Ex Parte Mecker et al

Patent Trials and Appeals Board

Jun 3, 2019

14038613 - (D) (P.T.A.B. Jun. 3, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
14/038,613 09/26/2013
155316 7590 06/05/2019
S.C. JOHNSON & SON, INC./Quarles & Brady LLP
1525 Howe Street
Racine, WI 53403-2236
Alex Meeker
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 5959 us (510009.02215) 3983
EXAMINER
BUECHNER,PATRICKM
ART UNIT PAPER NUMBER
3754
NOTIFICATION DATE DELIVERY MODE
06/05/2019 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 ALEX MECKER, JESSE RICHARD,
RONALD M. LLANES, KYLIE L. LEV AKE,
JEFFREY J. CHRISTIANSON, and
CHRISTOPHER P. WOLAK 1
Appeal 2018-007611
Application 14/038,613
Technology Center 3700
Before JAMES P. CALVE, MICHELLE R. OSINSKI, and LISA M. GUIJT,
Administrative Patent Judges.
CAL VE, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from the Final Office
Action rejecting claims 1-12. Br. 2. Claims 13-20 are withdrawn. Id. We
have jurisdiction under 35 U.S.C. § 6(b ).
We AFFIRM.
1 S. C. Johnson & Son, Inc. is identified as the real party in interest and also
is the applicant pursuant to 3 7 C.F .R. § 1.46. Br. 2.
Appeal 2018-007 611
Application 14/038,613
CLAIMED SUBJECT MATTER
The claimed dispensing system includes a housing with decorative
recessed portions and decorative apertures. Spec. ,r 10. The front and rear
patterns 126a, 126b of decorative recessed portions and decorative apertures
contributed to the 360 degree all-around aesthetic qualities of the dispensing
system, which aesthetics are an important aspect in maximizing user benefit
of the dispensing systems. See id. ,r,r 68, 114, 115, 120.
Claim 1, the sole independent claim, is reproduced below.
1. A dispensing system, comprising:
a housing for receipt of a product to be dispensed and including
a front cover; and
a discharge orifice for emission of the product;
wherein the front cover includes at least one decorative
recessed portion that does not extend completely through the housing
and at least one decorative aperture that does extend completely
through the housing and that has the same shape as the at least one
decorative recessed portion, and wherein the at least one decorative
recessed portion and the at least one decorative aperture define an
interrupted surface area on the front cover that comprises between
about 5% to about 40% of the front cover, and
wherein one or more functional apertures are provided within
the housing for receipt or viewing of a functional component of the
system.
REJECTION
Claims 1-12 are rejected under 35 U.S.C. § 103 as unpatentable over
Gatland (US 3,549,055, iss. Dec. 22, 1970), Miyagi (US 2010/0226818 Al,
pub. Sept. 9, 2010), and Stull '997 (US 2010/0126997 Al, pub. May 27,
2010) or Stull '747 (US D616,747 S, iss. June 1, 2010), or Stull '746 (US
D616,746 S, iss. June 1, 2010) or Stull '590 (US D679,590 S, iss. Apr. 9,
2013).
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Appeal 2018-007 611
Application 14/038,613
ANALYSIS
Appellant argues the claims as a group. Br. 4--8. We select claim 1 as
representative, with claims 2-12 standing or falling with claim 1. 37 C.F.R.
§ 4I.37(c)(l)(iv). Regarding claim 1, the Examiner relies on Gatland to
teach a dispensing system including a housing ( segment 11 a or 11 b) that
serves as a front cover, and discharge orifice 4, but the Examiner finds that
Gatland lacks decorative recessed portions, decorative apertures, and a range
of uninterrupted surface area on the front cover of about 5% to about 40% as
claimed. Final Act. 2-3. The Examiner finds that Miyagi teaches decorative
recesses (indentations 114) on a front cover, and the Stull references teach
decorative recesses and apertures of generally the same shape on dispenser
caps. Id. at 3 (citing Stull '997 recess/notches 114 and openings 124; Stull
'747, Figs. 1 and 2; Stull '746, Figs. 1 and 4; and Stull '590, Figs. 1 and 4).
