Ex Parte Boden et al

Board of Patent Appeals and Interferences

Dec 23, 2008

10738323 (B.P.A.I. Dec. 23, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte RICHARD BODEN and CRAIG STUMPF
____________

Appeal 2008-2977
Application 10/738,323
Technology Center 3700
____________

Decided: December 23, 2008
____________

Before WILLIAM F. PATE, III, JOHN C. KERINS, and STEFAN
STAICOVICI Administrative Patent Judges.

KERINS, Administrative Patent Judge.
DECISION ON APPEAL

STATEMENT OF THE CASE
Richard Boden and Craig Stumpf (Appellants) seek our review under
35 U.S.C. § 134 of the final rejection of claims 1 and 3-7, the only claims
now pending in the application. We have jurisdiction under 35 U.S.C. § 6(b)
(2002).

Appeal 2008-2977
Application 10/738,323

2
SUMMARY OF DECISION
We REVERSE.

THE INVENTION
Appellants’ claimed invention is to a dispensing device comprising a
reservoir for storing an active gel, the reservoir having a wick with two ends,
one to contact and convey the active gel by capillary action from one end of
the wick to the other, and an emanator in physical contact with the end of the
wick opposite the reservoir. The active gel stored in the reservoir comprises
an oil or fragrance making up about 90 to 99.8% by weight of the active gel.
(Appeal Br., Claims Appendix, claim 1).
Claim 1, reproduced below, is representative of the subject matter on
appeal.
1. A dispensing device comprising

a reservoir for storing an active gel comprising an
oil or fragrance present in the active gel at about
90 to 99.8 percent by weight ;

a wick with two ends wherein one end contacts the
active gel and conveys by capillary action said
active gel to the opposite end of the wick; and

an emanator which is in physical contact with the
end of the wick opposite the reservoir, wherein the
emanator diffuses the active gel into the ambient
atmosphere by the process of evaporation.

Appeal 2008-2977
Application 10/738,323

3

THE REJECTION
The Examiner relies upon the following as evidence of
unpatentability:
Orson US 5,081,104 Jan. 14, 1992
Wefler US 5,903,710 May 11, 1999
The following rejections are before us for review:
The Examiner has rejected claims 1 and 3-7 under 35 U.S.C. § 103(a)
as being unpatentable over Wefler in view of Orson, and under 35 U.S.C.
§ 102(b) as being anticipated by Orson.
ISSUES
The Examiner contends that the claim language directed to the
claimed reservoir being “for storing an active gel”, and directed to the gel
composition, are only an intended use of the dispensing device and are not to
be given patentable weight, or, in the alternative, that providing an active gel
of the composition set forth in the claims amounts to an obvious discovery
of the optimum or workable range of the oil or fragrance concentration in the
gel.
Appellants urge that the claim language calling for an active gel
having an oil or fragrance level of between about 90-99.8 percent by weight
is not disclosed or suggested in the prior art cited by the Examiner, and that
the claimed active gel is not an obvious variant of the prior art fragrance
compositions obtained through an optimization exercise.
The issues joined in this appeal are: whether the claim language
referencing the active gel and its composition is to be given patentable
weight, and, if so, whether those claim elements are disclosed or rendered
obvious by the cited prior art?
Appeal 2008-2977
Application 10/738,323

4

FINDINGS OF FACT
The following enumerated findings of fact (FF) are supported by at
least a preponderance of the evidence. Ethicon, Inc. v. Quigg, 849 F.2d
1422, 1427 (Fed. Cir. 1988) (explaining the general evidentiary standard for
proceedings before the Office).
FF 1. The Orson patent discloses that the reservoir used therein to
store a fragrance-containing gel may be made of polyvinyl chloride (PVC),
resins, polyolefins (LDPE, HDPE), polyester (e.g., PET), and phenolic
resins. (Orson, col. 7, ll. 2-7).
FF 2. Each of the materials noted above may be described as either a
“plastic” or a “flexible polymer”, or both.
FF 3. The Orson patent does not disclose a dispensing device having
an active gel stored therein, in which the active gel comprises an oil or
fragrance constituting 90 to 99.8 percent by weight of the active gel.
FF 4. The Orson patent discloses dispenser configurations in which
an emanator is attached to a wick, and in which a heating element to aid in
dispersion of the fragrance composition is provided as well. (Orson, col. 6,
ll. 41-52).
FF 5. The Wefler patent does not disclose any specific fragrance-
containing compositions, in terms of the concentrations of any of the
ingredients or contents.
FF 6. The Orson patent discloses that fragrance-containing
compositions having as high as 30% by weight fragrance can effectively be
used in fragrance dispensers. (Orson, col. 3, l. 66-col. 4, ll. 10).
Appeal 2008-2977
Application 10/738,323

