Ex Parte Grodsky et al

Patent Trial and Appeal Board

Feb 28, 2017

12846559 (P.T.A.B. Feb. 28, 2017)

United States Patent and Trademark Office
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
12/846,559 07/29/2010 Mark Grodsky 92900-787403 2207
20350 7590 03/02/2017
KILPATRICK TOWNSEND & STOCKTON LLP
Mailstop: IP Docketing - 22
1100 Peachtree Street
Suite 2800
Atlanta, GA 30309
EXAMINER
NORTON, JOHN J
ART UNIT PAPER NUMBER
3742
NOTIFICATION DATE DELIVERY MODE
03/02/2017 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):
ipefiling@kilpatricktownsend.com
jlhice@kilpatrick.foundationip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MARK GRODSKY, RICHARD NEILL, and
ALICIA THOMPSON
Appeal 2015-005695
Application 12/846,559
Technology Center 3700
Before CHARLES N. GREENHUT, MICHAEL L. HOELTER, and
ANNETTE R. REIMERS, Administrative Patent Judges.
REIMERS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Mark Grodsky et al. (Appellants) appeal under 35 U.S.C. § 134(a)
from the Examiner’s decision to reject under 35 U.S.C. § 103(a): (1) claims
1, 3, 4, 6, 11, 17, 18, 21, and 23 as unpatentable over Smith
(US 2008/0253755 Al; pub. Oct. 16, 2008), Wefler (US 6,853,801 B2; iss.
Feb. 8, 2005), Majerowski (US 7,665,238 B2; iss. Feb. 23, 2010), Chao (US
5,928,858; iss. July 27, 1999), and Wingo (US 2008/0056691 Al; pub. Mar.
6, 2008); (2) claims 2 and 20 as unpatentable over Smith, Wefler,
Majerowski, Chao, Wingo, and DeWitt (US 2008/0226269 Al; pub.
Appeal 2015-005695
Application 12/846,559
Sept. 18, 2008); and (3) claim 22 as unpatentable over Smith, Wefler,
Majerowski, Chao, Wingo, and Kim (US 5,021,275; iss. June 4, 1991).
Claims 5, 7—10, 12—16, and 19 have been canceled. We have jurisdiction
under 35 U.S.C. § 6(b).
We REVERSE.
CLAIMED SUBJECT MATTER
The claimed subject matter relates “generally to the field of fragrance
dispensers, and in particular to customizable fragrance dispensers.” Spec.
11, Figs. 1, 8. Claims 1 and 17 are independent.
Claim 1 is illustrative of the claimed subject matter and recites:
1. A fragrance dispenser, comprising:
a dispenser body having a top end, a bottom end, an
interior, a front, a back, a left side and a right side, wherein the
front side includes a window to permit at least a portion of the
interior of the dispenser body to be viewed from without, and
wherein the top end includes at least one opening for emitting a
fragrance, wherein the dispenser body further comprises a top
portion and a bottom portion that are separable from each other
to provide access to the interior of the dispenser body, wherein
the top portion comprises at least four walls corresponding to the
front, the back, the left side and the right side, and a base that is
perpendicular to the four walls, wherein the bottom portion
includes at least three walls that correspond to the front, the left
side and the right side, and wherein the container is deposited in
the bottom portion;
a container disposed within the dispenser body and
accessible within the interior of the dispenser body when the top
portion and the bottom portion are separated from each other, the
container being adapted to hold a liquid fragrance that is to be
dispensed, wherein the container is viewable through the
window; and
a dispensing mechanism disposed within the dispenser
body that is configured to dispense the liquid fragrance from the
container, wherein the dispensing mechanism comprises a
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Application 12/846,559
ceramic heater that is disposed in the top portion, wherein the
dispensing mechanism further comprises an electrical plug that
is electrically connected to the ceramic heater, and wherein the
top portion includes an extension that extends vertically below
the base of the top portion, and wherein the electrical plug
laterally extends from the extension such that the electrical plug
is vertically below the base of top portion;
a bottom skin with a protective backing that is configured
to be removably adhered to an outside surface of the bottom
portion of the dispenser body by removing the protective backing
and placing the bottom skin adjacent the outside surface using a
human hand, wherein the skin is configured to extend across the
left side, the front and the right side and includes an opening that
is aligned with the window;
a top skin that is configured to be removably adhered to
the outside surface of the top portion of the dispenser body,
wherein the top skin is configured to extend across the left side,
the front and the right side, and wherein the top skin extends
across the outer surface and vertically above the electric plug
such that there is no buckling of the skin;
a container covering with a protective backing that is
configured to be placed onto the container and removably
adhered to the container by placing the container covering
adjacent the container using a human hand to change the visual
appearance of the container when viewed through the window.
ANALYSIS
Independent claim 1 calls for “wherein the dispenser body further
comprises a top portion and a bottom portion that are separable ̂from each
1 We construe the term “separable” in a manner consistent with Appellants’
Specification that permits subsequent replacement or reinstallation, i.e., the
components are not destroyed, broken or otherwise rendered inoperable when
separated. See Fig. 8 (illustrating “one method for disassembling” the
dispenser) and Fig. 17 (illustrating “the step of connecting the bottom portion
of the fragrance dispenser back together with the top portion”). Spec, 18,
27 (emphasis added); see also Spec. 1 40 (discussing tabs 56, 58 and mating
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Application 12/846,559
other to provide access to the interior of the dispenser body” and “a
container disposed within the dispenser body and accessible within the
interior of the dispenser body when the top portion and the bottom portion
are separated from each otherAppeal Br. 12, Claims App. (emphasis
added). The Examiner finds that Smith discloses several of the limitations
