Ex Parte Decker

Board of Patent Appeals and Interferences

Mar 28, 2012

10759508 (B.P.A.I. Mar. 28, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte DAYNA M. DECKER
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Appeal 2010-002826
Application 10/759,508
Technology Center 3700
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Before STEFAN STAICOVICI, PHILLIP J. KAUFFMAN and
MICHAEL L. HOELTER, Administrative Patent Judges.

HOELTER, Administrative Patent Judge.

DECISION ON APPEAL
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STATEMENT OF THE CASE
This is a decision on appeal, under 35 U.S.C. § 134(a), from claims
159, 160, 162-165, 167, 168, 170, 171, 173-180, 182-185, 187, 189, 190,
193-202, 204, 205, 2071, 209-211, 214-219 and 264 which have been twice
rejected. Claims 1-158, 161, 166, 169, 172, 181, 186, 188, 191, 192, 203,
206, 208, 212, 213, 220-240 and 263 have been cancelled (App. Br. 2).
Claims 241-262 are allowed (App. Br. 2). Appellant’s representative
presented oral argument on Mar. 20, 2012. We have jurisdiction under 35
U.S.C. § 6(b).
We AFFIRM-IN-PART.

The Claimed Subject Matter
The claimed subject matter pertains to a rigid planar wick comprised
of wood provided in a body of meltable fuel wherein the height dimension of
the wick is greater than its width which is greater than its thickness. Claim
159 requires the wood to be selected from the group consisting of poplar and
cherry. Additional claims require such limitations as a straight grain,
moisture content from 6 to 8 percent and/or a wick thickness from 0.023 to
0.028 inches. Independent claim 159 is illustrative of the claims on appeal
and is reproduced below:

159. A candle or candle apparatus, comprising:
a body of a meltable fuel; and
a rigid, planar wick provided in the body; wherein:

1 Claim 207 is not recited in the Examiner’s Answer; however, claim 207
was rejected in the Office Action dated March 6, 2008 from which the
appeal was taken (see Notice of Appeal). Appellant correctly includes claim
207 among the claims on appeal. App. Br. 2.
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the wick has a height dimension, a width dimension, and a
thickness dimension;
the height dimension is greater than the width dimension;
the width dimension is greater than the thickness dimension;
and
the wick comprises a wood selected from the group consisting
of poplar and cherry.

Independent claim 179 requires that the “wood having substantially
straight grains” and “a moisture content of from 6 to 8 percent.”
Independent claims 199 and 264 both require a wick having a thickness
dimension “from 0.023 to 0.028 inches.”

References Relied on by the Examiner
Hoard US 59,839 Nov. 20, 1866
Ladd US 123,917 Feb. 20, 1872
Munger US 383,822 May 29, 1888
Chapin US 431,033 Jul. 1, 1890
Fredericks US 3,175,876 Mar. 30, 1965
Frisch US 6,017,373 Jan. 25, 2000
Ebeling2 SE9903818 L May 2, 2000

Donnelly, W. "Firewood For Your Fireplace", 1974, Library Of
Congress Catalogue No. 74-76012, Printed in United States of America

The Rejection on Appeal
Claims 1593-160, 162-165, 167, 168, 170, 171, 173-180, 182-185,
187, 189, 190, 193-202, 204, 205, [207], 209-211, 214-219 and 264 are

2 An English language translation of this reference, performed by Schreiber
Translations, Inc. and dated November 2006, is of record in this application.
3 Claim 158 was cancelled and is believed to be mistakenly included here by
the Examiner, and is not before us on appeal.
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rejected under 35 U.S.C. § 103(a) as being unpatentable over Ebeling,
Frisch, Donnelly, Munger and Ladd (Ans. 3).

