Ex Parte Christianson

Patent Trial and Appeal BoardOct 31, 2018

12317459 (P.T.A.B. Oct. 31, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 12/317,459 12/22/2008 Jeffrey J. Christianson 155316 7590 11/02/2018 S.C. JOHNSON & SON, INC./Quarles & Brady LLP 1525 Howe Street Racine, WI 53403-2236 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 ATTORNEY DOCKET NO. CONFIRMATION NO. J-5040 7103 EXAMINER KIM, CHRISTOPHER S ART UNIT PAPER NUMBER 3752 NOTIFICATION DATE DELIVERY MODE 11/02/2018 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 JEFFREY J. CHRISTIANSON Appeal2018-001300 1 Application 12/317,459 Technology Center 3700 Before CHARLES N. GREENHUT, LYNNE H. BROWNE, and LISA M. GUIJT, Administrative Patent Judges. BROWNE, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellant appeals under 35 U.S.C. Â§ 134 from the rejection of claim 1, 2, 5-18, and 20 under 35 U.S.C. Â§ 103(a) based on Anderson (US 7,938,340 B2, iss. May 10, 2011) and Hoening (US 3,785,571, iss. Jan. 15, 1974).2,3 We have jurisdiction under 35 U.S.C. Â§ 6(b). 1 The Appellant states S.C. Johnson & Son, Inc. are the real party in interest. Appeal Br. 2. 2 Claim 19 is withdrawn from consideration. Final Act. 1. Claims 3 and 4 are pending, but are not subject to a standing rejection. See id. at 1 (rejecting claims 1-18 and 2 0). 3 The remaining rejections set forth in the Final Action are withdrawn by the Examiner. Ans. 4--5. Appeal2018-001300 Application 12/317,459 We reverse. CLAIMED SUBJECT MATTER The claims are directed to a dispensing system. Claims 1, 9, and 13 are independent. Claims 1 and 9 are reproduced below: 4 1. A dispensing system, comprising: a solenoid valve that includes an inlet end configured to couple to an aerosol container, including a valve stem, at a first location surrounding the valve stem and a second location disposed radially outward from the first location; and a flow adapter that includes a cylindrical wall and a post mounted within the cylindrical wall to define an annular passage therebetween, wherein an inlet end of the flow adapter is sealingly attached to an outlet end of the solenoid valve, and the flow adapter is adapted to receive a spray insert within the annular passage. 9. A dispensing system, comprising: a solenoid valve that includes an inlet end adapted to be attached to an aerosol container including a valve stem and a crimped portion, the inlet end having an opening defined by a surface disposed therein, the surface configured to depress the valve stem such that the valve stem is held in an open state when the aerosol container is attached to the dispensing system; a flow adapter that includes a cylindrical wall and a post mounted within the cylindrical wall to define an annular passage therebetween; and a spray insert that includes an end wall and a cylindrical skirt extending therefrom, wherein an aperture is disposed through the end wall, and wherein an outlet end of the solenoid valve includes an outlet port and a sidewall spaced from the outlet port, the sidewall forming a recess to receive an inlet end of the flow adapter, such that the inlet end of the flow adapter is removably and sealingly attached to the outlet end of the solenoid valve, and the flow adapter receives the cylindrical 4 Claim 9 is representative of claim 13 as the limitations at issue with respect to these claims are identical. 2 Appeal2018-001300 Application 12/317,459 skirt of the spray insert for attachment within the annular passage. DISCUSSION Claims 1, 2, and 5-8 The Examiner finds that Anderson and Hoening disclose or suggest all of the limitations of claim 1. See Final Act. 6-8. In particular, the Examiner finds that Anderson discloses "a second location ( at the lower surface of interface chamber element 13." Id. at 6. The Examiner explains that "the lower surface possesses a surface characteristic that has the capability to contact the aerosol container when the valve stem 12 is depressed) disposed radially outward from the first location." Id. Appellant contends that "the alleged 'second location' does not couple to anything, let alone the valve stem 12. As such, Anderson also fails to teach or suggest this element of claim 1." Appeal Br. 6. In support of this contention, Appellant argues that "FIG. 4 of Anderson does, in fact, show the valve stem in a depressed position, while further showing that the lower surface of the interface chamber element 13 is not configured to couple to an aerosol container." Id. Responding to this argument, the Examiner asserts that "Appellant's argument is not commensurate in scope with the claimed invention." Ans. 6. Noting that "[c]laim 1 recites' ... a solenoid valve that includes an inlet end configured to couple to an aerosol container, including a valve stem, at ... a second location ... ,"' the Examiner determines that "[t]he recitation that an element is configured to perform a function merely requires that the element possesses some undefined characteristic that has the capability to perform the function." Id. (emphasis omitted). 