Ex Parte Tsengas

Board of Patent Appeals and Interferences

Oct 12, 2010

11072750 (B.P.A.I. Oct. 12, 2010)

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.
11/072,750 03/04/2005 Steven Tsengas 1554 7042
33055 7590 10/13/2010
PATENT, COPYRIGHT & TRADEMARK LAW GROUP
4199 Kinross Lakes Parkway
Suite 275
RICHFIELD, OH 44286
EXAMINER
NGUYEN, TRINH T
ART UNIT PAPER NUMBER
3644
MAIL DATE DELIVERY MODE
10/13/2010 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte STEVEN TSENGAS
____________

Appeal 2009-008625
Application 11/072,750
Technology Center 3600
____________

Before ROBERT E. NAPPI, MURRIEL E. CRAWFORD, and JENNIFER
D. BAHR, Administrative Patent Judges.

BAHR, Administrative Patent Judge.

DECISION ON APPEAL1

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.
Appeal 2009-008625
Application 11/072,750

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STATEMENT OF THE CASE
Steven Tsengas (Appellant) appeals under 35 U.S.C. § 134 (2002)
from the Examiner’s decision rejecting claims 1-3, 5, and 6 under 35 U.S.C.
§ 102(b) as being anticipated by Suchowski (US 6,415,741 B2, iss. Jul. 9,
2002); claims 4, 7, and 8 under 35 U.S.C. § 103(a) as being unpatentable
over Suchowski; and claims 9-19 under 35 U.S.C. § 103(a) as being
unpatentable over Suchowski and Munro (US 2,086,631, iss. Jul. 13, 1937).
We have jurisdiction over this appeal under 35 U.S.C. § 6 (2002).
The Invention
Appellant’s claimed invention is directed to a kit comprising a
housing, a retention element, and scented additives for providing aroma
therapy to a feline. Spec. 1:22-25.
1. An aroma therapy kit for felines comprising the combination
of:
a housing;
at least one retention element disposed inside of said
housing; and
at least one additive delivered to said at least one
retention element.

SUMMARY OF DECISION
We AFFIRM-IN-PART.

OPINION
Anticipation – Suchowski
We adopt the Examiner’s findings reading the elements of claims 1-3,
5, and 6 on the structure of Suchowki (Ans. 3), with the exception that we
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find that the first and second halves 506, 508 of Suchowski’s frame 502
satisfy the first and second components required in claim 22.
As correctly pointed out by the Examiner (Ans. 9), Appellant’s
arguments that Suchowski does not satisfy all of the limitations of claims 1
and 2 (App. Br. 6) are directed to limitations not contained in the claims, and
thus do not persuade us that the Examiner’s rejection should be reversed.3
Appellant’s arguments with respect to means-plus-function recitations as
provided in 35 U.S.C. § 112, sixth paragraph (Reply Br. 2), are inapposite,
because Appellant’s claims do not express any claim elements as means for
performing a specified function without a recital of structure.
In contesting the rejection of claims 3 and 5, Appellant merely points
out additional limitations of the claims. App. Br. 6-7. Such statements do
not constitute arguments for the separate patentability of the claims. 37
C.F.R. § 41.37(c)(1)(vii). Thus, claims 3 and 5 fall with claim 1.
In contesting the rejection of claim 6, which requires that “said at least
one additive is housed in a dispenser,” Appellant argues that “nowhere in
Suchowski is a dispenser taught, disclosed or suggested.” App. Br. 7. We
do not agree with Appellant.
As alluded to by Appellant (see id.), Suchowski discloses “[p]rior (or
after) to disposal in the frame 502, the aroma insert 586 is saturated, such as
by dipping or injection filling with a flavor or aroma additive” (col. 7, ll. 49-

