Ex Parte Longo

Board of Patent Appeals and Interferences

May 24, 2012

11328537 (B.P.A.I. May. 24, 2012)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
11/328,537 01/10/2006 William J. Longo II MAEE 200153US01 6715
72818 7590 05/24/2012
FAY SHARPE LLP/HENKEL
1228 Euclid Avenue, 5th Floor
The Halle Building
Cleveland, OH 44115-1843
EXAMINER
CARTAGENA, MELVIN A
ART UNIT PAPER NUMBER
3754
MAIL DATE DELIVERY MODE
05/24/2012 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte WILLIAM J. LONGO, II
____________________

Appeal 2009-014183
Application 11/328,537
Technology Center 3700
____________________

Before: JENNIFER D. BAHR, LINDA E. HORNER, and BRETT C.
MARTIN, Administrative Patent Judges.

MARTIN, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2009-014183
Application 11/328,537

2
STATEMENT OF CASE
Appellant seeks our review under 35 U.S.C. § 134 from the
Examiner’s final rejection of claims 7, 10, 12, 13, and 16-29. We have
jurisdiction under 35 U.S.C. § 6(b) (2002).
We affirm in part.

THE INVENTION
Appellant claims a dispensing cartridge for caulking compound,
sealants, adhesives and other similar coating materials. (Spec. 1 [0001]).
Claim 12, reproduced below, is illustrative of the claimed subject matter:
12. A cartridge of material comprising:
a tubular container having a diameter and a
circumference;
a flowable material disposed in the tubular container;
an end plate disposed at a first end of the tubular
container, the end plate having an opening such that the
flowable material can pass through the opening;
a nozzle extending from the end plate, the nozzle being in
communication with the opening;
a plunger disposed in the container;
a plurality of mechanical stops formed in the tubular
container between a second end of the tubular container and the
plunger, the mechanical stops being spaced around the
circumference of the tubular container so that a first and a
second of the plurality of mechanical stops are located on a first
side of the diameter and a third of the plurality of mechanical
stops is located on a second side of the diameter, the
mechanical stops also being axially spaced from a second end
of the tubular container wherein each mechanical stop
comprises a barb that is punched out of the tubular container.

Appeal 2009-014183
Application 11/328,537

3
THE REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
van Manen US 4,077,550 Mar. 7, 1978

THE REJECTIONS
The Examiner made the following rejection:
Claims 7, 10, 12, 13, and 16-29 stand rejected under 35 U.S.C.
§ 102(b) as anticipated by van Manen.

ISSUES
Appellant raises several issues on appeal, but the main issue before us
is whether the Examiner has applied an unduly broad and, therefore,
unreasonable interpretation of the term “punch” as used in various forms
throughout the claims.

ANALYSIS
Rejection of claim 7 as anticipated by van Manen
Appellant does not assert any specific argument, separate from those
directed to claim 7, as to why the rejection of claim 10 is in error. Thus, in
accordance with 37 C.F.R. § 41.37(c)(1)(vii), claim 10 stands or falls with
claim 7.
Appellant contends that several elements are missing from the
teaching within the four corners of van Manen in relation to claim 7. Br. 9-
11. First, Appellant states that van Manen does not teach “punching an
opening in the tubular container” as claimed in claim 7 via van Manen’s
Appeal 2009-014183
Application 11/328,537

4
teaching of rapid cutting to form catches 17. Br. 9. The thrust of this
argument is that the broadest reasonable interpretation of “punching” does
not encompass van Manen’s cutting. It is a necessary requirement of the
broadest reasonable construction rule that the construction must be
reasonable in light of the specification. In re Suitco Surface, Inc., 603 F.3d
1255, 1260 (Fed. Cir. 2010); accord In re Morris, 127 F.3d 1048, 1054 (Fed.
Cir. 1997) (“[I]t would be unreasonable for the PTO to ignore any
interpretive guidance afforded by the applicant’s written description.”).
Appellant, however, points to no specific wording in the specification that
shows a precise meaning given to the term “punching” or to any related
terms such as “punch” that would amount to interpretive guidance.
Appellant also fails to provide support for this argument by pointing to any
type of general purpose or technical dictionary as interpretive guidance that
punching would not encompass the cutting performed in van Manen, nor
does Appellant state that this is a term of art known to those of ordinary skill
to exclude van Manen’s cutting. Appellant merely provides attorney
argument against the Examiner’s interpretation with nothing further.
A general purpose dictionary definition of punch in the pertinent
context is as follows1:
noun
1. a tool or machine for perforating or stamping
materials, driving nails, etc.
2. the solid upper die of a punch press, used with a
hollow die to blank out shaped pieces of sheet metal or the like.
verb (used with object)
3. to cut, stamp, pierce, perforate, form, or drive with a
tool or machine that punches.