3 Appeal2018-001300 Application 12/317,459 In our prior Decision on Appeal, mailed February 16, 2016, (hereinafter "Decision"), we held that "in the context of claim 1, when interpreted in view of the Specification, the claim language 'adapted to' requires at least some structure that holds the valve stem of the container in an open state." Dec. 5 ( citing Aspex Eyewear, Inc. v. Marchan Eyewear, Inc., 672 F.3d 1335, 1349 (Fed. Cir. 2012); In re Giannelli, 739 F.3d 1375, 1379 (Fed. Cir. 2014). Claim 1 has since been amended to recite the narrower claim language "configured to." See Appeal Br. 11 (Claims App.). Accordingly, claim 1 now requires at least some structure that is "designed or configured to accomplish the specified objective, not simply [ structure which] can be made to serve that purpose" of allowing the inlet end of the solenoid valve to be coupled to an aerosol container at two different locations. Aspex Eyewear, 672 F. 3d at 1349. Regarding the lower surface identified by the Examiner as corresponding to the claimed second location, the Examiner does not provide a persuasive reason why one skilled in the art would understand this surface as "designed" or "made" to accomplish the specific objective recited. See, e.g., In re Giannelli, 739 F. 3d at 1380 ("the relevant question before the Board was whether the apparatus described in the [prior-art] patent was "'made to," "designed to," or "configured to,"' allow the user to perform [ the recited function]") accord In re Man Machine Interface Technologies, 822 F. 3d 1282, 1286-87 (Fed. Cir. 2016). Thus, the Examiner's finding cannot be sustained. For these reasons, we do not sustain the Examiner's decision rejecting claim 1, and claims 2 and 5-8, which fall therewith. Claims 9-18 and 20 The Examiner finds that Anderson and Hoening disclose or suggest all of the limitations of claims 9 and 13. Final Act. 6-8. In particular, the 4 Appeal2018-001300 Application 12/317,459 Examiner finds that Anderson discloses "an outlet port 43; sidewall (wall of opening 42)." Id. at 6. Appellant contends that "the Examiner errs by conflating ... two elements, in direct contradiction with the explicit disclosure of Anderson." Appeal Br. 9. Noting that "Anderson's element 43 is not an 'outlet port,' [and] that its element 42, i.e., its outlet opening or exit opening, is more akin to that 'outlet port,'" Appellant argues that "because element 42 is more akin to the recited outlet port, it cannot at the same time be the recited 'sidewall forming a recess' to receive an inlet end of a flow adapter." Appeal Br. 10. Responding to this argument, the Examiner construes the claim terms "outlet port" and "sidewall." Ans. 9. The Examiner's claim construction relies upon a number of dictionary definitions. See id. The Examiner's claim construction, however, does not determine if these definitions are consistent with the use of these terms in the Specification. In other words, although the Examiner has identified the broadest definitions of the claim terms "outlet port" and "sidewall," the Examiner fails to show that these definitions are the broadest reasonable interpretations of the claim terms as they would be understood by one skilled in the art reading the instant Specification. See, e.g., Brookhill-Wilk 1, LLC v. Intuitive Surgical, Inc., 334 F.3d 1294, 1300 (Fed. Cir. 2003) Consequently, we agree with Appellant that the Examiner's claim construction "ignores the teaching of Applicant's disclosure, in which the 'outlet port 140' is shown and described as being the opening through which fluid actually exits the solenoid valve." Reply Br. 5. We further agree that "any alleged 'outlet port' in Anderson must include that element 42 since ... the outlet port is the opening through which 'fluid must pass ... , precluding it from being a 'sidewall spaced from the outlet port,' as recited in claims 9 5 Appeal2018-001300 Application 12/317,459 and 13." Id. Accordingly, the Examiner's findings that Anderson's recess 43 corresponds to the claimed outlet port and that Anderson's exit opening 42 corresponds to the claimed sidewall are in error. For these reasons, we do not sustain the Examiner's decision rejecting claims 9 and 13, and claims 10-12, 14--18, and 20, which depend from either claim 9 or claim 13. DECISION The Examiner's rejection of claims 1, 2, 6-18 , and 20 is REVERSED. REVERSED 6