Filed: March 12, 2018
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`______________________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`______________________
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`WAGNER SPRAY TECH CORPORATION, Petitioner
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`v.
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`GRACO INC., Patent Owner
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`______________________
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`CASE UNASSIGNED
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`Patent No. 9,675,982
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`______________________
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`PETITION FOR POST GRANT REVIEW
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`Contents
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`
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`Petition for Post Grant Review of U.S. Pat. No. 9,675,982
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`List of Exhibits ........................................................................................................... 5
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`I. INTRODUCTION .................................................................................................. 7
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`II. COMPLIANCE WITH REQUIREMENTS OF POST GRANT REVIEW
`PETITION .................................................................................................................. 7
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`A. Certification That Patent May Be Contested .................................................... 7
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`B. Fee for Post Grant Review (37 C.F.R. §42.15(a)) ............................................ 7
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`C. Mandatory Notices (37 C.F.R. §42.8(b)) ......................................................... 7
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`1. Real Parties-in-Interest (§42.8(b)(1)) ............................................................ 7
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`2. Related Matters (§42.8(b)(2)) ....................................................................... 8
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`3. Lead and Backup Lead Counsel (§42.8(b)(3)) .............................................. 8
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`4. Service Information (§42.8(b)(4)) ................................................................. 8
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`5. Power of Attorney (§42.10(b)) ...................................................................... 8
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`D. Word Count Compliance (§42.24(a)(1)(i) ......................................................... 9
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`III. IDENTIFICATION OF CLAIMS BEING CHALLENGED .............................. 9
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`A. Identification of Prior Art and Challenged Claims .......................................... 9
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`IV. OVERVIEW OF THE ʼ982 PATENT ...........................................................10
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`A. Brief Description of the ’982 Patent ...............................................................10
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`B. ʼ982 Patent Prosecution History .....................................................................11
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`C. Effective Filing Date of the ʼ982 Patent .........................................................13
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`D. Proposed Claim Constructions .......................................................................17
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`E. Level of Ordinary Skill in the Art ..................................................................21
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`V. DETAILED EXPLANATION OF GROUNDS FOR OBVIOUSNESS ..........21
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`A. Ground 1 – Obviousness of Claims 1-17 based on Carey, Torntore, Calder
`and Johnson. ..........................................................................................................21
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`1. Identification and Qualification of Prior Art .................................................21
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`i. Carey, Exhibit 1005 ...................................................................................21
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`ii. Torntore, Exhibit 1006 .............................................................................22
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`iii. Calder, Exhibit 1007 ...............................................................................23
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`Petition for Post Grant Review of U.S. Pat. No. 9,675,982
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`iv. Johnson, Exhibit 1008 .............................................................................24
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`2. Motivation to Combine Prior Art ..................................................................25
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`i. The USPTO’s Motivation to Combine Carey, Torntore and Calder
`was Unchallenged in Prosecution and is Still Valid. .................................26
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`ii. Combining Johnson with the Unchallenged USPTO Combination
`would have been Obvious ............................................................................27
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`iii. These References All Originate in the Field of Airless Spray Tips ...28
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`3. Teachings of the Combination .......................................................................28
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`B. Ground 2 – Obviousness of Claims 1-17 based on Liska, Torntore and
`Johnson. ................................................................................................................62
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`1. Identification and Qualification of Prior Art .................................................62
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`i. Liska, Exhibit 1009 ....................................................................................62
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`ii. Torntore, Exhibits 1006 ...........................................................................64
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`2. Motivation to Combine Prior Art ..................................................................64
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`3. Teachings of the Combination .......................................................................64
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`C. Ground 3 – Obviousness of Claims 1-5, 9-12 and 16-17 Based on Johnson and
`UMN. ..................................................................................................................100
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`1. Identification and Qualification of Prior Art ...............................................100
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`i. Johnson, Exhibit 1008 .............................................................................100
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`ii. UMN, Exhibits 1010, 1018-1019 ............................................................101
