S. C. Johnson & Son, Inc.

Patent Trials and Appeals Board

May 3, 2021

2020006119 (P.T.A.B. May. 3, 2021)

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.
14/994,521 01/13/2016 Peter N. Nguyen J5674AUS02 1607
28165 7590 05/03/2021
S.C. JOHNSON & SON, INC.
1525 HOWE STREET
RACINE, WI 53403-2236
EXAMINER
PROSSER, ALISSA J
ART UNIT PAPER NUMBER
1619
NOTIFICATION DATE DELIVERY MODE
05/03/2021 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):
mjzolnow@scj.com
selechne@scj.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte PETER N. NGUYEN and BHAVESHKUMAR SHAH
Appeal 2020-006119
Application 14/994,521
Technology Center 1600
Before DONALD E. ADAMS, FRANCISCO C. PRATS, and
TAWEN CHANG, Administrative Patent Judges.
CHANG, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–4, 7, 8, 11–14, and 17–20. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies the real party in interest as S.C. Johnson
& Son, Inc. Appeal Br. 2.
Appeal 2020-006119
Application 14/994,521

2
STATEMENT OF THE CASE
According to the Specification, “[t]he invention is directed to
improving or enhancing intensity and longevity of active component(s) of an
aerosol composition, in particular where the active component is one or
more of a fragrance, odor elimination compound, insecticide, disinfectant or
antimicrobial, and the aerosol composition is propelled by a compressed gas
propellant.” Spec. ¶ 2. The Specification states:
Properties of the compositions which are controlled to
provide the enhanced intensity and longevity of the
active ingredient(s) in particular include the spray rate of
the composition, and the average particle size of the
composition. Additional properties to aid in the
enhancement of intensity and longevity are initial and
terminal pressures under which the composition is
present in a dispenser, and the pressure drop ratio. The
described combination of properties are selected,
maintained or controlled to provide an optimum
dispensing over the life of the product so as to obtain
more active(s) in the air, prior to fall out to a surface, to
provide greater intensity over time of the composition
active(s).
Id. ¶ 4.

CLAIMED SUBJECT MATTER
The claims are directed to article of manufacture for aerosol treatment
of air and surfaces. Claim 1 is illustrative:
1. Article of manufacture for aerosol treatment of air and
surfaces comprising
(a) a dispensing device comprising a plastic
container adapted to hold a treating composition and a
compressed gas propellant, wherein said plastic container
is made of polyethyleneterephthalate (PET), and wherein
said dispensing device is under an initial pressure in a
Appeal 2020-006119
Application 14/994,521

3
range of about 100 to about 180 psig at 70°F (21°C) and
has a pressure of about 30 to about 90 psig at 70°F
(21°C) when less than 10% of the treating composition
remains in the dispensing device;
(b) the treating composition having a pH in a range
of about 4 to about 10, which in total is based on 100
wt.%, consisting of
(1) about 0.1 to about 2 wt.% of at least two
nonionic surfactants comprising
(i) polyalkoxylated hydrogenated castor oil and
(ii) one or more of secondary alcohol ethoxylate,
ethoxylated linear alcohol, sorbitan monooleate,
polyethylene sorbitan monooleate,
polyoxyethylene sorbitan monolaurate, alkyl
polyglycoside,
polyethyleneoxide/polypropyleneoxide, and alkyl
phenol ethoxylated carboxylated alcohol;
(2) about 0.1 to about 10 wt.% of at least one non-
water solvent comprising at least one alkylene
glycol;
(3) about 0.1 to about 2 wt.% of a fragrance
component;
(4) about 0.25 to about 2 wt.% of the compressed
gas propellant;
(5) optionally, about 0.01 to about 1 wt.% of a
preservative;
(6) optionally, about 0.01 to about 1 wt.% buffer;
(7) optionally, a pH adjuster in an amount
sufficient to achieve said pH of about 4 to about
10; and
(8) about 80 wt.% to about 99 wt.% of water;
wherein the dispenser is adapted to dispense the treating
composition (a) at a spray rate of greater than about 1.5
to about 3.0 grams/second as measured in a 60 second
expulsion from the plastic container when 100% full and
(b) in a particle size of about 60 to about 100 microns.
Appeal Br. 2–3 (Claims App.).

Appeal 2020-006119
Application 14/994,521

4
REJECTION(S)
A. Claims 1–4, 7, 8, 11–14, 19, and 20 are rejected under pre-AIA 35
U.S.C. § 103(a) as being unpatentable over Clark,2 Kunesh,3 Smith,4
and Nwachukwu,5 as evidenced by Heeb.6 Ans. 3.
B. Claims 1–4, 7, 8, 11–14, and 17–20 are rejected under pre-AIA 35
U.S.C. § 103(a) as being unpatentable over Clark, Kunesh, Smith,
Nwachukwu, and Shieh,7 as evidenced by Heeb. Ans. 3–4.

