Ex Parte McLisky

Patent Trial and Appeal Board

Oct 3, 2013

11371740 (P.T.A.B. Oct. 3, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte NIGEL HAIG MCLISKY
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Appeal 2011-011424
Application 11/371,740
Technology Center 3700
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Before MICHAEL C. ASTORINO, MICHELLE R. OSINSKI, and
ADAM V. FLOYD, Administrative Patent Judges.

ASTORINO, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
The Appellant appeals under 35 U.S.C. § 134 from the Examiner’s
decision finally rejecting claims 1-12, 14, 15, 20, and 21. Claim 13 has been
cancelled and claims 16-19 have been withdrawn. Br., Clms. App’x.; see
Br. 2. We have jurisdiction over the appeal under 35 U.S.C. § 6(b).
We REVERSE.
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Claimed Subject Matter
Claims 1 and 20 are the independent claims on appeal. Claim 1,
reproduced below with added emphasis, is illustrative of the subject matter
on appeal.
1. A dispenser adapted to receive a containment
portion holding a quantity of dispensable material,
the dispenser having a circuit board, an indicator
means, a valve adapted to be connected to the
containment portion, and sensing means that
senses a level of light in an environment
immediately surrounding the dispenser, wherein
the circuit board controls dispensing of the
dispensable material by a cycle of dispensing that
includes opening and closing the valve at
predetermined intervals and the sensing means is
electrically connected to the circuit board, wherein
the circuit board is activated in response to a signal
transmitted to the circuit board in response to the
sensing means sensing a predetermined level of
light such that once the circuit board is activated
in response to the signal it cannot be deactivated
until the dispensable material has been dispensed
in accordance with the cycle, and wherein when
the dispensable material has been dispensed in
accordance with the cycle the indicator means
indicates that this has occurred.

The dispenser of claim 20 is similar to the dispenser of claim 1. See Br.,
Clms. App’x. Identical to claim 1, claim 20 recites “once the circuit board is
activated in response to the signal it cannot be deactivated until the
dispensable material has been dispensed in accordance with the cycle,”
hereinafter the “deactivation prohibition clause.” Id.
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Rejections
Claims 1-12, 14, 15, 20, and 21 are rejected under 35 U.S.C. § 112,
first paragraph, as failing to comply with the enablement requirement.
Claims 1-11, 14, 15, 20, and 21 are rejected under 35 U.S.C. § 102(b)
as anticipated by Contadini (US 6,267,297 B1, iss. Jul. 31, 2001).
Claim 12 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Contadini and McLisky (US 6,974,091 B2, iss. Dec. 13, 2005).
Claims 1-3, 5-9, 11, 15, 20, and 21 are rejected under 35 U.S.C.
§ 103(a) as unpatentable over Muderlak (Re. 34,847, iss. Feb. 7, 1995) and
Contadini.

OPINION
The Enablement Rejection
The basis of the Examiner’s enablement rejection is that the
Specification does not disclose the deactivation prohibition clause in such a
way as to enable one skilled in the art to make and/or use the invention. See
Ans. 3. Further, the Examiner explains that the “[S]pecification discloses
the dispenser being such that once turned on for dispensing it cannot be
turned off until it has completed a pre-set cycle of dispensing (see paragraph
35), however, the specification is silent to distinct structural means for
performing the specified function.” Id.1 The Examiner appears to be
referring to the Specification at page 6, lines 7-15 which states “once

