Ex Parte Kosmyna et al

Board of Patent Appeals and Interferences

Sep 23, 2010

10254121 (B.P.A.I. Sep. 23, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte MICHAEL J. KOSMYNA and RALPH WISNIEWSKI
____________________

Appeal 2009-009338
Application 10/254,121
Technology Center 3700
____________________

Before JENNIFER D. BAHR, STEFAN STAICOVICI, and
FRED A. SILVERBERG, Administrative Patent Judges.

Opinion for the Board filed by Administrative Patent Judge
FRED A. SILVERBERG.
Opinion Concurring-in-part and Dissenting-in-part filed by
Administrative Patent Judge JENNIFER D. BAHR.

SILVERBERG, Administrative Patent Judge.

DECISION ON APPEAL1

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.
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STATEMENT OF THE CASE
Michael J. Kosmyna and Ralph Wisniewski (Appellants) seek our
review under 35 U.S.C. § 134 of the final rejection of claims 1, 2, 4-27, 29,
35-40, 42, 43 and 45-52. We have jurisdiction under 35 U.S.C. § 6(b)
(2002).
We AFFIRM-IN-PART.

THE INVENTION
Appellants’ claimed invention is directed to dispensing systems for
dispensing metered quantities of fluid components (Spec. 1:4-8).
Claim 1, reproduced below, is representative of the subject matter on
appeal.
1. A dispensing system including a first container, a
dispensing device, at least one flexible container for a
respective at least one component to be dispensed, the at
least one flexible container adapted to be placed within
the first container, and at least one conduit coupled
between the at least one flexible container and the
dispensing device, and a second container for a solvent
for the material dispensed from the dispensing device,
the dispensing device being adapted to dispense the
solvent while the material is being dispensed to effect
blending of an edge of a spray pattern formed by the
material being dispensed on an article onto which the
material is being dispensed, the second container
mounted on the dispensing device.

THE REJECTIONS
The following rejections by the Examiner are before us for review:
1. Claims 1, 2, 4-11, 35-40, 42, 43 and 45-52 are rejected under 35
U.S.C. § 103(a) as being unpatentable over Sandison (US 5,713,519,
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issued Feb. 3, 1998) in view of Brown (US 5,526,957, issued Jun. 18,
1996).
2. Claims 12-27 and 29 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Sandison in view of Brown, and further in view of
Kott (US 6,533,189 B2, issued Mar. 18, 2003).

ISSUES
The issues before us are: (1) whether the Examiner erred in
concluding that the combined teachings of Sandison and Brown would have
led a person having ordinary skill in the art to a second container for a
solvent to effect a blending of an edge of a spray pattern from a dispensing
device, as called for in independent claims 1, 35 and 42; wherein the solvent
also flushes the dispensing device, as called for in claim 42 (Reply Br. 2;
App. Br. 18, 19, 21); and (2) whether the Examiner erred in concluding that
the combined teachings of Sandison, Brown and Kott would have led a
person having ordinary skill in the art to a valve for controlling the supply of
solvent with a plural component mixture and to dispense the solvent to flush
the components from the dispenser as called for in independent claims 12
and 22 (Reply Br. 3, 5; App. Br. 22, 24, 25).

