Ex Parte Dobbs et al

Board of Patent Appeals and Interferences

Sep 2, 2010

11156355 (B.P.A.I. Sep. 2, 2010)

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.
11/156,355 06/17/2005 John Brandon Dobbs 1924.006 4828
30589 7590 09/03/2010
DUNLAP CODDING, P.C.
PO BOX 16370
OKLAHOMA CITY, OK 73113
EXAMINER
PARSLEY, DAVID J
ART UNIT PAPER NUMBER
3643
MAIL DATE DELIVERY MODE
09/03/2010 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 BOARD OF PATENT APPEALS
AND INT ERFERENCES
____________

Ex parte JOHN BRANDON DOBBS and ROBERT ASHLEY DOBBS
____________

Appeal 2009-008573
Application 11/156,355
Technology Center 3600
____________

Before JOHN C. KERINS, STEVEN D.A. McCARTHY, and
STEFAN STAICOVICI, Administrative Patent Judges.

Opinion for the Board filed by Administrative Patent Judge STAICOVICI.

Opinion Dissenting filed by Administrative Patent Judge KERINS.

STAICOVICI, Administrative Patent Judge.

DECISION ON APPEAL1

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.

Appeal 2009-008573
Application 11/156,355

STATEMENT OF THE CASE
John Brandon Dobbs and Robert Ashley Dobbs (Appellants) appeal
under 35 U.S.C. § 134 (2002) from the Examiner’s decision rejecting claims
1, 2, 4, and 5 under 35 U.S.C. § 103(a) as unpatentable over McGriff (US
5,297,354, issued Mar. 29, 1994) and Campagnoli (WO 98/30621, published
Jul. 16, 1998) and claims 3 and 6 as unpatentable over McGriff,
Campagnoli, and Raymond (US 5,632,113, issued May 27, 1997). We have
jurisdiction over this appeal under 35 U.S.C. § 6 (2002).

THE INVENTION
Appellants’ invention relates to a method for imparting a scent to an
object 11 including providing a container 10 having a scented inner layer 28
and placing the object in the container so as to impart a scent to the object
11. Spec., Abstract and fig. 3.
Claim 1 is representative of the claimed invention and reads as
follows:
1. A method of storing and imparting a scent to an object,
comprising:

unsealing a sealed container having an outer barrier layer
fabricated of a moisture and gas barrier material and an inner scented
layer comprising a film extruded from a mixture of a polymeric
material and a scented compound such that the inner scented layer has
a scent that disperses from the inner scented layer;

positioning the object in the container;

resealing the container to encapsulate the object and the scent in
the container;

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Application 11/156,355

storing the object in the container for a period of time sufficient
to permit the scent of the inner scented layer to disperse from the
inner scented layer and to be imparted to the object while the outer
barrier layer serves as a barrier to prevent surrounding objects from
being contaminated with the scent; and

unsealing the container and removing the scented object from
the container.

SUMMARY OF DECISION
We AFFIRM-IN-PART.

