Ex Parte Swoboda et al

Patent Trial and Appeal Board

Apr 25, 2017

13880863 (P.T.A.B. Apr. 25, 2017)

United States Patent and Trademark Office
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.
13/880,863 04/22/2013 Werner Swoboda OST-131016 5510
22876 7590 04/27/2017
FACTOR INTELLECTUAL PROPERTY LAW GROUP, LTD.
1327 W. WASHINGTON BLVD.
SUITE 5G/H
CHICAGO, IL 60607
EXAMINER
ZHAO, XIAO SI
ART UNIT PAPER NUMBER
1712
NOTIFICATION DATE DELIVERY MODE
04/27/2017 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
jmerritt@factoriplg.com
ysolis @factoriplg.com
c schroeder @ factoriplg .com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte WERNER SWOBODA and JAN REICHLER
Appeal 2016-002004
Application 13/880,8631
Technology Center 1700
Before LINDA M. GAUDETTE, CHRISTOPHER L. OGDEN, and
JULIA HEANEY, Administrative Patent Judges.
OGDEN, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
decision finally rejecting claims 1 and 3—72 in the above-identified
application.3 We have jurisdiction pursuant to 35 U.S.C. § 6(b).
We REVERSE.
1 Appellants identify Eisenmann AG as the real party in interest. Appeal Br.
3, May 8, 2015.
2 Claims 8—14 have been withdrawn from consideration. Appeal Br. 5.
3 Final Office Action, Sept. 9, 2014 [hereinafter Action]; Examiner’s
Answer, Sept. 24, 2015 [hereinafter Answer],
Appeal 2016-002004
Application 13/880,863
BACKGROUND
Appellants’ invention “relates to a method for electrostatically coating
objects, in which an electrical field is generated between an application
device and an object to be coated.” Spec. 1:5—7. According to Appellants,
in the prior art, painting devices and paint are charged, while other
components, including booth walls and the object to be coated, are
connected to earth potential painting devices. Id. at 1:21—2:12. However,
Appellants claim that their invention
is based on the finding that a directed electrostatic application of
coating material can still be reliably performed even if between
the application device and the object an electrical field is built up
which has a field strength gradient from earth potential to a pos­
itive high-voltage potential in the direction of the application de­
vice towards the object.
Id. at 3:9-15.
Sole independent claim 1 is representative:
1. A method for electrostatically coating objects, comprising
the steps of:
generating an electrical field between an application
device and an object to be coated, wherein
for generating the electrical field at least one corona
electrode associated with the application device is connected to
earth potential, and at least one counter electrode associated
with the object is connected at least at times-to [sic] a positive
potential and further wherein further components which may be
reached by paint particles are connected to earth potential.
Appeal Br. 16 (emphasis added to highlight key limitation).
2
Appeal 2016-002004
Application 13/880,863
The Examiner maintains the following ground of rejection: claims 1
and 3—7 are rejected under 35 U.S.C. § 103(a) as being unpatentable over
Smead,4 Napadow,5 and Reilly.6 See Action 3—5.7
DISCUSSION
Figure 5 of Smead is reproduced below:
4 Smead, US 4,343,828 (issued Aug. 10, 1982).
5 Napadow, US 5,527,564 (issued June 18, 1996).
6 Reilly, US 3,680,779 (issued Aug. 1, 1972).
7 The Examiner has withdrawn a rejection of claims 1, 2 (now canceled), and
4 under 35 U.S.C. § 112, second paragraph. Answer 2; see also Action 2—3.
3
Appeal 2016-002004
Application 13/880,863
Figure 5 depicts an electrical schematic for the preferred embodiment.
Smead 2:34—35. This embodiment includes
a mechanical spraying portion 11 and an electrical charging por­
tion 12. In the mechanical spraying portion 11, a gun 13 serves
to atomize and project a coating material, such as paint or pow­
der, from a pressurized supply source 14 and form a fine stream
of particles of this material for coating a workpiece 15 positioned
a spaced distance from the gun 13. The electrical charging por­
tion 12 of the present invention includes an electrode 16 having
a tip 18 connected to the gun 13 such that the tip 18 is spaced a
small distance from an outlet end 20 of the gun 13. The electrode
16 is charged by a predetermined voltage waveform established
by a high voltage waveform generator 21 ... . Maintaining the
electrode 16 at a high voltage causes the particles of paint or
powder to be charged.
Id. at 2:51-67.
The Examiner finds that “Smead teaches an electrostatic paint coating
method by generating an electric field between a grounded coating nozzle 24
[part of outlet end 20, not shown in Fig. 5] and a positively charged
workpiece, wherein the charge is applied either by a corona electrode 16 or a
varied voltage applied directly on the workpiece.” Action 3^4 (emphasis
added). In the Answer, the Examiner also finds that “claim 1 only requires
that the electrode is connected to earth potential. It is clearly shown in Fig. 5
of Smead that the electrode is connected to earth potential.” Answer 4.
Appellants argue, and we agree, that Figure 5 of Smead does not
disclose, teach, or suggest that corona electrode 16 is “connected to earth
potential” as required by claim 1. We interpret claims according to “the
broadest reasonable meaning of the words in their ordinary usage as they
would be understood by one of ordinary skill in the art, taking into account
whatever enlightenment by way of definitions or otherwise that may be
4
Appeal 2016-002004
Application 13/880,863
afforded by the written description contained in the applicant's
specification.” In re Morris, 111 F.3d 1048, 1054 (Fed. Cir. 1997). The
broadest reasonable interpretation of the phrase “corona electrode . . .
connected to earth potential” is that the corona electrode is grounded. See
Grounded, Inst, of Elec, and Elecs. Eng’g, Inc., IEEE 100: The
Authoritative Dictionary of IEEE Standard Terms (7th ed. 2000) (“(2). . .
(electrical systems) Connected to earth or to some extended conducting
body that serves instead of the earth. . . .”). This is supported by Appellants’
Specification, which states that the invention operates based on establishing
an electric field between the application device and the object to be painted,
in which there is “a field strength gradient from earth potential to a positive
high-voltage potential in the direction of the application device towards the
object.” See Spec. 3.
In light of this interpretation of claim 1, corona electrode 16 of Smead
is not “connected to earth potential” because it is not grounded. Therefore,
the Examiner erred in the rejection. This error is not remedied by the
Examiner’s findings with regard to either Napadow or Reilly.
For the above reasons, the Examiner reversibly erred in rejecting
claim 1. Because the rejection of dependent claims 3—7 relies on this error,
we also determine that the Examiner reversibly erred in rejecting claims 3—7.
DECISION
The Examiner’s decision is reversed.
REVERSED
5