Ex Parte SELLDownload PDFPatent Trial and Appeal BoardJul 31, 201713759399 (P.T.A.B. Jul. 31, 2017) 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. 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. 2 Appeal 2015-004475 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. 3 Appeal 2015-004475 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 4 Appeal 2015-004475 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. 5 Appeal 2015-004475 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). 6 Appeal 2015-004475 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),” 7 Appeal 2015-004475 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, 8 Appeal 2015-004475 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 9 Copy with citationCopy as parenthetical citation