Ex Parte Benoist

Board of Patent Appeals and Interferences

Nov 9, 2004

09733041 (B.P.A.I. Nov. 9, 2004)

1
The opinion in support of the decision being entered today was
not written for publication and is not binding precedent of the
Board.
Paper No. 25
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte JEAN FRANCOIS BENOIST
__________
Appeal No. 2004-1419
Application 09/733,041
___________
ON BRIEF
___________
Before FRANKFORT, McQUADE, and NASE, Administrative Patent
Judges.
FRANKFORT, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the examiner's final
rejection of claims 1 through 39, all of the claims pending in
this application.
Appellant’s invention relates to a swirling effect nozzle
for an aerosol receptacle, which nozzle is designed to provide a
Appeal No. 2004-1419
Application 09/733,041
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spray that is more opaque, that drifts downwards, and that gives
a more gentle impression than that produced by prior art aerosol
receptacles containing a liquefied propellant gas. Independent
claim 1 is representative of the subject matter on appeal, and a
copy of that claim, as reproduced from the Appendix to
appellant’s brief, is attached to this decision.
The prior art references of record relied upon by the
examiner in rejecting the claims before us on appeal are:
Burke et al. (Burke) 4,071,196 Jan. 31, 1978
Heeb et al. (Heeb) 4,322,037 Mar. 30, 1982
Lund 5,711,488 Jan. 27, 1998
Claims 15 and 39 stand rejected under 35 U.S.C. § 112,
second paragraph, as being indefinite for failing to particularly
point out and distinctly claim the subject matter which appellant
regards as the invention.
Claims 1, 3, 5, 7, 10 through 12, 23, 33 and 34 stand
rejected under 35 U.S.C. § 102(b) as being anticipated by Lund.
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Application 09/733,041
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Claims 2, 4, 6, 8, 9 and 24 through 32 stand rejected under
35 U.S.C. § 103(a) as being unpatentable over Lund.
Claims 13 through 22 and 35 through 39 stand rejected under
35 U.S.C. § 103(a) as being unpatentable over Lund in view of
Heeb.
Claims 1 through 39 additionally stand rejected under
35 U.S.C. § 103(a) as being unpatentable over Burke.
Rather than reiterate the conflicting viewpoints advanced by
the examiner and appellant regarding the above-noted rejections,
we refer to the answer (Paper No. 15, mailed October 2, 2002) for
a full exposition of the examiner’s position, and to appellant’s
brief (Paper No. 14, filed August 15, 2002) and reply brief
(Paper No. 16, filed November 29, 2002) for the arguments
thereagainst.
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Application 09/733,041
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OPINION
Having carefully reviewed the indefiniteness, anticipation
and obviousness issues raised in this appeal in light of the
record before us, we have made the determinations which follow.
Looking first to the examiner’s rejection of claims 15 and
39 under 35 U.S.C. § 112, second paragraph, we note that claim 15
sets forth a receptacle “according to claim 13, containing a
propellant gas constituted by a non-liquefied compressed gas,”
and claim 39 sets forth a receptacle “according to claim 15,
containing compressed air.” The examiner is of the view that
claim 15 is indefinite because of the recitation therein of a
broad range or limitation (i.e., “propellant gas”) together with
a narrow range or limitation (i.e., “constituted by a non-
liquefied compressed gas”). Like appellant (brief, page 6), we
are of the opinion that claim 15 is clear and definite, and
unambiguously defines an aerosol receptacle as recited in claim
13 that contains a propellant gas which is specifically limited
to being a non-liquefied compressed gas. Thus, we find that the
metes and bounds of this claim are set forth with a reasonable
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Application 09/733,041
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degree of specificity and, for that reason, will not sustain the
examiner’s rejection of claim 15 under 35 U.S.C. § 112, second
paragraph.
However, we agree with the examiner that claim 39 on appeal
is indefinite, since it appears that the “compressed air” recited
in claim 39 is provided in the receptacle in addition to the
non-liquefied compressed gas set forth in claim 15. Contrary to
appellant’s view, noted on page 6 of the brief, claim 39 does not
set forth that the gas of claim 15 is compressed air, but instead
merely recites a receptacle as in claim 15 “containing compressed
air.” If appellant intended to further limit the non-liquefied
gas of claim 15, then claim 39 should have been directed to a
receptacle according to claim 15 wherein said non-liquefied
compressed gas is compressed air. In light of the foregoing, the
examiner’s rejection of claim 39 under 35 U.S.C. § 112, second
paragraph, will be sustained.
Turning next to the examiner’s rejection of claims 1, 3, 5,
7, 10 through 12, 23, 33 and 34 under 35 U.S.C. § 102(b) as being
anticipated by Lund, we note that while it is true that the Lund
patent teaches a swirling effect nozzle (Figs. 1-4) having
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substance feed channels (46) opening out into a swirling chamber
(42) communicating with an outlet orifice (44), we find no
disclosure in this reference of a specific example that falls
within the claimed ranges set forth in claim 1 on appeal. In
that regard, we consider that although Lund indicates that the
individual vane exit area (EA) may generally be within the range
of about 0.02 mm2 and about 0.07 mm2 (col. 5, lines 62-64), and