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`2. Motivation to Combine Prior Art ................................................................104
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`3. Teachings of the Combination .....................................................................105
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`D. Ground 4 – Obviousness of Claims 6-8 and 14-15 based on Johnson, UMN
`and Leisi. .............................................................................................................145
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`1. Identification and Qualification of Prior Art ...............................................145
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`i. Johnson, Exhibit 1008 .............................................................................145
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`ii. UMN, Exhibit 1010 .................................................................................145
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`iii. Leisi, Exhibit 1011 .................................................................................146
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`2. Motivation to Combine Prior Art ................................................................146
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`3. Teachings of the Combination .....................................................................147
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`Petition for Post Grant Review of U.S. Pat. No. 9,675,982
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`E. Ground 5 – Obviousness of Claim 13 based on Johnson, UMN and TeeJet. 150
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`1. Identification and Qualification of Prior Art ...............................................150
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`i. TeeJet, Exhibit 1012 ................................................................................150
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`2. Motivation to Combine Prior Art ................................................................150
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`3. Teachings of the Combination .....................................................................151
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`VI. CONCLUSION ................................................................................................152
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`List of Exhibits
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`Petition for Post Grant Review of U.S. Pat. No. 9,675,982
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`Ex.1001
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`U.S. Patent No. 9,675,982 (“the ‘982 Patent”)
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`Ex.1002
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`Declaration of Dr. Pinhas Ben-Tzvi
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`Ex.1003
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`the ʼ982 Patent December 29, 2016 Non-Final Office Action
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`Ex.1004
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`the ʼ982 Patent March 30, 2017 Notice of Allowance
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`Ex.1005
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`U.S. Patent No. 5,749,528 A (“Carey”)
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`Ex.1006
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`U.S. Patent No. 5,505,381 A (“Torntore”)
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`Ex.1007
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`U.S. Patent No. 4,074,857 (“Calder”)
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`Ex.1008
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`U.S. Patent Publication No. 2012/0298771 A1 (“Johnson”)
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`Ex.1009
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`U.S. Patent No. 6,264,115 B1 (“Liska”)
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`Ex.1010
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`UMN Design Show Figures (“UMN”)
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`Ex.1011
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`U.S. Patent Publication No. 2004/0195354 A1 (“Leisi”)
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`Ex.1012
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`Dultmeir Sales Liquid Handling 2013 Product Catalog (“TeeJet”)
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`Ex.1013
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`U.S. Provisional Application Serial No. 61/878,191 (“the ’191
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`application”)
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`Ex.1014
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`U.S. Provisional Application Serial No. 61/929,403 (“the ’403
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`application”)
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`Ex.1015
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`U.S. Provisional Application Serial No. 61/987,654 (“the ’654
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`application”)
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`Ex.1016
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`U.S. Patent No. 9,010,658 B2 (“Johnson Patent”)
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`Petition for Post Grant Review of U.S. Pat. No. 9,675,982
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`Ex.1017
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`February 18, 2015 Amendment to Application Serial No. 13/521,696
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`(“Johnson Application Amendment”)
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`Ex.1018
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`Photos taken by Joseph Kieffer at the UMN Design Show
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`Ex.1019
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`UMN Website for UMN Design Show
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`Ex.1020
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`Joseph Kieffer Declaration
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`Ex.1021
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`UMN Employee Declaration
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`Ex.1022 UMN Server Index
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`Ex.1023
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`Graco TrueCoat 360 Owner’s Manual
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`Ex.1024
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`Curriculum vitae of Dr. Pinhas Ben-Tzvi
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`Ex.1025
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`the ʼ982 Patent March 13, 2017 Amendment
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`Ex.1026
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`Combination Video of Carey, Torntore, Calder and Johnson.
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`Ex.1027
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`Combination Video of Torntore and Liska
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`Ex.1028
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`Combination Video of Johnson and UMN
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`Ex.1029
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`Animation of Carey Abutment
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`Ex.1030
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`Power of Attorney
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`I. INTRODUCTION
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`Petition for Post Grant Review of U.S. Pat. No. 9,675,982
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`Pursuant to 35 U.S.C. 321 and 37 C.F.R. §42.200, Petitioner Wagner Spray
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`Tech Corporation (“Wagner”) petitions for post-grant review of claims 1-17 of U.S.
