Ex Parte Litten-Brown et al

Patent Trial and Appeal Board

Mar 11, 2016

12278250 (P.T.A.B. Mar. 11, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/278,250 09/16/2008
23575 7590 03/11/2016
CURATOLO SIDOTI CO., LPA
24500 CENTER RIDGE ROAD, SUITE 280
CLEVELAND, OH 44145
FIRST NAMED INVENTOR
Colin Litten-Brown
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
GIV.P30245 9646
EXAMINER
GORMAN, DARREN W
ART UNIT PAPER NUMBER
3752
MAILDATE DELIVERY MODE
03/11/2016 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte COLIN LITTEN-BROWN, GUY EDWARD NAISH,
ANJUM FATIMA SHAUKAT, and RICHARD P. SGARAMELLA
Appeal 2014-001739 1,2
Application 12/278,250
Technology Center 3700
Before MICHAEL C. ASTORINO, PHILIP J. HOFFMANN, and
BRUCE T. WIEDER, Administrative Patent Judges.
HOFFMANN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the rejection of
claims 1--4, 9--19, 22, and 23. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
Appellants' invention relates to "[ d]evices having one or more
transfer elements ([such as] a wick[] and [an] emanator) formed from plant
1 Our decision references Appellants' Specification ("Spec.," filed Aug. 4
2008), Appeal Brief ("Appeal Br.," filed July 12, 2013), and Reply Brief
("Reply Br.," filed Nov. 19, 2013), as well as the Final Office Action ("Final
Action," mailed Nov. 2, 2012) and the Examiner's Answer ("Answer,"
mailed Sept. 19, 2013).
2 "The real party [in] interest is Givaudan S.A." Appeal Br. 3.
Appeal2014-001739
Application 12/278,250
material derived from the stems of sola plants from the genus
Aeschynomene L." Spec., Abstract. Claims 1, 9, 13, and 22 are the only
independent claims under appeal. We reproduce below claim 1 as
representative of the appealed subject matter.
1. A method of disseminating a volatile liquid from a
reservoir into an atmosphere comprising:
(i) contacting said volatile liquid in said reservoir with one
or more transfer elements, or exposing one or more transfer
elements that are in contact with said volatile liquid in said
reservoir to the atmosphere;
(ii) transferring said volatile liquid from said reservoir by
means of said one or more transfer elements; and
(iii) evaporating said volatile liquid from said one or more
transfer elements, wherein at least one of the one or more of said
transfer elements comprises dried plant stem material from a so la
plant of the genus Aeschynomene L.
Appeal Br., Claims App.
REJECTIONS AND PRIORART3,4
The Examiner provisionally rejects claims 1--4, 9--19, 22, and 23 on
the ground of nonstatutory obviousness-type double patenting as
unpatentable over claims 1-27 of Application No. 12/614,088.
3 The Examiner's entry of Appellants' Amendment filed July 1, 2013,
overcomes the rejection of claims 22 and 23 under 35 U.S.C. § 112, second
paragraph, in the Final Action. See Advisory Action mailed July 1 7, 2013.
4 The Examiner maintains the objection to the drawings set forth in the
Office Action mailed March 7, 2012. See Final Action 2. Appellants
request that we withdraw the objection in view of the Replacement Sheet,
filed September 17, 2012. See Appeal Br. 7. The Examiner's refusal to
withdraw the objection is not appealable to the Board, however. See In re
Berger, 279 F.3d 975, 984 (Fed. Cir. 2002). Instead, the Examiner's
decision is reviewable, if at all, only by means of a petition.
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Appeal2014-001739
Application 12/278,250
The Examiner rejects claims 1--4, 9--19, 22, and 23 under 35 U.S.C.
§ 103(a) as unpatentable over Brown (WO 03/092750 Al, pub. Nov. 13,
2003) and Pierce Arnold & Son, Shala log without skin, (May 1, 2005),
http://www.piercearnold.co. uk/product. php ?pic=614 (hereinafter, "Pierce
Arnold").
See Final Action 3-7.
ANALYSIS
The § 103 (a) Rejection
Independent claim 1 recites "at least one of the one or more of said
transfer elements comprises dried plant stem material from a sola plant of
the genus Aeschynomene L." Appeal Br., Claims App. Each of
independent claims 9, 13, and 22 recites a similar limitation, and each of the
remaining claims depends from one of the independent claims. See id.
The Examiner finds that Brown fails to teach a transfer element