The Examiner also finds that Miyagi teaches an interrupted surface area
within the claimed range, and determines that the interrupted surface range
also is an obvious aesthetic design choice based on Miyagi. Id. at 4.
The Examiner determines that it would have been obvious to add the
decorative aspects of Miyagi and the Stull references to the front cover of
Gatland's device and to make the decorative recesses the same shape as the
openings as an obvious design choice because Appellant has not identified
any criticality to the shapes of the decorative apertures and recesses and
changing the shapes will not alter the function of the claimed device in any
way. Id. (citing Fig. 47 of Appellant's disclosure, which shows different
decorative shapes that can be used for the recesses and apertures). The
Examiner reasons that mere aesthetic design changes and matters relating to
ornamentation cannot provide a patentable distinction. Id. at 3.
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Application 14/038,613
Appellant argues that Miyagi teaches decorator indentations 114, 116
but not apertures, and Stull '997 teaches notches 114 with a different shape
than openings 124. Br. 5. As a result, Appellant argues that the combined
teachings of Gatland, Miyagi, and the Stull references fail to disclose at least
one decorative recessed portion and at least one decorative aperture that has
the same shape as the decorative recessed portion as claimed. Id.
Appellant's arguments are not persuasive for several reasons. First,
they amount to individual attacks on the references where the Examiner has
relied on the combined teachings of Gatland, Miyagi, and the Stull prior art
to render obvious the claimed decorative recesses and apertures. See Final
Act. 2-3. The Examiner finds that Gatland teaches a functional aperture but
lacks decorative recesses and apertures. Id. The Examiner relies on Miyagi
to teach ornamental recessed portions. Id. at 3. Appellant does not dispute
that Miyagi' s decorator indentations 114 teach decorative recessed portions
as claimed. Br. 5. The Examiner relies on the Stull references to teach caps
with decorative recesses and apertures "that have generally similar shapes."
Final Act. 3. Appellant's argument that "the openings 124 and the notches
114 of the Stull references are not the same shape" (Br. 5) does not apprise
us of error in the Examiner's finding that the shapes are generally similar.
See 37 C.F.R. § 4I.37(c)(l)(iv) (the Appeal Brief "shall explain why the
examiner erred as to each ground of rejection contested by appellant."); see
also In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011) (noting the Board's
long-standing practice to require an applicant to identify the alleged error in
an examiner's rejections; "Moreover, even assuming that the examiner had
failed to make a prima facie case, the Board would not have erred in framing
the issue as one of 'reversible error.").
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Application 14/038,613
Based on these undisputed findings, the Examiner determines that it
would have been obvious to add decorative aspects of Miyagi and the Stull
references to the front cover of Gatland's device and to make the decorative
recesses the same shape as the decorative openings because such aesthetic
design changes merely relate to ornamentation. Final Act. 3. The Examiner
determines that the decorative features have no identified function other than
their decorative aspects so changing their shape would not alter the function
of the device and thus is "the epitome of obvious design choice." Id. at 4.
Appellant's arguments do not apprise us of error in the Examiner's
determination that it would have been obvious to add decorative recesses
and apertures of Miyagi and the Stull references onto Gatland' s device and
to make the features the same shape as an obvious design choice. Appellant
does not dispute that the decorative recesses and apertures are ornamental
features without a function to perform or that it would have been an obvious
matter of design choice to change the shape of the decorative recesses and
apertures as the Examiner proposes without any change to their function or
the function of Gatland's device. See In re Dailey, 357 F.2d 669, 672-73
( CCP A 1966) ("Appellants have presented no argument which convinces us
that the particular configuration of their container is significant or is
anything more than one of numerous configurations a person of ordinary
skill in the art would find obvious for the purpose of providing mating
surfaces in the collapsed container of Matzen."); Gardner v. TEC Sys., Inc.,
725 F.2d 1338, 1349 (Fed. Cir. 1984) (holding that the claimed dimensional
limitations did not specify a device that functioned any differently than the
prior art). Indeed, Appellant describes the decorative recesses and apertures
as being ornamental for visual appeal. See Spec. ,r,r 8, 10, 68, 115, 120.
