestion or motivation to make the proposed modification. In re Gordon, 733 F.2d 900, 902 (Fed. Cir. 1984); see also DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc., 567 F.3d 1314, 1326 (Fed. Cir. 2009) (noting that "the 'predictable result' discussed in KSR refers not only to the expectation that prior art elements are capable of being physically combined, but also that the combination would have worked for its intended purpose," citing KSR, 550 U.S. 398); In re ICON Health & Fitness, Inc., 496 F.3d 1374, 1382 (Fed. Cir. 2007) ("[A] reference teaches away from a combination when using it in that combination would produce an inoperative result"). ISSUES 1. Whether the Examiner erred in finding that modification of the apparatus of Fukuta with the mixing and dispensing apparatus of Morris as suggested by the Requester would have changed the principle of operation of the apparatus of Fukuta. 2. Whether the Examiner erred in finding that modification of the apparatus of Fukuta with the multiple barrel dispensing device of Colin as suggested by the Requester would have changed the principle of operation of the apparatus of Fukuta. Appeal 2013-007786 Reexamination Control 95/001,656 Patent US 7,815,384 B2 7 3. Whether the Examiner erred in finding that modification of the dispensing apparatus of Jacobsen with the spray nozzle of Hunter as suggested by the Requester would have rendered the dispensing apparatus of Jacobsen inoperable for its intended purpose. ANALYSIS Preliminarily, we note that only those arguments timely made in the briefs of record in this appeal have been considered. Other arguments not made or those not properly presented to the Board have not been considered and are deemed to be waived. See 37 C.F.R. § 41.67(c)(1)(vii) ("Any arguments or authorities not included in the brief permitted under this section or §§ 41.68 and 41.71 will be refused consideration by the Board, unless good cause is shown"). Rejections A)-C) Based on the Combination of Fukuta and Morris In refusing to maintain Rejections A)-C), the Examiner finds that a person of ordinary skill in the art would not combine the spray gun of Fukuta with the mixing and dispensing apparatus shown in Figure 4 of Morris as asserted by the Requester. The Examiner finds that such combination would not be made in the absence of hindsight because Fukuta provides pumps, check valves, and stop valves to provide the components of the coating while Morris requires manual manipulation of a trigger to move a drive means (RAN 8, 11, 14, 31). The Examiner concludes that "it would not have been obvious to modify Fukuta et al. by simple substitution of the dual cartridges of Morris et al. because doing so would have resulted in a Appeal 2013-007786 Reexamination Control 95/001,656 Patent US 7,815,384 B2 8 change of the principle of operation of Fukuta et al. thereby rendering it inoperable for its intended purpose." (RAN 8-9; see also RAN 11-12, 14-15; Resp. Br. 10, 12). The Examiner states that "[t]he simple substitution of the dual cartridges [of Morris] for the dual containers of Fukuta et al. (as put forth by the Third Party Requester) would have resulted in a device having incompatible parts" and neither references "provides a teaching of how to remove the material from the dual cartridges of Morris et al. using the pumping arrangement of Fukuta et al." (RAN 8, 11, 14; see also Resp. Br. 13). The Requester argues that "[i]t would have been obvious to couple Morris' cylindrical cartridges to Fukuta's first flexible hose since the device of Fukuta dispenses a two component reactive coating material through a static mixer as taught by Morris." (Request for Inter Partes Reexamination, pg. 19). The Requester notes that Einbecker was previously relied upon by the Examiner for disclosing a flexible hose (App. Br. 10, fn. 2). The Requester also argues that the suggested modification to Fukuta does not change the basic principle under which Fukuta is designed to operate, or require substantial reconstruction thereof (App. Br. 13-14). According to the Requester, the basic principle under which Fukuta operates is a movement of two separate reactive components brought together at a mixer and dispensed through a dispenser. The basic principle under which Morris operates is the same in that Morris operates by a movement of two separate reactive components brought together at a mixer and dispensed through a dispenser. Providing a mechanism to move the mixtures through the system is subservient to this basic operating principle common Appeal 2013-007786 Reexamination Control 95/001,656 Patent US 7,815,384 B2 9 to both Fukuta and Morris, and this principle of operation is not changed or eliminated by combining both references. (App. Br. 13-14). The Requester further asserts that "whether it is a ram/piston arrangement or pumping arrangement, does not impact the functional design of Fukuta to move two separate reactive components through a mixer and dispensed through a dispenser." (App. Br. 14). According to the