Ex Parte Riney et al

Patent Trial and Appeal Board

Mar 11, 2013

10907136 (P.T.A.B. Mar. 11, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte JOHN M. RINEY, DUANE J. FISHER, and
RAYMOND J. SLATTERY III
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Appeal 2010-007085
Application 10/907,136
Technology Center 3700
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Before: JENNIFER D. BAHR, PHILLIP J. KAUFFMAN, and
CHARLES N. GREENHUT, Administrative Patent Judges.

GREENHUT, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2010-007085
Application 10/907,136
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STATEMENT OF CASE
Appellants appeal under 35 U.S.C. § 134 from a rejection of claims 1-
3 and 17-19. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

The claims are directed to an applicator for liquid hot melt adhesive.
Claim 1, reproduced below, is illustrative of the claimed subject matter:
1. An apparatus for dispensing a liquid hot melt adhesive
having at least one activation-sensitive property, the apparatus
comprising:
a delivery system configured to supply a stream of the
liquid hot melt adhesive in a first fluid state in which the liquid
hot melt adhesive has a first viscosity;
an applicator receiving the stream of the liquid hot melt
adhesive in the first fluid state from said delivery system, said
applicator adapted to modify the activation-sensitive property
of the liquid hot melt adhesive for converting the liquid hot
melt adhesive in the stream to a second fluid state in which the
liquid hot melt adhesive has a second viscosity higher than the
first viscosity, and said applicator including a flow passage for
the liquid hot melt adhesive, a static mixer disposed in said
flow passage such that the liquid hot melt adhesive is blended
before the liquid hot melt adhesive is converted to the second
fluid state, and a pressure-elevating element; and
a nozzle coupled with the applicator for receiving the
stream of the liquid hot melt adhesive from said applicator, said
nozzle including a dispensing orifice from which the liquid hot
melt adhesive is dispensed while in the second fluid state,
wherein said pressure-elevating element is located in said
flow passage between said static mixer and said nozzle.

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REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Buckles
Treece
US 5,542,578
US 5,968,429
Aug. 6, 1996
Oct. 19, 1999

REJECTION
Claims 1-3 and 17-19 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Buckles in view of Treece. Ans. 3.