ANALYSIS
Rejection of claims 1, 2, 4-11, 35-40, 42, 43 and 45-52 under 35 U.S.C.
§ 103(a) as being unpatentable over Sandison and Brown
Appellants argue claims 1, 2 and 4-11 as a group (App. Br. 18-19).
As such, we select claim 1 as representative of the group, and claims 2 and
4-11 will stand or fall with claim 1. Appellants argue claims 35-40 as a
group (App. Br. 19-21). As such, we select claim 35 as representative of the
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group, and claims 36-40 will stand or fall with claim 35. Appellants argue
claims 42, 43 and 45-52 as a group (App. Br. 21-22). As such, we select
claim 42 as representative of the group, and claims 43 and 45-52 will stand
or fall with claim 42. 37 C.F.R. § 41.37(c)(1)(vii) (2009).
Appellants contend that since neither Sandison nor Brown describe a
second container for a solvent to effect a blending of an edge of a spray
pattern, the combined teachings of Sandison and Brown do not describe the
claimed second solvent container, as called for in independent claims 1, 35
and 42 (Reply Br. 2; App. Br. 18, 19, 21).
We find that Appellants argue the cited references individually, while
the Examiner’s conclusion of obviousness is based on a combination of
references. The test for obviousness is whether the references, taken as a
whole, would have suggested Appellant's invention to a person having
ordinary skill in the art at the time the invention was made. See In re Merck
& Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986); In re Keller, 642 F.2d 413,
425 (CCPA 1981) (One cannot show nonobviousness by attacking
references individually where the rejections are based on combinations of
references.).
The Examiner’s findings regarding Sandison and Brown are set forth
on Answer 3-5. We adopt those findings as our own.
In particular, the Examiner found (1) that Sandison describes flexible
containers 116, 118, wherein one of the containers can be used to hold a
solvent (Ans. 3); and (2) that in the combined teachings of Sandison and
Brown, “when [the] combination of products are mixed and sprayed together
from a dispensing device, the mixed spray products are mutually effected”
(Ans. 5).
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Further, Sandison describes a first atomizing portion 168 and a second
atomizing portion 170, wherein the materials being dispensed are mixed in
the portions 168, 170 themselves (col. 7, l. 52-col. 8, l. 38) and also by the
an overlapping spray pattern after they are dispensed from the portions 168,
170 (col. 9, ll. 56-64).
We agree with the Examiner’s finding that the mixed spray products
are mutually effected (Ans. 5) since in Sandison, when the materials, which
include a cleaning solvent (col. 5, ll. 31-46), are dispensed in an overlapping
spray pattern, they effect a blending of an edge of a spray pattern.
Appellants further contend that Sandison does not describe a solvent
for flushing the mixed components from the dispensing device, as called for
in claim 42 (App. Br. 21).
Since the materials dispensed in Sandison include a cleaning solvent,
we find that the cleaning solvent would flush the nozzle while it is being
dispensed and sprayed through the portions 168, 170.
Therefore, we affirm the rejection of independent claims 1, 35 and 42.
Likewise, we affirm the rejection of claims 2, 4-11, 36-40, 43 and 45-52, as
they fall with independent claims 1, 35 and 42, respectively.