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`patent 9,675,982 (Ex.1001, “the ʼ982 patent”).
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`II. COMPLIANCE WITH REQUIREMENTS OF POST GRANT REVIEW
`PETITION
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`A. Certification That Patent May Be Contested
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`Petitioner certifies that the ’982 Patent is available for PGR. The ‘982 Patent
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`non-provisional application was filed on November 28, 2016 and hence is a Post-
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`AIA patent application. The ʼ982 Patent issued on September 13, 2017 and is
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`available for Post Grant Review until March 13, 2018.
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` Petitioner additionally certifies they are not barred or estopped from
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`requesting PGR on the grounds identified herein.
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`B.
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`Fee for Post Grant Review (37 C.F.R. §42.15(a))
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`The required fees are submitted herewith. The PTO is authorized to charge
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`any additional fees due at any time during this proceeding to Deposit Account No.
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`50-6234.
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`C. Mandatory Notices (37 C.F.R. §42.8(b))
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`1.
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`Real Parties-in-Interest (§42.8(b)(1))
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`The real party of interest for this petition is Wagner Spray Tech Corporation
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`(“Wagner”) located at 1770 Fernbrook Ln, Plymouth, MN 55447.
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`2.
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`Related Matters (§42.8(b)(2))
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`Petition for Post Grant Review of U.S. Pat. No. 9,675,982
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`There are no related PTAB or Federal Court matters to this petition. The
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`ʼ982 Patent does have a parent application, application serial number 15/022,044,
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`which is still pending.
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`3.
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`Lead and Backup Lead Counsel (§42.8(b)(3))
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`LEAD COUNSEL
`Christopher Christenson
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`BACK-UP COUNSEL
`Brad D. Pedersen
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`Kelly, Holt & Christenson PLLC
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`Patterson Thuente Pedersen, P.A.
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`141 West First Street, Suite 100
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`4800 IDS Center, 80 South 8th Street
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`Waconia, MN 55387
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`Minneapolis, MN 55402-2100
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`Phone: 952-467-6088
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`Phone: (612) 349-5774
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`Fax: 952-373-8920
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`pedersen@ptslaw.com
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`cchristenson@khcip.com
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`Registration No. 32,432
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`Registration No. 42,413
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`4. Service Information (§42.8(b)(4))
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`The following email and the addresses provided above can be used for
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`service and all communications with all counsel:
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`Wagner-Graco-Team@khcip.com
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`5. Power of Attorney (§42.10(b))
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`A Power of Attorney accompanies this Petition.
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`D. Word Count Compliance (§42.24(a)(1)(i)
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`Petition for Post Grant Review of U.S. Pat. No. 9,675,982
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`The undersigned attorney certifies that this Petition conforms to the
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`requirements of 37 CFR § 42.24(a)(1)(ii). The length of this Petition, counted in
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`compliance with § 42.24(a)(1) and relying on the word count of the word-processing
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`system, is 15,443 words. This Petition was prepared using Microsoft Word 365 and
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`the word processing program has been applied specifically to include all text,
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`including headings, footnotes, and quotations for word count purposes.
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`III. IDENTIFICATION OF CLAIMS BEING CHALLENGED
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`Pursuant to 37 C.F.R. §§42.22(a)(1) and 42.104(b), claims 1-17 of the ‘982
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`Patent are unpatentable for the following reasons.
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`A. Identification of Prior Art and Challenged Claims
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`1. Ground 1 – Obviousness of Claims 1-17 based on Carey, Torntore, Calder
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`and Johnson.
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`2. Ground 2 – Obviousness of Claims 1-17 based on Liska, Torntore and
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`Johnson.
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`3. Ground 3 – Obviousness of Claims 1-5, 9-12 and 16-17 based on
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`Johnson and UMN.
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`4. Ground 4 – Obviousness of Claims 6-8 and 14-15 based on Johnson, UMN
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`and Leisi.
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`5. Ground 5 – Obviousness of Claim 13 based on Johnson, UMN and TeeJet.