OPINION
Claims 1-3
Appellants do not present any separate arguments for the patentability
of claim 2 apart from independent claim 1. App. Br. 8. Thus, in accordance
with 37 C.F.R. § 41.37(c)(1)(vii), dependent claim 2 stands or falls with
claim 1.
Appellants first argue that McGriff does not disclose “sealing or
unsealing a container to encapsulate a scent,” as called for by claim 1. App.
Br. 9. According to Appellants, because the pouch of McGriff is constructed
from “vinyl, leather or other suitable material” and fastened with hook and
loop elements 44, 46, the container of McGriff “is completely incapable of
encapsulating the scent.” App. Br. 10.
We find Appellants’ argument unpersuasive for the following reasons.
First, we agree with the Examiner that vinyl “is completely water and gas
resistant.” Ans. 5. Appellants have not provided any evidence to show
otherwise. Second, we note that Appellants’ Specification does not
expressly define the term “seal” or otherwise indicate that this term is used
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in a manner other than its ordinary and customary meaning. Like the
Examiner, we find that an ordinary and customary meaning of the term
“seal” is “to close or make secure against access, leakage or passage by a
fastening or coating.” MERRIAM WEBSTER’S COLLEGIATE DICTIONARY (10th
Ed. 1997). Emphasis added. As noted by the Examiner, McGriff’s vinyl
pouch includes hook and loop fasteners 44, 46 that close the pouch so that
the worm oil 50 does not leak to contact the user. McGriff, col. 3, ll. 62-68
and fig. 1. See also Ans. 5. Hence we agree with the Examiner that “[t]he
device of McGriff is sealed in that it is closed.” Ans. 5. We further agree
with the Examiner that claim 1 does not require a hermetic airtight seal.
Ans. 6. As stated by our reviewing court in In re Hiniker Co., 150 F.3d
1362, 1369 (Fed. Cir. 1998), “the name of the game is the claim.” It is well
established that limitations not appearing in the claims cannot be relied upon
for patentability. In re Self, 671 F.2d 1344, 1348 (CCPA 1982). Moreover,
we note that Appellants’ Specification does not provide any indication that
Appellants’ sealed container is airtight (hermetically sealed). The
Specification merely states that the claimed sealed container includes a
closure member 32 that can be a “zipper type closure. . . adhesive, tape, ties,
or a combination thereof.” Without more, a mere zipper, adhesive, tape or
tie does not necessarily create an airtight seal, as Appellants would have us
believe.
Next, Appellants take the position that because the plastic structure of
Campagnoli merely incorporates a scent, Campagnoli does not disclose an
inner scented layer having a scent that disperses from the inner scented layer
to be imparted to an object, as called for by claim 1. App. Br. 11-12.
However, as the Examiner has pointed out, it is McGriff that specifically
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discloses “an inner scented layer - at 26-36, comprising a film and a scented
compound such that the inner layer [26, 36] has a scent/fish attracting scent
that disperses from the inner scented layer.” Ans. 3. In other words, the
Examiner used the disclosure of McGriff to show the claimed inner scented
layer. See Ans. 6. Furthermore, as Appellants have noted, Campagnoli
specifically discloses that the “scenting agent slowly diffuses out of the
scented plastics” in order “to give off a scented fragrance for extended
periods of time.” Campagnoli, p. 4, ll. 3-4. See also App. Br. 12. Hence,
a person of ordinary skill in the art would have readily appreciated that any
object placed in the vinyl pouch of McGriff as modified by Campagnoli
would be infused with both the scent of McGriff’s inner scented layer and
that of the scented plastic of Campagnoli.
Lastly, Appellants argue that the Examiner’s proposed modification
of replacing the absorbent applicator of McGriff with Campagnoli’s scented
plastic would not have been obvious to a person of ordinary skill in the art
because “it would render the McGriff device unsuitable for its explicitly
stated purpose of applying scented bait oil to a fishing lure.” App. Br. 13.
However, the Examiner’s proposed combination does not replace the
absorbent applicator of McGriff with Campagnoli’s scented plastic, as
Appellants would have us believe, but rather adds the scented material of
Campagnoli “so as to allow for the scent to be given off from the device for
an extended period of time.” Ans. 4.
Accordingly, for the foregoing reasons, the rejection of claim 1
under 35 U.S.C. § 103(a) as unpatentable over McGriff and Campagnoli,
and claim 2 standing or falling with claim 1, is sustained.
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With respect to claim 3, Appellants do not present any arguments
separate from the arguments presented with respect to claim 1. Accordingly,
the rejection of claims 3 under 35 U.S.C. § 103(a) as unpatentable over
McGriff, Campagnoli, and Raymond is likewise sustained.

Claims 4-6
Appellants further argue that the combined teachings of McGriff and
Campagnoli do not disclose the “additional limitation of the scent dispersing
from the scented inner layer without manipulation [of the container].” App.
Br. 15. In response, the Examiner takes the position that “as seen in figures
3-4 after the device [of McGriff] is closed the scent is imparted to the bait –
at 12, while the bait is sitting still in the container without further manually
manipulating the device.” Ans. 6-7. We disagree with the Examiner’s
position. In Figure 3 McGriff specifically shows a user that squeezes and
manipulates the outer surfaces of pouch 14 to apply worm oil to worm 12.
McGriff, col. 3, ll. 1-5 and col. 4, ll. 22-30. McGriff further describes
removing the worm 12 from the pouch after it has been coated with worm
oil. McGriff, col. 3, ll. 5-7. Figure 4 of McGriff merely shows how the
pouch 14 is secured to the user’s belt when not in use. McGriff, col. 2, ll.
26-28. We could not find any portion in McGriff and the Examiner has not
pointed to any portion that would describe an embodiment where the worm
12 is stored in the pouch for a period of time so as to impart a scent to worm
12 without manipulation of the pouch. Although we appreciate that pouch
14 is capable of holding worm 12 for a period of time so that it may be
imparted with a scent, we find that such an interpretation of McGriff would
be speculative at best. Accordingly, we agree with Appellants that McGriff
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does not disclose the limitation of dispersing fish attracting scent from the
inner scented layer “without manipulation of the container,” as called for by
in claim 4.
Neither Campagnoli nor Raymond cures the deficiency of McGriff
as shown above. Accordingly, the rejection of claim 4 and its dependent
claim 5 under 35 U.S.C. § 103(a) as unpatentable over McGriff and
Campagnoli cannot be sustained. Similarly, the rejection of claim 6 as
unpatentable over McGriff, Campagnoli, and Raymond likewise cannot be
sustained.
SUMMARY
The decision of the Examiner is affirmed as to claims 1-3 and
reversed as to claims 4-6.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv) (2007).

