Ex Parte Gasper et al

Patent Trial and Appeal Board

Apr 20, 2016

12837739 (P.T.A.B. Apr. 20, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/837,739 07/16/2010 Thomas P. Gasper
28165 7590 04/22/2016
S.C. JOHNSON & SON, INC.
1525 HOWE STREET
RACINE, WI 53403-2236
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.
J-5439 4842
EXAMINER
KIM, CHRISTOPHER S
ART UNIT PAPER NUMBER
3752
NOTIFICATION DATE DELIVERY MODE
04/22/2016 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address( es):
F074168@scj.com
selechne@scj.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte THOMAS P. GASPER, CHRIS A. KUBICEK,
ANDREW N. NIEMIEC, ROBERT C. COON, BJORN GUNDERSON,
ERIK J. MOSES, and MIKE O'CONNOR
Appeal2014-002368
Application 12/837,739
Technology Center 3700
Before MICHELLE R. OSINSKI, JILL D. HILL, and ERIC C. JESCHKE,
Administrative Patent Judges.
JESCHKE, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Thomas P. Gasper et al. (Appellants) seek review, under 35 U.S.C.
§ 134(a), of the Examiner's decision to reject claims 1-3, 17, and 18. We
have jurisdiction under 35 U.S.C. § 6(b ).
We REVERSE.
BACKGROUND
The disclosed subject matter "relates generally to volatile material
dispensers and, more particularly, to volatile material dispensers that are
adapted to be functionally coupled with only specific volatile material
Appeal2014-002368
Application 12/837,739
refills." Spec. if 4. Claims 1 and 17 are independent. Claim 1 is reproduced
below:
1. A method of retaining only compatible refills
by a volatile material dispenser, the method
comprising the steps of:
providing a dispenser having a housing and at
least one rotatable latch disposed within the
housing;
providing a compatible refill that includes a
container for holding a volatile material and a wick
extending from the container; and
inserting the refill into the housing so that the
refill rotates the rotatable latch into engagement
with a structure disposed on a neck of the refill to
retain the refill within the housing;
wherein incompatible refills are incapable of
actuating the rotatable latch, and thus, the rotatable
latch does not retain the incompatible refills within
the housing.
REJECTIONS ON APPEAL
1. Claims 1and17 are rejected under 35 U.S.C. § 102(b) as
anticipated by Majerowski (US 7,540,432 B2, issued June 2, 2009).
2. Claims 1-3, 17, and 18 are rejected under 35 U.S.C. § 102(b) as
anticipated by Basagafias Millan (US 6,278,840 B 1, issued Aug. 21, 2001)
("Millan").
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Application 12/837,739
DISCUSSION
Rejection 1 - The rejection of claims 1 and 17 under
35 U.S.C. § 102(b) as anticipated by Majerowski
A. Independent Claim 1
Claim 1 recites the step of "inserting the refill into the housing so that
the refill rotates the rotatable latch into engagement with a structure disposed
on a neck of the refill to retain the refill within the housing." Appeal Br. 12
(Claims App.). The Examiner identifies: (1) elements 66a, 66b of
Majerowski as the "rotatable latch[ es]"; (2) elements 90, 92 as the "structure
disposed on a neck"; and (3) the "portion of sidewalls 84a, 84b above and
including recess 90 and ledge 92" as the "neck." Final Act. 2-3 (dated Mar.
5, 2013); see also Majerowski, Figs. 6A, 6B, 10, 11.
Appellants argue that "clips 66a, 66b are not rotatable" but, "[r]ather,
the body portions 26a, 26b [of housing 21] are flexible or deformable to
allow outward movement of the clips 66a, 66b to accommodate the
container 22." Appeal Br. 8 (citing Majerowski, col. 4, 11. 45-57; Figs. 10,
11 ). According to Appellants, "clips 66a, 66b are always in contact with the
container 22 during insertion and removal thereof and, thus, are also not
rotatable into engagement with the cont[ai]ner 22." Id.
