Ex Parte Iizuka et al

Patent Trial and Appeal Board

Feb 15, 2013

10564943 (P.T.A.B. Feb. 15, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte SHIGEO IIZUKA and HIROSHI MIZUSHIMA
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Appeal 2011-005197
Application 10/564,943
Technology Center 3700
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Before CHARLES N. GREENHUT, MICHELLE R. OSINSKI, and
WILLIAM A. CAPP, Administrative Patent Judges.

OSINSKI, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2011-005197
Application 10/564,943

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STATEMENT OF THE CASE
Appellants1 appeal under 35 U.S.C. § 134(a) from a final rejection of
claims 1-9 under 35 U.S.C. § 103(a) as unpatentable over Iizuka (US
5,813,576, iss. Sep. 29, 1998) and Maas (US 4,925,106, iss. May 15, 1990).
Ans. 3-7. We have jurisdiction under 35 U.S.C. § 6(b). An oral hearing was
held on February 8, 2013.
We AFFIRM.

CLAIMED SUBJECT MATTER
The claimed subject matter relates to “a foamer dispenser for ejecting
a foamy mixture of air and liquid contents.” Spec., para. [0001]. Claim 1 is
the sole independent claim and is reproduced below with emphasis added:
1. A foamer dispenser comprising:
a base cap fixedly held at a mouth of a container;
two pumps attached to the base cap and configured to
separately suck, pressurize, and pressure-feed ambient air and
liquid contents filled in the container;
a depression head for defining a merging space for
merging outlet passages of the pumps with each other, the
depression head having an ejecting end communicating with an
outside, and the depression head having an internal passage for
communicating the merging space with the ejecting end, so as
to eject contents mixed with the ambient air from the ejecting
end by repeated depressing and returning operations of the
depression head; and
a foaming element disposed within the internal passage
of the depression head and configured to foam the contents
mixed with the ambient air, wherein the foaming element
comprises:

1 Appellants identify the real party in interest as Yoshino Kogyosho Co.,
Ltd. App. Br. 1.
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a jet ring having an inlet opening with an opening area
narrower than that of the internal passage of the depression
head, the jet ring comprising a tubular body with an opening
area larger than that of the inlet opening and communicating
with the internal passage of the depression head; and
a plurality of meshes disposed within the tubular body of
the jet ring so as to face to the inlet opening of the jet ring, the
meshes having a number of fine holes to be contacted with the
contents mixed with the ambient air and supplied from the inlet
opening to allow a part of the contents to pass through the
meshes, the meshes each being coupled to a separate mesh ring,
wherein the jet ring includes at least one rib,
wherein the meshes have an opening diameter Φ2 which
is 2.0 to 3.5 times as large as an opening diameter Φ1 at the
inlet opening of the jet ring.

ANALYSIS
Only issues and findings of fact contested by Appellants in the Briefs
will be addressed. See Ex parte Frye, 94 USPQ2d 1072, 1075-76 (BPAI
2010) (precedential). Appellants argue claims 1-9 as a group. App. Br. 9-
12; Reply Br. 2-6. We select independent claim 1 as the representative
claim. See 37 C.F.R. § 41.37(c)(1)(vii)(2011).
The Examiner found that “Iizuka fails to specifically disclose that the
mesh has an opening diameter Φ2 which is 2.0 to 3.5 times . . . as large as an
opening diameter Φ1 at the inlet opening of said jet ring.” Ans. 4.
However, the Examiner stated that “where the general conditions of a claim
are disclosed in the prior art, discovering the optimum or workable ranges
involves only routine skill in the art.” Id. at 5 (citing Manual of Patent
Examining Procedure (MPEP), 8th ed., rev. July 2008, § 2144.05). The
Examiner found that Iizuka discloses the general conditions of claim 1 since
“Iizuka shows that the opening diameter of the meshes is significantly larger
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than an opening diameter at the inlet opening of said jet ring.” Id. at 4; see
also, e.g., Iizuka, Spec., col. 19, ll. 1-4 (“The upper portion of the casing
131functions as a large-diameter portion 131a and the lower portion of the
casing 131 functions as a small-diameter portion 131b.”) and figs. 1, 2, 12,
16, 17, 24, 35, and 36.
While the Examiner did not find that Iizuka expressly suggested
optimization of the diameter of the large-diameter and small-diameter
portions 131a, 131b, the Examiner found that the “Background Art” of
Appellants’ Specification disclosed that the size of the inlet opening
achieves the recognized result of varying the ejecting speed of the contents
of the dispenser.2 Ans. 7-8 (citing Spec., paras. [0002]-[0003]). The
Examiner, thus, found that the “Background Art” of Appellants’
Specification expressly suggested optimization of the inlet opening size in
order to affect the ejecting speed of the contents of the foam dispenser, for
example. Id. Accordingly, the Examiner found that the “Background Art”
of Appellants’ Specification furnished sufficient information for one of
ordinary skill in the art (i) to recognize the inlet opening diameter (and
consequently the ratio between the diameter of the mesh opening and the
inlet opening diameter) as being results effective for at least ejection speed
of the contents of the foaming dispenser and (ii) to modify the parameter of
the inlet opening diameter (and consequently the ratio between the diameter
of the mesh opening and the inlet opening diameter) such that Appellants’
claimed ratio would have been reasonably expected to be arrived at. In