OPINION
Appellants argue claims 1-3 and 17-19 as a group. App. Br. 3-9. We
select claim 1 as representative. See 37 C.F.R. § 41.37(c)(1)(vii) (2011).
The Examiner made the following findings that Appellants do not
dispute: Buckles discloses the claimed invention except for the pressure
elevating element and the pressure elevating element being located in the
flow passage between the static mixer and the nozzle. Ans. 3-4. Treece
discloses a gear pump 32, interpreted by the Examiner as the recited
“pressure elevating element.” Ans. 4, citing Treece fig.
Appellants argue that the combination of Buckles and Treece fails to
disclose the “pressure elevating element is located in said flow passage
between said static mixer and said nozzle.” App. Br. 7-9; Reply Br. 5-6.
Appellants’ argument is based on the incorrect allegation that the
combination of Buckles and Treece would necessarily result in the
replacement of pumps 24 and 26 of Buckles. Id. However, the Examiner
never takes such a position. Rather, the pressure elevating element 32 of
Treece would be an obvious additon to the dispensing gun 32 of Buckles.
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Ans. 5. The Examiner never presented the combination as a replacement of
pumps 24/26 of Buckles with the pump 32 of Treece. The pump as taught
by Treece is located between a pressure elevating and mixing screw 12, in
section 28, and a dispensing orifice 48. See fig. ; col. 6, ll. 38-43; col. 7, ll.
60-65; col. 8, ll. 36-40. The Examiner found that the pressure loss in
Buckles would be greatest after the fluid passed through the baffles 198 and
that one of ordinary skill in the art would want to increase the pressure
before the fluid exits the nozzle 40. Ans. 5-6. Thus, the Examiner
concluded that, in light of the combined teachings of Buckles and Treece, it
would have been obvious to incorporate the pressure elevating element,
pump 32 of Treece, into Buckes at the location recited.
Appellants argue that the Examiner has failed to provide an objective
reason to combine Buckles and Treece. App. Br. 5. Appellants allege that
because pump 32 of Treece is used to provide extra fluid pressure at the
nozzle to force the pumped fluid through narrow channels 34 and into the
closed molding devices 4, 6, one of ordinary skill in the art would not look
to use Treece’s pump between the baffles and nozzle of Buckles. App. Br.
6; Reply Br. 4. This argument is not persuasive as the Examiner has
provided a valid, objective rationale for the combination. Namely, the
Examiner reasons that in the dispensing gun of Buckles, as the fluid is mixed
by the static mixers, or baffles 198, the fluid pressure will drop as a result of
drag. Ans. 4-5. Treece demonstrates that it was known in the art that gear
pump 32 could provide pressure for both suction and propulsion. See col. 7,
ll. 60-62; col. 8, ll. 36-40. The Examiner concluded that one of ordinary
skill in the art would look to include the pressure elevating pump 32 of
Treece, in order “to enable dispensing at an increased flow rate” required by
a drop in pressure from the baffles. Ans. 4. While Buckles may not
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acknowledge pressure drop as a problem or express the desirability of
increasing the flow rate (Reply Br. 4) a conclusion of obviousness does not
require the prior art to state an express motivation to modify the references.
Thus, the Examiner has provided an objective reason to incorporate Treece’s
gear pump into buckles in the location recited in claim 1.
Further, Appellants argue that one seeking to boost pressure in
Buckles would have modified Buckles’ gun to use an extruder screw as in
Treece and that would change the principle operation of Buckles. App. Br.
6-7. This argument is unpersuasive. First, the Examiner never proposes to
replace the baffles of Buckles with the extruder screw of Treece. Thus,
Appellants are refuting their own misrepresentation of the Examiner’s
position. Second, the fact that some other unclaimed subject matter may be
obvious in view of the prior art teachings does not demonstrate that the
claimed subject matter would not have been obvious in view of those same
teachings. Inclusion of the pump 32 of Treece in the applicator of Buckles
would not change the principle operation of the device, which involves
dispensing adhesive materials. See Buckles col. 1, ll. 11-12.
Appellants argue that the addition of the pressure elevating element
taught by Treece in the dispensing gun of Buckles would result in a weight
increase which is contradictory to a stated objective of Buckles. Ans. 8.
Gear pumps come in a variety of sizes and weights. Buckles does not
provide any specific limitation as to the length of nozzle 40 so as to be able
to conclude that the addition of a gear pump between the baffle 198 and
nozzle would alter the weight distribution of Buckles’ dispensing gun.
Appellants have failed to provide adequate evidence that the addition of a
pressure elevating element as taught by Treece would in fact increase the
weight at the forward end of the dispensing gun of Buckles so as to render
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the stated objective defeated. At most, this is a design tradeoff which does
not necessarily obviate any or all reasons to combine the prior art teachings.
See Winner Int'l Royalty Corp. v. Wang, 202 F.3d 1340, 1349 n. 8 (Fed. Cir.
2000).
Appellants lastly argue that the pressure elevating element of Treece
requires that there be a 200% increase in pressure of the fluid, which the
Buckles device would reasonably not require. Reply Br. 5. However, the
test for obviousness is not whether the features of one reference may be
bodily incorporated into another reference. In re Bozek, 416 F.2d 1385,
1390 (CCPA 1969); In re Mapelsden, 329 F.2d 321, 322 (CCPA 1964).
Rather, we look to see whether the claimed subject matter would have been
obvious in light of the combined teachings of the references. In re Wood,
599 F.2d 1032, 1037 (CCPA 1979).

DECISION
The Examiner’s rejection of claims 1-3 and 17-19 is affirmed.

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

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