Harald Gummlich et al.

Patent Trials and Appeals Board

Aug 12, 2019

13498250 - (D) (P.T.A.B. Aug. 12, 2019)

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.
13/498,250 03/26/2012 Harald Gummlich 66835-0142 9783
109973 7590 08/12/2019
Bejin Bieneman PLC
2000 Town Center
Suite 800
Southfield, MI 48075
EXAMINER
PENCE, JETHRO M
ART UNIT PAPER NUMBER
1717
NOTIFICATION DATE DELIVERY MODE
08/12/2019 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):
docket@b2iplaw.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte HARALD GUMMLICH and HANS-JURGEN NOLTE
____________

Appeal 2018-000566
Application 13/498,250
Technology Center 1700
____________

Before KAREN M. HASTINGS, MONTÉ T. SQUIRE, and
JANE E. INGLESE, Administrative Patent Judges.

INGLESE, Administrative Patent Judge.

DECISION ON APPEAL
Appellants1 request our review under 35 U.S.C. § 134(a) of the
Examiner’s decision to finally reject claims 23–33.2 We have jurisdiction
over this appeal under 35 U.S.C. § 6(b). We heard oral arguments from
Appellants’ representative on July 30, 2019.
We AFFIRM.

1 Appellants identify Duerr Systems GmbH as the real party in interest.
Appeal Brief filed April 20, 2017 (“App. Br.”), 3.
2 Claims 1 and 13–21 stand withdrawn from consideration. Final Office
Action entered November 18, 2016 (“Final Act.”), 1.
Appeal 2018-000566
Application 13/498,250

2
STATEMENT OF THE CASE
Appellants claim a system for coating workpieces in series. App. Br.
3–5. Claim 33, the sole pending independent claim, illustrates the subject
matter on appeal, and is reproduced below with emphasis added to highlight
contested subject matter:
33. A system for coating workpieces in series, comprising:
at least one rotary atomizer, the rotary atomizer including
a directing air ring and a spray body, the spray body spraying a
coating material away from the at least one rotary atomizer, the
directing air ring generating a directing air flow away from the
at least one rotary atomizer, the directing air flow overlapping
the spray body and shaping the sprayed coating material into a
spray jet wherein the air flow includes an inner under pressure
region and an outer under pressure region;
a first pressure sensor positioned external to the rotary
atomizer in the inner underpressure region and operative to
generate a first pressure signal, and,
a second pressure sensor positioned external to the rotary
atomizer in the outer underpressure region and operative to
generate a second pressure signal,
a measuring system configured to receive the first and
second pressure signals to compare the signals against
predetermined reference values, the predetermined reference
values corresponding to ideal operation, wherein the system for
coating workpieces signals a fault when the first and second
values do not correspond to the predetermined values.
App. Br. 14 (Claims Appendix) (emphasis added).
The Examiner maintains the following rejections in the Examiner’s
Answer entered August 21, 2017 (“Ans.”):
I. Claims 23–33 under 35 U.S.C. § 112, second paragraph as
being indefinite for failing to particularly point out and distinctly claim the
subject matter that the inventors regard as their invention;
Appeal 2018-000566
Application 13/498,250

3
II. Claim 23 under 35 U.S.C. § 112, fourth paragraph as being of
improper dependent form for failing to further limit the subject matter of the
claim from which it depends, or for failing to include all the limitations of
the claim from which it depends; and
II. Claims 24–33 under 35 U.S.C. § 102(b) as anticipated by Kay
(WO 02/41003 A2, published May 23, 2002).

DISCUSSION
Upon consideration of the evidence relied upon in this appeal and
each of Appellants’ contentions, we affirm the Examiner’s rejection of
claims 23–33 under 35 U.S.C. § 112, second paragraph, for the reasons set
forth in the Final Action, the Answer, and below, and reverse the Examiner’s
rejection of claims 24–33 under 35 U.S.C. § 102(b), for the reasons set forth
in the Appeal Brief and below. We sustain the Examiner’s rejection of
claim 23 under 35 U.S.C. § 112, fourth paragraph because Appellants do not
contest this rejection.
We review appealed rejections for reversible error based on the
arguments and evidence the appellants provide for each issue the appellants
identify. 37 C.F.R. § 41.37(c)(1)(iv); Ex parte Frye, 94 USPQ2d 1072,
1075 (BPAI 2010) (precedential) (cited with approval in In re Jung, 637
F.3d 1356, 1365 (Fed. Cir. 2011) (explaining that even if the examiner had
failed to make a prima facie case, “it has long been the Board’s practice to
require an applicant to identify the alleged error in the examiner’s
rejections”)).