2 The Examiner inadvertently referred to the reference numerals 502 and
580, which Suchowski uses to denote the frame and flat portions,
respectively, to identify the structure satisfying the claimed first and second
components.
3 It is well established that limitations not appearing in the claims cannot be
relied upon for patentability. In re Self, 671 F.2d 1344, 1348 (CCPA 1982).
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51). The flavor or aroma additive in which the aroma insert 586 is dipped,
or which is injected into the aroma insert 586, is not simply floating in air; it
necessarily must be housed in some type of reservoir, which dispenses the
additive, either by having the aroma insert dipped therein or by injection.
Accordingly, the Examiner’s finding that Suchowski’s additive “is
inherently housed in some sort of dispenser” (Ans. 10) is reasonably
supported by Suchowski. Notably, claim 6 does not require that the
dispenser in which the additive is housed be disposed within the housing.
Appellant’s argument thus does not convince us that the rejection of claim 6
should be reversed.
For the above reasons, we sustain the rejection of claims 1-3, 5, and 6
as being anticipated by Suchowski.
Obviousness – Suchowski
Claim 4
In contesting the rejection of claim 4, Appellant merely states “[c]laim
4 is cancelled and the fibrous limitation is amended into Claim 5,” and
directs the Examiner’s attention (and presumably our attention) to the
argument asserted in support of claim 5. App. Br. 7-8. A review of the
electronic file for this application, however, reveals that no such amendment
cancelling claim 4 has been filed. For the reasons discussed above,
Appellant has not asserted any persuasive argument in favor of the
patentability of the subject matter of claim 5 over Suchowski.
Consequently, Appellant’s reference to such argument also is not persuasive
with respect to the rejection of claim 4. We sustain the rejection of claim 4
as being unpatentable over Suchowski.
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Claims 7 and 8
In rejecting claims 7 and 8, which recite that the additive is “a
nepetalactone solution” and “lavender,” respectively, the Examiner
concluded that the selection of either of these materials would have been
obvious, because “it has been held to be within the general skill of a worker
in the art to select a known material on the basis of its suitability for the
intended use as a matter of obvious design choice,” and because Appellant
did not provide a reason or showing of any criticality to the particular
additives claimed. Ans. 4-5.
In contesting the rejection of claim 8, Appellant does not specifically
address the Examiner’s stated rationale for modifying the Suchowski device
by using a lavender additive. The only argument asserted by Appellant
against the rejection of claim 8 is that Suchowski does not teach or suggest a
lavender additive, in the form of a solution, housed in a dispenser that is part
of the kit. App. Br. 8. This argument is not persuasive. First, the argument
is not commensurate with the scope of claim 8, which does not call for the
lavender additive to be in the form of a solution. Further, despite
Appellant’s statement to the contrary (App. Br. 8), claims 7 and 8 have not
been amended “to properly incorporate the dispenser limitation of Claim 6.”
Finally, in any event, as we found above, Suchowski does describe an
additive application technique which inherently requires that the additive be
housed in a dispenser for application to the aroma insert 586. Thus, we
sustain the rejection of claim 8.
In contesting the rejection of claim 7, Appellant does, however, attack
the Examiner’s proposed modification of Suchowski to provide a
nepetalactone solution as the additive. In particular, Appellant contends, in
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essence, that the Examiner’s rejection lacks the requisite findings necessary
to establish that the selection of that particular additive would have been an
obvious design choice, and challenges the Examiner to cite a reference
showing that this would be the case. Reply Br. 2-3.
A conclusion of obviousness must be supported by explicit findings
and analysis establishing an apparent reason to combine the known elements
in the manner required in the claim at issue. KSR Int’l Co. v. Teleflex Inc.,
550 U.S. 398, 418 (2007). In making an obviousness rejection, the examiner
has the initial duty of supplying the requisite factual basis and may not,
because of doubts that the invention is patentable, resort to speculation,
unfounded assumptions or hindsight reconstruction to supply deficiencies in
the factual basis. In re Warner, 379 F.2d 1011, 1017 (CCPA 1967).
The Examiner is correct that it has been held that the selection of a
known material based upon its suitability for the intended use is a design
