Ex parte Rosenberg

Board of Patent Appeals and Interferences

Sep 10, 1998

08375094 (B.P.A.I. Sep. 10, 1998)

Application for patent filed January 19, 1995. According to appellant,1
this application is a continuation-in-part of application 08/138,285, filed
October 20, 1993, now U.S. Patent No. 5,390,850, issued February 21, 1995.
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered
today (1) was not written for publication in a law
journal and (2) is not binding precedent of the
Board.
Paper No. 10
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte PERETZ ROSENBERG
____________
Appeal No. 97-0690
Application No. 08/375,0941
____________
ON BRIEF
____________
Before MEISTER, FRANKFORT, and NASE, Administrative Patent
Judges.
FRANKFORT, Administrative Patent Judge.
DECISION ON APPEAL
According to appellant’s Notice of Appeal (Paper No. 7,
filed May 16, 1996), this appeal is from the examiner's final
rejection of claims 1 through 20. We note, however, that in
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Application No. 08/375,094
2
the final rejection (Paper No. 4, mailed February 16, 1996)
the
examiner only rejected claims 1 through 10 and 15 through 20
under 35 U.S.C. § 112, second paragraph, as being indefinite,
and claims 1, 9 and 11 under 35 U.S.C. § 102(b) as being
anticipated by Lockwood. Claims 12 through 14, the only other
claims pending in the application, were not rejected by the
examiner, but were objected to and indicated to be allowable
if rewritten in independent form. Thus, only claims 1 through
11 and 15 through 20 are properly before us on appeal, with
the appeal as to claims 12 through 14 being dismissed.
Appellant’s invention relates to a pulsating spraying
device. Claim 1 is representative of the subject matter on
appeal and a copy of that claim, as it appears in the Appendix
to appellant’s brief, is attached to this decision.
The sole prior art reference of record relied upon by the
examiner is:
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Lockwood 3,348,520 Oct. 24, 1967
Claims 1 through 10 and 15 through 20 stand rejected under
35 U.S.C. § 112, second paragraph, as being indefinite for
failing to
particularly point out and distinctly claim that which appellant
regard as his invention.
Claims 1, 9 and 11 stand rejected under 35 U.S.C. § 102(b)
as being anticipated by Lockwood.
Rather than reiterate the examiner's full statement of the
above-noted rejections and the conflicting viewpoints advanced
by the examiner and appellant regarding those rejections, we
make reference to the examiner's answer (Paper No. 9, mailed
August 22, 1996) for the examiner's reasoning in support of the
rejections, and to appellant’s brief (Paper No. 8, filed July
15, 1996) for appellant’s arguments thereagainst.
OPINION
Appeal No. 97-0690
Application No. 08/375,094
4
In reaching our decision in this appeal, we have given
careful consideration to appellant’s specification and claims,
to the applied prior art references, and to the respective
positions articulated by appellant and the examiner. As a
consequence of our review, we have made the determinations which
follow.
We turn first to the examiner's rejection of appealed
claims
1 through 10 and 15 through 20 under 35 U.S.C. § 112, second
paragraph. After reviewing appellant’s specification and
claims, and appellant’s arguments on pages 6-8 of the brief, it
is our opinion that the scope and content of the subject matter
embraced
by appellant’s independent claims 1 and 15 on appeal are
reasonably clear and fulfill the requirement of 35 U.S.C. § 112,
second paragraph, that they provide those who would endeavor, in
future enterprise, to approach the area circumscribed by the
claims, with the adequate notice demanded by due process of law,
Appeal No. 97-0690
Application No. 08/375,094
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so that they may more readily and accurately determine the
boundaries of protection involved and evaluate the possibility
of infringement and dominance. See, In re Hammack, 427 F.2d
1378, 166 USPQ 204 (CCPA 1970). Like appellant, we view the
examiner’s criticism of the language in the last clause of
claim 1 and the penultimate clause of claim 15, in reality, to
be an issue of claim breadth and not an issue of indefiniteness
of the claim language. Thus, contrary to the examiner’s
position, we find that independent claims 1 and 15 on appeal do
particularly point out and distinctly claim that which appellant
regards as his invention and are definite within the meaning of