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Application 14/038,613
Appellant also argues that
The Examiner has provided no articulated reason for why such
a modification would be made; rather, the Examiner instead
presents a conclusory assertion that the decorative aspects of
Miyagi and the Stull references could be added to the front
cover of the device of Gatland.
Br. 5. This argument is not persuasive for several reasons. First, it does not
address the Examiner's reliance on design choice as a rationale to change the
shapes of the decorative recesses and apertures of Miyagi and Stull to be the
same shape and to add these decorative aspects to Gatland's device. See In
re Kuhle, 526 F.2d 553, 555 (CCPA 1975) (holding that the placement of the
spring-loaded contact of Sherrard on Smith would be an obvious matter of
design choice within the skill of the art because the particular placement
provides no novel or unexpected result); see also In re Gough, 451 F. App'x
927, 930 (Fed. Cir. 2011) (non-precedential) (holding based on the nature of
the invention and prior art teachings that using large diameter bicycle wheels
would have been an obvious design variation); In re Chu, 66 F .3d 292, 299
(Fed. Cir. 1995) (holding that placement of SCR catalyst within bag retainer
was not a matter of mere design choice because it functioned differently).
Second, Miyagi teaches the use of decorator indentations 114, 117 on
a dispenser used to activate an aerosol spray dispenser. See Miyagi ,r,r 3, 20.
The Examiner proposes to include such decorative features on covers 11 a,
11 b of Gatland' s similar device, which holds aerosol container 1, for similar
aesthetic effect. Final Act. 3; see KSR Int'! Co. v. Teleflex Inc., 550 U.S.
398, 417 (2007) (holding that a technique that improves one device would be
recognized by skilled artisans as obvious to use to improve similar devices
in the same way unless its actual application is beyond their skill).
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Application 14/038,613
Third, Appellant admits that conventional dispensers add aesthetic
design features to their devices and typically "provide only one side that is
decoratively appealing while other sides are flat or functional looking."
Spec. ,r 68. Claim 1 is directed to decorative recesses and apertures on the
front cover of a dispenser, i.e., on one side of a dispenser. This admission
provides an additional teaching, reason, and basis to include the decorative
features of Miyagi as modified further by teachings of the Stull references
on Gatland's device to provide aesthetic design features that make Gatland's
dispenser more ornamental and visually-appealing to a consumer. See KSR,
550 U.S. at 417.
Appellant further argues that Figures IA and IB of Miyagi cannot be
relied on to teach an interrupted surface area that falls within the claimed
range of "about 5% to about 40% of the front cover." Br. 6. In particular,
Appellant argues that the disclosure of Miyagi is silent regarding the scale
or dimension of the drawings and therefore cannot be relied on to teach the
claimed interrupted surface area of claim 1 because "the two-dimensional
nature of Figs. 1 A and 1 B of Miyagi fails to provide one of skill in the art
with the necessary information to determine a percentage of the front face
118 that is interrupted by the decorator indentations 114 and 116." Id.
We agree with the Examiner that Miyagi' s drawings can be relied on
to render obvious the claimed interrupted surface area. See Final Act. 4
("Figs. 1 A and 1 B of Miyagi [] clearly show an interrupted surface area that
falls with the claims range"); Ans. 8-9 ("drawings can be relied upon for
what they suggest to a person having ordinary skill in the art, when read in
combination with the specification" and they show an exemplary amount of
indentations that fall within the claimed range of about 5% and 40% ).
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Application 14/038,613
Drawings in a utility or design patent can be cited against claims of a
utility patent application. See In re Aslanian, 590 F.2d 911, 913-14 (CCPA
1979). Prior art teachings to include the drawings are evaluated on the basis
of what they reasonably disclose and suggest to a skilled artisan. Id. at 914.
"[A] claimed invention may be anticipated or rendered obvious by a drawing
in a reference, whether the drawing disclosure be accidental or intentional."