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`IV. OVERVIEW OF THE ʼ982 PATENT
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`A. Brief Description of the ’982 Patent
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`Petition for Post Grant Review of U.S. Pat. No. 9,675,982
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`The ʼ982 patent is titled “Spray Tip and Method of Manufacture,” and “relates
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`to a spray tip with a turbulating tip piece and pre-orifice piece locked within an over
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`molded tip body.” (Ex.1001, xx) FIG. 2 is exemplary of the disclosure1:
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` 1
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` Coloration will be consistently used throughout this petition for clarity. Each
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`color will be used as follows: █ Tip Piece, █ Pre-Orifice Piece, █ Tip Body,
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`█ Turbulating Chamber, █ Stepped Section, █ Inlet Passage, █ Outlet Aperture
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`Petition for Post Grant Review of U.S. Pat. No. 9,675,982
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`FIG. 1 of the ʼ982 patent appears to show a Graco TrueCoat 360 Airless Paint
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`Sprayer (see below) demonstrating that the ʼ982 patent was intended for airless
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`applications.
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`ʼ982 Patent, Ex.1001, FIG. 1
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`TrueCoat 360, Ex.1023 at 1.
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`B. ʼ982 Patent Prosecution History
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`The ʼ982 patent was filed as a Track One application on November 28, 2016,
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`and is a continuation of Application with Serial Number 15/022,044, filed on March
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`15, 2016, which is a §371 of PCT/US 2014/055804, filed on September, 16, 2014,
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`which claims the benefit of U.S. Provisional Patent Applications with Serial
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`Numbers 61/878,191, filed on September 16, 2013, (Ex.1013) and 61/929,403 filed
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`on January 20, 2014, (Ex.1014) and 61/987,654, filed on May 2, 2014. (Ex.1015).
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`Petition for Post Grant Review of U.S. Pat. No. 9,675,982
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`On December 29, 2016, the PTO issued an Office Action, (Ex.1003), rejecting
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`all pending claims as unpatentable over Carey (Ex.1005), Torntore (Ex.1006),
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`Calder (Ex.1007), Leisi (Ex.1011).
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`Before filing their response, the Applicant engaged in an Applicant-initiated
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`interview with the Examiner on March 6, 2017.
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`On March 13, 2017, the Applicant amended claims 1, 5, 7, 19 and 20, some
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`of the amendments are as follows:
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`• “abutting the pre-orifice piece” in claim 1. Ex.1025,
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`• “wherein the tip piece and the pre-orifice piece fully defined the
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`turbulating chamber, the chamber section of the pre-orifice piece has an
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`upstream frustoconical surface that widens in a downstream direction and
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`that defines an upstream portion of the turbulating chamber, and the tip
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`piece is a downstream frustoconical surface of the turbulating chamber that
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`narrows in the downstream direction and that defines a downstream
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`portion of the turbulating chamber” in claim 1. Id.
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`• “downstream frustoconical” in claim 7. Id.
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`• “having an upstream frustoconical surface” in claim 19. Id.
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`• “abutting the pre-orifice piece” in claim 19. Id.
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`• “that are situated downstream from the downstream frustoconical surface”
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`in claim 19. Id.
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`Petition for Post Grant Review of U.S. Pat. No. 9,675,982
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`• “wherein the tip piece and the pre-orifice piece fully define the turbulating
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`chamber” in claim 20. Id.
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`The USPTO then allowed all pending claims as reflected in a Notice of
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`Allowance dated March 30, 2017. (Ex.1004). The Notice of Allowance stated:
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`“The prior art of record that comes closest to teaching all of the
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`claimed features/components is the Carey reference however Carey
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`fails to teach abutment of the tip piece and the pre-orifice piece as
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`well as the plurality of cylindrical steps, and fully defining the
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`turbulating chamber as described. Torntore teaches the cylindrical
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`steps but also fails to teach the abutment and as such the turbulating
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`chamber.” Id.
