Ex Parte Christianson

Patent Trial and Appeal Board

Oct 31, 2018

12317459 (P.T.A.B. Oct. 31, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/317,459 12/22/2008 Jeffrey J. Christianson
155316 7590 11/02/2018
S.C. JOHNSON & SON, INC./Quarles & Brady LLP
1525 Howe Street
Racine, WI 53403-2236
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www .uspto.gov
ATTORNEY DOCKET NO. CONFIRMATION NO.
J-5040 7103
EXAMINER
KIM, CHRISTOPHER S
ART UNIT PAPER NUMBER
3752
NOTIFICATION DATE DELIVERY MODE
11/02/2018 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
F074168@scj.com
SELechne@scj.com
MJZolnow@scj.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JEFFREY J. CHRISTIANSON
Appeal2018-001300 1
Application 12/317,459
Technology Center 3700
Before CHARLES N. GREENHUT, LYNNE H. BROWNE, and
LISA M. GUIJT, Administrative Patent Judges.
BROWNE, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134 from the rejection of claim
1, 2, 5-18, and 20 under 35 U.S.C. § 103(a) based on Anderson (US
7,938,340 B2, iss. May 10, 2011) and Hoening (US 3,785,571, iss. Jan. 15,
1974).2,3 We have jurisdiction under 35 U.S.C. § 6(b).
1 The Appellant states S.C. Johnson & Son, Inc. are the real party in interest.
Appeal Br. 2.
2 Claim 19 is withdrawn from consideration. Final Act. 1. Claims 3 and 4
are pending, but are not subject to a standing rejection. See id. at 1
(rejecting claims 1-18 and 2 0).
3 The remaining rejections set forth in the Final Action are withdrawn by the
Examiner. Ans. 4--5.
Appeal2018-001300
Application 12/317,459
We reverse.
CLAIMED SUBJECT MATTER
The claims are directed to a dispensing system. Claims 1, 9, and 13
are independent. Claims 1 and 9 are reproduced below: 4
1. A dispensing system, comprising:
a solenoid valve that includes an inlet end configured to
couple to an aerosol container, including a valve stem, at a first
location surrounding the valve stem and a second location
disposed radially outward from the first location; and
a flow adapter that includes a cylindrical wall and a post
mounted within the cylindrical wall to define an annular passage
therebetween, wherein an inlet end of the flow adapter is
sealingly attached to an outlet end of the solenoid valve, and the
flow adapter is adapted to receive a spray insert within the
annular passage.
9. A dispensing system, comprising:
a solenoid valve that includes an inlet end adapted to be
attached to an aerosol container including a valve stem and a
crimped portion, the inlet end having an opening defined by a
surface disposed therein, the surface configured to depress the
valve stem such that the valve stem is held in an open state
when the aerosol container is attached to the dispensing system;
a flow adapter that includes a cylindrical wall and a post
mounted within the cylindrical wall to define an annular
passage therebetween; and
a spray insert that includes an end wall and a cylindrical
skirt extending therefrom, wherein an aperture is disposed
through the end wall, and wherein an outlet end of the solenoid
valve includes an outlet port and a sidewall spaced from the
outlet port, the sidewall forming a recess to receive an inlet end
of the flow adapter, such that the inlet end of the flow adapter is
removably and sealingly attached to the outlet end of the
solenoid valve, and the flow adapter receives the cylindrical
4 Claim 9 is representative of claim 13 as the limitations at issue with respect
to these claims are identical.
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Application 12/317,459
skirt of the spray insert for attachment within the annular
passage.
DISCUSSION
Claims 1, 2, and 5-8
The Examiner finds that Anderson and Hoening disclose or suggest all
of the limitations of claim 1. See Final Act. 6-8. In particular, the Examiner
finds that Anderson discloses "a second location ( at the lower surface of
interface chamber element 13." Id. at 6. The Examiner explains that "the
lower surface possesses a surface characteristic that has the capability to
contact the aerosol container when the valve stem 12 is depressed) disposed
radially outward from the first location." Id.
Appellant contends that "the alleged 'second location' does not couple
to anything, let alone the valve stem 12. As such, Anderson also fails to
teach or suggest this element of claim 1." Appeal Br. 6. In support of this
contention, Appellant argues that "FIG. 4 of Anderson does, in fact, show
the valve stem in a depressed position, while further showing that the lower
surface of the interface chamber element 13 is not configured to couple to an
aerosol container." Id.
Responding to this argument, the Examiner asserts that "Appellant's
argument is not commensurate in scope with the claimed invention." Ans. 6.
Noting that "[c]laim 1 recites' ... a solenoid valve that includes an inlet end
