Ex Parte McLisky

Patent Trial and Appeal Board

Feb 28, 2013

10416170 (P.T.A.B. Feb. 28, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte NIGEL HAIG McLISKY
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Appeal 2012-005052
Application 10/416,170
Technology Center 3700
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Before STEVEN D.A. McCARTHY, GAY ANN SPAHN and
EDWARD A. BROWN, Administrative Patent Judges.

McCARTHY, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING 1

The Appellant
1
has filed a request for rehearing under 37 C.F.R. 2
41.52(a)(1)(2011) [“Request”].
2
The Request seeks reconsideration of our 3
Decision on Appeal mailed March 4, 2013 [“Decision of March 4, 2013”] 4

1
The Appellant identifies the real party in interest as S.C. Johnson &
Son, Inc. of Racine, Wisconsin. The application underlying this appeal was
also the subject of Appeal 2009-003913, decided March 16, 2010.

2
As used herein, the word “Request” shall refer to the Request for
Rehearing dated May 3, 2013 and the abbreviation “Br.” shall refer to the
Appeal Brief dated October 28, 2011.
Appeal 2012-005052
Application 10/416,170

2
sustaining the Examiner’s final decision rejecting claims 1-14, 16 and 17 1
under 35 U.S.C. § 102(b) as being anticipated by Payne (US 6,264,548 B1, 2
issued Jul. 24, 2001).
3
We have jurisdiction under 35 U.S.C. § 6(b). 3
We grant the Request to the extent that we have considered the 4
Appellant’s arguments; and we further explain the findings and reasoning set 5
forth in the Decision of March 4, 2013.
4
Otherwise, the Request is denied. 6
The present opinion incorporates by reference the Findings of Fact (“FF”) 7
listed on pages 4-7 of the Decision of March 4, 2013. 8
9
CLAIM INTERPRETATION 10
The Appellant correctly points out that the first step in reviewing a 11
rejection of a claim under § 102(b) is to properly interpret any disputed 12
claim language. See Medichem, S.A. v. Rolabo, S.L., 353 F.3d 928, 933 13
(Fed. Cir. 2003). (See also Request 5). As in the Decision of March 4, 14
2013, we address here only the language of representative claim 1. (See 15
Decision of March 4, 2013 at 3, ll. 12-17). Claim 1, which is reproduced in 16
17

3
The Decision of March 4, 2013 did not sustain the rejection of claims
1-14, 16 and 17 under § 102(b) as being anticipated by Liao (US 5,487,502,
issued Jan. 30, 1996). That portion of the Decision of March 4, 2013 is not
at issue here.

4
We also take this opportunity to correct a typographical error in the
Decision of March 4, 2013. On page 3, line 23, “Liao” should be --Payne--.
(See Request 8-9).

Appeal 2012-005052
Application 10/416,170

3
its entirety in the Decision of March 4, 2013, recites in part “[d]ispensing 1
means having an integral self contained automatic spray dispenser.”
5
2
The Appellant contends that Payne cannot anticipate claim 1 because 3
Payne’s spray dispenser requires a battery or internal power supply to be 4
automatic; and because Payne’s spray dispenser lacks a battery or internal 5
power source which is integral and self contained with the rest of the spray 6
dispenser. (See Request 5-8; see also Br. 12). A claim under examination is 7
given its broadest reasonable interpretation consistent with the underlying 8
specification. In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. 9
Cir. 2004). In the absence of an express definition of a claim term in the 10
specification or a clear disclaimer of scope, the claim term is interpreted as 11
broadly as the ordinary usage of the term by one of ordinary skill in the art 12
reasonably would permit. In re ICON Health & Fitness, Inc., 496 F.3d 13
1374, 1379 (Fed. Cir. 2007); In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 14
1997). 15
The broadest reasonable interpretation of claim 1 encompasses 16
dispensing means having a spray dispenser capable of operation using power 17
received from either an internal or an external power source. Claim 1 18
expressly recites that the recited spray dispenser “has a spray delivery 19
portion and a spray material storage portion.” Claim 1 does not recite that 20
the dispensing means must include a battery or an internal power source, 21

