Ex Parte DoblerDownload PDFPatent Trial and Appeal BoardMay 11, 201612807416 (P.T.A.B. May. 11, 2016) Copy Citation 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 Copy with citationCopy as parenthetical citation