Ex Parte Hirano et al

Board of Patent Appeals and Interferences

Aug 16, 2012

10981394 (B.P.A.I. Aug. 16, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte KATSUMI HIRANO, KATSUHIRO TAKESHITA,
AKIHIRO KANAKURA, and SATOSHI YAMASAKI
____________________

Appeal 2010-007928
Application 10/981,394
Technology Center 3700
____________________

Before LINDA E. HORNER, LYNNE H. BROWNE, and MICHELLE R.
OSINSKI, Administrative Patent Judges.

OSINSKI, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2010-007928
Application 10/981,394

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STATEMENT OF THE CASE
Appellants1 appeal under 35 U.S.C. § 134(a) from a final rejection of
claims 2, 3, 5, 6, 9, and 10.2 We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.

The claimed subject matter relates to atomized spray coating
apparatuses. See Spec. p. 1, ll. 11-13. The spray coating apparatuses are
able to form a flow of air having a predetermined angle that is supplied
toward the atomized spray paint flow to prevent the paint from scattering
without disturbing the coating pattern (i.e., “a shape formed by paint
particles injected from the injection nozzle” of the spray coating apparatus).
See Spec. p. 4, l. 24 – p. 5, l. 4; p. 5, ll. 16-17.
Claims 2 and 5 are the independent claims on appeal. Claim 2,
reproduced below with the key limitation emphasized, is illustrative of the
claimed subject matter:

2. A spray coating apparatus which possesses a casing and a
cylindrical injection nozzle provided in a tip side of the casing
and which forms a coating pattern by injecting paint and
shaping air from the injection nozzle to thereby form a coating
film on a coating object, wherein;
a first adapter which is provided on a substantially
concentric circle of the injection nozzle and which blows off
shield air in an injection direction of the injection nozzle, and

1 Appellants identify the real party in interest as Nippon Paint Co., LTD of
Osaka, Japan and J&S Engineering of Saitama, Japan. App. Br. 2.
2 The rejection of claims 8 and 17 under 35 U.S.C. § 103(a) has been
withdrawn by the Examiner. Ans. 2.
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the first adapter, by blowing off the introduced shield air
while giving the shield air a predetermined blowoff angle
slanting toward a circumferential direction of the apparatus, so
that the shielding air flows around and covers an outer
periphery of the coating pattern near the injection nozzle, and
the predetermined blowoff angle of the shield air blown
off from the first adapter is such that the air is blown off
without disturbing the coating pattern of the paint, wherein the
first adapter having an air induction part formed by a double
cylinder such that shield air flows between respective cylinders
of the double cylinder, an air inlet and an air blowoff port
which are formed in both ends of the air induction part, and
plural helical grooves formed in an inner periphery face of the
air induction part from the air inlet to the air blowoff port.

REJECTIONS
Appellants seek review of the following rejections:
(1) Claims 2, 3, and 6 under 35 U.S.C. § 103(a) as unpatentable over Bell
(US 2,478,557, iss. Aug. 9, 1949), Jaden (US 2,057,434, iss. Oct. 13, 1936),
and Ii (US 4,546,923, iss. Oct. 15, 1985). Ans. 3.
(2) Claims 9 and 10 under 35 U.S.C. § 103(a) as unpatentable over Bell,
Jaden, Ii, and Bradshaw (US 4,367,787, iss. Jan. 11, 1983). Ans. 6.
(3) Claim 5 under 35 U.S.C. § 103(a) as unpatentable over Bell, Jaden, and
Vorms (US 3,883,076, iss. May 13, 1975). Ans. 4.

