ARMSTRONG WORLD INDUSTRIES, INC.

Patent Trials and Appeals Board

Oct 1, 2020

2019003710 (P.T.A.B. Oct. 1, 2020)

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.
13/873,822 04/30/2013 Sebastien NALIN 1307-00-US-01-ABP 5025
112 7590 10/01/2020
Armstrong World Industries, Inc.
2500 Columbia Avenue
Lancaster, PA 17603
EXAMINER
DANDRIDGE, CHRISTOPHER R.
ART UNIT PAPER NUMBER
3752
NOTIFICATION DATE DELIVERY MODE
10/01/2020 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):
ABP_patents@armstrongceilings.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SEBASTIEN NALIN and SCOTT L. HUNTZINGER
Appeal 2019-003710
Application 13/873,822
Technology Center 3700
Before EDWARD A. BROWN, BRANDON J. WARNER, and
PAUL J. KORNICZKY, Administrative Patent Judges.
KORNICZKY, Administrative Patent Judge.
DECISION ON APPEAL

Appeal 2019-003710
Application 13/873,822

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STATEMENT OF THE CASE1
Pursuant to 35 U.S.C. § 134(a), Appellant2 appeals from the
Examiner’s decision to reject claims 1–5, 11, 12, 17, 19, and 28–34. See
Final Act. 1. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
CLAIMED SUBJECT MATTER
The claims are directed to a system and method for applying a coating
to a workpiece. Claim 1, reproduced below, is illustrative of the claimed
subject matter:
1. A system for applying a coating to a workpiece, the system
comprising:
a spray applicator head comprising a chamber and a feed
inlet located within the chamber to introduce a water-based
liquid into the chamber, the chamber comprising an applicator
opening and being maintained at a vacuum, the applicator head
configured to spray the water-based liquid onto the workpiece
and to remove excess liquid through the chamber by the
maintained vacuum; and
a humidifying apparatus operably coupled to a steam
source, the humidifying apparatus comprising first and second
steam exhausts located external to the chamber and configured
to direct steam toward the applicator head,
wherein the first steam exhaust is located at a first angular
position relative to an axis of the applicator head, and the second
steam exhaust is located at a second angular position relative to

1 In this Decision, we refer to (1) the Examiner’s Final Office Action dated
May 16, 2018 (“Final Act.”) and Answer dated February 11, 2019 (“Ans.”),
and (2) Appellant’s Appeal Brief dated October 16, 2018 (“Appeal Br.”) and
Reply Brief dated April 9, 2019 (“Reply Br.”).
2 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 Armstrong World
Industries. Appeal Br. 2.
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Application 13/873,822

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the axis of the applicator head, the first angular position being
different than the second angular position.

REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Schiele US 5,298,072 Mar. 29, 1994
Kohl US 6,171,653 B1 Jan. 9, 2001

REJECTION
Claims 1–5, 11, 12, 17, 19, and 28–34 stand rejected under 35 U.S.C.
§ 103 as being unpatentable over Schiele and Kohl. Final Act. 2.

OPINION
Appellant argues claims 1–5, 11, 12, 17, 19, and 28–34 as a group.
Appeal Br. 4. We select independent claim 1 as the representative claim,
and claims 2–5, 11, 12, 17, 19, and 28–34 stand or fall with claim 1. 37
C.F.R. § 41.37(c)(1)(iv).
The Examiner finds that Schiele, which is directed to an apparatus for
coating the edges of workpiece (Schiele, 1:6–7), discloses all of the
limitations of claim 1 except for the limitation reciting a “humidifying
apparatus comprising first and second steam exhausts located external to the
chamber.” Final Act. 2–5, 13–14; Ans. 3–5. Figure 2 of Schiele is
reproduced below.
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Application 13/873,822

