Ex Parte Gueret

Patent Trial and Appeal Board

Jan 17, 2013

10962674 (P.T.A.B. Jan. 17, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte JEAN-LOUIS H. GUERET
____________________

Appeal 2011-000843
Application 10/962,674
Technology Center 3700
____________________

Before: JENNIFER D. BAHR, BENJAMIN D. M. WOOD, and
PATRICK R. SCANLON, Administrative Patent Judges.

WOOD, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF CASE
Appellant appeals under 35 U.S.C. § 134 from a rejection of claims
49, 52-54, 56, 57, 59, 63-67, 69, 73, 74, 76, 78-80, 82-86, 88, 90, 91, 94, and
96-124. Claims 1-48, 50, 51, and 77 have been cancelled, and claims 55, 58,
60-62, 68, 70-72, 75, 81, 87, 89, 92, 93, and 95 have been withdrawn from
consideration by the Examiner. We have jurisdiction under 35 U.S.C.
§ 6(b).
We affirm-in-part.
THE INVENTION
The claims are directed to a device for containing and applying a
viscous substance. Claim 49, reproduced below with emphasis added, is
illustrative of the claimed subject matter:
49. A device for packaging and applying a substance,
the device comprising:
a first space inside a receptacle for containing a supply of
substance;
an applicator member suitable for applying the substance;
a wall extending between the first space and the
applicator member;
at least one chimney fixedly attached to and extending
from the wall and defining a second space therein;
at least one orifice providing flow communication
between the first and second spaces; and
a third space capable of being supplied with the
substance and separated at least partially from the second space
by at least the chimney,
wherein the wall and the chimney are configured to
permit the substance contained in the second and third spaces to
return to the first space when the device is in a head-up
position;
wherein the at least one chimney contacts a portion of the
applicator member.

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REFERENCES
Furber
Nadai
Berghahn
US 705,336
US 3,010,138
US 4,111,567
Jul. 22, 1902
Nov. 28, 1961
Sep. 5, 1978

REJECTIONS
Claims 49, 76, 111, and 112 stand rejected under 35 U.S.C. § 102(b)
as being anticipated by Furber. Ans. 3.
Claims 49, 52-54, 56, 57, 59, 63-67, 69, 73, 74, 76, 78-80, 82-86, 88,
90, 91, 94, and 96-124 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Berghahn and Nadai. Ans. 4.
ANALYSIS
Claims 49, 76, 111, and 112 – Anticipation – Furber
The Examiner found, inter alia, that Furber discloses “at least one
chimney (7) fixedly attached to and extending from the wall [bottom portion
of member 5 extending between the first space and the applicator member].”
Ans. 3 (citing Furber fig. 3). The Examiner considered the chimney 7 to be
“fixedly attached” to the wall because “it is being securely placed in
association with the wall (bottom portion of member 5) and doesn’t fall off
from the wall.” Ans. 6. Appellant disagrees that Furber’s chimney (7) is
“fixedly attached” to the wall. App. Br. 15. Appellant contends, inter alia,
that “nozzle 7 is movable (and thus not fixed) with respect to member 5.”
Id. The Examiner and Appellant thus disagree as to the proper interpretation
of “fixedly attached.”
We agree with Appellant. The term “fixed” in this context means
“fastened, attached, or placed so as to be firm and not readily movable;
firmly implanted; stationary; rigid.” RANDOM HOUSE DICTIONARY (2013)
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(found at: http://dictionary.reference.com/browse/fixed). Thus, for member
7 to be fixedly attached to member 5, the components must be relatively
stationary with respect to each other. That does not appear to be the case,
however, because, as Appellant points out, member 7 moves along its axis
with respect to member 5. Accordingly, because Furber does not disclose a
chimney fixedly attached to the wall, we cannot sustain the Examiner’s
rejection of claims 49, 76, 111, and 112 as anticipated by Furber.
Claims 49, 52-54, 56, 57, 59, 63-67, 69, 73, 74, 76, 78-80, 82-86, 88, 90, 91,
94, and 96-124 – Obviousness – Berghahn and Nadai
Appellant argues the patentability of only independent claims 49, 52,
76, 78, 79, 111, and 114. App. Br. 24-37. Thus, the dependent claims at
issue will stand or fall with their respective independent claims. 37 C.F.R. §
41.37(c)(vii).1
Independent Claims 52, 78, 111, and 114
The Examiner found that the proposed combination of Berghahn and
Nadai discloses a chimney that extends at least partially inside an applicator
member, as required by each of independent claims 52, 78, 111, and 114.
The Examiner reasoned that
[B]y employing the “chimney” 52 of Nadai onto the Berghahn
reference, it would obviously abut the bottom surface of the
Berghahn applicator 4 just as it’s abutting the bottom of
member 24 of Nadai; hence, it would obviously “extends at
least partially inside the applicator member” when the

