Ex Parte Swanson et al

Patent Trial and Appeal Board

Jul 18, 2018

14079215 (P.T.A.B. Jul. 18, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/079,215 11/13/2013
28165 7590 07/20/2018
S.C. JOHNSON & SON, INC.
1525 HOWE STREET
RACINE, WI 53403-2236
FIRST NAMED INVENTOR
Heather J. Swanson
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
J-5889A (510009.02225) 2125
EXAMINER
LOVE, TREVOR M
ART UNIT PAPER NUMBER
1611
NOTIFICATION DATE DELIVERY MODE
07/20/2018 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
F074168@scj.com
selechne@scj.com
mjzolnow@scj.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Exparte HEATHER I. SWANSON, NEYSA VOLKERT, JOEL E. ADAIR,
BRIANT. DA VIS, SYATRIZAL HAMDALLAH,
and MAUDE CHRISTIAN MEIER 1
Appeal2017-008500
Application 14/079,2152
Technology Center 1600
Before ERIC B. GRIMES, RICHARD M. LEBOVITZ, and
CHRISTOPHER G. PAULRAJ, Administrative Patent Judges.
LEBOVITZ, Administrative Patent Judge.
DECISION ON APPEAL
This appeal involves claims directed to methods of providing a
passive volatile material dispenser, comprising an insect control agent, to
consumers. The Examiner rejected the claims as anticipated under 35
U.S.C. § 102 and obvious under 35 U.S.C. § 103. Appellants appeal the
rejections pursuant to 35 U.S.C. § 134. We have jurisdiction for this appeal
under 35 U.S.C. § 6(b ). The rejections are affirmed.
1 The Appeal Brief ("Br.") 2 lists S. C. Johnson & Son, Inc. as the real party
in interest.
2 The application's written description is referred to as the "Specification" or
"Spec."
Appeal2017-008500
Application 14/079 ,215
STATEMENT OF THE CASE
There are two independent claims on appeal: claims 18 and 21. Each
of the independent claims is directed to a method which provides a sealed
pouch comprising a volatile material dispenser comprising a porous
substrate impregnated with an insect control active. Claim 18 recites that
"the porous substrate comprises a first wall portion and a second wall
portion hingedly and separably connected to the first wall portion." Claim
21 has substantially the same limitation.
The Examiner finally rejected claims 2-11, 14, 15, and 18-23 under
35 U.S.C. § I02(a)(l) as anticipated by U.S. Pat. Appl. Publ. 2008/0226685
Al (published Sept. 18, 2008) ("Balakrishnan") and under 35 U.S.C. § 103
as obvious in view ofBalakrishnan. Examiner's Answer ("Ans.") 2.
Although the rejections are under different statutes, the Examiner cited the
same facts and reasoning for both rejections. Final Office Action ("Final
Act.") 5-16. Accordingly, we have addressed the rejections together.
Independent claim 18, which is representative, is reproduced below;
18. A method of providing a passive volatile material dispenser
to consumers, comprising:
providing a sealed pouch containing a passive volatile
material dispenser having instructions, the passive volatile
material dispenser comprising a porous substrate impregnated
with an insect control active,
wherein the porous substrate has a T APPI T 489 om-13
or TAPPI T 566 om-08 minimal bending moment of about 150
to about 275 g-cm,
wherein the porous substrate comprises a first wall
portion and a second wall portion hingedly and separably
connected to the first wall portion,
wherein upon activation the dispenser exhibits an
effective release rate of the insect control active of about O .1 to
about 0.3 mg/hr, and
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Appeal2017-008500
Application 14/079 ,215
wherein the instructions direct a consumer to:
(i) open the pouch and remove the passive volatile
material dispenser therefrom to activate the passive volatile
material dispenser, and
(ii) place the activated passive volatile material dispenser
substantially in a center of a room.
REJECTION
The Examiner found that Balakrishnan describes all the elements of
the claimed method and the claimed sealed pouch. Final Act. 5---6, 9, 11-12.
With respect to the claimed requirement that the porous substrate of the
sealed pouch comprises "a first wall portion and a second wall portion
hingedly and separably connected to the first wall portion," the Examiner
cited Figure 6 of Balakrishnan as showing these features. Figure 6 of
Balakrishnan is reproduced below:
Figure 6 of Balakrishnan shows an insect control article comprising a
cellulosic-based substrate or matrix having a surface area impregnated with
a vapor active insect control agent. Balakrishnan ,r,r 1, 8, 9. Figure 6 has a
honeycomb structure in the expanded form, where elements 3, 4, 7, and 8 are
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Appeal2017-008500
Application 14/079 ,215
the substrate or matrix walls of the insect control article impregnated with
the insect control agent. Id. ,r,r 111, 112, 114, 122, 1293• The element
labeled bis a hinge connecting walls 3 and 4.
The Examiner found that Figure 6 shows the first and second walls
"hingedly ... connected" as recited in the claims (Final Act. 5), namely,
wall 3 and wall 4 joined by hinge b. The Examiner also found that the
substrate could be cut and that therefore the walls are also "separably
connected." Id.
