ScentAir Technologies, Inc.v.Prolitec, Inc.

Patent Trial and Appeal Board

Jul 18, 2014

11691363 (P.T.A.B. Jul. 18, 2014)

Trials@uspto.gov Paper 47
571-272-7822 Date: July 18, 2014

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

SCENTAIR TECHNOLOGIES, INC.,
Petitioner,

v.

PROLITEC, INC.,
Patent Owner.

Case IPR2013-00180
Patent 7,930,068

Before JAMESON LEE, MICHAEL J. FITZPATRICK, and
CHRISTOPHER L. CRUMBLEY, Administrative Patent Judges.

CRUMBLEY, Administrative Patent Judge.

FINAL WRITTEN DECISION
35 U.S.C. § 318 and 37 C.F.R. § 42.73

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I. BACKGROUND
Petitioner, ScentAir Technologies, Inc. (“ScentAir”) filed a Petition (Paper
1, “Pet.”) requesting an inter partes review of claims 1, 3-5, 9-13, 15, 22-24, 26,
28, and 33 of U.S. Patent No. 7,930,068 (Ex. 1001, “the ’068 patent”). Patent
Owner, Prolitec, Inc. (“Prolitec”), expressly waived the filing of a patent owner
preliminary response. Paper 11. In a July 30, 2013, Decision to Institute (Paper
13, “Dec.”), we instituted trial on the following grounds:
1. Claims 1, 3-5, 9-13, 15, 22-24, 26, 28, and 33 as having been obvious
over Le Pesant;
1
and
2. Claims 1, 3-5, 9-13, 15, 22-24, 26, 28, and 33 as having been obvious
over the combined disclosures of Le Pesant and Privas.
2

Dec. 18.
Following institution, Prolitec filed a Patent Owner Response to the Petition
(Paper 26, “PO Resp.”), and ScentAir filed a Reply (Paper 31, “Pet. Reply”). Oral
hearing was requested by both parties, and was held on March 10, 2014. A
transcript of the oral hearing is included in the record. Paper 44, “Tr.”
Both parties presented witness testimony via declaration. With its Petition,
ScentAir provided a Declaration from Charles A. Garris, Jr., Ph.D. Ex. 1004.
With its Patent Owner Response, Prolitec presented a Declaration from Timothy A.

