Ex Parte Leonard

Board of Patent Appeals and Interferences

Jan 23, 2009

10880885 (B.P.A.I. Jan. 23, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte STEPHEN B. LEONARD
____________

Appeal 2008-6365
Application 10/880,885
Technology Center 2800
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Decided: January 23, 2009
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Before BRADLEY R. GARRIS, ADRIENE LEPIANE HANLON, and
CATHERINE Q. TIMM, Administrative Patent Judges.

TIMM, Administrative Patent Judge.

DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s
decision rejecting claims 1-6, 8-12, and 21-23. We have jurisdiction under
35 U.S.C. § 6(b).
We DISMISS the appeal with respect to claim 10 and we AFFIRM
the Examiner’s decision with respect to claims 1-6, 8, 9, 11, 12, and 21-23.

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STATEMENT OF THE CASE
The invention relates to a volatile material dispenser having a
decorative display frame and an illuminating device. (Spec. ¶ 1). Claims
1-6, 8-12, and 21-23 are pending in the application. The Examiner has
withdrawn the rejection of claims 1 and 10 as anticipated by U.S. Patent
4,781,895, issued November 1, 1998 to Spector. (Ans. 9).
The Examiner currently maintains no ground of rejection against
claim 10. Accordingly, the appeal is DISMISSED with respect to claim 10.
The rejections remaining before us on appeal are as follows:
• The rejection of claims 1-6, 8, 9, 11, and 12 under 35 U.S.C. §
102(b), as anticipated by U.S. Patent No. 4,714,984, issued December 22,
1987, to Spector (hereinafter “Spector”).
• The rejection of claims 21-23 under 35 U.S.C. § 103(a), as obvious
over Spector in view of U.S. Patent No. 5,647,052, issued July 8, 1997, to
Patel et al. (hereinafter “Patel”).
Claims 1 and 21 are illustrative of the subject matter on appeal:
1. A volatile material dispensing system, comprising:

a frame adapted to retain a volatile material dispenser, the volatile
material dispenser configured to dispense volatiles into an ambient
atmosphere;

a base member comprising frame retaining means and an extension
surface attached to said retaining means, wherein said retaining means is
configured to releasably attach to said frame; and

an illuminating device configured to illuminate said frame and volatile
material dispenser, wherein said extension surface is configured to support
said illuminating device,

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wherein the base member is adapted to rest upon a support surface and
maintain the frame in a substantially vertical position.

21. A volatile material dispensing system, comprising:

a dispensing apparatus configured to support a reservoir containing a
volatile material, said reservoir enclosed by a vapor permeable membrane;

an illuminating device configured to illuminate said dispensing
apparatus and positioned upon an extension surface; and

a reflective device configured to reflect light emanating from said
illuminating device, wherein said illuminating device is positioned
substantially between said dispensing apparatus and said reflective device.

With respect to the rejection of claims 1-6, 8, 9, 11, and 12 under
35 U.S.C. § 102(b), no claims are argued separately from the others.
Likewise, with respect to the rejection of claims 21-23 under 35 U.S.C.
§ 103(a), no claims are argued separately from the others. Thus, we decide
this Appeal on the basis of representative independent claims 1 and 21. See
37 C.F.R. § 41.37(c)(1)(vii) (“When multiple claims subject to the same
ground of rejection are argued as a group by appellant, the Board may select
a single claim from the group of claims that are argued together to decide the
appeal with respect to the group of claims as to the ground of rejection on
the basis of the selected claim alone.”).
I. Rejection of claims 1-6, 8, 9, 11, and 12
A. ISSUES ON APPEAL
Appellant and the Examiner disagree as to whether case 23, as taught
by Spector, reads on the “support surface,” as recited in claim 1. Appellant
argues that shell 17 and case 23 are integrally connected, which “eviscerates
the plain meaning of the phrase ‘adapted to rest upon a support surface’” and
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that case 23 cannot be both part of the illumination device element and the
support surface, which are separate elements recited in claim 1. (App. Br.
5).
The Examiner responds that, in interpreting the phrase “adapted to,”
shell 17 need only have the ability to rest on a support surface. (Ans. 8).
The Examiner also responds that case 23 is not part of the illumination
device, which need consist of only bulb B and socket 22. (Ans. 8).
A first issue on appeal arising from the contentions of Appellant and
the Examiner is: has the Appellant shown that the Examiner reversibly erred
in finding that Spector discloses a “base member adapted to rest upon a
support surface,” as recited in claim 1? We answer this question in the
negative.
B. FACTUAL FINDINGS
The following Findings of Fact (FF) are relevant to deciding the
above identified issue on appeal:
1. Spector teaches a night light assembly 10 including:
a generally rectangular shell 17 of molded
synthetic plastic material having a trough-shaped
rear reflector wall 18. The bottom wall 19 of the
shell is provided with a wedge-shaped inlet 20
leading into an arcuate recess 21 adapted to receive
a socket 22 into which is screwed a low-wattage
light bulb B. Socket 22 is mounted above a
cylindrical plastic case 23 from which laterally
projects the plug 14. The case houses an electrical
switch having an actuator 24 to turn the bulb on
and off.
(Spector, col. 3, ll. 49-50 and col. 4, ll. 24-32).
2. Figure 6 illustrates shell 17 resting on an upper surface of case
23. (Spector, Figure 6).
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3. Figures 4 and 6 from Spector are provided below.
Figure 4 is reproduced below:

Figure 4 depicts, in an exploded view in which shell 17 is illustrated
disconnected from frame 28, an exemplary night light assembly.
Figure 6 is reproduced below:
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Figure 6 depicts, in a cut away side view, a night light assembly.
C. PRINCIPLES OF LAW
“To anticipate a claim, a prior art reference must disclose every
limitation of the claimed invention, either explicitly or inherently.” In re
Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997). In order to anticipate, a
reference must identify something falling within the claimed subject matter
with sufficient specificity to constitute a description thereof within the
purview of § 102. In re Schaumann, 572 F.2d 312, 317 (CCPA 1978).
D. ANALYSIS
We disagree with Appellant that the integral nature of shell 17 and
case 23, if any, would “eviscerate the meaning of ‘adapted to rest upon a
support surface,’” as suggested by Appellant, without a further rationale as
to why this should be so. Appellant has not sufficiently explained how or
why shell 17 does not “rest upon” a surface of case 23. Even if shell 17
integrally snaps into place around socket 22 when the night light is
assembled (FF 1 and 3), shell 17 still rests upon an upper surface of case 23,
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as best illustrated in Figure 6, to maintain frame 28 in a vertical position.
(FF 1-3).
Further, we disagree that case 23 is necessarily part of the claimed
“illumination device.” Appellant has not defined the term “illumination
device” with any particularity that would require any features other than
parts that specifically illuminate, i.e., the bulb B. Even if all the parts that
assist with the illumination of bulb B are necessarily included as part of the
claimed “illumination device,” we find that case 23 still need not be
included. Rather, only the bulb B, socket 22, switch 24, plug 14, and the
wires that form an electrical circuit, which are housed in case 23, are
necessary. Case 23 is not a necessary feature to provide illumination of bulb
B. Thus, we find the “illumination device” of claim 1 reads on parts of the
night light assembly that are separate from case 23. Finally, even if
Appellant is correct that case 23 should be considered part of the claimed
illumination device, the claim requires only that “the base member is
adapted to rest upon a support surface and maintain the frame in a
substantially vertical position.” As such, there is nothing in claim 1 to
require that a support surface be a surface separate from the illumination
device. In fact, claim 1 does not specifically require a support surface at all.
Claim 1 merely requires that the base member be adapted to rest, or be
capable of resting, upon a support surface. (See claim 1). We find that the
base member of claim 1 thus reads on shell 17, as taught by Spector.
Appellant has not shown that the Examiner reversibly erred in finding
that Spector discloses a “base member adapted to rest upon a support
surface,” as recited in claim 1. Accordingly, we sustain the Examiner’s
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rejection of claims 1-6, 8, 9, 11, and 12 under 35 U.S.C. § 102(b), as
anticipated by Spector.
II. Rejection of claims 21-23
A. ISSUES ON APPEAL
The Examiner contends that it would have been obvious to one of
ordinary skill in the art to modify the volatile material dispenser taught by
Spector “to incorporate the permeable membrane layer of Patel in order to
provide greater controlled distribution and release of the volatile substance.”
(Ans. 7 and 10). Appellant contends that the Examiner’s stated motivation
“fails to take into consideration the fact that the absorbent pad 37 of Spector
‘984 already performs this function, thereby rendering an additional
membrane superfluous.” (App. Br. 8).
A second issue on appeal arising from the contentions of Appellant
and the Examiner is: has Appellant shown that the Examiner provided an
insufficient motivation for incorporating the permeable membrane taught by
Patel in the volatile material dispenser taught by Spector? We answer this
question in the negative.
B. FACTUAL FINDINGS
The following additional Findings of Fact are relevant to deciding the
above identified issue on appeal:
4. The Background section of Appellant’s Specification states that
“[t]he prior art describes in detail the use of permeable membranes, as well
as other manners to dispense volatile material from a given dispenser.”
(Spec. ¶ 3).
5. Spector teaches “a translucent mat or pad 37 of absorbent
material, such as white blotting paper, non-woven fabric or foam plastic
