Waterblasting, LLC

Patent Trials and Appeals Board

Jun 22, 2020

2019006442 (P.T.A.B. Jun. 22, 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.
14/796,876 07/10/2015 James P. Crocker 2708U.020 6498
21917 7590 06/22/2020
MCHALE & SLAVIN, P.A.
2855 PGA BLVD
PALM BEACH GARDENS, FL 33410
EXAMINER
CHU, KATHERINE J
ART UNIT PAPER NUMBER
3671
NOTIFICATION DATE DELIVERY MODE
06/22/2020 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):
uspatents@mchaleslavin.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JAMES P. CROCKER
Appeal 2019-006442
Application 14/796,876
Technology Center 3600
Before JILL D. HILL, LEE L. STEPINA, and
ARTHUR M. PESLAK, Administrative Patent Judges.
PESLAK, 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, 4–11, and 13–18. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM IN PART.

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies the real party in interest as
Waterblasting, LLC. Appeal Br. 1.
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THE CLAIMED SUBJECT MATTER
Appellant’s invention relates to a device for melting and applying
thermoplastic material to a road surface. Spec. ¶ 2. Claims 1 and 13 are
independent. Claim 1, reproduced below, is illustrative of the claimed
subject matter:
1. A surface marking device for applying thermoplastic
marking materials to a surface comprising:
a surface marking assembly, said surface marking
assembly including a melting kettle, said melting kettle having a
shell, a plurality of conduit members positioned within said shell
to allow hot oil to pass around in direct contact with an outer
perimeter of said plurality of conduits within said shell, said
plurality of conduits constructed from a heat conductive material
and each conduit having an aperture at a first end thereof for
accepting unmelted thermoplastic granules, a second end of each
said conduit fluidly connected to a material discharge collector
at the bottom end of said kettle for discharging molten
thermoplastic;
a heating system for heating said oil, said oil passed
through said melting kettle in direct contact with said plurality of
conduits, so that said oil contacts said outer perimeter of said
plurality of conduits and an inner surface of said shell, said oil
having a temperature higher than a melting point of said
thermoplastic granules;
said thermoplastic granules are passed from said first end
of said plurality of conduits to said second end of said plurality
of conduits by gravity and said outer perimeter of said plurality
of conduits have a suitably sized surface area to transfer
sufficient heat from said oil so that said thermoplastic granules
are melted before reaching said material discharge collector.
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REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
McIntyre US 1,940,964 Dec. 26, 1933
Currie US 3,554,449 Jan. 12, 1971
Varga US 8,201,717 B2 June 19, 2012
Dirienzo US 2004/0099212 A1 May 27, 2004
REJECTIONS
1. Claims 1, 4–7, 10, 11, and 13–17 are rejected under 35 U.S.C.
§ 103 as unpatentable over Dirienzo and Currie. Final Act. 2.
2. Claims 8 and 18 are rejected under 35 U.S.C. § 103 as
unpatentable over Dirienzo, Currie, and McIntyre. Final Act. 7.
3. Claims 1, 4–7, 9–11, and 13–17 are rejected under 35 U.S.C.
§ 103 as unpatentable over Dirienzo, Currie, and Varga. Final Act. 8.
4. Claims 8 and 18 are rejected under 35 U.S.C. § 103 as
unpatentable over Dirienzo, Currie, Varga, and McIntyre. Final Act. 14.
ANALYSIS
Rejection 1; Dirienzo and Currie
Claims 1, 4–7, 10, and 11
The Examiner finds that Dirienzo discloses most of the limitations of
claim 1 including melting kettle 30 and conduit 40. Final Act. 2. The
Examiner finds that Dirienzo does not explicitly disclose that the material of
the conduit is a heat conductive material. However, the Examiner finds that
because Dirienzo’s conduit is heated to melt the thermoplastic material
therein, one of ordinary skill in the art would have understood that the
conduit is heat conductive or that it would have been obvious to make it heat
conductive in order to transfer heat. Id. at 2–3. The Examiner finds that
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Dirienzo’s melting kettle uses oil for heat transfer, and although Dirienzo
does not provide the details of the inner workings of the kettle, Currie does.
Id. at 3. The Examiner considers that it would have been obvious to
substitute Currie’s melting kettle for Dirienzo’s melting kettle as a known
alternate device to melt the thermoplastic granules. Id. The Examiner posits
that because Currie heats the thermoplastic material to a free-flowing state,
and because Dirienzo teaches that the melting kettle and conduit are heated
to a higher temperature than the melt temperature of the thermoplastic
material, one of ordinary skill in the art would have recognized that the heat
transfer fluid must have a temperature higher than the melting point of the
thermoplastic material in order for the thermoplastic material to become
free-flowing. Id. According to the Examiner, the combination of Dirienzo
and Currie results in the thermoplastic granules being passed by gravity,
through the vertical bends depicted in Currie, and making Currie’s one
conduit a plurality of conduits would have been a mere duplication of
essential working parts. Id.
Appellant argues, inter alia, that because Dirienzo heats the pipe
before joint 30 (kettle) and because Currie heats the hopper before the kettle,
melting does not occur in a vertical conduit of a kettle using thermoplastic
granules passed by gravity. Appeal Br. 15–16. For the following reasons,
we do not sustain this rejection.
Dirienzo discloses that apparatus 10 comprises a hopper 20 for
holding particulate thermoplastic marking material in a non-molten state,
and means for conveying the thermoplastic marking material from the
hopper to continuous melt processor 30, which the Examiner equates to a
melting kettle. Dirienzo ¶ 14; see also Final Act. 2. In a preferred
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embodiment, the conveying means is an auger that is heated. Id. ¶ 15. Thus,
Dirienzo does not require preheating of the thermoplastic material, only that
it is preferred. Currie discloses that preheater 12 includes heating means 28
and a heated guide plate that guides a “mushy material” to pump 32 and that
superheater 16, which the Examiner equates to a melting kettle, “receives the
mush composition forced thereto and therethrough by the pump 32.” Currie,
3:7–24, 3:34–35; Fig. Although the Examiner asserts that the rejection is
based only on superheater 16 and not preheater 12 (see Ans. 5), the
Examiner does not explain adequately how a melting kettle that uses a
mushy, “highly viscous” material (see Currie, 2:25–27) that is forced
through by a pump is a suitable replacement for Dirienzo’s kettle for passing
thermoplastic granules through the conduit by gravity. That is, the Examiner
relies on Currie’s “conduit (34) through which thermoplastic material
moves” and states that the conduit passes thermoplastic granules by gravity
because “the conduit has vertical bends” (Ans. 7), as seen in Currie’s sole
Figure, reproduced below.