consideration within the skill of the art. See In re Leshin, 277 F.2d 197, 199
(CCPA 1960). What is lacking in this rejection, however, is any evidence
showing that a person of ordinary skill in the art would have recognized that
a nepetalactone solution would be suitable for use as the additive in
Suchowski’s device. In failing to provide such evidence, the Examiner fell
short in making the necessary factual findings to support the conclusion that
the subject matter of claim 7 would have been obvious to a person of
ordinary skill in the art at the time of Appellant’s invention. We are
constrained to reverse the rejection of claim 7.
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Obviousness – Suchowski and Munro
Claim 16
Claim 16, like claim 7, calls for the additive to be a nepetalactone
solution. The Examiner does not rely on Munro for any teaching directed to
such an additive. Thus, the rejection of claim 16 as being unpatentable over
Suchowski and Munro suffers from the same deficiency as the rejection of
claim 7, discussed above. For the same reason, we are constrained to
reverse the rejection of claim 16.
Claims 9-13
Appellant does not challenge the Examiner’s findings with respect to
the teachings of Munro (Ans. 5). Appellant also does not challenge the
Examiner’s conclusion that it would have been obvious to modify
Suchowski’s housing so as to include a first component and a second
component offset, as taught by Munro (Ans. 5-6). Rather, Appellant asserts
that Munro “does not teach two symmetrical body portions.” App. Br. 8.
Appellant further argues that Munro does not teach a means to separate the
two body portions. App. Br. 9. These arguments are not persuasive of error
in the rejection of claim 9, because claim 9 does not call for symmetrical
body portions or means to separate the two body portions. Appellant’s
contention that the claims have been amended to require that the first and
second components releasably couple together (id.) is not accurate. Claim 9
simply calls for a first component coupled to a second component.
Accordingly, we sustain the rejection of claim 9. Appellant has not asserted
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any arguments for the separate patentability of claims 10-13.4 Thus, these
claims fall with claim 9.
Claims 14, 15, and 17
Appellant argues that neither Suchowski nor Munro teaches or
suggests a dispenser. App. Br. 10. This argument is not convincing, for the
reasons discussed above with respect to the rejection of claim 6. Moreover,
the argument is not commensurate with the scope of claims 15 and 17,
which do not require a dispenser.5 We sustain the rejections of claims 14,
15, and 17.
Claims 18 and 19
Claim 18 requires an additional retention element, and claim 19
requires an additional additive. The Examiner found that Suchowski as
modified in view of Munro lacks both an additional (second) retention
element and an additional (second) additive. Ans. 8, 9. The Examiner
concluded, however, that it would have been obvious to one of ordinary skill
in the art at the time of Appellant’s invention to provide an additional
retention element, and an additional additive, as a mere duplication of the
essential working parts of a device involving only routine skill in the art. Id.
Appellant argues that the proposed modification would not have been
obvious because neither Suchowski nor Munro discloses a means to remove
the first retention element to replace it with a second retention element.

4 Statements which merely point out additional claim limitations are not
considered arguments for separate patentability of the claims. 37 C.F.R. §
41.37(c)(1)(vii).
5 Appellant states that “Applicant amends Claims 15-17 to properly
incorporate the dispenser limitation of Claim 14.” App. Br. 10. A review of
the electronic file for this application, however, reveals that no such
amendment has been filed.
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App. Br. 10. This argument is not persuasive, because claims 18 and 19 do
not require means to remove the first retention element to replace it with a
second retention element, and because the Examiner’s articulated reason for
the modification would not require a means for removing and replacing the
retention element. Rather, the Examiner’s proposed modification is to
simply provide two retention elements and two additives within the housing
of Suchowski’s device as a mere duplication of parts, not as interchangeable
parts.
For the above reasons, we sustain the rejection of claims 18 and 19.

DECISION
The Examiner’s decision is affirmed as to claims 1-6, 8-15, and 17-
19, and reversed as to claims 7 and 16.
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)(1)(iv) (2007).

AFFIRMED-IN-PART

hh

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RICHFIELD, OH 44286