Ex parte MANADANAS et al.

Board of Patent Appeals and Interferences

Feb 18, 1998

08063202 (B.P.A.I. Feb. 18, 1998)

Application for patent filed May 18, 1993.1
1
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today (1)
was not written for publication in a law journal and (2) is not
binding precedent of the Board.
Paper No. 23
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte BENJAMIN Y. MANADANAS, JAMES M. SKAGGS,
SEAN P. O’SULLIVAN and CHRISTOPHER J. HEDIN
__________
Appeal No. 96-1753
Application 08/063,2021
__________
HEARD: February 3, 1998
__________
Before ABRAMS, FRANKFORT and McQUADE, Administrative Patent
Judges.
ABRAMS, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal from the decision of the examiner finally
rejecting claims 1 and 3 through 22, which constitute all of the
claims remaining of record in the application.
Appeal No. 96-1753
Application 08/063,202
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The appellants’ invention is directed to a dispensing device
for dispensing several viscous materials (claims 1, 3 through 14,
and 22), and to a method for so doing (claims 15 through 21).
The subject matter before us on appeal is best illustrated by
reference to claims 1 and 15, which can be found in an appendix
to the Brief.
THE REFERENCES
The references relied upon by the examiner to support the
final rejection are:
Ekdahl 2,103,111 Dec. 21, 1937
Strumor 2,944,705 Jul. 12, 1960
Moore 4,715,518 Dec. 29, 1987
THE REJECTIONS
Claims 1, 3 through 10, 12 through 14 and 15 through 22
stand rejected under 35 U.S.C. § 103 as being unpatentable over
Moore in view of Ekdahl.
Claim 11 stands rejected under 35 U.S.C. § 103 as being
unpatentable over Ekdahl in view of Moore.
Claim 1 also stands rejected under 35 U.S.C. § 103 as being
unpatentable over Moore in view of Strumor.
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Application 08/063,202
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The rejections are explained in Paper No. 14.
The opposing viewpoints of the appellants are set forth in
the Brief.
OPINION
At the outset, we note that the appellants have not argued
the merits of any particular claim apart from the others.
Therefore, all of the apparatus claims will stand or fall with
representative claim 1, and all of the method claims with
representative claim 15. See In re Young, 927 F.2d 588, 18
USPQ2d 1089 (Fed. Cir. 1991).
All of the claims stand rejected under 35 U.S.C. § 103. The
question under Section 103 is not merely what the references
expressly teach but what they would have suggested to one of
ordinary skill in the art at the time the invention was made.
See Merck & Co., Inc. v. Biocraft Laboratories, Inc., 874 F.2d
804, 807, 10 USPQ2d 1843, 1846 (Fed. Cir. 1989). While there
must be some suggestion or motivation for one of ordinary skill
in the art to combine the teachings of references, it is not
necessary that such be found within the four corners of the
references themselves; a conclusion of obviousness may be made
from common knowledge and common sense of the person of ordinary
Appeal No. 96-1753
Application 08/063,202
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skill in the art without any specific hint or suggestion in a
particular reference. See In re Bozek, 416 F.2d 1385, 1390, 163
USPQ 545, 549 (CCPA 1969). Further, in an obviousness
assessment, skill is presumed on the part of the artisan, rather
than the lack thereof. In re Sovish, 769 F.2d 738, 742, 226 USPQ
771, 774 (Fed. Cir. 1985).
Claim 1 first stands rejected as being unpatentable over
Moore and Ekdahl. Moore is directed to a dispenser for striped
viscous products. It discloses a container holding a first
viscous material 64 axially disposed therein and a second viscous
material 68 axially contacting the first viscous material in a
plurality of axial stripes. The container is topped by a spout
34 having a passage 36 through which the two viscous materials
flow simultaneously when a pumping piston 28 is operated. The
appellants have not disputed that with each operation of the
pumping piston, a controlled amount of the second material is
dispensed with respect to the amount of the first material.
According to claim 1, there must be a dispensing means “for
shaping” the first and second viscous materials as they are being
dispensed. While it could be argued that the narrowed exit 38 of
