Ex Parte SELL

Patent Trial and Appeal Board

Jul 31, 2017

13759399 (P.T.A.B. Jul. 31, 2017)

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.
13/759,399 02/05/2013 Steven A. SELL 22400-USCIP 1635
147365 7590 08/02/2017
Silaan Disinensiina SJvstp.ms
EXAMINER
501 South 5th Street, 3rd Floor
Richmond, VA 23219-0501
CHEYNEY, CHARLES
ART UNIT PAPER NUMBER
3754
NOTIFICATION DATE DELIVERY MODE
08/02/2017 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
patent@barjos.com
sdslegaldocket @ silgands .com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte STEVEN A. SELL
Appeal 2015-004475
Application 13/759,399
Technology Center 3700
Before LYNNE H. BROWNE, THOMAS F. SMEGAL, and
BRENT M. DOUGAL, Administrative Patent Judges.
SMEGAL, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Steven A. Sell (Appellant)1 seeks our review under 35U.S.C. § 134 of
the Examiner’s rejection2 under 35 U.S.C. § 103(a) of claims 1—11 as
unpatentable over Heirman (US 7,959,040 B2, iss. June 14, 2011), Geier
(US 8,418,892 B2, iss. Apr. 16, 2013), and Groh (US 2004/0188473 Al,
pub. Sep. 30, 2004); and of claim 12 as unpatentable over Abplanalf (US
5,018,647, iss. May 28, 1991) andBrunerie (US 7,611,032 B2, iss. Nov. 3,
2009). We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 According to Appellant, the real party in interest is MeadWestvaco Calmar,
Inc. Appeal Br. 3.
2 Appeal is taken from the adverse decision of the Examiner as set forth in
the Final Office Action, dated March 18, 2014 (“Final Act.”).
Appeal 2015-004475
Application 13/759,399
CLAIMED SUBJECT MATTER
Claims 1, 6, and 12 are independent claims.3 Claim 1 is reproduced
below and illustrates the claimed subject matter, with disputed limitations
emphasized.
1. An aerosol actuator, comprising:
a locking ring comprising at least one lock stop;
a base snapped into the locking ring;
a trigger attached to the base, the trigger comprising:
a cap portion;
a trigger portion;
a manifold integrally formed with the trigger portion;
a spring; and
a locking post,
wherein the locking post and the lock stop are aligned in a
locked position to prevent actuation of the aerosol trigger
sprayer and are not aligned in an unlocked position to
allow actuation of the aerosol trigger sprayer.
ANALYSIS
Obviousness of Claims 1—11 over Heirman, Geier, and Groh
Claims 1, 2, 4, and 5
Appellant argues claims 1, 2, 4, and 5 together in contesting the
rejection of these claims as obvious over Heirman, Geier, and Groh. See
Appeal Br. 8—10; Reply Br. 2—3. We select claim 1 as the representative
claim for this group, and the remaining claims stand or fall with claim 1.
See 37 C.F.R. § 41.37(c)(l)(iv).
Regarding claim 1, the Examiner finds that Heirman discloses an
aerosol actuator having, inter alia, a base that inherently snaps into a locking
3 A correct copy of the claims on Appeal is included with the Correction to
the Appeal Brief submitted October 8, 2014.
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Application 13/759,399
ring (32),4 a trigger (23) attached to the base, including a cap portion, trigger
portion (24), manifold (19), spring (26), and locking post (25), where the
“spring is attached to an integral trigger and manifold.” Final Act. 3. The
Examiner also finds “locking ring (32) includes a lock stop (33) that
interacts with the trigger’s locking post when aligned to prevent actuation in
a locked position and unaligned in a unlocked position.” Id. at 3^4 (citing
Heirman, col. 5,11. 43^46). Although Heirman doesn’t disclose “a manifold
integrally formed with the trigger portion and a separate base from the
trigger portion,” the Examiner determines that “Geier teaches an integrated
manifold (13) and trigger portion (11) and separates the base (20) from the
trigger portion and a locking ring (14).” Id. at 4 (citing Geier, Figs 1, 2; col.
2,11. 63-64).
From the foregoing, the Examiner reasons that it would be obvious “to
add an integrated trigger/manifold [to Heirman] and to separate the trigger
portion from the base as taught by Geier,” explaining that “[s]ince it has
been [] held that forming in one piece an article which was formerly been
formed in two pieces and put together[,] involves only routine skill in the art
to integrate the manifold with the trigger portion.” Id. The Examiner also
explains that “constructing a formerly integral structure in various elements
involves only routine skill in the art as in separating the trigger portion from
the base,” pointing out that “separating these parts would provide a greater
range of maintenance so if one piece failed the whole wouldn't have to be
replaced.” Id.
