Trials@uspto.gov
`571.272.7822
`
`
`
`
`Paper 10
`Entered: September 24, 2018
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`WAGNER SPRAY TECH CORPORATION,
`Petitioner,
`
`v.
`
`GRACO MINNESOTA INC.,
`Patent Owner.
`____________
`
`Case PGR2018-00049
`Patent 9,675,982 B2
`____________
`
`
`Before LINDA E. HORNER, MICHAEL L. WOODS, and
`SEAN P. O’HANLON, Administrative Patent Judges.
`
`WOODS, Administrative Patent Judge.
`
`
`
`
`DECISION
`Denying Institution of Post-Grant Review
`37 C.F.R. § 42.208
`
`

`

`PGR2018-00049
`Patent 9,675,982 B2
`
`
`I. INTRODUCTION
`Wagner Spray Tech Corporation (“Petitioner”) filed a Petition (Paper
`1, “Pet.”) requesting post-grant review of all claims (claims 1–17) of U.S.
`Patent No. 9,675,982 B2 (Ex. 1001, “the ’982 patent”). Pet. 7; Ex. 1001,
`7:64–10:45. Graco Minnesota Inc. (“Patent Owner”) filed a preliminary
`response (Paper 9, “Prelim. Resp.”) to the Petition.
`A post-grant review may not be instituted unless “the information
`presented in the petition filed under section 321, if such information is not
`rebutted, would demonstrate that it is more likely than not that at least 1 of
`the claims challenged in the petition is unpatentable.” 35 U.S.C. § 324(a).
`For the reasons set forth below, the Petition fails to demonstrate that it is
`more likely than not that any of the challenged claims is unpatentable.
`Accordingly, we do not institute post-grant review of any claim of the ’982
`patent.
`
`
`A. Related Proceedings
`The parties represent that there are no related matters before the Board
`or in a Federal Court. Pet. 8; Paper 3, 1. The parties represent, however,
`that the parent application to the ’982 patent (U.S. Application No.
`15/022,044) is still pending before the Office. Pet. 8; Paper 3, 1.
`
`
`B. The ’982 Patent (Ex. 1001)
`The ’982 patent is entitled “Spray Tip and Method of Manufacture”
`and describes a spray tip for use in paint spraying, for example. Ex. 1001,
`[54], 1:19–25. In particular, the ’982 patent states that its spray tip improves
`
`
`
`
`2
`
`

`

`PGR2018-00049
`Patent 9,675,982 B2
`
`the uniformity of a spray pattern by increasing the turbulence of the fluid
`(e.g., paint). See id. at 3:53–57. By increasing the turbulence, the ’982
`patent describes that undesirable “tails” or high concentration of fluid at the
`fringe of the spray pattern is reduced. See id. at 3:57–60. To illustrate an
`embodiment of the ’982 patent, we reproduce Figure 2, below:
`
`
`According to the ’982 patent, Figure 2 illustrates a cross-sectional
`perspective view of a spray tip. Ex. 1001, 2:4–5. Specifically, Figure 2
`depicts spray tip 22 with tip body 100, tip piece 102, and pre-orifice piece
`104. Id. at 3:15–17. Tip piece 102 and pre-orifice piece 104 include
`chamber surfaces 108 and 110 that define turbulating chamber 106. Id. at
`
`
`
`
`3
`
`

`

`PGR2018-00049
`Patent 9,675,982 B2
`
`3:17–19. To illustrate particular turbulating features that are at issue in this
`decision, we reproduce Figure 3A, below (see id. at 3:63–65):
`
`
`
`Figure 3A depicts a cross-sectional view of one of three alternative
`embodiments of the ’982 patent’s tip piece, denoted here as tip piece 102a.
`Id. at 4:20–22. As shown above, tip piece 102a depicts outlet passage 124a
`with a plurality of cylindrical sections, denoted as 126, with steps 128
`converging from turbulating chamber 106a to outlet orifice 24. Id. at 4:30–
`33. Figure 3A also depicts turbulating chamber 106a as having a conical or
`frustoconical wall at chamber surface 108a. Id. at 4:33–35. Cylindrical
`sections 126 and steps 128 “further turbulate fluid flow from turbulating
`chamber” 106a to its outlet aperture, thereby reducing pressure loss across
`outlet orifice 24. Id. at 4:36–38 (emphasis added).
`
`
`C. Illustrative Claim
`Claims 1, 16, and 17 are independent, with claims 2–15 depending
`directly or indirectly from claim 1. Ex. 1001, 7:64–10:45. We reproduce
`
`
`
`
`4
`
`