1 Claims 80, 82-86, 88, 90, 91, 94, 115 and 116 depend from claim 49;
claims 53, 54, 56, 57, 59, 63-67, 69, 73, 74, and 96-98 depend from claim
52; claims 99-102, 117, and 118 depend from claim 76; claims 103-106 and
119-121 depend from claim 78; claims 107-110 depend from claim 79; and
claims 112, 113, and 122-124 depend from claim 111. App. Br. 38-48
(Claims Appx.).
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applicator is pressed on a surface during use in a similar fashion
as the chimney of the instant invention.
Ans. 6-7. By this we understand the Examiner to suggest that Berghahn’s
applicator would flex or deform around the chimney when the device is in
use. Appellant disagrees, arguing that “incorporating the post arrangement
of Nadai (which would include a top wall [24]) into the device of Berghahn
would not allow applicator 4 of Berghahn to be compressed around post 52
during use.” Reply Br. 7.
We do not believe that the Examiner has shown by a preponderance of
the evidence that Nadai’s chimney (or post) 54, when incorporated in
Berghahn’s device, would extend at least partially into Berghahn’s
applicator 4. While we agree with the Examiner that post 54 would “abut
the bottom surface” of applicator 4, this is not the same as extending into the
applicator, which we believe would require the post to “break the plane” of
the bottom surface. We also note that Berghahn’s applicator 4 is made from
a “non-flexible, non-deformable” resin. Thus, it would not, as the Examiner
suggests, deform around the chimney when the device is in use. We do not
sustain the Examiner’s rejection of claims 52, 78, 111, and 114 and their
dependent claims as obvious over Berghahn and Nadai.
Independent Claim 79
Independent claim 79 recites an “applicator member [that] extends at
least partially around the second chimney.” App. Br. 42. Appellant asserts
that this limitation is “similar” to claim 52’s recitation of a “chimney [that]
extends at least partially inside the applicator member.” App. Br. 33. The
Examiner does not dispute this assertion. Accordingly, for the reasons stated
above, we do not sustain the Examiner’s rejection of claim 79 and its
dependent claims as obvious over Berghahn and Nadai.
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Independent Claims 49 and 76
Appellant argues that one of ordinary skill would not combine
Berghahn and Nadai in the manner suggested by the Examiner or in a
manner that meets all the recited features of independent claims 49 and 76.
Specifically, Appellant argues that if Nadai’s pipe 52 and non-perforated
bottom wall 50 were combined with Berghahn’s device, the modified device
“would not have a wall and chimney ‘configured to permit the substance
contained in the second and third spaces to return to the first space when the
device is in a head-up position,’ as recited in independent claim 49.” App.
Br. 34-36. Appellant further argues that the modified device would not
include “at least one opening to enable a circulation of the substance
between the first space and the third space,” as recited in independent claim
76, or “at least one second orifice in the wall providing flow communication
between the first and third spaces,” as recited in independent claim 111.
Id.at 35.
These arguments, however, do not address the Examiner’s proposed
combination, because the Examiner would only combine Nadai’s pipe 52
with Berghahn’s device. Ans. 5, 7. The combination would therefore retain
orifices 37 and 38, which would permit the substance from the second and
third spaces to return to the first space when the device is in a head-up
position, as recited in independent claim 49; and would include at least one
opening to enable a circulation of the substance between the first space and
the third space (orifice 38), as recited in claim 76. See, e.g., Berghahn fig. 5.
Appellant also argues that “Nadai does not provide any suggestion of
utilizing a chimney in conjunction with a venting/drainage orifice external to
the chimney, only in conjunction with a non-perforated bottom wall.” App.
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Br. 35. But the Examiner’s analysis “need not seek out precise teachings
directed to the specific subject matter of the challenged claim, for a court
can take account of the inferences and creative steps that a person of
ordinary skill in the art would employ.” KSR Int'l. Co. v. Teleflex Inc., 550
U.S. 398, 418 (2007).
Similarly, Appellant argues that “one of ordinary skill would not have
found any reason to combine Berghahn and Nadai in the manner suggested
by the Examiner.” App.Br. 34. But the Examiner based his prima facie case
on the finding that combining Nadai’s chimney with Berghahn’s wall
amounts to “combining prior element[s] according to known methods to
dispense a liquid from within a container to an applicator which would have
yield[ed] predictable results.” Ans. 5. This is a legally sufficient rationale,
supported by adequate articulated reasoning with rational underpinning, for
supporting the Examiner’s conclusion of obviousness. See KSR, 550 U.S. at
418. We sustain the Examiner’s rejection of claims 49 and 76, as well as
their dependent claims.
DECISION
For the above reasons, we reverse the Examiner’s rejection of claims
49, 76, 111, and 112 as anticipated by Furber. We further reverse the
examiner’s rejection of claims 52, 78, 79, 111, and 114, as well as their
respective dependent claims 53, 54, 56, 57, 59, 63-67, 69, 73, 74, 96-98,
103-110, 112, 113 and 122-124, as obvious over Berghahn and Nadai. We
affirm the Examiner’s rejection of claims 49 and 76, as well as their
respective dependent claims 80, 82-86, 88, 90, 91, 94, 99-102, and 115-118,
as obvious over Berghahn and Nadai.

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No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED-IN-PART

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