4 The Examiner explains that Groh describes the same structure as Heirman
and teaches that it “snap fits a base into a ring for rotational purposes,” citing
Groh at Figure 5 and 119.
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Application 13/759,399
In taking issue with the Examiner’s findings and conclusions,
presented in the Final Office Action, Appellant repeats that “Heirman does
not disclose a ‘manifold integrally formed with the trigger portion’ and
[contends that] there is no reason why one of ordinary skill in the art would
combine Heirman with Geier to make obvious the ‘aerosol actuator’ recited
in claim 1.” Appeal Br. 8. However, Appellant doesn’t explain why the
Examiner’s articulated reasoning is flawed.
Furthermore, we agree with the Examiner that Geier “teaches both
parts being integral,” pointing out that “forming in one piece an article
which has formerly been formed in two pieces and put together would have
been obvious to one of ordinary skill since it involves only routine skill in
the art.” Ans. 3. See In re Larson, 340 F.2d 965, 968 (CCPA 1965),
holding “that the use of a one piece construction instead of the structure
disclosed in [the prior art] would be merely a matter of obvious engineering
choice.” See also Howard v. Detroit Stove Works, 150 U.S. 164, 170 (1893),
holding that “The prior art grate ‘is cast in two pieces, while the [claimed
invention] is cast in one piece. This does not involve patentable invention.’”
Appellant next contends that “[n]owhere in Geier is there any mention
of a trigger; instead Geier discloses an ‘actuator button 11,’” and that “[o]ne
skilled in the art of sprayers would understand that for sprayers, a trigger
and a button are different structures,” that “cannot simply be combined to
arrive at the claimed invention.” Appeal Br. 9—10.
However, the Examiner has the better argument, explaining that “both
devices require depression of a valve mounted to the top portion of an
aerosol can,” that “[b]oth implement a trigger, a small device that releases a
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Application 13/759,399
spring or catch and so sets off a mechanism, that both work to accomplish
this by pressing the valve downwards in order to open the valve to dispense
fluid,” while working “in concert with the manifold in order to accomplish
this desired result.” Ans. 2. The Examiner also points out that “[t]he
difference being that one involves a top mounted trigger and the other
involves a front mounted trigger but both are considered art recognized
equivalents since both are known to provide [the] same intended purpose.”
Id. Further, we note that the rejection does not propose substituting Geier’s
button for Heirman’s trigger. See Final Act. 4. Rather, the rejection
proposes modifying Heirman’s trigger to be integral with its manifold in
view of Geier’s teaching of such integration. See id.
Appellant further contends that “[i]f Heirman is provided with ‘a
manifold integrally formed with the trigger portion’ then instead of moving
pin 12 up and down, an undesirable bending force might be exerted on pin
12.” Appeal Br. 10; Reply Br. 3. However, we agree with the Examiner
that “[i]f an undesirable force were to arise the bending hinge (26) [of
Heirman] would absorb such a force insuring the proper function of the
device.” Ans. 3. Furthermore, Appellant’s contention is unavailing as it is
not commensurate with the scope of claim 1, which is not limited to a
manifold that is not subjected to an undesirable bending force, but merely to
“a manifold integrally formed with the trigger portion.” As we are
instructed by our reviewing court, “limitations are not to be read into the
claims from the [Specification.” In re Van Geuns, 988 F.2d 1181, 1184
(Fed. Cir. 1993) (citing In re Zletz, 893 F.2d 319, 321 (Fed. Cir. 1989)).
Based on the foregoing, we sustain the Examiner’s rejection of claims
1, 2, 4, and 5 over Heirman, Geier, and Groh.
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Application 13/759,399
Claim 3
Appellant recites the further limitation of claim 3 and contends that
“even if the portion of structure 25 [of Heirman] immediately adjacent
trigger portion 23 could be considered a ‘locking post,’ the middle portion of
structure 25 is a ‘forked horizontal arm 25’ that ‘presses the pin 12 via the
abutment surface 28 downwards,” so that “[i]t is this ‘forked horizontal arm’
of Heirman, rather than the ‘locking post,’ that extends off the spring.”
Appeal Br. 3; Reply Br. 3. Even though horizontal arm 25 is integral with
other features of Heirman, we agree with the Examiner that “this feature
covers the locking post limitations as claimed in this application and its dual
functionality does not diminish the fact that it teaches all the structure as
claimed.” Ans. 3. Furthermore, we find Appellant’s contention consists of
“a mere recitation of the claim elements and a naked assertion that the
corresponding elements were not found in the prior art.” See In re Lovin,
652 F.3d 1349, 1357 (Fed. Cir. 2011). Arguments of this nature do not
satisfy the requirements of 37 C.F.R. § 41.37(c)(l)(iv). In re Lovin, 652
F.3d at 1357.
