Bhaveshkumar Shah et al.

Patent Trials and Appeals BoardAug 27, 2019

13428936 - (D) (P.T.A.B. Aug. 27, 2019)

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. 13/428,936 03/23/2012 Bhaveshkumar Shah J-5730 8736 28165 7590 08/27/2019 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 08/27/2019 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 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 2017-009406 Application 13/428,936 Technology Center 3700 ____________________ Before CHARLES N. GREENHUT, MICHELLE R. OSINSKI, and JEREMY M. PLENZLER, Administrative Patent Judges. PLENZLER, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellants seek our review under 35 U.S.C. § 134 of the Examiner’s Decision rejecting claims 1–3, 5–9, 11, and 12 under 35 U.S.C. § 103 as being unpatentable over Clark (US 2009/0020621 A1, published Jan. 22, 2009), Lowry (US 2009/0057447 A1, published Mar. 5, 2009), and Heeb (US 4,322,037, published Mar. 30, 1982).1 An oral hearing was held on August 8, 2019. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 1 Claims 4 and 10 are objected to as being dependent upon a rejected base claim. Final Act. 4. Appeal 2017-009406 Application 13/428,936 2 CLAIMED SUBJECT MATTER Claims 1 and 7 are independent. Claims 2, 3, 5, and 6 depend from claim 1. Claims 9, 11, and 12 depend from claim 7. Claim 1 is illustrative of the claims on appeal, and is reproduced below. 1. An insert for use with an assembly to dispense a compressed gas product from a container, the insert comprising: a swirl chamber having a diameter Ds and a depth Ls; at least one inlet port opening to the swirl chamber; and an outlet orifice having a diameter do and a length lo, wherein the insert is configured such that: Ds/do is 3.0 to 3.5, lo/do is 0.4 to 0.6; and Ls/Ds is 0.3 to 1.0. OPINION In the rejection of independent claims 1 and 7, the Examiner finds that Clark teaches the majority of limitations recited, including sizing orifice length (lo) and orifice diameter (do). Final Act. 2. The Examiner finds that Clark teaches a ratio of lo/do of 0.62, for example, but fails to teach the specific ratio of orifice length to orifice diameter (lo/do) recited in the claims (i.e., 0.4–0.6). Id. at 2–3. The Examiner finds that “Heeb describes the l/d ratio of the orifice being a decisive point for the form of the spray jet so providing the ratio within the ranges specified would be optimal.” Id. at 3. More specifically, the Examiner finds that “Heeb teaches a fluid atomizing insert with a jet orifice 36 having a length to diameter ratio of .3 to 1.0 preferably .5.” Heeb 4:50–54. Id. Based on the teachings of Clark and Heeb, the Examiner determines that the orifice ratio (lo/do) is a result- Appeal 2017-009406 Application 13/428,936 3 effective variable and that it would have been obvious as a matter of routine optimization to arrive at the recited lo/do ratio of 0.4–0.6 for Clark’s insert. Id. The only dispute presented by Appellants with respect to the rejection is whether one skilled in the art would have found it obvious to modify Clark’s insert to have the recited orifice ratio (lo/do). Appeal Br. 14–19. Appellants contend that “compressed gas propellant systems [such as Clark] and liquefied gas systems [such as Heeb] function differently and result in different flow characteristics for the products dispensed from the systems.” Id. at 15–16. Appellants contend that “[i]n a system using a compressed gas propellant, such as Clark et al., pressure within the container assembly decreases as the product is dispensed,” but “[t]his is not the case in a system that includes liquefied gas as part of the propellant, such as Heeb et al., because the pressure in the container remains approximately constant as the liquefied gas moves from the liquid to the vapor.” Id. at 16 (emphasis omitted). Appellants explain that “[t]he difference between the reducing pressure in a compressed gas system and the near constant pressure in a liquefied gas results in entirely different characteristics for the flow of product out of the systems,” such as “in a system that uses only a compressed gas propellant, the flow rate of the product out of the system decreases and the size of particles of product exiting the system increases.” Id. The Examiner has established sufficiently that the teachings of Clark and Heeb support the finding that the orifice ratio (lo/do) is a result-effective variable. We are not persuaded that the differences between the propellants (gas versus liquid) in Clark and Heeb effectively rebut this finding. Nor are Appeal 2017-009406 Application 13/428,936 4 we persuaded by Appellants’ contentions that Clark’s failure to “actually mention the ratio of lo/do” (Appeal Br. 17) or Heeb’s failure to expressly discuss “the lo/do ratio as being a decisive point of a spray jet” (id.) overcome the Examiner’s determination that lo/do is a result-effective variable. The identification of an optimal range of a result-effective variable is within the ordinary skill in the art. See In re Boesch, 617 F.2d 272, 276 (CCPA 1980); In re Aller, 220 F.2d 454, 456 (CCPA 1955). Contrary to Appellants’ contentions, there is evidence that the recited lo/do ratio is a result-effective variable. It has been held that the “discovery of an optimum value of a result effective variable in a known process is ordinarily within the skill ofthe art.” See Boesch, 617 F.2d at 276. Appellants do not provide sufficient evidence to the contrary here. The Examiner’s determination is supported by Heeb’s discussion of “provid[ing] an aerosol can which imparts a suitable fine division of droplets to the propellant-containing medium” (Heeb 1:10–12) and, more specifically, having jet orifice 36 with a particular range of length-to- diameter ratios (id. at 4:50–52). Appellants wrongly allege that “nothing in Heeb et al. describes the lo/do ratio as being a decisive point of a spray jet.” Appeal Br. 17 (emphasis omitted). Indeed, Heeb expressly states that “[t]he decisive point for the form