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Figure 2 illustrates a “diagrammatic perspective view of a detail of
[Schiele’s] edge-coating apparatus.” Schiele, 3:38–39. Figure 2 illustrates
two separate edge-coating heads 3 which are arranged to receive workpieces
5 whose edges are to be coated. Id. at 3:51–55. Each head 3 has a coating
nose 8 that is formed with notch 9 shaped to conform to a workpiece edge to
be coated. Id. at 3:61–66. More specifically, the Examiner finds that
Schiele discloses the recited spray applicator (i.e., head 3) and a chamber
(i.e., notch 9). Final Act. 2.
The Examiner finds that Kohl discloses the missing “humidifying
apparatus comprising first and second steam exhausts located external to the
chamber.” Final Act. 3–5. Figure 1A of Kohl is reproduced below.
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Figure 1A is a side, schematic view of Kohl’s coating apparatus which
applies a coating onto a material web, and shows “two embodiments of a
steam-generating apparatus and/or the steam supply apparatus,” one on
either side of the material web. Kohl, 4:28–32. Kohl teaches passing web
116 of material between two applicator rolls 112, 112' that are pre-coated
with coating medium 120, 120'. Id. at 4:61–5:7. As web 116 passes through
a coating location S, coating medium 120, 120' is transferred from applicator
rolls 112, 112' to the surface of web 116. Id.
Kohl discloses that steam may be applied to one or both sides of the
web material. Kohl, 3:62–4:4. “In the case of the two-sided application of
the coating medium onto the material web, each side of the material web is
equipped with a steam-generating apparatus and/or the steam supply
apparatus.” Id. Referring to Figure 1A above, a “steam-generating
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apparatus and/or the steam supply apparatus 122 and 122' is provided on
each side of the material web 116, and is positioned in the spray or splash
area, adjacent to coating location S, on the downstream side relative to the
movement L of the material web 116.” Id. at 5:16–20. A first embodiment
of the “steam-generating apparatus and/or steam supply apparatus122 shown
on the right side of FIG. 1a includes a steam supply line 124 positioned
directionally perpendicular Q to the material web 116.” Id. at 5:21–24. A
second embodiment of “the steam-generating apparatus and/or the steam
supply apparatus [122’] shown on the left side of FIG. 1[A] uses excess
steam, provided via the steam supply line 124' and expelled into the spray
through a nozzle-shaped steam exit slot 124b'.” Id. at 5:33–42. A “flow of
steam exits the spray area Sp, as indicated in FIG. 1[A] by the two arrows on
each side of the slot-type nozzle 124b', even when the material web 116 and
applicator roll 112' are stationary.” Id.
The Examiner finds that Kohl discloses “a steam exhaust (122)
located external to a chamber (126) and configured to direct steam toward an
applicator head . . ., wherein the first steam exhaust (124) is located at a first
angular position relative to an axis of the applicator head.” Final Act. 3
(citing Kohl 2:54–61, Figure 1A). The Examiner reasons that it would have
been obvious to one having ordinary skill in the art
to modify Schiele with disclosures of Kohl, further providing a
humidifying apparatus (Kohl, 122) operably coupled to a steam
source, the humidifying apparatus (Kohl, 122) comprising a first
steam exhaust (Kohl, 122) located external to the chamber
(Schiele, 9) and configured to direct steam toward the applicator
head (Schiele, 3), wherein the first steam exhaust (Kohl, 122) is
located at a first angular position relative to an axis of the
applicator head (Schiele, 3), in order to provide for slowing of a
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drying process, and a more uniform coating, as disclosed by Kohl
(Column 2, lines 44–51).
Final Act. 3.
The Examiner further finds that “Schiele alone or in combination with
Kohl fails to disclose a humidifying apparatus includ[ing] a second steam
exhaust external to a chamber,” as recited in claim 1. Final Act. 4. The
Examiner presents two reasons to modify the combination of Schiele and
Kohl to include a second steam exhaust, as recited. In the first, the
Examiner reasons that it would have been obvious to one having ordinary
skill in the art “to modify Schiele in view of Kohl, replacing the steam
supply apparatus 122' of Kohl with an additional steam supply apparatus
122, in order to provide for minimized residual spray mist in the system as
suggested by Kohl.” Id. (citing Kohl, 5:34–60).
Appellant argues that the Examiner’s rejection is erroneous for several
reasons. Appeal Br. 10–15. First, Appellant argues that the Examiner
erroneously reasons that “adding the steam exhausts of Kohl to the coating
system of Schiele would help slow drying, thereby resulting in a more
uniform coating on the edge of the workpiece of Schiele.” Id. at 10.
According to Appellant, the “coatings of Schiele are applied to a vertically
oriented edge of a workpiece,” and “[u]nder this configuration, the applied
coating also has a vertical orientation.” Id. Appellant argues that
“[e]xtending the drying time of such vertically oriented coatings is
undesirable because, under the effects of gravity, [] it causes the wet-coating
composition to run downward resulting in a non-uniform edge coating,” and
it would not be obvious “to add the humidifying apparatus of Kohl to the
system of Schiele because doing so extends the drying-time of the coating of
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Schiele, and one having ordinary skill in the art would look away from
increasing the drying time as that would result in non-uniform edge
coatings.” Id.
Appellant’s arguments are not persuasive. Contrary to Appellant’s
argument that Schiele’s system would provide for non-uniform edge coating,
as the provision of steam exhausts would increase drying time, Kohl
discloses that the increased drying time provides for a more uniform coating
and that the increased drying time allows for the paint to bleed into the
material web, thereby providing a more uniform coating. Kohl, 2:2:44–51.
Referring to Figure 1A, reproduced above, we also note that Kohl discloses
a vertically-oriented web material and coating system but does not disclose