Requester, "Morris teaches that a two-component device that utilizes a pumping arrangement, similar to Fukuta's pumping arrangement, can be adaptable to the previously described dual cartridge/ piston system shown in [Figure] 4." (App. Br. 15). The Requester appears to rely on alternative bases for modifying the apparatus of Fukuta. The Requester's proposal appears to modify the apparatus of Fukuta by replacing the components upstream of its mixer 3 with the cartridges 70 and mixing gun 60 of Morris (shown in Fig. 4), or alternatively, replacing only the supplies of the hardener and main component and their corresponding pumps P in the apparatus of Fukuta with the cartridges 70 and the manually actuated mixing gun 60 of Morris. We are not persuaded by the Requester's arguments. The Requester's formulation of the broad and general function of the two-component mixing apparatus (i.e., "movement of two separate reactive components brought together at a mixer and dispensed through a dispenser" (App. Br. 13)) is unpersuasive to demonstrate obviousness. In In re Ratti, the appellant's seal and the prior art seal performed the general function of sealing but the Federal Circuit found the suggested modification to the prior art seal inadequate to establish obviousness. Ratti, 270 F.2d at 811-13. In Appeal 2013-007786 Reexamination Control 95/001,656 Patent US 7,815,384 B2 10 particular, the court found that while the claimed invention and the prior art both functioned to seal, the suggested modification required substantial reconstruction and changed the basic principle of operation from attaining sealing through a rigid, press-fit, interface between the components, to attaining sealing by providing a resilient interface between the components. Id. In contrast, the court reached a different result in In re Mouttet wherein the issue raised was whether changing the optical paths of a prior art computing device to electronic wires changed the principle of operation of the computing device. Mouttet, 686 F.3d 1322, 1332 (Fed. Cir. 2012). In concluding that "the Board's determination that the difference in the circuitry-electrical versus optical-does not affect the overall principle of operation of a programmable arithmetic processor was supported by substantial evidence," the court found "this difference does not affect the operability of Mouttet's broadly claimed device" and that "the examiner saw nothing in the programming and processing of junction states in [the prior art] that is unique to its optical implementation, and [the appellant] has not shown otherwise." Id. The facts of the present appeal are more closely aligned to those of Ratti than to the facts of Mouttet. In a manner similar to that of Ratti, while the apparatus of Fukuta is directed to an apparatus for mixing a two component mixture, Fukuta makes clear that its contribution to the art is in providing such an apparatus which prevents backflow even when the propensity for backflow occurs repeatedly and at high velocity (Fukuta, col. 1, ll. 35-51; col. 1, l. 67-col. 2, l. 14). Changing the apparatus of Fukuta in Appeal 2013-007786 Reexamination Control 95/001,656 Patent US 7,815,384 B2 11 the manner proposed by the Requester requires substantial reconstruction and affects the principle of operation of the disclosed apparatus of Fukuta. The Requester argues that "modifying the pumping system in Fukuta with the dual cartridges ram/piston system of Morris does not rise to a substantial reconstruction of Fukuta's system" (App. Br. 14) and asserts that it not a requirement under KSR to require disclosure of how a modified device would work and that both references dispense a two component reactive coating material through a static mixer, and thus, can be combined (App. Br. 16). However, we fail to see how the removal of the various components associated with the operation the Fukuta apparatus, which allow for the very object of the apparatus, and substitution of a very differently constructed mechanism of Figure 4 in Morris, can reasonably be considered not a "substantial reconstruction" or redesign of the Fukuta apparatus. As acknowledged by the Requester, the difference between the systems of Fukuta and Morris is the "manner in which backflow of the mixtures is prevented." (Reb. Br. 4). While the Requester further asserts that Morris teaches that a piston is equally effective as a pump, Fukuta is directed to this very "manner in which the backflow of the mixture is prevented" (i.e., by using check valves, stop valves and escape valve). Hence, the modification suggested by the Requester, where these components of Fukuta are replaced with the cartridges 70 and mixing gun 60 of Morris, would impact this functionality in a fundamental way so as to change the manner in which the apparatus of Fukuta functions. There is no indication, nor does the Requester persuade us, that the device shown in Figure 4 of Morris (or for that matter, the configuration shown in Figure 2) Appeal 2013-007786 Reexamination Control 95/001,656 