Rejection of claims 12-27 and 29 under 35 U.S.C. § 103(a) as being
unpatentable over Sandison, Brown and Kott
Appellants contend that the combined teachings of Sandison, Brown
and Kott do not describe a valve for controlling the supply of solvent with a
plural component mixture and for dispensing the solvent to flush the
components from the dispenser as called for in independent claims 12 and
22 (Reply Br. 3, 5; App. Br. 22, 24, 25).
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The Examiner found that the combined teachings of Sandison and
Brown describe all claimed features except for the solvent container being
mounted on the dispensing device and a third solvent valve (Ans. 4). The
Examiner found that Kott describes a dispensing device having a solvent
container 96 mounted thereon, and a solvent valve 98. The Examiner found
that Kott’s solvent valve 98 is adapted to be manually operated to control the
flow of solvent into the dispenser at any time during the operation of the
dispenser (Ans. 5).
The Examiner concluded that “[i]t would have been obvious to a
person with ordinary skill in the art at the time the invention was made to
modify the device of The [sic] Sandison-Brown combination to include a
solvent tank mounted on the dispensing device and operable with a third
valve . . . as taught by Kott” (Ans. 4). In support thereof, the Examiner
referenced column 13, lines 43-52 of Kott (Ans. 4).
Independent claims 12 and 22 call for a valve for (1) controlling the
supply of solvent with a plural component mixture and (2) dispensing the
solvent to flush the components from the dispenser.
We find that in the proposed combination of Kott with the combined
teachings of Sandison and Brown, the Examiner is relying on Kott to
describe a valve for (1) controlling the supply of solvent with a plural
component mixture and (2) dispensing the solvent to flush the components
from the dispenser as called for in independent claims 12 and 22.
Kott describes a spray gun 36 for dispensing material 26, 28 (col. 3, ll.
52-62), a tank 96 having a valve 98; the tank 96 is used to purge the spray
gun after all spraying is completed (col. 8, ll. 37-63). Kott describes that the
valve 98 is opened after spraying is completed via a mini ball valve to force
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any unused material out of the spray gun 36 (col. 9, ll. 13-21 and col. 13, ll.
43-57).
As set forth in the paragraph above, Kott only describes opening valve
98 after the spraying is completed to purge the spray gun 36. Kott does not
describe that the valve 98 is opened when the spray gun 36 is spraying so as
to mix the solvent with the materials being dispensed. Further, Kott is silent
as to valve 98 being manually operated to control the flow of solvent into the
dispenser at any time during the operation of the dispenser, as found by the
Examiner (Ans. 5). As such, it becomes incumbent upon the Examiner to
provide a basis in fact and/or technical reasoning that would support a
finding that Kott’s valve 98 is manually operated so as to be able to both (1)
control the supply of solvent with a plural component mixture and (2)
dispense the solvent to flush the components from the dispenser when
combined with the teachings of Sandison and Brown.
We find that the Examiner has not provided such basis in fact or
technical reasoning. Thus, we find that the Examiner’s finding is
conclusory. See KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007)
(holding that “rejections 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.”).
Therefore, Kott does not cure the deficiency noted supra by the
Examiner regarding the combined teachings of Sandison and Brown.
Accordingly, we reverse the rejection of independent claims 12 and
22. Likewise, we reverse the rejections of claims 13-21, 23-27 and 29,
which depend from claims 12 and 22, respectively.
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CONCLUSIONS
The Examiner has not erred in concluding that the combined teachings
of Sandison and Brown would have led a person having ordinary skill in the
art to a second container for a solvent to effect a blending of an edge of a
spray pattern from a dispensing device, as called for in independent claims
1, 35 and 42; wherein the solvent also flushes the dispensing device, as
called for in claim 42
The Examiner has erred in concluding that the combined teachings of
Sandison, Brown and Kott would have led a person having ordinary skill in
the art to a valve for controlling the supply of solvent with a plural
component mixture and to dispense the solvent to flush the components from
the dispenser as called for in independent claims 12 and 22.
DECISION
The decision of the Examiner to reject claims 1, 2, 4-11, 35-40, 42, 43
and 45-52 is affirmed. The decision of the Examiner to reject claims 12-27
and 29 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) (2007).

AFFIRMED-IN-PART

Klh

BARNES & THORNBURG LLP
11 SOUTH MERIDIAN
INDIANAPOLIS, IN 46204

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BAHR, Administrative Patent Judge, concurring-in-part and dissenting-in-
part,
I join in the decision to affirm the Examiner’s decision to reject claims
1, 2, 4-11, 35-40, 42, 43 and 45-52. I do not, however, join in the decision
to reverse the Examiner’s decision to reject claims 12-27 and 29. The basis
articulated in the opinion of the majority in support of the decision to reverse
the Examiner’s rejection of claims 12-27 and 29 is that the prior art does not
teach the manner of using the apparatus recited in the claims. “It is well
settled that the recitation of a new intended use for an old product does not
make a claim to that old product patentable.” In re Schreiber, 128 F.3d
1473, 1477 (Fed. Cir. 1997). In this case, Appellants have not alleged, much
less shown, that the valve as taught by Kott, incorporated into the apparatus
of the Sandison-Brown combination as proposed by the Examiner, would
not be capable of the recited use, i.e., controlling the supply of a solvent
from the container with the plural component mixture to effect blending.
Thus, I do not agree with the majority that the rejection of claims 12-27 and
29 should be reversed.