The Boeing Company

Patent Trials and Appeals Board

Mar 15, 2022

2022000018 (P.T.A.B. Mar. 15, 2022)

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. 15/687,477 08/26/2017 Colton Massey Smoot 17-1004-US-NP 7591 63759 7590 03/15/2022 DUKE W. YEE YEE & ASSOCIATES, P.C. P.O. BOX 6669 MCKINNEY, TX 75071 EXAMINER DANDRIDGE, CHRISTOPHER R. ART UNIT PAPER NUMBER 3752 NOTIFICATION DATE DELIVERY MODE 03/15/2022 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): patentadmin@boeing.com ptonotifs@yeeiplaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte COLTON MASSEY SMOOT, CRAIG ALAN UNGERECHT, MELINDA DAE MILLER, PAUL G. SOLECKI, DAVID MCCAIG, FREDERICK B. FRONTIERA, and ADRIENNE C. ENGHOLM ____________ Appeal 2022-000018 Application 15/687,477 Technology Center 3700 ____________ Before WILLIAM A. CAPP, BRANDON J. WARNER, and ERIC C. JESCHKE, Administrative Patent Judges. JESCHKE, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellant1 seeks review, under 35 U.S.C. § 134(a), of the Examiner’s decision, as set forth in the Final Office Action dated February 5, 2021, rejecting claims 1-9, 17-24, and 27-31. Claims 10-16, 25, and 26 have been withdrawn or canceled. 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 Boeing Company as the real party in interest. Br. 2. Appeal 2022-000018 Application 15/687,477 2 BACKGROUND The disclosed subject matter “relates to a high-volume low-pressure end effector configured to apply a fluid to a component.” Spec. ¶ 1. Claims 1, 17, and 21 are independent. Claim 1 is reproduced below: 1. A high-volume low-pressure end effector comprising: a connection arm comprising a housing with flexible conduits running through the housing; and a spray head connected to the connection arm, the spray head comprising: integral channels connected to the flexible conduits and comprising a first air channel, a second air channel, and a fluid channel; and a number of outlets in fluid communication with the integral channels, wherein the spray head, the number of outlets, and the integral channels form a substantially monolithic structure, and wherein the integral channels are configured to: connect the flexible conduits to the number of outlets; receive air and a fluid from the flexible conduits; and deliver the air and the fluid to the number of outlets. Br. 17 (Claims App.). REJECTIONS 1. Claims 1, 2, 5-7, 9, 17, 20, 29, and 31 stand rejected under 35 U.S.C. § 103 as unpatentable over Millan (US 5,971,298, issued Oct. 26, 1999) and Smith (US 5,271,564, issued Dec. 21, 1993). 2. Claims 3, 4, 8, 18, 19, 21-24, 27, and 30 stand rejected under 35 U.S.C. § 103 as unpatentable over Millan, Smith, and Yin (US 2016/0367931 A1, published Dec. 22, 2016). Appeal 2022-000018 Application 15/687,477 3 3. Claim 28 stands rejected under 35 U.S.C. § 103 as unpatentable over Millan, Smith, and Knobloch (US 8,550,176 B2, published Oct. 8, 2013). DISCUSSION Rejection 1 - The rejection of claims 1, 2, 5-7, 9, 17, 20, 29, and 31 under 35 U.S.C. § 103 A. Claims 1, 5-7, 9, 17, and 20 Appellant presents arguments asserting the patentability of all claims in this Rejection as a group based on the two independent claims-claims 1 and 17. Br. 6-11 (addressing independent claim 1), 13 (relying on the arguments as to claim 1 for claim 17), 13 (relying on the arguments as to claim 17 for claim 20). Because Appellant also provides separate arguments for certain claims within this Rejection (see infra Rejection 1 §§ B-D), the analysis of the arguments directed at the Rejection overall determines the outcome for claims 1, 5-7, 9, 17, and 20. For this group, we select claim 1 as representative, with claims 5-7, 9, 17, and 20 standing or falling with claim 1. See 37 C.F.R. § 41.37(c)(1)(iv) (2020). For claim 1, the Examiner relied on Millan for certain limitations but stated that “Millan fails to disclose the body and integral channels form a substantially monolithic structure.” Final Act. 2-3. The Examiner found, however, that “Smith discloses an end effector with a spray head comprising a body (50) and integral channels formed in a substantially monolithic structure (Fig. 11).” Id. at 3. According to the Examiner, The substitution of one known element for another would have been obvious to one having ordinary skill in the art at the time the invention as made, since the substitution of a monolithic body and integral channels as taught by Smith would have yielded predictable results, namely, increased structural integrity of a monolithic design and less parts to separately maintain. Appeal 2022-000018 Application 15/687,477 4 Final Act. 3. Prior to addressing the arguments, we discuss the proposed modification. We understand the Examiner to propose modifying certain relied-upon structures in Millan (shown primarily in Figures 4 and 6) such that-instead of separate structures (as shown in those Figures)-the structures would be integrated together into a