5
The “dispensing means” which constitutes the preamble of claim 1
does not invoke 35 U.S.C. § 112, sixth paragraph (2011) because: (1)
sufficient structure is recited in the body of the claim to define the
“dispensing means” without reference to corresponding structure in the
Specification; and (2) the preamble does not recite a function by which one
might identify corresponding structure in the Specification. See Rodime
PLC v. Seagate Tech., Inc., 174 F.3d 1294, 1302 (Fed. Cir. 1999).
Appeal 2012-005052
Application 10/416,170

4
much less that the dispensing means must have a spray dispenser including a 1
battery or an internal power source. This silence implies that the dispensing 2
means of claim 1 need not include a spray dispenser including a battery or 3
other internal power source. 4
A broad interpretation of claim 1 which encompasses dispensing 5
means having an automatic spray dispenser capable of operation using 6
power received from either an internal or an external power source is 7
consistent with the disclosure in the Appellant’s Specification. For example, 8
Figure 2 of the Appellant’s drawing depicts a spray dispenser 5 including a 9
spray head 6. The Specification states that the “spray head 6 may have a 10
battery or other power source to energise its internal components.” (Spec. 5, 11
l. 26 – 6, l. 1 (emphasis added)). The Specification then goes on to state that 12
“[i]n some cases the spray dispenser 5 may be powered by a DC supply via a 13
transformer connected [to] the building’s main supply” (Spec. 7, ll. 23-25). 14
Such statements fail to clearly disclaim dispensing means including spray 15
dispensers energized by external power sources. See ICON Health & 16
Fitness at 1379. 17
The term “[d]ispensing means having an integral self contained 18
automatic spray dispenser” limits the claimed dispensing means to a 19
dispensing means including an automatic spray dispenser; and also limits 20
that automatic spray dispenser to an automatic spray dispenser which is 21
integral and self contained. Claim 1 formally defines the term “automatic” 22
as used in the limitation “having an integral self contained automatic spray 23
dispenser.” That is, claim 1 recites that the dispenser is “automatic in that it 24
has means causing, when the dispenser is in use, periodic emission of the 25
sprays without human intervention after being set into operation.” The 26
Appeal 2012-005052
Application 10/416,170

5
Appellant argues that these terms and limitations, when read together, 1
expressly or inherently limit the claimed dispensing means to dispensing 2
means having a spray dispenser including a battery or internal power source 3
integral and self contained with other components of the dispenser for 4
energizing the dispenser to periodically emit sprays of the spray material. 5
(See Request 6-7). 6
Claim 1 defines the term “automatic” in terms of having an element 7
recited as “means causing, when the dispenser is in use, periodic emission of 8
the sprays without human intervention after being set into operation” 9
(emphasis added). This element is recited using the term “means” in 10
conjunction with a specified function to be performed by the means. Claim 11
1 does not recite sufficient structure to support the performance of the 12
specified function. Therefore, the element must be interpreted in accordance 13
with the sixth paragraph of 35 U.S.C. § 112 (2011): 14
An element in a claim for a combination may be 15
expressed as a means or step for performing a 16
specified function without the recital of structure, 17
material, or acts in support thereof, and such claim 18
shall be construed to cover the corresponding 19
structure, material, or acts described in the 20
specification and equivalents thereof. 21
See also Rodime PLC v. Seagate Tech., Inc., 174 F.3d 1294, 1302 (Fed. Cir. 22
1999). 23
The Appellant’s Specification identifies the spray head 6 of the spray 24
dispenser 5, including a solenoid valve and “electronics to regulate the 25
opening and closing of the valve,” as structure corresponding to the “means 26
causing, when the dispenser is in use, periodic emission of the sprays 27
without human intervention after being set into operation:” 28
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Application 10/416,170

