Ex Parte Burns

Patent Trial and Appeal Board

Oct 11, 2017

13787640 (P.T.A.B. Oct. 11, 2017)

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.
13/787,640 03/06/2013 Marvin Dean Burns 60493 (CFTI:0060) 8626
109566 7590 10/12/2017
Fletcher Yoder PC (CFTI)
P.O. Box 692289
Houston, TX 77269-2289
EXAMINER
BARRERA, JUAN C
ART UNIT PAPER NUMBER
3752
MAIL DATE DELIVERY MODE
10/12/2017 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 MARVIN DEAN BURNS
____________

Appeal 2017-000794
Application 13/787,640
Technology Center 3700
____________

Before KEN B. BARRETT, MICHAEL L. WOODS, and
ARTHUR M. PESLAK, Administrative Patent Judges.

WOODS, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Marvin Dean Burns (“Appellant”) appeals under 35 U.S.C. § 134
from the Examiner’s decision rejecting claims 1–37. Appeal Br. 2. We
have jurisdiction over this appeal under 35 U.S.C. § 6(b).

SUMMARY OF THE DECISION
We AFFIRM-IN-PART.

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CLAIMED SUBJECT MATTER
Appellant’s invention relates to systems and methods for spraying
substances, such as paint. Spec. ¶ 2. Claims 1, 12, and 19 are independent
and claim 1 is reproduced below, with emphasis and indentations added for
clarity.
1. A system, comprising:
a spray device, comprising:
a body having a first liquid passage configured to
flow a first liquid and a second liquid passage configured
to flow a second liquid;
a spray head configured to output a spray of the first
liquid and the second liquid; and
a multi-component container coupled to the body,
wherein the multicomponent container comprises a
first container portion having a first outlet configured to
supply the first liquid to the first liquid passage and a
second container portion having a second outlet
configured to supply the second liquid to the second liquid
passage,
the first and second outlets are positioned in close
proximity to one another,
the first container portion comprises a first fastener,
the second container portion comprises a first mating
fastener, the first and second container portions are
removably coupled together via a first coupling of the first
fastener with the first mating fastener,
a second outer wall of the second container portion
is at least partially disposed in a recess extending into a
first outer wall of the first container portion, and
the first outer wall does not completely surround the
second outer wall.
Appeal Br. 22 (emphasis and indentations added) (Claims App.).

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THE REJECTIONS
I. Claims 26 and 29 stand rejected under 35 U.S.C. § 112, second
paragraph, as being indefinite. Final Act. 2.
II. Claims 1–37 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Larson (US 2013/0071570 A1, published Mar. 21, 2013)
and Beaver (US 6,283,385 B1, issued Sept. 4, 2001). Final Act. 3.

ANALYSIS
Rejection I: Claims 26 and 29 as Indefinite
The Examiner rejects claims 26 and 29 as being indefinite for failing
to particularly point out and distinctly claim the subject matter which the
Appellant regards as the invention. Final Act. 2. Claims 26 and 29 depend
from independent claims 1 and 12, respectively, and further recite, “wherein
the . . . container comprises a third container portion having a third outlet,
wherein the first, second, and third outlets are positioned in close proximity
to one another.” Appeal Br. 26, 27 (Claims App.).
In rejecting the claims, the Examiner explains that “[i]t is unclear how
the third outlet is used if they [sic] spray body only has two liquid passages.”
Final Act. 2. The Examiner finds that the Specification does not disclose an
embodiment “having a third container portion, which also has the structure
of the first and second container portions.” Ans. 9.
In contesting the rejection, Appellant argues that although the claims
“do not specify which passage communicates with the third outlet, . . . this is
a matter of claim breadth rather than indefiniteness [and that the] breadth of
a claim should not be equated with indefiniteness.” Appeal Br. 7 (citing In
re Miller, 441 F.2d 689, 693 (CCPA 1971)).
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Appellant’s argument is persuasive. Here, we disagree with the
Examiner’s determination that the claims are indefinite simply because they
do not recite how the third container and third outlet are used. See Final Act.
2. We instead agree with Appellant’s interpretation that “the claimed third
outlet may communicate with a variety of passages,” such as, for example,
the first or second liquid passage. See Appeal Br. 7.
For the foregoing reasons, we do not sustain the Examiner’s rejection
of claims 26 and 29 as being indefinite.

