S.C. Johnson & Son, Inc.

Patent Trials and Appeals Board

Oct 29, 2020

15186973 - (D) (P.T.A.B. Oct. 29, 2020)

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.
15/186,973 06/20/2016 Bhaveshkumar Shah J5730AUS01 7119
28165 7590 10/29/2020
S.C. JOHNSON & SON, INC.
1525 HOWE STREET
RACINE, WI 53403-2236
EXAMINER
VALVIS, ALEXANDER M
ART UNIT PAPER NUMBER
3752
NOTIFICATION DATE DELIVERY MODE
10/29/2020 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):
mjzolnow@scj.com
selechne@scj.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte BHAVESHKUMAR SHAH and NITIN SHARMA

Appeal 2020-002240
Application 15/186,973
Technology Center 3700
____________

Before MICHAEL J. FITZPATRICK, MICHELLE R. OSINSKI, and
CARL M. DEFRANCO, Administrative Patent Judges.

FITZPATRICK, Administrative Patent Judge.

DECISION ON APPEAL
Appellant, S.C. Johnson & Son., Inc.,1 appeals under 35 U.S.C.
§ 134(a) from the Examiner’s final decision rejecting claims 15–22. We
have jurisdiction under 35 U.S.C. § 6(b). A telephonic hearing was held
October 8, 2020. A transcript (“Tr.”) of the hearing was entered October 22,
2020.
We affirm.

1 “Appellant” refers to the applicant as defined in 37 C.F.R. § 1.42.
Appellant identifies itself as the sole real party in interest. Appeal Br. 1.
Appeal 2020-002240
Application 15/186,973
2
STATEMENT OF THE CASE
The Specification
The Specification “relates to an insert for dispensing a compressed gas
product, a system that includes such an insert, and a method of dispensing a
compressed gas product.” Spec. ¶1.
The Claims
Claims 15–22 are rejected. Final Act. 1. Claims 1–14 and 23–25 are
withdrawn from consideration. Id. No other claims are pending. Id. Claim
15 is illustrative and reproduced below.
15. A system for dispensing a compressed gas product,
the system comprising:
[a] a container for containing a volume of compressed gas
product, the container including an actuator with an insert
through which compressed gas product can be dispensed from
the container, the insert including (i) a swirl chamber having a
swirl chamber diameter and a swirl chamber depth, (ii) at least
one inlet port that opens to the swirl chamber, with the at least
one inlet port having a cross-sectional area, and (iii) an outlet
orifice having an outlet orifice diameter and an outlet orifice
depth; and
[b] a compressed gas product provided inside the
container, the compressed gas product including a gas
component and a liquid component,
[c] wherein the swirl chamber diameter, swirl chamber
depth, cross-sectional area of the at least one inlet port, outlet
orifice diameter, and outlet orifice depth are configured such that
the compressed gas product is dispensed from the container at a
flow rate of (i) at least 2.0 g/s during an initial ten second
dispensing period from the container, and (ii) at least 1.3 g/s
during a ten second dispensing period starting when the container
has about 13% of the initial amount of compressed gas product
remaining in the container.
Appeal Br. Claims App’x ii–iii (bracketed letters added).
Appeal 2020-002240
Application 15/186,973
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The Examiner’s Rejections
The following rejections are before us:
1. claims 15, 17–19, 21, 22, under 35 U.S.C. § 102(b), as
anticipated by US 2009/0020621 A1, published Jan. 22, 2009, (“Clark”)
(Final Act. 3);
2. claims 16 and 20, under 35 U.S.C. § 103(a)), as unpatentable
over Clark (id. at 5); and
3. claims 15–22, under 35 U.S.C. § 112 ¶2, as indefinite (id. at 6).
DISCUSSION
Rejection 1—Anticipation
Appellant argues the rejection of all claims together. Appeal Br. 9–
13. We choose claim 15 as representative. See 37 C.F.R. § 41.37(c)(1)(iv).
The Examiner rejected claim 15 as anticipated by Clark. Final Act. 3–
4 (citing Clark Figs. 5A–5B, ¶¶17, 25, 28, 30, 60, 64). Appellant does not
dispute that Clark discloses the structural limitations of claim 1, which we
have labeled [a] and [b] above. Appeal Br. 9–13. Appellant, however, does
dispute that Clark teaches the at least partly functional limitation we have
labeled [c]. In particular, Appellant argues:
There is no evidence that the system disclosed in Clark et
al. is capable of producing the flow rate features in relation to the
amount of product remaining in the container, as recited in the
claims of the subject application. In fact, Clark et al. does not
describe any relation between flow rate and the amount of
compressed gas product remaining in the container, let alone
indicate that the system achieves a flow rate of at least 1.3 g/s
during a ten second dispensing period starting when the container
has about 13% of the initial amount of compressed gas product
remaining in the container, as in the claimed invention.
Appeal Br. 11–12.
Appeal 2020-002240
Application 15/186,973
4
Although Clark does not explicitly refer to a ten second dispensing
period or to the amount of compressed gas product left in the container, it
repeatedly describes maintaining a suitable spray rate above 1.3 g/s, which
necessarily would occur as the amount of compressed gas product would be
reduced. For example, paragraph 17 cited by the Examiner, states that Clark
“is directed primarily at the design of the actuator body and swirl insert for
maintaining a small particle size or Sauter Mean Diameter (D[3, 2]) of less
than 48 μm at a suitable spray rate (1.5–2 g/s), while utilizing a compressed
gas VOC-free propellant for an aerosol dispensed product.” Clark ¶17
(emphasis added). Clark provides a list of “design parameter[s]” that can be
“utilized for optimization” to maintain such flow rate. Id. ¶25; see also id.
¶¶30, 60.
As set forth above, Clark explicitly teaches maintaining a flow rate
above the 1.3 g/s rate specified in claim 15 (i.e., 1.5–2 g/s and this would
necessarily occur as the amount of product remaining in the container is
being reduced. Clark ¶17. Clark also teaches how to optimize certain
design parameters to facilitate maintenance of the flow rate. Id. ¶25. In
view of the foregoing teachings, Appellant’s argument that “[t]here is no
evidence that the system disclosed in Clark et al. is capable of producing the
flow rate features in relation to the amount of product remaining in the
container” is not persuasive. Appeal Br. 11.
Additionally, further evidence that Clark is “capable” of the
aforementioned function, is that Clark (which is owned by Appellant2)
actually illustrates an embodiment of claim 15. Appellant describes
Application Figure 1 as “a cross-sectional view of an aerosol dispenser