of the spray jet is the length/diameter (l/d) ratio of the jet orifice 36.” Heeb 6:59–61 (emphasis omitted). Appellants also fail to apprise us of any persuasive reason why the different types of propellants would affect the general understanding of one skilled in the art that orifice length-to-diameter ratio affects the jet spray exiting the orifice of an insert. The ultimate desired ratio determined may differ based on a Appeal 2017-009406 Application 13/428,936 5 desired type of propellant, but that does not change the fact that the ratio is a result-effective variable in systems with either propellant. See Ans. 6 (“Clark also discloses that the spray generated using said VOC-free propellant has properties equivalent to or comparable to that of an aerosol spray generated using a liquefied petroleum gas propellant (abstract of Clark).”). Moreover, Clark, itself, supports the Examiner’s determination that lo/do is a result-effective variable. Clark teaches that orifice length (Lo) and orifice diameter (do) affect the particle size exiting the orifice outlet of an insert. See, e.g., Clark ¶ 25 (“At least one design parameter utilized for optimization is selected from the group consisting of do [and] . . . Lo,” and various other parameters “to maintain a Sauter Mean Diameter . . . of particles exiting the outlet orifice of [a desired size] . . . at a [desired] spray rate.”). That Clark does not expressly discuss the ratio of Lo/do does not mean that Clark does not provide evidence that this ratio is a result-effective variable. “In cases in which the disclosure in the prior art was insufficient to find a variable result-effective, there was essentially no disclosure of the relationship between the variable and the result in the prior art.” In re Applied Materials, Inc., 692 F.3d 1289, 1297 (Fed. Cir. 2012). Although In re Antonie found a variable was not result-effective because the prior art did not disclose a recited ratio, there the prior art did not even recognize that one of the variables in the ratio was relevant to the desired property. In re Antonie, 559 F.2d 618, 619 (CCPA 1977). Based on the evidence before us, it is reasonable to conclude that one skilled in the art would have appreciated that changing the Lo/do ratio in Clark would affect the particle size exiting Appeal 2017-009406 Application 13/428,936 6 the orifice outlet of an insert because it teaches that both Lo and do are known result-effective variables affecting that result. See Applied, 692 F.3d at 1296 (explaining that because number of grooves per unit area was a result-effective variable, it was reasonable to conclude that groove width was also a result-effective variable due to the close relationship between the number of grooves per unit area and groove width, even though groove width was not expressly disclosed as a result-effective variable). Appellants additionally allege that unexpected results overcome the Examiner’s case of obviousness. Appeal Br. 18–19. Appellants contend that “the inventors in the subject application surprisingly found that a remarkably more consistent flow rate and a remarkably consistent particle size can be achieved as the product is dispensed from a compressed gas aerosol system when using an insert with the specifically claimed ratios of parameters.” Id. at 18 (citing Shah Declaration ¶¶ 7–9). Appellants contend that “the unexpectedly consistent flow rate and particle size would have been all the more surprising in light of the fact that some of the parameters making [up] the claimed ratios are similar to the parameters of the inserts described in Clark et al.” Id. at 18–19 (citing Shah Declaration ¶¶ 11–13) (emphasis omitted). Appellants additionally contend that the Examiner failed to consider the Shah Declaration. Id. at 19. The Examiner addresses the Shah Declaration in the Answer, finding it unpersuasive. Ans. 5–6. Appellants, however, never establish anything “unexpected” regarding the performance of the claimed arrangement. “The basic principle behind [unexpected results supporting non-obviousness] . . . is straightforward—that which would have been surprising to a person of ordinary skill in a particular art would not have Appeal 2017-009406 Application 13/428,936 7 been obvious.” In re Soni, 54 F.3d 746, 750 (Fed. Cir. 1995). “The principle applies most often to the less predictable fields, such as chemistry, where minor changes in a product or process may yield substantially different results.” Id. Essentially, the evidence regarding unexpected results before us is the inventor’s testimony that he “was surprised to find that a remarkably more consistent flow rate and a remarkably consistent particle size can be achieved as the product is dispensed from a compressed gas aerosol system when [the] specific ratios of parameters of an insert [recited in claims 1 and 7] are used.” Shah Declaration ¶ 7. The Declaration alleges that “[b]efore [the] . . . invention . . . , one of ordinary skill in the art would have not expected . . . any particular combination of . . . Ds/do, lo/do, and Ls/Ds” to provide the desired flow rate and particle size achieved by the arrangement recited in claims 1 and 7. Id. ¶ 9. The Declaration references test results in the Specification (see id. ¶¶ 8–9), but the Declaration, the Appeal Brief, and the Reply Brief each fail to explain in any persuasive manner why those results are unexpected, rather than simply being the outcome of routine optimization to achieve a desired flow rate and particle size. Considering all of the evidence before us, we determine that the evidence of obviousness outweighs that presented regarding non- obviousness for the reasons set forth above. For at least these reasons, we are not apprised of Examiner error. Accordingly, we sustain the Examiner’s decision to reject claims 1–3, 5–9, 11, and 12. Appeal 2017-009406 Application 13/428,936 8 DECISION We AFFIRM the Examiner’s decision to reject claims 1–3, 5–9, 11, and 12. 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