Ex Parte Roreger et al

Patent Trial and Appeal Board

Apr 25, 2013

10534797 (P.T.A.B. Apr. 25, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
10/534,797 05/12/2005 Michael Roreger 512100-2047 9006
7590 04/26/2013
Frommer Lawrence & Haug
745 Fifth Avenue
New York, NY 10151
EXAMINER
HWU, DAVIS D
ART UNIT PAPER NUMBER
3752
MAIL DATE DELIVERY MODE
04/26/2013 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD

____________

Ex parte MICHAEL ROREGER, MALGORZATA KLOCZKO, and
MICHAEL FELDHEGE
____________

Appeal 2011-001821
Application 10/534,797
Technology Center 3700
____________

Before STEVEN D. A. McCARTHY, ANNETTE R. REIMERS, and
CARL M. DeFRANCO, Administrative Patent Judges.

DeFRANCO, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
decision rejecting claims 1, 4-14 and 18-24. App. Br. 3. Claims 2, 3, and
15-17 have been cancelled. We have jurisdiction over the appeal under 35
U.S.C. § 6(b). We AFFIRM.
CLAIMED INVENTION
The claimed invention “relates to a dispenser for controlled release of
volatile substances.” Spec. 1, ll. 4-5. Claim 1 is illustrative of the claims on
appeal and calls for (with emphasis added):
1. A dispenser for controlled release of volatile
substances, comprising

a reservoir that is flat and has a top face and a
bottom face, and which is covered on its top face
with a layer of material impermeable to the volatile
substances and covered on its bottom face by a
first control element, said reservoir containing at
least one volatile substance,

said first control element is composed of a material
which is permeable to the at least one volatile
substance, and which exerts control over the
release rate of said at least one volatile substance
by means of diffusion dependent on the physical
properties of the at least one volatile substance and
the material properties of said permeable material
of the first control element, and

a second control element composed of a material
which is impermeable to the at least one volatile
substance, and which exerts control over the
release rate of said at least one volatile substance
by controlling the size of the surface of the first
control element independent of the physical
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properties of the at least one volatile substance and
the material properties of said permeable material
of the first control element

wherein the second control element is in the form
of a film that possesses gaps wherein the number
of said gaps is from 500 to 8000 gaps per m2 of
said film;

and wherein said first control element is pressure-
sensitively adhesive and fully covered by said
second control element such that during the use of
the dispenser, the at least one volatile substance
moves from the reservoir first through the first
control element and then through the second
control element

wherein the first control element and the second
control element jointly control release of the at
least one volatile substance from the reservoir.