2 See Clark, at [73] (“Assignee: S.C. JOHNSON & SON, INC.”).
Appeal 2020-002240
Application 15/186,973
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having an insert according to the invention.” Spec. ¶19 (emphasis added).
Yet, a virtually identical drawing appears as Figure 1 of Clark. Compare
Spec. Fig. 1, with Clark Fig. 1; see also Tr. 17:2–11 (counsel for Appellant
agreeing “there’s nothing different” between these figures).
None of Appellant’s arguments apprises us of error in the Examiner’s
rejection of claim 15 as anticipated by Clark. Accordingly, we affirm that
rejection, as well as that of claims 17–19, 21, and 22, which fall therewith.
37 C.F.R. § 41.37(c)(1)(iv).
Rejection 2—Obviousness
Appellant does not argue the patentability of claims 16 and 20 beyond
its arguments in support of claim 15, which we have already considered
above but which do not apprise us of error. Thus, for similar reasons, we
affirm the rejection of claims 16 and 20 as unpatentable over Clark.
Rejection 3—Indefiniteness
The Examiner rejected claims 15–22 as indefinite “as being
incomplete for omitting essential elements” and/or “for omitting essential
structural cooperative relationships of elements.” Final Act. 6. The
Examiner purports to explain the rejection as follows:
Applicant is vigorously arguing that the prior art [i.e., Clark]
does not teach a system capable of this which leads the Examiner
to believe that there must be missing elements or cooperative
relationships in the claim. Therefore, either the Examiner’s prior
art rejection is valid or the asserted 35 USC 112 [¶2] issues are
proper.
Final Act. 6. However, the Examiner does not identify any such omitted
essential features. Id. In any event, the Examiner explicitly makes the
indefiniteness rejection contingent upon a reversal of the prior art rejections.
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Application 15/186,973
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Id. As we affirm the prior art rejections above, we do not sustain the
indefiniteness rejection.
SUMMARY
Claims
Rejected
35
U.S.C. §
Reference(s)/Basis Affirmed Reversed
15, 17–19,
21, 22
102(b) Clark 15, 17–19,
21, 22

16, 20 103(a) Clark 16, 20
15–22 112 ¶2 Indefiniteness 15–22
Overall
Outcome
15–22

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).

AFFIRMED