1 Dictionary.com definition of punch,
http://dictionary.reference.com/browse/punch (last visited May 18, 2012).
Appeal 2009-014183
Application 11/328,537

5
verb (used without object)
4. to work at or on something with or as if with a
mechanical punch.

We do not use these definitions to formulate a specific construction of the
term “punch” at this time, but only reference these definitions to show that,
contrary to Appellant’s arguments, the Examiner has made a reasonable
interpretation of the term by including van Manen’s cutting; an
interpretation that, on the record before us, is essentially unrebutted. While
Appellant is certainly free to be his own lexicographer and define “punch”
more specifically and/or narrowly, in this particular instance we do not find,
nor has Appellant argued that “punch” is narrowly defined. Buttressed by
the above dictionary definition and absent any direction from Appellant as to
why punch should be more narrowly defined, the Examiner did not err in
construing “punch” in a manner that encompasses the type of cutting taught
by van Manen, discussed in more detail below.
Next, Appellant appears to misapprehend the teaching of van Manen
with respect to the deformation of the cylinder wall to form catches 17.
Appellant states that “[i]n van Manen, the catches 17 are formed due to
insertion of the plunger 15 as opposed to punching an opening to create a
mechanical stop.” Br. 10. Appellant then goes on to describe a preferred
embodiment where “the plunger 15 slides past the catches 17 into the
cylinder 11 before the cuts 16 have been made.” Id.
Although Applicant properly describes van Manen’s preferred
embodiment, this does not comprise the full teaching of van Manen. The
Examiner correctly notes that van Manen also “discloses forming the stops
by a rapidly actuatable tool after the plunger has been seated in place within
Appeal 2009-014183
Application 11/328,537

6
the cylinder, see column 3, lines 19 and 20.” Ans. 3 (emphasis added); see
also col. 3, ll. 40-44 (disclosing a “rapidly actuatable tool for making cuts”).
As taught by van Manen (col. 2, l. 38), plunger 15 can cause an interference
fit with the cylinder. If no cuts are made before plunger insertion, then the
cuts described and noted by the Examiner would essentially be relief cuts for
relieving stress built up due to the interference fit of the plunger within the
cylinder. Consequently, the catches 17 would be deformed at the same time
as the cut, not due to insertion of the plunger as stated by Appellant. Br. 11.
Appellant’s argument with respect to this point relies solely upon van
Manen’s preferred embodiment, but fails to address the Examiner’s
reference to the alternative embodiment, which does not implicate the
problems pointed to by Appellant because the plunger is in place before the
cut. Accordingly, we find that the Examiner has properly rejected claim 7
and do not find Appellant’s arguments as to this rejection persuasive. The
rejection of claim 7, and of claim 10, which falls with claim 7, is affirmed.
Rejection of claim 24 as anticipated by van Manen
Appellant’s arguments with respect to claim 24 suffer from the same
defects as noted above with respect to claim 7. While van Manen does
teach, in the preferred embodiment, that the catches 17 are formed due to
insertion of the plunger, van Manen also teaches that the cuts may be made
after plunger insertion as previously discussed. Also, we determined supra
the Examiner’s construction of punching as encompassing van Manen’s
cutting not to be in error and will not address that point further.
As with “punching,” Appellant has provided no support other than
attorney argument that van Manen’s rapidly actuatable cutting tool cannot be
considered a “punch tool.” Given the definitions above and our findings
Appeal 2009-014183
Application 11/328,537

7
with respect to the alternative embodiment of van Manen in which the
rapidly actuatable tool deforms the cylinder wall to form catches 17 as it
cuts, the Examiner’s determination that van Manen’s cutting step satisfies
the punching step as claimed in claim 24 is grounded on a broad, but
reasonable interpretation of the terms “punching” and “punch tool.” See
Ans. 4. We affirm the rejection of claim 24 and of claim 25, for which
Appellant has not asserted any separate argument, and which thus falls with
claim 24.
Rejection of claim 12 as anticipated by van Manen
Appellant does not assert any specific argument, separate from those
directed to claim 12, as to why the rejection of claims 13, 16-18, and 20-23,
is in error. Thus, in accordance with 37 C.F.R. § 41.37(c)(1)(vii), these
claims stand or fall with claim 12.
The only additional point set forth by Appellant in regard to claim 12
not already addressed above with respect to other claims is that van Manen’s
catches cannot be considered barbs. Again, similar to Appellant’s argument
with respect to the various forms of the term “punch” mentioned above,
Appellant has provided no evidence that “barb” has any special meaning that
would exclude van Manen’s catches 17. Absent anything more than the
attorney argument presented, we find that van Manen’s teaching of catches
17 is sufficient to anticipate Appellant’s recitation of barbs. We therefore
affirm the rejection of claim 12 and of claims 13, 16-18, and 20-23, which
fall with claim 12.
Rejection of claim 19 as anticipated by van Manen
In regard to claim 19, we agree that the Examiner has not provided
sufficient explanation as to how van Manen teaches the recited first and
Appeal 2009-014183
Application 11/328,537