the Statute. Accordingly, we will not sustain the examiner's
rejection of appellant’s claims 1
through 10 and 15 through 20 under 35 U.S.C. § 112, second
paragraph.
We next look to the examiner's rejection of claims 1, 9
and 11 under 35 U.S.C. § 102(b) as being anticipated by
Lockwood.
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Application No. 08/375,094
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Like the examiner, we broadly view the applicator of Lockwood
as
a pulsating spraying device for applying a liquid material
(e.g., hot melt adhesive) to a work surface (19). See
particularly, column 1, lines 25-34, of Lockwood. The device
of Lockwood includes a housing (10) having an inlet (16) for a
liquid material under pressure, and a plurality of discharge
openings (28) for discharging the liquid material; an inlet
chamber (12) which communicates with the housing inlet; a
plurality of pulsating control chambers (23), each having an
inlet passageway and an outlet passageway as set forth in
appellant’s claim 1; and a plurality of “oscillating” members
(e.g., 32, 32a), one located in each of the pulsating control
chambers, “rapidly oscillated by the flow of liquid into the
respective pulsating control chamber via its inlet passageway,
to drive the liquid via its outlet passageway out of the
respective discharge opening in the form of pulses,” as set
forth in appellant’s claim 1 on appeal.
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In contrast to appellant’s position on pages 9 and 10 of
the brief, we view the language of claim 1 on appeal regarding
“oscillating members,” which are rapidly oscillated by the
flow of liquid material, as being readable on and encompassing
the valve head members (32, 32a) of Lockwood when the device
of
Lockwood is used to apply short dots of liquid material on the
moving work surface (19) “at high cycling rate” (Lockwood,
col. 1, lines 40-44). In this regard, we consider that the
terms “oscillating” and “oscillated” in appellant’s claim 1
are broad enough to encompass the type of back and forth
motion experienced by the valve head members (32, 32a) of
Lockwood when they are reciprocated at high cycling rates.
Webster’s New World Dictionary (Prentice Hall Press, 1986)
defines “oscillate” as “1. to swing or move regularly back
and forth” and defines “reciprocate” as “2. to move
alternately back and forth.” Since both of these terms appear
to mean the same thing, we view them as being interchangeable
in the present fact situation. Thus, when the applicator of
Lockwood is operated to apply short dots of liquid material,
it is broadly a pulsating spraying device having a plurality
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Application No. 08/375,094
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of pulsating control chambers, with an
oscillating/reciprocating member in each of said chambers
which
is rapidly oscillated by the flow of liquid into the
respective pulsating control chambers to drive the liquid out
of the device in the form of pulses, as generally required in
appellant’s claim 1 on appeal. Accordingly, in view of this
understanding of the operation of the device in Lockwood, we
find appellant’s
arguments as set forth in the brief to be unpersuasive and we
will therefore sustain the examiner’s rejection of claim 1
under 35 U.S.C. § 102(b).
As for the examiner’s rejection of claims 9 and 11 under
35 U.S.C. § 102(b), we note that page 5 of appellant’s brief
indi-cates that “claims 1, 9 and 11 are grouped together.”
Thus, we conclude that claims 9 and 11 on appeal fall with
claim 1.
To summarize our decision, we note that the examiner's
rejection of claims 1 through 10 and 15 through 20 under 35
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U.S.C. § 112, second paragraph, has not been sustained; but
that the examiner's rejection of appealed claims 1, 9 and 11
under 35 U.S.C. § 102(b) relying on Lockwood has been
sustained.
The decision of the examiner is, accordingly, affirmed-
in-part.
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
AFFIRMED-IN-PART
Appeal No. 97-0690
Application No. 08/375,094
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JAMES M. MEISTER )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
CHARLES E. FRANKFORT ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
JEFFREY V. NASE )
Administrative Patent Judge )
Appeal No. 97-0690
Application No. 08/375,094
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Benjamin J. Barish
C/O Robert Sheinbein
2940 Birchtree Lane
Silver Spring, MD 20906