Patent US 7,815,384 B2 12 which is devoid of check valves and stop valves performs the function to which the apparatus of Fukuta is directed, that is, to prevent backflow even when the propensity for backflow occurs repeatedly and at high velocity. The facts of the present appeal are also distinguishable from those of Mouttet. The manner in which the two-component mixing apparatus of Fukuta prevents backflow is unique in its implementation. As noted above, Fukuta makes clear that its contribution to the art is not in merely providing an apparatus for bringing together a two component mixture, but rather, it is in providing such an apparatus for preventing backflow even when the propensity for backflow occurs repeatedly and at high velocity (Fukuta, col. 1, ll. 35-51; col. 1, l. 67-col. 2, l. 14). It is the disclosed arrangement and implementation of the stop valves 5a, 5b and the escape valve 6 in Fukuta which allows the disclosed mixing apparatus to prevent such backflow to the check valves 4a, 4b which can "adversely influence[] the opening and closing operation of the check valve[s]." (Fukuta, col. 1, l. 67-col. 2, l. 14; col. 3, ll. 7-37; Fig. 1). Furthermore, while the ability for bodily incorporation need not be demonstrated, mere assertions of obviousness are not adequate, but instead, such assertions must be supported by some articulated reasoning with rational underpinnings. See KSR, 550 U.S. at 418. There is inadequate basis to conclude that the suggested combination would likely be successful in delivering the component materials so as to be suitable for spraying a coating as disclosed in Fukuta and to attain the objective of preventing Appeal 2013-007786 Reexamination Control 95/001,656 Patent US 7,815,384 B2 13 backflow under the specific noted operating conditions. 14 In particular, it is not evident in the Requester's proposed rejections and the references relied 14 The Requester asserted during the Oral Hearing that the use of cartridges and ram/piston system such as that of Morris in a spray coating application is known in the art. However, the Requester has not proposed rejections of the claims of the '384 patent on such evidence. The rejections on appeal that are actually before the Board are devoid of such evidence and we find it improper to rely on such prior art that is not part of the rejections proposed which are at issue and on appeal. During the Oral Hearing, the Requester's legal representative stated as follows: MR. ARNOLD: David Arnold once again, Your Honors. Thank you very much. I'd first like to respond to Judge Song's question regarding the availability in the prior art of piston systems with a spray gun. They are most definitely in the prior art. They were known to Applicant at the time of filing the three-four patents, and they are in the IDS that was filed with the patent application in 2006. And I refer to Hunter, Patent No. 6764026. It discloses cartridge systems, side-by-side cartridge systems, with pistons, with a polypropylene flexible mixer that has a flexible tip connected to a spray tip with air line connected to the spray tip. That's Hunter 026. JUDGE SONG: And yet you didn't cite that in your proposed rejection? MR. ARNOLD: It was overlooked, Your Honor. It was in the IDS. It was considered that it had been fully considered by the Examiner. But it may or may not have been. But as the Federal Circuit in In re Swanson says, mistakes occur, Your Honor, and that's why the reexam process is an important quality check on patents that are defective and were erroneously granted and may be withdrawn. Appeal 2013-007786 Reexamination Control 95/001,656 Patent US 7,815,384 B2 14 upon therein that the cartridges and mixing gun such as that disclosed in Morris can be used in the context of the spray apparatus of Fukuta. It was these references and the Requester's proposed rejections upon which substantial new questions of patentability were found under 35 U.S.C. §§ 312(a) 15 and 313, and this inter partes reexamination was instituted, Requester's proposed rejections being the basis of the rejections now on appeal at the Board under 35 U.S.C. § 315(b). Even if the Requester's suggested modification is to replace just the supplies of the hardener and main component and their corresponding pumps P of Fukuta with the cartridges 70 and mixing gun 60 of Morris, the Requester's argument is not persuasive. The Requester refers to the inclusion of two different embodiments shown in Figures 2 and 4 of Morris to assert that "Morris teaches that ram/piston systems and [] pumping JUDGE SONG: And yet as the Board, we review for examiner error, and the Examiner has reviewed what you had proposed as the rejections. MR. ARNOLD: I understand, Your Honor. … (Oral Hearing Transcript, pgs. 27-28). 