1
U.S. Patent No. 6,712,287, issued March 30, 2004 (Ex. 1005).
2
WO 96/23530, published Aug. 8, 1996 (Ex. 1011). An English translation of
Privas was submitted as Ex. 1012; our citations to “Privas” are to the English
language document.
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Shedd, Ph.D. Ex. 2001. Finally, along with its Reply, ScentAir provided a second
Declaration from Dr. Garris. Ex. 1019.
We have jurisdiction under 35 U.S.C. § 6(c). This Final Written Decision,
issued pursuant to 35 U.S.C. § 318(a) and 37 C.F.R. § 42.73, addresses issues and
arguments raised during trial. For the reasons discussed below, we determine that
ScentAir has met its burden to prove, by a preponderance of the evidence, that
claims 1, 3-5, 9-13, 15, 22-24, 26, 28, and 33 of the ’068 patent are unpatentable.
A. The ’068 Patent
The ’068 patent is directed to a method and system of controlling operation
of a diffusion appliance to treat the atmosphere within an enclosed space. Ex.
1001, Abstract. In particular, the ’068 patent discloses controlling a diffusion
appliance according to a plurality of control schemes, each of which defines the
timing of operation of the appliance and the flow rate of the liquid to be diffused
into a space. Id. at 3:61-67. The volume of the space to be treated using the
diffusion appliance determines the appropriate control scheme, which can then be
selected using, for example, a numerical dial on the appliance. Id. at 3:67-4:5.
The ’068 patent suggests providing users with a chart of settings which, if the
characteristics of the liquids to be diffused are kept consistent, define a set of
control schemes appropriate for any given room size. Id. at 4:8-11. Alternatively,
if a liquid of significantly different characteristics is to be diffused in the space,
users may be provided with an equivalents table providing revised volumes
associated with the settings of the device. Id. at 4:12-16.
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B. The Challenged Claims
Of the challenged claims, claims 1 and 24 are independent. Claims 3-5, 9-
13, 15, and 22-23 depend directly or indirectly from claim 1, which is illustrative
and set forth below.
1. A method of controlling a liquid diffusion appliance
comprising:
providing an enclosed space to be treated by a liquid and with
which the appliance is in fluid communication, the appliance
including a reservoir of liquid and a means of diffusing the liquid into
the air of the space;
providing a plurality of control schemes for the appliance
which based on characteristics of the liquid and a level of treatment
desired for the space, each of the control schemes specifying
operational parameters for the appliance including a flow rate of
liquid, and a periodic timing of operation of the diffusion means;
providing the diffusion means including a venturi in fluid
communication with the liquid reservoir, and the venturi in fluid
communication with a source of compressed gas, and wherein
operation of the diffusion means comprises release of the pressurized
gas into the venturi, the release of the gas into the venturi operating to
draw liquid from the reservoir into the venturi where the liquid mixes
with the gas at the desired flow rate and then dispersing the gas and
liquid mixture into the space;
determining a volume of the space to be treated; and
selecting one of the control schemes based on the volume of the
space to be treated;
operating the appliance based on the selected control scheme.
Ex. 1001, 9:19-44 (key claim limitations emphasized).
Independent claim 24 is directed to a system for treating an enclosed space
with a liquid, and contains limitations similar to those in claim 1, including control
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schemes, wherein each of the control schemes corresponds to a particular volume
within the space. Claims 26, 28, and 33 depend from claim 24.
II. DISCUSSION
A. Claim Construction
In an inter partes review, “[a] claim in an unexpired patent shall be given its
broadest reasonable construction in light of the specification of the patent in which
it appears.” 37 C.F.R. § 42.100(b). Under this standard, we construe claim terms
using “the broadest reasonable meaning of the words 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). We presume that claim terms have their
ordinary and customary meaning. See In re Translogic Tech., Inc., 504 F.3d 1249,
1257 (Fed. Cir. 2007) (“The ordinary and customary meaning is the meaning that
the term would have to a person of ordinary skill in the art in question.”) (internal
quotation marks omitted). However, a patentee may rebut this presumption by
acting as his own lexicographer, providing a definition of the term in the
specification with “reasonable clarity, deliberateness, and precision.” In re
Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994).
For purposes of our Decision to Institute, we gave each claim term its
broadest reasonable interpretation, as understood by one of ordinary skill in the art
and as consistent with the specification of the ’068 patent. We expressly construed
the claim term venturi as “a structure having a constriction that causes an increase
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in the velocity of flow of a fluid and a corresponding decrease in fluid pressure
thereby creating suction.” Dec. 8-10. We also determined that the terms means of
diffusing and diffusion means are not means-plus-function limitations within the
scope of 35 U.S.C. § 112, sixth paragraph. Id. at 10-11. Neither party contested
these constructions during trial, and we discern no reason to modify them. See PO
Resp. 6 (Prolitec does not object to the Board’s constructions).
During trial and at oral hearing, the parties’ arguments shifted away from the
terms we had construed in our Decision to Institute, and instead focused on
whether the prior art taught the claim limitations a plurality of control schemes and
selecting one of the control schemes based on the volume of the space to be
treated. In resolving the parties’ dispute, we find it helpful to provide an explicit
construction of the limitation control schemes.
1. A Plurality Of Control Schemes
In construing a plurality of control schemes, our analysis begins with, and
remains centered on, the language of the claims themselves. See Interactive Gift
Exp., Inc. v. Compuserve Inc., 256 F.3d 1323, 1330 (Fed. Cir. 2001). In the
context of claim 1, a control scheme is “based on characteristics of the liquid”
being diffused into the air, and the “level of treatment desired for the space.” Ex.
1001, 9:26-27. Each control scheme then specifies operational parameters for the
appliance, including the flow rate of the liquid and the periodic timing of operation
of the diffusion means. Id. at 9:27-30. The control schemes of claim 24 also
specify the same two operational parameters of flow rate and periodic timing, but
the claim does not require particular inputs to the control scheme. Id. at 11:15-19.
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In both claims, a user then selects a control scheme based on the particular volume
of the space to be treated. Id. at 9:41-42 ; 11:19-20.
Thus, from the language of the claims themselves, we understand a plurality
of control schemes to be a system of correlations
3
between particular inputs (e.g.,
characteristics of the liquid and level of treatment) and particular outputs for
controlling the diffusion means (e.g., flow rate, periodic timing). Once this set of
correlations is determined, a particular control scheme may be selected based on
user criteria including, but not limited to, the volume of the space to be treated.
Upon reviewing the specification of the ’068 patent, we do not consider the
inventors to have acted as their own lexicographers. Rather, the usage in the
specification is consistent with the plain and ordinary meaning of control schemes
as used in the claims. In particular, Figure 4 of the ’068 patent illustrates a chart of
settings to control the system, with each row corresponding to a particular control
scheme. Id. at 3:61-65. A partial excerpt of Figure 4 is reproduced below.