problems related to the coating running downward and resulting in non-
uniform coatings.
Second, Appellant argues that Kohl teaches away from combination
with Schiele because, “while Schiele and Kohl both generally disclose
coating systems, . . . one having ordinary skill in the art would understand
that the proposed combination is improper because the spray-application of
atomized paint in Schiele and the roller transfer-coat application of viscous
liquids in Kohl have conflicting technical limitations.” Appeal Br. 10.
Appellant argues that Schiele “requires that the coating medium to be
atomized into a fine mist and indirectly transferred from a reservoir to the
workpiece through the air, whereas Kohl requires the coating medium to be
transferred from a reservoir to the substrate as a viscous liquid via direct-
contact with a roll-coater 112, 112'.” Id. (citing Schiele, code (57); Kohl,
Figure 1A, 2:5–18). Appellant further argues that “Kohl explicitly teaches
away from the atomized paint of Schiele as Kohl states it is undesirable for
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the coating medium to be present as a ‘spray mist,’” and “Schiele requires
the coating head 8 have a specific geometry D that forms an exact fit around
the workpiece 5 being coated (see Figure 7 of Kohl), whereas the coating
head in Kohl (as interpreted by the Final Rejection) loosely surrounds the
substrate that is to be coated.” Id. (citing Schiele, 4:51–61; Kohl, 6:37–50,
Figures 1A and 7).
Appellant’s arguments are not persuasive. Just because better
alternatives exist in the prior art does not mean that an inferior combination
is inapt for obviousness purposes. In re Gurley, 27 F.3d 551, 553 (Fed. Cir.
1994). “The fact that the motivating benefit comes at the expense of another
benefit, however, should not nullify its use as a basis to modify the
disclosure of one reference with the teachings of another. Instead, the
benefits, both lost and gained, should be weighed against one another.”
Winner Int’l Royalty Corp. v. Wang, 202 F.3d 1340, 1349 n.8 (Fed. Cir.
2000). In addition, a “reference does not teach away . . . if it merely
expresses a general preference for an alternative invention but does not
‘criticize, discredit, or otherwise discourage’ investigation into the invention
claimed.” DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc., 567 F.3d
1314, 1327 (Fed. Cir. 2009) (quoting In re Fulton, 391 F.3d 1195, 1201
(Fed. Cir. 2004)).
Here, Kohl does not actually criticize, discredit, or otherwise
discourage the Examiner’s proposed combination of Schiele and Kohl.
Fulton, 391 F.3d at 1201. Kohl does not criticize, discredit, or otherwise
discourage the Examiner’s proposed use of Kohl’s steam-generating
apparatus 122 in Schiele’s coating system. Contrary to Appellant’s
arguments, the Examiner does not propose combining or bodily
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incorporating Kohl’s roller application system and Schiele’s spray mist
system.
Third, Appellant argues that the Examiner erroneously reasons that
“adding a second steam exhaust would be obvious because ‘where the
general conditions of a claim are disclosed in the prior art, it is not inventive
to discover the optimum or workable ranges by routine experimentation.’”
Appeal Br. 11 (citing Final Act. 3–5, 13–14). Appellant’s argument is not
persuasive because it does not addresses the Examiner’s first rationale for
combining Schiele and Kohl, which we find sufficient.
The Examiner persuasively reasons that it would have been obvious to
one having ordinary skill in the art “to modify Schiele in view of Kohl,
replacing the steam supply apparatus 122' of Kohl with an additional steam
supply apparatus 122, in order to provide for minimized residual spray mist
in the system as suggested by Kohl.” Final Act. 4 (citing Kohl, 5:34–60);
Ans. 4. Kohl discloses that steam may be applied to one or both sides of the
web material. Kohl, 3:62–4:4. Kohl explains that, “[i]n the case of the two-
sided application of the coating medium onto the material web, each side of
the material web is equipped with a steam-generating apparatus and/or the
steam supply apparatus.” Id. Figure 1A above shows “two embodiments of
the steam-generating apparatus and/or the steam supply apparatus . . . on
either side of the material web.” Kohl, 4:28–32. The first embodiment of
the “steam-generating apparatus and/or steam supply apparatus122 shown
on the right side of FIG. 1[A] includes a steam supply line 124 positioned
directionally perpendicular Q to the material web 116.” Id. at 5:21–24. The
second embodiment of “the steam-generating apparatus and/or the steam
supply apparatus [122’] shown on the left side of FIG. 1[A] uses excess
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steam, provided via the steam supply line 124' and expelled into the spray
through a nozzle-shaped steam exit slot 124b'.” Id. at 5:33–42. We agree
with the Examiner that a person of ordinary skill in the art would understand
that either one or both of the steam-generating apparatus 122, 122’ could be
used. More specifically, a person of ordinary skill in the art would
understand that steam-generating apparatus 122, located outside the chamber
9, could be used on both sides of the chamber, as recited in claim 1. KSR
Int’l Co. v. Teleflex Inc., 550 U.S. 398, 420–21 (2007) (stating that “in many
cases a person of ordinary skill will be able to fit the teachings of multiple
patents together like pieces of a puzzle” and that a “person of ordinary skill
is also a person of ordinary creativity, not an automaton”). We find the
Examiner’s rationale to combine the teachings of Schiele and Kohl has
rational underpinnings.
For the reasons above, the rejection of independent claim 1 is
sustained. Because Appellant does not argue claims 2–5, 11, 12, 17, 19, and
28–34 separately from claim 1, the rejection of these claims is also
sustained.

CONCLUSION
The Examiner’s decision to reject claims 1–5, 11, 12, 17, 19, and 28–
34 is AFFIRMED.

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Application 13/873,822

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DECISION SUMMARY
In summary:
Claim(s)
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–5, 11, 12,
17, 19, 28–
34
103 Schiele, Kohl 1–5, 11, 12,
17, 19, 28–
34

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