`

`PGR2018-00049
`Patent 9,675,982 B2
`
`claim 1, below, with emphases added to limitations discussed in this
`Decision:
`
`1. A spray tip for atomizing a fluid in a spray, the spray
`tip comprising:
`a tip body, the tip body having a cylindrical portion having
`an exterior circumference, the cylindrical portion having an
`aperture that extends through the cylindrical portion, the aperture
`having a pair of openings respectively located on opposite sides
`of the exterior circumference, wherein the fluid moves through
`the aperture in an upstream to downstream orientation;
`a pre-orifice piece located in the aperture of the tip body,
`the pre-orifice piece having an inlet passage and a chamber
`section, the inlet passage located upstream of the chamber
`section, the inlet passage is narrower than the chamber section;
`and
`
`a tip piece located in the aperture of the tip body
`downstream of the pre-orifice piece and abutting the pre-orifice
`piece, the tip piece having a stepped section and an outlet
`aperture, the outlet aperture downstream of the stepped section,
`the outlet aperture is narrower than the stepped section, the
`stepped section comprising a plurality of cylindrical steps, the
`plurality of cylindrical steps arranged sequentially converging
`from widest upstream and narrowing downstream toward the
`outlet aperture,
`wherein the pre-orifice and the tip piece together form a
`turbulating chamber that is located between the inlet passage and
`the outlet aperture and the fluid flows through each of the inlet
`passage, the chamber section, and the stepped section before
`being released through the outlet aperture as the spray, and
`wherein the tip piece and the pre-orifice piece fully define
`the turbulating chamber, the chamber section of the pre-orifice
`piece has an upstream frustoconical surface that widens in a
`downstream direction and that defines an upstream portion of the
`turbulating chamber, and the tip piece has a downstream
`frustoconical surface of the turbulating chamber that narrows in
`the downstream direction and that defines a downstream portion
`of the turbulating chamber.
`
`
`
`5
`
`

`

`PGR2018-00049
`Patent 9,675,982 B2
`
`
`
`Id. at 7:64–8:36 (emphases added).
`
`
`Name
`
`D. Relied-Upon Art
`Reference
`
`Liska
`UMN
`
`U.S. Pat. No. 5,749,528, issued May 12, 1998
`Carey
`Torntore U.S. Pat. No. 5,505,381, issued Apr. 9, 1996
`Calder
`U.S. Pat. No. 4,074,857, issued Feb. 21, 1978
`Johnson
`U.S. Pat. Pub. No. 2012/0298771 A1, published
`Nov. 29, 2012
`U.S. Pat. No. 6,264,115 B1, issued July 24, 2001
`Petitioner’s reference to “UMN” is to three
`separate exhibits that relate to a mechanical
`engineering student design show at the University
`of Minnesota in 2013.
`U.S. Pat. Pub. No. 2004/0195354 A1, published
`Oct. 7, 2004
`Dultmeier Sales Liquid Handling Catalog, 2013
`
`Leisi
`
`TeeJet
`
`
`Ex.
`No(s).
`1005
`1006
`1007
`1008
`
`1009
`1010,
`1018,
`and
`1019
`1011
`
`1012
`
`E. Alleged Grounds of Unpatentability
`Petitioner contends that claims 1–17 of the ’982 patent are
`unpatentable under the following grounds:
`Claim(s)
`Ground Basis
`Prior Art
`1–17
`1
`§ 103
`Carey, Torntore, Calder, and Johnson
`1–17
`2
`§ 103
`Liska, Torntore, and Johnson
`1–5, 9–12, 16, and 17
`3
`§ 103
`Johnson and UMN
`6–8, 14, and 15
`4
`§ 103
`Johnson, UMN, and Leisi
`13
`5
`§ 103
`Johnson, UMN, and TeeJet
`Pet. 9. Petitioner also submits the declaration testimony of Dr. Pinhas
`Ben-Tzvi (Ex. 1002) in support of the grounds. See, e.g., Pet. 5. Patent
`Owner submits the declaration testimony of Dr. Charles Garris (Ex. 2001) in
`rebuttal. See, e.g., Prelim. Resp. ⅴ.
`
`
`
`
`6
`
`

