Ex Parte Sharma et al

Patent Trial and Appeal Board

Jun 29, 2018

14289761 (P.T.A.B. Jun. 29, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/289,761 05/29/2014
28165 7590 07/03/2018
S.C. JOHNSON & SON, INC.
1525 HOWE STREET
RACINE, WI 53403-2236
FIRST NAMED INVENTOR
Nitin Sharma
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-6033 1466
EXAMINER
MULL, HOLLY MICHAELA
ART UNIT PAPER NUMBER
1799
NOTIFICATION DATE DELIVERY MODE
07 /03/2018 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 NITIN SHARMA,
BRIANT. DA VIS, and ALLYCE M. GILLIGAN
Appeal2017-007913
Application 14/289,761
Technology Center 1700
Before MICHAEL P. COLAIANNI, GEORGE C. BEST, and
N. WHITNEY WILSON, Administrative Patent Judges.
BEST, Administrative Patent Judge.
DECISION ON APPEAL
The Examiner rejected claims 1-12 and 19-24 of Application
14/289,761under35 U.S.C. § 103(a) as obvious. Final Act. (April 18,
2016). Pursuant to 35 U.S.C. § 134(a), Appellants 1 seek reversal of these
rejections. 2 We have jurisdiction. 35 U.S.C. § 6(b ).
For the reasons set forth below, we affirm-in-part.
1 S.C. Johnson & Son, Inc. is identified as the applicant and real party in
interest. Br. 1.
2 Claims 13-18 are withdrawn from consideration and, thus, are not subject
to the appealed rejections. Final Act. 1.
Appeal2017-007913
Application 14/289,761
BACKGROUND
The '761 Application describes devices that dispense air treatment
chemicals from a substrate. Spec. i-f 3. The devices use candle heat to drive
the dispensing. Id.
Claims 1and19 are representative of the '761 Application's claims
and are reproduced below from the Claims Appendix to the Appeal Brief:
1. A device for dispensing an air treatment chemical, the
device comprising:
a housing having a side wall defining a first internal
cavity;
a caddy assembly supported by the housing and having:
an upper caddy frame having an upper surface and
a second sidewall defining a second internal cavity, the second
sidewall depending downwardly from the upper surface,
wherein the second internal cavity is configured to mount a
substrate bearing an air treatment chemical adjacent an upper
portion of the housing; and
a candle holder removably coupled to the upper
caddy frame and configured to support a candle having a wick
adjacent a lower portion of the housing in the first internal
cavity;
a substrate bearing air treatment chemical suitable to be
supported by the upper caddy frame; and
a candle suitable to be supported by the candle holder.
Appeal Br. 9.
19. A device for dispensing a pest control active ingredient,
the device comprising:
a sand core substrate impregnated with the pest control
active ingredient,
a candle positioned below the sand core substrate, and
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Application 14/289,761
a heat deflector plate positioned between the substrate
and the candle, the heat deflector plate having a plurality of
vent holes,
wherein when in use a temperature of a top surface of the
sand core substrate can average over an hour period at 115
degrees C to 135 degrees C.
Id. at 11.
REJECTIONS
On appeal, the Examiner maintains the following rejections:
1. Claims 1-9, 11, and 12 are rejected under 35 U.S.C. § 103 as
unpatentable over the combination of Wu3 and Davis. 4 Final Act. 3-8.
2. Claim 10 is rejected under 35 U.S.C. § 103 as unpatentable over
the combination of Wu, Davis, and Munagavalasa. 5 Final Act. 8-9.
3. Claim 19 is rejected under 35 U.S.C. § 103 as unpatentable over
Davis. Final Act. 9-10.
4. Claim 20 is rejected under 35 U.S.C. § 103 as unpatentable over
the combination of Davis and Wu. Final Act. 10-11.
5. Claim 21 is rejected under 35 U.S.C. § 103 as unpatentable over
the combination of Davis, Wu, and Fumer. 6 Final Act. 11-12.
6. Claim 22 is rejected under 35 U.S.C. § 103 as unpatentable over
the combination of Davis and Bonnema. 7 Final Act. 12-13.
3 US 2008/0110450 Al, published May 15, 2008.
4 US 2006/0039945 Al, published Feb. 23, 2006.
5 US 6,534,079 B 1, issued Mar. 18, 2003.
6 US 2014/0010715 Al, published Jan. 9, 2014.
7 US 2003/0067770 Al, published Apr. 10, 2003.
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Application 14/289,761
7. Claim 23 is rejected under 35 U.S.C. § 103 as unpatentable over
the combination of Davis, Wu, and Soller. 8 Final Act. 13-14.