Rejection II: Claims 1–37 Obvious
Claims 1, 4–9, 11, 12, 14–17, 19, 20, 22–37
Appellant contests the rejection of claims 1, 4–9, 11, 12, 14–17, 19,
20, 22–37, collectively. See Appeal Br. 11–21. In accordance with
37 C.F.R. § 41.37(c)(1)(iv), we select claim 1 as the representative claim to
decide the appeal of the rejection as to those claims.
In rejecting claim 1, the Examiner finds that Larson discloses several
of the claimed features, and submits an annotated version of Larson’s
Figures 2 and 3B to illustrate these teachings. Final Act. 3, 16. We
reproduce annotated Figures 2 and 3B, below:
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The above-annotated Figures 2 (left) and 3B (right) depict annotated
versions of, respectively, a schematic presentation of an example of a dual
feeding cup assembly for a spray gun and a schematic presentation of a
spray gun where the second cup is connected via a separate connector into
the spray gun body. Final Act. 16; see Larson ¶¶ 22, 24. The Examiner
asserts that Larson discloses the claimed spray gun 1 with first container
portion 3 and second container portion 15. Final Act. 3. The Examiner
further finds that first container portion 3 and second container portion 15
are “removably coupled together via a first coupling,” 10a. Id.
The Examiner acknowledges, however, that Larson does not disclose
first container portion 3 comprising the claimed “first fastener” and second
container portion 15 comprising the claimed “first mating fastener.” See id.
To address this shortcoming, the Examiner relies on Beaver’s fastener
teaching. See id. at 4. We reproduce Figure 1 of Beaver to illustrate the
Examiner’s finding, below:
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According to the Examiner, the above figure depicts Beaver’s first
container portion 16 with first fastener 32, and second container portion 18
with first mating fastener 34. Id. The Examiner cites to Beaver’s disclosure
that “projection [32] cannot be removed from the recess [34] by applying a
lateral separation force to the two fluid containers, and, thus, resists
transverse separation and twisting separation of the two fluid containers with
respect to each other.” Id. (citing Beaver, 6:53–61).
In combining Larson with Beaver, the Examiner proposes to modify
Larson to incorporate Beaver’s fasteners in order to “resist transverse and
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twisting separation of the containers to assure better securing of the
components.” Id.
In contesting the rejection, Appellant presents several arguments,
which we address separately, below.
First, Appellant argues that “Larson is not prior art based only on the
March 14, 2012 non-provisional filing date” (Appeal Br. 10) and that “the
Examiner did not point out explicitly support in the provisional application
for the relied upon subject matter of Larson” (id. at 10–11). Appellant
further asserts that the “Examiner has not specifically referenced the
description and figures of the above provisional application [and] that the
Examiner has not presented a prima facie case of obviousness.” Reply Br.
8. Appellant further asserts that Larson’s “provisional application appears to
lack sufficient detail regarding the outlets.” Id. at 9.
Appellant’s first argument is not persuasive. Although the Examiner
did not cite to Larson’s provisional application in the Final Office Action,
the Examiner cited to the provisional in an Advisory Action dated March 21,
2016. Adv. Act. 2 (dated Mar. 21, 2016) (“Examiner told Applicant that the
Larson reference claims benefit to provisional application filed March 14,
2011, which discloses all of the structure Examiner relies upon for rejection
the present application”); see also Appeal Br. 10 (Appellant acknowledging
the Examiner’s reference in the Advisory Action to Larson’s provisional
application). Furthermore, we disagree with Appellant’s assertion that
Larson’s “provisional application appears to lack sufficient detail regarding
the outlets.” Reply Br. 9. To illustrate that Larson’s provisional includes
the same detail as the figures provided in the non-provisional, we reproduce
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Larson’s provisional Figure 2 alongside Larson’s non-provisional figure 2,
below:

The above-left figure is Figure 2 of Larson’s provisional application,
whereas the above-right figure is Figure 2 of Larson’s non-provisional
application. We find that provisional figure 2 includes the same detail as
non-provisional figure 2.
We also reproduce Larson’s provisional Figure 3B alongside Larson’s
non-provisional Figure 3B, below:
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The above-left figure is Figure 3B of Larson’s provisional
application, whereas the above-right figure is Figure 3B of Larson’s non-
provisional application. We also find that provisional figure 3B includes the
same detail as non-provisional figure 3B.
Second, Appellant argues that Larson’s principle of operation utilizes
single ring 10a, which is separate from Larson’s first cup 3 and second cup
15 (Appeal Br. 11–13), whereas Beaver’s principle of operation utilizes two
structures, projection 32 and mating recess 34 (id. at 13). Based on these
differences, Appellant argues that the proposed combination would render
Larson unsatisfactory for its intended purpose. Id. at 14. In particular,
Appellant asserts that the proposed modification would interfere with the
following:
(A) the installation and removal of the second cup 15
relative to the first cup 3,
(B) the connection of the fluid outlet of the second cup 15
relative to the first cup 3, and/or
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(C) the sealing between the first and second cups 3 and 15.
Id.
Appellant’s second argument is not persuasive, as we are not
persuaded that the proposed modification would interfere with the
installation or removal of the cups, the connections of the cups, or the
sealing between the cups, as Appellant argues. Id. Rather, Appellant’s
assertions are unsupported by the record. In re De Blauwe, 736 F.2d 699,
705 (Fed. Cir. 1984) (lawyer arguments and conclusory statements which
are unsupported by factual evidence are entitled to little probative value).
Third, Appellant argues that the Examiner has failed to provide
objective evidence to combine Larson with Beaver. Id.
Appellant’s third argument is unpersuasive, as the Examiner has
provided objective evidence, namely, by citing to Beaver’s explicit teachings
in modifying Larson. See Final Act. 4 (citing Beaver, 6:53–61). In
particular, the Examiner cites to Beaver’s disclosure that “projection [32]
cannot be removed from the recess [34] by applying a lateral separation
force to the two fluid containers, and, thus, resists transverse separation and
twisting separation of the two fluid containers with respect to each other.”
Id. We also conclude that the Examiner’s proposed modification of Larson,
“to incorporate the teachings of Beaver to provide the multi-component
container with fasteners that resist transverse and twisting separation of the
containers to assure better securing of the components” (Final Act. 4), is
articulately reasoned with rational underpinnings. In re Kahn, 441 F.3d 977,
988 (Fed. Cir. 2006), cited with approval in KSR Int’l Co. v. Teleflex Inc.,
550 U.S. 398, 418 (2007) (“rejections on obviousness grounds cannot be
sustained by mere conclusory statements; instead, there must be some
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articulated reasoning with some rational underpinning to support the legal
conclusion of obviousness.”). The Examiner’s citation to Beaver’s
disclosure provides the rational underpinnings to support the Examiner’s
modification. Final Act. 4.
Fourth, Appellant argues that “Larson has a curved interface between
the cups 3 and 15 . . . [and that] one of ordinary skill in the art would likely
find that the single ring of Larson is the optimal coupling for the cups 3 and
15 as opposed to other types of couplings.” Appeal Br. 15. Appellant
further points out that Beaver’s interface is planar, and argues that “it is not
clear how or where the cups 3 and 15 of Larson would be hypothetically
modified to include” Beaver’s projection and mating recess. Id.
Appellant’s fourth argument is unpersuasive, as it is also unsupported
by evidence in the record. See In re De Blauwe, 736 F.2d at 705. We
instead agree with the Examiner’s findings that “[e]ven though [Beaver’s]
container[s] mate on flat surfaces, the fasteners taught by Beaver can be used
in the curved surfaces of Larson.” Ans. 10.
Fifth, Appellant argues, “the outer walls of first and second cups 3 and
15 of Larson abut one another in a circumferential direction about an axis of
assembly, thereby resisting transverse and twisting separation.” Reply Br.
10 (citing Larson. Fig. 2) (emphasis omitted). Appellant further asserts that
because Larson’s ring 10a “already resists transverse and twisting
separation, there would be no reason to change the fastening mechanism to
achieve the same result.” Id. (emphasis omitted).
Appellant’s fifth argument is unpersuasive, as we are not persuaded
that Larson’s ring 10a or the outer walls of first cup 3 and second cup 15
would resist transverse and twisting separation. In particular, and with
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reference to Larson’s Figure 2, reproduced supra, we are not persuaded that
Larson’s structure would prevent twisting of second cup 15 about its central
axis, or that Larson’s structure would prevent second cup 15 from sliding up
and away from first cup 3 and ring 10a. Rather, we find that the Examiner’s
proposed modification would resist this particular type of transverse and
twisting separation.
Sixth, Appellant argues that “Larson fails to teach or suggest the close
proximity of outlets set forth in independent claims.” Reply Br. 11.
Appellant’s sixth argument is unpersuasive. Rather, we find that “the
first and second outlets are positioned in close proximity to one another,” as
called for in claim 1. Appeal Br. 22 (Claims App.). To illustrate this
finding, we reproduce below the Examiner’s annotated version of Larson’s
Figure 2 (Final Act. 16):

As found by the Examiner, Larson discloses that the first and second
outlets are in close proximity to one another. Id. at 3 (citing Larson, Fig.
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4A); see also Larson, Fig. 4A. The Examiner’s finding is supported by the
record and Appellant’s argument to the contrary is not persuasive.
Accordingly, we sustain the rejection of claim 1, and claims 4–9, 11,
12, 14–17, 19, 20, 22–37, which fall with claim 1, as unpatentable over
Larson and Beaver.