3
See scheme, RANDOM HOUSE KERNERMAN WEBSTER’S COLLEGE DICTIONARY
(2010) (available at http://www.thefreedictionary.com/scheme) (“any system of
correlated things, parts, etc., or the manner of their arrangement”); see also
scheme, COLLINS ENGLISH DICTIONARY (2003) (available at
http://www.thefreedictionary.com/scheme) (“a systematic arrangement of
correlated parts; system”).
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In the above partial excerpt of Figure 4, each control scheme 110 specifies
speed setting 112 and duty cycle 118. Id. at 4:22-25. The specification states that
each control scheme “may, for example, be associated with a particular numerical
dial setting or other selectable setting 111,” and that each setting 111 “may be
defined as suitable for a particular volume 54.” Id. at 3:67-4:4 (emphases added).
In the event that the characteristics of the liquid to be diffused differ from those of
a standard liquid, the specification states that additional tables may be supplied that
set forth alternative control schemes. Id. at 4:12-17.
Prolitec asks that we construe control schemes as “a set of operational
parameters for the appliance.” PO Resp. 6. ScentAir does not proffer a particular
construction, but Prolitec notes that, in related district court litigation, ScentAir
defined the term as “systematic plan of control.” Id. (citing Ex. 1015, 3). We
decline to adopt either construction as the broadest reasonable interpretation of the
claim language. Prolitec’s construction, “a set of operational parameters for the
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appliance,” merely repeats language used in the claim immediately following
control schemes, and therefore, adds nothing to the understanding of the term. See,
e.g., Ex. 1001, 9:27-29 (“each of the control schemes specifying operational
parameters for the appliance”). In addition, by focusing on the “operational
parameters” aspect of the control scheme, Prolitec’s construction ignores that the
control schemes are relationships between inputs and those operational parameters,
which may be selected by the user according to some other criteria. This feature
was repeatedly emphasized by Prolitec’s counsel at oral argument. Tr. 34
(“adjusting all of these other variables automatically according to that easy to
estimate variable . . . in our view that's the whole point of the ’068 control
schemes.”). ScentAir’s district court claim construction, by focusing on a
“systematic plan of control,” similarly errs by focusing only on the output of the
control scheme, and not also on the input.
Based on the foregoing, we consider the broadest reasonable interpretation
of a plurality of control schemes to be a system of correlations between particular
inputs and particular outputs for controlling the diffusion means, which permits a
user to select a particular correlation based on user criteria.
B. Prior Art References
Neither party disputes that the following two references at issue in the
instituted trial are prior art to the ’068 patent.
1. Le Pesant
Le Pesant discloses a programmable, odor-bearing substance diffusion
device. Ex. 1005, Abstract. Figure 2 of Le Pesant, reproduced below, illustrates
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“a means of drop diffusion” (Id. at 5:41-42):

