Ex Parte Lasserre et al

Patent Trial and Appeal Board

Oct 25, 2012

11178283 (P.T.A.B. Oct. 25, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte PIERRE-ANDRE LASSERRE and MARCEL
SANCHEZ
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Appeal 2010-007724
Application 11/178,283
Technology Center 3700
____________________

Before: JOHN C. KERINS, EDWARD A. BROWN, and
BENJAMIN D. M. WOOD, Administrative Patent Judges.

WOOD, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2010-007724
Application 11/178,283

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STATEMENT OF CASE
Appellants appeal under 35 U.S.C. § 134 from a rejection of claims
1-4, 6-10, 15-25, and 27-39. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
THE INVENTION
The claims are directed to a device for dispensing a pressurized
product. Claim 1, reproduced below with added emphasis, is illustrative of
the claimed subject matter:
1. A device for packaging and dispensing a product,
under pressure, comprising:
(a) a container containing:
(i) a product to be dispensed under pressure;
(ii) a propellant in the form of a liquefied gas
comprising a gaseous phase and a liquid
phase, the propellant being non-miscible
with the product to be dispensed, and being
chosen from the group consisting of butane,
isobutene, fluorinated compounds and
dimethylether or a mixture of at least two of
this group;
(iii) at least one retaining member comprising a
silicone material which absorbs the liquid
phase of the propellant to at least partially
trap the liquid phase of the propellant, and
wherein said material is exposed directly to
an interior of said container within which
the product is present, said material of said
retaining member having at least one portion
that is permeable to the gaseous phase of the
said propellant and that is exposed directly
to said interior;
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(b) a valve coupled [to] the container and which
includes a body, the valve comprising:
(i) a first passage through which, when the
device is in a first position, the product
contained in the container enters the valve
body when the valve is actuated;
(ii) a second passage through which, when the
device is in the first position, the propellant
contained in gaseous form in the container
enters the valve body when the valve is
actuated.

REFERENCES
Alexander
Benoist
Yquel
US 3,964,649
US 6,173,907 B1
US 6,776,313 B2
Jun. 22, 1976
Jan. 16, 2001
Aug. 17, 2004

REJECTION
Claims 1-4, 6-10, 15-25, and 27-39 stand rejected under 35 U.S.C
§ 103(a) as being unpatentable over Benoist in view of Alexander and
Yquel. Ans. 3.