`

`PGR2018-00049
`Patent 9,675,982 B2
`
`
`II. ANALYSIS
`A. POSITA
`Petitioner proposes that a person having ordinary skill in the art
`(“POSITA”) would have had
`at least a bachelor’s degree in mechanical engineering, or a
`similar field, and two to four years of experience in design of
`fluidic devices that are made to generate micro-droplets through
`pneumatic, thermal or electrical actuation or a mechanical
`technician with an engineering diploma with 4-6 years of actual
`working experience in spray guns.
`Pet. 21 (citing Ex. 1002, 8–9).
`Patent Owner’s declarant proposes a similar level of skill. Ex. 2001
`
`¶ 13.
`
`For purposes of this Decision, we adopt Petitioner’s proposed level of
`ordinary skill in the art.
`
`
`B. Claim Construction
`In a post-grant review, claim terms in an unexpired patent are given
`their broadest reasonable construction in light of the specification of the
`patent in which they appear. 37 C.F.R. § 42.200(b); Cuozzo Speed Techs.,
`LLC v. Lee, 136 S. Ct. 2131, 2144–46 (2016) (upholding the use of the
`broadest reasonable interpretation standard). “Under a broadest reasonable
`interpretation, words of the claim must be given their plain meaning, unless
`such meaning is inconsistent with the specification and prosecution history.”
`Trivascular, Inc. v. Samuels, 812 F.3d 1056, 1062 (Fed. Cir. 2016).
`For purposes of this Decision, we determine that no claim term
`requires express construction to resolve this controversy. See Wellman, Inc.
`
`
`
`
`7
`
`

`

`PGR2018-00049
`Patent 9,675,982 B2
`
`v. Eastman Chem. Co., 642 F.3d 1355, 1361 (Fed. Cir. 2011) (holding that
`“claims terms need only be construed to the extent necessary to resolve the
`controversy”) (internal quotation marks omitted).
`
`
`C. Ground 1: Carey, Torntore, Calder, and Johnson
`Petitioner submits that claims 1–17 are unpatentable over Carey,
`Torntore, Calder, and Johnson. Pet. 21.
`
`
`1. Carey (Ex. 1005)
`Carey is entitled “Reversible Spray Tip” and discloses a spray tip and
`nozzle for use with a liquid spray gun, such as a paint gun. Ex. 1005, [54],
`[57]. We reproduce Figure 4 of Carey, below, to illustrate an embodiment
`of Carey’s spray tip discussed in this Decision:
`
`
`According to Carey, Figure 4 depicts a cross-sectional view of a
`reversible spray tip unit. Id. at 2:52–54. In particular, Figure 4 depicts spray
`tip insert 48 press-fitted into bore 20. Id. at 4:17–20. Spray orifice 52 of
`
`8
`
`
`

`

`PGR2018-00049
`Patent 9,675,982 B2
`
`insert 48 is positioned at forward end 20S of bore 20 and downstream of
`diffuser pin 54. Id. at 4:21–24. Diffuser pin 54 ensures that when spray tip
`10 is reversed for the purpose of dislodging material clogging orifice 52,
`high pressure fluid exiting from fluid bore 50 opposite orifice 52 does not do
`so as a solid stream. Id. at 4:25–28. Diffuser holder 49 is also press-fitted
`into bore 20 behind diffuser pin 54 to maintain pin 54 transversely in bore
`20. Id. at 4:28–31. Preferably, the end of insert 48 includes diametrically-
`opposed recesses 51, 53 in which diffuser pin 54 nests or seats, to thereby
`prevent movement of pin 54 as fluid passes. Id. at 4:31–34. To further
`illustrate pin 54 positioned between insert 48 and diffuser holder 49, we
`reproduce Carey’s Figure 3, below:
`
`
`Carey’s Figure 3 depicts a different cross-sectional view of Carey’s
`reversible spray tip that is perpendicular to the cross-sectional view shown in
`Figure 4. See id. at 2:46–54, Fig. 2. As can be seen in Figure 3, pin 54 is
`positioned between insert 48 and holder 49 (not numbered in Figure 3), and
`a space exists between insert 48 and holder 49. See also id. at Fig. 4
`(depicting pin 54 positioned between insert 48 and holder 49).
`Accordingly, Carey describes pin 54 as being held between insert 48
`and diffuser holder 49 such that insert 48 and holder 49 are not in direct
`
`9
`
`
`

