10416170 (B.P.A.I. Mar. 16, 2010)

Ex Parte McLisky

Board of Patent Appeals and InterferencesMar 16, 2010

10416170 (B.P.A.I. Mar. 16, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES ____________ Ex parte NIGEL HAIG McLISKY ____________ Appeal 2009-003913 Application 10/416,170 Technology Center 3700 ____________ Decided: March 16, 2010 ____________ Before STEVEN D.A. McCARTHY, MICHAEL W. O’NEILL, and FRED A. SILVERBERG, Administrative Patent Judges. O’NEILL, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Nigel Haig McLisky (Appellant) appeals under 35 U.S.C. § 134 from the Examiner’s decision finally rejecting claims 1-17 under 35 U.S.C. Appeal 2009-003913 Application 10/416,170 2 § 102(b) as anticipated by Ganzeboom (WO 95/29106, published Nov. 2, 1995). We have jurisdiction under 35 U.S.C. § 6(b) (2002). We REVERSE. The Invention The claims on appeal relate to a dispensing means to release a spray into the air. Spec. 1:6-8. Claim 1, reproduced below, is illustrative of the subject matter on appeal. 1. Dispensing means having an integral self contained automatic spray dispenser plus a wall mountable housing, there being means which, when the dispenser is in use, holds the dispenser with respect to the housing such that the dispenser is substantially concealed by the housing such that the dispenser, when in use, automatically and periodically emits a spray of spray material to an atmosphere outside of the housing, and wherein the dispenser is detachable from the housing when desired so that when it is placed apart from the housing and is in use it further automatically and periodically emits a spray of the spray material to a further atmosphere; the automatic dispenser being automatic in that it has means causing, when the dispenser is in use, periodic emission of the sprays without human intervention after being set into operation; the dispenser further characterised in that it has a spray delivery portion and a spray material storage portion, the spray material storage portion holding a supply of the spray material, and wherein the spray material storage portion is detachable from the spray delivery portion such that the spray material storage portion and thus the spray material can be replaced. The Rejections The Examiner posits that a person of ordinary skill in the art knows reasonable methods and techniques of assembly in order to have the dispenser of Ganzeboom operate as set forth in the claims (Ans. 5, 6). Appeal 2009-003913 Application 10/416,170 3 Alternatively, the Examiner posits the leads 17 must be of sufficient length to allow removal of the attachment 5 from housing 1 (Ans. 6). Contentions Appellant contends that the Examiner is speculating on all points regarding the assembly and disassembly of Ganzeboom (App. Br. 9, 10). Appellant contends that the Examiner’s artifical dismantling and rearranging of components in Ganzeboom is not inherent in Ganzeboom and is speculative on the part of the Examiner because nothing in Ganzeboom suggests taking the device apart in the manner urged by the Examiner and nothing in Ganzeboom suggests the dispenser would function, if so dismantled (App. Br. 10). OPINION Issue The determinative issue in this appeal is: Whether Ganzeboom inherently discloses that when the dispenser is detached from and placed apart from the housing, it operates to automatically and periodically emit a spray into an atmosphere. Pertinent Facts 1. Ganzeboom is silent as to the operation of the dispenser when the dispenser is detached from the housing. Ganzeboom, passim. Principles of Law A patent applicant is free to recite features of an apparatus either structurally or functionally. See In re Swinehart, 439 F.2d 210, 212 (CCPA Appeal 2009-003913 Application 10/416,170 4 1971) (“[T]here is nothing intrinsically wrong with [defining something by what it does rather than what it is] in drafting patent claims.”). “A claim is anticipated only if each and every element as set forth in the claim is found, either expressly or inherently described, in a single prior art reference.” Verdegaal Bros., Inc. v. Union Oil Co. of Cal., 814 F.2d 628, 631 (Fed. Cir. 1987). The express, implicit, and inherent disclosures of a prior art reference may be relied upon in the rejection of claims under 35 U.S.C. §§ 102 or 103. “The inherent teaching of a prior art reference, a question of fact, arises both in the context of anticipation and obviousness.” In re Napier, 55 F.3d 610, 613 (Fed. Cir. 1995). However, the fact that a certain result or characteristic may occur or be present in the prior art is not sufficient to establish the inherency of that result or characteristic. See In re Rijckaert, 9 F.3d 1531, 1534 (Fed. Cir. 1993) (reversed rejection because inherency was based on what would result due to optimization of conditions, not what was necessarily present in the prior art); In re Oelrich, 666 F.2d 578, 581-82 (CCPA 1981). To establish inherency, the extrinsic evidence “must make clear that the missing descriptive matter is necessarily present in the thing described in the reference, and that it would be so recognized by persons of ordinary skill.” “Inherency, however, may not be established by probabilities or possibilities. The mere fact that a certain thing may result from a given set of circumstances is not sufficient.” In re Robertson, 169 F.3d 743, 745 (Fed. Cir. 1999) (citations omitted). “In relying upon the theory of inherency, the examiner must provide a basis in fact and/or technical reasoning to reasonably support the Appeal 2009-003913 Application 10/416,170 5 determination that the allegedly inherent characteristic necessarily flows from the teachings of the applied prior art.” Ex parte Levy, 17 USPQ2d 1461, 1464 (BPAI 1990). Analysis The Examiner correctly found that Ganzeboom’s dispenser could be detached from the housing. The Examiner correctly found that the dispenser could be placed apart from the housing. The question becomes whether Ganzeboom’s dispenser can operate in the manner set forth in the claims when it is detached from the housing. Ganzeboom is silent as to the operation of the dispenser when the dispenser is detached from the housing. Fact 1. As such, it becomes incumbent upon the Examiner to provide a basis in fact and/or technical reasoning that would support a finding that Ganzeboom could function when detached, as set forth in the claims. The Examiner’s dual interpretation of Ganzeboom is not sufficient to provide a basis in fact or technical reasoning to show why it necessarily flows from Ganzeboom that the dispenser, when it is placed apart from the housing and is in use, automatically and periodically emits a spray into the atmosphere as set forth in the claims. Further, it appears that the Examiner is confusing issues of obviousness with anticipation regarding what is required when finding that a reference inherently discloses particular subject matter set forth in a claim. For the foregoing reasons, the Examiner’s rejection cannot be sustained. Appeal 2009-003913 Application 10/416,170 6 CONCLUSION Ganzeboom does not inherently disclose that when the dispenser is detached from and placed apart from the housing, it operates to automatically and periodically emit a spray into an atmosphere. DECISION The Examiner’s decision to reject the claims on appeal is reversed. REVERSED mls S.C. JOHNSON & SON, INC. 1525 HOWE STREET RACINE, WI 53403-2236