Ex Parte Mueller et al

Patent Trial and Appeal Board

Nov 14, 2014

12714866 (P.T.A.B. Nov. 14, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte JOERG MUELLER, YESSICA DE NARDIN,
URSULA CHRISTINA GLASER, ROBERT M. HUBBARD,
LAMIA DELPHINE MIMASSI, CORNELIA SCHMIDT, and
NAKA SEIDEL
___________

Appeal 2012-010090
Application 12/714,866
Technology Center 3700
____________

Before MARC S. HOFF, DANIEL S. SONG, and ERIC B. CHEN,
Administrative Patent Judges.

CHEN, Administrative Patent Judge.

DECISION ON APPEAL

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This is an appeal under 35 U.S.C. § 134(a) from the final rejection of
claims 29–48. Claims 1–28 have been cancelled. We have jurisdiction
under 35 U.S.C. § 6(b). We affirm.

STATEMENT OF THE CASE
Appellants’ invention is related to a container including a dispensing
opening or a closure element of the container that includes a reservoir. The
reservoir transfers a transferable material, such as a fragrance composition or
skin health benefit ingredient, to the container’s content. (Abstract.)
Claim 29 is exemplary, with disputed limitations in italics:
29. A container for containing and dispensing consumer
wipes, the container comprising:
a body with walls that define a cavity for containing consumer
wipes;
a wall opening in one of the walls for dispensing consumer
wipes;
a reservoir attached to the container and disposed adjacent to
the wall opening;
wherein the reservoir:
is a solid material that includes a fragrance composition
impregnated within the solid material;
includes a contact transfer surface;
is configured to diffuse the fragrance composition to the
contact transfer surface; and
is configured to transfer the fragrance composition to
consumer wipes by contact with the contact surface.

Claims 29–31 and 39–41 stand rejected under 35 U.S.C. § 103(a) as
obvious over Cordis (US 3,368,522; Feb. 13, 1968), Mahoney (US
4,458,810; July 10, 1984), and Jones (US 2006/0249417 Al; Nov. 9, 2006).
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Claims 29, 32–39, and 42–48 stand rejected under 35 U.S.C. § 103(a)
as obvious over De-Vries (US 2004/0099545 Al; May 27, 2004), Mahoney,
and Jones.