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Currie’s sole figure illustrates, partially and schematically, a portable
plastic melter 10. Currie, 2:35–37. Although conduit 34 has “vertical
bends,” the majority of the conduit is horizontal and is shown in the Figure
having a smaller diameter than the outlet tubing from pump 32. The
Examiner does not adequately explain how the thermoplastic material would
pass through conduit 34 by gravity, as required by claim 1, absent pump 32.
Thus, we do not sustain the Examiner’s rejection of claim 1, and claims 4–7,
10 and 11 depending from claim 1.
Claims 13–17
Although independent claim 13 does not require that the thermoplastic
material pass through the conduit by gravity, claim 13 requires a plurality of
conduits in a coaxial spaced apart relationship. Appeal Br. 58 (Claims
App.). The Examiner finds that replacing Dirienzo’s single conduit with a
plurality of conduits to be a “mere duplication of essential working parts”
and further finds that a coaxial spaced apart relationship “is logical.” Final
Act. 6.
Appellant argues, inter alia, that the Examiner’s reasoning is
insufficient and is based on impermissible hindsight. Appeal Br. 26–27.
For the following reasons, we do not sustain this rejection.
Currie discloses a coiled pipe 34 that coils from an inlet at the top of
housing 38 to discharge nozzle 40 at the bottom of housing 38. Currie,
3:36–42; Fig. In light of this disclosure, we determine that the rejection is
not supported by a rational underpinning because the Examiner did not
adequately explain why one of ordinary skill would have found it “logical”
to arrange plural pipes in a coaxial spaced apart relationship. Currie
discloses flow from top to bottom, so that “the composition is transformed
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from the mushy state to a relatively free flowing state in which form it exits
from a discharge nozzle 40.” Currie, 3:40–42; Fig. Given the flow
arrangement of Currie, the Examiner does not explain why a coaxial spaced
apart relationship is “logical,” let alone why it would have been obvious to
one of ordinary skill in the art to modify Currie in this manner. Therefore,
we do not sustain the rejection of claim 13 and claims 14–17, which depend
from claim 13, as unpatentable over Dirienzo and Currie because the
rejection is not based on a rational underpinning.

Rejection 2; Dirienzo, Currie, and McIntyre
Claim 8 depends from claim 1 and claim 18 depends from claim 13.
Appeal Br. 57, 60 (Claims App.). The Examiner rejects claims 8 and 18
based on the combination of Dirienzo and Currie with additional disclosure
from McIntyre. Final Act. 7–8. The Examiner does not rely on the
additional disclosure from McIntyre to cure the deficiencies in the
combination of Dirienzo and Currie discussed above in connection with
claims 1 and 13. Id. We, therefore, do not sustain the rejection of claims 8
and 18.