15 As to inter partes reexamination, "the scope of reexamination may encompass those issues that raise a substantial new question of patentability, whether proposed by the requester or the Director, but, unless it is raised by the Director on his own initiative, it only includes issues of patentability raised in the request under § 311 that the Director has determined raise such an issue. It otherwise may not include other prior art than what constituted the basis of the Director's determination of a substantial question of patentability." Belkin Intern., Inc v. Kappos, 696 F.3d 1379, 1383 (Fed. Cir. 2012). Appeal 2013-007786 Reexamination Control 95/001,656 Patent US 7,815,384 B2 15 systems are interchangeable in two-component dispensing system." (App. Br. 14; see also Reb. Br. 4). However, the Requester fails to appreciate that even if Figures 2 and 4 of Morris are considered to provide equivalent functions with each other, the resultant teaching of Morris is to replace the entire fluid system upstream of the static mixer, such replacement having been discussed above. In addition, both of these embodiments of Morris do not disclose the functions of check valves 4a, 4b, the stop valves 5a, 5b or the escape valve 6 disclosed in Fukuta which are described as functioning together to attain the objective of preventing backflow under specific conditions described in Fukuta. There is no indication, nor does the Requester persuade us, that the modification of Fukuta by using the cartridges and the manually actuated mixing gun of Morris would allow the various valves in Fukuta to function in their intended manner as with a pump so that the modified device would function in the same way and attain the objective to which the spray apparatus of Fukuta is directed. The Requester asserts that the piston/ram/ratchet mechanism in Morris functions as a check valve disposed upstream of the mixer to prevent backflow from the mixer, and that the claims of the '384 patent do not require particular placement of a stop valve so that patentability cannot be based on particular placement thereof (Reb. Br. 5). However, we are not provided with persuasive evidence in support of this assertion of same functionality. See In re Schulze, 346 F.2d 600, 602 (CCPA 1965) ("Argument in the brief does not take the place of evidence in the record."); see also Enzo Biochem, Inc. v. Gen-Probe, Inc., 424 F.3d 1276, 1284 (Fed. Cir. 2005). In addition, even if there is functional equivalence in the Appeal 2013-007786 Reexamination Control 95/001,656 Patent US 7,815,384 B2 16 mechanism of Morris to the check valve of Fukuta on their own, the Requester does not adequately address the stop valves 5a, 5b or the escape valve 6 of Fukuta that function together as discussed above and whether the objectives of Fukuta can be attained using the manually actuated mixing gun in a spray device. To any extent that the assertion of the Requester may be that these valves of Fukuta would not be necessary if the piston/ram/ratchet mechanism of Morris is used, we again fail to see how such modification to the apparatus of Fukuta would not be a substantial reconstruction/redesign which changes its principle of operation as discussed supra. Therefore, in view of the above, we affirm the Examiner's refusal to maintain Rejection A) principally based on the combination of Fukuta in view of Morris as appealed by the Requester. The Requester relies on the same arguments with respect to Rejections B) and C) (App. Br. 17). Correspondingly, we affirm the Examiner's refusal to maintain these rejections as well. Rejections D)-F) Based on the Combination of Fukuta and Colin In refusing to maintain Rejections D)-F), the Examiner finds that a person of ordinary skill in the art would not combine the spray gun of Fukuta with the mixing and multiple barrel dispensing device of Colin because the "substitution of the dual compartments of Colin et al. for the dual containers of Fukuta et al. (as put forth by the Third Party Requester) would have resulted in a device having incompatible parts" and neither reference "provides a teaching of how to remove the material from the dual compartments of Colin et al. using the pumping arrangement of Fukuta et Appeal 2013-007786 Reexamination Control 95/001,656 Patent US 7,815,384 B2 17 al." (RAN 18-19, 21-22, 24; see also Resp. Br. 18-19). The Examiner concludes that "it would not have been obvious to modify Fukuta et al. by simple substitution of the dual compartments of Colin et al. because doing so would have resulted in a change of the principle of operation of Fukuta et al. thereby rendering it inoperable for its intended purpose." (RAN 19; see also RAN 22). The issues presented with respect to the withdrawn Rejection D) are substantively similar to that of Rejection A) except that this rejection relies on Colin instead of Morris. Indeed, the Requester relies on arguments similar to that of Rejection A) asserting that the basic principle under which Colin operates is the same as Fukuta in that it operates by movement of two reactive components brought together at a mixer and dispensed through a dispenser (App. Br. 19-20). Thus, for substantially the same reasons already discussed with respect to Rejection A), we are not persuaded that the