Figure 2 of Le Pesant illustrates drop diffusion means 22 according to one
embodiment of the invention. The drop diffusion means includes first tube 24
connected to a tank containing liquid to be diffused 6, and second tube 26
connected to air pump outlet 10a. Id. at 7:6-9. Both tubes have tapered sections
24b, 26b that converge toward smaller section outlets 24c, 26c. Id. at 7:10-19.
The tubes are arranged at right angles so that a jet of air from mouth 26c of the
second tube passes over mouth 24c of the first tube. Id. at 7:23-24. Le Pesant
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notes that the “jet of air, by a Venturi effect, draws the liquid into the first tube and
projects it in fine droplets G.” Id. at 7:25-27.
Le Pesant discloses that the system includes control electronics 12 that
control the air pump 10, thereby permitting control of the flow of droplets G from
the diffusion means. Id. at 7:40-46. The control electronics also can determine
intervals between successive emissions of the device. Id. at 13:1-6. According to
Le Pesant, the emission cycles are “calculated to take into consideration the
saturation and de-saturation time of the olfactory nervous system.” Id. at 3:38-41.
The control electronics of Le Pesant comprise a central processing unit that
includes a microprocessor that may be programmed by the user to perform various
sequences of operation of the diffusion device. Id. at 11:24-31. Alternatively, Le
Pesant discloses that the device may be operated according to a pre-established
program instead of a user-set program. Id. at 7:42-46. The examples of Le Pesant
disclose modes of operation of the device appropriate for various applications,
such as waking a user from sleep (Example 1) or from a coma (Example 2), or
assisting in smoking cessation (Example 3). Id. at 13:35-15:17. Example 5 of Le
Pesant discloses programming the device to emit a combination of odors using
various emission times and internals, in order to prevent scent fatigue. Id. at
15:25-55.
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2. Privas
Privas discloses a fumigation device for fluid products, such as deodorizers
or air fresheners. Ex. 1012, 1.
4
The fumigation device comprises a
microprocessor, which determines the activation frequency for the product pump
such that “the quantity of gaseous product distributed by the air conditioning
system into the treated area is directly determined in relation to a real,
representative parameter.” Id. at 12. In one embodiment, this determination is
performed by incorporating a set point value that represents the air circulation in
the area being treated. Id. at 14. In a second embodiment, a “lookup table” may
accompany the device, which determines the set point value according to “the
volume and the nature of the room being treated.” Id.
C. Obviousness Over Le Pesant
There is no material dispute between the parties regarding whether most of
the limitations of claims 1 and 24 are disclosed by Le Pesant. For example,
Prolitec does not contend that Le Pesant fails to disclose a reservoir of liquid and a
means of diffusing that liquid into a space, or that the diffusion means does not
include a venturi. Nor does Prolitec dispute whether any of the limitations of the
dependent claims is disclosed by Le Pesant. Given the evidence before us that Le
Pesant discloses these elements, we find that ScentAir has shown by a
preponderance of the evidence that these elements are present in Le Pesant.