The Examiner states that "[t]he term rotatable requires the capability
to rotate" and that "[t]he term rotate is defined as: to cause to tum around an
axis or center point." Ans. 4. The Examiner states that "[i]n Majerowski,
container 22 is inserted into device 20 (col[.] 4, [11.] 47-50) as shown in
figures 10 and 11" and "[ w ]hen going from figure 10 to figure 11, latches
66a, 66b (and possibly surfaces 56a, 56b) must bend before latching into
recess 90 and ledge 92." Id. at 4--5. According to the Examiner, because
"[a ]ll bending motions have a pivot point, [which] defines the center point of
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Application 12/837,739
rotation" and because "bending motion, no matter how limited in arc path, is
a rotation about the center point," "latches 66a, 66b rotate." Id. at 5.
Figures 10 and 11 from Majerowski are reproduced below:
FIG, 10
Figure 10 "is a partial cross-sectional, side elevational view of the
container of FIG. 8 as it is inserted into the dispensing device of FIG. 1"
whereas Figure 11 "is a partial cross-sectional, side elevational view of the
container of FIG. 8 inserted in the disposing device of FIG. 1." Majerowski,
col. 3, 11. 33-38.
The record does not support the Examiner's finding that the identified
structures satisfy the limitation at issue. 1 Specifically, we agree with
Appellants' position that the limitation at issue requires a causal relationship
such that "inserting the refill into the housing" causes the "rotatable latch" to
1 Although clips 66a and 66b are not identified in Figures 10 or 11,
Majerowski describes these figures stating, "first and second inwardly facing
clips 66a, 66b extend inwardly from the inner surfaces 56a, 56b of the first
and second body portions 26a, 26b, respectively." Majerowski, col. 4, 11.
24--28.
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Application 12/837,739
rotate "into engagement with a structure disposed on a neck of the refill."
See Reply Br. 5 ("Further, claim 1 specifically recites that the refill 'rotates
the latch into engagement with a structure disposed on a neck of the refill.'
The refill causes the rotation of the latch into engagement with the neck of
the refill."). The phrase "so that" in the limitation at issue supports a
construction requiring this causal relationship.
Under that construction, we agree with Appellants that "in
Majerowski, as soon as the refill is inserted into the housing, the
clips/latches 66a, 66b are in contact with the neck of the refill" and,
therefore, inserting "[t]he refill of Majerowski does not cause the
clips/latches 66a, 66b to rotate into engagement with the refill." Reply Br.
5---6 (emphasis added). Instead, inserting refill container 22 would, upon
contact (i.e., engagement) with clips 66a, 66b, cause clips 66a, 66b to "flex
outwardly" (Majerowski, col. 5, 11. 2-7; see also Fig. 10) with retention of
the refill occurring with the later interaction between clips 66a, 66b and
elements 90, 92, respectively (id., col. 4, 11. 45-57; see also Fig. 11). Thus,
we do not sustain the rejection of claim 1.
B. Independent Claim 17
Claim 1 7 recites "wherein a top surface of the neck portion of the
compatible refill contacts the movable latch to actuate the movable latch to
retain the compatible refill." Appeal Br. 14 (Claims App.). The Examiner
identifies the "surface above recess 90 and ledge 92" as the "top surface."
Final Act. 4.
Appellants argue that Majerowski does not satisfy the limitation at
issue because "a top surface of a neck of the container 22 does not touch any
portion of the clips 66a, 66b, nor does the top surface actuate the latches."
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Application 12/837,739
Appeal Br. 7 (citing Majerowski, Figs. 10 and 11 ). According to Appellants,
"[t]he surface above the recess 90 and the ledge 92 of Majerowski is not a
top surface of a neck portion that actuates a latch." Id. Appellants contend
that "one of ordinary skill in the art would consider the cylindrical structure
with threads below the opening 82 [in Majerowski as] the neck portion of
the container" and thus "the top surface of the neck portion is the surface
surrounding the opening 82." Reply Br. 4--5.