ISSUES
1. Has the Examiner provided sufficient evidence and technical
reasoning for concluding that the combination of Ebeling, Frisch, Donnelly,
Munger and Ladd make obvious a poplar or cherry wick having the
geometry set forth in claim 159?
2. Has the Examiner provided sufficient evidence and technical
reasoning for concluding that the combination of Ebeling, Frisch, Donnelly,
Munger and Ladd make obvious a straight-grained wooden wick having a
moisture content of from 6 to 8 percent as set forth in claim 179?
3. Has the Examiner provided sufficient evidence and technical
reasoning for concluding that the combination of Ebeling, Frisch, Donnelly,
Munger and Ladd make obvious a wick whose thickness is from 0.023 to
0.028 inches as set forth in claims 199 and 264?

ANALYSIS
Appellant argues each independent claim 159, 179, 199 and 264 under
a separate heading and we review each such claim accordingly (App. Br. 5,
12, 13). Appellant does not separately argue the rejection of any dependent
claim (if any) and as such, the rejection of any dependent claim stands or
falls with its respective independent claim selected for review supra (see 37
C.F.R. § 41.37(c)(1)(vii) (2011)).
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Independent claim 159
Claim 159 requires a poplar or cherry wood wick wherein the height
of the wick is greater than its width which is greater than its thickness. The
Examiner relies on Ebeling for all the features claimed, including the
geometry, except that the Examiner relies on Donnelly for teaching that “it is
well known to select a given type of wood” for its characteristics (Ans. 3-6).
Regarding the claimed geometry of the wick, the Examiner reproduces and
annotates Ebeling’s Figures 1-3 indicating where Ebeling discloses a “thin
flat elongate wood or wood product wick” (Ans. 5). These illustrations
disclose a wick whose height is greater than its width which is greater than
its thickness. Regarding the claimed selection of poplar or cherry, the
Examiner states that Donnelly identifies various characteristics (i.e., ease of
burning, heat output, fragrance, sparks, smoke, etc.) for different wood so
that a user can make a selection according to the type of fire desired (Ans.
6). Focusing on fragrance, the Examiner concludes that it would have been
obvious to select the wood wick material of Ebeling “from a fruit wood
product such as cherry wood, having characteristics known to produce a
desired aroma, in view of the teaching of Donnelly” (Ans. 9).
Appellant contends that Ebeling “does not disclose a candle including
a poplar or cherry wick” but Ebeling was not cited for teaching a poplar or
cherry wick and hence this contention is not persuasive (App. Br. 6, Ans. 6,
9). Appellant also addresses Frisch for not disclosing a candle wick, “much
less a candle wick made of poplar or cherry” but again, Frisch was not cited
for this teaching and hence this contention is not persuasive (App. Br. 6).
Appellant also challenges the references to Donnelly, Munger, Hoard and
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Ladd for reasons not related to the Examiner’s reliance thereupon and thus
these contentions are likewise not persuasive (App. Br. 6-7).
Appellant also contends that “[t]he wick in the candle of Ebeling is an
implement used to burn a combustible fuel” whereas “Donnelly only
discloses the attributes of firewood” (App. Br. 7, see also 8 and Reply Br.
4). In further attempting to distinguish Donnelly, Appellant contends that
“[a] wick does not simply burn in the manner of firewood. Instead, a wick
conveys a combustible fuel” (Reply Br. 2). These assertions by Appellant
are not persuasive for the reasons that follow.
First, Ebeling discloses a wood wick for the conveyance of a
combustible fuel and our reviewing court has provided instruction that the
“test for obviousness is not whether the features of a secondary reference
may be bodily incorporated into the structure of the primary reference . . . .
Rather, the test is what the combined teachings of the references would have
suggested to those of ordinary skill in the art” (Ebeling pp. 5-6 and Figs. 1-3;
Keller, 642 F.2d at 425). Here, the Examiner is not attempting to bodily
incorporate bulk firewood into Ebeling’s candle, instead, the Examiner is
employing Donnelly as teaching that different types of wood have different
characteristics (e.g., fragrance) and that it is known to select a given wood
for its known characteristics (Ans. 9; Donnelly 37, 90 and 91).
Second, at the heart of Appellant’s argument is a contention that the
attributes of wood burning alone are so unrelated to the attributes of wood
burning as a candle wick that the attributes of wood burning alone would not
