Ex Parte Roreger et alDownload PDFPatent Trial and Appeal BoardApr 25, 201310534797 (P.T.A.B. Apr. 25, 2013) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE 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 APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 10/534,797 05/12/2005 Michael Roreger 512100-2047 9006 7590 04/26/2013 Frommer Lawrence & Haug 745 Fifth Avenue New York, NY 10151 EXAMINER HWU, DAVIS D ART UNIT PAPER NUMBER 3752 MAIL DATE DELIVERY MODE 04/26/2013 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 MICHAEL ROREGER, MALGORZATA KLOCZKO, and MICHAEL FELDHEGE ____________ Appeal 2011-001821 Application 10/534,797 Technology Center 3700 ____________ Before STEVEN D. A. McCARTHY, ANNETTE R. REIMERS, and CARL M. DeFRANCO, Administrative Patent Judges. DeFRANCO, Administrative Patent Judge. DECISION ON APPEAL Appeal 2011-001821 Application 10/534,797 2 STATEMENT OF THE CASE Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s decision rejecting claims 1, 4-14 and 18-24. App. Br. 3. Claims 2, 3, and 15-17 have been cancelled. We have jurisdiction over the appeal under 35 U.S.C. § 6(b). We AFFIRM. CLAIMED INVENTION The claimed invention “relates to a dispenser for controlled release of volatile substances.” Spec. 1, ll. 4-5. Claim 1 is illustrative of the claims on appeal and calls for (with emphasis added): 1. A dispenser for controlled release of volatile substances, comprising a reservoir that is flat and has a top face and a bottom face, and which is covered on its top face with a layer of material impermeable to the volatile substances and covered on its bottom face by a first control element, said reservoir containing at least one volatile substance, said first control element is composed of a material which is permeable to the at least one volatile substance, and which exerts control over the release rate of said at least one volatile substance by means of diffusion dependent on the physical properties of the at least one volatile substance and the material properties of said permeable material of the first control element, and a second control element composed of a material which is impermeable to the at least one volatile substance, and which exerts control over the release rate of said at least one volatile substance by controlling the size of the surface of the first control element independent of the physical Appeal 2011-001821 Application 10/534,797 3 properties of the at least one volatile substance and the material properties of said permeable material of the first control element wherein the second control element is in the form of a film that possesses gaps wherein the number of said gaps is from 500 to 8000 gaps per m2 of said film; and wherein said first control element is pressure- sensitively adhesive and fully covered by said second control element such that during the use of the dispenser, the at least one volatile substance moves from the reservoir first through the first control element and then through the second control element wherein the first control element and the second control element jointly control release of the at least one volatile substance from the reservoir. EVIDENCE The Examiner relied upon the following prior art as evidence of unpatentability: Paul US 5,556,030 Sep. 17, 1996 REJECTIONS Claims 1, 4-14 and 18-24 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Paul. Ans. 3. ANALYSIS Claim 1 is the sole independent claim on appeal. Appellants argue claims 1, 4-14, and 22-24 as a group. Br. 5. We select claim 1 as representative of the group, with claims 4-14 and 22-24 standing or falling Appeal 2011-001821 Application 10/534,797 4 with claim 1. See 37 C.F.R. § 41.37(c)(1)(vii)(2011). Appellants provide separate arguments for claims 18-21 (Br. 9), which we address in turn. Claims 1, 4-14 and 22-24 Independent claim 1 requires, in relevant part, two control elements, one “permeable” and the other “impermeable,” that “jointly control” the release rate of the volatile substance contained within the reservoir. Br., Clms. Appx. The claim additionally recites that the first control element is “pressure-sensitively adhesive” and that the second control element “possesses gaps.” Id. The Examiner found that Paul discloses a dispenser comprising: (1) “a reservoir (holding scented material 58),” (2) a “first control element 50 [] composed of a material which is permeable to the [] volatile substance,” and (3) “a second control element 22 composed of a material which impermeable to the volatile substance.” Ans. 3. The Examiner also found that Paul’s two control elements “jointly control release” of the volatile substance from the reservoir because the first control element “exerts control over the release rate of the volatile substance by means of diffusion,” and the second control element “exerts control over the release rate of the volatile substance by controlling the size of the