The Examiner responds that the recited "neck" is "readable on the
upper portion of container 22 that is above (and inclusive of) recess 90 and
ledge 92" and that "[t]he surface above recess 90 and ledge 92 constitutes
the top surface because it is on top of recess 90 and ledge 92." Ans. 4.
The record does not support the finding that Majerowski discloses a
"top surface of the neck portion" that satisfies the limitation at issue. In light
of the discussion of that claim language in the Specification, we determine
that the Examiner's view of "a top surface of the neck portion" is not
supported by the evidence; instead, we agree with Appellants' view of the
structures in Majerowski that would be considered the "neck portion" and
the "top surface" thereof. See Reply Br. 4--5; Spec. i-f 32 (discussing "a top
surface 110 of the neck portion 93" shown in Figure 5). With regard to
Figures 10 and 11 of Majerowski, we determine that the upward-facing
surface essentially at the location of the arrow for reference numeral 82
would be considered the "top surface of the neck portion." And, we agree
with Appellants that that surface does not "contact[]" the identified
"movable latch[ es] "--clips 66a, 66b--in the manner recited in the limitation
at issue. Thus, we do not sustain the rejection of claim 17.
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Rejection 2 - The rejection of claims 1-3, 17 and 18 under
35 U.S.C. § 102(b) as anticipated by Millan
A. Independent Claim 1 (and Dependent Claims 2 and 3)
Regarding the same limitation from claim 1 at issue above (see supra
Rejection 1, §A), the Examiner identifies: (1) elements 9, 10 of Millan as
the "rotatable latch[ es]"; (2) elements 7, 8, 11 as the "structure disposed on a
neck"; and (3) element "7 and above" as the "neck." Final Act. 3; see also
Millan, Figs. 2, 6. 2
Appellants argue that Millan "does not disclose or suggest rotatable
latches" because "arms 10 are deformed outwardly upon insertion of
portions of the vessel 2 that are larger [i]n diameter than a distance between
the arms 10." Appeal Br. 10 (citing Millan, col. 3, 11. 6-68; Fig. 1).
According to Appellants, "arms 10 are n[ ot] rotatable into en[g] agement
with the vessel 2 because the arms 10 are always in engagement with the
vessel 2 once the vessel comes in contact with the arms." Id. (citing Millan,
Figs. 1, 2, and 6).
The Examiner states that "Millan' s arms 10 elastically deform so that
teeth 9 can ride over conical front 15 and/or threads 11 before coming to rest
in groove 8, especially where groove 8 has closed ends" and that "[t]eeth 9
must ride over first thread 11 ... or conical front 15." Ans. 5 (citing Millan,
col. 4, 1. 21; Fig. 1 ). The Examiner states that "[t]he bending motion of arm
10 defines the center pivot point about which tooth 9 moves in an arc path"
and that "[t]ooth 9 and arm 10 rotate about that center pivot point." Id. at 5-
6.
2 Although the Examiner does not identify the figures or embodiments
from Millan relied upon, in analyzing this Rejection, we address both the
embodiment shown in Figures 1-5 and the embodiment in Figures 6 and 7.
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Application 12/837,739
Figures 2 and 6 from Millan are reproduced below:
Figure 2 shows a "side elevational view of the assembly" of Figure 1,
in which "the [unnumbered] helicoidal groove is placed on the actual thread
of the container." Millan, col. 2, 11. 44--57. Figure 6 "shows a similar
representation to that of FIG. 2 though corresponding to a practical
embodiment in which the helicoidal groove is placed independently from the
thread of the container." Id., col. 2, 1. 66- col. 3, 1. 2.