be a useful guide to a person of ordinary skill in the art facing a problem
related to wood utilized as a candle wick. We disagree. Appellant has
provided no evidence in support of this contention. In re Pearson, 494 F.2d
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1399, 1405 (CCPA 1974) (Appellants’ arguments do not take the place of
evidence). Further, Appellant’s own disclosure suggests a relationship
between the attributes of wood burning alone and as a wick. For example,
low moisture content is desirable for wood burning alone (Donnelly pg. 25)
and as a wick (Spec. ¶ 0028). Even if we accept Appellant’s point that wood
burns differently as a wick than as wood alone, Appellant has failed to
explain how that distinction illustrates an error in the Examiner’s rejection.
Accordingly, Appellant’s contention that one skilled in the art would
not reasonably expect similar wood performance whether used as firewood
or as a wick is not persuasive (App. Br. 7, see also Reply Br. 2).
Appellant further submitted a Declaration which Appellant contends
“demonstrates that candles including cherry or poplar wicks, as required by
claim 159, provide unexpected, superior burning properties (flame, acoustic
properties) in comparison to candles including wicks formed from numerous
other woods” (App. 8-9). After reviewing this Declaration, the Examiner
concluded that the “Declarant’s conclusion, presented in paragraph 5, that
the information presented in TABLES A-P provides unexpected, superior
burning properties (Good Flame, Good Crackling Sound) is not
commensurate with the scope of the claimed invention since no claims
contain limitations which address flame properties or crackling sounds”
(Ans. 11-13). The Declaration is an attempt by Appellant to show
unexpected, superior burning properties of cherry or poplar when contrasted
with other woods (App. Br. 8-9; Declaration Tables A-P). However,
Donnelly teaches that it is known to select different woods based on their
particular properties (see Donnelly’s Tables on pages 88-95). Regarding the
particular properties identified in the Declaration (flame, acoustic properties,
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Good Flame, Good Crackling Sound and smoke), we agree with the
Examiner that they are not recited as limitations in claim 159.
Further, to the extent that Appellant is arguing that such effects are
produced by the claimed features, this also does not demonstrate error in the
rejection. It is already known to select wood based on such properties as
flame, acoustics and smoke as addressed in the Declaration (e.g., Donnelly).
In addition, the Specification attributes such effects to the claimed wick, to
include a wick that is not cherry or poplar. See Spec. ¶ 0034-0035, 0039;
compare claim 159 (cherry or poplar) to claims 179, 199, and 264 (not
specifying the species of wood). In other words, Appellant’s contention is
not commensurate in scope with claim 159 because species of wood other
than maple and poplar can produce the effects at issue. Accordingly,
Appellant’s contention regarding the unexpected and superior burning
properties identified in the Declaration is not persuasive.
In view of the record presented, we find that the Examiner has
provided articulated reasoning with rational underpinning to support the
legal conclusion of obviousness. We sustain the Examiner’s rejection of
claims 159, 160, 162-165, 167, 168, 170, 171 and 173-178.
Independent claim 179
Claim 179 does not identify a particular species of wood but instead
requires a “wood having substantially straight grains” and a “moisture
content of from 6 to 8 percent”. Claim 179 also requires a wick wherein the
height of the wick is greater than its width which is greater than its thickness
which has been addressed supra and such analysis will not be repeated here.
The Examiner relies on Munger for disclosing that “wood grain is known to
be generally straight” and recites Donnelly for disclosing that “well
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seasoned-air dry-wood contains 20 percent water or less” (Ans. 7, 10). More
specifically addressing the claimed “moisture content of from 6 to 8
percent,” the Examiner maintains that for the purpose of creating a desired
level of snapping or popping sound, it would have been obvious to form
Ebeling’s wood wick from a product known to produce audible crackling
sounds “such as due to a selected level or degree of moisture therein, in view
of the teaching of Donnelly” (Ans. 11). Appellant contends that none of the
references disclose “a wood candle wick having a moisture content of from