OPINION
A. Obviousness rejection over Clark, Kunesh, Smith, and
Nwachukwu, as evidenced by Heeb (claims 1–4, 7, 8, 11–14, 19,
20)
1. Issue
The Examiner finds that Clark teaches the treating composition
recited in claim 1, except that it does not teach “the treating composition
having a pH in a range of about 4 to about 10.” Final Act. 7. The Examiner
also finds that Clark does not teach a dispensing device comprising “a
plastic container . . . made of polyethylene terephthalate (PET), . . . wherein
said dispensing device . . . has a pressure of about 30 to about 90 psig at
70°F (21°C) when less than 10% of the treating composition remains in the
dispensing device” and “is adapted to dispense the treating composition (a)

2 Clark et al., US 2009/0311195 A1, published Dec. 17, 2009.
3 Kunesh et al., US 2004/0149781 A1, published Aug. 5, 2004.
4 Smith et al., US 2010/0219211 A1, published Sep. 2, 2010.
5 Nwachukwu et al., US 2012/0288448 A1, published Nov. 15, 2012.
6 Heeb et al., US 3,996,153, issued Dec. 7, 1976.
7 Shieh et al., US 2008/0017671 A1, published Jan. 24, 2008.
Appeal 2020-006119
Application 14/994,521

5
at a spray rate of greater than about 1.5 to about 3.0 grams/second as
measured in a 60 second expulsion from the plastic container when 100%
full and (b) in a particle size of about 60 to about 100 microns.” Id.
However, the Examiner finds that “[t]hese deficiencies [in Clark] are
made up for in the teachings of Kunesh, Smith and Nwachukwu.” Final Act.
7. In particular, the Examiner finds that Kunesh teaches “a pressure resistant
plastic bottle for containing and dispensing an aerosol composition[]
including air fresheners” that “may be composed of any thermoplastic
material,” wherein “[t]he preferred thermoplastic material is polyethylene
terephthalate (PET).” Id. The Examiner finds that Smith teaches “a
pressurized spray system in which a relatively constant mean particle size
distribution may be obtained throughout the life of the spray system as the
pressure decays,” e.g., wherein “a difference of approximately 1 to 5
microns in particle size occurs during a depressurization of 8.8 to 5.6 kg/cm2
(⁓125 to 80 psig).” Id. at 7–8. The Examiner finds that Smith teaches
particle size distribution having a mean diameter of between 40 to 100
microns, and further teaches that “[t]he typical consumer product may be
discharged at a spray rate of at least 1, at least 3 g/s and less than 25, less
than 15 g/s.” Id. at 8. Finally, the Examiner finds that Nwachukwu teaches
“compressed gas sprayable aqueous compositions with a pH from about 1 to
10, 4 to 7.” Id.
The Examiner finds that “Clark, Kunesh, Smith and Nwachukwu are
analogous inventions in the field of dispensing aerosol compositions
including air fresheners/fragrances.” Final Act. 8. The Examiner concludes
that it would have been obvious to a skilled artisan at the time of the
invention to use the bottle taught by Kunesh with Clark’s composition,
Appeal 2020-006119
Application 14/994,521

6
because Clark teaches that its composition “may be dispensed using any
conventionally known compressed gas aerosol device.” Id. The Examiner
finds that a skilled artisan would have been motivated to make such a
combination, with a reasonable expectation of success, because “Kunesh
teach[es] plastic containers have the advantages of ease and economy of
manufacture[] and . . . appeal aesthetically to end users,” and further teaches
its “plastic bottle is suitable for dispensing aerosol compositions including
air fresheners (fragranced compositions).” Id. at 9.
The Examiner concludes that it would further have been obvious to a
skilled artisan at the time of invention to modify the compressed gas aerosol
device suggested by the combination of Clark and Kunesh to “obtain a mean
particle size distribution of 40 to 100 microns” and to “discharge at a spray
rate of 1 to 25 g/s” as taught by Smith, because Smith teaches that the
recited range of spray rate is “suitable for typical consumer products
inclusive of perfumes, room deodorizers or insecticides” and that “particle
size may affect perfume release or suspension,” and because Smith as a
whole is drawn to a compressed gas pressurized spray system in which a
relatively constant mean particle size distribution may be obtained
throughout the life of the spray system.” Final Act. 9. The Examiner finds
that a skilled artisan would have had a reasonable expectation of success in
combining Smith’s teachings regarding particle size with the compressed gas
aerosol device suggested by the combination of Clark and Kunesh, because
“Smith teach[es] particles falling within this distribution are suitable for
pressurized spray systems which comprise perfumes, room deodorizers or
insecticides in plastic bottles.” Id.
Appeal 2020-006119
Application 14/994,521

