Ex Parte WalterDownload PDFPatent Trial and Appeal BoardFeb 10, 201712896583 (P.T.A.B. Feb. 10, 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. 12/896,583 10/01/2010 Scott D. Walter J-5296 1071 28165 7590 S.C. JOHNSON & SON, INC. 1525 HOWE STREET RACINE, WI53403-2236 EXAMINER LAFLAME JR, MICHAEL A ART UNIT PAPER NUMBER 3742 NOTIFICATION DATE DELIVERY MODE 02/14/2017 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): F074168@scj.com selechne @ scj. com mjzolnow @ scj .com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte SCOTT D. WALTER Appeal 2015-004421 Application 12/896,583 Technology Center 3700 Before THOMAS F. SMEGAL, LISA M. GUIJT, and PAUL J. KORNICZKY, Administrative Patent Judges. GUIJT, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellant1 seeks our review under 35 U.S.C. § 134 of the Examiner’s decision2 rejecting claims 11-13, 15—17, and 22 under 35 U.S.C. § 103(a) as unpatentable over Christianson (US 2006/0196965 Al; pub. Sept. 7, 2006) and Ivri (US 2009/0108094 Al; pub. Apr. 30, 2009). We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. 1 Appellant identifies the real party in interest as S. C. Johnson & Son, Inc. Appeal Br. 2. 2 Appeal is taken from the Final Office Action dated July 7, 2014 (“Final Act.”). Appeal 2015-004421 Application 12/896,583 CLAIMED SUBJECT MATTER Claims 11 and 22 are independent. Claim 11 is reproduced below. 11. A volatile material container, comprising: a blister having a bottom wall, a peripheral flange, and a sidewall extending therebetween; a vapor permeable membrane attached to the peripheral flange and extending across the blister, wherein the vapor permeable membrane in conjunction with the bottom wall and the sidewall contain a volatile material within the blister; and a stationary magnetic element disposed entirely within the blister. ANALYSIS Independent claim 11 and dependent claims 12, 13, and 15—17 Regarding independent claim 11, the Examiner finds, inter alia, that Christianson discloses a volatile material container, including cup-shaped blister 18 with bottom wall 28, peripheral flange 20, and four side walls 30. Final Act. 2 (see, e.g., Christianson | 55, Figs. 1, 2). The Examiner also finds that Christianson discloses permeable membrane 24 attached to peripheral flange 20 and extending across blister 18. Id. (see, e.g., Christianson | 55, Figs. 1,2). The Examiner further finds that although Christianson discloses a stationary magnetic element, Christianson does not disclose that the magnet is located entirely within the blister, as claimed. Id. The Examiner relies on Ivri for disclosing magnet 506 inside of cover 502 2 Appeal 2015-004421 Application 12/896,583 with fragrance material 503. Id. at 3 (citing Ivri 1 50). The Examiner reasons that it would have been obvious “to locate the magnet of Christianson inside of the blister as disclosed by Ivri in order to avoid unnecessary contact with the magnet.” Id. Alternatively, the Examiner determines that one of ordinary skill in the art would have appreciated and found it obvious ... to have changed the location or portion of the container where the magnetic element was attached with the motivation of providing an optimum location that would provide the most stable and viable position of attaching the magnet to the container. Ans. 4. The Examiner reasons that “this mere rearrangement of parts (i.e. magnet element) does not modify the operation of the device,” and concludes that “the fact that the position of the magnetic element in the cited art may be different than the position of the magnetic element in the [claimed] invention is not a nonobvious patentable distinction.” Id. First, Appellant argues that assuming Ivri’s cover 502 and vibrating membrane 505 form a blister, magnetic member 506 is not entirely within cover 502 and membrane 505, as required by claim 11; to the contrary, Ivri depicts the magnetic element 506 below membrane 505 and thus, outside of cover 502 and membrane 505. Appeal Br. 5 (citing Ivri | 50, Fig. 5). We do not find this argument persuasive, because the claim requires “a stationary magnetic element disposed entirely within the blister,” wherein the blister is defined by “a bottom wall, a peripheral flange, and a sidewall extending therebetween” (Appeal Br. 11 (Claims App.)), but the blister itself does not include the membrane that extends across the blister. In other words, the 3 Appeal 2015-004421 Application 12/896,583 position of Ivri’s membrane relative to the magnet is not relevant. Appellant has not apprised us of error in the Examiner’s finding that Ivri’s magnetic member 506 (which is riveted to a membrane) is entirely within Ivri’s cover 502, as depicted in Figure 5 of Ivri. However, we are persuaded by Appellant’s argument that the Examiner’s proposed modification of Christianson, in view of Ivri, lacks rational reasoning. Specifically, Appellant argues that the Examiner’s proposed modification that moves a magnet that may be positioned on Christianson’s flange 20 away from a magnet of opposite polarity that may be positioned on Christianson’s frame 16 “is counterintuitive because moving magnets away from each other would diminish or eliminate the magnets’ ability to attract each other.” Reply Br. 3.3 Appellant contends that the Examiner “does not explain why moving the magnet of Christianson would provide ‘the most stable and viable position for attaching the magnet to the container.’” Id. at 3^4. In support, Appellant submits that “Christianson describes positioning the magnets close together to enable the magnets to retain components.” Id. at 4 (citing Christianson | 80 (“front and rear blocks 62, 64 [(of frame 200)] are thereafter pressed together so as to align . . . the magnets 210, 212.”). Appellant further submits that the Examiner’s proposed modification is based on impermissible hindsight. Appeal Br. 6. 