monolithic (i.e., indivisible) structure. See Spec. ¶ 55 (“When spray head 208 is monolithic 238, spray head 208 is one indivisible component.”), cited at Br. 9 for a definition of “monolithic.” This understanding is supported by the Answer, in which the Examiner states that “Smith is used to teach that it is well-known to create the nozzle structure as a monolithic structure, wherein Millan already discloses the other components required of the invention.” Ans. 4. Appellant presents several arguments as to the rejection of claim 1. First, Appellant argues that fittings 60, 62, 64 in Millan would not have been considered “integral channels” because, “[a]s depicted in Figure 6 of Millan, the fittings, held by the combination of the base plate (68), diffuser plate (72), and top plate (80) of the nozzle, are separate from and not integral with the nozzle cap (66) of the nozzle.” Br. 8. According to Appellant, “[t]o be integral means to belong as part of the whole.” Id. This argument does not apprise us of error because Appellant does not address the rejection as articulated. As discussed above, in the proposed modified device, the relied-upon structures shown, for example, in Figures 4 and 6 of Millan, would not be separable, but rather monolithic (i.e., indivisible), as taught in Smith. See In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986) (“Non-obviousness cannot be established by attacking references individually where the rejection is based upon the teachings of a combination of references.”). Appeal 2022-000018 Application 15/687,477 5 Appellant also argues that the Examiner’s statement that “‘the channels (Millan’s fittings (60, 62, 64)) are integrated as they are installed in the body 66 and thus integrated with the body’” contradicts the later statement that “‘Millan fails to disclose the spray head and the integral channels form a substantially monolithic structure.’” Br. 9 (quoting Final Act. 2, 3). According to Appellant, “[t]he integral channels cannot be integral with the spray head, in other words, integrally formed with the spray head, without the entirety of the spray head and the integral channels forming a monolithic structure.” Id. For the reasons discussed above, we understand the Examiner to rely on the combination of Millan and Smith as to the “integrated channels” and, for the reasons discussed below as to the second argument, also to address the recited requirement that “the spray head, the number of outlets, and the integral channels form a substantially monolithic structure.” Thus, this argument does not show error in the rejection as properly understood. See In re Merck & Co., 800 F.2d at 1097. Second, Appellant argues that “[t]he Examiner does not address the claimed requirement that the monolithic structure of the spray head requires both the integral channels and the number of outlets.” Br. 9. According to Appellant, “[t]he Examiner likens Millan’s nozzle discharge port (67) of the nozzle cap (66) to Appellant’s claimed number of outlets” but “Millan’s nozzle cap (thus the discharge port formed in the nozzle cap) is a separate component of Millan’s nozzle that is separable from (thus not of monolithic structure with) the collection of the base plate (68), diffuser plate (72), top plate (80), and fittings (60, 62, 64).” Br. 9. This argument does not apprise us of error because Appellant does not address the rejection as articulated. As discussed above, in the proposed Appeal 2022-000018 Application 15/687,477 6 modified device, the relied-upon structures, shown, for example, in Figures 4 and 6 of Millan, would not be separable, but rather monolithic. See In re Merck & Co., 800 F.2d at 1097. Third, Appellant notes its prior argument that “Millan does not disclose a spray head with integrals channels,” and Appellant then argues that, “[i]n regard to Smith, the mounting block (50) of Smith, likened to Appellant’s claimed spray head, does not disclose integral channels that connect the flexible conduits to the number of outlets where the integral channels comprise a first air channel, a second air channel, and a fluid channel.” Br. 10. According to Appellant, “Smith discloses a single air channel surrounding a single fluid channel.” Id. We are not apprised of error based on this argument because, for the reasons stated by the Examiner (Ans. 3), this argument does not address the rejection as articulated. As noted above, we understand the Examiner to rely on the proposed combination of Millan and Smith-not just Smith-as to the recited “integral channels connected to the flexible conduits and comprising a first air channel, a second air channel, and a fluid channel. See Ans. 3 (bottom two paragraphs); Final Act. 2-3; In re Merck & Co., 800 F.2d at 1097. Fourth, Appellant presents two arguments as to why there allegedly would have been no reason to combine Millan and Smith as proposed. See Br. 10-11. Appellant initially