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`This Notice of Allowance did not address the earlier contradicting statement
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`in the Office Action that stated “it would have been obvious to one of ordinary skill
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`in the art at the time of the invention to abut and insert the pre-orifice piece with the
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`tip piece since it would allow removal of an interstitial seal which would allow for
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`a smooth transition between the components as well as an easier assembly feature
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`(by inserting and therefore abutting, this would be easier to assemble than holding 3
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`floating pieces together).” (Ex.1003, pg.8).
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`C. Effective Filing Date of the ʼ982 Patent
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`The term “effective filing date” for a patent means the actual filing date of the
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`application for the patent or the filing date of the earliest application for which the
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`Petition for Post Grant Review of U.S. Pat. No. 9,675,982
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`patent or application is entitled to a right of priority. 35 U.S.C. §100(i). The effective
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`priority date is relevant here in grounds 3-5, because these grounds rely on a
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`reference dated before the non-provisional application of the ʼ982 Patent but after
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`one of the three provisional applications to which the ʼ982 Patent claims priority.
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`A claim may be entitled to a priority date based on an earlier filed patent
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`application only if the earlier application fully supports the claimed invention in
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`compliance with the written description and enablement requirements of 35 U.S.C.
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`§112(a). Dynamic Drinkware, LLC. v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378
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`(Fed. Cir. 2015) (“the specification of the provisional must ‘contain a written
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`description of the invention and the manner and process of making and using it, in
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`such full, clear, concise, and exact terms,’ 35 U.S.C. §112 ¶1, to enable an ordinarily
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`skilled artisan to practice the invention claimed in the non-provisional application.”)
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`Section 112(a) requires that a patent’s written description “clearly allow persons of
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`ordinary skill in the art to recognize that the inventor invented what is claims.” Ariad
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`Pharm., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (Quotation
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`omitted). Section 112(a) “limits patent protection to those who actually perform the
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`difficult work of ‘invention’—that is, conceive of the complete and final invention
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`with all its claimed limitations—and disclose the fruits of that effort to the public.”
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`Id. at 1353.
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`Petition for Post Grant Review of U.S. Pat. No. 9,675,982
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`The written description requirement is “especially meaningful when a
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`patentee is claiming entitlement to an earlier filing date.” Enzo Biochem, Inc. v. Gen-
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`Probe Inc., 323 F.3d 956, 969 (Fed. Cir. 2002). Requiring applicants to clearly
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`articulate and disclose what they have invented, and limiting subsequent claims to
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`the scope of that disclosure, are critical safeguards in preventing the retroactive
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`claiming of others’ inventions. Chiron Corp. v. Genentech, Inc., 363 F.3d 1247,
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`1255 (Fed. Cir. 2004) (“The written description requirements prevents applicants
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`from using the amendment process to update their disclosures (claims or
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`specifications) during their pendency before the patent office. Otherwise applicants
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`could add new matter to their disclosures and date them back to their original filing
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`date, thus defeating an accurate accounting of the priority of the invention.”). This
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`requirement is particularly important for patents issuing from continuation
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`applications, such as the ʼ982 patent. E.g., Agilent Technologies, Inc. v. Affymetrix,
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`Inc., 567 F.3d 1366, 1379 (Fed. Cir. 2009) (“The written description doctrine
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`prohibits new matter from entering into claim amendments, particularly during the
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`continuation process.”).
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`Petition for Post Grant Review of U.S. Pat. No. 9,675,982
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`The ʼ191 provisional application is directed to a molded spray tip having two
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`different tips 311 and 515. See (Ex.1013,
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`FIG.1-2) (right). However, this application
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`does not disclose or suggest a “pre-orifice
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`piece,” “upstream frustoconical surface,”
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`“stepped section,” “turbulating chamber,”
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`“abutting” or many of the other limitations
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`as recited in the independent claims of the
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`ʼ982 patent. Because the ʼ982 claims are not
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`supported by the written description of the
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`ʼ191 application, they are not entitled to the
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`ʼ191 provisional application’s filing date of
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`September 16, 2013.
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`This leaves the filing date of January
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`Ex.1013, FIGS. 1-2
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`20, 2014 of the 61/929,403 provisional
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`application as the earliest possible effective filing date of the ʼ982 patent.2
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` Petitioner expressly reserves the right to further challenge the effective filing date
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` 2
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`of the ʼ982 patent in other forums.