Claims 2, 13
Claims 2 and 13 depend from independent claims 1 and 12,
respectively, and further recite, inter alia, “wherein the first outlet is offset
from a first central axis of the first container portion, and the second outlet is
offset from a second central axis of the second container portion.” Appeal
Br. 22, 24 (Claims App.).
In addressing the claimed limitation, the Examiner provides an
annotated version of Larson’s Figures 2 and 3B, which we reproduce, below:

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According to the Examiner, the above-annotated Figures 2 (left) and
3B (right) show that “one can determine that for the first container [3], the
central axis is off-centered because of its cross-sectional shape [and as] for
the second container portion [15], its outlet can be interpreted to be tube 8
and, as shown below, is offset from the central axis of its container.” Ans.
11. Notably, in rejecting claims 2 and 13, the Examiner now relies on
Larson’s second inlet 8 to address the claimed second outlet. See id.
In contesting the rejection, Appellant argues that “Larson appears to
disclose that the outlet of the second cup 15 is in line with the central axis of
the second cup.” Appeal Br. 15. Appellant further points out that Larson’s
element 8 is not part of second cup 15, and cannot be interpreted as
satisfying the claimed second cup’s outlet. See Reply Br. 11.
Appellant’s argument is persuasive. The Examiner’s interpretation of
the claimed “second container portion having a second outlet” to include
inlet 8 that is not part of the second container is unreasonably broad and
inconsistent with the Specification. Spec. ¶ 49 (“second container portion
210 includes . . . a second outlet 224 (see FIG. 12) configured to supply a
second liquid to a second liquid passage in the body 206 of the spray device
200”); see also id. at Fig. 11. Rather, we construe the claimed “second
outlet” to be part of the second container, and that Larson’s second inlet 8
does not satisfy the claimed second outlet of second container 15, as the
Examiner has determined. Ans. 11.
We further note that it is well established that patent drawings that do
not define the precise proportions of the elements may not be relied on to
show particular sizes. Hockerson-Halberstadt, Inc. v. Avia Group Int’l, 222
F.3d 951, 956 (Fed. Cir. 2000)). We find that Larson’s Figures 2 and 3B do
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not provide the precise proportions needed to discern whether “the second
outlet is offset from a second central axis of the second container portion,”
as called for in the claims.
For the foregoing reasons, we do not sustain the rejection of claims 2
and 13 as unpatentable over Larson and Beaver.

Claim 3
Claim 3 depends from independent claim 1 and further recites,
“wherein the first and second outlets are arranged in a nested configuration.”
Appeal Br. 22 (Claims App.).
Claim terms are generally given their ordinary and customary
meaning, as would be understood by one of ordinary skill in the art in the
context of the entire disclosure. In re Translogic Tech., Inc., 504 F.3d 1249,
1257 (Fed. Cir. 2007). In interpreting the claimed limitation in the context
of the disclosure, we reproduce Figure 18 of the Specification, below:

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The Specification describes, “outlets 218 and 224 are disposed in a
nonsymmetrical configuration 350 (e.g., a nested configuration 350), such
that the first outlet 218 surrounds the second outlet.” Spec. ¶ 58; see also id.
at Fig. 11, ¶ 18 (“nested configuration of container portions (e.g., one
container portion partially recessed within another container portion)”).
Accordingly, a broad but reasonable interpretation of the claimed “first and
second outlets are arranged in a nested configuration” requires one of the
first or second outlets to at least partially surround the other outlet.
In rejecting claim 3, the Examiner acknowledges that the cited art
does not disclose this limitation, but reasons that it would have been obvious
“to have modified Larson such that the outlets are in a side-by-side
configuration because such a modification would have been considered a
mere design consideration which fails to patentably distinguish over
Larson.” Final Act. 4–5 (emphasis added). The Examiner also cites to
Charpie as evidence that “nested configurations of two outlets of multi-
component containers are known in the art.” Id. at 5 (citing US
2010/02702401 A1, published Oct. 28, 2012 (“Charpie”)).
In contesting the rejection, Appellant argues that the Examiner has
failed to provide adequate rationale in modifying Larson. See Appeal Br.
19.
Appellant’s argument is persuasive.
First, the Examiner’s proposed modification of Larson “such that the
outlets are in a side-by-side configuration” (Final Act. 5) does not satisfy the
claimed “nested configuration,” which as we interpret above, requires one of
the first or second outlets to at least partially surround the other outlet.
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Second, merely asserting that the change is an obvious design choice
is insufficient in this case. A proposed change that results in different
structure and function may not be an obvious design choice. In re Gal, 980
F.2d 717, 719-20 (Fed. Cir. 1992) (custom logic cells had different structure
and purpose than prior art logic cells and thus were not a design choice).
Here, the Examiner fails to provide a reason why a skilled artisan
would arrange the first and second outlets in a nested configuration. See
Final Act. 4–5; see also Ans. 12. In particular, the Examiner has not
explained why a skilled artisan would have relocated one of Larson’s
container outlets to be within the other outlet as a mere design choice when
the proposed modification would change not just the structure of the outlets,
but also seemingly change the structure and the operation of Larson’s spray
device 1 and containers 3, 15. See, e.g., Larson, Figs. 3B, 4A. The
Examiner’s citation to Charpie, without explanation of Charpie’s relevance
to claim 3, is insufficient. Final Act. 5.
For the foregoing reasons, we do not sustain the rejection of claim 3
as unpatentable over Larson and Beaver.

Claims 10, 18, 21
Appellant contests the rejection of claims 10, 18, and 21 collectively.
See Appeal Br. 19–20. In accordance with 37 C.F.R. § 41.37(c)(1)(iv), we
select claim 10 as the representative claim to decide the appeal of the
rejection, with claims 18 and 21 standing or falling with claim 10.
Claim 10 depends from independent claim 1 and recites, inter alia,
“wherein the first container portion comprises a second fastener, the second
container portion comprises a second mating fastener, and the first and
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second container portions are removably coupled together via a second
coupling of the second fastener with the second mating fastener.” Appeal
Br. 23 (Claims App.).
In rejecting claim 10, the Examiner finds that the prior art does not
teach a system that comprises a “second fastener” and a “second mating
fastener,” but reasons that it would have been obvious “to add a second
fastener and a second mating fastener, since it has been held that mere
duplication of the essential working parts of a device involves only routine
skill in the art.” Final Act. 6–7 (citing MPEP § 2144.04 VI B).
In contesting the rejection, Appellant argues that the first and second
fasteners and first and second mating fasteners “may help to improve
stability of the coupling” and improve the “fluid connection and sealing” of
the first and second containers. Appeal Br. 20.
Appellant’s argument is not persuasive, as it is unsupported attorney
argument and does not persuade us of error in the Examiner’s determination
that adding a second fastener and second mating fastener is simply a mere
duplication of parts without producing a new and unexpected result. In re
Harza, 274 F.2d 669, 671 (CCPA 1960) (“It is well settled that the mere
duplication of parts has no patentable significance unless a new and
unexpected result is produced.”). Appellants do not provide evidence that
adding a second fastener produces unexpected results.
Moreover, we note that Beaver discloses projections 36, 38 and
recesses 40, 42, which in combination with interlocking projection 32 and
recess 34, “resist separation forces applied to the two fluid containers 16, 18
in three directions.” Beaver, 7:3–6; see also id. at Fig. 1. Accordingly, we
find that Beaver discloses multiple “fasteners” (32, 36, 38) with multiple
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corresponding “mating fasteners” (34, 40, 42) which, when used together,
resist separation in three directions.
Accordingly, we sustain the rejection of claim 10, and claims 18 and
21, which fall with claim 10, as unpatentable over Larson and Beaver.

SUMMARY
The Examiner’s decision to reject claims 26 and 29 under 35 U.S.C.
§ 112, second paragraph, as indefinite is reversed.
The Examiner’s decision to reject claims 1, 4–12, and 14–37 under 35
U.S.C. § 103(a) as unpatentable over Larson and Beaver is affirmed.
The Examiner’s decision to reject claims 2, 3, and 13 under 35 U.S.C.
§ 103(a) as unpatentable over Larson and Beaver is reversed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED-IN-PART