Appeal 2018-000566
Application 13/498,250

4
Rejection I: claims 23–33 under 35 U.S.C. § 112, second paragraph
Although the Examiner rejects claims 23–33 as indefinite on
numerous grounds in the Final Action, the Examiner indicates in the Answer
that only certain aspects of the rejection under 35 U.S.C. § 112, second
paragraph remain applicable to the appealed claims. Compare Final Act. 3–
6, with Ans. 4–5. We accordingly limit our discussion to only those aspects
of the indefiniteness rejection set forth in the Answer. Ans. 4–5.
A. “inner under pressure region” and “outer under pressure region”
The Examiner determines that claim 33 is indefinite because,
according to the Examiner, it is unclear whether “inner under pressure
region” recited in claim 33 refers to a location of an inner-under region, or
an inner region that is under pressure, such as an inner under-pressure
region. Final Act. 3. Similarly, the Examiner determines that it is unclear
whether “outer under pressure region” recited in claim 33 refers to a location
of an outer-under region, or an outer region that is under pressure, such as an
outer under-pressure region. Id.
Appellants indicate in the Appeal Brief that they “believe[] the
amendments entered after final address the issues raised regarding the inner
and outer under pressure regions.” App. Br. 6. Although the Examiner
indicates in an Advisory Action dated February 28, 2017 that the
amendments presented in Appellant’s Response filed January 18, 2017 were
entered, the Examiner nonetheless maintains this aspect of the indefiniteness
rejection in the Answer. Ans. 4–5. Because Appellants do not contest the
maintained rejection in their Reply Brief (Reply Br. 2–7), we summarily
sustain this aspect of the Examiner’s rejection under 35 U.S.C. § 112,
second paragraph. 37 C.F.R. § 41.37(c)(1)(iv) (requiring that “arguments
Appeal 2018-000566
Application 13/498,250

5
shall explain why the examiner erred as to each ground of rejection . . . [and
that] any arguments or authorities not included in the appeal brief will be
refused consideration by the Board”).
B. “ideal operation”
The Examiner determines that the phrase “ideal operation” recited in
claim 33 is a relative phrase that is not defined by the claim, and the
Specification “does not provide a standard for ascertaining the requisite
degree.” Final Act. 4. The Examiner concludes that the phrase “ideal
operation,” therefore, renders claim 33 indefinite because “one of ordinary
skill in the art would not be reasonably apprised of the scope of the
invention.” Id.
Appellants argue that the phrase recited in claim 33 of “predetermined
reference values corresponding to ideal operation” is not “purely
subjective,” is “not a term of degree,” and their Specification “provides a
standard by which one of ordinary skill in the art can understand” this phrase
by “reasonably inform[ing] one of skill in the art that the ‘predetermined
reference values corresponding to ideal operation’ are those that would
avoid ‘undesired reproducibility faults and quality defects.’” App. Br. 6–9
(citing Spec. ¶¶ 3, 4, 7, 8, 9, 15, 18, 24); Reply Br. 4–5 (citing Spec. ¶¶ 2, 4,
5, 7, 8, 10, 16, 19). Appellants argue that the “[S]pecification describes the
intended operation of a paint atomizer during ideal operation” and “[s]ince
different atomizers may have different ‘ideal operation’ states the actual
numbers may be different.” App. Br. 8–9. Appellants argue that, for
example, “coating conditions for a large commercial vehicle having a primer
being applied may be different than compared to the final paint coat for a
bumper facia,” and, therefore, “their ideal operations may be different.” Id.
Appeal 2018-000566
Application 13/498,250

6
Appellants arguments are unpersuasive of reversible error in the
Examiner’s rejection, however, for reasons that follow.
During prosecution, a claim is properly rejected as indefinite if, after
applying the broadest reasonable interpretation, the metes and bounds of the
claimed subject matter are not clear. Ex parte McAward, Appeal 2015-
006416, 2017 WL 3669566, at *5 (PTAB Aug. 25, 2017) (precedential)
(citing In re Packard, 751 F.3d 1307, 1310 (Fed. Cir. 2014) (per curiam))
(stating “the statutory language of ‘particular[ity]’ and ‘distinct[ness]’
indicates, claims are required to be cast in clear—as opposed to ambiguous,
vague, indefinite—terms.”). Claim language reciting “words of degree” is
imprecise unless a definition or guideline is set forth in the Specification by
which the recited degree can be measured, such that the scope of the claim
can be ascertained. Seattle Box Co. v. Indus. Crating & Packing, Inc., 731
F.2d 818, 826 (Fed. Cir. 1984) (“Definiteness problems often arise when
words of degree are used in a claim . . . When a word of degree is used the
district court must determine whether the patent’s specification provides
some standard for measuring that degree.”).
Contrary to Appellants’ arguments, the phrase “predetermined
reference values corresponding to ideal operation” recited in claim 33
includes “words of degree” because “ideal” operation is a relative term that
is a matter of degree. We, therefore, look to the Specification disclosures
identified by Appellants to determine whether the Specification provides a
definition or guideline by which “ideal” operation can be measured. To this
end, the identified Specification disclosures explain that rotary atomizers
operate by forming a spray jet by means of a directing airflow (Spec. ¶¶ 2–5,
16, 18), and the identified disclosures in the Specification describe numerous
Appeal 2018-000566
Application 13/498,250