In re Meng, 492 F.2d 843, 847 (CCPA 1974) (citation omitted); Aslanian,
590 F.2d at 914 (holding that "a drawing in a utility patent can be cited
against claims of a utility patent application even though the feature shown
in the drawing was unintended or unexplained in the specification of the
reference patent."); In re Mraz, 455 F.2d 1069, 1072 (CCPA 1972) (holding
that things shown clearly in patent drawings are not to be disregarded).
We agree with the Examiner that a skilled artisan would understand
Figures IA and IB of Miyagi to teach (or at least suggest) an interrupted
surface area that falls within the claimed range of about 5% to about 40% of
front section 102. These drawings show decorator indentations 114, 116
covering part of the surface area of front section 102 as the Examiner finds
and Appellant does not dispute. Ans. 8-9; Br. 6. The drawings clearly show
the decorator indentations covering at least I/20th of the surface area of front
section 102. Stated another way, twenty groups of decorator indentations
114, 116 would cover the entire surface of front section 102. Even though
the drawings are not disclosed as being to scale, they clearly show sufficient
surface area coverage to fall within the claimed range and render that range
obvious. See Titanium Metals Corp. of Am. v. Banner, 778 F.2d 775, 782
(Fed. Cir. 1985). Neither the Examiner nor we rely on the drawings to show
particular sizes or precise proportions of decorative elements 114, 116.
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Application 14/038,613
Furthermore, Miyagi describes indentations 114, 116 as decorator
indentations 116. Miyagi ,r 20. A skilled artisan would understand that the
decorative indentations in Figs. IA and IB cover at least about 5% of the
surface area of front section 102 or that it would be obvious for them to do
so in order to be visible to consumers as decorative features. A skilled
artisan would recognize "about 5%" as a minimum amount of interrupted
surface area to provide visible ornamentation and aesthetic appeal. See
Spec. ,r 68 ( discussing the known use of decorative features to enhance the
aesthetic appeal of conventional dispensers). Thus, a skilled artisan would
understand Miyagi to teach or suggest coverage of at least "about 5%."
Even if Miyagi' s drawings and written disclosure do not show surface
coverage of at least about 5%, the coverage of decorative indentations in
Miyagi renders obvious about 5% or greater as a design choice because an
uninterrupted surface area of "about 5%" does not provide any particular
function/property. It is ornamental. Spec. ,r,r 10, 68. Thus, the Examiner
reasonably determines that it would have been obvious to modify the surface
coverage of Miyagi to overlap or fall within the claimed range as a design
choice absent evidence of criticality or any identified function of the claimed
ornamental range. Final Act. 4; Ans. 8. Whether taught, suggested, or taken
as a design choice, Miyagi's surface coverage is within or close enough to
the claimed range that it would be expected to have the same properties. In
re Peterson, 315 F.3d 1325, 1329 (Fed. Cir. 2003); see also In re Geisler,
116 F.3d 1465, 1469 (Fed. Cir. 1997) (noting "when the difference between
the claimed invention and the prior art is the range or value of a particular
variable, then a prima facie rejection is properly established when the
difference in range or value is minor") ( citation omitted)).
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Application 14/038,613
Appellant's argument that the claimed range of interrupted surface
area is not solely an aesthetic design choice because the percentage affects
the structural integrity of the front cover as disclosed in the Specification
(Br. 7) is not persuasive because this issue pertains to the upper end of the
claimed range, i.e., to about 40%, and not to the lower end of the range, i.e.,
"about 5%," which Miyagi renders obvious. 2 Miyagi teaches an interrupted
surface area that falls within the claimed range at the lower end, or at least is
close enough to "about 5%" that it renders that range obvious as discussed
above. No unexpected results or criticality have been shown at the lower
end of the range. Thus, any impact on structural integrity resulting from too
much interrupted surface area does not affect the obviousness of the lower
end of the range of about 5%. KSR, 550 U.S. at 416 ("The combination of
familiar elements according to known methods is likely to be obvious when
it does no more than yield predictable results.").
Accordingly, we sustain the rejection of claims 1-12.
DECISION
We affirm the rejection of claims 1-12.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED
2 The Specification discloses that too many interruptions on the front cover,
whether as blind holes, recessions, apertures, or combinations thereof, can
compromise the structural integrity of front cover 108. Spec. ,r 121.
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