Ex Parte Dobler

Patent Trial and Appeal Board

May 11, 2016

12807416 (P.T.A.B. May. 11, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO.
12/807,416
Paul M. Denk
Ste. 305
7590
FILING DATE
09/03/2010
05/11/2016
763 South New Ballas Road
St. Louis, MO 63141
FIRST NAMED INVENTOR
Sven Dobler
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
7622 9661
EXAMINER
CHANNA V AJJALA, LAKSHMI SARADA
ART UNIT PAPER NUMBER
1611
MAILDATE DELIVERY MODE
05/11/2016 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
Appeal2013-002967
Application 12/807 ,416
Technology Center 1600
Before DONALD E. ADAMS, JOHN G. NEW, and CHRISTOPHER G.
PAULRAJ, Administrative Patent Judges.
ADAMS, Administrative Patent Judge.
DECISION ON APPEAL 1
This appeal under 35 U.S.C. § 134(a) involves claim 13 (see Br. 6).
Examiner entered rejections under 35 U.S.C. § 103(a). We have jurisdiction
under 35 U.S.C. § 6(b ).
We AFFIRM.
STATEMENT OF THE CASE
Claim 13, the only claim on Appeal, is reproduced in the Claims
Appendix of Appellant's Brief and is drawn to an applicator device for
1 Appellant identifies the Real Party in Interest as Orlandi, Inc., to which
"the inventor, Sven Dobler ... assigned the invention and patent
application" (Br. 4).
Appeal2013-002967
Application 12/807,416
applying a microencapsulated fragrance material to a substrate as a
discernible mark, word, or logo.
Claim 13 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over the combination of Davis2 and Gunderman. 3
Claim 13 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over the combination of Davis and Dreger. 4
We vacate, and will not further discuss, the rejection over the
combination of Davis and Gunderman as redundant to the rejection over the
combination of Davis and Dreger.
ISSUE
Does the preponderance of evidence relied upon by Examiner support
a conclusion of obviousness?
FACTUAL FINDINGS (FF)
FF 1. Davis "relates to compositions[, such as perfumes,] that have a self-
contained supply of fluid material that will be expressed from the
composition upon the application of pressure" (Davis 1: 27-30 and 32; Ans.
3).
FF 2. Davis discloses devices, such as "ink pads, ink rolls, marking
stamps, printing platens, self-ink type, etc," that contain useful liquids, such
as perfumes (Davis 1: 34--39; Ans. 3; see also Ans. 8).
FF 3. Davis discloses "conventional rubber stamps having molded raised
letters and numerals" (Davis 2: 46-47; Ans. 3 and 8; see also Ans. 3--4
2 William J. Davis, US 3,427,277, issued Feb. 11, 1969.
3 Gunderman et al., US 5,690,130, issued Nov. 25, 1970.
4 Dreger, US 4,769,264, issued Sept. 6, 1988.
2
Appeal2013-002967
Application 12/807,416
(Examiner finds that a "rubber stamp with raised letters or numerals" reads
on Appellant's claimed "adhesive pad")).
FF 4. Examiner finds that "Davis does not explicitly teach perfumes or
fragrances but suggests that the device can be used to print[] perfumes ...
[or] encapsulated fragrance material" (Ans. 4, citing Davis 1: 30-35 and 4:
55-57).
FF 5. Dreger "relates to an article comprising at least two sheets or
opposed faces of a folded single sheet temporarily secured by means of a[ n]
adhesive layer having microcapsules dispersed therein, at least one exterior
surface of a sheet having a pressure-sensitive adhesive thereon" (Dreger 3:
10-15).
FF 6. Dreger discloses the application of a "microcapsule slurry containing
fragrance applied to the surface of an adhesive material, which is then
matted with an uncoated face of a top sheet" (Ans 6, citing Dreger 8:
Example 1 ).
FF 7. "The sheet materials of [Dreger's] invention comprise any sheet or
film forming material, particularly paper and most preferably coated paper"
discloses that "[ t ]he sheet materials of
ANALYSIS
The applicator device, or product, of Appellant's claim 13 is "an
adhesive applicator pad having a raised image area ... that provides a
remainder area recessed beneath said raised image" (see Appellant's claim
13). The manner in which the "raised image area [is] formed" e.g., "by
etching," is a process limitation defining the manner in which the applicator
device product was made (see id.). The determination of patentability in a
product-by-process claim is based on the product itself, even though the
3
Appeal2013-002967
Application 12/807,416
claim may be limited and defined by the process. That is, the product in
such a claim is unpatentable if it is the same as or obvious from the product
of the prior art, even if the "prior product was made by a different process."
See In re Thorpe, 777 F.2d 695, 697 (Fed. Cir. 1985).
The remainder of Appellant's claim 13 defines the intended use of the
claimed applicator pad or product; specifically, the applicator device, or
product, is used to apply a fragrance material to a dryable paper substrate
through the use of flexographic equipment (see Appellant's claim 13; see
also Spec. 7). See In re Hack, 245 F.2d 246, 248 (CCPA 1957) ("the grant
of a patent on a composition or a machine cannot be predicated on a new use
of that machine or composition"); In re Benner, 174 F.2d 938, 942 (CCPA
1949) ("no provision has been made in the patent statutes for granting a
patent upon an old product based solely upon discovery of a new use for
such product").
Appellant's Specification defines the claimed applicator device and its
use (see Spec. 7). As to the applicator device itself, Appellant discloses that
"the present invention etches an image area into a print pad[, i.e. an
applicator pad,] and leaves a remainder area" (Spec. 7; cf Appellant's claim
13 ("an adhesive applicator pad, said applicator pad having a raised image
area formed by etching that provides a remainder area recessed beneath said
raised image")). As Examiner explains, Davis discloses that rubber stamps
having molded raised letters and numerals are conventional in the art (FF 3).
Appellant's Specification further explains how the claimed applicator
device is used (see Spec. 7). "The image area [on the applicator or print
pad] contains the graphic design in the form of a marketing message using a
mark, logo, or word" (Spec. 7; see id. ("The image area of the print pad
4
Appeal2013-002967
Application 12/807,416
contains a pattern of a mark, word, or logo")). "[A] micro-encapsulated
fragrance slurry [is then applied] to the print pad[, which is] mounted in
flexographic equipment" (id.). "The print pad then deposits the fragrance
slurry upon a paper substrate thus transferring the marketing message of the
image area" (id.). As Examiner explains, Davis discloses the use of a
conventional rubber stamp having molded raised letters and numbers for the
application perfume to articles (see FF 3). Examiner, however, recognizes
that Davis fails to suggest a fragrance material comprising a
microencapsulated fragrance (see FF 4). Nevertheless, to the extent that the
fragrance material recited in Appellant's claim 13 has patentable weight in
Appellant's product claim, we recognize that Examiner finds that Dreger
discloses the application of an encapsulated fragrance, within the scope of
Appellant's claimed invention, to a paper substrate (FF 5-7; cf Appellant
"does not deny" that encapsulated materials, as described by Dreger "have
been used for commercial applications").
For the foregoing reasons, we agree with Examiner's conclusion of
obviousness (see Ans. 6-7). For the foregoing reasons, we recognize, but
are not persuaded by, Appellant's contentions relating to the use of
Appellant's claimed product (Br. 9-10).
5
Appeal2013-002967
Application 12/807,416
CONCLUSION OF LAW
The preponderance of evidence relied upon by Examiner supports a
conclusion of obviousness. The rejection of claim 13 under 35 U.S.C.
§ 103(a) as unpatentable over the combination of Davis and Dreger is
affirmed.
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).
AFFIRMED
6