Examiner erred in refusing to maintain Rejection D) as appealed by the Requester and affirm the Examiner's decision. The Requester relies on the same arguments with respect to Rejections E) and F) (App. Br. 20). Correspondingly, we also affirm the Examiner's refusal to maintain Rejections E) and F). Rejections G)-I) Based on the Combination of Jacobsen and Hunter In refusing to adopt proposed Rejections G)-I), the Examiner finds that Jacobsen discloses a device with dispensing nozzles for the stated objective of dispensing fluid materials directly into a surface crack such as in floors, walls or ceilings so as to minimize leakage, but does not disclose Appeal 2013-007786 Reexamination Control 95/001,656 Patent US 7,815,384 B2 18 dispensing of fluid by spraying or that a spray nozzle would attain this objective (RAN 25-26; see also Resp. Br. 22-23). The Examiner also finds that Hunter does not disclose using its spray nozzle "to dispense fluid material into cracks in a manner that would minimize leakage." (RAN 26). The Examiner concludes that "it would not have been obvious to modify Jacobsen et al. by substituting the atomizing spray nozzle of Hunter because it would have rendered the device of Jacobsen et al. unsuitable for its intended purpose." (RAN 25-30; see also Resp. Br. 22-23). We find no error in the Examiner's assessment and address the Requester's arguments infra. The Requester argues that "combining Jacobsen's dispensing system with Hunter's spray nozzle for a two component system is nothing more than predictable variation of prior art elements according to their established function of a dispensing a multi-component reactive material." (App. Br. 25). However, we observe that the Requester has not demonstrated that an established function of a cartridge and plunger is to dispense a multi- component reactive material for spraying using a spray nozzle. 16 The Requester does not adequately explain how the modified device would work, and the manner in which the cartridges and mixing gun disclosed in Jacobson can be used in the context of the spray apparatus of Hunter to attain the specific function of dispensing fluid materials directly into surfaces cracks to minimize leakage. It is not evident based on the Requester's proposed rejections and arguments how filling of cracks and voids which is the purpose of the dispensing apparatus described in Jacobson 16 See also Footnote 14 supra. Appeal 2013-007786 Reexamination Control 95/001,656 Patent US 7,815,384 B2 19 can be attained with spray nozzles. Indeed, modifying Jacobsen to provide a spray nozzle would appear to render Jacobsen unsuitable for its intended purpose of dispensing the two component materials into cracks in walls, etc. See In re Gordon, 733 F.2d at 902; DePuy Spine, 567 F.3d at 1326; In re ICON Health, 496 F.3d at 1382. The Requester does not submit persuasive argument or evidence which establishes that a spray nozzle can be used for filling cracks or voids, particularly while minimizing leakage of the fill material. The Requester argues that Jacobsen's disclosure is broader than the Examiner's view and asserts that it describes other purposes and features "such as a general kit system having alternate manners of connections." (App. Br. 21-22, citing Jacobsen, col. 2, ll. 46-56). The Requester argues that because the specification of Jacobsen states that only specific embodiments of the invention have been illustrated and that the invention is to be limited only by the scope of the claims which do not include limitations directed to filling cracks while ensuring minimum leakage, Jacobsen should be understood to disclose a broader intended purpose (Reb. Br. 8). Similar arguments were also presented in Appeal 2013-001649 and found unpersuasive. See Plas-Pak Indus., Inc. v. Richards Parks Corrosion Tech., Inc., 2013 WL 3804717 at *6-*7 (PTAB 2013). In particular, the Decision for Appeal 2013-001649 states: We believe that a person of ordinary skill in the art would not view the Jacobsen disclosure in the dissected manner that the Requester urges. In attempting to create the impression that Jacobsen discloses a separate embodiment that has broader usage, the Requester relies on what Jacobsen discloses, not as a Appeal 2013-007786 Reexamination Control 95/001,656 Patent US 7,815,384 B2 20 separate embodiment, but as one of two basic objects of the invention. App. Br. 18-19, quoting Jacobsen, col. 2, ll. 46-56 ("[a] basic object of this invention is to provide ... multiple piece kits ... "). Jacobsen discloses two "basic objects" of "this invention." Jacobsen, col. 2, l. 46-col. 3, l. 4. Those basic objects, in short, are to provide multiple-piece kits suitable for connection in alternate manners, to convey separately different components prior to mixing and dispensing, and to provide a modified dispensing tool and accessory kit for dispensing fluid material into cracks and voids. Id. Importantly, both of these objects are directed to what Jacobsen refers to as "this invention." Immediately