the spout in the Moore device “shapes” the materials issuing
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Application 08/063,202
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therefrom, the examiner has considered this limitation not to be
taught by Moore.
For this teaching the examiner turns to Ekdahl, which
discloses a package for containing and dispensing plastic
materials. Ekdahl teaches extruding materials from a package by
squeezing them through a nozzle so that they assume a
“decorative” form (page 1, line 21). It is our view that one of
ordinary skill in the art would have found it obvious to equip
the Moore device with an extrusion nozzle whose exit comprises a
design “for shaping” the first and second viscous materials as
they exit outlet 38, suggestion being found in Ekdahl’s explicit
teaching that such would provide a decorative extrusion. It is
our further view that it also would have been obvious to one of
ordinary skill in the art to orient the design of the shaping
nozzle in such a fashion as not to compromise Moore’s objective
of dispensing a striped product.
The rejection of claim 1 as being unpatentable over Moore
and Ekdahl is sustained. The rejections of apparatus claims 3
through 10, 12 through 14 and 22, based upon Moore in view of
Ekdahl, and claim 11, based upon Ekdahl in view of Moore, also
are sustained. In re Young, supra. With regard to claim 11, we
note that the appellants merely referred to the arguments set out
Appeal No. 96-1753
Application 08/063,202
We observe that there is no antecedent basis in claim 152
for “said outer material,” although it is clear that this is
intended to refer to the second viscous material which surrounds
the core of first material. This discrepancy in terminology is
worthy of correction.
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in their Brief against the rejection of claim 1 et al., in which
the order of the two references was reversed.
Method claim 15 stands rejected as being unpatentable over
Moore in view of Ekdahl. This claim first recites providing a
core of first viscous material with a second viscous material
“surrounding” the core, and then goes on to require dispensing
means including shaping means “for shaping only said outer
material” (emphasis added). Neither Moore nor Ekdahl teach such2
a feature. Therefore, they fail to establish a prima facie case
of obviousness with regard to the subject matter of this claim,
and we will not sustain the rejection. Nor, it follows, will we
sustain the rejection of dependent claims 16 through 21.
Claim 1 also has been rejected as being unpatentable over
Moore in view of Strumor, the latter being cited for its teaching
of dispensing two viscous materials through an aperture which
decoratively shapes the issuing material. For the same reasons
as were expressed above with regard to the rejection based upon
Moore and Ekdahl, we also will sustain this rejection of claim 1.
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Application 08/063,202
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With regard to all of the rejections which we have
sustained, we have carefully considered the arguments presented
by the appellants. However, they have not convinced us that the
decisions of the examiner were in error. Our position with
regard to each of the arguments should be apparent from the
foregoing recitations.
SUMMARY
The rejection of claims 1, 3 through 10, 12 through 14 and
22 as being unpatentable over Moore in view of Ekdahl is
sustained.
The rejection of claims 15 through 21 as being unpatentable
over Moore in view of Ekdahl is not sustained.
The rejection of claim 11 as being unpatentable over Ekdahl
in view of Moore is sustained.
The rejection of claim 1 as being unpatentable over Moore in
view of Strumor is sustained.
The decision of the examiner is affirmed-in-part.
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No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
AFFIRMED-IN-PART
NEAL E. ABRAMS )
Administrative Patent Judge)
)
)
)
CHARLES E. FRANKFORT ) BOARD OF PATENT
Administrative Patent Judge) APPEALS AND
) INTERFERENCES
)
)
JOHN P. McQUADE )
Administrative Patent Judge)
Appeal No. 96-1753
Application 08/063,202
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Robert C. Sullivan
Colgate-Palmolive Co.
909 River Road
P.O. Box 1343
Piscataway, NJ 08855-1343