5
FF 7. The Orson fragrance compositions include a substantial amount
of MMB or MMBE (known as a solvent) to solubilize the fragrance,
rendering the composition homogenous and clear, and to control its
evaporation rate. (Orson, col. 4, ll. 9-18).
FF 8. In all specific examples disclosed in Orson, the MMB
concentration is considerably higher than the fragrance concentration.
(Orson, Table 1, passim).
FF 9. One specific example given in the Orson patent is a
composition containing 20% fragrance, 65% MMB and 15% water. (Orson,
col. 4, ll. 55-57).
FF 10. Orson provides further general guidance to the effect that, for
more concentrated (higher fragrance concentration) solutions, higher MMB
levels are to be used (Orson, col. 4, ll. 54-55).

PRINCIPLES OF LAW
Anticipation (unpatentability under 35 U.S.C. § 102) is established
only when a single prior art reference discloses, expressly or under the
principles of inherency, each and every element of a claimed invention.
RCA Corp. v. Applied Digital Data Sys., Inc., 730 F.2d 1440, 1444 (Fed.
Cir. 1984).
“Section 103 forbids issuance of a patent when ‘the differences
between the subject matter sought to be patented and the prior art are such
that the subject matter as a whole would have been obvious at the time the
invention was made to a person having ordinary skill in the art to which said
subject matter pertains.’” KSR Int'l Co. v. Teleflex Inc., 127 S. Ct. 1727,
1734 (2007). The question of obviousness is resolved on the basis of
Appeal 2008-2977
Application 10/738,323

6
underlying factual determinations including (1) the scope and content of the
prior art, (2) any differences between the claimed subject matter and the
prior art, (3) the level of skill in the art, and (4) where in evidence, so-called
secondary considerations. Graham v. John Deere Co., 383 U.S. 1, 17-18
(1966). See also KSR, 127 S. Ct. at 1734 (“While the sequence of these
questions might be reordered in any particular case, the [Graham] factors
continue to define the inquiry that controls.”)
Reliance on per se rules in determining obviousness is looked upon
with disfavor by the Federal Circuit. See, In re Ochiai, 71 F.3d 1565, 1572
(Fed. Cir. 1995).
Preamble language that merely states the purpose or intended use of
an invention is also generally not treated as limiting the scope of the claim.
See Boehringer Ingelheim Vetmedica, Inc. v. Schering-Plough Corp., 320
F.3d 1339 (Fed. Cir. 2003). However, the preamble may be regarded as
being more than a mere statement of intended use when it gives “life and
meaning” to recitations in the body of the claim. In re Szajna, 422 F.2d 443
(CCPA 1970)(preamble reciting, “[A]n insert for converting a mold having a
smooth molding surface” held to positively limit scope of claim where claim
later referred to presence of a mold and molded surface).
ANALYSIS
Appellants argue all claims as a single group in addressing each
rejection, and do not argue for the separate patentability of any claim or
claims. We select claim 1 as representative of the group.
Anticipation Rejection under 35 U.S.C. § 102(b)
The Examiner cites to the Orson patent, finding that the patent
discloses a dispensing device including a reservoir for storing a fragrance-
Appeal 2008-2977
Application 10/738,323

7
containing active gel, a wick with two ends to convey an active gel, one end
of the wick being in contact with the active gel, and the other end being in
physical contact with an emanator (diffusion aid). (Answer 5). The
Examiner states that the claim language, “for storing an active gel
comprising an oil or fragrance present in the active gel at about 90 to 99.8
percent by weight” (Appeal Br., Claims Appendix), is a “statement of
intended use”. (Answer 5). The Examiner then finds that the Orson
reservoir is capable of storing an active gel of the recited composition, and is
thus capable of performing Appellants’ intended use. (Id.). The Examiner
asserts that claim 1 is therefore fully anticipated. (Id.).
Appellants contend that the Orson patent does not teach or suggest an
active gel comprising an oil or fragrance present in the active gel in a range
of about 90 to 99.8 percent by weight of the gel, and that Orson does not
teach or suggest the essential features of a reservoir for containing an active
gel of such composition, or how to modify the Orson reservoir to contain
such a gel. (Reply Br. 6).
Appellants’ latter contention is not persuasive. Appellants’ only
stated criteria for the reservoir is that it be of a material that is impermeable
and that is compatible with the active gel. (Specification, p. 7, ll. 7-8).
Appellants paint with a broad brush in noting that “plastic, glass, flexible
polymeric materials and metal” are all suitable materials. (Specification, p.
7, ll. 3-4). Orson discloses that its fragrance composition reservoir may
suitably be made from polyvinyl chloride (PVC), resins, polyolefins (LDPE,
HDPE), polyester (e.g., PET), and phenolic resins. (FF 1). Each of these
materials falls within the description of either or both of Appellants’
disclosed “plastic” and “flexible polymer” materials suitable for use. (FF 2).
Appeal 2008-2977
Application 10/738,323