7
The Examiner similarly concludes that it would have been obvious to
a skilled artisan at the time of the invention “to adjust the pH of the
fragranced, aerosol composition of Clark to a range of about 1 to 10 as
taught by Nwachukwu because this range is suitable for compressed gas
sprayable aqueous compositions.” Final Act. 9. The Examiner finds that
“[t]here would be a reasonable expectation of success because Clark
teach[es] the compositions may comprise pH controller(s) inclusive of
phosphates, carbonates, borates and organic acids in an amount suitable to
achieve the desired pH.” Id. at 9–10.
With respect to the limitation of “a pressure of about 30 to about 90
psig at 70ºF (21ºC) when less than 10% of the treating composition remains
in the dispensing device,” the Examiner finds that the limitation is inherently
met, absent evidence to the contrary, because the prior art combination
renders obvious an article comprising the claimed plastic containers
containing compositions having the claimed pH and comprising claimed
ingredients in amounts overlapping claimed ranges, pressurized with the
claimed compressed gases to an initial pressure overlapping the claimed
initial pressure, and dispensing the compositions at rates and in droplet sizes
that are routine and conventional. Final Act. 10. The Examiner further
notes that Heeb provides evidence that “aerosol packages comprising
compressed gas propellants are known in the art to be characterized by a
large drop in pressure between the first use and the time at which the
package filling is minimal, e.g., about 90 percent empty,” and “Smith
likewise evidences that it is known in the art that the pressure of compressed
gas aerosols decays throughout the life of a spray system.” Id.
Appeal 2020-006119
Application 14/994,521

8
Appellant contends that the cited prior art references “provide no
connecting teaching or suggestion to motivate one skilled in the art to pick
and choose the numerous isolated components or features required from
these references and then provide them in a combination as claimed by the
applicant.” Appeal Br. 23; see also Reply Br. 2.
Appellant does not separately argue the claims. We therefore focus
our analysis on claim 1 as representative. The issue with respect to this
rejection is whether a skilled artisan would have had reason to combine the
teachings of the cited prior art to arrive at the invention of claim 1.
2. Analysis
Unless otherwise noted, we adopt the Examiner’s findings of fact and
reasoning regarding the rejection of claim 1 as obvious over Clark, Kunesh,
Smith, and Nwachukwu, as evidenced by Heeb. (Final Act. 4–10, 13–16;
Ans. 4–10). We address Appellant’s arguments below. Only those
arguments timely made by Appellant in the briefs have been considered;
arguments not so presented are waived. See 37 C.F.R. § 41.37(c)(1)(iv)
(2015); see also Ex parte Borden, 93 USPQ2d 1473, 1474 (BPAI 2010)
(informative) (“Any bases for asserting error, whether factual or legal, that
are not raised in the principal brief are waived.”).
Appellant contends that Clark is directed to “solvating one or more
actives” and does not suggest “[p]rovision of certain components alone or in
combination to improve longevity and intensity of a fragrance in a
composition.” Appeal Br. 18. We are not persuaded. As the Supreme
Court has explained, “[i]n determining whether the subject matter of a patent
claim is obvious, neither the particular motivation nor the avowed purpose
of the patentee controls. . . . [A]ny need or problem known in the field of
Appeal 2020-006119
Application 14/994,521

9
endeavor at the time of invention and addressed by the patent can provide a
reason for combining the elements in the manner claimed.” KSR Int’l Co. v.
Teleflex Inc., 550 U.S. 398, 419–20 (2007).
Appellant contends that the claim recites a composition “consisting
of,” among other things, “at least two specific nonionic surfactants, i.e., (1)
polyalkoxylated hydrogenated castor oil and (2) one or more of secondary
alcohol ethoxylate, ethoxylated linear alcohol, sorbitan monooleate,
polyoxyethylene sorbitan monooleate, polyethylene sorbitan laurate, alkyl
polyglycoside, polyethyleneoxide/polypropyleneoxide, and alkyl phenol
ethoxylated carboxylated alcohol,” as well as an alkylene glycol solvent.
Appeal Br. 18–19. Although Appellant does not dispute the claimed
nonionic surfactants are disclosed in Clark, Appellant contends that Clark
teaches that “the surfactant can be any suitable surfactant or blend of
surfactants” and that “[t]here is no teaching or suggestion of picking and
choosing from such a wide range . . . applicant’s claimed two specified
nonionic components in combination with an alkylene glycol solvent as
claimed in the closed composition.” Id. at 19; see also Reply Br. 3–4.
Appellant further contends that Clark does not teach alkylene glycol as a
required component. Appeal Br. 19; see also Reply Br. 4.
We are not persuaded. As the Examiner points out, Clark specifically
discloses that the surfactants and alkylene glycol solvent recited in claim 1
may be used in its composition, and does not require any surfactant or
solvent excluded by the claim. Ans. 5–6; Clark ¶¶ 47, 55. We agree that
this provides a motivation to combine the recited surfactants and alkylene
glycol with the other components disclosed in Clark to arrive at the
composition of claim 1. KSR, 550 U.S. at 416 (“The combination of
Appeal 2020-006119
Application 14/994,521

