Stephen C.P. Joseph et al.

Patent Trials and Appeals Board

Jul 2, 2020

13863028 - (D) (P.T.A.B. Jul. 2, 2020)

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.
13/863,028 04/15/2013 Stephen C.P. Joseph 57764US019 1748
32692 7590 07/02/2020
3M INNOVATIVE PROPERTIES COMPANY
PO BOX 33427
ST. PAUL, MN 55133-3427
EXAMINER
KIM, CHRISTOPHER S
ART UNIT PAPER NUMBER
3752
NOTIFICATION DATE DELIVERY MODE
07/02/2020 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):
LegalUSDocketing@mmm.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte STEPHEN C.P. JOSEPH, MICHAEL J.R. ADAMS,
NEIL DELBRIDGE, and MICHAEL W. HOWCROFT
____________

Appeal 2018-008282
Application 13/863,028
Technology Center 3700
____________

Before ANNETTE R. REIMERS, BRANDON J. WARNER, and
BRENT M. DOUGAL, Administrative Patent Judges.

WARNER, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1, 2, 4–8, 28, and 29. See Appeal
Br. 5–12. Claims 9–27 have been withdrawn. See id. at 5. We have
jurisdiction over the appeal under 35 U.S.C. § 6(b).
We REVERSE.

1 We use the word “Appellant” to refer to the “applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies the real party in interest as the
assignee, “3M Innovative Properties Company, which is a wholly-owned
subsidiary of 3M Company.” Appeal Br. 1.
Appeal 2018-008282
Application 13/863,028

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CLAIMED SUBJECT MATTER
Appellant’s disclosed invention “concerns improvements in or
relating to liquid spraying apparatus such as a spray gun,” specifically “the
connection between the spray gun and a reservoir containing the liquid to be
sprayed,” and “has particular . . . application to a releasable connection for
detachably mounting the reservoir on the spray gun.” Spec., p. 1, ll. 14–18.
Claim 1, reproduced below with emphasis and line breaks added for clarity,
is the sole independent claim appealed and is representative of the subject
matter on appeal.
1. A lid for a reservoir of a gravity feed spray gun, the lid
comprising[:]
an integral spout for direct connection to a socket of the
gravity feed spray gun,
said spout having a first cylindrical portion, provided
with a non-threaded connector formation comprising a
releasable connection for the socket of the spray gun that can be
engaged with/disengaged from the socket of the spray gun by
relative axial movement [and]2 by relative angular movement
involving less than one complete turn about a connection axis;
the non-threaded connector formation comprising a
helical projection for co-operating with a lug on a spray gun
body to cause the integral spout to move into the socket of the
spray gun,
wherein an abutment is provided at an end of the helical
projection to provide an end stop to limit rotation of the lid
relative to the lug.

2 We understand the recited structure of the connector formation (e.g.,
the helical projection) to necessarily involve both relative axial movement
and relative angular movement between the spout and the spray gun, such
that the recited “and/or” must be interpreted as conjunctive. See, e.g.,
Figs. 48–52; Spec., p. 34, l. 22 – p. 35, l. 18. Accordingly, either Appellant
or the Examiner is encouraged to formalize this revision upon return of
jurisdiction over this application.
Appeal 2018-008282
Application 13/863,028

3
EVIDENCE
The Examiner relied on the following evidence in rejecting the claims
on appeal:
Kirby US 6,250,688 B1 June 26, 2001

REJECTIONS
The following rejections are before us for review:
I. Claims 1, 2, 4–8, 28, and 29 stand rejected under 35 U.S.C.
§ 112, first paragraph, as failing to comply with the enablement
requirement. Final Act. 4–5.
II. Claims 1, 2, 4–8, 28, and 29 stand rejected under 35 U.S.C.
§ 112, second paragraph, as being indefinite. Id. at 5.
III. Claims 1, 2, 4–8, and 29 stand rejected under 35 U.S.C.
§ 102(b) as anticipated by Kirby. Id.
IV. Claim 28 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Kirby. Id. at 6.