AFFIRMED-IN-PART
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KERINS, Administrative Patent Judge, dissenting:

I agree with the majority’s reversal of the Examiner’s rejection of
claims 4 and 5 under 35 U.S.C. § 103(a) as being unpatentable over McGriff
and Campagnoli, and of claim 6 as being unpatentable over McGriff,
Campagnoli and Raymond.
I would, however, also reverse the Examiner’s rejection of claims 1
and 2 as being unpatentable over McGriff and Campagnoli, and of claim 3
as being unpatentable over McGriff, Campagnoli and Raymond.
Appellants contend that the McGriff patent “does not teach or suggest
sealing or unsealing a container to encapsulate a scent” as required by claim
1, Appeal Br. 9. The Examiner and my colleagues here have construed the
term “seal” to simply mean “closed”, and that the McGriff container may be
opened and closed using a flap secured with hook and loop fasteners. Ans.
5, Majority Opinion, supra. at 4.
I share my colleagues’ concern that the term “seal” is not expressly
defined in the Specification, and indeed only appears in the claims, with
Appellants instead using the terms “opened” and “closed” and variants
thereof in describing the invention. See, e.g., Spec., p. 3, para. [0013].
Notwithstanding, I believe that the majority’s interpretation of the term
“seal” extends beyond the broadest reasonable interpretation that should be
afforded to that term consistent with the Specification, and does not apply
the most appropriate customary and ordinary meaning for the term from the
dictionary definition cited.
With respect to the latter, the dictionary definition of “seal”, includes
the meaning, “to . . . make secure against . . . leakage.” ” MERRIAM
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WEBSTER’S COLLEGIATE DICTIONARY (10th Ed. 1997). In the context of
claim 1 calling for a step of “resealing the container to encapsulate the object
and the scent in the container,” with “the outer barrier layer serv[ing] as a
barrier to preventing surrounding objects from being contaminated with the
scent,” this more specific definition of “seal” better represents the meaning
that would be attributed to the term by persons of ordinary skill in the art.
The McGriff container, which closes via a flap folded over an opening and
secured with mating portions of a hook and loop fastener, does not appear to
be capable of being made secure against leakage of either gas or liquid
inside the container.
The Specification further advises that the container includes an inner
scented liner and an outer barrier layer which is laminated to the inner
scented layer “so that a scent incorporated in the inner scented layer 28, and
depicted in FIG. 3 by dispersing lines 31, is encapsulated within the
container 10 when the container 10 is in the closed state (FIGS. 2 and 3).”
Spec., p. 3, para. [0012]. Paraphrasing Appellants’ rhetorical question (see,
Reply Br. 2), of what use would an outer barrier layer (claimed as being
made of a moisture and gas barrier material) be if the closed or sealed state
of the container permitted the encapsulated scent2, to escape through the
closure member? Persons of ordinary skill in the art would understand,
despite the absence in the Specification and claims on appeal of more
specific terms such as “hermetically sealed” or “airtight”, that Appellants’
claimed method involving unsealing of a sealed container and resealing of
the container to encapsulate the object placed therein as well as the scent, is

2 The claimed scented compound, presumably released from the inner
scented layer and borne by a gas or vapor within the container.
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calling for a sealing that secures the container against leakage of the scent
contained within.
The Examiner has not established that the McGriff patent, either alone
or as modified by Campagnoli or Raymond, teaches or suggests a method
for sealing (resealing) a container that secures the container against leakage
of the scent contained within. I would therefore reverse the rejections of
claims 1-3 under 35 U.S.C. § 103(a).

JRG

DUNLAP CODDING, P.C.
P.O. BOX 16370
OKLAHOMA CITY, OK 73113
10