10
familiar elements according to known methods is likely to be obvious when
it does no more than yield predictable results.”). While we acknowledge
that Clark discloses other suitable surfactants and solvents for its
composition, we further agree with the Examiner (Ans. 6) that “disclos[ing]
a multitude of effective combinations does not render any particular
formulation less obvious.” Merck & Co. v. Biocraft Labs., Inc., 874 F.2d
804, 807 (Fed. Cir. 1989).
Appellant contends that “[n]o suggestion is provided by Clark to
select certain isolated compounds and combine them in a combination as
claimed as to the composition, and further in relation to a plastic container
with defined initial and terminal pressures, particle size and spray rate of the
composition.” Appeal Br. 19–20.
As for Appellant’s argument that Clark does not provide suggestion to
combine particular compounds in the manner claimed, we are not persuaded
for the reasons already discussed above. We are likewise unpersuaded by
Appellant’s argument that Clark provides no suggestion to combine the
claimed composition with “a plastic container” and with “defined initial and
terminal pressures, particle size and spray rate of the composition.” Appeal
Br. 19–20.
As an initial matter, Clark teaches pressurizing the compressed gas
propellant “in a range from about 100 to 165 psig,” which is encompassed
by the initial pressure range recited in claim 1. Id. ¶ 52. “A prima facie case
of obviousness typically exists when the ranges of a claimed composition
overlap the ranges disclosed in the prior art.” In re Peterson, 315 F.3d 1325,
1329 (Fed. Cir. 2003).
Appeal 2020-006119
Application 14/994,521

11
The Examiner further cites Kunesh, Smith, and Nwachukwu as
disclosing the remaining claim limitations and Heeb as evidencing the
pressure drop as a function of the filling/emptying of aerosol composition in
prior art dispensers. As discussed further below, and contrary to Appellant’s
contention, the cited combination as a whole provides a skilled artisan with a
reason to combine Clark’s composition “with ‘a plastic container’ and with
‘defined initial and terminal pressures, particle size and spray rate of the
composition’” to arrive at the claimed invention. In this regard, we note that
“[n]on-obviousness cannot be established by attacking references
individually where the rejection is based upon the teachings of a
combination of references. . . . [The reference] must be read, not in
isolation, but for what it fairly teaches in combination with the prior art as a
whole.” In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986).
Appellant contends that the prior art as a whole does not teach the
invention of claim 1. Appellant first contends that “Kunesh is directed to a
plastic aerosol pressure-resistant bottle” wherein “[t]he pressure resistance
of the bottle is based on the structural shape or configuration of the bottle.”
Appeal Br. 16; see also Reply Br. 4. Appellant contends that “[o]ther than
being a plastic bottle, no other connecting element to the claimed
combination is present.” Appeal Br. 16; see also Reply Br. 4–5. Appellant
contends that “such an isolated teaching would not be suggested to be
combined with the other applied art since Kunesh provides no teaching or
suggestion in relation to being advantageous with regard to any particular
aerosol formulation for treating the air or a surface.” Appeal Br. 16–17.
We are not persuaded. As the Examiner points out (Final Act. 8),
Clark teaches that its “composition may be dispensed using a conventionally
Appeal 2020-006119
Application 14/994,521

12
known compressed gas aerosol device.” Clark ¶ 41. Appellant concedes
that Kunesh teaches a plastic aerosol pressure-resistant bottle (Appeal Br.
16) but fails to explain why Kunesh’s bottle would not be considered “a
conventionally known compressed gas aerosol device” or a functional
equivalent thereof. Moreover, as the Examiner also points out (id. at 9),
Kunesh teaches that “it is desirable to provide a plastic container” for
dispensing aerosols because of the advantages of “ease and economy of
manufacture” as well as “aesthetic appeal,” and further teaches that a
preferred material for its plastic bottle is PET. Kunesh ¶¶ 3, 14.
We agree with the Examiner that, in light of the above teachings, a
skilled artisan would have had reason to use a plastic container made of
PET, as disclosed in Kunesh, with the claimed treating composition, as
suggested by Clark and Nwachukwu, regardless of whether Kunesh teaches
that its bottle is advantageous for any particular formulation: Clark teaches
that its composition is dispensable using any conventionally known
compressed gas aerosol device, and Kunesh teaches advantages of plastic
bottles generally applicable to aerosol compositions.
With respect to the Examiner’s citation of Smith as disclosing the
particle size and spray rate limitations, Appellant contends that the “claimed
combination includes specific compositional features to enhance the
intensity and longevity of the fragrance active,” advantages that are
“provided based on the inclusion of the surfactant and non-water solvent in
addition to the spray rate, particle size, initial and terminal pressures, and
pressure drop ratio.” Appeal Br. 17–18. Appellant contends that, in
contrast, Smith “does not teach or suggest any interrelation between
particular composition components in combination with particle size and
Appeal 2020-006119
Application 14/994,521