Rejection 3; Dirienzo, Currie, and Varga
Claims 1, 4–7, and 9–11
Appellant argues claims 1, 4–7, and 9–11 as a group. Appeal Br. 32–
41. Pursuant to 37 C.F.R. § 41.37(c)(1)(iv), we select claim 1 as
representative and claims 4–7 and 9–11 stand or fall with claim 1.
The Examiner relies on the same findings and reasoning discussed
above as to Dirienzo and Currie to reject claims 1, 4–7, and 9–11 in
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Rejection 3. Final Act. 8–11. Here, however, the Examiner relies on Varga
in a manner that cures the deficiencies of Dirienzo and Currie discussed
above.
Specifically, the Examiner finds that Varga discloses a plurality of
conduits 64 and that Varga passes the granules through the conduits by
gravity. Final Act. 9–10. The Examiner concludes that plural conduits
would increase efficiency by melting more material, and that passing the
granules through the pipes of Varga is a known alternative way to
predictably move granules through conduits. Id.
Appellant argues that because both Dirienzo and Currie teach heating
prior to the melting kettle, these reference do not suggest that melting takes
place “within a vertical conduit.” Appeal Br. 38. Appellant asserts that
Varga does not cure the deficiencies of Dirienzo and Currie because Varga
teaches a heating manifold that is heated with electrical resistance heating
elements, not a melting kettle with circulating hot oil that melts material in a
vertical conduit. Id. at 39. For the following reasons, we are not persuaded
by Appellant’s arguments.
Although we appreciate that Varga’s conduits are in a manifold, not a
melting kettle, the Examiner relies on Varga for the teaching of a plurality of
conduits and does not equate a manifold to a melting kettle. The Examiner
relies on Currie’s disclosure of a melting kettle with conduit 34 there
through. See Final Act. 8–9. As the Examiner correctly finds, Varga
discloses that the conduits pass the material by gravity and that “[m]elting
occurs within cavities 64 and transforms the solid particles into molten, hot
melt adhesive, by the time the material discharges from cavities 64.” Varga,
6:49–51; see also Final Act. 10. Appellant does not dispute this finding.
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See Appeal Br. 39. That Varga melts the material using resistance heating is
of no import, because the Examiner relies on Currie to teach circulating hot
oil to melt a thermoplastic material in a conduit. See Final Act. 9.
Specifically, Currie discloses that pipe 34 is “surrounded by a heating
medium 36 . . . such as compressed steam, heated oil . . . raising [the plastic
material’s] temperature from 260° F to 400–450 F . . . to a relatively free-
flowing state, so that it may be sprayed by the spray nozzle 40 at the
discharge end of the superheater.” Currie, 3:38, 3:71, 4:15–19. Moreover,
Dirienzo discloses that electrical heating and recirculating hot oil are
suitable alternatives for heating a conduit to melt thermoplastic material.
Dirienzo ¶ 18. Thus, the combination of references set forth by the
Examiner suggests using hot oil in a melting kettle to melt thermoplastic
material in a plurality of conduits and that the material passes from one end
of the conduits to the other by gravity.
Appellant also argues that the references do not “suggest a desirability
for the modification,” and that the modification is based on “impermissible
hindsight.” Appeal Br. 40. We are also not persuaded by this argument.
Dirienzo discloses that thermoplastic marking material can be melted
by heating the elements that contain the material using “electrical band
heaters 80, recirculating hot oil, and hot air.” Dirienzo ¶ 18; see also Final
Act. 8. Because Dirienzo does not explicitly show hot oil in direct contact
with the conduit, the Examiner relies on Currie, which as discussed above
teaches hot oil in contact with conduit 34. Currie, 3:38, 3:71, 4:15–19. The
Examiner’s reason for the combination is “a substitution of an alternate
device to melt the thermoplastic granules.” Final Act. 9. Given that
Dirienzo teaches that these are known alternatives, the Examiner’s reasoning
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is disclosed in the cited references, rather than stemming from impermissible
hindsight. The Examiner’s reason for adding Varga to the combination is to
“yield an increase in efficiency to allow greater surface area to melt more
thermoplastic.” Final Act. 9. This reasoning is based on Varga’s disclosure
of the advantages of using multiple short conduits instead of a single long
conduit. Varga, 10:19–26. Because the Examiner’s reasoning for the
proposed modification is reasonable and supported by rational
underpinnings found in the prior art, we do not agree that the Examiner’s
rejection is based on impermissible hindsight. For these reasons, we sustain
the rejection of claim 1 as unpatentable over Dirienzo, Currie, and Varga.
Claims 4–7 and 9–11 fall with claim 1.
Claims 13–17
The Examiner relies on the same findings and reasoning discussed
above as to Dirienzo and Currie to reject claims 13–17 of Rejection 3. Final
Act. 11–13. The Examiner additionally relies on Varga to disclose a
plurality of conduits 64 and that Varga passes the granules through the
conduits by gravity. Id. at 12.
Appellant argues that “[t]he combination of Dirienzo, Currie, and
Varga does not teach or suggest every claim limitation of independent Claim
13.” Appeal Br. 44. We agree.
Claim 13 requires that the plurality of conduit members are positioned
within the shell in a coaxial spaced apart relationship. As the Examiner
correctly finds, the combination of Dirienzo and Currie “includes one
conduit but fails to disclose a plurality of conduits.” Final Act. 12.
Although the Examiner relies on Varga to disclose a plurality of conduits,
the Examiner does not make any finding that Varga, or the combination of
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Dirienzo, Currie and Varga suggest that the plurality of conduits are in a
coaxial spaced apart relationship. See Final Act. 11–13. Figures 3 and 4 of
Varga depict a plurality of cavities (conduits) 64. Figure 3 is a cross-
sectional view that depicts the shape of one conduit 64 and Figure 4 is a
cross-sectional view that depicts a plurality of conduits 64. Varga, 4:24–27,
6:28–31. The Examiner does not explain why Varga’s aligned conduits are
in a coaxial spaced apart relationship as required by claim 13. We do not
sustain the rejection of claim 13, and claims 14–17 depending therefrom, as
obvious over Dirienzo, Currie and Varga because the Examiner does not
address the requirement of claim 13 that the plurality of conduits are “in a
coaxial spaced apart relationship.”