`

`PGR2018-00049
`Patent 9,675,982 B2
`
`contact with one another.
`
`
`2. Torntore (Ex. 1006)
`Torntore is entitled “Rotatable, Cleanable, Flat Tip Holder for Airless
`Spraying” and describes a spray system for attachment to an airless spray
`gun and a rotatable flat tip holder. Ex. 1006, [54], [57]. To illustrate an
`embodiment of Torntore’s flat tip holder, we reproduce Figure 4, below:
`
`
`According to Torntore, Figure 4 depicts a cross-sectional view of its
`tip holder. See id. at 2:19–26. In particular, Figure 4 depicts receiving
`passage 25 positioned within tip holder 20, with first tip receiving area 25a
`formed to accommodate the exterior shape of tip F. See id. at 3:9–14.
`
`
`3. Calder (Ex. 1007)
`Calder is entitled “Reversible Spray Tip” and discloses a tip assembly
`for use in airless spray equipment. Ex. 1007, [54], 1:12–13. To illustrate an
`embodiment of Calder’s spray tip assembly, we reproduce its Figure 2,
`below:
`
`
`
`
`10
`
`

`

`PGR2018-00049
`Patent 9,675,982 B2
`
`
`
`According to Calder, Figure 2 depicts spray tip assembly 10 with
`barrel member 12, spray tip member 14, sealing member 16, and generally
`cylindrical plug member 18. See id. at 2:39–43 (referencing Fig. 1).
`
`
`4. Johnson (Ex. 1008)
`Johnson is entitled “Airless Spray Tip” and depicts its tip assembly in
`Figure 2, reproduced below:
`
`
`According to Johnson, Figure 2 depicts Johnson’s tip assembly
`including cylinder 112 with tip 114 at one end of dead zone 116. Ex. 1008,
`
`11
`
`
`

`

`PGR2018-00049
`Patent 9,675,982 B2
`
`[54], ¶¶ 6, 8.
`
`
`a.
`
`5. Petitioner’s Challenge
`Turbulating Chamber
`Claim 1 requires, inter alia, a spray tip comprising a tip body, a pre-
`orifice piece, and a tip piece, wherein the pre-orifice piece and the tip piece
`form a turbulating chamber. Ex. 1001, 7:64–8:36. To address these
`limitations, Petitioner references an examiner’s office action (Ex. 1003,
`“Office Action”) and asserts that “Carey teaches a majority of the claim
`language including: the tip body, tip piece, pre-orifice piece, and turbulating
`chamber.” Pet. 26 (citing Ex. 1003, 4). To illustrate these teachings,
`Petitioner submits a partially-annotated view of Carey’s Figure 2 (id. at 22),
`which we reproduce below.
`
`
`Petitioner’s reproduction of Carey Figure 2 is annotated to show various
`components in differing colors. According to Petitioner, Carey’s “pre-
`orifice piece” 49 (yellow) and “tip piece” 48 (blue) are press-fit to maintain
`the position of pin 54. See id.
`
`
`
`
`12
`
`

`

`PGR2018-00049
`Patent 9,675,982 B2
`
`Petitioner further asserts that Patent Owner did not challenge the
`examiner’s rejections based on Carey, Torntore, and Calder, and that the
`motivation to combine these references is “still valid.” See id. at 25–26
`(citing Ex. 1003, 7; Ex. 1025, 9). Petitioner relies on an examiner’s
`prosecution rejection and reasons that it would have been obvious to modify
`Carey to satisfy several other limitations, which we address separately,
`below. See id. at 26–28.
`
`b. Plurality of Steps
`Claim 1 also requires the “tip piece” to have “a stepped section . . .
`comprising a plurality of cylindrical steps . . . arranged sequentially
`converging from widest upstream and narrowing downstream toward the
`outlet aperture.” Ex. 1001, 8:14–21 (emphasis added). Petitioner
`acknowledges that Carey does not teach a plurality of steps, and relies on
`Torntore for teaching this limitation. See Pet. 26 (citing Ex. 1003, 4) (“[t]he
`Office Action noted that Carey, while having one step, did not have a
`plurality of steps.”). Petitioner submits a partially-annotated view of
`Torntore’s Figure 4 (id. at 23), which we reproduce below:
`
`
`
`
`13
`
`
`
`