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`D. Proposed Claim Constructions
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`Petition for Post Grant Review of U.S. Pat. No. 9,675,982
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`The claim terms in this unexpired patent should receive the “broadest
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`reasonable construction in light of the specification.” 37 C.F.R. §42.100(b). Under
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`that standard, the claim terms are given their “ordinary and customary meaning,” as
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`would be understood by one of ordinary skill in the art in the context of the entire
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`disclosure. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007).
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`Where a patentee provides an express definition for a term, that definition controls.
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`Sinorgchem Co. v. ITC, 511 F.3d 1132, 1136 (Fed. Cir. 2007). (holding that a
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`patentee is bound to its definition where “the drafter clearly, deliberately, and
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`precisely defined the term”).
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`For the purposes of this proceeding, and its applicable “broadest reasonable
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`construction” standard, Wagner proposes constructions for the term identified
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`below. Any remaining terms should be given their plain and ordinary meaning
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`according to the “broadest reasonable construction” standard. Because the claim
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`construction standard in this proceeding differs from the standard applicable to
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`litigation in a district court, Wagner expressly reserves the right to argue in other
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`forums for a different construction for any claim term in the ʼ982 patent.
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`1. “Pre-Orifice Piece”
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`The phrase “pre-orifice piece” appears in each of independent claims 1, 16
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`and 17 of the ʼ982 patent and many times in the ʼ982 specification, without a
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`Petition for Post Grant Review of U.S. Pat. No. 9,675,982
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`
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`specifically defining a structure beyond stating,
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`in column 3, lines 17-22, that “pre-orifice piece
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`104 … include[s] chamber surface [110] … [and]
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`further includes lip 111 and inlet passage 112”
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`See (Ex.1001 at 3:17-22).
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`The broadest reasonable interpretation of a
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`“pre-orifice piece” would, therefore, be the
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`upstream piece forming the chamber, that has a
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`narrow fluid inlet to guide fluid downstream into the chamber. (Ex.1002, Pg.13-14).
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`2. “Tip Piece”
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`The phrase
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`tip piece
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`is defined
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`in
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`paragraph
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`[0001] of
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`the specification as
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`including “a
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`turbulating
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`stepped pattern
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`converging
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`towards
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`an outlet
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`aperture.”
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`(Ex.1001, C2:L28-29). This definition is also
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`consistent with all Figures of the ʼ982 patent that
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`show a tip piece. Id. at FIG. 2 FIG. 3A-C, FIG.
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`5. This definition is also consistent with the
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`understanding of one of ordinary skill in the art.
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`(Ex.1002, Pg.14-15).
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`Petition for Post Grant Review of U.S. Pat. No. 9,675,982
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`Therefore, the broadest reasonable rotation of a “tip piece” would be a
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`component with an outlet aperture and some “turbulating” pattern.
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`3. Abutting
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`The term “abutting” appears in each of
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`independent claims 1, 16 and 17 of the ʼ982
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`patent. The ordinary and customary meaning of
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`this limitation is to touch, as understood by one of
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`ordinary skill in the art in the context of the entire
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`disclosure. (Ex.1002, Pg.16-17).
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`There is no express definition in the ‘982
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`Patent to rebut the ordinary and customary
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`meaning, and the limited discussion in the ‘982
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`Patent specification is consistent with the ordinary and customary meaning.
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`Therefore, petitioner submits, based on the ordinary and customary meaning, and
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`the absence of a rebutting definition in the disclosure of the specification, that the
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`broadest reasonable interpretation of “abutting” is touching or joining.
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`4. Frustoconical Surface
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`The limitation “frustoconical surface” appears in each of independent claims
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`1, 16 and 17 of the ʼ982 patent. The ordinary and customary meaning of this
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`limitation is a surface having the shape of an inner surface of a cone frustum, as
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`Petition for Post Grant Review of U.S. Pat. No. 9,675,982
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`
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`understood by one of ordinary skill in the art in the
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`context of the entire disclosure. (Ex.1002, Pg.16).
