Ex Parte Vogel

Board of Patent Appeals and Interferences

May 28, 2010

10116845 (B.P.A.I. May. 28, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte PHILIP S. VOGEL
____________

Appeal 2009-006392
Application 10/116,845
Technology Center 3600
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Decided: May 28, 2010
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Before TONI R. SCHEINER, JOSEPH A. FISCHETTI, and BIBHU R.
MOHANTY, Administrative Patent Judges.

MOHANTY, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2009-006392
Application 10/116,845

STATEMENT OF THE CASE
The Appellant seeks our review under 35 U.S.C. § 134 (2002) of
the final rejection of claims 1-20 which are all the claims pending in the
application. We have jurisdiction under 35 U.S.C. § 6(b) (2002).

SUMMARY OF THE DECISION
We AFFIRM.

THE INVENTION
The Appellant’s claimed invention is directed to providing hand
sanitizer in public, non-bathroom areas of a restaurant (Spec. 3:8-10). Claim
1, reproduced below, is representative of the subject matter of appeal.
1. A method for a restaurant to do business comprising the steps of:
(A) providing hand sanitizer in at least one dispenser in at least one
public non-bathroom area of a restaurant, allowing customers of the
restaurant to sanitize their hands before handling food; and
(B) providing food to the customers of the restaurant.

THE REJECTIONS
The Examiner relies upon the following as evidence in support of the
rejections:
Besse US 5,810,201 Sep. 22, 1998
Collopy US 6,832,916 B2 Dec. 21, 2004

The following rejections are before us for review:
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1. Claims 1-20 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Besse and Collopy.

THE ISSUE
At issue is whether the Appellant has shown that the Examiner erred
in making the aforementioned rejection of claims 1-20.
This issue turns on whether it would have been obvious to one of
ordinary skill in the art to modify the teachings of Besse and Collopy to
provide hand sanitizer in at least one dispenser in at least one public non-
bathroom area of a restaurant, allowing customers of the restaurant to
sanitize their hands before handling food.

FINDINGS OF FACT
We find the following enumerated findings of fact (FF) are supported
at least by a preponderance of the evidence:1
FF1. Besse has disclosed an interactive dispenser for a personal care
chemical that provides a message prompted by user activity (Title).
FF2. Besse has disclosed that personal care liquids, including hand cleaners
and soap, can be used in the device (Abstract).
FF3. Besse has disclosed the dispenser may be used in a kitchen, a food
processing area, a public rest room, or a day care center, etc. (Col. 1:18-21).
FF4. Besse has disclosed that the message used may include “2) Hand
washing is an important part of staying healthy and preventing the spreading

1 See Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988)
(explaining the general evidentiary standard for proceedings before the
Patent Office).
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of germs and 3) Now that your hands are clean you are ready to eat. Enjoy
your meal.” (Col. 8, ll. 14-17).
FF5. Collopy has disclosed a soap dispenser with a hand wash interval
timer (Title).
FF6. Collopy has disclosed that the device would increase the frequency of
hand washing in the home, public restrooms, restaurants, grocery stores, and
other work places (Col. 4:3-6).

PRINCIPLES OF LAW
“Section 103 forbids issuance of a patent when ‘the differences
between the subject matter sought to be patented and the prior art are such
that the subject matter as a whole would have been obvious at the time the
invention was made to a person having ordinary skill in the art to which said
subject matter pertains.’” KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 406
(2007). The question of obviousness is resolved on the basis of underlying
factual determinations including (1) the scope and content of the prior art,
(2) any differences between the claimed subject matter and the prior art, (3)
the level of skill in the art, and (4) where in evidence, so-called secondary
considerations. Graham v. John Deere Co., 383 U.S. 1, 17-18 (1966). See
also KSR, 550 U.S. at 407 (“While the sequence of these questions might be
reordered in any particular case, the [Graham] factors continue to define the
inquiry that controls.”)
In KSR, the Supreme Court emphasized “the need for caution in
granting a patent based on the combination of elements found in the prior
art,” id. at 415-16, and discussed circumstances in which a patent might be
determined to be obvious. In particular, the Supreme Court emphasized that
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“the principles laid down in Graham reaffirmed the ‘functional approach’ of
Hotchkiss, 11 How. 248.” KSR, 550 U.S. at 415, (citing Graham, 383 U.S.
at 12), and reaffirmed principles based on its precedent that “[t]he
combination of familiar elements according to known methods is likely to be
obvious when it does no more than yield predictable results.” Id. at 416.
The Court also stated “[i]f a person of ordinary skill can implement a
predictable variation, § 103 likely bars its patentability.” Id. at 417. The
operative question in this “functional approach” is thus “whether the
improvement is more than the predictable use of prior art elements according
to their established functions.” Id.
The Court noted that “[t]o facilitate review, this analysis should be
made explicit.” Id. at 418 (citing In re Kahn, 441 F.3d 977, 988 (Fed. Cir.
2006) (“[R]ejections on obviousness grounds cannot be sustained by mere
conclusory statements; instead, there must be some articulated reasoning
with some rational underpinning to support the legal conclusion of
obviousness”). However, “the analysis need not seek out precise teachings
directed to the specific subject matter of the challenged claim, for a court
can take account of the inferences and creative steps that a person of
ordinary skill in the art would employ.” Id.