8. Claim 24 is rejected under 35 U.S.C. § 103 as unpatentable over
the combination of Davis, Wu, and Furner. Final Act. 14--15.
DISCUSSION
Appellants argue for the reversal of these rejections on the basis of
limitations present in independent claims 1 and 19 and dependent claim 11.
See Appeal Br. 4--8; Reply Br. 2--4. We, therefore, limit our analysis to
Rejection 1 and Rejection 3.
Rejection 1. The Examiner rejected claims 1-9, 11, and 12 as
obvious over the combination of Wu and Davis. Final Act. 3-8.
The patent examiner bears the initial burden of establishing a prima
facie case that an application's claims are obvious based upon what was
known in the prior art. See In re Dillon, 919 F.2d 688, 701 (Fed. Cir. 1990).
Here, the Examiner found, inter alia, that Wu discloses a device for
dispensing an air treatment chemical including
a bracket (upper caddy frame) ... having an upper surface (21)
... and a second sidewall (22) ... defining an internal cavity
(23) ... , the sidewall (22) depending downwardly from the
upper surface (21) ... , wherein the internal cavity is capable of
permitting a substrate to be mounted thereon.
Final Act. 4 (emphasis added) (citing Wu i-fi-f 19, 22; Figs. 7, 8).
8 US 6,663,838 Bl, issued Dec. 16, 2003.
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Application 14/289,761
Wu's Figure 7, which illustrates a sectional view an oil pan, is
reproduced below.
2 24 21
23 221 221 22 221
FIG. 7
Figure 7 from Wu illustrates features of an oil pan 2 including
recessed top open chamber 21 that carries oil, bottom partition wall 22, air
chamber 23, and plurality of air holes 221.
Although the Examiner found that Wu does not disclose that the
device is comprised of a substrate bearing an air treatment chemical, the
Examiner relied upon Davis for teaching such a device. Final Act. 4. The
Examiner found that "Davis[] teaches that sand-based substrates are
preferred for applications where an air treatment chemical is released by heat
because sand particles are non-reactive and resistant to heat." Id. (citing
Davis i-f 20). The Examiner determined that it would have been obvious to
the ordinary skilled artisan to modify Wu's device "such that a substrate
bearing an air treatment chemical is substituted for [Wu's] essential oil"
because, inter alia, such an artisan "would have recognized the advantage in
supplying [Wu's] device ... with [Davis'] solid sand-based substrate[,
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Application 14/289,761
which] ... avoids the issues of leaks and spills commonly associated with
liquid essential oils." Final Act. 5.
Appellants argue, inter alia, that "the Examiner has failed to establish
a prima facie case of unpatentabilty of claim 1." Appeal Br. 5. In particular,
Appellants focus on the limitation requiring "an upper caddy frame that has
both 'an upper surface' and a 'second internal cavity [that] is configured to
mount a substrate bearing an air treatment chemical."' Id. at 4 (emphasis
omitted). Appellants further argue that the "configured to" language
indicates a positive limitation, rather than indicating merely an intended use.
Id. at 5. According to Appellants, this "positive structural limitation ...
requires the cavity to be fashioned in a manner that allows for the receipt
and retention of the substrate bearing an air treatment chemical." Id.
Appellants' arguments are persuasive.
We begin by interpreting the language of claim 1. In particular, we
construe the phrase "configured to mount a substrate."
During prosecution, the PTO gives the language of the proposed
claims "the broadest reasonable meaning of the words in their ordinary
usage as they would be understood by one of ordinary skill in the art, taking
into account whatever enlightenment by way of definitions or otherwise that
may be afforded by the written description contained in the applicant's
specification." In re Morris, 127 F.3d 1048, 1054--55 (Fed. Cir. 1997).
In this instance, the Specification discloses that a "[t]he substrate
receiving feature 154 includes a sidewall 158, a base or floor 162, and a
substrate retaining feature in the form of four tabs 166." Spec. i-f 5 8
(emphasis added); see id. at Fig. 13. We, therefore, interpret the claimed
configuration for mounting a substrate as requiring features for receipt and
retention of the substrate, as Appellants argue.
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The Examiner's rejection is based upon an erroneous construction.
The Examiner construes the claim as not requiring the consideration of
features that enable receipt and retention of the substrate. Without a proper
construction, the Examiner has not provided sufficient factual findings that
Wu's open chamber 21 or air chamber 23 discloses or suggests the claimed
configuration. Appellants, thus, identify reversible error in the Examiner's
finding that Wu's "structure of the cavity (23) is a chamber defining an open
space and is therefore perfectly capable of permitting a substrate to be
mounted therein." Answer 2-3.