8
The claimed reservoir for storing an active gel is fully met by the Orson
reference.
Appellants’ former contention joins the issue as to whether claim 1
should be construed as actually requiring the presence of an active gel in the
claimed dispenser device, or whether, as asserted by the Examiner, the
language directed to the active gel is nothing more than a statement of
intended use. In that event, an anticipation rejection is proper upon
establishing that the prior art device is capable of achieving the intended use,
even if the prior art does not disclose using the specific active gel.
Standing alone, the claim language, “for storing an active gel
comprising an oil or fragrance present in the active gel at about 90 to 99.8
percent by weight” might well be regarded as language directed to an
intended use, the position urged by the Examiner. However, claim 1 further
calls for the presence of a wick having two ends, “wherein one end contacts
the active gel and conveys [the active gel] by capillary action…to the
opposite end of the wick”, and an emanator that “diffuses the active gel into
the ambient atmosphere”. (Appeal Br., Claims Appendix)(emphasis added).
This language1 evidences that actual contact between the gel and the wick,
conveyance of the gel through the wick, and diffusion of the gel into the
atmosphere, are required elements of the claimed invention. Such elements
can be present only if the active gel is present. Further, since claim 1
positively recites the presence of an active gel in the dispensing device, the
composition of the active gel (having oil or fragrance making up 90 to 99.8

1 As compared to language that reads, for example, “wherein one end
[contacts the] is adapted to contact an active gel, and [conveys the] is
adapted to convey by capillary action [the] an active gel to the opposite end
of the wick…”, which could also be regarded as language of intended use.
Appeal 2008-2977
Application 10/738,323

9
weight percent thereof) is a tangible element of the claimed invention that
must be taken into account in assessing the viability of the anticipation
rejection.
Appellants are correct that the Orson patent does not disclose a
dispensing device having an active gel stored therein, in which the active gel
comprises an oil or fragrance constituting 90 to 99.8 percent by weight of
the active gel, as set forth in claim 1. (FF 3). The Examiner does not
contest this. Accordingly, the rejection of claim 1 as anticipated by Orson
will not be sustained. Claims 3-7 depend from claim 1, and the rejection of
those claims likewise will not be sustained.

Obviousness rejection under 35 U.S.C. § 103(a)
The Examiner concludes that it would have been obvious to modify
the dispensing device of Wefler, which employs a wick with no emanator in
contact with the wick at its terminal end, to add an emanator as disclosed in
Orson, in order to facilitate diffusion of the oil or fragrance into the
surrounding atmosphere. (Answer 4). The Examiner further concludes, as
was the case in the anticipation rejection discussed above, that the claim
language directed to the active gel and its composition are statements of
intended use, and that the Wefler device is capable of being used to dispense
such an active gel.2 (Id.). The Examiner alternatively concludes, citing to In
re Aller, 220 F.2d 454 (CCPA 1955), that it would have been obvious to
provide an active gel having the claimed oil or fragrance content, “since it
has been held that where the general conditions of a claim are disclosed in

2 This interpretation of claim 1 was found to be erroneous in the analysis of
the anticipation rejection above, and will not be addressed separately here.
Appeal 2008-2977
Application 10/738,323

10
the prior art, discovering the optimum or workable ranges involves only
routine skill in the art.” (Answer 4).
Appellants urge that the modification to the Wefler device to add the
emanator would not have been obvious because Wefler employs a heating
element to aid in diffusing a fragrance composition instead of an emanator,
and therefore Wefler has addressed the dispersion aspect using a different
approach. (Appeal Br. 6-8, Reply Br. 4-5). Appellants also counter the
alleged obviousness of the composition of the active gel, by noting that the
claimed range of oil or fragrance concentration is much higher than that
disclosed in the cited prior art, and that the prior art provides no direction or
guidance that would lead one skilled in the art to arrive at the claimed
composition through an optimization exercise. (Appeal Br. 4-5).
Appellants’ arguments directed to the proposed modification to the
physical structure of the dispenser device are not persuasive. The Examiner
points out that the Orson patent teaches the use of an emanator attached to a
wick in configurations both in which a heating element is used, as well as in
which a heating element is not used. (Answer 6; Orson, col. 6, ll. 41-52).
Orson thus evidences that it was known to employ a dispensing device
having both an emanator and a heating device. (FF 4).
The provision of an emanator on the Wefler device, which, as
Appellants correctly note, employs a heating element to aid in dispersion,
amounts to nothing more than the combination of known elements with no
change in their respective functions to yield the predictable result (per
Orson) of having both the heating element and emanator contribute to the
diffusion of the fragrance composition. Such a combination would have
Appeal 2008-2977
Application 10/738,323