ANALYSIS
§ 103 Rejection — Cordis, Mahoney, and Jones
We are unpersuaded by Appellants’ arguments (Br. 3–4) that the
combination of Cordis, Mahoney, and Jones would not have rendered
obvious independent claim 29, which includes the limitation “the reservoir
. . . is a solid material that includes a fragrance composition impregnated
within the solid material.”
The Examiner acknowledged that Cordis does not disclose the
limitation “the reservoir . . . is a solid material that includes a fragrance
composition impregnated within the solid material,” and thus, relied upon
Mahoney for teaching a box with an impervious covering with fragrance
composition coated thereon that transfers a scent to a stack of tissues
(Ans. 5) and relied upon Jones for teaching either coating the surface of the
container with fragrance composition, or impregnating the container with
such composition (Ans. 6; see also Ans. 12). The Examiner concluded that
“one of ordinary skill in the art would have found it . . . obvious to
impregnate the reservoir with fragrance composition rather than coat a
surface of the reservoir with fragrance composition since . . . substituting
equivalents known for the same purpose would have been obvious.”
(Ans. 6.) We agree with the Examiner.
Cordis relates to an “apparatus for storing [cleansing and wiping]
sheets in a wetted condition and for dispensing the sheets on demand ready
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for use.” (Col. 1, ll. 17–19.) Cordis explains that “[a]n important object of
the invention is to provide a multiple supply of such pre-wetted sheets and a
dispenser” (col. 1, ll. 32–34) for applying a scented fluid or an antiseptic
with or without healing properties (col. 2, ll. 1–2). Figure 2 of Cordis
illustrates a dispenser that includes a housing 20 and “a sump 22 for the
treating fluid” (i.e., the claimed “reservoir”). (Col. 2, ll. 58–60.)
Mahoney relates to “[s]cent impregnated tissues . . . provided in a
substantially airtight container having a resealable lid.” (Abstract.) In
describing the prior art, Mahoney explains that tissues are packaged in a
container (e.g., a cardboard box) with an impervious covering. (Col. 1,
ll. 37–40.) “The stack of tissues [is] usually not scented prior to stacking,
and are impregnated with a scent of material coated on the inner surfaces of
the impervious covering.” (Col. 1, ll. 40–43.) Thus, Mahoney teaches the
limitation “a solid material . . . configured to transfer the fragrance
composition to consumer wipes.”
Jones relates to a “shoe package assemblies include a scent-generating
material.” (Abstract.) Jones explains that “[t]he fiberboard of box 40 and/or
lid 50 can be impregnated with the scent-generating material.” (¶ 38.) Thus,
Jones teaches the limitation “a fragrance composition impregnated within
the solid material.”
The combination of Cordis, Mahoney, and Jones is nothing more than
incorporating the known solid material of Mahoney for transferring a scent
to tissues and the known fragrance composition impregnated within the solid
material as taught in Jones, into the apparatus of Cordis for storing cleansing
and wiping sheets, to yield predictable results. See KSR Int’l Co. v. Teleflex
Inc., 550 U.S. 398, 416 (2007) (“The combination of familiar elements
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according to known methods is likely to be obvious when it does no more
than yield predictable results.”). Thus, we agree with the Examiner (Ans. 6)
that modifying Cordis to incorporate the solid material of Mahoney for
transferring a scent to tissues and impregnating the same with a fragrance
composition, as taught in Jones, would have been obvious.
First, Appellants argue that “the cited references only suggest
impregnating scent into a fiberboard box (Jones); the cited references,
independently or in combination, do not describe, teach, or suggest,
impregnating scent into an impervious covering (Mahoney), and thus do not
describe, teach, or suggest a solid reservoir impregnated with a
composition.” (Br. 3–4.) However, the Examiner cited Cordis for teaching
the claimed “reservoir” and the desirability thereof (Ans. 5) and cited Jones
for teaching the claimed limitation “a solid material that includes a fragrance
composition impregnated within the solid material” (Ans. 6).
Second, Appellants argue that “the claims are nonobvious over the
Cordis, Mahoney, and Jones references, because combining the
references as cited would change the principle of operation of Mahoney,
from sealing the scent within an ‘impervious covering,’ to causing an
impregnated covering to disperse scent.” (Br. 4.) Contrary to Appellants’
arguments, the rejection of claim 29 is based on modifying the reservoir of
Cordis to incorporate the impervious covering (i.e., solid material) of
Mahoney, further modified so that the inner surface is impregnated with a
scent composition, as taught by Jones. (Ans. 5–6.)
Third, Appellants argues that “the claims are nonobvious over the
Cordis, Mahoney, and Jones references, because combining the
references as cited would change the render Mahoney unsatisfactory for
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its intended purpose, from ‘minimizing the escape of the scent’ to allowing
the scent to disperse both inside and outside of the covering.” (Br. 4
(citation omitted).) Again, the rejection of claim 29 is based on modifying
the reservoir of Cordis to incorporate the impervious covering (i.e., solid
material) of Mahoney, further modified so that the inner surface is
impregnated with a scent composition, as taught by Jones. (Ans. 5–6.)
Fourth, Appellants argue that “the claims are nonobvious over the
Cordis, Mahoney, and Jones references, because the Jones reference
(scent impregnated in box) teaches away from the claimed embodiment
(scent impregnated in a reservoir element, which is separate from the walls
of the body of the container).” (Br. 4.) Again, the rejection of claim 29 is
based on modifying the reservoir of Cordis to incorporate the impervious
covering (i.e., solid material) of Mahoney, further modified so that the inner
surface is impregnated with a scent composition, as taught by Jones.
(Ans. 5–6.) Whereas Jones discloses a different implementation wherein the
box is impregnated, we are not persuaded that mere disclosure of this
differing implementation teaches away from the combination of Cordis,
Mahoney and Jones, as suggested by the Examiner. In re Fulton, 391 F.3d
1195, 1201 (Fed. Cir. 2004) (“[T]he prior art’s mere disclosure of more than
one alternative does not constitute a teaching away from any of these
alternatives because such disclosure does not criticize, discredit, or
otherwise discourage the solution claimed.”).
Fifth, Appellants argue that “the claims are nonobvious over the
Cordis, Mahoney, and Jones references, because substituting the
impervious covering (Mahoney) for the fluid in the sump (Cordis) would
change the principle of operation of Cordis (from wet material transfer to
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dry material transfer).” (Br. 4.) However, the basic principle under which
the device of Cordis operates is by transferring a substance (e.g., scented
fluid or antiseptic) to a wiping sheet as it is dispensed. (See col. 1, ll. 32–34,
col. 2, ll. 1–2.) Accordingly, the Examiner’s modification maintains this
same basic principle of Cordis in that it transfers the scent to the wiping
sheet as it is dispensed, and thus, does not change the principle of operation.
Thus, we agree with the Examiner that the combination of Cordis,
Mahoney, and Jones would have rendered obvious independent claim 29,
which includes the limitation “the reservoir . . . is a solid material that
includes a fragrance composition impregnated within the solid material.”
Accordingly, we sustain the rejection of independent claim 29 under
35 U.S.C. § 103(a). Claims 30 and 31 depend from claim 29, and
Appellants have not presented any substantive arguments with respect to
these claims. Therefore, we sustain the rejection of claims 30 and 31 under
35 U.S.C. § 103(a), for the same reasons discussed with respect to
independent claim 29.
Independent claim 39 recites limitations similar to those discussed
with respect to independent claim 29, and Appellants have not presented any
substantive arguments with respect to this claim. We sustain the rejection of
claim 39, as well as dependent claims 40 and 41, for the same reasons
discussed with respect to claim 29.