7
factors that can result in “undesired reproducibility faults and quality
defects” in coatings produced by rotary atomizers (Spec. ¶¶ 8–10). The
relied-upon disclosures in the Specification further state that the directing air
internal pressure, and the progression of the internal pressure of the directing
air flow as a function of the directing air quantity measured per unit of time,
are “an identification criterion for the flawless state of the directing air
nozzle arrangement of the atomizer” (Spec. ¶ 7), and indicate that “a high
and stable pressure difference between the pressure regions inside and
outside of the air directing airflow is a clear characteristic for a faultless
overall system of the rotary atomizer.” Spec. ¶¶ 15, 19, 24.
None of the Specification disclosures cited by Appellants, however,
provides a clear standard by which one of ordinary skill in the art could
gauge whether operation of a rotary atomizer is “ideal.” Although the
Specification indicates that “a high and stable pressure difference between
the pressure regions inside and outside of the air directing airflow is a clear
characteristic for a faultless overall system of the rotary atomizer” (Spec. ¶
15), “high” and “stable” pressure differences are relative terms, and
Appellants do not identify any disclosure in the Specification that defines
“high” and “stable” pressure. App. Br. 6–9. Furthermore, although
Appellants argue that “predetermined reference values corresponding to
ideal operation” are those that would avoid “undesired reproducibility faults
and quality defects” (Reply Br. 5), we find no disclosure in the Specification
that provides a standard for determining the degree or level of faults or
defects that would need to be avoided to qualify operation of a rotary
atomizer as “ideal.” In other words, we find no disclosure in the
Specification that defines the degree or level of faults occurring during
Appeal 2018-000566
Application 13/498,250

8
operation of a rotary atomizer, or quality defects present in a coating
produced by a rotary atomizer, which would preclude operation of the
atomizer from being considered “ideal.”
Moreover, Appellants’ acknowledgement that “ideal” operation of a
rotary atomizer varies depending upon the type of coating being applied, and
the particular object to which the coating is applied (App. Br. 9), indicates
that “ideal” operation of a rotary atomizer is not only a matter of degree, but
also varies depending on the operating conditions. Consequently, one of
ordinary skill in the art could not determine whether operation of a rotary
atomizer is “ideal” under various operating conditions absent some standard
or benchmark for measuring “ideal” operation, such as the permissible (or
impermissible) degree of faults or quality defects that result from operation
of the rotary atomizer.
Accordingly, one of ordinary skill in the art could not ascertain the
metes and bounds “ideal operation” as recited in claim 33 from Appellants’
original disclosure, rendering the scope of claim 33 unclear. We, therefore,
sustain the Examiner’s rejection of claim 33, and of claims 23–32, which
each depend from claim 33, under 35 U.S.C. § 112, second paragraph as
being indefinite.
C. “the at least one of the one or more pressure sensors”
We summarily sustain the Examiner’s rejection of claim 23 as
indefinite for failing to provide antecedent basis for phrase “the at least one
of the one or more pressure sensors” because Appellants do not contest this
aspect of the Examiner’s rejection under 35 U.S.C. § 112, second paragraph.
Compare Final Act. 4–5, with App. Br. 6–9; 37 C.F.R. § 41.37(c)(1)(iv).
Appeal 2018-000566
Application 13/498,250