surface of the first control element [by means of] a film that possess[sic] gaps 52.” Id. 3-4. Appellants argue a number of flaws in the Examiner’s findings with respect to the control elements of Paul. Br. 5-9. We address them seriatim. First, while not disputing that Paul discloses the claimed first control element, Appellants contend that Paul lacks the second control element because “side walls or panels 22 and 23 in Paul are not control elements, but rather packaging for the dispenser.” Id. at 5. According to Appellants, Appeal 2011-001821 Application 10/534,797 5 Paul’s panel 22 is simply “torn open to expose the permeable membrane layers 50 and 55 to the atmosphere, i.e. the volatile substance passes through only one layer, not two.” Id. Appellants oversimplify, indeed ignore, Paul’s express teachings that impermeable panels 22 and 23 work in the same manner as the second control element called for by claim 1 (i.e., “by controlling the size of the surface of the first control element”). Specifically, the Examiner explained that “[t]he panel 22 can be peeled back as far as needed to release the desired amount of the substance and thus control the amount of substance released, therefore making the panel a control element.” Ans. 5. Paul fully supports this finding, disclosing a “variable opening system” (col. 2, ll. 28-30) in the form of a sealing strip 38 (fig. 4) or a flap 51 (figs. 5 & 6) that “can be opened minimally or completely in order to regulate the rate at which the fragrance is dispensed” (col. 3, ll. 25-34) “into the surrounding ambient air” (col. 11, l. 22). See also Paul, col. 9, ll. 6-9 (“by removing sealing strip 38 from the desired number of portals, the precisely desired rate of dispersion of the air freshening/deodorizing composition is realized”). Because Paul discloses that the sealing strip/flap regulate the size of the surface area exposed to the ambient air, we agree with the Examiner that Paul teaches the “second control element” as recited in claim 1. Second, Appellants contend that “Paul’s first control element is not adhesively attached to the second control element as in the [A]ppellants’ claimed invention.” Br. 6. Claim 1 recites that the “first control element is pressure-sensitively adhesive and fully covered by the second control element.” The Examiner explained that Paul fully meets this limitation “[s]ince the first control element 50 has the panel 22 attached (bonded) to Appeal 2011-001821 Application 10/534,797 6 it.” Ans. 5. In arguing that “[t]here is no disclosure in Paul” of a pressure sensitive adhesive, Appellants direct us to multiple passages in Paul but overlook the very passages that describe how the layers are adhered together. See Br. 6 (citations omitted). Specifically, Paul discloses that When fully assembled, membrane layers 50 and 55 are integrally bonded to each other and to side walls or panels 22 and 23 about their respective outer peripheral edges, to form an integrally sealed container or housing 21 which defines dispensing system 20. Paul, col. 13, ll. 9-13 (emphasis added). Moreover, Paul discloses that the layers may comprise “bonding films” where “secure affixation . . . is achieved by heat-sealing.” Id. at col. 10, ll. 11-30. As such, we discern no error in the Examiner’s findings regarding Paul’s disclosure of pressure- sensitively adhered control elements as called for by claim 1. We are not persuaded by Appellants’ arguments to the contrary. Appellants’ third argument is simply a permutation of its second argument, hinging on the Examiner’s purported interpretation of the term “adhesive.” Specifically, Appellants’ believe that the Examiner’s interpretation of adhesive is “overly broad” and “inconsistent” with the Specification. Br. 6-7. We are not persuaded by Appellants’ attempt to create an issue where none exists. First, we discern little, if any, distinction between Appellants’ definition of adhesive as “capable of bonding other substances by surface attachment” (Br. 7) (emphasis in original) and the Examiner’s interpretation of adhesive as “tending to adhere (to stick together)” (Ans. 5). A skilled artisan would view “bonding” two layers together to be essentially the same as adhering or sticking them together. Also, we are not persuaded by Appellants’ reading of specific examples of Appeal 2011-001821 Application 10/534,797 7 adhesives from the Specification into the claims. See Br. 7. While Appellants point us to examples of “tackifiers” and “polymer[s]” in the Specification, we are mindful not to import limitations of an embodiment from the specification into a claim if the claim language is broader than the embodiment. See SuperGuide Corp. v. DirecTV Enter., Inc., 358 F.3d 870, 875 (Fed. Cir. 2004) (“Though understanding the claim language may be aided by explanations contained in the written description, it is important not to import into a claim limitations that