11
been obvious to a person of ordinary skill in the art. See, KSR 127 S.Ct. at
1739.
Turning to the claim element related to the composition of the active
gel, the Examiner acknowledges that neither the Wefler patent nor the Orson
patent discloses an active gel having the claimed oil or fragrance
concentration. The Examiner, without citing to any evidence and without
providing any reasoning (much less any sound reasoning), simply concludes
that the claimed active gel composition would have been arrived at, applying
only routine skill in the art, through an exercise in optimizing or determining
the working ranges for the fragrance to be dispensed by the Wefler/Orson
device.
The Examiner uses the Aller case as a crutch to support his
conclusion, yet fails to demonstrate how the facts and evidence presented in
this specific case compel the same outcome as in Aller. This treads
perilously close to reliance on a per se rule of obviousness, a practice that is
looked upon with disfavor by our reviewing court. Ochiai, 71 F.3d at 1572.
Indeed, the Examiner misapplies the principle set forth in Aller.
There, the Court counseled that if one skilled in the art can discover the
optimum or workable ranges by routine experimentation, where the general
conditions of a claim are disclosed in the prior art, the differences between
the claimed invention and the prior art may not be patentable differences.
Aller, 220 F.2d at 827 (citing In re Swain, 156 F.2d 239 (CCPA 1946)).
Rather than attempting to make a showing here that only routine
experimentation would be involved in an optimization exercise directed to
the fragrance composition, the Examiner instead turns the Aller principle on
its head, removing the “routine experimentation” factor from the
Appeal 2008-2977
Application 10/738,323

12
prerequisites that must be established, and inserting “use of routine skill” as
a part of the conclusion that is purportedly reached upon establishing that the
prior art teaches the “general conditions” of the claimed invention.
Appellants more rigorously address the differences between the
claimed composition and the prior art, and persuasively argue that there is a
very substantial difference in the concentration of oil or fragrance in the
active gel as claimed (90-99.8% by weight), and that in the fragrance
compositions in the cited art. The Wefler patent does not disclose any
specific oil or fragrance concentrations in the composition discussed therein.
(FF 5). The Orson patent, in discussing improvements over other prior art
dispensers and fragrance compositions (having one to ten percent by weight
of actual fragrance included), notes that, with its compositions, fragrance
levels as high as 30% can effectively be used. (FF 6).
Notably, as pointed out by Appellants, the Orson fragrance
compositions include a substantial amount of MMB or MMBE (known as a
solvent) to solubilize the fragrance, rendering the composition homogenous
and clear, and to control its evaporation rate. (FF 7). In all specific
examples disclosed, the MMB concentration is considerably higher than the
fragrance concentration. (FF 8). One example given is a composition
containing 20% fragrance, 65% MMB and 15% water. (FF 9). Considering
further the general guidance in Orson that, for more concentrated (higher
fragrance concentration) solutions, somewhat higher MMB levels are to be
used (FF 10), it is difficult to fathom how the person of ordinary skill in the
art, whether through optimization attempts or otherwise, would routinely
proceed to a composition having 90% to 99.8% oil or fragrance. Such a
Appeal 2008-2977
Application 10/738,323

13
composition would have little to no MMB included therein, apparently
directly contrary to the teachings of Orson.3
The Examiner’s conclusion that the composition of the active gel as
set forth in claim 1 would have been obvious can not be sustained based
upon the evidence and reasoning of record. The rejection of claims 3-7,
which depend from claim 1, also will not be sustained.
CONCLUSION
Appellants have established that reversible error exists in the rejection
of claims 1 and 3-7 under 35 U.S.C. § 103(a) as unpatentable over Wefler in
view of Orson, and in the rejection of those claims under 35 U.S.C. § 102(b)
in view of Orson.
ORDER
The decision of the Examiner to reject claims 1 and 3-7 is reversed.

REVERSED

3 This further evidences the inapplicability of the Aller case to the facts at
hand. The principle set forth in Aller is premised on the prior art disclosing
the “general conditions” of the claimed invention. The discussion above
makes clear that the Orson patent falls considerably short of disclosing the
“general conditions” of the claimed active gel composition.
Appeal 2008-2977
Application 10/738,323

14

LV

LICATA & TYRELL P.C.
66 E. MAIN STREET
MARLTON, NEW JERSEY 08053