EVIDENCE
The Examiner relied upon the following prior art as evidence of
unpatentability:
Paul US 5,556,030 Sep. 17, 1996
REJECTIONS
Claims 1, 4-14 and 18-24 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Paul. Ans. 3.
ANALYSIS
Claim 1 is the sole independent claim on appeal. Appellants argue
claims 1, 4-14, and 22-24 as a group. Br. 5. We select claim 1 as
representative of the group, with claims 4-14 and 22-24 standing or falling
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with claim 1. See 37 C.F.R. § 41.37(c)(1)(vii)(2011). Appellants provide
separate arguments for claims 18-21 (Br. 9), which we address in turn.
Claims 1, 4-14 and 22-24
Independent claim 1 requires, in relevant part, two control elements,
one “permeable” and the other “impermeable,” that “jointly control” the
release rate of the volatile substance contained within the reservoir. Br.,
Clms. Appx. The claim additionally recites that the first control element is
“pressure-sensitively adhesive” and that the second control element
“possesses gaps.” Id.
The Examiner found that Paul discloses a dispenser comprising: (1)
“a reservoir (holding scented material 58),” (2) a “first control element 50 []
composed of a material which is permeable to the [] volatile substance,” and
(3) “a second control element 22 composed of a material which impermeable
to the volatile substance.” Ans. 3. The Examiner also found that Paul’s two
control elements “jointly control release” of the volatile substance from the
reservoir because the first control element “exerts control over the release
rate of the volatile substance by means of diffusion,” and the second control
element “exerts control over the release rate of the volatile substance by
controlling the size of the surface of the first control element [by means of] a
film that possess[sic] gaps 52.” Id. 3-4.
Appellants argue a number of flaws in the Examiner’s findings with
respect to the control elements of Paul. Br. 5-9. We address them seriatim.
First, while not disputing that Paul discloses the claimed first control
element, Appellants contend that Paul lacks the second control element
because “side walls or panels 22 and 23 in Paul are not control elements, but
rather packaging for the dispenser.” Id. at 5. According to Appellants,
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Paul’s panel 22 is simply “torn open to expose the permeable membrane
layers 50 and 55 to the atmosphere, i.e. the volatile substance passes through
only one layer, not two.” Id.
Appellants oversimplify, indeed ignore, Paul’s express teachings that
impermeable panels 22 and 23 work in the same manner as the second
control element called for by claim 1 (i.e., “by controlling the size of the
surface of the first control element”). Specifically, the Examiner explained
that “[t]he panel 22 can be peeled back as far as needed to release the desired
amount of the substance and thus control the amount of substance released,
therefore making the panel a control element.” Ans. 5. Paul fully supports
this finding, disclosing a “variable opening system” (col. 2, ll. 28-30) in the
form of a sealing strip 38 (fig. 4) or a flap 51 (figs. 5 & 6) that “can be
opened minimally or completely in order to regulate the rate at which the
fragrance is dispensed” (col. 3, ll. 25-34) “into the surrounding ambient air”
(col. 11, l. 22). See also Paul, col. 9, ll. 6-9 (“by removing sealing strip 38
from the desired number of portals, the precisely desired rate of dispersion
of the air freshening/deodorizing composition is realized”). Because Paul
discloses that the sealing strip/flap regulate the size of the surface area
exposed to the ambient air, we agree with the Examiner that Paul teaches the
“second control element” as recited in claim 1.
Second, Appellants contend that “Paul’s first control element is not
adhesively attached to the second control element as in the [A]ppellants’
claimed invention.” Br. 6. Claim 1 recites that the “first control element is
pressure-sensitively adhesive and fully covered by the second control
element.” The Examiner explained that Paul fully meets this limitation
“[s]ince the first control element 50 has the panel 22 attached (bonded) to
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it.” Ans. 5. In arguing that “[t]here is no disclosure in Paul” of a pressure
sensitive adhesive, Appellants direct us to multiple passages in Paul but
overlook the very passages that describe how the layers are adhered
together. See Br. 6 (citations omitted). Specifically, Paul discloses that
When fully assembled, membrane layers 50 and 55 are
integrally bonded to each other and to side walls or panels 22
and 23 about their respective outer peripheral edges, to form an
integrally sealed container or housing 21 which defines
dispensing system 20.