1 The Examiner’s citation to “paragraph 35” appears to be referencing
paragraph 35 of McLisky (US 2006/0191955 A1, pub. Aug. 31, 2006),
which corresponds to the Specification at page 6, lines 7-15.
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[dispenser 1 is] turned on for dispensing it cannot be turned off until it has
completed a pre-set cycle of dispensing.” Spec. 6, ll. 7-8.
Insofar as the enablement requirement is concerned, the dispositive
issue is whether the applicant’s disclosure, considering the level of ordinary
skill in the art as of the date of the Appellant’s application, would have
enabled a person of such skill to make and use the appellant’s invention
without undue experimentation. In re Strahilevitz, 668 F.2d 1229, 1232
(CCPA 1982). Factors to be considered in determining whether a disclosure
would require undue experimentation include (1) the quantity of
experimentation necessary, (2) the amount of direction or guidance
presented, (3) the presence or absence of working examples, (4) the nature
of the invention, (5) the state of the prior art, (6) the relative skill of those in
the art, (7) the predictability or unpredictability of the art, and (8) the breadth
of the claims. In re Wands, 858 F.2d 731, 737 (Fed. Cir. 1988).
At the outset, we note that the Examiner has not made any findings
that a person of ordinary skill in the art would not have been able, without
undue experimentation, to make a circuit board including the functionality of
the deactivation prohibition clause. See also Br. 6-8. As such, the Examiner
has not met the initial burden to establish a reasonable basis to question the
enablement provided for the deactivation prohibition clause. In re Wright,
999 F.2d 1557, 1561-62 (Fed. Cir. 1993) (when rejecting a claim for lack of
enablement, the USPTO bears the initial burden of setting forth a reasonable
explanation as to why the scope of the claim is not adequately enabled by
the description provided in the specification).
Further, the Examiner explains “the [S]pecification fails to adequately
teach a distinct structural element of the circuit board which distinguishes it
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over the cited art.” Ans. 9 (emphasis added). This explanation suggests that
the Examiner is confusing the enablement rejection under the first paragraph
of section 112 and the prior art rejections under sections 102 and 103, rather
than providing analysis that supports the Examiner’s enablement rejection.
Thus, we cannot sustain the enablement rejection of independent
claims 1 and 20, and their dependent claims 2-12, 14, 15, and 21.

The Anticipation Rejection based on Contadini
The Examiner finds Contadini discloses a dispenser 10 including a
dispensable material, a circuit board, a valve, and a light sensing means,
where “the circuit board is activated in response to a signal transmitted to the
circuit board in response to the sensing means sensing a predetermined level
of light.” See Ans. 4 (citing Contadini, fig. 1, col. 5, l. 56 – col. 6, l. 27, col.
12, ll. 12-19); see also Contadini col. 11, l. 58, col. 12, l. 63. Indeed,
Contadini discloses that the controller (circuit board) can comprise a light
sensor, either alone or in combination with a clock/timer, “which is
operatively connected to the dispensing assembly such that the dispensing
assembly either begins or ceases operating during periods when the ambient
light is above or below certain levels.” Id. at col. 6, ll. 21-26; see Ans. 6-7.
Contadini also discloses the use of a controller/circuit board having different
programmable and preprogrammed modes, e.g., time of day, time of week,
and light above or below a predetermined threshold. Contadini, col. 5, l. 55
– col. 6, l. 57.
The Examiner determines that Contadini discloses the deactivation
prohibition clause of claims 1 and 20 because “in the mode where the
controller is programmed to begin operating during periods when the
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ambient light is above or below a certain level it will not deactivate until the
incorporated clock/timer cycle has ended (i.e. 5 a [sic] second burst).” Ans.
7.
The Appellant contends the Examiner’s finding that Contadini
discloses the deactivation prohibition clause of claims 1 and 20 is not
adequately supported. See Br. 9-10. In response, the Examiner explains that
“absent the teaching of a distinct structural element of the circuit board for
performing the specified function, [Contadini] will inherently dispense the
dispensable material in accordance with the cycle without deactivation as
designed to perform.” Ans. 10. Additionally, the Examiner explains that
since Contadini’s structure, i.e., controller/circuit board, is programmable, it
is capable of performing the functionality of claims 1 and 20. See Ans. 9.
However, the Appellant asserts “Contadini is silent regarding when . . .
instructions may be input or sent to modify the operation of the dispenser or
whether an operator is precluded from inputting or sending such instructions
while the dispenser is operating in a dispensing mode.” Br. 10. The
Appellant’s contention is persuasive. Although Contadini discloses a
programmable dispenser, its controller/circuit board is only capable of being
programmed for those modes that exist in its controller/circuit board. Since
Contadini does not disclose a mode that relates to the deactivation
prohibition clause, the Examiner’s finding that Contadini’s controller/circuit
board is capable of performing the functionality of claims 1 and 20 is
inadequately supported.
Thus, the rejection of independent claims 1 and 20, and their
dependent claims 2-11, 14, 15, and 21, as anticipated by Contadini is not
sustained.
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The Obviousness Rejection based on Contadini and McLisky
The Examiner’s rejection of claim 12, based on Contadini in
combination with McLisky, relies on the inadequately supported finding
discussed above with regard to the rejection of independent claim 1.2 See
Ans. 7. The Examiner’s additional finding that McLisky discloses a
containment portion releasable from a dispenser by use of a screw fitting
does not cure the deficiency of the Examiner’s rejection of claim 1. Id. As
such, we cannot sustain the rejection under 35 U.S.C. § 103(a) of claim 12
as unpatentable over Contadini and McLisky.