4
Exhibit 1012 contains page numbers at both the top and bottom of several pages.
Our citations herein are to the upper page numbers.
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The parties’ dispute centers on whether Le Pesant teaches control schemes,
and whether a person of ordinary skill in the art would have found it obvious to
modify Le Pesant to select a control scheme based on the volume of the space to be
treated. We address these issues in turn below.
1. Le Pesant Teaches Control Schemes
According to ScentAir, Le Pesant discloses a device that includes a
microprocessor programmed to perform various sequences for operating the
diffusion means. Pet. Reply 4. In particular, Le Pesant states that the device may
be operated “according to established programming chosen by the user . . . or to a
pre-established program.” Ex. 1005 7:44-46. In ScentAir’s view, it is these
“various sequences”—which control the flow rate and timing of the diffusion
means—that correspond to the claimed plurality of control schemes. Pet. Reply 4.
ScentAir also directs our attention to the examples of Le Pesant, contending
that the various applications described therein constitute a plurality of control
schemes. Tr. 15-16. For instance, Example 1 discloses an embodiment of the
device that is programmed to wake the user from sleep, whereas Example 5
discloses a set of programming for preventing scent fatigue. Ex. 1005 13:40-
15:54. ScentAir notes that Prolitec’s witness, Dr. Shedd, conceded that Example 5
of Le Pesant “relates to one complicated control scheme.” Pet. Reply 5 (citing Ex.
2001 ¶ 56).
Prolitec, by contrast, describes the control electronics and programming of
Le Pesant as “simple programmable electronics” that are “akin to a programmable
alarm clock.” PO Resp. 15. “Just because a device has programmable inputs,”
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reasons Prolitec, “does not mean that it provides more than one control scheme for
a user to choose from.” Id. at 16. This distinction between the control schemes of
the ’068 patent and the programmable device of Le Pesant was further clarified by
Prolitec’s counsel at oral argument:
MR. BAISH: [] The ’068 device comes with a plurality of control
plans within the device as opposed to a device that can just function
on a range that is programmed by the user, and I think that distinction
is critical to the difference between the ’068 and the prior art.
Tr. 33-34. In other words, according to Prolitec, the control schemes of the ’068
patents come pre-installed on the device, whereas the programming of the Le
Pesant device is performed by the user. Prolitec further contends that the device of
Le Pesant comes with, at most, a “singular, pre-established program.” Id. at 35
(citing Ex. 1005, 7:40-46).
Based on our evaluation of the parties’ arguments and our review of the
record, we find that Le Pesant discloses control schemes, as that claim term is
properly construed. The device of Le Pesant adjusts its control programming
according to the liquid to be diffused and the level of treatment desired, as required
by claim 1. Ex. 1005, 3:44-49, 15:43-47. The device also specifies the flow rate,
emission times, and intervals, as required by claims 1 and 24. Id. at 7:42-46, 13:1-
6. A user may choose the programming that controls the device. Id. at 7:40-46.
The programming of Le Pesant is, therefore, a plurality of control schemes as we
have construed the term: a system of correlations between particular inputs and
particular outputs for controlling the diffusion means, which permits a user to
select a particular relationship based on user criteria.
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We do not find Prolitec’s arguments to the contrary persuasive, for at least
two reasons. First, the broadest reasonable interpretation of control scheme does
not require that the schemes be pre-installed on the device, rather than programmed
by a user. The specification does not set forth any such requirement that would
justify deviating from the ordinary meaning of control schemes as used in the
context of the claims. Regardless of whether the relationship between inputs and
device output is programmed into the device of Le Pesant by the manufacturer or
the end user, it is a control scheme within the meaning of the ’068 patent.
Second, assuming arguendo that the control schemes must be programmed
before the device reaches the end user, Le Pesant would not exclude such an
embodiment. Prolitec’s reliance on a “singular, pre-established program” (Tr. 35)
in Le Pesant demonstrates a misinterpretation of the reference. Le Pesant discloses
that the device is controlled “according to established programming chosen by the
user . . . or to a pre-established program,” not a “singular” program as argued by
Prolitec. Le Pesant permits the inclusion of multiple pre-established programs on
the device, although the user is limited to selecting one pre-established program (or
a user-established program) at a time. The ’068 patent requires nothing else in this
regard.
2. Le Pesant Does Not Suggest Selection of a Control Scheme Based
On Volume
ScentAir concedes that Le Pesant does not teach “selecting one of the
control schemes based on the volume of the space to be treated” (Claim 1) or
“control schemes corresponding to a particular volume within the space” (Claim
24). Pet. 14. However, ScentAir contends that Le Pesant states that its diffusion
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device can be used to treat rooms of various sizes, “typically containing air
volumes of between 30 and 100 cubic meters.” Id. (citing Ex. 1005, 10:6-10).
ScentAir further relies on the declaration of Dr. Garris for the proposition
that “it would have been desirable to one of skill in the art to tailor one or more of
the pre-established programs in Le Pesant to a given volume.” Id. (citing Ex. 1004
¶¶ 21-22). In his declaration, Dr. Garris states that “[i]t is common sense and well-
known in the field of fluid machinery, mass transfer and associated control that the
concentration of the diffused liquid within a space is affected by the volume of the
space.” Ex. 1004 ¶ 22. “One of skill in the art could have readily . . . specif[ied] a
flow rate and timing for a given pre-established program that achieves the desired
treatment for the corresponding volume.” Id.
Dr. Shedd, Prolitec’s witness, agreed that “volume is a fundamental
parameter in determining concentration,” a statement relied on heavily by
ScentAir. Pet. Reply 7; Ex. 1019 ¶ 22 (citing Ex. 2001 ¶ 32). When read in the
context of Dr. Shedd’s entire statement, however, he concluded that “volume is
only one parameter that is relevant to estimating the amount of scent or liquid to be
effective in a given area.” Ex. 2001 ¶ 32.
Upon review of Le Pesant and the declaration testimony of Dr. Garris and
Dr. Shedd, ScentAir has not carried its burden of proving that Le Pesant would
have suggested to one with ordinary skill in the art selecting a control scheme
based on the volume of the space to be treated. Le Pesant’s only discussion of
volume is in the context of diffused droplet size. The reference discusses the use
of a droplet size that results in a “dry fog,” and states that “[m]eans of diffusing
very small droplets in high numbers like this are well suited to the volume of
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residential rooms and meeting rooms, typically containing air volumes of between
30 and 100 cubic meters.” Ex. 1005, 10:5-10. Contrary to ScentAir’s
interpretation, however, this statement does not disclose that the device of Le
Pesant may be used in 30-100 cubic meter