ANALYSIS
Claims 1, 3, 4, 6-10, 15, 16, 20-25, 27-32, 34, and 36-38
Appellants argue claims 1, 3, 4, 6-10, 15, 16, 20-25, 27-32, 34 and 36-
38 as a group. App. Br. 12. We select claim 1, the sole independent claim,
as representative, with the remaining claims standing or falling with claim 1.
37 C.F.R. § 41.37(c)(1)(vii) (2011). The Examiner found that Benoist
teaches all of claim 1’s limitations – including the gas inlet – except for the
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claimed silicone retaining member. Ans. 3 (citing Benoist, Fig. 1 and col. 5,
ll. 59-65). The Examiner then found that Alexander discloses a container for
dispensing a pressurized product that uses a retaining member, not
comprised of silicone, that absorbs the liquid phase of the propellant. Id. at
4 (citing Alexander, Fig. 1, col. 1, ll. 55-68). The Examiner relied on Yquel
to teach “a retaining member 32 or an absorber comprising a silicon[e]
material or porous silicon[e] material, which is well known for absorbing
and desorbing a propellant in a pressure dispensing package.” Id. at 4.
Finally, the Examiner concluded that it would have been obvious to modify
Benoist’s device with the retaining member of Alexander, made of silicone
as taught by Yquel, “to reversibly absorb and release the propellant gas in a
sufficient amount to provide a pressure in the headspace of the pressurized
dispensing container.” Ans. 4-5.
Appellants first argue that none of the references discuss a device that
can discharge from both the upright and inverted position. App. Br. 13. We
agree with the Examiner, however, that “the fact that applicant has
recognized another advantage which would flow naturally from following
the suggestion of the prior art cannot be the basis for patentability when the
differences would otherwise be obvious.” Ans. 5 (citing Ex parte Obiaya,
227 USPQ 58, 60 (BPAI 1985)).
Appellants next argue that even if the prior art upon which the
Examiner relies is combined, the retaining member’s material would not be
“exposed directly to an interior of the container within which the product is
present.” App. Br. 14. According to Appellants, Alexander teaches a sachet
that contains silica powder, and it is the silica inside the sachet that holds the
propellant which is then discharged through the cover of the sachet and into
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the container. App. Br. 13. Thus, Appellants contend, it is the sachet, not
the silica material, that is directly exposed to the product. App. Br. 14.
This argument is based on Appellants’ interpretation of claim 1 to
require that the retaining member material be exposed directly to the product
that is to be dispensed. Reply Br. 5. We disagree with this interpretation.
Broadly construed, the claim only requires that the material be exposed
directly to the interior of the same container in which the product is present;
i.e., that the retaining member material be positioned inside that container.
It does not require that the material be exposed directly to the product. This
interpretation is reinforced by comparing claim 1 with claim 39. The latter
claim depends from claim 1 and further requires that the material “is
positioned within said container such that it directly contacts the product in
said container.” Under the principle of claim differentiation, it is presumed
that this limitation is not present in claim 1. See Phillips v. AWH Corp., 415
F.3d 1303, 1314-15 (Fed. Cir. 2005) (“presence of a dependent claim that
adds a particular limitation gives rise to a presumption that the limitation in
question is not present in the independent claim”).
Moreover, Appellants’ argument is unpersuasive even under their
claim construction. The Examiner has proposed combining Benoist in view
of both Alexander and Yquel, such that Yquel’s silicone retaining member
would replace Alexander’s retaining member, the silica power and sachet
included. This is apparent from the Examiner’s discussion of claim 39, in
which the Examiner describes Yquel’s silicone retaining members as
“directly absorbing propellant [from] the interior of [the] container.” Ans. 7.
There would thus not be a sachet between the material and the product in
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this combination, and the material would be “directly exposed” to the
product, not just to the container’s interior.
Appellants also argue that the arrangement of Alexander is
disadvantageous for several reasons. App. Br. 14. But, again, this argument
does not address the combination of Benoist, Alexander, and Yquel, the
combination on which the Examiner bases the rejection. Nonobviousness
cannot be established by attacking the references individually when the
rejection is predicated upon a combination of prior art disclosures. See In re
Merck & Co., Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986).
Finally, Appellants argue that Yquel teaches away from the
combination because “the entire purpose of the Yquel arrangement is to
prevent operation of a dispensing container in the inverted position.” App.
Br. 17-18. But the Examiner relied on Yquel merely to show that silicone
has been used as a retaining member and that a person of ordinary skill knew
that silicone readily absorbs the liquid phase of the propellants used in the
invention. This finding is undisputed. There is no suggestion in Yquel or
otherwise that merely substituting a silicone retaining member for
Alexander’s retaining member would prevent a container from dispensing in
the inverted position. We sustain the Examiner’s rejection of claims 1, 3, 4,
6-10, 15, 16, 20-25, 27-32, 34, and 36-38.
Claim 2
Claim 2 requires that the retaining member be configured to absorb all
of the liquid phase of the propellant within the container such that liquid
propellant which is in the container but outside of the retaining member is
absorbed by the retaining member while in the container. The Examiner
found that a retaining member comprising silicone is capable of performing
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the claimed function. Ans. 7. Appellants disagree, arguing that Yquel’s
absorber only absorbs small amounts of liquid, and that Alexander’s sachet
is not described as permeable to the fluid product. Reply Br. 10; App. Br.
20. In our view, Appellants’ argument only addresses aspects of
Alexander’s and Yquel’s retaining members individually, rather than the
combination of the references. For this reason the argument is not
persuasive. See Merck, supra. We sustain the Examiner’s rejection of
claim 2.
Claim 17-19
Claims 17-19 depend, at least indirectly, from claim 1, and further
require that the retaining member be attached to various surfaces within the
container; i.e., to an internal wall of the container (claim 17), to a bottom
wall of the container (claim 18), or to the dip tube (claim 19). The Examiner
found that Appellants did not disclose that attaching the retaining member to
any particular internal surface of the container or to the dip tube solves any
stated problem or is for any particular purpose, and that it appeared that the
invention would perform equally well regardless of the location of the
retaining member within the container. Ans. 7. Accordingly, the Examiner
found that the location of the retaining member within the container is an
obvious matter of design choice. Id. Appellants respond that the Examiner
failed to make a prima facie case of obviousness because the Examiner does
not show where the additional limitations are found in the prior art or
provide a reason to perform the proposed modification. Reply Br. 12.
We agree with the Examiner. The rearrangement of parts in a device
is obvious and unpatentable where shifting the positions of the parts would
not solve some stated problem or modify the operation of the device. In re
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Kuhle, 526 F.2d 553, 555 (CCPA 1975); In re Japikse, 181 F.2d 1019, 1032
(CCPA 1950). The Examiner found that the Appellants failed to disclose
that any of the claimed retaining-member locations solves any problem or
affects the invention’s operation. Ans. 7. Appellants have not responded to
this finding by pointing us to any evidence, in the Specification or otherwise,
demonstrating that attaching the retaining member to any particular surface
within the container solves a stated problem or modifies the operation of the
claimed dispensing device. Appellants speculate that affixing Alexander’s
sachet to the bottom of Benoist’s device may harm the sachet’s ability to
expel gas. Reply Br. 14. But speculation does not substitute for evidence
and we give it little weight. We sustain the Examiner’s rejection of claims
17-19.
Claims 33 and 35
Claims 33 and 35 require that the retaining member be positioned
within the product in the container. App. Br. 27-28. As with claim 2,
Appellants’ response addresses Alexander and Yquel individually rather
than the combined teachings. We therefore find that response unpersuasive
and sustain the Examiner’s rejection of claims 33 and 35.
Claim 39
Claim 39 requires that the retaining member material directly contact
the product in the container. App. Br. 28-29. Appellants raise essentially
the same arguments in opposition to this rejection as were raised with
respect to the rejection of claim 2. For the reasons stated above regarding
claim 2, we sustain the Examiner’s rejection of claim 39.
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DECISION
For the above reasons, the Examiner’s rejection of claims 1-4, 6-10,
15-25 and 27-39 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) (2011).

AFFIRMED

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