13
flow rate to affect properties of a fragrance contained in a product
composition to be dispensed from a plastic dispensing container.” Id. at 17;
see also Reply Br. 5. Appellant contends that “[s]ome basis to select
particular flow rate, particle size, etc. and combine with a specified
combination of composition components needs to be provided.” Appeal Br.
18.
We are not persuaded. As we noted above, “[i]n determining whether
the subject matter of a patent claim is obvious, neither the particular
motivation nor the avowed purpose of the patentee controls.” KSR, 550 U.S.
at 419–20. Moreover, Smith “must be read, not in isolation, but for what it
fairly teaches in combination with the prior art as a whole.” In re Merck &
Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986). Thus, Smith does not need to
“teach or suggest [an] interrelation between particular composition
components in combination with particle size and flow rate to affect
properties of a fragrance contained in a product composition to be dispensed
from a plastic dispensing container.” Id. at 17; see also Reply Br. 5.
In this case Smith teaches that “[t]he typical consumer product may be
discharged at a spray rate” overlapping the claimed range. Smith ¶ 26.
Smith also teaches that “[p]article size may . . . affect perfume release and
suspension” and further teaches a pressurized spray system having a
relatively constant mean particle size distribution throughout its life that
encompasses the claimed range. Smith Abstract, ¶¶ 7, 27.
We agree with the Examiner that, in light of the above teachings, a
skilled artisan would have had reason to use the composition and container
recited in claim 1, as suggested by the combination of Clark, Kunesh, and
Nwachukwu, with the claimed spray rate and particle size: The claimed
Appeal 2020-006119
Application 14/994,521

14
spray rate and particle size both overlap with the range disclosed in Smith;
moreover, Smith teaches that the claimed range overlaps with the spray rate
of a “typical” consumer product and further teaches that particle size is a
optimizable result-effective variable at least in fragrance compositions (i.e.,
because it may affect perfume release and suspension). In re Peterson, 315
F.3d at 1329 (explaining that “[a] prima facie case of obviousness typically
exists when the ranges of a claimed composition overlap the ranges
disclosed in the prior art”); In re Aller, 220 F.2d 454, 456 (CCPA 1955)
(“[W]here the general conditions of a claim are disclosed in the prior art, it is
not inventive to discover the optimum or workable ranges by routine
experimentation.”).
As to the Examiner’s reliance on Nwachukwu for disclosure of the pH
limitation, Appellant contends that Nwachukwu’s invention requires an
“ingredient . . . excluded form applicant’s claimed composition,” which is
further recited with additional limitations. Appeal Br. 22. Appellant
contends that Nwachukwu “provides no disclosure as to a pressure drop”
and “specifically describes the advantage of the compressed gas system
having a low flow rate and small spray droplets which is achieved using a
flow rate of less than 1.2 g/s,” which is different than the flow rate recited in
the claims on appeal. Id. at 22–23; see also Reply Br. 6. Appellant contends
that “when considered as a whole, Smith teaches ‘typical’ spray rates as
proceeding higher and Nwachukwu teaches the advantages of low flow
rates.” Reply Br. 6. Accordingly, Appellant contends that the Examiner’s
reliance on Nwachukwu for the pH limitation “is simply selecting an
isolated feature while not considering the teaching of Nwachukwu as a
Appeal 2020-006119
Application 14/994,521

15
whole as required when applying § 103 in establishing obviousness.”
Appeal Br. 23.
As to Appellant’s argument that “Smith teaches ‘typical’ spray rates
as proceeding higher” because it teaches a rate of “at least 1.2 or 3 g/s and
less than 25 g/s,” Reply Br. 6, we are not persuaded because, as we
discussed above, this range overlaps the claimed range, and Appellant has
not provided persuasive evidence that the claimed range exhibits unexpected
results. In re Peterson, 315 F.3d at 1329.
As to Appellant’s argument regarding Nwachukwu, we note that
Clark teaches that its composition may be adjusted to a desired pH, Clark
¶ 46, and the Examiner cites Nwachukwu only to show that the claimed pH
range is known and/or obvious in the prior art for compositions, e.g.,
fragrance compositions, such as those disclosed by Clark. Ans. 9.
Accordingly, we are not persuaded by Appellant’s arguments that the cited
prior art combination does not render the claims obvious because
Nwachukwu requires an “ingredient . . . excluded from [the] claimed
composition,” teaches “the advantage of . . . flow rate[s]” lower than those
claimed, and/or provides no disclosure of other limitations in the claims
(Appeal Br. 22–23): The test for obviousness does not require “the features
of a secondary reference [to] be bodily incorporated into the structure of the
primary reference”; neither does it require that “the claimed invention . . . be
expressly suggested in any one or all of the references.” In re Keller, 642
F.2d 413, 425 (CCPA 1981). “Rather, the test is what the combined
teachings of the references would have suggested to those of ordinary skill
in the art.” Id. For the same reasons, we are not persuaded by Appellant’s
Appeal 2020-006119
Application 14/994,521