rooms. Rather, Le Pesant is stating
diffusion means which result in a “dry fog” droplet size are suitable for such
volumes.
Nor does Le Pesant disclose that the programming of its device should be
adjusted according to the volume of the room; Le Pesant merely suggests that its
device is suitable for various volumes. The reference is silent as to whether
adjustments to the programming of the device are necessary for the device to
operate in these various volumes.
5
Le Pesant, therefore, does not suggest selecting
a control scheme based on volume.
Nor does Dr. Garris’ testimony that it is “common sense” that concentration
of diffused liquid is affected by volume (Ex. 1004 ¶ 22) provide the necessary
reason to modify Le Pesant. A known relationship between concentration and
volume does not provide a reason to modify the device to take advantage of that
relationship, especially when at least one interpretation of Le Pesant suggests that
no modification is necessary. ScentAir has not articulated a persuasive reason

5
See Tr. 20-21 (“JUDGE CRUMBLEY: I can read [Le Pesant] the way you take it,
which is you would need to adjust it in some way to make it operate differently
depending on the size of the room, but you could also read it as this device without
any interference from the user is suitable for treating a room with a range from 30
to 100 cubic meters. One of those presents you with a need for volume based
control. The other one doesn't. MR. POND: Yes, Your Honor.”)
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that—based on the disclosure of Le Pesant alone—a skilled artisan would have
sought to modify the device of Le Pesant to include volume-based control. For this
reason, ScentAir has not shown by a preponderance of the evidence that Le Pesant
renders obvious the subject matter of claims 1, 3-5, 9-13, 15, 22-24, 26, 28, and 33,
as it fails to teach or suggest the selection of a control scheme based on the volume
of the space to be treated.
D. Obviousness Over Le Pesant in Combination with Privas
Again, the parties’ dispute regarding the combination of Le Pesant and
Privas focuses on a few particular issues. There is no material dispute that the
combined disclosures teach most of the limitations of the independent claims, such
as diffusion means including a venturi. Nor does Prolitec contend that any of the
limitations of the dependent claims is not disclosed by the combined references.
As before, we find that ScentAir has met its burden of demonstrating by a
preponderance of the evidence that these claim elements are disclosed by the
combination of Le Pesant and Privas.
Turning to the disputed elements, Prolitec argues that the combined
disclosures do not teach control schemes or selecting a control scheme based on
the volume of the space to be treated. Prolitec also argues that it would not have
been obvious to combine Le Pesant and Privas, because Privas is nonanalogous art
and teaches away from the claimed invention. Regarding Prolitec’s first argument,
we found above that Le Pesant discloses control schemes. We address Prolitec’s
further arguments below.
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1. Privas Teaches Selection of a Control Scheme Based on Volume
As noted above, Privas discloses controlling a fumigation system using a
microprocessor that incorporates a “set point value” representing the air circulation
in the area being treated. Ex. 1012, 14. Prolitec contends that this does not
constitute selecting a control scheme based on the volume of the space to be
treated, as required by the challenged claims. PO Resp. 26-27. Prolitec’s
argument emphasizes that Privas’ “set point” represents air circulation, not
volume, and may be determined empirically.
6
Id. at 28-29. Prolitec urges,
therefore, that Privas’ “set point value” is not the “equivalent of volume.” Id.
The claims before us, however, do not require selection of a control scheme
based exclusively on volume or an “equivalent” of volume. Rather, claim 1 and its
dependent claims require “selecting one of the control schemes based on the
volume of the space to be treated,” whereas claim 24 and its dependent claims
require “each of the control schemes corresponding to a particular volume within
the space.” Indeed, the specification of the ’068 patent explicitly contemplates
other factors, such as the nature of the liquid being dispersed, as having an impact
on the control scheme selected. Ex. 1001, 4:12-17; see also Tr. 44 (“MR. BAISH:
[] [T]he specification talks about there might be multiple settings appropriate to a