The Obviousness Rejection based on Muderlak and Contadini
The Examiner finds Muderlak discloses a dispenser including a
dispensable material, a circuit board, a valve, and a light sensing means and
that:
the dispenser includ[es] a mode of operation wherein the circuit
board is activated when the light is below a predetermined
threshold, the dispenser is activated to dispense the dispensable
material according to the timing cycle, and cannot be
deactivated until the dispensable material has been dispensed in
accordance with the cycle (i.e. approximately 0.6 seconds),
providing a controlled length of each actuation.
See Ans. 8 (citing Muderlak, col. 1, ll. 11-24, 60-63, col. 3, ll. 2-7, col. 4, ll.
2-6, 20-28, col. 5, ll. 4-21).
The Appellant asserts that Muderlak discloses a master on-off switch
110 and three modes of operation: “on,” “day,” and “night.” Br. 10;
Muderlak, col. 4, ll. 10-13. The Appellant also asserts “[a]t any time during

2 Claim 12, depends from claim 11, which depends from independent claim
1. Br., Clms. App’x.
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any mode of operation, a user may deactivate the control circuit with the
master on-off switch [110]” and as such, “Muderlak discloses that the
fragrance dispenser can be deactivated before the completion of a cycle of
dispensing, contrary to the recitations of all of the pending claims.” Br. 11.
In response, the Examiner explains that “absent the teaching of a
distinct structural element of the circuit board for performing the specified
function, [Muderlak] will inherently dispense the dispensable material in
accordance with the cycle without deactivation as designed to perform.”
Ans. 10. Additionally, the Examiner “note[s] that the cited art discloses all
the structural components of the dispenser device, which read on those of the
instant invention” and as such, “the cited art dispenser is capable of
performing the same desired function as the instant invention having been
claimed in claims 1 and 20.” Ans. 9 (emphasis added). In this case, “cited
art” refers to Muderlak and Contadini.
As for Muderlak, the master on-off switch 110 can be switched off
during an activation signal and Muderlak discloses “[i]n the OFF position
switch 110 interposes capacitor 166, a 0.1 uF disc capacitor, between
primary and secondary grounds 160, 164 to minimize transient pulses which
may occur when power is switched off.” Muderlak, col. 4, ll. 59-63 (italics
added), fig. 15. This disclosure strongly suggests an activation signal would
be deactivated when the switch is in the OFF position. Further, the
Examiner’s rejection based on Muderlak in combination with Contadini does
not rely on Contadini’s disclosure to teach the deactivation prohibition
clause of claims 1 and 20. See Ans. 8-9.
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Thus, the rejection of claims 1 and 20, and their dependent claims 2,
3, 5-9, 11, 15, and 21, as unpatentable over Muderlak and Contadini is not
sustained.

DECISION
We REVERSE the rejections of claims 1-12, 14, 15, 20, and 21.

REVERSED

mls