8
second planar walls to support an anticipation rejection. The Examiner does
not address claim 19 in the final rejection, and in the Answer merely states
that “multiple planar walls are formed with a common edge between the
walls.” Ans. 4 (emphasis added). While we do not agree that the
configuration shown in van Manen’s Fig. 5 could not result in such first and
second planar walls as stated by Appellant (Br. 13), the Examiner does not
point to disclosure in van Manen, or provide cogent technical reasoning, to
support a finding that the walls necessarily are formed as such.2 While it
does seem plausible that such a cut could cause the type of claimed
deformation, van Manen does not show in the drawings how such a cut
would deform nor has the Examiner pointed to any specific disclosure to
state how catch 17 would deform in regard to such an angled cut 16 as
shown in Fig. 6. Accordingly, any attempt to state exactly how such a cut
would deform without an explicit showing or teaching by van Manen is
mere speculation. Thus, the Examiner has not established that van Manen
anticipates the subject matter of claim 19. We therefore reverse the
anticipation rejection of claim 19.

2 “It is well settled that a prior art reference may anticipate when the claim
limitations not expressly found in that reference are nonetheless inherent in
it. Under the principles of inherency, if the prior art necessarily functions in
accordance with, or includes, the claimed limitations, it anticipates.” In re
Cruciferous Sprout Litig., 301 F.3d 1343, 1349 (Fed. Cir. 2002) (citations
and internal quotation marks omitted). “Inherency, however, may not be
established by probabilities or possibilities. The mere fact that a certain
thing may result from a given set of circumstances is not sufficient.” In re
Robertson, 169 F.3d 743, 745 (Fed. Cir. 1999) (citations and internal
quotation marks omitted).
Appeal 2009-014183
Application 11/328,537

9
Rejection of claim 26 as anticipated by van Manen
Again, with respect to claim 26, we note Appellant’s misapprehension
of van Manen. Appellant states that “van Manen fails to disclose within the
four corners of the document deforming the tubular container after inserting
the plunger.” Br. 13. As explained above, the Examiner has identified
specifically where van Manen teaches cutting and deformation after the
plunger is inserted. We further note that van Manen teaches: “[t]his can be
done by the manufacturer of caulker 10 before it is filled with contents or it
can be done after caulker 10 is filled and plunger 15 is seated in place.” van
Manen, col. 3, ll. 48-51. Accordingly, we affirm the rejection of claim 26.
Rejection of claim 27 as anticipated by van Manen
Appellant adds no additional argument with respect to claim 27 not
already addressed above. We therefore affirm the rejection of claim 27 for
the same reasons stated above.
Rejection of claim 28 as anticipated by van Manen
Because claim 28 suffers from the same defective finding of fact with
respect to claim 19, we reverse the rejection with respect to claim 28 for the
same reasons.
Rejection of claim 29 as anticipated by van Manen
With respect to claim 29, Appellant argues that van Manen’s catches
“draw toward a chord orientation as opposed to extending radially inwardly
from an inner surface of the tubular container.” Br. 15. We find this
argument unpersuasive and contrary to the teaching of van Manen. At least
Fig. 2 (of which Fig. 3 is a cross-section) and Fig. 7 each clearly shows the
disclosed chord orientation. Each of catches 17 is clearly shown as being
radially inward of the main portion of the rest of the wall of cylinder 11. We
Appeal 2009-014183
Application 11/328,537

10
do not comprehend how this chord orientation is “opposed” to the claim
language at issue in claim 29; rather it is directly within the scope of the
claim language. Appellant then goes on to restate the previously noted
misunderstanding of van Manen with respect to when the plunger is inserted
relative to the cutting. Because van Manen teaches cutting both before and
after insertion of the plunger, this argument has no more merit with respect
to claim 29 than it did with respect to earlier claims. Accordingly, we affirm
the rejection of claim 29.
Additional Arguments
Appellant asserts that the Examiner conceded various arguments
because he did not address them in his Answer. Rep. 4. We find that the
Examiner sufficiently addressed each of these alleged concessions either in
the Answer itself or in the Final Rejection. We have addressed Appellant’s
point with respect to the “barb” limitations disclosed above with respect to
claim 12. Likewise, the record is clear that Appellant’s argument that van
Manen does not teach cutting after plunger insertion is incorrect. We have
also already addressed Appellant’s Reply Brief arguments with respect to
claims 27 and 29.

DECISION
For the above reasons, the Examiner’s rejection of claims 7, 10, 12,
13, 16-18, 20-27 and 29 is AFFIRMED. The Examiner’s rejection of claims
19 and 28 is REVERSED.
Appeal 2009-014183
Application 11/328,537

11

AFFIRMED-IN-PART

MP