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material . . . impregnated with a volatile aromatic liquid.” (Spector, col. 4,
ll. 58-63).
6. Patel states that
[t]he volatile substance dispenser may include an
inner permeable or semi-permeable film or
membrane layer which permits diffusion of
vaporized volatile substance. The membrane layer
may be of a material such as polyethylene. The
membrane layer allows vapor to diffuse into the
surrounding area over an extended period of time
but retains the volatile substance in the holding
means and deters tampering with and exposure to
the volatile substance. . . . The inner membrane
layer retains the volatile substance in the holding
means and prevents the user from contacting the
substance while allowing vapor from the volatile
substance to be released into the surroundings.
(Patel, col. 5, ll. 37-56).
C. PRINCIPLES OF LAW
“Section 103 forbids issuance of a patent when ‘the differences
between the subject matter sought to be patented and the prior art are such
that the subject matter as a whole would have been obvious at the time the
invention was made to a person having ordinary skill in the art to which said
subject matter pertains.’” KSR Int'l Co. v. Teleflex Inc., 127 S. Ct. 1727,
1734 (2007). The question of obviousness is resolved on the basis of
underlying factual determinations including (1) the scope and content of the
prior art, (2) any differences between the claimed subject matter and the
prior art, (3) the level of skill in the art, and (4) where in evidence, so-called
secondary considerations. Graham v. John Deere Co., 383 U.S. 1, 17-18
(1966). See also KSR, 127 S. Ct. at 1734 (“While the sequence of these
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questions might be reordered in any particular case, the [Graham] factors
continue to define the inquiry that controls.”).
“The combination of familiar elements according to known methods
is likely to be obvious when it does no more than yield predictable results.”
KSR, 127 S. Ct. at 1739. The question to be asked is “whether the
improvement is more than the predictable use of prior art elements according
to their established functions.” KSR, 127 S. Ct. at 1740. Moreover, one of
the ways in which a claim’s subject matter can be proved obvious is by
establishing that there existed at the time of invention a known problem for
which there was an obvious solution encompassed by the claims. KSR,
127 S. Ct. at 1742.
D. ANALYSIS
Applying the preceding legal principles to the Factual Findings in the
record of this appeal, we determine that the Examiner has established a
prima facie case of obviousness.
Patel and the Background section of Appellant’s Specification provide
sufficient evidence that the use of a permeable membrane for containing
volatile materials was well known to those of ordinary skill in the art. (FF 4
and 6). Thus, the use of a permeable membrane instead of, or in addition to,
the impregnated pad 37 taught by Spector (FF 5), would be no more than the
predictable use of a prior art element according to its established function.
KSR, 127 S. Ct. at 1740. Further, we agree with the Examiner that a
permeable membrane would provide greater control over distribution and
release than the impregnated pad. For example, Patel teaches that the
permeable membrane deters tampering with and exposure to the volatile
substance, thus preventing a user from contacting the substance. (FF 6). We
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find this added degree of distribution control, e.g., avoiding unnecessary
exposure to a user, to be more than sufficient motivation for one of ordinary
skill in the art to use a permeable membrane to enclose the volatile material
rather than, or in addition to, the impregnated pad 37 taught by Spector.
Appellant has not shown that the Examiner provided an insufficient
motivation for incorporating the permeable membrane taught by Patel in the
volatile material dispenser taught by Spector. Accordingly, we sustain the
Examiner’s rejection of claims 21-23 under 35 U.S.C. § 103(a), as obvious
over Spector in view Patel.
IV. CONCLUSION
For the reasons indicated above, we:
1. sustain the rejection of claims 1-6, 8, 9, 11, and 12 under 35 U.S.C.
§ 102(b), as anticipated by Spector; and
2. sustain the rejection of claims 21-23 under 35 U.S.C. § 103(a), as
obvious over Spector in view Patel.
V. DECISION
We dismiss the appeal with respect to claim 10 and affirm the
Examiner’s decision with respect to claims 1-6, 8, 9, 11, 12, and 21-23.
VI. TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal maybe extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED

cam
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