Appellants contend that the Examiner's interpretation of "separably
connected" is improper and "overbroad." Br. 7. Appellants contend that
Balakrishnan does not describe first and second walls which are "separably
connected" as that term would be properly interpreted in light of the
Specification. Id. Because the rejection turns on the interpretation of
"separably connected," we begin with claim interpretation because before a
claim can be compared to the prior art, it must be properly interpreted.
CLAIM INTERPRETATION
During patent examination proceedings, claim terms are given "the
broadest reasonable meaning ... in their ordinary usage as they would be
understood by one of ordinary skill in the art, taking into account whatever
enlightenment by way of definitions or otherwise that may be afforded by
the written description contained in the applicant's specification." In re
Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997). While embodiments in the
specification provide guidance as to the meaning of the terms in a claim, "a
3 Paragraph 129 of Balakrishnan references Figure 5, but this appears to be
an error in the publication because the description is of Figure 6.
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Appeal2017-008500
Application 14/079 ,215
particular embodiment appearing in the written description may not be read
into a claim when the claim language is broader than the embodiment."
SuperGuide Corp. v. DirecTV Enters., Inc., 358 F.3d 870, 875 (Fed. Cir.
2004).
The claims recite "separably connected," but this term does not appear
in the Specification as originally filed. The Examiner had rejected the
claims as lacking written description support for the term "separably
connected," but withdrew it in the Answer (Ans. 2-3) in response to
Appellants' remarks in the Appeal Brief, including their reference to the
disclosure of "attachment point( s) 24" in the Specification. Br. 4--5. 4 We
thus begin by looking at the written description in the Specification
referenced by Appellants as describing "separably connected."
Figure 2 of the Specification shows the attachment points 24
discussed by Appellants. Figure 2 is reproduced below:
4 Appellants identified paragraph 49 of the Specification as containing a
description of "attachment points" and quoted language from it. Br. 5.
However, the quoted description appears in paragraph 54 of the original
Specification.
5
Appeal2017-008500
Application 14/079 ,215
"i!f
12
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t4·v1/ ({ 1/l(f
,, JrJ~
II JI. ~
1
il11 lllir/ __ er-.,.f' ,, /t~l' 1illll
1 o ...-j /f _./ FIG. 2 2't
Figure 2 of the Specification, printed above, shows a dispensing
device for an insect control active. The figure shows wall portion 18 and
wall portion 16. Spec. ,r 28. The Specification discloses that "a first wall
portion 16 and a second wall portion 18 [are] hingedly attached to the first
wall portion along a fold line 20." Id. This feature corresponds to the
"hingedly ... connected" limitation recited in claims 18 and 21. Figure 2
also shows attachment points 24, which the Specification states "may be
used to maintain the dispenser 10 in the first state until a user disrupts the
attachment point(s) to allow the dispenser to be employed in a second state."
Id. ,r 53. The second state is shown in Figure 6 of the Specification in which
wall portion 18 is separated from wall portion 21 along slits 26 and 28, by
breaking the attachment points, and bent at fold line 20 to create a stand for
the device so it can be placed on a horizontal surface in an upright vertical
position. Id. ,r 54.
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Appeal2017-008500
Application 14/079 ,215
The Specification further discloses that the attachment points 24 "may
be formed during the manufacture of the dispenser 10 by cutting slits 26 and
28 in the substrate 12 by means known in the art." Spec. ,r 53. The
Specification teaches that "the attachment point(s) 24 may be formed of an
adhesive, staple, or any other chemical or mechanical based attachment
means known to one of skill in the art" or "alternatively, comprise a
conventional perforated portion( s) or tear strip as known to one of skill in
the art." Id. In paragraph 54, the Specification discloses that to "convert the
dispenser 10 from the first state to the second state" in which wall portions
18 and 16 are separated from each other to create a stand (shown in Figure
6), "a user may disrupt the attachment point(s) 24 by breaking the bond or
otherwise removing the impediment to allow the second wall portion 18 to
rotate away from the first wall portion 16 about the fold line 20."
Thus, the description of "attachment points" in the Specification
broadly covers various means of attaching or connecting the wall portions
together. To separate the walls, the attachment points or whatever
"impediment" holds them together is broken or removed. Spec. ,r 54. There
is no express definition in the Specification of attachment points, but as
indicated above, there are various embodiments described in the
Specification. Appellants did not provide any reason to limit attachment
points to these embodiments, and the claim language does not even use the
term "attachment points," but rather recites "separably connected" which
indicates an even broader meaning since points of attachment are not
necessary, such as the adhesives, staples, slits, and perforations described in
the Specification (id. ,r 53). Thus, we interpret "separably connected" in the
context of the Specification to mean that the walls are "connected" by any
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Appeal2017-008500
Application 14/079 ,215
structure that can be removed or broken to at least partially separate the
walls from each other.