2 Essentially the Venturi effect. See Bernoulli’s theorem. (2013). In
Encyclopædia Britannica. Retrieved from
http://www.britannica.com/EBchecked/topic/62615/Bernoullis-theorem
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making obviousness determinations, one “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).
Appellants contend that “there is no disclosure that altering the ratio
of such openings would be beneficial to foaming” (App. Br. 10) such that
the ratio between the opening diameter of the jet ring and of the meshes is
not a result-effective variable (Id. at 11). We agree with Appellants to the
extent that Iizuka and the “Background Art” of Appellants’ Specification
each fail to teach that changes in inlet opening diameter (and consequently
the ratio of the diameter of the mesh opening to the inlet opening diameter)
is for the specific purpose of “eject[ing] a foam having a fine and
homogeneous foam quality irrespectively of the contents” as disclosed in
Appellants’ Specification. Spec., para. [0007]. However, Iizuka teaches a
structure with the general conditions of the claim, and the “Background Art”
of Appellants’ Specification teaches a reason for modifying the diameter of
the inlet opening (and consequently the ratio of the diameter of the mesh
opening to the inlet opening diameter), regardless of the reason being the
same reason for optimization advocated by Appellants. For the purposes of
an obviousness inquiry, there is no requirement that an artisan’s reasons for
making modifications of the prior art be the same as that of the patent
applicant. See In re Kemps, 97 F.3d 1427, 1430 (Fed. Cir. 1996) (citing In
re Dillon, 919 F.2d 688, 693 (Fed. Cir. 1990) (en banc) (“Although the
motivation to combine here differs from that of the applicant, the motivation
in the prior art to combine the references does not have to be identical to that
of the applicant to establish obviousness.”)); see also In re Linter, 458 F.2d
1013, 1016 (CCPA 1972) (“The fact that [A]ppellant uses [a claimed
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feature] for a different purpose does not alter the conclusion that its use in a
prior art composition would be prima facie obvious from the purpose
disclosed in the references.”).
Appellants further contend that one of ordinary skill in the art looking
to produce foam of a desired quality would vary the size of the individual
mesh openings, not the diameter of the mesh opening or the inlet opening
diameter. App. Br. 11 (citing JP 2002-159893A, para. [0035]). However,
this argument is unconvincing as it does not address the Examiner’s stated
rationale of optimization of the inlet opening diameter (and consequently the
ratio of the diameter of the mesh opening to inlet opening diameter) since
the inlet opening diameter is a results-effective variable that achieves the
recognized result of varying at least the ejection speed of the contents.
Appellants further contend that “there is no disclosure of any need to
improve Iizuka with respect to foaming” (App. Br. 10) and that the
Examiner “relies upon impermissible hindsight in reaching its conclusion of
obviousness” (Id. at 11). We do not find these arguments persuasive as they
do not address the Examiner’s stated rationale having a rational
underpinning based on the optimization of a results-effective variable. See
KSR, 550 U.S. at 398 (citing In re Kahn, 441 F.3d 977, 988 (Fed Cir. 2006)).
“The outcome of optimizing a result-effective variable may still be
patentable if the claimed ranges are ‘critical’ and ‘produce a new and
unexpected result which is different in kind and not merely in degree from
the results of the prior art.” In re Applied Materials, Inc., 692 F.3d 1289,
1297 (Fed. Cir. 2012) (citing In re Aller, 220 F.2d 454, 456 (CCPA 1955)
and In re Antonie, 559 F.2d 618, 620 (CCPA 1977)). However, Appellants
do not provide persuasive evidence that one would not expect to arrive at the
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claimed ratio by optimizing speed and/or the criticality of the claimed ratio
as they point only to statements made in the Specification that are
unsupported by factual evidence. Reply Br. 4-6. “[I]t is well settled that
unexpected results must be established by factual evidence. ‘Mere argument
or conclusory statements in the specification does not suffice.’” In re
Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997) (quoting In re De Blauwe,
736 F.2d 699, 705 (Fed. Cir. 1994) and citing In re Soni, 54 F.3d 746, 750
(Fed. Cir. 1995). See also In re Wood, 582 F.2d 638, 642 (CCPA
1978)(“Mere lawyer’s arguments and conclusory statements in the
specification unsupported by objective evidence, are insufficient to establish
unexpected results.”).
For the foregoing reasons, we find that the Examiner did not err in
concluding that the subject matter of independent claim 1 would have been
obvious from the combination of Iizuka and Maas, and we sustain the
rejection of claims 1-9 under 35 U.S.C. § 103(a).

DECISION
The Examiner’s rejection of claims 1-9 under 35 U.S.C. § 103(a) is
AFFIRMED.
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

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