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`There is no express definition in the ʼ982
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`patent to rebut the ordinary and customary
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`meaning, and
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`the
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`limited discussion
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`the
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`specification is consistent with the ordinary and
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`customary meaning. Therefore,
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`petitioner
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`submits, based on the ordinary and customary
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`meaning, and absence of rebutting definition in
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`the disclosure of the ʼ982 specification, that the broadest reasonable interpretation
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`of “frustoconical surface” is a cone frustum shaped surface.
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`5. Turbulating Chamber
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`The
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`limitation “turbulating chamber”
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`appears in each of independent claims 1, 16 and
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`17 of the ʼ982 patent. As understood by one of
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`ordinary skill in the art in the context of the
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`entire disclosure, a turbulating chamber is a
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`chamber or a cavity formed by the “pre-orifice
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`piece” and “tip piece.” (Ex.1002, Pg.15-16).
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`E. Level of Ordinary Skill in the Art
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`Petition for Post Grant Review of U.S. Pat. No. 9,675,982
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`A person of ordinary skill in the art relevant to the ʼ982 patent would have
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`had at least a bachelor’s degree in mechanical engineering, or a similar field, and
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`two to four years of experience in design of fluidic devices that are made to generate
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`micro-droplets through pneumatic, thermal or electrical actuation or a mechanical
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`technician with an engineering diploma with 4-6 years of actual working experience
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`in spray guns. (Ex.1002, Pg.8-9).
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`
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`V. DETAILED EXPLANATION OF GROUNDS FOR OBVIOUSNESS
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`A. Ground 1 – Obviousness of Claims 1-17 based on Carey, Torntore, Calder and
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`Johnson.
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`1. Identification and Qualification of Prior Art
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`i. Carey, Exhibit 1005
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`a. Qualification
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`US Patent No. 5,749,528 (“Carey”) issued on May 12, 1998. Thus, Carey is
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`prior art to the ʼ982 Patent under 35 U.S.C. §102(a)(1). Carey was used by the
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`Examiner in prosecution. (Ex.1003, Pg.4).
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`b. Scope and Content Summary
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`Carey discloses a reversible spray tip, shown in FIG. 4 (below). The spray tip
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`of Carey includes a tip body 18 including a pre-orifice piece 49 and a tip piece 48.
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`Petition for Post Grant Review of U.S. Pat. No. 9,675,982
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`(Ex.1005, C4:L28-34). A pin 54 nests within a recess on the end of tip piece 48 to
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`diffuse fluids when the tip is reversed. Id. Pre-orifice piece 49 is press-fitted behind
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`pin 54 into tip piece 48 to maintain the pins position within the recess. Id.
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`
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`ii. Torntore, Exhibit 1006
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`a. Qualification
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`US Patent No. 5,505,381 A (“Torntore”) issued on April 9, 1996. Thus,
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`Torntore is prior art to the ʼ982 Patent under 35 U.S.C. §102(a)(1). Torntore was
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`used by the Examiner in prosecution. (Ex.1003, Pg.4).
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`b. Scope and Content Summary
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`Torntore discloses a reversible spray tip, shown in FIG. 4. The spray tip of
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`Torntore includes a tip body 20a including a pre-orifice piece (yellow) and a tip
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`Petition for Post Grant Review of U.S. Pat. No. 9,675,982
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`piece F. (Ex.1006, FIG.4). The tip piece F comprises a stepped section (orange)
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`immediately preceding an outlet aperture (pink). Id.
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`
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`iii. Calder, Exhibit 1007
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`a. Qualification
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`US Patent No. 4,074,857 (“Calder”) issued on February 21, 1978. Thus,
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`Calder is prior art to the ʼ982 Patent under 35 U.S.C. §102(a) (1). Calder was used
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`by the Examiner in prosecution. (Ex.1003, Pg.7).
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`b. Scope and Content Summary
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`Calder discloses a reversible spray tip, shown in FIG. 2. The spray tip of
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`Calder has a tip piece 14 and a pre-orifice piece 18. (Ex.1007, C2:L38-42). The tip
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`and pre-orifice piece form a turbulating chamber (green). Id. FIG. 2. The turbulating
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`chamber is defined by conical/tapered sections on both the tip piece 14 and the pre-
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`orifice piece 18. Id. Ref.80.