The claim also requires the walls to be "hingedly ... connected." The
Specification does not define the term. Consequently, we interpret it to have
its ordinary meaning as found in a general purpose dictionary, namely, to be
a joint or flexible region that allows the wall portions to pivot. 5
The claims recite "a first wall portion and a second wall portion
hingedly and separably connected to the first wall portion." (Emphasis
added.) While the embodiment show in Figure 2 of the Specification shows
hinge 20 as a separate structure from the attachment points 24, and slits 26
and 28, the claim language does not require them to be separate or
independent structures. Thus, a hinged region can also serve as a separable
connection ("separably connected") between the first and second walls.
DISCUSSION
Having interpreted the phrase "a first wall portion and a second wall
portion hingedly and separably connected to the first wall portion," we can
now address the cited Balakrishnan publication and determine whether it
describes or makes obvious the claimed passive volatile material dispenser.
Figure 6 of Balakrishnan, reproduced above, shows walls 3 and 4
folded along line b to form a hinged region that is a joint or flexible region
that allows the walls to pivot when the honeycomb is expanded.
Balakrishnan ,r 111. Thus, Balakrishnan, as found by the Examiner,
5 "A jointed or flexible device that allows the turning or pivoting of a part,
such as a door or lid, on a stationary frame."
https://www.thefreedictionary.com/hinge (last accessed July 7, 2018).
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Application 14/079 ,215
describes a hinge. Appellants did not dispute that Balakrishnan describes a
hinge connecting first and second wall portions as required by the claims.
The hinge shown in Balakrishnan is a folded region between the two
substrate wall portions and thus forms a connection between the two wall
portions. Because the substrate is folded at the hinge, the substrate forms a
crease that is a structure which can be broken, by tearing or using scissors, to
separate the walls (Ans. 3), thus meeting the broadest reasonable
interpretation of the term "separably connected" as we have interpreted it in
view of the Specification. This is especially true because Balakrishnan
discloses that its device is made of a cellulosic based substrate, which
includes "for instance, tissue, paper and cardboard." Balakrishnan ,r,r 1, 69.
Appellants contend that the interpretation that "a substrate that is
separable from itself, e.g., by arbitrarily ripping or tearing the substrate, is
unreasonably broad." Br. 5. This argument does not persuade us that the
Examiner erred. A crease formed by a folded hinge is not arbitrary, but
rather is a fixed path and structure, in a defined location, along which the
wall portions could be separated from each other by breaking the substrate
along the crease. Thus, separation is not accomplished by "arbitrarily
ripping or tearing the substrate," but rather can be performed along a defined
crease at the hinge.
Appellants contend "all of the embodiments in the application are
shown and described as having slits (e.g., at 24, 26, or 28) that specifically
separate the substrate into first and second wall portions at predetermined
locations." Br. 5. This is incorrect. As explained in the claim interpretation
section above (supra at p. 7), there are a number of different embodiments
disclosed, such as adhesives, staples, slits, and perforations (Spec. ,r 53).
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Appeal2017-008500
Application 14/079 ,215
Appellants have not explained why the phrase "separably connected" should
be interpreted to mean only one of the embodiments described in the
Specification.
Br. 7.
Appellants also contend:
Additionally, the Examiner's construction is improper, because
it would render the "separably connected" limitation
meaningless, violating the requirement that "claims are
interpreted with an eye toward giving effect to all terms in the
claim." Bicon, Inc. v. Straumann Co., 441 F.3d 945, 950 (Fed.
Cir. 2006) ( emphasis added).
We do not agree. The claim interpretation of "separably connected"
does not cover any arbitrary way in which the two wall portions are
connected, but is interpreted specifically to mean that the wall portions are
"separably connected" by a structure that can be removed or broken to
separate the wall portions from each other. See "CLAIM
INTERPRETATION" section above. Thus, the term "separably connected"
has a definite meaning which requires the claimed pouch to have a specific
structure to meet the meaning. In this case, the structure in Balakrishnan is
the crease along the fold b as shown in Figure 6 of Balakrishnan. The crease
provides a guided path along which the wall portions 3 and 4 can be
separated, acting as a mechanical weakened structure to facilitate tearing.
For the foregoing reasons, we affirm the Section 102 rejection of
claims 18 and 21. Separate arguments were not provide for claims 2-11, 14,
15, 19, 20, 22, and 23, and thus these claims fall with claims 18 and 21. 37
C.F .R. § 41.3 7 ( c )(1 )(iv).
The Examiner's basis for rejecting the claims under Section 103 are
the same as for Section 102. We therefore affirm the obviousness rejection
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Application 14/079 ,215
under Section 103 because "anticipation is the epitome of obviousness. " In
re McDaniel, 293 F3d. 1379, 1385 (Fed. Cir. 2002) (quoting Connell v.
Sears Roebuck & Co., 722 F.2d 1542, 1548 (Fed. Cir. 1983)); In re
Fracalossi, 681 F.2d 792, 794 (CCPA 1982).
TIME PERIOD
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED
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