Paul, col. 13, ll. 9-13 (emphasis added). Moreover, Paul discloses that the
layers may comprise “bonding films” where “secure affixation . . . is
achieved by heat-sealing.” Id. at col. 10, ll. 11-30. As such, we discern no
error in the Examiner’s findings regarding Paul’s disclosure of pressure-
sensitively adhered control elements as called for by claim 1. We are not
persuaded by Appellants’ arguments to the contrary.
Appellants’ third argument is simply a permutation of its second
argument, hinging on the Examiner’s purported interpretation of the term
“adhesive.” Specifically, Appellants’ believe that the Examiner’s
interpretation of adhesive is “overly broad” and “inconsistent” with the
Specification. Br. 6-7. We are not persuaded by Appellants’ attempt to
create an issue where none exists. First, we discern little, if any, distinction
between Appellants’ definition of adhesive as “capable of bonding other
substances by surface attachment” (Br. 7) (emphasis in original) and the
Examiner’s interpretation of adhesive as “tending to adhere (to stick
together)” (Ans. 5). A skilled artisan would view “bonding” two layers
together to be essentially the same as adhering or sticking them together.
Also, we are not persuaded by Appellants’ reading of specific examples of
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adhesives from the Specification into the claims. See Br. 7. While
Appellants point us to examples of “tackifiers” and “polymer[s]” in the
Specification, we are mindful not to import limitations of an embodiment
from the specification into a claim if the claim language is broader than the
embodiment. See SuperGuide Corp. v. DirecTV Enter., Inc., 358 F.3d 870,
875 (Fed. Cir. 2004) (“Though understanding the claim language may be
aided by explanations contained in the written description, it is important not
to import into a claim limitations that are not part of the claim. For example,
a particular embodiment appearing in the written description may not be
read into a claim when the claim language is broader than the embodiment”).
Nevertheless, even accepting arguendo Appellants’ definition of adhesive
(“capable of bonding other substances by surface attachment”), Paul falls
squarely within that definition. As discussed supra, Paul discloses that, “by
heat-sealing,” the layers are “integrally bonded in secure, affixed
interengagement to each other.” Paul, col 9, l. 65, to col. 10, ll. 1 & 27-30.
Given this disclosure, we agree with the Examiner that Paul teaches the
“pressure sensitively adhesive” limitation of claim 1.
Fourth, Appellants contend that Paul’s dispenser lacks one control
element being “dependent on the physical properties of the volatile
substance” and the other control element being “independent of the physical
properties of the volatile substance.” Br. 8 (emphasis in original). While
finding that “[t]he term ‘physical properties’ is so broad that it can be
interpreted as being a vast number of things” (Ans. 5), the Examiner
nevertheless explained that Paul’s control elements are independent of each
other in that one controls the release rate “by means of diffusion” and the
other does so “by controlling size of the surface” that is exposed to the
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ambient air (id. at 3-4). Paul fully supports the Examiner’s finding,
describing the first control element as “a completely enclosed, independent
dispersion controlling member” (col. 12, 16-17) that depends on the
“molecular structure” of the volatile substance for rate of dispersion (col. 11,
ll. 23-27), whereas, in the second control element, rate of dispersion depends
on “the size of the portal or opening” in the impermeable membrane (col. 3,
ll. 27-28). Thus, just as the “size of the surface” and “gaps” limitations in
claim 1 control the release rate in a manner that is independent of the
volatile substance’s physical properties, so too is the “size of the portal or
opening” teaching of Paul.
Lastly, Appellants contest the Examiner’s finding that modifying the
number of gaps in Paul is a matter of obvious design choice. Br. 9. Claim 1
recites that the second control element has “from 500 to 8000 gaps per m2.”
The Examiner surmised that “[t]he number of gaps as recited would have
been a matter of design choice, since it has been held that where the general
conditions of a claim are disclosed in the prior art, discovering the optimum
or workable ranges involves only routine skill in the art.” Ans. 4. Paul
supports this finding, describing the second control element 22 in terms of a
“variable opening system” that has “a plurality of apertures” or “desired
number of apertures” for controlling the rate of dispersion of the volatile
substance. Paul, col. 2, ll. 28-30 and col. 3, ll. 43-55; see also col. 8, l. 50 -
col. 9, l. 19. As such, we discern no error in the Examiner’s finding that the
desired number of gaps or apertures is a matter of design choice.
Appellants respond that “it would be non-sensical” to modify the
apertures (gaps) in Paul’s second control layer 51, purporting that such a
modification “would be leaking the volatile substance from the instant the
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dispenser was manufactured.” Br. 9. Appellants, however, cite no support
for this contention. In contrast, the Examiner found that Paul’s gaps 52 do
not leak. Ans. 5 (citing column 11, lines 5-15) (“dispensing system 20 is
sealed and the [volatile] composition is not dispensed prematurely”). See
also Paul, col. 2, ll. 17-23 (the dispenser is “a fully-integrated, leak-free
container system”) and col. 3, ll. 12-24 (the dispensing system is
“completely sealed within the container, incapable of being released until
desired”). Given these disclosures, we agree with the Examiner that leaking
is not an issue in the dispenser of Paul and find no basis for Appellants’
unsupported assertions to the contrary.
For all of the foregoing reasons, we sustain the rejection of claims 1,
4-14, and 22-24 as rendered obvious by Paul.
Claims 18-21
Claims 18-21 recite various materials and weights for the second
control element. The Examiner found that such materials and material
weight would have been “matters of design choice.” Ans. 4. Appellants do
not dispute the Examiner’s findings that the limitations called for by claim
18-21 are matters of obvious design choice; instead, Appellants present the
same arguments for these claims as were asserted for claim 1 (e.g., that
Paul’s “use of such elements” would lead to “leaking”). Br. 9. We are not
persuaded by these arguments as discussed supra with respect to claim 1.
Accordingly, we sustain the rejection of claims 18-21 as rendered obvious
by Paul.

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DECISION
We AFFIRM the Examiner’s decision rejecting claims 1, 4-14, and
18-24.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv) (2011).

AFFIRMED

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