As discussed above (see supra Rejection 1, § A), the limitation at
issue requires a causal relationship such that "inserting the refill into the
housing" causes the "rotatable latch" to rotate "into engagement with a
structure disposed on a neck of the refill." Under that construction, we agree
with Appellants that "in Millan, as soon as the refill is inserted into the
housing, the arms 10 are in contact with the neck portion of the refill" and,
therefore, inserting "[t]he refill of Millan does not cause the arms 10 to
rotate into engagement with the refill." Reply Br. 8 (emphasis added).
Instead, inserting refill vessel 2 would, upon contact (i.e., engagement) with
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Appeal2014-002368
Application 12/837,739
teeth 9, cause arms 10 (including teeth 9) to elastically deform outward, with
retention of the refill occurring with the later interaction between teeth 9 and
either (1) groove 8 or threads 11 (see Millan, col. 3, 1. 46 - col. 4, 1. 4; Fig.
2) or (2) groove 8 (see id., col. 4, 11. 21-35; Fig. 6). Thus, we do not sustain
the rejection of claim 1, nor the rejection of claims 2 and 3, which depend
from claim 1.
B. Independent Claim 17 (and Dependent Claim 18)
Regarding the same limitation from claim 17 at issue above (see supra
Rejection 1, § B), the Examiner identifies the "surface above threads 11" as
the "top surface." Final Act. 4.
Appellants argue that Millan does not satisfy the limitation at issue
because "[a] top surface of a neck portion of the vessel 2 of Millan does not
touch the opposing arms 10, nor does the top surface actuate the arms 10."
Appeal Br. 9 (citing Millan, Figs. 1, 2, 6, and 9). According to Appellants,
"[t]he surface above the threads 11 in Millan is not a top surface of a neck
portion that actuates a rotatable latch." Id. at 10.
The Examiner states that "Appellant[ s] appear[] to be arguing that
Millan's top surface is the horizontal surface around wick 6, 6"' and that
"[t]he claims do not require such a limited reading." Ans. 6. The Examiner
also states that "Millan discloses at least conical front 15 that engages teeth 9
to bend arms 10" and that "[t]he starting surface of thread 11 and conical
front 15 constitute a top surface because they are at the top of the section
having groove 8." Id. (citing Millan, col. 4, 11. 30-35).
In reply, Appellants confirm their position that "the horizontal surface
around wick 6, 6' of Millan is the top surface." Reply Br. 7.
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The record does not support the finding that Millan discloses a "top
surface of the neck portion" that satisfies the limitation at issue. In light of
the discussion of that claim language in the Specification (see Spec. i-f 32),
we determine that the structures identified by the Examiner in each of the
embodiments shown, for example, in Figures 2 and 6, do not satisfy the
limitation at issue in that the Examiner's interpretation of "a top surface of
the neck portion"-relying on the fact that the identified structures are near
an upper part of a middle section of vessel 2 that includes groove 8-is
unreasonable. Given the reference numerals present in each figure, we
understand the Examiner's identification of the "starting surface of thread
11" to refer to the Figure 2 embodiment, and the identification of "conical
front 15" to refer to the Figure 6 embodiment. Ans. 6.
As to Figure 2, we understand "starting surface of thread 11" to refer
to the upper part of the cylindrical surface that includes threads 11. This
surface, however, is not a "top surface" because it does not face towards the
"top" of the structure shown in Figure 2. Cf Spec. i-f 32 (discussing "top
surface 11 O" shown in Figure 5). Instead, the identified surface faces
radially outward from the longitudinal axis of vessel 2. See Millan, Fig. 2.
As to Figure 6, we agree with Appellants that conical front 15 is not a "top
surface of the neck portion" because, as stated by Appellants, "[t]he portion
of the container vessel 2 of Millan having the helical groove 8 (Figure 6) is
not a neck portion." Reply Br. 7; see also Spec. i-f 32 (discussing "neck
portion 93" shown in Figure 5). Thus, we do not sustain the rejection of
claim 17, nor the rejection of claim 18, which depends from claim 17.
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Application 12/837,739
DECISION
We REVERSE the decision to reject claims 1-3, 17, and 18.
REVERSED
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