preceding the recitation of the basic objects, Jacobsen describes "this invention" as: relat[ing] to devices for establishing leak-proof seated connections with great universality of use with many different types and sizes of dispensing tubes, nozzles, surface ports used in dispensing fluid material from cartridges, for directing such fluid material into cracks in underlying structures. Jacobsen, col. 2, ll. 40-45 (emphasis added). Elsewhere, Jacobsen similarly identifies "this invention" as: relat[ing] to devices usable for dispensing fluid material(s) via conventional dispensing outlet nozzle(s) directly into a surface crack of a structure, such as concrete floors, walls or ceilings. Jacobsen, col. 1, ll. 13-16 (emphasis added). In contrast to these detailed statements as to the function or intended purpose of the Jacobsen device, as mentioned previously, the Requester maintains that the broader function or intended purpose of the device is to dispense fluid "where and when needed." Such a function or purpose would seemingly, however, be the intent or desire of any and all fluid dispensing systems of whatever design, and is not particularly instructive Appeal 2013-007786 Reexamination Control 95/001,656 Patent US 7,815,384 B2 21 to the person of ordinary skill in the art in developing an understanding of the Jacobsen invention. The Requester has not pointed to any portion of Jacobsen, and we see none, disclosing a location (where) and time (when) in which the device is provided to do anything other than dispense fluid to fill cracks in structures. Indeed, in the portion of the Jacobsen disclosure that discusses the hose H- 4, to which no dispensing device is connected in the Figure 10 illustration relied on by the Requester, Jacobsen describes that the mixing hose provides a comparatively short mixed conveyance path before the mixed components are discharged, and goes on to discuss that a pinch clamp 301-1 disposed on the hose "is effective for accurate and intermittent control of the material discharge in close proximity of the crack or void to be filled . .. ". Jacobsen, col. 7, l. 65-col. 8, l. 3 (emphasis added). This further illustrates how the Requester has taken the Jacobsen expression "where and when needed" out of context and has attempted to imbue it with far greater significance than it has when read in context. Accordingly, we are not persuaded that the Examiner erred in taking the position that the intended purpose of the Jacobsen device is to dispense fluid material into cracks in a manner that minimizes leakage in the course of dispensing. 2013 WL 3804717 at *6-*7. Finally, while Requester argues that the claims of Jacobsen are not limited to filling of cracks, this does not detract from the fact that Jacobsen does not disclose using its disclosed system with spray nozzles. As discussed above relative to Rejections A)-C), the Requester has not adequately demonstrated through persuasive argument or evidence properly presented before the Board in the present appeal that the system of Jacobsen is suitable for use with a spray nozzle such as that of Hunter. Appeal 2013-007786 Reexamination Control 95/001,656 Patent US 7,815,384 B2 22 Thus, for the reasons discussed above and set forth in the Board's Decision in Appeal 2013-001649, we are not persuaded that the Examiner erred in refusing to adopt Rejection G) as proposed by the Requester and affirm the Examiner's decision. The Requester relies on the same arguments with respect to non-adopted Rejections H) and I) (App. Br. 25-26). Correspondingly, we also affirm the Examiner's refusal to adopt Rejections H) and I) as proposed by the Requester. CONCLUSIONS 1. The Examiner did not err in finding that modification of the apparatus of Fukuta with the mixing and dispensing apparatus of Morris as suggested by the Requester would have changed the principle of operation of the apparatus of Fukuta. 2. The Examiner did not err in finding that modification of the apparatus of Fukuta with the multiple barrel dispensing device of Colin as suggested by the Requester would have changed the principle of operation of the apparatus of Fukuta. 3. The Examiner did not err in finding that modification of the dispensing apparatus of Jacobsen with the spray nozzle of Hunter as suggested by the Requester would have rendered the dispensing apparatus of Jacobsen inoperable for its intended purpose. ORDERS 1. The Examiner's refusal to maintain the withdrawn Rejections A)-F) is affirmed. Appeal 2013-007786 Reexamination Control 95/001,656 Patent US 7,815,384 B2 23 2. The Examiner's refusal to adopt proposed Rejections G)-I) is affirmed. Requests for extensions of time in this inter partes reexamination proceeding are governed by 37 C.F.R. §§ 1.956. AFFIRMED Appeal 2013-007786 Reexamination Control 95/001,656 Patent US 7,815,384 B2 24 Patent Owner: K&LGATES LLP P.O. BOX 1135 CHICAGO, IL 60690 Third Party Requester: CANTOR COLBURN LLP 20 CHURCH STREET, 22ND FLOOR HARTFORD, CT 06103 Copy with citationCopy as parenthetical citation