ANALYSIS
Claims 2, 3, and 6 over Bell, Jaden, and Ii
The Examiner found that Bell and Jaden together disclose all of the
limitations of independent claim 2 with the exception of helical grooves
formed in an inner periphery face of the air induction part from the air inlet
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to the air blowoff port as recited. Ans. 4. The Examiner found that “Ii
teaches a spray coating system comprising an air inlet and an air blowoff
port and plural helical grooves formed in an inner periphery face of an air
induction part from the air inlet to the air blowoff port.” Ans. 4. The
Examiner concluded that it would have been obvious for a person of
ordinary skill in the art to have modified the device of Bell to provide plural
helical grooves as taught by Ii. Ans. 4. In particular, the Examiner found
that the combination of Ii with Bell and Jaden “meets the structural
limitations of the instant invention and carr[ies] out the same intended
function of the instant invention apparatus.” Ans. 7.
The Examiner’s rejection is insufficient to explain what would have
prompted a person having ordinary skill in the art to provide the plural
helical grooves (angularly spaced grooves 3) of Ii in the air induction part
(identified by the Examiner as air passages 16, 18, 19) of Bell. We are not
persuaded that providing the helical grooves of Ii in the air induction part of
Bell is merely the predictable combination of elements that perform the
same function as each did separately as the Examiner suggests. Ans. 7.
First, the helical grooves of Ii are disposed on an outer frustoconical surface
2C (Ii, col. 2, ll. 1-3; fig. 1) of a member 2 in Ii, rather than an inner
periphery face as recited in the claims. Second, the grooves of Ii are
configured to generate a spiral air flow converging at point V “in order to
create a negative pressure at the nozzle to suck out and cause the paint to
move in the direction indicated by arrow 16” and “cause[] the paint to be
atomized and move in a tornado-like motion” (App. Br. 14 (citing Ii, figs. 1-
2; col. 2, ll. 62-63)), rather than a “blow[off] angle slanting toward a
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circumferential direction of the apparatus” and being “such that the air is
blown off without disturbing the coating pattern of the paint” as recited in
the claims. App. Br. 15. The Examiner has not provided sufficient evidence
that one of ordinary skill in the art would have expected Ii’s angularly
spaced grooves 3 to predictably function in Bell’s air induction part
(identified by the Examiner as air passages 16, 18, 19) and simply “carry out
the same intended function of the instant invention apparatus.” Ans. 7; See
KSR Int'l Co. v. Teleflex, Inc., 550 U.S. 398, 415-16 (2007).
The angularly spaced grooves of Ii are structurally and functionally
different than the plural helical grooves recited in the claims, and it would
not merely require the combination of known elements with no change in
their respective functions to arrive at the claimed invention. Rather, a
significant change in the function of Ii’s angularly spaced grooves would be
necessary, i.e., changing from generating a spiral air flow that atomizes the
paint (App. Br. 14) to air flow with a blowoff angle such that the air does not
disturb the coating pattern of the paint (Claims App’x). The Examiner has
failed to adequately articulate that one of ordinary skill in the art could have
combined elements known in the prior art with no change in their respective
functions and the result of the combination would have been predictable.
KSR, 550 U.S. at 416.
The rationale articulated by the Examiner is not persuasive because it
is not based on a rational underpinning for combining the references as
proposed. For the foregoing reasons, the Examiner erred in concluding that
the subject matter of claim 2 would have been obvious from the combination
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of Bell, Jaden, and Ii; and we do not sustain the rejection of independent
claim 2 and its dependent claims 3 and 6 under § 103(a).

Claims 9 and 10 over Bell, Jaden, Ii, and Bradshaw
The Examiner articulates no persuasive reason why Bradshaw might
have remedied the deficiencies of the combination of Bell, Jaden, and Ii as
applied to independent claim 2 and as discussed hereinabove. For the
foregoing reason, the Examiner erred in concluding that the subject matter of
claims 9 and 10 would have been obvious from the combination of Bell,
Jaden, Ii, and Bradshaw; and we do not sustain the rejection of claims 9 and
10 under § 103(a).