6
As ScentAir notes, Privas discloses two embodiments of its device: an
“industrial” one, which uses an aeraulic probe to empirically determine air
circulation, and a simpler “household” embodiment, which uses a lookup table to
determine the set point. Ex. 1012, 14.
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given volume. . . . [B]ut the settings are all premised on the adjustment of volume.
It's not to say other factors don't come into place, personal taste of course.”).
Privas discloses selecting a set point based on, or corresponding to, the
volume of the space to be treated, by providing a lookup table that determines the
set point according to the “volume and the nature of the room being treated.” Ex.
1012, 14. This set point is, therefore, a control scheme that is selected based on the
volume of the space to be treated, the sole limitation of the ’068 claims we have
not found disclosed by Le Pesant. Thus, we find that Le Pesant and Privas together
disclose all elements of independent claims 1 and 24, as well as those of dependent
claims 3-5, 9-13, 15, 22-23, 26, 28, and 33, for which Prolitec has not presented
additional arguments.
2. Reason To Combine Le Pesant and Privas
ScentAir relies on the testimony of Dr. Garris to support the combination of
Le Pesant with Privas. In addition to noting that both Le Pesant and Privas
disclose liquid diffusion devices, Dr. Garris states that:
Based on the knowledge about concentration and volume coupled
with Le Pesant’s stated desire to treat rooms of varying volumes
(rooms between 30 and 100 cubic meters), it would have been
desirable to one of skill in the art to include Privas’ volume based
control into the control programs of Le Pesant. One of skill in the art
could have readily done so, for example, by having pre-established
programs that specify a flow rate and timing “as determined by the
volume” of a room as taught by Privas so as to achieve the desired
treatment for the corresponding volume. A user of Le Pesant could
then properly treat a room of a given volume by easily selecting the
pre-established program for that volume.
Ex. 1004 ¶ 42.
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Prolitec argues that this rationale fails to provide a reason to combine the
references, contending that Le Pesant does not express a “desire” to treat various
volumes and that Privas does not disclose volume-based control. PO Resp. 36.
We disagree with the latter argument, as we have already found that Privas
discloses selecting a “set point” based—at least in part—on the volume of the
space to be treated. With respect to the former argument, we find that Le Pesant
discloses treating rooms of varying volumes, at least ranging between 30 and 100
cubic meters. Ex. 1005, 10:8-10. As discussed above, this does not provide a
reason to modify Le Pesant to include volume-based control, but we conclude that
it provides sufficient reason to combine Le Pesant with Privas, which discusses
volume-based control. A person of ordinary skill in the art seeking to use the
liquid diffusion device of Le Pesant in rooms of varying volumes would have
reason to incorporate the volume based-control of Privas’ liquid diffusion device.
Prolitec makes two additional arguments regarding the combination of Le
Pesant and Privas, neither of which we find persuasive. First, Prolitec contends
that Privas is non-analogous art and should not be considered. PO Resp. 30-32.
Second, Prolitec argues that Privas teaches away from the ’068 patent. Id. at 32-
34. We address each argument in turn.
a. Privas is Analogous Art
A prior art reference is considered to be analogous if it is either: 1) from the
same field of endeavor, regardless of the problem addressed; or 2) reasonably
pertinent to the particular problem with which the inventor is concerned, regardless
of the field of endeavor. See In re Clay, 966 F.2d 656, 659 (Fed. Cir. 1992). “A
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reference is reasonably pertinent if, even though it may be in a different field from
that of the inventor’s endeavor, it is one which, because of the matter with which it
deals, logically would have commended itself to an inventor’s attention in
considering his problem.” Id. at 659. The determination of whether a prior art
reference is analogous is a factual one. Id. at 658.
We find that Privas is analogous art, as it is from the “same field of
endeavor” as the ’068 patent. Prolitec argues that Privas is directed to fumigation
devices, whereas the ’068 patent is directed to atomizers. PO Resp. 30-31.
Prolitec cites the testimony of Dr. Shedd, who notes that the two devices operate
under different principles of diffusion. Id. (“In an atomizer like the ’068 patent
device, fluid is diffused in a liquid state but in Privas it is diffused in a gaseous
state.”) (citing Ex. 2001, ¶¶ 44, 82).
ScentAir asserts that Privas is from the same field of endeavor as the ’068
patent, noting that the Privas fumigation device contains both an atomizer and an