6 to 8 percent” (App. Br. 12). Donnelly expressly teaches a moisture
content of 20 percent or less, which encompasses Appellant’s 6 to 8 percent
(Donnelly pg. 25). Donnelly also discusses the importance of “well
seasoned and dry” wood and that there “is nothing more discouraging than a
smoldering, smoky fire from green or wet wood” (Donnelly pg. 25).
Accordingly, Appellant’s contention is not persuasive.
Appellant also contends that the Examiner has “failed to give due
weight to the submitted evidence of non-obviousness” (App. Br. 12; see also
Reply Br. 3). We note that the moisture content of the wood samples
employed in the submitted Declaration varied from a low of 2% to a high of
15% (see Declaration Tables A, D, F and N). In fact, the only two samples
that were within the claimed range of from 6 to 8 percent were the two
samples employing cherry and poplar (Declaration Tables G and K). We
further note that the three samples having the most moisture content (i.e.,
15% or approximately double the claimed range) were all observed as being
self-extinguishing, did not light or no flame (Declaration Tables A, D and
N). It is expected that wetter wood is harder to light (see Donnelly pg. 25).
Accordingly, we do not find this Declaration to be persuasive with respect to
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Appellant’s moisture content contentions. Appellant further relies on the
“reasons discussed above with respect to claim 159” which is also not
persuasive (App. Br. 12). In view of the record presented, we are not
persuaded by Appellant’s contentions and accordingly, we sustain the
Examiner’s rejection of claims 179, 180, 182-185, 187, 189, 190 and 193-
198.
Independent claims 199 and 264
Both claim 199 and claim 264 require the wick thickness to be “from
0.023 to 0.028 inches.” The Examiner does not cite to any reference
teaching specific wick thicknesses, much less the numerical values claimed.
Instead, the Examiner states that the size and shape of the wick “can be
viewed as nothing more than merely a matter of choice in design absent the
showing of any new or unexpected results produced therefrom over the prior
art of record” (Ans. 7, see also 11). The cited prior art of record regarding
thickness is Ebeling and Ebeling illustrates a rectangular columnar wick, but
does not express any dimensions (Ans. 5). None of the other art cited by the
Examiner expresses a wick dimensions either. Appellant contends that
because none of the references disclose such dimensions, that a “prima facie
case of obviousness has not been made” (App. Br. 13, 14). The Examiner
has not cited any evidence showing that a person of ordinary skill in the art
would have appreciated differences in wick thicknesses at the time of
Appellant’s claimed invention. The Examiner further has not provided a
starting point for any course of routine experimentation which might have
led one of ordinary skill in the art to form wicks having the claimed
dimensions. Moreover, Appellant’s Specification identifies the significance
of wick thickness and Appellant also has submitted evidence in support of
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the contention that wick thickness affects flame performance and, thus, is
not simply a matter of design choice (Spec. ¶ 0071; Declaration Tables A-P).
In view of the record presented, we are not persuaded that the Examiner’s
articulated design choice reasoning has a rational underpinning to support
the legal conclusion of obviousness. Accordingly, we reverse the
Examiner’s rejection of claims 199-202, 204, 205, 207, 209-211, 214-219
and 264.

CONCLUSION
1. The Examiner has provided sufficient evidence and technical
reasoning for concluding that the combination of Ebeling, Frisch, Donnelly,
Munger and Ladd make obvious a poplar or cherry wick having the
geometry set forth in claim 159.
2. The Examiner has provided sufficient evidence and technical
reasoning for concluding that the combination of Ebeling, Frisch, Donnelly,
Munger and Ladd make obvious a straight-grained wooden wick having a
moisture content of from 6 to 8 percent as set forth in claim 179.
3. The Examiner has not provided sufficient evidence and technical
reasoning for concluding that the combination of Ebeling, Frisch, Donnelly,
Munger and Ladd make obvious a wick whose thickness is from 0.023 to
0.028 inches as set forth in claims 199 and 264.

DECISION
The rejection of claims 159, 160, 162-165, 167, 168, 170, 171, 173-
180, 182-185, 187, 189, 190 and 193-198 is affirmed.
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The rejection of claims 199-202, 204, 205, 207, 209-211, 214-219 and
264 is reversed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED-IN-PART

MP