`

`PGR2018-00049
`Patent 9,675,982 B2
`
`Petitioner’s reproduction of Torntore Figure 4 is annotated to show
`various components in differing colors. According to Petitioner, and as
`shown above in Figure 4, “tip piece” F (blue) comprises a stepped section
`(orange), immediately preceding the outlet aperture (pink). Id.; see also id.
`at 10, n.1 (“Coloration will be consistently used throughout this petition for
`clarity”).
`In modifying Carey to include Torntore’s “plurality of steps,”
`Petitioner quotes the examiner’s modification from the Office Action, which
`reads:
`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
`Torntore to [sic] the structure of Carey since a plurality of more
`gradual steps is known to moderate the flow rate change and as
`a result provide a more consistent spraying output while still
`increasing the speed.
`Id. at 26 (quoting Ex. 1003, 4–5).
`
`c. Frustoconical Surface
`Claim 1 further requires that “the turbulating chamber . . . section of
`the pre-orifice piece has an upstream frustoconical surface that widens in a
`downstream direction and . . . the tip piece has a downstream frustoconical
`surface of the turbulating chamber that narrows in the downstream
`direction.” Ex. 1001, 8:28–36. To satisfy the claimed frustoconical
`surfaces, Petitioner relies on Calder for disclosing a tip piece and a pre-
`orifice piece with frustoconical surfaces (Pet. 26) and submits a partially-
`annotated view of Calder’s Figure 2 (id. at 24), which we reproduce below:
`
`
`
`
`14
`
`

`

`PGR2018-00049
`Patent 9,675,982 B2
`
`
`
`Petitioner’s reproduction of Calder’s Figure 2 is annotated to show
`various components in differing colors. According to Petitioner, Calder’s
`Figure 2 depicts a turbulating chamber (green) defined by conical/tapered
`sections on both tip piece 14 (blue) and pre-orifice piece 18 (yellow). See
`id.
`
`In further modifying Carey and Torntore with the teachings of Calder,
`Petitioner again refers to the Office Action and reasons that “it would have
`been 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 increases.” Id. at 26–27 (quoting Ex. 1003, 7)
`(citing Ex. 1002, 27–28).
`
`d. Abutment
`Claim 1 further recites the “tip piece . . . abutting the pre-orifice
`piece.” Ex. 1001, 8:11–13. To meet the claimed limitation, Petitioner again
`
`15
`
`
`

`

`PGR2018-00049
`Patent 9,675,982 B2
`
`cites to an examiner’s rejection and relies on Johnson’s teaching of
`abutment. See Pet. 28 (citing Ex. 1004, 6–7) (“[a]s noted by the Examiner
`. . . Carey teaches a majority of the language recited . . . except for the
`abutment.”). Petitioner submits an annotated version of Johnson’s Figure 2
`(id. at 25), which we reproduce below:
`
`
`Petitioner’s reproduction of Johnson’s Figure 2 is annotated to show
`various components in differing colors. According to Petitioner, and as
`shown in Johnson’s Figure 2, above, the pre-orifice piece (yellow) abuts tip
`piece 114 (blue). See id. at 25; see also id. at 27 (“Johnson does teach
`abutment of the tip piece and the pre-orifice piece.”).
`In further modifying Carey to include Johnson’s “abutment,”
`Petitioner reproduces a portion of the Office Action that reads:
`it would have been obvious to one of ordinary skill in the art at
`
`16
`
`
`

`

`PGR2018-00049
`Patent 9,675,982 B2
`
`the time of the invention to abut and insert the pre-orifice piece
`with the tip piece since it would allow removal of an interstitial
`seal which would allow for a smooth transition between the
`components as well as an easier assembly feature (by inserting
`and therefore abutting, this would be easier to assemble than
`holding 3 floating pieces together).
`Pet. 27 (quoting Ex. 1003, 8) (emphases added).
`
`
`6. Our Analysis
`In contesting Petitioner’s Ground 1 challenge, Patent Owner argues
`that the Petitioner has failed to show that a POSITA would have been
`motivated to combine the references in the manner claimed. Prelim. Resp.
`29. We agree.
`As set forth above, Petitioner proposes to modify Carey to include
`Torntore’s “plurality of steps” (Pet. 26), Calder’s “frustoconical surfaces”
`(id. at 26–27), and Johnson’s “abutment” (id. at 27–28), but provides
`inadequate reasoning in making the proposed combinations.
`First, in proposing to modify Carey to include Torntore’s “plurality of
`steps,” Petitioner simply reproduces the examiner’s reasoning from the
`earlier Office Action in stating that “since a plurality of more gradual steps
`is known to moderate the flow rate change and as a result provide a more
`consistent spraying output while still increasing speed.” Pet. 26 (citing Ex.
`1003, 4–5). Upon reviewing the Petition and the cited Office Action,
`however, we find inadequate evidentiary support for the proposition that
`gradual steps were known at the time of the invention to moderate flow rate
`change, thereby providing more consistent spraying output while still
`increasing speed. Although Dr. Ben-Tzvi testifies—repeating verbatim—the
`
`
`
`
`17
`
`