makes mention of a nozzle insert which has at least two spaced
grooves or vanes (col. 4, lines 42-45), it also expressly seeks
to provide an atomized liquid spray from a manually-actuated pump
dispenser having a 40 micron or less mean particle size with a
required activation liquid pressure below 200 psig. To that end,
Lund expresses a preference for an atomizing nozzle having a
cumulative vane exit area (i.e., a summation of the individual
vane exit areas EA) in a range of between about 0.18 mm2 and
about 0.36 mm2, a swirl chamber diameter CD in a range of between
about 1.3 mm and about 2.0 mm and a discharge orifice diameter of
about 0.35 mm so as to obtain the desired spray at the specified
activation pressure level. See, e.g., col. 2, line 53 through
col. 3, line 8 and col. 6, lines 5-17 of Lund.
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Application 09/733,041
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Like appellant, we find the examiner’s arbitrary selection
of the smallest individual exit area (0.02 mm2) for the vanes in
Lund and the fewest number of vanes (two) to provide a nozzle
having a cumulative vane exit area of only 0.04 mm2 (and ratio
values within the ranges set forth in claim 1 on appeal) to be
contrary to the clear teachings of the Lund patent and so far
outside the range of cumulative vane exit areas indicated by Lund
as to make it highly unlikely that such a nozzle would even be
capable of producing an atomized liquid spray from a manually-
actuated pump dispenser having a 40 micron or less mean particle
size with a required activation liquid pressure below 200 psig,
as mandated by Lund. Thus, in the final analysis, we share
appellant’s view that Lund fails to disclose the claimed subject
matter set forth in independent claim 1 on appeal with sufficient
specificity as to constitute anticipation under the statute. For
that reason, we will not sustain the examiner’s rejection of
claims 1, 3, 5, 7, 10 through 12, 23, 33 and 34 under 35 U.S.C.
§ 102(b) as being anticipated by Lund.
Nor will we sustain the examiner’s rejection of dependent
claims 2, 4, 6, 8, 9 and 24 through 32 under 35 U.S.C. § 103(a)
as being unpatentable over Lund alone or that of claims 13
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Application 09/733,041
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through 22 and 35 through 39 under 35 U.S.C. § 103(a) as being
unpatentable over Lund in view of Heeb. Absent hindsight gained
from first having read appellant’s disclosure and claims, we find
no teaching, suggestion or motivation for attempting to modify
the nozzle and manually-actuated pump dispenser of Lund in the
manner proposed by the examiner. Indeed, it appears to us that
when read as a whole, Lund would teach against such
modifications.
The last of the examiner’s rejections for review on appeal
is that of claims 1 through 39 under 35 U.S.C. § 103(a) as being
unpatentable over Burke. In this instance, the examiner contends
(answer, page 7) that although Burke does not disclose the ratios
set forth in the claims on appeal or the ranges of swirl chamber
diameter, exit area of the channels, or exit orifice diameter, it
would have been obvious that one of ordinary skill in the art,
depending on the product being sprayed and the pressures and
particle size wanted, would determine the above-noted parameters
to be employed “since Burke discloses that these parameters are
important to achieve a desired spray (see column 1, lines 42-57
and column 3, lines 27-40).” Absent hindsight, we see no basis
in the broad teachings of Burke for modifying the nozzle therein
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in a manner that would arrive at the nozzle (claim 1), dispenser
head (claim 11) and aerosol receptacle (claim 13) defined in
appellant’s claims on appeal. Moreover, we note that the
examiner has not even attempted to explain how or why, based on
the teachings of Burke, one of ordinary skill in the art would
have found it obvious at the time of appellant’s invention to
select the many different variables involved in a manner so as to
arrive at the particular nozzle defined in appellant’s claims on
appeal.
Since the examiner has failed to make out a prima facie case
of obviousness, it follows that we will not sustain the rejection
of claims 1 through 39 under 35 U.S.C. § 103(a) based on Burke.
In accordance with our discussion supra of the various
rejections on appeal, we note that the only rejection sustained
is that of claim 39 under 35 U.S.C. § 112, second paragraph.
Thus, the decision of the examiner is affirmed-in-part.
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Application 09/733,041
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No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
AFFIRMED-IN-PART
CHARLES E. FRANKFORT )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
JOHN P. McQUADE )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
JEFFREY V. NASE )
Administrative Patent Judge )
CEF:pgc
Appeal No. 2004-1419
Application 09/733,041
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Oliff & Berridge PLC
P.O. Box 19928
Alexandria, VA 22320
Appeal No. 2004-1419
Application 09/733,041
12
APPENDIX
1. A swirling effect nozzle having substance feed channels
opening out into a swirling chamber communicating with an outlet
orifice, wherein the ratio Ap/Ao is less than or equal to 0.5 and
the ratio Ap/(Ds.do) is less than or equal to 0.2;
where:
Ap is the smallest total section offered by the channels to
the passage of the substance;
Ao is the section of the outlet orifice;
do is the diameter of the outlet orifice; and
Ds is the diameter of the swirling chamber.