Sven Dobler

Patent Trials and Appeals Board

Apr 21, 2020

10986123 - (D) (P.T.A.B. Apr. 21, 2020)

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.
10/986,123 11/10/2004 Sven Dobler 7579 7303
7590 04/21/2020
Paul M. Denk
763 S. New Ballas Road
St. Louis, MO 63141
EXAMINER
AHMED, HASAN SYED
ART UNIT PAPER NUMBER
1615
MAIL DATE DELIVERY MODE
04/21/2020 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
__________

Ex parte SVEN DOBLER
_________

Appeal 2018-004586
Application 10/986,123
Technology Center 1600
__________

Before ERIC B. GRIMES, RICHARD M. LEBOVITZ, and
CHRISTOPHER G. PAULRAJ, Administrative Patent Judges.

PAULRAJ, Administrative Patent Judge.

DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claim 15 for obviousness under 35 U.S.C.
§ 103. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.

STATEMENT OF THE CASE
The invention described in the specification relates to fragrance
sampler inserts of the type that may be inserted into a magazine or other

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 Sven Dobler
and Orlandi, Inc. Appeal Br. 4.
Appeal 2018-004586
Application 10/986,123

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direct mail articles. Spec. 2. Claim 15 is the only claim on appeal, and
reads as follows:
15. A sampler for inserting into printed matter such as a magazine or
a mass mailing, the sampler including a bottom ply having a top surface and
a bottom surface;
a cosmetic sample;
a well formed in said bottom ply to receive the flowable liquid
cosmetic sample;
a top ply having a top surface and a bottom surface;
one or more embossed walls formed in at least the bottom ply;
said embossed walls are one of single or double ply walls;
a channel formed in the top ply;
an absorbent applicator located within said channel and attached to
said top ply, wherein said applicator remains uncompressed upon sealing
said bottom ply to said top ply;
said sampler including a frame upon said top surface of said bottom
ply outside of said well, and a frame upon said top surface of said top ply
outside of said channel, said frames sealing said applicator within said well
in a liquid tight manner;
said channel, said well, and said walls having a generally rectangular
cross section and radiused corners;
said well having a texture in the form of at least one of dimples,
knurls, baffles, and grooves, to retain the flowable liquid cosmetics sample
therein;
said applicator being an absorbent fabric of one of cellulose, organic,
or inorganic non-woven material, and said applicator joining to said top ply
by one of welding, fusing, pressing, or gluing;
said top ply and said bottom ply are a laminate of one of metal foil,
polyester, or polyethylene;
said top ply is symmetric to said bottom ply and said applicator at
least partially fits within said well, said bottom ply has a pressure sensitive
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Application 10/986,123

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adhesive to connect said sampler to the printed matter, and said top ply and
said bottom ply are embossed;
wherein said well is a depression; said channel has dimensions at least
as large as said well, such that said channel fits over said well and said walls
fit within said channel;
said bottom surface of said top ply adheres to said top surface of said
bottom ply;
whereby said channel, said walls, and said well when placed adjacent
resist compression; and
whereby said top ply abuts said bottom ply to form a liquid tight seal
to prevent leakage of the sampler, and to impede the flow of the liquid
cosmetic sample.

The Examiner has rejected the claim under 35 U.S.C. § 103(a) as
being unpatentable over the combination of Greenland,2 Seidler,3 Matsos,4
Bootman,5 and Cloud.6
DISCUSSION
In a prior appeal (Appeal 2013-000504), the Board reversed the
Examiner’s obviousness rejection of claim 15 over the same prior art
references on the basis that “the Examiner does not indicate how the applied
art discloses or suggests the structure implied by the recitation in claim 15
that the top and bottom plies are embossed.” See Appeal 2013-000504, Dec.
on Appeal, 3 (PTAB Feb. 16, 2016).
Claim 15 continues to require an “embossed” wall formed in the
bottom ply of the sampler, and requires that “said top ply and said bottom
ply are embossed.” As in the prior rejection on appeal, the Examiner asserts:

2 Greenland, US 5,622,263, issued Apr. 22, 1997.
3 Seidler, US 5,031,647, issued July 16, 1991.
4 Matsos et al., US 6,006,916, issued Dec. 28, 1999.
5 Bootman et al., US 5,391,420, issued Feb. 21, 1995.
6 Cloud, US 5,348,031, issued Sept. 20, 1994.
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Application 10/986,123

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[T]he embossing recited in claim 15 is not essential to a
determination of patentability of the sampler disclosed in the
claim. The patentability of product-by-process claims is based
on the product itself. “[E]ven though product-by-process
claims are limited by and defined by the process, determination
of patentability is based on the product itself. The patentability
of a product does not depend on its method of production. If
the product in the product-by-process claim is the same as or
obvious from a product of the prior art, the claim is
unpatentable even though the prior product was made by a
different process.”
Ans. 4–5 (citing In re Thorpe, 777, F.2d 695, 698 (Fed. Cir. 1985)).
We continue to find this argument unpersuasive. As we previously
recognized, and contrary to the Examiner’s unsupported contentions, the
claim requires a particular structure that should be considered in assessing
patentability. See Hazani v. U.S. Int’l Trade Comm’n, 126 F.3d 1473, 1479
(Fed. Cir. 1997) (determining claims reciting “chemically engraved” were
not merely product-by-process claims “since the ‘chemically engraved’
limitation, read in context, describes the product more by its structure than
by the process used to obtain it”). In particular, the term “embossed” would
be understood to require a structure formed by raising the surfaces of the top
and bottom plies. See https://www.merriam-webster.com/dictionary/emboss
(defining “emboss” as 1) “to raise the surface of into bosses”; 2) “to raise in
relief from a surface”; and 3) “adorn, embellish”). This particular structure
is shown in embossed walls 7 and 13, respectively formed by raising the
surfaces of the bottom and top plies 5 and 3, of Figures 1 and 2 in the
Specification. See Spec. Figs. 1 and 2. The Examiner has not shown how
the “walls” identified in Greenland (i.e., element 16 of Fig. 2) satisfy the
structural requirements of an “embossed” wall insofar as those walls are
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Application 10/986,123

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made from a separate bead-shaped thermoplastic material rather than by
raising the surfaces of plies 12a and 14a. As noted in Greenland:
A narrow bead-shaped thermoplastic wall 16 surrounds an area
between the confronting thermoplastic surfaces 12a, 14a. The
confronting surfaces 12a, 14a are physically separated by and
cooperate in a melt-bonded relationship with the wall 16 to
define a hermetically sealed chamber 18 appropriately
configured and dimensioned to contain a product sample 20,
which may typically comprise a liquid or gel-like product.
Greenland, 2:44–52. The Examiner has not pointed to any other prior art
teaching to satisfy the requirement of an “embossed” wall.
We, therefore, conclude that the Examiner has not set forth a prima
facie case of obviousness. We, therefore, reverse the rejection under 35
U.S.C. § 103(a).

CONCLUSION
In summary:
Claim(s)
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
15 103(a) Greenland, Seidler,
Matsos, Bootman,
and Cloud
15

REVERSED