3 Appellant’s Reply Brief is unnumbered, however, we refer to the pages consecutively from 1 to 5. 4 Appeal 2015-004421 Application 12/896,583 Christianson discloses that [t]he rear face 40 of the display frame 16 includes a stepped recess 50 defined by stepped side walls . . . configured to completely receive the dispenser 12. . . . The stepped recess 50 includes a shallow peripheral recess 52 . . . configured and dimensioned to receive and support the flange 20 [(of the blister)]. The peripheral recess 52 . . . has a mechanical and/or adhesive retaining means . . . configured to hold flange 20 in place. . . . [A] pair of magnets having opposing polarity or a magnet in combination with a ferritic material could also be utilized to hold the flange 20 adjacent the stepped side walls of the peripheral recess 52 [(of frame 16)]. Christianson || 66, 67, Fig. 7. Christianson is silent with respect to the physical disposition of the magnet, but we agree with Appellant that one skilled in the art would appreciate that disposing the magnet on or near flange 20 would place the magnet closest to, such that it aligns with, a magnet of opposing polarity on the adjacent stepped side walls of the peripheral recess of the frame. Ivri discloses that “cover 502 is part of a replaceable portion that also includes vibrateable membrane 505 and a magnet member 506 connected to membrane 505, for example by a rivet 507,” such that “magnet member 506 may be made to vibrate, along with membrane 505, thus providing the acoustic drive that creates synthetic jets from the apertures or conduits [(in cover 502)].” Ivri | 50, Fig. 5. The Examiner does not provide adequate support for reasoning that one skilled in the art would be led by Ivri’s disclosure of attaching a vibrating magnet to a membrane within the cover (or blister) to modify Christianson’s device, such 5 Appeal 2015-004421 Application 12/896,583 that a stationary magnet is disposed entirely within Christianson’s blister in order to hold Christianson’s flange 20 adjacent the stepped side walls of frame 16. Moreover, the Examiner does not explain why unnecessary contact with the magnet is desirable or why disposing the magnet entirely within the blister is the most stable and viable position for attaching the magnet to the blister. Thus, without reasoning based on rational underpinnings, the Examiner’s proposed modification appears to be the result of hindsight analysis. “[Rejections 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.” In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) quoted with approval in KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). Accordingly, we do not sustain the Examiner’s rejection of independent claim 11 and claims 12, 13, and 15—17. Independent claim 22 Regarding independent claim 22, the Examiner relies on the same findings as relied upon for claim 11, as stated supra, and further finds that “Christianson does not state that the magnet is disposed between the blister and the vapor permeable membrane.” Final Act. 5. The Examiner relies on Ivri’s disclosure that magnet 506 “is partially embedded in” membrane 505. Id. at 6. The Examiner applies the same reasoning as applied to claim 11 for modifying Christianson’s magnet for holding flange 20 adjacent stepped side walls of frame 16 to be disposed between the blister and the vapor 6 Appeal 2015-004421 Application 12/896,583 permeable member, as claimed, namely: (i) to avoid unnecessary contact with the magnet; (ii) because such a location is an optimum location that would provide the most stable and viable position of attaching the magnet to the container; and/or (iii) the modification is a mere rearrangement of parts. Id. at 6. The Specification discloses that the claim language “a stationary magnetic element disposed between the blister and the vapor permeable membrane” is intended to mean that the magnetic element is within the containment area for the volatile materials, which is defined by the vapor permeable membrane and bottom and sidewalls of the blister. For example the Specification discloses that the second magnetic element 144 is attached to the bottom wall 134 of the blister 132. However, the second magnetic element could instead be attached to one or more of the sidewalls 136, the permeable membrane 140, or be provided unattached within the container 128 between the blister 132 and the permeable membrane 140. See Spec. 140 (emphasis added), Figs. 2, 5—7. We note that the claim, as written, could read on Christianson’s air freshener, in the event the disclosed magnet for holding flange 20 adjacent the stepped side walls of the peripheral recess 52 of frame 16 was disposed between flange 20 (which is a part of blister 18) and permeable membrane 24, as opposed to being located within the cup of blister 18 as described in the Specification. However, Christianson does not disclose this disposition (or any particular disposition), but instead states that “permeable membrane 24 ... is heat fused to the flange 20.” Christianson | 58. 7 Appeal 2015-004421 Application 12/896,583 Notwithstanding, the Examiner’s reasoning for modifying Christianson’s blister, in view of the teachings of Ivri, to include a stationary magnet between Christianson’s blister 18 (including flange 20) and permeable membrane 24 is conclusory and lacks rational reasoning, as discussed supra. Accordingly, we do not sustain the Examiner’s rejection of independent claim 22. DECISION The Examiner’s decision to reject claims 11-13, 15—17, and 22 under 35 U.S.C. § 103(a) is REVERSED. REVERSED 8 Copy with citationCopy as parenthetical citation