of claim 1 but not top and bottom portions that are separable from each
other. Final Act. 2; see also Ans. 6. For that teaching, the Examiner relies
upon Wingo, stating: “Wingo discloses top (housing 22) and bottom
(reservoir 32) portions separable from each other (see fig. 2), the container
deposited in the bottom portion (reservoir 32).” Final Act. at 2—3. Despite
failing to provide a rationale for combining Wingo with Smith in the Final
Action (see Final Act. 3), the Examiner finds and concludes in the Answer:
Wingo’s reservoir 32 is, by itself, enough to qualify as a
removable bottom portion (absent the other limitations), and one
of ordinary skill in the art would have been willing to employ a
separability mechanism to enable access to the container just as
Smith permits access to its container 60 via a door in light of how
Wingo uses a separable container.
Ans. 6.
Appellants argue that “[rjeservoir 32 of Wingo is not a bottom portion
of a dispenser body as presently claimed. Rather, reservoir 32 is a container
configured to hold a liquid, much like the container disposed within the top
portion and the bottom portion of claim 1.” Appeal Br. 6. Appellants
further contend that “reservoir 32 of Wingo is not separable from a top
portion of a dispenser body to provide access to a container disposed within
the interior when the top portion and the bottom portion are separated from
holes 60 that enable repeated assembly and disassembly).
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Application 12/846,559
each other” (Appeal Br. 7) and “[ijnstead, reservoir 32 [of Wingo] is
accessible while coupled to housing 22 and does not need to be separated to
become accessible” (id.). Appellants additionally contend that “removal of
reservoir 32 of Wingo eliminates the container itself, and does not provide
access to an interior of a dispenser body.” Reply Br. 2. Appellants conclude
that “reservoir 32 of Wingo does not qualify as a bottom portion as recited in
claim 1.” Appeal Br. 7. We agree.
Reservoir 32 of Wingo is simply a fragrance container that is
releasably attachable to housing 22. See Wingo, 147, Fig. 2. It is not nor is
it suggestive of a bottom portion of a dispenser body that is separable from a
top portion to provide access to a fragrance container disposed within the
interior of the dispenser body when the top portion and the bottom portion
are separated from each other, as claimed. See Appeal Br. 6—7; see also
Reply Br. 1—2. Additionally, the Examiner acknowledges that the top and
bottom portions of the Smith device are not separable from one another. See
Final Act. 2; see also Ans. 6. The Smith fragrance dispenser permits access
to its fragrance container 60 via hinged door 67, which is not disclosed as
being separable from the dispenser. See Smith || 10, 11, 37, Figs. 1, 2, 4, 5,
8. A releasable fragrance container, such as that taught by Wingo, without
more, does not overcome the deficiencies of the Smith device in meeting the
dispenser body top and bottom portion separability limitations of claim 1.
Furthermore, Appellants contend that the Examiner engages in
impermissible hindsight reconstruction in order to produce the invention
called for in Appellants’ claims. Reply Br. 2. In particular, Appellants
contend that
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Application 12/846,559
the only teaching of a bottom portion of a dispenser body being
separable from a top portion to provide access to a container
within an interior of a body is within Appellants’ own disclosure.
Thus, the only way a person of skill in the art would seek to make
a bottom portion of Smith separable from a top portion would be
to use Appellants’ claims as a roadmap, which constitutes
impermissible hindsight reconstruction.
Reply Br. 2.
At the outset, Appellants correctly point out that the Examiner
acknowledges that “Smith already has its own mechanism for providing
access to a container 60 positioned within an interior of the device.” See
Reply Br. 2; see also Ans. 6 (“Smith permits access to its container 60 via a
door.”). In this case, the Examiner fails to provide any evidence or
technical reasoning as to why the top and bottom portions of the Smith
fragrance dispenser would need to be separable since access to fragrance
container 60 of Smith is effectively achieved via hinged door 67. See
Reply Br. 2; see also Ans. 6. As such, the Examiner fails to establish by a
preponderance of the evidence that the combined teachings of Smith,
Wefler, Majerowski, Chao, and Wingo render obvious the dispenser of
independent claim 1.
Independent claim 17 calls for a fragrance dispense system including
the same limitations directed to the dispenser body having separable top and
bottom portions (see Appeal Br. 14, Claims App.), and thus, the Examiner’s
findings with respect to Smith, Wefler, Majerowski, Chao, and Wingo are
deficient for claim 17 as well. See Final Act. 4—5; see also Ans. 5—8.
Accordingly, for the foregoing reasons, we do not sustain the
Examiner’s rejection of independent claims 1 and 17 and their respective
dependent claims 3, 4, 6, 11, 18, 21, and 23 as unpatentable over Smith,
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Application 12/846,559
Wefler, Majerowski, Chao, and Wingo.
In addition to Smith, Wefler, Majerowski, Chao, and Wingo, the
Examiner further relies on DeWitt to reject claims 2 and 20 and on Kim to
reject claim 22. See Final Act. 5. However, the Examiner does not rely on
DeWitt or Kim to overcome the deficiencies of Smith and Wingo discussed
above in connection with independent claims 1 and 17.
Accordingly, we do not sustain the Examiner’s rejection of claims 2
and 20 as unpatentable over Smith, Wefler, Majerowski, Chao, Wingo and
DeWitt; nor do we sustain the Examiner’s rejection of claim 22 as
unpatentable over Smith, Wefler, Majerowski, Chao, Wingo, and Kim.
DECISION
We REVERSE the decision of the Examiner to reject claims 1—4, 6,
11, 17, 18, and 20-23.
REVERSED
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