argues that “Smith teaches away from including a first air channel, a second air channel, and a fluid channel” in that, instead, it teaches a “low pressure air passage concentrically surround[ing] the block liquid tube.” Br. 10. According to Appellant, “[t]he concentric layout of the air passage surrounding the block liquid tube, as disclosed by Smith, is purposeful.” Id. Appeal 2022-000018 Application 15/687,477 7 Appellant has not established that Smith teaches away from the proposed combination because the record does not support that “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.” In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994). At best, Smith merely discloses an alternative-a single air channel and single fluid channel-which is not, by itself, sufficient to demonstrate a teaching away. In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004) (“The prior art’s mere disclosure of more than one alternative does not constitute a teaching away from any of the[] [disclosed] alternatives because such disclosure does not criticize, discredit, or otherwise discourage the solution claimed . . . .”). Next, Appellant asserts that “combining any alleged disclosure in Smith of a monolithic spray head structure with three separate air/fluid channels of Millan would render Smith inoperable for its intended purpose because the important feature of singular air channel that encapsulates and surrounds the atomized stream of Smith would be defeated.” Br. 11. Again, this argument does not address the rejection as articulated. As summarized above, the proposed modification does not involve, as asserted by Appellant, “[m]odifying the structure of the mounting block (50) [of Smith] to include two separate air channels and a fluid channel” as recited. Br. 11; see Ans. 4 (clarifying the proposed modification in the top two paragraphs). Instead, it involves modifying the structures in Millan (shown primarily in Figures 4 and 6) such that-instead of separate structures (as shown in those Figures)-the relied-upon structures are integrated together into a monolithic (i.e., indivisible) structure. For these reasons, we sustain the rejection of claim 1. Claims 5-7, 9, 17, and 20 fall with claim 1. Appeal 2022-000018 Application 15/687,477 8 B. Claim 2 Claim 2 depends from claim 1 and adds that “the number of outlets comprises a first outlet and a second outlet connected to the integral channels.” Br. 17 (Claims App.). In the Final Action, the Examiner relies on Figures 3-6 of Millan as showing “multiple outlets of the same nozzle.” Id. In the Answer, the Examiner clarifies that, in Figure 7 of Millan, for example, “the integral channels are clearly depicted with a first outlet and a second outlet (top ends of any of the integral channels 60, 62 and 64).” Ans. 4. Appellant argues that “Figures 3-6 of Millan show only one outlet, assumed by Appellant to be Millan’s discharge nozzle (67)” and that “the discharge outlet is not connected to Millan’s fittings (likened to Appellant’s claimed integral channels).” Br. 12. This argument does not apprise us of error. Although the Examiner did highlight the “number of outlets” in claim 1 as “at 67” (i.e., reference numeral 67 in Millan (see Fig. 4) (Final Act. 3)), the Examiner clarifies in the Answer that “67 was referred to in the rejection to point in the general area of the outlets.” Ans. 4. The record supports that the relied-upon “top ends” of fittings 60, 62, 64 in Millan (i.e., the identified “integral channels”) would have been considered “outlets.” Although the identified top ends are not separate structures as compared to the rest of fittings 60, 62, 64, the same is true for the embodiment in the Specification, in which outlets 510 and 512 are at the end of integral channels 606, but not separate structures that could seemingly be “connected” to the “integral channels.” See, e.g., Spec. ¶¶ 88, 89, Figs. 5, 6; see also Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1583 (Fed. Cir. 1996) (stating that a construction that excludes a preferred embodiment “is rarely, if ever, correct and would require highly persuasive evidentiary support”). For these reasons, we sustain the rejection of claim 2. Appeal 2022-000018 Application 15/687,477 9 C. Claim 29 Claim 29 depends from claim 1 and adds that the spray head reduces in cross-sectional area between a first end of the spray head to a second end of the spray head including a transitional portion between the cross-sectional area of the first end and the cross-sectional area of the second end, wherein the first end of the spray head is connected to the connection arm. Br. 22 (Claims App.). In the Final Action, the Examiner highlighted Figure 4 of Millan, stating that “the end of the spray head [(element 66)] reduces in cross-sectional area as it converges towards the second end.” Final Act. 4. Appellant argues that the identified “spray head”-nozzle cap 66 