ANALYSIS
Rejection I – Enablement
The Examiner rejected all the pending claims under 35 U.S.C. § 112,
first paragraph, finding that the Specification did not “reasonably provide
enablement for all forms of releasable connection” between the spray gun
and the spout integrally connected to the claimed lid. Final Act. 4. The
Examiner recognized, however, that Appellant’s Specification does enable
“the specifically disclosed non-threaded engagement” between the spray gun
and spout described in the claims. Id.
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Insofar as the substance of the enablement requirement is concerned,
the dispositive issue is whether Appellant’s disclosure, considering the level
of ordinary skill in the art as of the date of the application, would have
enabled a person of such skill to make and use the claimed invention without
undue experimentation. In re Strahilevitz, 668 F.2d 1229, 1232 (CCPA
1982). Some factors to be considered in determining whether a disclosure
would require undue experimentation include (1) the quantity of
experimentation necessary, (2) the amount of direction or guidance
presented, (3) the presence or absence of working examples, (4) the nature
of the invention, (5) the state of the prior art, (6) the relative skill of those in
the art, (7) the predictability or unpredictability of the art, and (8) the breadth
of the claims. In re Wands, 858 F.2d 731, 737 (Fed. Cir. 1988).
Here, the Examiner did not articulate any findings or analysis, such as
by consideration of any of the Wands factors, to show that, in the absence of
such description in the Specification, a person of ordinary skill in the art
would have been unable to make and use the claimed invention without
undue experimentation. Further, we agree with Appellant that the Examiner
misstated the contours of the claimed invention. That is, the claims are not
directed toward “all forms of releasable connection between two
connectors,” but specifically to a “non-threaded connector formation
comprising a helical projection for co-operating with a lug on a spray gun
body to cause the integral spout to move into the socket of the spray gun.”
Appeal Br., Claims App. (emphasis added).
Accordingly, based on the record before us, the Examiner has not met
the burden of establishing that claims 1, 2, 4–8, 28, and 29, lack enablement.
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Application 13/863,028

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On this basis, we do not sustain the rejection of these claims under 35 U.S.C.
§ 112, first paragraph, as failing to comply with the enablement requirement.

Rejection II – Indefiniteness
In determining whether a claim is definite under 35 U.S.C. § 112,
second paragraph, “[t]he USPTO, in examining an application, is obliged to
test the claims for reasonable precision.” In re Packard, 751 F.3d 1307,
1313 (Fed. Cir. 2014). “[A] claim is indefinite when it contains words or
phrases whose meaning is unclear.” Id. at 1322 (citing MPEP § 2173.05(e)).
The Examiner determined that all of Appellant’s pending claims
“fail[] to particularly point out and distinctly claim the subject matter” of the
invention. Final Act. 5. In particular, the Examiner found that “the
recitation ‘a helical projection’ appears to be a double inclusion of the
‘releasable connection’ recited” previously in the claims. Id.
But Appellant persuasively argues that, in light of the Specification, a
person of ordinary skill in the art would understand the term “releasable
connection” as used in the claims to refer to the “the relationship . . .
between the spout and the socket of the spray gun.” Reply Br. 6. We agree
that the “‘releasable connection’ refers to the state/type of connection
provided by the connector formation and is not a structural sub-element” of
the claims. Id.
Because the “releasable connection” and “helical projection” phrases
are not distinct structural elements, the Examiner erred in finding that claim
language to create a double inclusion. Accordingly, because we are able to
define the scope of the claims, we do not sustain the rejection based on
indefiniteness.
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Application 13/863,028