16
argument that the Examiner failed to consider the teachings of Nwachukwu
as a whole.
With respect to the Examiner’s citation to Heeb as evidence relating
to the terminal pressure limitation, Appellant contends that “Heeb is directed
to a propellant based on a solvent mixture which is different from
applicant’s claimed solvent and, thus, excluded from the claim.” Appeal Br.
20. Appellant further contends that “Heeb does not suggest applicant’s
combination of composition components used in conjunction with a plastic
container having the dispensing characteristics as claimed by applicant, in
particular the claimed initial and terminal pressure.” Id.
We are not persuaded for the same reasons discussed above with
respect to Nwachukwu, namely that the test for obviousness does not require
all features of a secondary reference to be bodily incorporated into the
invention of the primary reference, or that any one or all of the reference
expressly suggest the claimed invention. In re Keller, 642 F.2d at 425.
More specifically, Appellant argues that “Heeb teaches the provision
of a constant pressure . . . rather than a pressure drop as claimed by
applicant.” Appeal Br. 20. Appellant contends that Heeb thus teaches away
from the claimed invention and that, accordingly, “Applicant’s claims are
not a mere recognition of latent properties in the prior art, but rather are a
combination of device and composition features providing improvement in
the intensity and longevity of a fragrance of the composition.” Id. at 21.
We are not persuaded. We acknowledge that Heeb is directed to a
propellant composition comprising particular solvents and carbon dioxide,
wherein the initial and terminal pressures remain relatively constant. Heeb
Abstract, 2:15–18, 29–46. However, the Examiner cites Heeb only as
Appeal 2020-006119
Application 14/994,521

17
evidence that the pressure of a conventional gas aerosol product, such as that
suggested by the combination of Clark, Kunesh, Smith, and Nwachukwu,
would decrease as recited in claim 1 when the dispensing device is emptied
through use.8 Ans. 5. In an obviousness analysis, “the question is whether
there is something in the prior art as a whole to suggest the desirability, and
thus the obviousness, of making the combination, not whether there is
something in the prior art as a whole to suggest that the combination is the
most desirable combination available.” In re Fulton, 391 F.3d 1195, 1200
(Fed. Cir. 2004) (citation omitted). Thus, the fact Heeb prefers a propellant
composition that can maintain a constant pressure between initial and final
use does not render nonobvious conventional compressed gas aerosol

8 The Examiner finds that, because the prior art combination renders obvious
articles as claimed, i.e., comprising plastic containers made with PET as
claimed and filled with compositions having the claimed pH and claimed
ingredients in amounts overlapping the range recited in the claims,
“pressurized with the same compressed gases . . . to an initial pressure which
overlaps the . . . claimed initial pressure” and “dispensed at rates and in
droplet sizes as is routine and conventional for such products,” “the
operation of the article of manufacture of the prior art would necessarily
result in the same final pressures as instantly claimed, absent evidence to the
contrary.” Final Act. 10; cf. In re Best, 562 F.2d 1252, 1254–55, (CCPA
1977) (explaining that “where the Patent Office has reason to believe that a
functional limitation . . . may, in fact, be an inherent characteristic of the
prior art, it possesses the authority to require the applicant to prove that the
subject matter shown to be in the prior art does not possess the characteristic
relied on”) (quoting In re Swinehart, 439 F.2d 210, 212–13 (CCPA 1971)).
Appellant does not appear to have disputed this finding, much less provided
persuasive evidence to the contrary. We further note that, although this
rejection does not rely on Shieh, the Examiner finds, and Appellant does not
appear to dispute, that “the initial and final pressures exemplified by Shieh
in Figure 4 fall within the broad ranges of the independent claims.” Ans. 11;
Appeal Br. 26.
Appeal 2020-006119
Application 14/994,521

18
compositions known to be characterized by a drop in internal pressure
between initial and final use.
Finally, Appellant argues in summary that “Clark, Heeb, Kunesh,
Smith and Nwachukwu provide no connecting teaching or suggestion to
motivate one skilled in the art to pick and choose the numerous isolated
components or features required from these references and then provide
them in a combination as claimed by the applicant” and that “[t]he only basis
for selecting and combining such isolated elements to obtain applicant’s
claimed subject matter is applicant’s own teaching and claims.” Appeal Br.
23; see also Reply Br. 6–7, 9. Appellant also generally contends that the
Examiner failed to consider either the prior art or the claimed invention “as a
whole.” Reply Br. 7–10.
We are not persuaded. The predecessor of our reviewing court has
explained that
Any judgment on obviousness is in a sense necessarily a
reconstruction based upon hindsight reasoning, but so long as it takes
into account only knowledge which was within the level of ordinary
skill at the time the claimed invention was made and does not include
knowledge gleaned only from applicant’s disclosure, such a
reconstruction is proper.
In re McLaughlin, 443 F.2d 1392, 1395 (CCPA 1971). As discussed above,
the rejection is based on only knowledge which was within the level of
ordinary skill at the time of the claimed invention, namely the disclosures in
the cited references. Thus, we find that the rejection is not based on
improper hindsight reconstruction.
For the reasons discussed above, we likewise disagree with
Appellant’s assertion that the cited references failed to provide motivation to
combine teachings in the references to arrive at the claimed invention, or
Appeal 2020-006119
Application 14/994,521