in Millan (Final Act. 2)-“does not disclose the feature of a reduced cross- sectional area between two ends and the feature of a transitional portion between the cross-sectional area of the first end and the cross-sectional area of the second end of the spray head as recited.” Br. 12. We are not apprised of error based on this argument. We reproduce below an annotated version of a portion of Figure 4 of Millan. Appeal 2022-000018 Application 15/687,477 10 Figure 4 shows an “exploded perspective view of the nozzle of the spray gun.” Millan, 3:53-54. To this portion of Figure 4, we have added annotations identifying a “first end,” “second end,” and “transitional portion” as we understand the Examiner’s position. With this understanding of the identified aspects, we determine that the record supports the Examiner’s findings as to claim 29. For example, the identified “transitional portion” transitions from the larger cross-sectional area of the “first end” to the smaller cross-sectional area of the “second end.” See Ans. 4 (stating that, “as shown in figure 4 of Millan, the spray head tapers at the top, and thus reduces in cross-sectional area between a first end of the spray head to a second end of the spray head (can also be seen in Fig. 1 component 66)”). Appellant essentially recites the language of the claim and contends that Millan does not disclose that limitation but does not adequately explain why. See 37 C.F.R. § 41.37(c)(1)(iv) (“The arguments shall explain why the examiner erred as to each ground of rejection contested by appellant.”). For these reasons, we sustain the rejection of claim 29. D. Claim 31 Claim 31 depends from claim 1 and adds (1) “a quick-change connector configured to removably connect the high-volume low-pressure end effector to a robotic arm,” (2) “an attachment bracket configured to attach the connection arm to the connector, the attachment bracket having a first end attached to the to the connection arm and a second opposite end attached to the connector,” and (3) “valves positioned within the attachment bracket and configured to control a flow of the air and the fluid through the flexible conduits.” Br. 22 (Claims App.). As to the “quick-change connector,” the Examiner identified the “lower portion of 18 where 26, 32, 38 reside” in Millan, and the Examiner Appeal 2022-000018 Application 15/687,477 11 states that this portion is “capable of being attached to a robotic arm.” Final Act. 4. As to the “attachment bracket,” the Examiner identified the “top portion of 18 where valves reside.” Id. We reproduce below Figure 2 from Millan. Figure 2 depicts a cross-sectional view of spray gun body 18. See Millan, 3:52. First, as to the “quick-change connector,” Appellant argues that “[n]othing in the Millan disclosure supports” the Examiner’s finding because “the air and paint hoses enter the spray gun body at the specified location and thus would prevent a connection, much less a quick change connector as recited in the claim, to a robotic arm.” Br. 12-13. We agree. The Examiner does not actually identify a “quick-change connector” in Millan, but, instead, essentially finds that the structure disclosed could be modified to add a quick-change connector and thus connect to a robotic arm. See Final Act. 4-5; cf. Ans. 5 (“The quick-connector of Millan can be Appeal 2022-000018 Application 15/687,477 12 attached to anything with a matching connector and thus would be capable of being attached to a robotic arm with a matching connector.”). Second, as to the “attachment bracket,” Appellant argues that the Examiner has not provided adequate reasoning or support for the finding that the identified top portion of body 18 of Millan would have been considered an attachment bracket. Br. 13. We agree that the record does not adequately support the Examiner’s finding that the “top portion of 18 where valves reside” in Millan (Final Act. 4) would have been considered an “attachment bracket.” The Examiner does not address this issue in the Answer. See Ans. 4-5. For these reasons, we do not sustain the rejection of claim 31. Rejection 2 - The rejection of claims 3, 4, 8, 18, 19, 21-24, 27, and 30 under 35 U.S.C. § 103 A. Claims 3, 4, 8, 18, 19, and 30 Claims 3, 4, 8, and 30 depend from claim 1. See Br. 17, 18, 22 (Claims App.). Claims 18 and 19 depend from claim 17. Br. 19-20. Appellant does not provide additional arguments for claims 3, 4, 8, 18, and 19, and 30, aside from those presented for claim 1. Br. 13-14. For the reasons above, we are not apprised of error in the rejection of claim 1. See supra Rejection 1. As such, we sustain the rejection of claims 3, 4, 8, 18, 19, and 30. B. Claims 21-24 and 27 For independent claim 21 (and for claims 22-24 and 27, which depend from claim 21), Appellant relies on the same arguments discussed above with regard to claim 1 (see supra Rejection 1). Br. 14. Because we are not apprised of error based on those