`

`PGR2018-00049
`Patent 9,675,982 B2
`
`reasoning provided in the Petition (compare Pet. 26, with Ex. 1002, 27), the
`testimony does not disclose the underlying facts or data on which the
`opinion is based, so it is entitled to little or no weight (see 37 C.F.R. §
`42.65(a) (“Expert testimony that does not disclose the underlying facts or
`data on which the opinion is based is entitled to little or no weight.”)).
`Furthermore, even if we assume that Torntore’s Figure 4 depicts cylindrical
`steps, we find nothing in Torntore that describes, let alone explains, the
`purpose of these “steps.” It is not enough to simply cite to the examiner’s
`reasoning, especially if the examiner’s reasoning itself is without evidentiary
`support or explanation. Here, Petitioner has failed to provide adequate
`articulated reasoning with rational underpinning to support its legal
`conclusion of obviousness. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418
`(2007). Accordingly, we are not persuaded that a POSITA would have
`modified Carey to include Torntore’s “plurality of steps,” as Petitioner
`proposes.
`Second, Petitioner proposes to modify Carey and Torntore to include
`Calder’s “frustoconical” surfaces. See Pet. 26. Again, Petitioner cites to the
`Office Action and reasons that the proposed modification “would allow for
`easier machining” and a “smoother transition to turbulence and pressure
`increases.” See id. at 26–27 (citing Ex. 1003, 7); see also id. at 27 (citing
`Ex. 1002, 27‒28). The only evidence provided by Petitioner in support of
`this finding, however, is an unsupported statement in the examiner’s
`rejection and an unsupported statement in Petitioner’s expert declaration.
`Ex. 1002, 27‒28. As noted above, it is not enough to simply cite to the
`examiner’s reasoning, especially if the examiner’s reasoning itself is without
`
`
`
`
`18
`
`

`

`PGR2018-00049
`Patent 9,675,982 B2
`
`evidentiary support or explanation. Furthermore, although Dr. Ben-Tzvi
`testifies that “it would have been obvious to one of ordinary skill in the art at
`the time of the invention to have conical shaped downstream and upstream
`sections . . . as taught by Calder since it would allow for easier machining
`and a smoother transition to turbulence and pressure increases” (Ex. 1002,
`27–28), as before, Dr. Ben-Tzvi does not disclose the underlying facts or
`data on which this opinion is based and is entitled to little or no weight. 37
`C.F.R. § 52.65(a); see also Fed. R. Evid. 702(b) (“A witness who is
`qualified as an expert . . . may testify . . . if . . . the testimony is based on
`sufficient facts or data”). Accordingly, Petitioner’s reasoning lacks rational
`underpinnings because the record does not support adequately Petitioner’s
`assertion that Calder’s frustoconical surfaces allow for easier machining or a
`smoother transition to turbulence.
`Moreover, even if the modification would have resulted in a
`“smoother transition to turbulence,” we agree with Dr. Garris and are not
`persuaded that such a result would be desirable considering that the purpose
`of the claimed “turbulating chamber” is presumably for promoting turbulent
`flow. See Ex. 2001 ¶ 40 (“I see no evidence or explanation that an alleged
`‘smoother transition to turbulence and pressure increases’ would be
`desirable, or what that statement even means in view of the common
`understanding that smooth flow is the opposite of turbulence.”). Indeed, the
`Specification explains that in at least one embodiment, the “turbulating
`chamber” increases working fluid turbulence, thereby improving the
`uniformity of a spray pattern and reducing and eliminating undesirable spray
`“tails.” See Ex. 1001, 3:53–60. Accordingly, and for this additional reason,
`
`
`
`
`19
`
`