evaporator. Pet. Reply 10. ScentAir cites Dr. Garris’ testimony that the Privas
device is “structurally and functionally akin to the subject matter of the ’068
patent—but with an additional diffusion means.” Id. (citing Ex. 1019 ¶ 35).
We do not consider the additional evaporator of Privas as somehow
removing Privas from the same field of endeavor as the ’068 patent. Both devices
are used treat the air within a space using diffusion means that comprise an
atomizer. Prolitec has not pointed us to any functional difference that would
distinguish the devices in a meaningful way. Tr. 48 (“JUDGE CRUMBLEY: At
least some portion of [Privas’] operation is the same as ScentAir’s. MR. BAISH:
That’s true, yes.”). Indeed, the devices of Privas and the ’068 patent have
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significant structural similarities, including the reservoir of liquid and the
atomizer/venturi. These structural and functional similarities would have led one
of ordinary skill in the art working in the field of atomizing devices, such as those
of the ’068 patent, to consider similar devices, such as the fumigator of Privas. See
In re Bigio, 381 F.3d 1320, 1325-26 (Fed. Cir. 2004).
Having found that Privas and the ’068 patent pertain to the same field of
endeavor, we need not reach the “reasonably pertinent to the particular problem”
test. We simply note that both Privas and the ’068 patent address the problem of
maintaining a constant level of odor within the space being treated. Compare Ex.
1001, 1:36-38, 10:22-26 (level of treatment within the space is substantially
constant) with Ex. 1012, 2 (device capable of maintaining a constant level of odor
in the space).
b. Privas Does Not Teach Away
Prolitec also argues that the skilled artisan would not have combined Le
Pesant with Privas, because “Privas actually teaches away from the invention in the
’068 patent.” PO Resp. 32-34. Privas teaches that atomizers are useful for small
spaces, but “when treating vaster areas, this technique is unsuitable, resulting in
poor dispersion of the product throughout the room.” Ex. 1012, 4. Prolitec argues
that the ’068 patent, by contrast, “is suitable for treating spaces larger than those
disclosed or taught by Le Pesant.” PO Resp. 33.
A reference teaches away from a combination when, for example, a person
of ordinary skill in the art would be discouraged from following the path set out in
the reference, or would be led in a direction divergent from that chosen by the
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inventor. In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994). “[I]n general, a
reference will teach away if it suggests that the line of development flowing from
the reference’s disclosure is unlikely to be productive of the result sought by the
applicant.” Id.
At the outset, we note that Prolitec frames its analysis as “Privas [] teaches
away from the invention in the ’068 patent” (PO Resp. 32) (emphasis added),
whereas the proper inquiry is whether the reference teaches away from the
combination with Le Pesant. Prolitec’s arguments comparing the spaces
contemplated by Privas with the spaces treated in the ’068 patent are, therefore,
beside the point.
In any event, we are not persuaded that Privas teaches away from the
combination with Le Pesant. Privas states that atomizers are suitable for “localized
treatments,” but does not quantify what volume would be considered “a small area
of space.” Ex. 1012, 1. Prolitec has presented no evidence that Privas’ “small area
of space” would not overlap with Le Pesant’s spaces of 30-100 cubic meters.
There is insufficient evidence before us to conclude that Privas teaches away from
a combination with Le Pesant.
III. CONCLUSION
We have considered the scope and content of the prior art; the differences
between the prior art and the challenged claims; the level of ordinary skill in the
art; and the objective indicia of nonobviousness. See Graham v. John Deere Co.,
383 U.S. 1, 18-19 (1966). We conclude that Petitioner has demonstrated by a
preponderance of the evidence that claims 1, 3-5, 9-13, 15, 22-24, 26, 28, and 33 of
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the ’068 patent are unpatentable under 35 U.S.C. § 103, as they would have been
obvious over the combined disclosures of Le Pesant and Privas.
IV. ORDER
In consideration of the foregoing, it is
ORDERED that claims 1, 3-5, 9-13, 15, 22-24, 26, 28, and 33 of U.S. Patent
No. 7,930,068 are unpatentable; and
FURTHER ORDERED that, because this is a final decision, parties to the
proceeding seeking judicial review of the decision must comply with the notice
and service requirements of 37 C.F.R. § 90.2.

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For PETITIONER:

Walter Renner
Kevin Greene
Fish & Richardson, P.C.
axf@fr.com
apsi@fr.com

For PATENT OWNER:

Jennifer L. Gregor
James D. Peterson
Nicholas A. Kees
GODFREY & KAHN, S.C.
jgregor@gklaw.com
jpeterson@gklaw.com
nkees@gklaw.com