arguments, we sustain the rejection of claims 21-24 and 27. Appeal 2022-000018 Application 15/687,477 13 Rejection 3 - The rejection of claim 28 under 35 U.S.C. § 103 For claim 28, the Examiner relied on Millan and Smith for certain limitations but stated that that combination “fails to disclose including pins configured to removable connect the connection arm to the spray head and align the spray head within the high-volume low-pressure end effector.” Final Act. 8. The Examiner found, however, that “Knobloch teaches utilizing pins (34) to secure fluid pipe components together to allow for removable connection and alignment of components.” Id. According to the Examiner, The substitution of one known element for another would have been obvious to one having ordinary skill in the art at the time the invention was filed since the substitution of the pin retention fitting of Knobloch would have yielded predictable results, namely, further securing against unwanted rotation of attached components. Final Act. 8. Appellant argues that Knobloch is nonanalogous art, as it is allegedly neither from the same field of endeavor as the claimed invention nor reasonably pertinent to the problem at issue. Br. 14-15. For the reasons below, we are not apprised of error based on this argument. “Two separate tests define the scope of analogous prior art: (1) whether the art is from the same field of endeavor, regardless of the problem addressed and, (2) if the reference is not within the field of the inventor’s endeavor, whether the reference still is reasonably pertinent to the particular problem with which the inventor is involved.” In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004). The prior art at issue need satisfy at least one of the tests to be analogous. We focus on the “reasonably pertinent” test. Appeal 2022-000018 Application 15/687,477 14 Appellant argues that “[t]he problem faced by the inventors, among other things, is reducing the material used and limiting overspray when applying a fluid coating inside tight areas of enclosures” and that “[t]he problem faced by Knobloch concerns providing a flow passage of fluid from a tubular string into the annulus between the tubular string and the casing in which its run while servicing the well bore of oil and gas wells.” Br. 15. Whether a reference is reasonably pertinent “rests on the extent to which the reference of interest and the claimed invention relate to a similar problem or purpose.” Donner Tech., LLC v. Pro Stage Gear, LLC, 979 F.3d 1353, 1359 (Fed. Cir. 2020). A reference is analogous if it is reasonably pertinent to at least one of the problems faced by the inventor(s). See id. at 1361 (“[I]f the two references have ‘pertinent similarities’ such that [the asserted reference] is reasonably pertinent to one or more of the problems to which the [challenged] patent pertains, then [the asserted reference] is analogous art.” (emphasis added)). Here, consistent with the Examiner’s finding on this issue (Ans. 5), we consider the relied-upon pins of Knobloch to have the same purpose as the relevant aspect of the claimed invention: to connect and prevent relative movement of two structures, including outer and inner cylinders. See, e.g., Spec. 87 (“Pins 506 are configured to provide a desired alignment of spray head 408 within high-volume low-pressure end effector 400.”); Knobloch, 5:31-46 (discussing how pins 34 maintain inner sleeve 50 in a given position). Appellant focuses not on the purpose or problem at issue, but on the specific application or field of use in Knobloch-i.e., oil and gas wells. Br. 15. The scope of analogous art is not so limited. See Graham v. John Deere Co., 383 U.S. 1, 35 (1966) (rejecting the argument that the cited references were not “pertinent prior art” and stating that “[t]he problems Appeal 2022-000018 Application 15/687,477 15 confronting [the patentee] and the insecticide industry were not insecticide problems; they were mechanical closure problems”). For these reasons, we sustain the rejection of claim 28. CONCLUSION We affirm in part the Examiner’s rejection of claims 1-9, 17-24, and 27-31. More specifically, we (1) affirm the decision to reject claims 1, 2, 5-7, 9, 17, 20, and 29 based on Millan and Smith, (2) reverse the decision to reject claim 31 based on Millan and Smith, (3) affirm the decision to reject claims 3, 4, 8, 18, 19, 21-27, and 30 based on Millan, Smith, and Yin, and (4) affirm the decision to reject claim 28 based on Millan, Smith, and Knobloch. DECISION SUMMARY In summary: Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1, 2, 5-7, 9, 17, 20, 29, 31 103 Millan, Smith 1, 2, 5-7, 9, 17, 20, 29 31 3, 4, 8, 18, 19, 21-24, 27, 30 103 Millan, Smith, Yin 3, 4, 8, 18, 19, 21-24, 27, 30 28 103 Millan, Smith, Knobloch 28 Overall Outcome 1-9, 17- 24, 27-30 31 Appeal 2022-000018 Application 15/687,477 16 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