Therefore, we cannot sustain the rejection of claim 1.
We express no opinion regarding Appellants' separate arguments
urging reversal of dependent claim 11. Dependent claims 2-12 will stand
with their respective parent independent claim 1. 37 C.F.R.
§ 41.37(c)(l)(iv). Accordingly, we reverse the rejection of claims 1-9, 11,
and 12 under 35 U.S.C. § 103 as unpatentable over the combination of Wu
and Davis and claim 10 under 35 U.S.C. § 103 as unpatentable over the
combination of Wu, Davis, and Munagavalasa.
Rejection 3. The Examiner rejected claims 19 as unpatentable over
Davis. Final Act. 9-10.
The Examiner found that Davis discloses each element of the device
for dispensing an active ingredient recited in claim 19, with the exception of
the requisite plurality of vent holes in a heat deflector plate. Id. at 10. The
Examiner, however, found that "Davis[] teaches that a ceiling structure
(138a) fastened to the upper side of the heat deflector plate (150) comprises
a plurality of vent holes (140) configured to allow hot gases generated by the
candle to escape the device." Id. (citing Davis i-f 10). Based on these
findings, the Examiner determined that it would have been obvious to the
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ordinary skilled artisan "to provide the heat deflector plate (150) with a
plurality of vent holes as such a modification represents a mere duplication
of parts of [Davis'] vent holes (140) ... and would [have] result[ed] in the
desirable outcome of permitting hot gases to pass through the heat deflector
plate and out of the device." Final Act. 10 (citing MPEP § 2144.04).
Appellants argue that the applied prior art teaches away from claim 19
because Davis' heat defector plate 150 "is devoid of holes to 'protect[] the
downwardly facing edge of the volatile bearing section 146 from the direct
impact of the hot gases rising from the candle."' Appeal Br. 7 (citing Davis
ii 63).
With respect to the Examiner's conclusion that the proposed
modification to heat deflector plate 150 would have been a mere duplication
of parts, Appellants' response is two-fold. First, Appellants assert that the
disputed limitation provides a "new and unexpected result in comparison to
what Davis suggests would [have] occur[ ed] were its baffle strip 150
configured to permit direct contact between the hot gases and the volatile
bearing section 146." Appeal Br. 8. Second, Appellants argue that "adding
holes to [Davis'] deflector plate ... would not duplicate the function
performed by Davis'[] ceiling vents." Reply Br. 4.
Appellants' arguments are not persuasive.
With respect to Appellants' assertion that Davis teaches away from
the disputed limitation, we agree with the Examiner that Davis suggests that
the device's functionality would not have been destroyed by providing plate
150 with vent holes. Answer 5. As the Examiner found, "Davis discloses
that the device can successfully perform with the plate 150 in place or with
the plate 150 eliminated from the device entirely." Id. at 5 (citing Davis
ii 87)).
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Likewise, Appellants' arguments alleging error in the Examiner's
position regarding the mere duplication of vents are similarly unpersuasive.
First, we agree with the Examiner that Appellants have not demonstrated
any new and unexpected result because Davis reasonably suggests "that
providing [Davis'] plate 150 ... with vent holes would [have] result[ed] in
the easily predictable outcome of permitting the passage of rising hot gases
through the device." Answer 6; see also id. at 5 (citing Davis i-f 63
(disclosing that vent holes may be used to allow hot gases generated by the
candle to travel through the device)). Second, Appellants do not direct our
attention to any persuasive authority requiring that the Examiner must find
that the duplicated parts retain their original function. See generally Reply
Br. 4.
Therefore, we sustain the rejection of claim 19.
Dependent claims 20-24 will fall with their parent independent claim
19. 37 C.F.R. § 41.37(c)(l)(iv). Accordingly, we affirm the rejection of
claim 19 under 35 U.S.C. § 103 as unpatentable over Davis, claim 20 under
35 U.S.C. § 103 as unpatentable over the combination of Davis and Wu,
claim 21 under 35 U.S.C. § 103 as unpatentable over the combination of
Davis, Wu, and Furner, claim 22 under 35 U.S.C. § 103 as unpatentable over
the combination of Davis and Bonnema, claim 23 under 35 U.S.C. § 103 as
unpatentable over the combination of Davis, Wu, and Soller, and claim 24
under 35 U.S.C. § 103 as unpatentable over the combination of Davis, Wu,
and Furner.
DECISION
For the reasons set forth above, we reverse the rejection of claims 1-
12. We affirm the rejection of claims 19-24.
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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-IN-PART
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