`

`PGR2018-00049
`Patent 9,675,982 B2
`
`we are not persuaded that a POSITA would seek to further modify Carey to
`include Calder’s “frustoconical surfaces,” as Petitioner proposes.
`Third, Petitioner proposes to modify Carey so that its “tip piece” and
`“pre-orifice piece” abut, as taught by Johnson. See Pet. 27–28. Petitioner
`reasons that a POSITA would have made the modification to “allow removal
`of an interstitial seal which would allow for a smooth transition between the
`components as well as an easier assembly feature.” See id. at 27 (citing Ex.
`1003, 8) (emphasis added). Petitioner’s reasoning, however, lacks rational
`underpinnings. Petitioner does not cite to Dr. Ben-Tzvi’s testimony (Pet.
`27) and upon reviewing Carey and the cited examiner’s rejection, we cannot
`identify the “interstitial seal” that Petitioner intends to remove. We also fail
`to understand how this proposed modification would make assembly easier.
`See Ex. 2001 ¶ 42 (“Here again, I note that the Petition fails to provide any
`evidence or explanation that removing an interstitial seal and abutting a pre-
`orifice piece to a tip piece would have been desirable to a POSITA”).
`Furthermore, we are skeptical that a POSITA would position Carey’s “tip
`piece” and “pre-orifice piece” to abut when they appear to be spaced apart to
`hold pin 54 in its place. To illustrate this structure, we reproduce Carey’s
`Figures 3 and 4, below:
`
`
`
`
`20
`
`

`

`PGR2018-00049
`Patent 9,675,982 B2
`
`
`
`Carey’s Figures 3 and 4 depict cross-sectional views of Carey’s
`reversible spray tip. See Ex. 1005, 2:46–54, Fig. 2. As can be seen in both
`figures, pin 54 is positioned between insert 48 and holder 49, and insert 48
`and holder 49 do not abut in order to hold the pin between these pieces and
`within the bore. See id. at 4:28–31 (“A diffuser holder, designated 49, is
`also press-fitted into bore 20 behind diffuser pin 54 to thereby maintain the
`pin transversely in bore 20.”). Petitioner fails to explain how the proposed
`modification of Carey’s insert 48 and holder 49 would abut while also
`holding pin 54 in place. Accordingly, we are not persuaded that a POSITA
`would have modified Carey so that its “tip piece” and “pre-orifice piece”
`abut, as required by the claims.
`
`
`
`21
`
`

`

`PGR2018-00049
`Patent 9,675,982 B2
`
`Finally, Petitioner fails to acknowledge the Examiner’s statement in
`the Notice of Allowance that “it would require an unreasonable combination
`of references that would not suffice for a realistic case of obviousness.”
`Compare Pet. 13 (quoting only a portion of the examiner’s reasons for
`allowance), with Ex. 1004, 3. The Petition fails to address fully why the
`Examiner’s statement in the notice of allowance was unreasonable or in
`error.
`
`
`
`7. Remaining Independent Claims 16 and 17
`Independent claims 16 and 17 contain limitations similar to those
`discussed above in claim 1, and the Petition relies on the same proposed
`modifications of Carey with the teachings of Torntore, Calder, and Johnson
`as presented for claim 1. Pet. 39‒54. The Petition is insufficient to establish
`that it is more likely than not that either of these claims are unpatentable, for
`substantially the same reasons discussed above.
`
`
`8. Summary
`For the reasons discussed above, Petitioner fails to establish a
`reasonable likelihood that the proposed combination of Carey, Torntore,
`Calder, and Johnson renders any of claims 1–17 unpatentable.
`
`
`D. Ground 2: Liska, Torntore, and Johnson
`Petitioner asserts that claims 1–17 are unpatentable as obvious over
`Liska, Torntore, and Johnson. Pet. 62
`
`
`
`
`
`22
`
`

`

`PGR2018-00049
`Patent 9,675,982 B2
`
`
`1. Liska (Ex. 1009)
`Liska is entitled “Airless Reversible Spray Tip” and discloses a spray
`tip that purports to inhibit dripping, spitting, and undesirable paint
`accumulation on the spray guard. Ex. 1009, [54], [57]. We reproduce
`Figure 3 of Liska, below:
`
`
`According to Liska, Figure 3 is a sectional view of a spray tip. See id.
`at 5:5–8. In particular, Figure 3 depicts spray gun 15 aligned with nozzle
`carrier 18 in its spray position. Id. at 6:21–23. Pressurized fluid flows
`through fluid passageway 36 in piston seal 26 and then continues through
`nozzle assembly 38, which is mounted in nozzle carrier 18. Id. at 6:24–27.
`
`
`2. Petitioner’s Challenge
`Petitioner asserts that “Liska itself teaches nearly all of the limitations
`of claim 1 . . . except for the stepped section and a direct abutment of the
`
`23
`
`
`