19
that the Examiner failed to consider either the prior art or the claimed
invention as a whole. In this regard, we reiterate that “[t]he test for
obviousness is not whether the features of a secondary reference may be
bodily incorporated into the structure of the primary reference; nor is it that
the claimed invention must be expressly suggested in any one or all of the
references,” In re Keller, 642 F.2d at 425, and further note that “[t]he
combination of familiar elements according to known methods is likely to be
obvious when it does no more than yield predictable results.” KSR Int’l Co.
v. Teleflex Inc., 550 U.S. 398, 416 (2007).
Accordingly, for the reasons discussed above, we affirm the
Examiner’s rejection of claim 1 as obvious over Clark, Kunesh, Smith, and
Nwachukwu, as evidenced by Heeb. Claims 2–4, 7, 8, 11–14, 19, and 20
fall with claim 1.

B. Obviousness rejection over Clark, Kunesh, Smith, Nwachukwu,
and Shieh, as evidenced by Heeb (claims 1–4, 7, 8, 11–14, 17–20)
1. Issue
The Examiner finds that the combination of Clark, Kunesh, Smith,
and Nwachukwu does not teach “wherein said treating composition has a
ratio of compressed gas to remaining composition components of about
50:50 to about 25:75 by volume of the plastic container,” as required by
claims 17 and 18.
However, the Examiner finds that Shieh teaches “plastic aerosol
containers with compressed gas propellants designed to deliver small
particle size spray through the life of the aerosol device by controlling
critical parameters such as headspace volume and pressure, and gas
Appeal 2020-006119
Application 14/994,521

20
permeation through the walls of the plastic aerosol container.” Final Act.
11. The Examiner finds that Shieh teaches that “the compressed gas exists
in the headspace of the container above the aqueous composition” and
further teaches that “the headspace occupies greater than 40%, or greater
than 50%, or greater than 60%, or 20 to 80%, or 30 to 60%, or about 50%
. . . of the volume of the container,” which meets the limitation of claims 17
and 18 cited above. Id. at 11–12.
The Examiner finds that “Clark and Shieh are analogous inventions in
the field of dispensing aerosol compositions with compressed gas
propellants” and concludes that it would have been obvious to a skilled
artisan to “contain the fragranced, aerosol composition of Clark in view of
Nwachukwu in the pressure resistant plastic, preferably polyethylene
terephthalate (PET) bottle of Kunesh such that the volume of the compressed
gas headspace occupies 20–80% of the container as taught by Shieh,”
because “Shieh teach[es] by controlling critical parameters such as
headspace volume plastic aerosol containers with compressed gas
propellants are capable of delivering small particle size spray through the
life of the aerosol.” Final Act. 12–13. The Examiner finds that “[t]here
would be a reasonable expectation of success because Clark teach[es its]
composition may be dispensed using a conventionally known compressed
gas aerosol device.” Id. at 13.
Appellant contends that, “[i]n order to obtain . . . claimed articles
based on Shieh in combination with Clark, Heeb, Kunesh, Smith, and
Nwachukw[u], picking and choosing would be required from variously
disclosed components, amounts, pressure, headspace, etc. of the combined
references.” Appeal Br. 27–28. Appellant contends that, “no suggestion is
Appeal 2020-006119
Application 14/994,521

21
provided which would motivate one skilled in the art to select the particular
combination of features leading to the claimed articles.” Id. at 28.
2. Analysis
Unless otherwise noted, we adopt the Examiner’s findings of fact and
reasoning regarding the rejection of claim 17 as obvious over Clark, Kunesh,
Smith, Nwachukwu, and Shieh, as evidenced by Heeb. (Final Act. 1–16;
Ans. 4–12). We address Appellant's arguments below. Only those
arguments timely made by Appellant in the briefs have been considered;
arguments not so presented are waived. See 37 C.F.R. § 41.37(c)(1)(iv)
(2015); see also Ex parte Borden, 93 USPQ2d 1473, 1474 (BPAI 2010)
(informative) (“Any bases for asserting error, whether factual or legal, that
are not raised in the principal brief are waived.”).
Appellant first contends that “Shieh . . . does not make up for the
shortcomings of the primary combination of Clark, Heeb, Kunesh, Smith
and Nwachukwu as to the base independent claims.” Appeal Br. 24–25. We
are not persuaded by this argument as to the non-obviousness of claim 17
because, as discussed above, we do not agree with Appellant that the
combination of Clark, Heeb, Kunesh, Smith and Nwachuk, as evidenced by
Heeb, is deficient as to claim 1.
Appellant acknowledges that “Shieh teaches that the headspace
occupies greater than 40% of the volume of the container.” Appeal Br. 25.
However, Appellant argues that “[n]o teaching or suggestion is provided by
the combination of the primary references and Shieh of the specified
combination of components and amounts thereof at the claimed pressure,
headspace, and pressure drop in combination with a dispensing device
comprising a specified plastic,” which is “critical in providing improved
Appeal 2020-006119
Application 14/994,521