configured to couple to an aerosol container, including a valve stem, at ... a
second location ... ,"' the Examiner determines that "[t]he recitation that an
element is configured to perform a function merely requires that the element
possesses some undefined characteristic that has the capability to perform
the function." Id. (emphasis omitted).
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Application 12/317,459
In our prior Decision on Appeal, mailed February 16, 2016,
(hereinafter "Decision"), we held that "in the context of claim 1, when
interpreted in view of the Specification, the claim language 'adapted to'
requires at least some structure that holds the valve stem of the container in
an open state." Dec. 5 ( citing Aspex Eyewear, Inc. v. Marchan Eyewear,
Inc., 672 F.3d 1335, 1349 (Fed. Cir. 2012); In re Giannelli, 739 F.3d 1375,
1379 (Fed. Cir. 2014). Claim 1 has since been amended to recite the
narrower claim language "configured to." See Appeal Br. 11 (Claims App.).
Accordingly, claim 1 now requires at least some structure that is "designed
or configured to accomplish the specified objective, not simply [ structure
which] can be made to serve that purpose" of allowing the inlet end of the
solenoid valve to be coupled to an aerosol container at two different
locations. Aspex Eyewear, 672 F. 3d at 1349. Regarding the lower surface
identified by the Examiner as corresponding to the claimed second location,
the Examiner does not provide a persuasive reason why one skilled in the art
would understand this surface as "designed" or "made" to accomplish the
specific objective recited. See, e.g., In re Giannelli, 739 F. 3d at 1380 ("the
relevant question before the Board was whether the apparatus described in
the [prior-art] patent was "'made to," "designed to," or "configured to,"'
allow the user to perform [ the recited function]") accord In re Man Machine
Interface Technologies, 822 F. 3d 1282, 1286-87 (Fed. Cir. 2016). Thus,
the Examiner's finding cannot be sustained.
For these reasons, we do not sustain the Examiner's decision rejecting
claim 1, and claims 2 and 5-8, which fall therewith.
Claims 9-18 and 20
The Examiner finds that Anderson and Hoening disclose or suggest all
of the limitations of claims 9 and 13. Final Act. 6-8. In particular, the
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Application 12/317,459
Examiner finds that Anderson discloses "an outlet port 43; sidewall (wall of
opening 42)." Id. at 6.
Appellant contends that "the Examiner errs by conflating ... two
elements, in direct contradiction with the explicit disclosure of Anderson."
Appeal Br. 9. Noting that "Anderson's element 43 is not an 'outlet port,'
[and] that its element 42, i.e., its outlet opening or exit opening, is more akin
to that 'outlet port,'" Appellant argues that "because element 42 is more akin
to the recited outlet port, it cannot at the same time be the recited 'sidewall
forming a recess' to receive an inlet end of a flow adapter." Appeal Br. 10.
Responding to this argument, the Examiner construes the claim terms
"outlet port" and "sidewall." Ans. 9. The Examiner's claim construction
relies upon a number of dictionary definitions. See id. The Examiner's
claim construction, however, does not determine if these definitions are
consistent with the use of these terms in the Specification. In other words,
although the Examiner has identified the broadest definitions of the claim
terms "outlet port" and "sidewall," the Examiner fails to show that these
definitions are the broadest reasonable interpretations of the claim terms as
they would be understood by one skilled in the art reading the instant
Specification. See, e.g., Brookhill-Wilk 1, LLC v. Intuitive Surgical, Inc.,
334 F.3d 1294, 1300 (Fed. Cir. 2003)
Consequently, we agree with Appellant that the Examiner's claim
construction "ignores the teaching of Applicant's disclosure, in which the
'outlet port 140' is shown and described as being the opening through which
fluid actually exits the solenoid valve." Reply Br. 5. We further agree that
"any alleged 'outlet port' in Anderson must include that element 42 since ...
the outlet port is the opening through which 'fluid must pass ... , precluding
it from being a 'sidewall spaced from the outlet port,' as recited in claims 9
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Application 12/317,459
and 13." Id. Accordingly, the Examiner's findings that Anderson's recess
43 corresponds to the claimed outlet port and that Anderson's exit opening
42 corresponds to the claimed sidewall are in error.
For these reasons, we do not sustain the Examiner's decision rejecting
claims 9 and 13, and claims 10-12, 14--18, and 20, which depend from either
claim 9 or claim 13.
DECISION
The Examiner's rejection of claims 1, 2, 6-18 , and 20 is
REVERSED.
REVERSED
6