`

`PGR2018-00049
`Patent 9,675,982 B2
`
`pre-orifice piece and tip piece.” Pet. 64. Petitioner submits a partially-
`annotated version of Liska’s Figure 3 to illustrate these features, which we
`reproduce below:
`
`
`Petitioner’s reproduction of Liska’s Figure 3 is annotated to show
`various components in differing colors. According to Petitioner, the above
`Figure 3 shows Liska’s “tip body” (grey), “tip piece” (blue), “pre-orifice
`piece” (yellow), “turbulating chamber” (green), and “stepped section”
`(orange). Id. at 63; see also id. at 10, n.1. Petitioner acknowledges that a
`“component” exists between its “tip piece” and “pre-orifice piece,” which
`presumably prevents its “tip piece” and “pre-orifice piece” from abutting.
`See id. at 65.
`To satisfy the claimed “stepped section comprising a plurality of
`cylindrical steps,” Petitioner relies on Torntore’s teaching of the claimed
`“plurality of steps.” See id.
`
`
`
`
`24
`
`

`

`PGR2018-00049
`Patent 9,675,982 B2
`
`To satisfy the claimed tip piece “abutting” the pre-orifice piece,
`Petitioner acknowledges the presence of a “component between the pre-
`orifice piece and tip piece,” but explains that “this component could be
`removed and these pieces instead abutted to one another,” as taught by Leisi.
`See id. (emphasis added). We assume that Petitioner’s reference to Leisi is a
`clerical error, and Petitioner instead intended to rely on Johnson for teaching
`the claimed “abutment,” as Leisi is not part of the Ground 2 challenge. See
`id. at 62. Johnson, on the other hand, is part of the Ground 2 challenge and,
`according to Petitioner, allegedly teaches the claimed “abutment,” as
`discussed above in relation to Ground 1.
`Petitioner asserts that there is “ample motivation” to combine Liska,
`Torntore, and Johnson, because these references “all relate to inventions in
`reversible paint spray tips.” See Pet. 64. Petitioner further explains that
`“[t]here is nothing in these references to suggest that a combination would
`not be feasible.” Id. Independent claims 16 and 17 contain limitations
`similar to those discussed above in claim 1, and the Petition relies on the
`same proposed modifications of Liska with the teachings of Torntore and
`Johnson as presented for claim 1. Pet. 74‒91. The Petition does not cite to
`the testimony of Dr. Ben-Tzvi in support of this ground.
`
`
`3. Our Analysis
`In contesting Petitioner’s Ground 2, Patent Owner argues that
`Petitioner has failed to present a proper motivation to combine the
`references. Prelim. Resp. 51. We agree.
`Petitioner fails to provide adequate reasoning explaining why a
`POSITA would have modified Liska to include Torntore’s “plurality of
`
`25
`
`
`

`

`PGR2018-00049
`Patent 9,675,982 B2
`
`steps” or Johnson’s “abutment.” See Pet. 64–65. It is not enough to state
`that “[t]here is ample motivation” because “they all relate to inventions in
`reversible paint spray tips.” Id. at 64. In particular, we are not persuaded
`that a POSITA would have removed the “component” that exists between
`Liska’s “tip piece” and “pre-orifice piece” to allow these pieces to “abut,” as
`Petitioner asserts, without providing any reason to do so. See id. at 65.
`Stated differently, Petitioner’s reasoning focuses on what one of ordinary
`skill in the art could do to modify Liska in a manner that meets the claims,
`without adequately explaining why one of ordinary skill in the art would
`make the modifications. See PersonalWeb Techs., LLC v. Apple, Inc., 848
`F.3d 987, 993–94 (Fed. Cir. 2017) (finding that a skilled artisan would have
`understood that prior art could be combined insufficient; “it does not imply a
`motivation to pick out those two references and combine them to arrive at
`the claimed invention”).
`
`
`4. Summary
`For the reason