are not part of the claim. For example, a particular embodiment appearing in the written description may not be read into a claim when the claim language is broader than the embodiment”). Nevertheless, even accepting arguendo Appellants’ definition of adhesive (“capable of bonding other substances by surface attachment”), Paul falls squarely within that definition. As discussed supra, Paul discloses that, “by heat-sealing,” the layers are “integrally bonded in secure, affixed interengagement to each other.” Paul, col 9, l. 65, to col. 10, ll. 1 & 27-30. Given this disclosure, we agree with the Examiner that Paul teaches the “pressure sensitively adhesive” limitation of claim 1. Fourth, Appellants contend that Paul’s dispenser lacks one control element being “dependent on the physical properties of the volatile substance” and the other control element being “independent of the physical properties of the volatile substance.” Br. 8 (emphasis in original). While finding that “[t]he term ‘physical properties’ is so broad that it can be interpreted as being a vast number of things” (Ans. 5), the Examiner nevertheless explained that Paul’s control elements are independent of each other in that one controls the release rate “by means of diffusion” and the other does so “by controlling size of the surface” that is exposed to the Appeal 2011-001821 Application 10/534,797 8 ambient air (id. at 3-4). Paul fully supports the Examiner’s finding, describing the first control element as “a completely enclosed, independent dispersion controlling member” (col. 12, 16-17) that depends on the “molecular structure” of the volatile substance for rate of dispersion (col. 11, ll. 23-27), whereas, in the second control element, rate of dispersion depends on “the size of the portal or opening” in the impermeable membrane (col. 3, ll. 27-28). Thus, just as the “size of the surface” and “gaps” limitations in claim 1 control the release rate in a manner that is independent of the volatile substance’s physical properties, so too is the “size of the portal or opening” teaching of Paul. Lastly, Appellants contest the Examiner’s finding that modifying the number of gaps in Paul is a matter of obvious design choice. Br. 9. Claim 1 recites that the second control element has “from 500 to 8000 gaps per m2.” The Examiner surmised that “[t]he number of gaps as recited would have been a matter of design choice, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art.” Ans. 4. Paul supports this finding, describing the second control element 22 in terms of a “variable opening system” that has “a plurality of apertures” or “desired number of apertures” for controlling the rate of dispersion of the volatile substance. Paul, col. 2, ll. 28-30 and col. 3, ll. 43-55; see also col. 8, l. 50 - col. 9, l. 19. As such, we discern no error in the Examiner’s finding that the desired number of gaps or apertures is a matter of design choice. Appellants respond that “it would be non-sensical” to modify the apertures (gaps) in Paul’s second control layer 51, purporting that such a modification “would be leaking the volatile substance from the instant the Appeal 2011-001821 Application 10/534,797 9 dispenser was manufactured.” Br. 9. Appellants, however, cite no support for this contention. In contrast, the Examiner found that Paul’s gaps 52 do not leak. Ans. 5 (citing column 11, lines 5-15) (“dispensing system 20 is sealed and the [volatile] composition is not dispensed prematurely”). See also Paul, col. 2, ll. 17-23 (the dispenser is “a fully-integrated, leak-free container system”) and col. 3, ll. 12-24 (the dispensing system is “completely sealed within the container, incapable of being released until desired”). Given these disclosures, we agree with the Examiner that leaking is not an issue in the dispenser of Paul and find no basis for Appellants’ unsupported assertions to the contrary. For all of the foregoing reasons, we sustain the rejection of claims 1, 4-14, and 22-24 as rendered obvious by Paul. Claims 18-21 Claims 18-21 recite various materials and weights for the second control element. The Examiner found that such materials and material weight would have been “matters of design choice.” Ans. 4. Appellants do not dispute the Examiner’s findings that the limitations called for by claim 18-21 are matters of obvious design choice; instead, Appellants present the same arguments for these claims as were asserted for claim 1 (e.g., that Paul’s “use of such elements” would lead to “leaking”). Br. 9. We are not persuaded by these arguments as discussed supra with respect to claim 1. Accordingly, we sustain the rejection of claims 18-21 as rendered obvious by Paul. Appeal 2011-001821 Application 10/534,797 10 DECISION We AFFIRM the Examiner’s decision rejecting claims 1, 4-14, and 18-24. 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 Klh Copy with citationCopy as parenthetical citation