Claim 5 over Bell, Jaden, and Vorms
The Examiner found that Bell and Jaden together disclose all of the
limitations of independent claim 5 with the exception of a movable guide
vane which extends from the air inlet side to the air blowoff port side and
which partitions an internal space of the first adapter as recited. Ans. 5. The
Examiner found that “Vorms et al. teaches a spraying device comprising
movable guide vanes 12 formed in an inner periphery face of the induction
part from the air inlet to the air blowoff port.” Ans. 5. The Examiner
concluded that it would have been obvious for a person of ordinary skill in
the art to have modified the device of Bell to provide moveable guide vanes
as taught by Vorms. Ans. 5. In particular, the Examiner found that the
moveable guide vane “is taught by Vorms in a spray coating apparatus in
order to provide swirling for the air.” Ans. 7.
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The Examiner’s rejection is insufficient to explain what would have
prompted a person having ordinary skill in the art to provide a moveable
guide vane (rotatable blade 12) of Vorms in the air induction part (identified
by the Examiner as air passages 16, 18, 19) of Bell. The Examiner has not
provided any findings that Bell or Vorms recognized a problem with the air
passages 16, 18, 19 of Bell. The reason proffered by the Examiner to
combine the teachings of Vorms with those of Bell, i.e., to provide swirling
for the air (Ans. 7), is unpersuasive in light of the fact that Bell provides a
circumferential discharge opening 57 that is spaced and separated from the
jet from the nozzle opening 47 and that is defined by a casing 50 that
extends beyond the front terminal end of the spray nozzle. Bell, col. 4, ll.
51-53, col. 3, ll. 54-56. While Vorms discloses that swirling of air may be
useful to change the angle of the outlet air and adjust “vectors of the
peripheral speed of the spraying edge and the speed of air flowing on the
edge,” (Vorms, col. 5, ll. 12-14), such usefulness is inapplicable in Bell
where the outlet air is separated from the jet of the nozzle opening both
radially and axially.
Moreover, we are not persuaded that providing the moveable guide
vanes (rotatable blades 12) of Vorms in the air induction part (identified by
the Examiner as air passages 16, 18, 19) of Bell is merely a predictable
combination of elements that performs the same function as each did
separately. Ans. 5. The rotatable blades 12 of Vorms are configured to
“contact the liquid and thereby result[] in a specific affect [sic] on the
liquid,” rather than a “blowoff angle slanting toward a circumferential
direction of the apparatus” and being “such that the air is blown off without
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disturbing the coating pattern of the paint” as recited in the claims. App. Br.
26. The Examiner has not provided sufficient evidence that one of ordinary
skill in the art would have expected Vorms’ rotatable blades 12 to
predictably function in Bell’s air induction part (identified by the Examiner
as air passages 16, 18, 19). See KSR, 550 U.S. at 415-16. The Examiner has
failed to adequately articulate that one of ordinary skill in the art could have
combined elements known in the prior art with no change in their respective
functions and the result of the combination would have been predictable. Id,
550 U.S. at 416. Instead, a significant change in the function of Vorms’
rotatable blades 12 would be necessary, i.e., changing from airflow that
contacts the discharged liquid to affect the coating pattern (App. Br. 26) to
air flow with a blowoff angle such that the air does not disturb the coating
pattern of the paint (Claims App’x).
The rationale articulated by the Examiner is not persuasive because it
is not based on a rational underpinning for combining the references as
proposed. For the foregoing reasons, the Examiner erred in concluding that
the subject matter of claim 5 would have been obvious from the combination
of Bell, Jaden, and Vorms; and we do not sustain the rejection of
independent claim 5 under § 103(a).

DECISION
The Examiner’s rejection of claims 2, 3, and 6 under 35 U.S.C.
§ 103(a) as being obvious over Bell, Jaden, and Ii is REVERSED.
The Examiner’s rejection of claims 9 and 10 under 35 U.S.C. § 103(a)
as being obvious over Bell, Jaden, Ii, and Bradshaw is REVERSED.
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The Examiner’s rejection of claim 5 under 35 U.S.C. § 103(a) as
being obvious over Bell, Jaden, and Vorms is REVERSED.

REVERSED

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