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The spray head 6 is preferably capable of 1
automatically dispensing periodic metered doses of 2
the spray material as a spray (eg a mist) into the 3
atmosphere surrounding the housing 1. The spray 4
head 6 may have a battery or other power source to 5
energise its internal components. The internal 6
components may include a solenoid valve (not 7
shown) to regulate the flow of spray material from 8
the canister 7 to the spray head 6, and electronics 9
to regulate the opening and closing of the valve in 10
terms of timing and quantity of release of the spray 11
material. 12
(Spec. 5, l. 24 – 6, l. 5 (emphasis added)). As noted earlier, this passage 13
does not state that the spray head 6 must have a battery or other internal 14
power source to energize its internal components. In fact, the Specification 15
later suggests that the spray head 6 may draw power from an external power 16
source. (See Spec. 7, l. 23-25). Therefore, the recitation that the dispenser is 17
“automatic in that it has means causing, when the dispenser is in use, 18
periodic emission of the sprays without human intervention after being set 19
into operation” does not limit the automatic spray dispenser recited in claim 20
1 to one having means including a battery or internal power source. 21
An “automatic spray dispenser” recited in claim 1 is an “integral self 22
contained automatic spray dispenser” in the broadest reasonable sense of the 23
term if those internal components, which the automatic spray dispenser must 24
possess, are integral and self contained. Since claim 1 does not expressly or 25
inherently require the recited automatic spray dispenser to include a battery 26
or internal power source, the recited automatic spray dispenser may be 27
integral and self contained even if it does not include a battery or internal 28
power source integral and self contained with other components of the spray 29
dispenser in order to energize the other components. 30
Appeal 2012-005052
Application 10/416,170

7
ANTICIPATION 1
The dispensing means described by Payne lacks a spray dispenser 2
including a battery or an internal power source integral and self contained 3
with other components of the spray dispenser. (See Decision of March 4, 4
2013 at 5-6 (FF 13)). Nevertheless, Payne’s dispensing means does have a 5
spray dispenser 10 including a spray delivery portion (namely, the 6
electrically operated actuator 14 and a nozzle 18 of the aerosol container 7
20); and a spray material storage portion (namely, the body 50 of the aerosol 8
container 20). (See id. at 4 (FF 7); see also Payne, col. 4, ll. 61-65). Payne’s 9
spray dispenser 10 also is “automatic in that it has means causing, when the 10
dispenser is in use, periodic emission of the sprays without human 11
intervention after being set into operation” (namely, a solenoid valve, that is, 12
a valve in the spray nozzle 18 of Payne’s aerosol container 20 actuated by a 13
solenoid in the electrically operated actuator 14; and “electronics” in the 14
form of the controller mounted on the printed circuit board 77). (See id. at 15
4-5 (FF 7-9); see also Payne, col. 4, ll. 61-65 and col. 5, ll. 26-28 and 33-41; 16
cf. Spec. 5, l. 24 – 6, l. 5 (describing the structure corresponding to the 17
recited means)). 18
The Appellant argues that “Payne’s components are scattered and 19
dispersed within a housing rather than being integral and self-contained.” 20
(Request 8, quoting App. Br. 12). Payne’s automatic spray dispenser 10 is 21
an integral self contained automatic spray dispenser in that the internal 22
components of the spray dispenser 10, including the aerosol container 20, 23
the electrically operated actuator 14 and the circuit board 77 holding the 24
controller are mounted on a detachable plate 79. (Decision of March 4, 2013 25
at 4-5 (FF 8, 11 and 12)). As such, the spay dispenser 10 may be detached 26
Appeal 2012-005052
Application 10/416,170

8
from its housing 24 as a unit and placed apart from the housing. (Id. (FF 1
12)). Payne’s spray dispenser 10, when placed apart from the housing 24 2
and in use (that is, energized by an internal or external source), necessarily 3
would automatically and periodically emit a spray. (Decision of March 4, 4
2013 at 6 (FF 14).
6
The Appellant has not identified any error in the 5
Examiner’s finding that Payne anticipates representative claim 1. 6
7
DECISION 8
Having addressed those points which the Appellant contends were 9
misapprehended or overlooked, we GRANT the Request solely to the extent 10
that we have considered the Appellant’s arguments; we have corrected a 11
typographical error in the Decision of March 4, 2013 identified in the 12
Request; and we have further explained the findings and reasoning set forth 13
in the Decision of March 4, 2013. 14
15

6
The Appellant argues that either FF 12 or FF 14 is erroneous because
“the Payne device does not have the identical (or substantially identical)
structure as the dispenser in the claims at issue.” (Request 11). While
Payne does describe dispensing means including each and every limitation
of representative claim 1, we note that our reliance on In re Best, 562 F.2d
1252 (CCPA 1977) in FF 12 and FF 14 was not predicated on a direct
comparison between the dispensing means described by Payne and the
subject matter of claim 1.

Appeal 2012-005052
Application 10/416,170

9
Except to the extent expressly granted, we DENY the Request. 1
No time period for taking any subsequent action in connection with 2
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv) (2011). 3
4
5
GRANTED-IN-PART 6
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10
11
12
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14
15
16
ELD 17