Rejection 4; Dirienzo, Currie, Varga, and McIntyre
Claim 8
Claim 8 depends from claim 1 and requires that “said plurality of
conduits include at least one fin for increasing the surface area of the outer
surface of said plurality of conduits thereby increasing heat transfer to said
plurality of conduits from said oil.” Appeal Br. 57 (Claims App.). The
Examiner finds that McIntyre teaches using fins on a conduit to enhance
heat transfer. Final Act. 14. The Examiner posits that it would have been
obvious to “use fins anywhere where heat transfer is desired in view of
McIntyre’s teaching that the concept of using fins on a conduit for
enhancing heat transfer is old and well known.”2 Id.

2 We note that McIntyre issued on December 26, 1933.
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Appellant argues that the Examiner’s determination is conclusory
because “Currie teaches including -+the heating element within the hopper,
and therefore teaches away from the concept of including fins” because “fins
on the outside of the conduit have no practical purpose for heat transfer
when the heating plate is within the thermoplastic granules being melted.”
Appeal Br. 53.
The Examiner responds that the rejection does not rely on using
Currie’s heating plates and that using fins on the conduits surrounded by hot
oil, would enhance heat transfer as taught by McIntyre. Ans. 7. For the
following reasons, we sustain the rejection of claim 8.
The Examiner proposes to add fins to the exterior of conduits as seen
in Figure 1 of McIntyre. McIntyre discloses that using heat radiating fins
provides a large heating surface, which greatly increases the heating
efficiency. McIntyre, 1:11–21. Appellant does not dispute this teaching by
McIntyre or the Examiner’s finding that the use of fins to enhance heat
transfer on conduits is old and well known. See Appeal Br. 53. Further,
Appellant does not direct us to any evidence to support its attorney argument
that Currie discourages the use of fins on conduits to enhance heat transfer
and thus would support a finding that Currie teaches away from using fins.
See DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc., 567 F.3d 1314,
1327 (Fed. Cir. 2009) (citation omitted) (“A reference may be said to teach
away when a person of ordinary skill, upon reading the reference, would be
discouraged from following the path set out in the reference, or would be led
in a direction divergent from the path that was taken by the applicant.”).
Therefore, we sustain the rejection of claim 8 as unpatentable over Dirienzo,
Currie, Varga, and McIntyre.
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Claim 18
Claim 18 depends from claim 13. Appeal Br. 60 (Claims App.). The
Examiner rejects claim 18 based on the combination of Dirienzo, Currie, and
Varga with additional disclosure from McIntyre. Final Act. 14. The
Examiner does not rely on the additional disclosure from McIntyre to cure
the deficiencies in the combination of Dirienzo and Currie discussed above
in connection with claim 13. Id. We, therefore, do not sustain the rejection
of claim 18 as unpatentable over Dirienzo, Currie, Varga, and McIntyre.

CONCLUSION
The Examiner’s rejections are affirmed in part.
More specifically,
DECISION SUMMARY
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1, 4–7, 10,
11, 13–17
103 Dirienzo, Currie 1, 4–7, 10,
11, 13–17
8, 18 103 Dirienzo, Currie,
McIntyre
8, 18
1, 4–7, 9–
11, 13–17
103 Dirienzo, Currie,
Varga
1, 4–7, 9–
11
13–17
8, 18 103 Dirienzo, Currie,
Varga, McIntyre
8 18
Overall
Outcome:
1, 4–11 13–18

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TIME PERIOD FOR RESPONSE
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 IN PART