22
longevity and intensity of the active component(s) over time consistently.”
Appeal Br. 26; see also id. at 25 (arguing that “[s]ince no teaching as to
spray rate is provided in Clark, Kunesh or Shieh, no suggestion to modify
the teachings therein to obtain applicants’ claimed combination as to plastic
dispensing device and treatment component with defined features is
present”), 27–28.
We are not persuaded. We reiterate that “[n]on-obviousness cannot
be established by attacking references individually where the rejection is
based upon the teachings of a combination of references.” In re Merck &
Co., 800 F.2d at 1097. The reason for combining the other elements of
claim 17, in particular those recite in independent claim 1 from which claim
17 depends, have been set forth in the discussion with respect to the
rejection of claim 1.
To the extent Appellant’s argument is that there is no reason to
combine Shieh’s disclosure with respect to headspace and the teachings of
the other references, we are not persuaded. All of the cited references relate
to aerosol compositions, and, as the Examiner points out, “Shieh teach[es
that] headspace volume impacts the particle size of the delivered aerosol.”
Ans. 11; see also Shieh ¶ 7. Thus, a skilled artisan would have had reason to
combine, with reasonable expectation of success, Shieh’s teaching regarding
headspace volume in order to optimize particle size of a delivered aerosol,
particularly in light of Smith’s teaching that fragrance aerosol products such
as perfumes and room deodorizers have “a desirable range of delivery
characteristics, such as flow rate, cone angle and particle size” and that
particle size affect perfume release and suspension. Smith ¶ 7. Put another
way, Shieh teaches that headspace volume is an optimizable result-effective
Appeal 2020-006119
Application 14/994,521

23
variable in aerosol compositions, and, “where the general conditions of a
claim are disclosed in the prior art, it is not inventive to discover the
optimum or workable ranges by routine experimentation.” In re Aller, 220
F.2d at 456.
As to Appellant’s argument that “no teaching as to spray rate is
provided in Clark, Kunesh or Shieh,” we are not persuaded because such
teaching was provided in Smith. Final Act. 8.
Appellant contends that the Examiner’s reliance on Shieh as
disclosing the headspace limitations of claim 17 is misplaced, because, in the
examples in Shieh relied upon by the Examiner, the pressure drop ratio is
outside of the claim and, “[i]n the absence of applicant’s own teaching, there
is no teaching or suggestion in the applied art to use the claimed pressure
drop ratio with the claimed composition and plastic dispensing device.”
Appeal Br. 26–27. We are not persuaded because, as the Examiner points
out and Appellant has not disputed, claim 17 does not recite a limitation
regarding pressure drop ratio.9 Ans. 11.
Finally, Appellant contends that “a surfactant is not required to be
present and no criticality as to which surfactant is present is set forth in

9 Appellant cites to paragraph 20 of the Specification, which teaches that
“maintaining . . . pressure drop . . . to be less than 4:1 when the headspace is
25% by volume or 2:1 when the headspace is 50% by volume leads to a
more consistent spray, in particular as to particle size and spray rate,” which
in turn “enhances the fragrance and odor elimination experience, i.e., the
intensity experienced by the consumer over the life of the product.” Spec. ¶
20. However, we do not import limitations from the specification into the
claims. CollegeNet, Inc. v. ApplyYourself, Inc., 418 F.3d 1225, 1231 (Fed.
Cir. 2005).

Appeal 2020-006119
Application 14/994,521

24
Shieh.” Appeal Br. 29. We are not persuaded because, as discussed above,
Clark teaches the limitations with respect to surfactants. In re Merck & Co.,
800 F.2d at 1097 (“Non-obviousness cannot be established by attacking
references individually where the rejection is based upon the teachings of a
combination of references.”).
Accordingly, for the reasons discussed above, we affirm the rejection
of claim 17 as obvious over Clark, Kunesh, Smith, Nwachukwu, and Shieh,
as evidenced by Heeb. Claim 18 is not separately argued and falls with
claim 17. The rejection of claims 1–4, 7, 8, 11–14, 19, and 20 as obvious
over these references is further affirmed for the reasons discussed above
with respect to claim 1.

CONCLUSION
In summary:
Claim(s)
Rejected
35 U.S.C. § Reference(s)/
Basis
Affirmed Reversed
1–4, 7, 8, 11–14,
19, 20
103(a) Clark, Kunesh,
Smith,
Nwachukwu,
Heeb
1–4, 7, 8,
11–14, 19,
20

1–4, 7, 8, 11–14,
17–20
103(a) Clark, Kunesh,
Smith,
Nwachukwu,
Shieh, Heeb
1–4, 7, 8,
11–14,
17–20

Overall
Outcome
1–4, 7, 8,
11–14,
17–20

Appeal 2020-006119
Application 14/994,521

25
TIME PERIOD FOR RESPONSE
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).

AFFIRMED