9
Rejection II: claim 23 under 35 U.S.C. § 112, fourth paragraph
We summarily sustain the Examiner’s rejection of claim 23 under 35
U.S.C. § 112, fourth paragraph as being of improper dependent form for
failing to further limit the subject matter of the claim from which it depends,
because Appellants do not contest this rejection. Compare Final Act. 7, with
App. Br. 6–12; 37 C.F.R. § 41.37(c)(1)(iv).
Rejection III: claims 24–33 under 35 U.S.C. § 102(b)
Although, as discussed above, we sustain the Examiner’s rejection of
claim 33 under 35 U.S.C. § 112, second paragraph because recitation of “the
predetermined reference values corresponding to ideal operation” renders
the claim indefinite, we nonetheless address the Examiner’s rejection of
claim 33 under § 102(b), because interpretation of this phrase is not
necessary for our analysis of this rejection.
Claim 33 requires the recited system for coating workpieces in series
to include a measuring system configured to receive first and second
pressure signals from first and second pressure sensors, and to compare the
signals against predetermined reference values.
Citing numerous disclosures in Kay, the Examiner finds that the
reference discloses a system for coating substrates that includes a measuring
system for measuring air velocity data. Final Act. 9 (citing Kay Abst.; pg. 2,
l. 20–pg. 3, l. 3; pg. 3, ll. 13–14; pg. 4, l. 13–pg. 5, l. 32; pg. 7, ll. 17–26; pg.
8, l. 27–pg. 9, l. 11; Figs. 1–11b; and claims 1, 3 and 4). The Examiner
finds that Kay discloses that the measuring system is configured to receive
first and second pressure signals, compare the signals against predetermined
values to obtain differential pressure data, and distribute the acquired data to
Appeal 2018-000566
Application 13/498,250

10
multiple users, which will signal a fault or irregularity when the first and
second values do not correspond to the predetermined values. Id.
As Appellants point out, however, none of the passages of Kay cited
by the Examiner discloses comparing first and second pressure signals to
predetermined reference values. App. Br. 10–11. Rather, Kay discloses
obtaining air velocity profile data from coating applicators using an array of
differential pressure sensors. Kay, pg. 2, ll. 20–26. Although the Examiner
asserts that the differential pressure sensors disclosed in Kay obtain
differential pressure data by comparing measured pressure signals against
predetermined values (Final Act. 9), on the record before us, the Examiner
does not identify any disclosure in Kay indicating that the differential
pressure sensors described in the reference compare measured pressure
signals against predetermined values. Nor does the Examiner provide any
other evidence establishing that differential pressure sensors as disclosed in
Kay compare a pressure signal obtained from a pressure sensor against a
predetermined reference value, as required by claim 33.
Nonetheless, the Examiner responds to Appellants’ arguments in the
Answer by finding that claim 3 of Kay recites “calibrating pressure sensors
with a reference sensor to determine the actual pressures existing between
high and low pressure areas to be sensed by the array.” Ans. 15–16. Based
on this disclosure, the Examiner asserts that “[a]s taught by Kay, each of the
differential pressure sensors are positioned and calibrated using a reference
value and then during operation collect air velocity data and pressure values
. . . and compare measured pressure values with predetermined reference
pressure values” because, according to the Examiner, “the predetermined
Appeal 2018-000566
Application 13/498,250

11
reference pressure values used to calibrate the sensors would be stored in the
software and controllers.” Id.
Claim 3 of Kay recites, however, utilizing pressure sensors located in
a multi-dimensional array, and calibrating the pressure sensors with a
reference sensor to determine actual pressures to be sensed by the array.
Thus, claim 3 of Kay discloses calibrating an array of pressure sensors with
a reference sensor before using the sensors to determine actual pressures, by
virtue of reciting calibrating the array of pressure sensors to determine (or
permit) actual pressures “to be sensed by the array.” Claim 3 of Kay,
therefore, does not disclose obtaining a pressure signal from a pressure
sensor, and then comparing the measured pressure against a predetermined
reference value, as required by claim 33.
Consequently, on this appeal record, the Examiner does not provide a
sufficient factual basis to establish that Kay discloses a system for coating
workpieces in series that includes a measuring system configured to receive
first and second pressure signals from first and second pressure sensors, and
compare the signals against predetermined reference values, as required by
claim 33.
We accordingly do not sustain the Examiner’s rejection of claim 33,
and claims 24–32, which each depend from claim 33, under 35 U.S.C. §
102(b) as anticipated by Kay3.

3 The Board relies on the involved parties to focus the issues and decides on
those issues based on facts and arguments presented by the involved parties.
Frye, 94 USPQ2d at 1075. While the Board is authorized to enter a new
ground of rejection, this authority is discretionary. 37 C.F.R. § 41.77(b). We
leave it to Examiner to decide whether a rejection under 35 U.S.C. §103(a)
would be appropriate.
Appeal 2018-000566
Application 13/498,250

12
DECISION
We affirm the Examiner’s rejection of claims 23–33 under 35 U.S.C.
§ 112, second paragraph, and rejection of claim 23 under 35 U.S.C. § 112,
fourth paragraph. We reverse the Examiner’s rejection of 24–33 under 35
U.S.C. § 102(b).
AFFIRMED