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Rejections III & IV – Anticipation by or Obviousness over Kirby
Appellant’s invention relates to a system of mounting a reservoir to a
spray gun (such as for applying spray paint in vehicle body repair shops).
See Spec., p. 1, ll. 17–19. All the pending claims recite a “lid for a reservoir
of a gravity feed spray gun,” where the lid is directed to providing a
releasable quick-fit connection between the reservoir and the spray gun. See
Appeal Br., Claims App.; Spec., p. 2, l. 29 – p. 3, l. 3. The Examiner found
that claims 1, 2, 4–8, and 29 were anticipated by Kirby (Rejection III) and
that the modification of dependent claim 28—an externally threaded portion
of the spout—was rendered obvious by Kirby’s disclosure (Rejection IV).
Final Act. 5–6.
Appellant argues, however, that the term “lid” provides a specific
structure for the claimed invention, and Kirby simply does not disclose a
“lid” as claimed. Appeal Br. 7–10. In short, we agree. It is true, as the
Examiner stated, that the term “lid” first appears in the preamble of
independent claim 1 (and each claim depending therefrom). Final Act. 5;
see Appeal Br., Claims App. But Appellant persuasively points out that the
term “lid” is also used elsewhere in the claims and “gives life, meaning, and
vitality” to the claims. See Appeal Br. 7 (citing Pitney Bowes, Inc. v.
Hewlett-Packard Co., 182 F .3d 1298, 1305 (Fed. Cir. 1999)). We agree
with Appellant that “the lid structure provides ‘an understanding of what the
inventors actually invented and intended to be encompassed by the claim.’”
Appeal Br. 7 (quoting Corning Glass Works v. Sumitomo Elec. U.S.A., Inc.,
868 F.2d 1251, 1257 (Fed Cir. 1989)). That is, the claimed lid acts as
a lid—it covers a reservoir containing a substance (such as paint) and
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Application 13/863,028

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provides an integral connection by which the reservoir can be attached by
way of a quick-release connector to a spray gun.
We disagree with the Examiner’s finding that Kirby, which discloses
an inline coupling member (as might be used to connect a hose), can be
considered to disclose a “lid.” The Examiner took the position that the term
“lid” means merely a cover and denotes no structure, and Kirby’s coupling
member “covers” the opening to which it connects. Ans. 7–8. But words
have meaning. One of ordinary skill in the art would understand that there is
a structural difference between an inline coupling member or adapter that
merely connects components, as disclosed in Kirby, and a lid that both
covers a reservoir and integrally includes a spout with a helical connection,
as claimed here.
Therefore, the Examiner has not established by a preponderance of the
evidence that Kirby, as relied upon in the rejection presented, discloses a lid,
as required by the claims. Further, the Examiner did not articulate any
reason why it might have been obvious to modify Kirby’s coupling member
to form a lid in the obviousness rejection of claim 28. See Final Act. 6.
Rejections based on obviousness must rest on a factual basis; in making such
a rejection, the Examiner has the initial burden of supplying the requisite
factual basis and may not, because of doubts that the invention is patentable,
resort to speculation, unfounded assumptions, or hindsight reconstruction to
supply deficiencies in the factual basis. See In re Warner, 379 F.2d 1011,
1017 (CCPA 1967).
Accordingly, based on the record before us, we do not sustain the
Examiner’s anticipation rejection of claims 1, 2, 4–8, and 29 under
35 U.S.C. § 102(b). Similarly, the Examiner has not met the burden of
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Application 13/863,028

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establishing a proper case of obviousness based on Kirby, so we likewise do
not sustain the rejection of dependent claim 28 under 35 U.S.C. § 103(a).

DECISION
We REVERSE the Examiner’s decision rejecting claims 1, 2, 4–8, 28,
and 29 under 35 U.S.C. § 112, first paragraph, as failing to comply with the
enablement requirement.
We REVERSE the Examiner’s decision rejecting claims 1, 2, 4–8, 28,
and 29 under 35 U.S.C. § 112, second paragraph, as being indefinite.
We REVERSE the Examiner’s decision rejecting claims 1, 2, 4–8,
and 29 under 35 U.S.C. § 102(b) as anticipated by Kirby.
We REVERSE the Examiner’s decision rejecting claim 28 under
35 U.S.C. § 103(a) as being unpatentable over Kirby.

CONCLUSION
In summary:

Claim(s)
Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1, 2, 4–8,
28, 29 112 ¶ 1 Enablement
1, 2, 4–8,
28, 29
1, 2, 4–8,
28, 29 112 ¶ 2 Indefiniteness
1, 2, 4–8,
28, 29
1, 2, 4–8,
29 102(b) Kirby
1, 2, 4–8,
29
28 103(a) Kirby 28
Overall
Outcome
1, 2, 4–8, 28, 29

REVERSED