Ex Parte Carey et alDownload PDFPatent Trial and Appeal BoardMar 27, 201311809290 (P.T.A.B. Mar. 27, 2013) 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. 11/809,290 05/31/2007 Danuta Helena Carey BA-23007 8166 178 7590 03/27/2013 BUCKNAM AND ARCHER 1077 NORTHERN BOULEVARD ROSLYN, NY 11576 EXAMINER HWU, DAVIS D ART UNIT PAPER NUMBER 3752 MAIL DATE DELIVERY MODE 03/27/2013 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 DANUTA HELENA CAREY, CHRISTOPHER MICHAEL WALSH, JOHN MICHAEL PLOCIC, and JOHN RICHARD CRANE ____________________ Appeal 2011-006274 Application 11/809,290 Technology Center 3700 ____________________ Before: STEFAN STAICOVICI, HYUN J. JUNG, and NEIL T. POWELL, Administrative Patent Judges. POWELL, Administrative Patent Judge. DECISION ON APPEAL Appeal 2011-006274 Application 11/809,290 2 STATEMENT OF CASE Appellants appeal under 35 U.S.C. § 134 from a rejection of claims 1- 3. We have jurisdiction under 35 U.S.C. § 6(b). A hearing was held on March 7, 2013. We AFFIRM-IN-PART and ENTER A NEW GROUND OF REJECTION PURSUANT TO OUR AUTHORITY UNDER 37 C.F.R. § 41.50(b). THE CLAIMED SUBJECT MATTER Independent claim 1, reproduced below, is illustrative of the appealed subject matter. 1. In an airless spray gun adapted to hydraulically atomize and spray paint, the spray gun having a housing including a barrel portion and a handle portion, wherein the barrel portion has a passageway extending therethrough housing a spring biased needle assembly activated by a trigger, an end cap closing a first end of said passageway, and a spray tip at a second end of said passageway disposed at the distal end of the barrel portion, and wherein the handle portion has a passageway extending therethrough intersecting at a first end with the passageway in said barrel portion and at a second end communicating with a source of high pressure paint, said handle portion passageway housing an elongated filter extending substantially between said first and second ends thereof, the improvement comprising said spray gun housing being a unitary construction wherein said barrel portion and said handle portion are formed in one piece integrally with each other. Appeal 2011-006274 Application 11/809,290 3 REFERENCES The prior art relied upon by the Examiner in rejecting the claims on appeal is: Gebauer US 5,370,314 Dec. 6, 1994 O’Dell US 4,529,340 Jul. 16, 1985 REJECTIONS Appellants seek our review of the following rejections: 1. Claims 1 and 2 stand rejected under 35 U.S.C. § 102(b) as anticipated by Gebauer. 2. Claim 3 stands rejected under 35 U.S.C. § 103(a) as unpatentable over Gebauer and O’Dell. ANALYSIS Claims 1 and 2 The Examiner finds that Gebauer’s spray gun includes a barrel portion 11 and a handle portion 51 that meet the claim language “said barrel portion and said handle portion are formed in one piece integrally with each other,” as called for by claim 1 and “a one-piece housing . . . comprising (a) a barrel portion . . . and (b) a handle portion integrally formed in one piece with said barrel portion,” as called for by claim 2. Ans. 3-4. The Examiner states “[a]lthough the barrel portion and the handle appear to be two separate pieces connected together, the mere fact that they are connected together to form the entire spray gun constitutes a one piece device in which the barrel portion and the handle are formed integrally with each other.” Id. at 4. Appeal 2011-006274 Application 11/809,290 4 Appellants argue that this finding rests on an erroneous interpretation of the claim language “one piece.” App. Br. 11-12. Specifically, Appellants argue the Examiner fails to recognize that the ordinary meaning of “one piece” excludes structure formed of multiple pieces, and that the intrinsic evidence indicates structure formed in “one piece” does not include joined pieces. App. Br. 11-13; Reply Br. 2-3. We agree with Appellants regarding the ordinary meaning of “one piece.” We further agree with Appellants that the intrinsic evidence does not suggest a different meaning. As Appellants note, Appellants’ drawings consistently show a barrel portion 14 and a handle portion 16 formed together as a homogenous unit without a joint. See figs. 4 and 5; see also Spec., 5-7. Furthermore, the Specification indicates that forming two portions of a spray gun in “one piece” eliminates a joint or seam between those portions. See, e.g., Spec., p. 2, l. 19-p. 3, l. 1. Accordingly, we conclude that the claim language “one piece” does not encompass two pieces connected by a joint. Consequently, the Examiner erred in finding