comprising the claimed dried plant stem material, but relies on Pierce
Arnold, which is a photograph whose only text is a caption "Shola Log
Without Skin," to remedy the deficiency of Brown. See Final Action 6.
Specifically, the Examiner finds that Pierce Arnold "clearly shows a
wick/emanator made from dried plant stem material from a so la plant of the
genus Aeschynomene L." Id. The Examiner concludes
it would have been obvious . . . to choose dried plant stem
material from a sola plant of the genus Aeschynomene L, as
taught by the advertisement reference from the Pierce Arnold
company, for the at least one transfer element of the device
shown by Brown, since dried plant stem material from a sola
plant of the genus Aeschynomene L was a known material
capable of absorbing and transporting, by capillary action,
volatile liquid in a reservoir for evaporation into the air at the
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Appeal2014-001739
Application 12/278,250
time the invention was made, and since it has been held to be
within the general skill of a worker in the art to select a known
material on the basis of its suitability for the intended use as a
matter of obvious design choice.
Id. at 6-7. We agree with Appellants (see Appeal Br. 9--15, Reply Br.
7-11), however, that for the following reasons the Examiner fails to
establish that the subject matter of the claims is obvious. See KSR Int 'l
Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) ("[R]ejections on obviousness
grounds cannot be sustained by mere conclusory statements; instead, there
must be some articulated reasoning with some rational underpinning to
support the legal conclusion of obviousness.").
Specifically, as set forth above, the Examiner's rationale for
modifying Brown is based on a finding that "a dried plant stem material
from a sola plant of the genus Aeschynomene L was a known material[,] at
the time of the instant invention[,] which was capable of absorbing volatile
liquid and transporting the liquid by capillary action for evaporation into the
air," as well as similar findings throughout the record. Final Action 6; see
also, e.g., Answer 4---6. The Examiner does not, however, provide a factual
basis or line of technical reasoning sufficient to support such a rationale.
At most, Pierce Arnold is a photograph of the claimed material. As
Appellants point out, Pierce Arnold does not disclose the properties or use of
the material shown, such as with respect to absorbing and transporting
volatile liquids from a reservoir. See, e.g., Appeal Br. 13, Reply Br. 10. The
Examiner states that the Examiner performed further research, and that this
research indicates that Pierce Arnold "implicitly discloses that the shola logs
(which are dried plant stems from the sola plant) are useful in th[e claimed]
manner since the Pierce Arnold company specializes in manufacturing,
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Appeal2014-001739
Application 12/278,250
among other scent diffusing products, raw material products for volatile
liquid diffusion" (Answer 5; see also Final Action 6). However, because the
record does not sufficiently set forth the results of the Examiner's research,
the Examiner does not establish that Pierce Arnold teaches or otherwise
provides evidence that dried plant stem material from a so la plant of the
genus Aeschynomene L is recognized as a suitable wick material. Thus, we
conclude that the Examiner's basis for the rejection lacks the required
rational underpinnings in accordance with KSR, and, therefore, we do not
sustain the rejection of independent claims 1, 9, 13, and 22, and their
dependent claims 2--4, 10-12, 14--19, and 23.
The Provisional Obviousness-Type Double Patenting Rejection
We do not reach the merits of the Examiner's provisional double
patenting rejection because it would be premature to do so at this time,
consistent with the holding of Ex Parte Moncla, 95 USPQ2d 1884, 1885
(BP AI 2010) (precedential).
DECISION
We REVERSE the Examiner's rejection of claims 1--4, 9-19, 22,
and 23 under 35 U.S.C. § 103(a).
REVERSED
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