§ 103 Rejection — De-Vries, Mahoney, and Jones
We are also unpersuaded by Appellants’ arguments (Br. 4–5) that the
combination of De-Vries, Mahoney, and Jones would not have rendered
obvious independent claim 29, which includes the limitation “the reservoir
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. . . is a solid material that includes a fragrance composition impregnated
within the solid material.”
The Examiner acknowledged that De-Vries does not disclose the
limitation “the reservoir . . . is a solid material that includes a fragrance
composition impregnated within the solid material,” and thus, relied upon
Mahoney for teaching a box with an impervious covering (i.e., a solid
material) with fragrance composition coated thereon that transfers a scent to
a stack of tissues (Ans. 8) and relied upon Jones for teaching either coating
the surface of the container with fragrance composition, or impregnating the
container with such composition (Ans. 8; see also Ans. 14). The Examiner
concluded that “one of ordinary skill in the art would have found it . . .
obvious to impregnate the reservoir with fragrance composition rather than
coat a surface of the reservoir with fragrance composition since . . .
substituting equivalents known for the same purpose would have been
obvious.” (Ans. 8.) We agree with the Examiner.
De-Vries relates to a tissue containers for dispensing tissues and
“dispensers which readily offer use of an associated preparation” (¶ 1) (e.g.,
ointments, moisturizers, anti-bacterial compositions, perfumes (¶ 3)).
Figure 2B of De-Vries illustrates a rigid cylindrical container 70 (¶ 39) with
a cover 72 having an annular groove 78 as an auxiliary compartment 78
(¶ 40). The auxiliary compartment 78 has “a U-like cross section which
permit for easy access by a fingertip for scooping an ointment” (i.e., the
claimed “reservoir). (¶ 41.)
The combination of De-Vries, Mahoney, and Jones is nothing more
than incorporating the known solid material of Mahoney for transferring a
scent to tissues and the known fragrance composition impregnated within
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the solid material of Jones, into the known cylindrical container of De-Vries
for dispensing issues, to yield predictable results. See KSR, 550 U.S. at 416.
Thus, we agree with the Examiner (Ans. 8) that modifying De-Vries to
incorporate the solid material of Mahoney for transferring a scent to tissues
and impregnating the same with a fragrance composition, as taught in Jones,
would have been obvious.
Appellants reiterate five similar arguments previously presented with
respect to the rejection of claim 29 under 35 U.S.C. § 103(a) over Cordis,
Mahoney, and Jones. We are not persuaded by these arguments for the same
reasons as discussed previously.
Accordingly, we sustain the rejection of independent claim 29 under
35 U.S.C. § 103(a). Claims 32–38 depend from claim 29, and Appellants
have not presented any substantive arguments with respect to these claims.
Therefore, we sustain the rejection of claims 32–38 under 35 U.S.C.
§ 103(a), for the same reasons discussed with respect to independent
claim 29.
Independent claim 39 recites limitations similar to those discussed
with respect to independent claim 29, and Appellants have not presented any
substantive arguments with respect to this claim. We sustain the rejection of
claim 39, as well as dependent claims 42–48, for the same reasons discussed
with respect to claim 29.

DECISION
The Examiner’s decision to reject claims 29–48 is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).
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AFFIRMED

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