that two pieces of Gebauer connected to one another at a joint meet the claim language “said barrel portion and said handle portion are formed in one piece integrally with each other.” Therefore, we cannot sustain the rejection of claims 1 and 2. Claim 3 The Examiner finds that Gebauer discloses the claim limitations “forming a one piece spray gun housing blank including a barrel portion and an integral handle portion.” Ans. 4-5. Specifically, the Examiner finds that the “lengthening piece 21” of Gebauer constitutes a handle portion formed Appeal 2011-006274 Application 11/809,290 5 integrally with a barrel portion from a single piece of material (the blank) of a one piece spray gun housing of Gebauer. See Id. at 5; see also Gebauer, col. 4, ll. 6-11; fig. 2. The Examiner further finds that Gebauer discloses forming through its lengthening piece 21 a passage into which a filter extends, thereby meeting the claim limitations forming a passageway extending through said handle portion intersecting at a first end thereof with the passageway in said barrel portion and adapted to communicate with a source of high pressure paint at a second end thereof and to accommodate therein an elongated filter extending substantially between said the first and second ends for filtering the high pressure paint supplied to said spray gun. See Ans. 5. Appellants argue that the Examiner erred because Gebauer’s lengthening piece 21 does not constitute a handle portion. Reply Br. 4-5. Gebauer directly contradicts this argument, disclosing that the lengthening piece forms a “part of the handle” of its spray gun. Gebauer, col. 4, ll. 6-11. Appellants also argue the Examiner erred in finding that Gebauer meets the claim language “forming a passageway . . . to accommodate therein an elongated filter extending substantially between said the first and second ends.” Appellants advance that this claim language requires forming a passageway for housing a filter entirely within the passageway. Reply Br. 4. Accordingly, Appellants suggest, Gebauer does not meet the claim language because the elongated filter in Gebauer does not fit entirely within the passageway through the lengthening piece 21. Id. Appellants’ Figure 4 contradicts Appellants’ claim-construction argument by showing the filter 38 extending beyond the second end of the passageway in the handle portion 16. This suggests that the claim language Appeal 2011-006274 Application 11/809,290 6 in question requires a passageway for accommodating at least a portion of a filter between the first and second ends of the passageway, but does not exclude that the filter may also extend beyond the first and/or second ends of the passageway. Appellants do not point to any evidence that contradicts such a claim construction. Thus, we cannot agree with Appellants’ argument that the claim language requires a passageway for housing a filter entirely within the passageway. Accordingly, we cannot agree with Appellants’ argument that the Examiner failed to find disclosure meeting the claim limitations related to the passageway in the handle portion. Regarding the claim limitation “said handle portion passageway formed by through-the-tool coolant drilling,” the Examiner determines that it would have been obvious in view of O’Dell to use this drilling technique to drill the passageway in Gebauer’s handle portion. See Ans. 4. Appellants argue that it would not have been obvious to use through-the-tool coolant drilling to form a passageway in Gebauer’s “handle 51.” App. Br. 15. This argument does not apprise us of error in the rejection because the Examiner correctly identifies Gebauer’s “lengthening piece 21” as corresponding to the “handle portion” recited in the claim, making it moot whether it would have been obvious to use through-the-tool coolant drilling for Gebauer’s “handle 51.” Accordingly, for the foregoing reasons, we sustain the rejection of claim 3 over the combined teachings of Gebauer and O’Dell. New Ground of Rejection Pursuant to our authority under 37 C.F.R. § 41.50(b), we reject claims 1 and 2 under 35 U.S.C. § 102(b) as anticipated by Gebauer. Appeal 2011-006274 Application 11/809,290 7 Claim 1 Gebauer discloses an airless spray gun 1 adapted to hydraulically atomize and spray paint. See Gebauer, col. 1, ll. 5-11. Gebauer’s spray gun 1 includes a housing 11 having a barrel portion and a handle portion 21. See Id. at col. 3, l. 65-col. 4, l. 11; fig. 2. In Gebauer’s spray gun 1, the barrel portion has a passageway 14 extending therethrough housing a spring biased needle assembly 