ANALYSIS
The Appellant argues that the rejection of claim 1 is improper because
Callopy does not read on a “public, non-bathroom area of a restaurant” (Br.
6). The Appellant argues that the Callopy reference requires the use of a
sink to wash with the soap (Br. 6 and 9-10). The Appellant also argues the
citations in the references to other work places, a restaurant, a kitchen area
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of a restaurant, a public bathroom, and grocery stores does not meet or
suggest the cited claim limitation for a “public, non-bathroom area of a
restaurant” (Br. 6-13). The Appellant also argues that the Examiner has
failed to properly consider the Declaration filed under 37 C.F.R. § 1.132
(Br. 14-19, Reply Br. 4).
In contrast the Examiner has determined that Besse and Collopy
have been properly combined to meet the cited claimed limitations (Ans. 5-
7).
We agree with the Examiner. Besse has disclosed an interactive
dispenser for a personal care chemicals such as hand cleaners and soap
that provides a message prompted by user activity (FF1, FF2). Besse has
disclosed the dispenser may be used in a kitchen, a food processing area, a
public rest room, a day care center, etc. (FF3). Besse has disclosed that the
message used may include: 2) Hand washing is an important part of staying
healthy and preventing the spreading of germs and 3) Now that your hands
are clean you are ready to eat. Enjoy your meal (FF4). However, Besse
has not specifically disclosed placing the soap dispenser in a “public
non-bathroom area of a restaurant” as claimed in claim 1. However, the
Examiner has cited a combination with Collopy which has disclosed a soap
dispenser with a hand wash interval timer (FF5). Collopy has disclosed
that the device would increase the frequency of hand washing in the home,
public restrooms, restaurants, grocery stores, and other work places (FF6).
We hold that extension of the hand cleaner dispenser of Besse to be placed
in other areas of a restaurant, including public non-bathroom areas, would
have been an obvious modification in view of Collopys disclosure that
similar soap dispensers may be used in restaurants and other work places.
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Further, such a modification of Besse and Collopy would have been obvious
to allow customers to wash their hands without using a public restroom,
which could be closed, in use, or otherwise not available to a customer.
Besse’s device can include hand cleaners (FF2) (which frequently do not
require water or a sink for use) as well as soap. In considering obviousness
“the analysis need not seek out precise teachings directed to the specific
claimed subject matter of the challenged claim, for a court can take account
of the inferences and creative that a person of ordinary skill in the art would
employ” KSR at 418. “A person of ordinary skill is also a person of ordinary
creativity, not an automaton” KSR at 421. In this case, the modification of
the placement of the hand cleaner dispenser to a public non-bathroom area
of the restaurant, or any other work area where hand washing would be
beneficial, is considered an obvious and predictable modification to provide
hand cleaner to clean your hands in an area where having clean hands
is encouraged. For these reasons, we consider obviousness to have been
established for claim 1. As the Appellant has provided essentially the same
arguments for claims 2-20, we consider obviousness to have been
established for these claims as well.
The record before us provides no evidence that the Declaration
filed under 35 U.SC. § 1.132 was not considered or denied entry into
the application file by the Examiner. While the Examiner has not fully
remarked on the reasons why the Declaration filed under 35 U.SC. § 1.132
was not persuasive, this in not an indication that it was denied entry or not
considered. We recognize that evidence of secondary considerations,
such as that presented by the Appellant must be considered in route to
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a determination of obviousness/nonobviousness under 35 U.S.C. § 103.
Accordingly, we consider anew the issue of obviousness under 35 U.S.C.
§ 103, carefully evaluating and weighing both the evidence relied upon by
the Examiner and the objective evidence of nonobviousness provided by the
Appellant. “An applicant may rebut a prima facie case of obviousness by
providing a ‘showing of facts supporting the opposite conclusion.’” Such
a showing dissipates the prima facie holding and requires the examiner to
“consider all of the evidence anew.” In re Kumar 418 F.3d 1361, 1368 (Fed.
Cir. 2005).
The Declaration filed under 35 U.SC. § 1.132 by Philip S. Vogel,
Ross C.H. Vogel, and Derek P. Martin has been fully considered, but is
not deemed persuasive to show that the rejection of record is improper after
evaluating and weighing all the evidence relied upon by the Examiner and
provided by the Appellant.
The Declaration attempts to show long-felt need without showing
need was persistent and recognized by those of ordinary skill in the art and
that the long felt need was not satisfied by another before the invention by
applicant. The Declaration also attempts to show commercial success but
fails to provide any actual sales figures and speculates as to the possible
sales at Chick-Fil-A restaurants and a nexus between the invention and
commercial success has been shown. The Declaration also attempts to
show copying, but fails to show that the copy was identical to the claimed
product or that the other manufacturer has not expended effort to develop its
own solution (See MPEP 716.03-04 and 716.06).
In this case, the Declaration of Philip S. Vogel, Ross C. H. Vogel, and
Derek P. Martin when viewed anew with all the evidence in the record does
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not provide sufficient evidence to reach a conclusion of nonobviousness.
We hold that extension of the hand cleaner dispenser of Besse to be placed
in other areas of a restaurant, including public non-bathroom areas, would
have been an obvious modification in view of Collopy’s disclosure that soap
dispensers may be used in restaurants and other work places. Further, such
a modification of Besse and Collopy would have been obvious to allow
customers to clean their hands without using a public restroom, which could
be closed, in use, or otherwise not available to a customer.
For the above reasons, we sustain the rejection of claims 1-20 made
under 35 U.S.C. § 103(a).

CONCLUSIONS OF LAW
We conclude that Appellant has not shown that the Examiner erred in
rejecting claims 1-20 under 35 U.S.C. § 103(a) as unpatentable over Besse
and Collopy.

DECISION
The Examiner’s rejection of claims 1-20 is sustained.

AFFIRMED

JRG

MARTIN & ASSOCIATES, LLC
P. O. BOX 548
CARTHAGE, MO 64836-0548
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