Thus, we sustain the Examiner’s rejection of claim 3 over Heirman,
Geier, and Groh.
Claim 6
Appellant argues claims 6—11 together in contesting the rejection of
these claims as obvious over Heirman, Geier, and Groh. See Appeal Br.
11—12. We select claim 6 as the representative claim for this group, and the
remaining claims stand or fall with claim 6. See 37 C.F.R. § 41.37(c)(l)(iv).
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Application 13/759,399
In addition to the Examiner’s reasons for rejecting claim 1 over
Heirman, Geier, and Groh, the rejection of claim 6 also relies on Heirman
for disclosing that “the trigger portion and spring are integral with the cap
portion.” Final Act. 5 (citing Heirman, Fig. 2, Col. 5,11. 9—11).
Appellant responds that “merely mounting ‘this free end of the
horizontal arm 25 ... to the cap 4’ does not make Heirman’s ‘trigger portion
and spring portion integral with the cap portion’ as recited in Claim 6.”
Appeal Br. 12. However, Appellant has provided no evidence that forming
the ‘trigger portion and spring portion integral with the cap portion’ would
lead to a different function or unexpected result. See In re Kuhte, 526 F.2d
553, 555 (CCPA 1975) (use of claimed feature solves no stated problem and
presents no unexpected result and “would be an obvious matter of design
choice within the skill of the art” (citations omitted); see also In re Chu, 66
F.3d 292, 298—99 (Fed. Cir. 1995) (“design choice” is appropriate where the
applicant fails to set forth any reason why the differences between the
claimed invention and the prior art would result in a different function).
Thus, we sustain the Examiner’s rejection of claims 6—11 over
Heirman, Geier, and Groh.
Obviousness of Claim 12 over Abplanalf and Brunerie
Regarding claim 12, the Examiner finds that Abplanalf discloses an
aerosol actuator including, inter alia, a container (30), base (26), and a
trigger attached to the base, but does not disclose “a locking ring with a
lock stop that interacts with the trigger’s locking post when aligned to
prevent actuation.” Final Act. 6. The Examiner looks to Brunerie for
teaching “a locking ring (17) with a lock stop (190b) attached to base (22),”
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Application 13/759,399
and “a plurality of locking post (281, 281a) extending from the spring (20)
or trigger portion (21)[], wherein the post aligns with stop for a locking
position and out of alignment in a unlocked position.” Id. (citing Brunerie,
Figs. 4—5; col. 7,11. 35—38 and col. 8,11. 5—8),
From the foregoing, the Examiner reasons that it would have been
obvious “to add a locking mechanism as taught by Brunerie[, since] such a
modification is known in the art to alleviate accidental discharge of product
from the device. Id. at 7. Although acknowledging that the “combination of
Abplanalf in view of Brunerie does not explicitly disclose the method of
locking and unlocking actuation of the aerosol sprayer,” the Examiner
reasons that “the combination does teach or disclose all of the structural
limitations of the claimed invention and is therefore capable of inherently
performing the method set forth in these claims”, concluding that “[u]nder
the principles of inherency, if a prior art device, in its normal and usual
operation, would necessarily perform the method claimed, then the method
claimed will be considered to be anticipated by the prior art device.” Id.
(citing MPEP § 2112.02).
In response, Appellant first contends that “[njeither of the references
suggest three components-‘a locking ring.. .a base snapped into the locking
ring.. .a trigger attached to the base’-as recited by claim 12.” Appeal Br. 13.
(emphasis added). Appellant continues by contending that claim 12
“specifically recites ‘a trigger ... comprising: a cap portion; a trigger portion;
a manifold integrally formed with the trigger portion; a spring; and a locking
post,’” and that “[njeither Abplanalf, Brunerie et al. nor the combination
thereof disclose such structure.” Id. at 14. However, Appellant’s
contentions are based on limitations recited by claim 1, not claim 12. Thus,
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Application 13/759,399
Appellant’s contentions are unavailing as they are not commensurate with
the scope of claim 12. Appeal Br. 16-17, Claims App. As we are instructed
by our reviewing court, “limitations are not to be read into the claims from
the [Specification.” In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir.
1993).
For the foregoing reason, we summarily sustain the rejection of claim
12 over Abplanalf and Brunerie.
DECISION
We AFFIRM the Examiner’s rejections.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(l)(iv).
AFFIRMED
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