16, 17, 18 activated by a trigger 25, an end cap closing a first end of said passageway, and a spray tip 15 at a second end of said passageway disposed at the distal end of the barrel portion. See Id. at col. 4, ll. 11-30; fig. 2. Also in Gebauer’s spray gun 1, the handle portion 21 has a passageway 24 extending therethrough intersecting at a first end 22 with the passageway 14 in said barrel portion and at a second end 23 communicating with a source 2, 3, 51, 58 of high pressure paint. See Id. at col. 4, ll. 6-14; fig. 2. Additionally, in Gebauer’s spray gun 1, the handle portion passageway 24 houses an elongated filter 60 extending substantially between the first and second ends 22, 23 thereof. See Id. at col. 4, ll. 66-68; fig. 2. Furthermore, in Gebauer’s spray gun 1, the spray gun housing is a unitary construction wherein the barrel portion and the handle portion 21 are formed in one piece integrally with each other. See Id. at col. 4, ll. 33-39; fig. 2. Claim 2 Gebauer discloses a one piece housing 11 for an airless spray gun 1 adapted to hydraulically atomize and spray paint. See Id. at col. 4, ll. 33-39; col. 1, ll. 5-11; fig. 2. Gebauer’s housing 11 includes a barrel portion having a passageway 14 therethrough adapted to be closed at a first end and to Appeal 2011-006274 Application 11/809,290 8 terminate in a spray tip 15 at a second end disposed at the distal end of the barrel portion, the barrel portion being adapted to house a spring biased needle assembly 16, 17, 18 in the passageway 14 activated by a trigger 25 to permit the delivery of high pressure paint to the spray tip 15. See Id. at col. 3, l. 65-col. 4, l. 30; fig. 2. Gebauer’s housing 11 also includes a handle portion 21 integrally formed in one piece with the barrel portion. See Id. at col. 4, ll. 6-11 and 33- 39; fig. 2. Gebauer’s handle portion 21 has a passageway 24 therethrough intersecting at a first end 22 thereof with the passageway 14 in the barrel portion and a second end 23 thereof adapted to communicate with a source 2, 3, 51, 58 of high pressure paint. See Id. at col. 4, ll. 6-14; fig. 2. Gebauer’s handle portion 21 is adapted to house in the passageway 24 an elongated filter 60 extending substantially between the first and second ends 22, 23 thereof for filtering the paint passing therethrough. See Id. at col. 4, ll. 66-68; fig. 2. DECISION We reverse the Examiner’s decision regarding claims 1 and 2. We affirm the Examiner’s decision regarding claim 3. We enter a new ground of rejection for claims 1 and 2. FINALITY OF DECISION Regarding the affirmed rejection, 37 C.F.R. § 41.52(a)(1) provides “Appellant[s] may file a single request for rehearing within two months of the date of the original decision of the Board.” Appeal 2011-006274 Application 11/809,290 9 In addition to affirming the Examiner's rejection of one or more claims, this decision contains a new ground of rejection pursuant to 37 C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides “[a] new ground of rejection pursuant to this paragraph shall not be considered final for judicial review.” 37 C.F.R. § 41.50(b) also provides that Appellants, WITHIN TWO MONTHS FROM THE DATE OF THE DECISION, must exercise one of the following two options with respect to the new ground of rejection to avoid termination of the appeal as to the rejected claims: (1) Reopen prosecution. Submit an appropriate amendment of the claims so rejected or new evidence relating to the claims so rejected, or both, and have the matter reconsidered by the examiner, in which event the proceeding will be remanded to the examiner . . . . (2) Request rehearing. Request that the proceeding be reheard under § 41.52 by the Board upon the same record . . . . Should Appellants elect to prosecute further before the Examiner pursuant to 37 C.F.R. § 41.50(b)(1), in order to preserve the right to seek review under 35 U.S.C. §§ 141 or 145 with respect to the affirmed rejection, the effective date of the affirmance is deferred until conclusion of the prosecution before the Examiner unless the affirmed rejection is overcome. If Appellants elect prosecution before the Examiner and this does not result in allowance of the application, abandonment or a second appeal, this case should be returned to the Patent Trial and Appeal Board for final action on the affirmed rejection, including any timely request for rehearing thereof. Appeal 2011-006274 Application 11/809,290 10 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-IN-PART; 37 C.F.R. § 41.50(b) hh Copy with citationCopy as parenthetical citation