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`
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`iv. Johnson, Exhibit 1008
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`a. Qualification
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`US Patent Publication No. 2012/0298771 A1 (“Johnson”) published on
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`November 29, 2012. Thus, Johnson is prior art to the ʼ982 Patent under 35 U.S.C.
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`§102(a) (1). Johnson was commonly owned by Graco during the ʼ982 prosecution,
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`however, it was not cited by Graco or the examiner.
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`Petition for Post Grant Review of U.S. Pat. No. 9,675,982
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`
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`b. Scope and Content Summary
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`Johnson discloses a reversible spray tip, best
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`shown in FIG. 2 (right). The spray tip of Johnson
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`includes a tip body 112 that retains a pre-orifice
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`piece (yellow) and a tip piece 114. (Ex.1008, FIG.
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`2). Jonhson’s pre-orifice piece is described in the
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`claims of its issued patent as “upstream of and
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`abutting the spray tip” (Ex.1016, C2:L53-55).
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`Johnson illustrates fluid flow as through an
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`inlet passage 116 into a turbulating chamber
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`formed between pre-orifice piece (yellow) and tip
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`piece 114. The fluid then flows through a narrow
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`Ex.1008, FIG. 2
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`portion of the tip piece 114 before being expelled
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`through outlet orifice as a spray. (Ex.1016, FIG.
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`2).
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`2. Motivation to Combine Prior Art
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`Petitioner respectfully submits that the combination of Carey, Torntore,
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`Calder and Johnson is proper. During prosecution of the ʼ982 patent, one of the
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`Examiner’s initial rejections was a combination of Carey, Torntore and Calder.
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`Petition for Post Grant Review of U.S. Pat. No. 9,675,982
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`(Ex.1003, Pg.7). The motivation or feasibility to combine these prior art references
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`was unchallenged by the Patent Owner. (Ex.1025, Pg.9).
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`i. The USPTO’s Motivation to Combine Carey, Torntore and Calder was
`Unchallenged in Prosecution and is Still Valid.
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`As noted in the Office Action, Carey teaches a majority of the claim language
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`including: the tip body, tip piece, pre-orifice piece, and turbulating chamber.
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`(Ex.1003, Pg.4). The Office Action noted that Carey, while having one step, did not
`
`have a plurality of steps. Id. to show that this claim feature was known the Office
`
`Action cited Torntore, stating that “it would have been obvious to one of ordinary
`
`skill in the art at the time of the invention to use a plurality of steps as taught by
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`Torntore to the structure of Carey since a plurality of more gradual steps is known
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`to moderate the flow rate change and as a result provide a more consistent spraying
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`output while still increasing the speed.” Id. at 4-5.
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`The same Office Action also cited Calder as combinable with Carey and
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`Torntore. Id. at 7. Calder discloses a tip piece with a frustoconical surface and a pre-
`
`orifice piece with a frustoconical surface which could be combined with Carey and
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`Torntore. (Ex.1002, Pg.xx). The Office Action stated that “it would have been
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`obvious to one of ordinary skill in the art at the time of the invention to have a conical
`
`shaped upstream section of the turbulating chamber […] since it would allow for
`
`easier machining […] as well as smoother transition to turbulence and pressure
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`Petition for Post Grant Review of U.S. Pat. No. 9,675,982
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`increases.” (Ex.1003, Pg.7). The same reasoning was used as motivation to include
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`a downstream conical shape. (Ex.1002,Pg.27-28)
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`ii. Combining Johnson with the Unchallenged USPTO Combination would
`have been Obvious
`
`Johnson was not cited in the ʼ982 prosecution. However, Johnson does teach
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`the claim limitation that was cited in the ʼ982 notice of allowance as being the
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`“reason for allowance.” Specifically, the Notice of Allowance noted which claim
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`features were missing from the art of record:
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`“Carey fails to teach abutment of the tip piece and the pre-orifice
`
`piece as well as the plurality of cylindrical ste