Ex Parte Dobler et al

Patent Trial and Appeal BoardSep 10, 2014

12290815 (P.T.A.B. Sep. 10, 2014)

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. 12/290,815 11/04/2008 Sven Dobler 7784 1557 7590 09/10/2014 Paul M. Denk Suite 170 763 South New Ballas Road St Louis, MO 63141 EXAMINER NGUYEN, DINH Q ART UNIT PAPER NUMBER 3752 MAIL DATE DELIVERY MODE 09/10/2014 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte SVEN DOBLER, AARON R. BAUHS, AHMED R. ALAI-TAFTI, and JONATHAN MILLEN ____________ Appeal 2012-007996 Application 12/290,8151 Technology Center 3700 ____________ Before NINA L. MEDLOCK, BART A. GERSTENBLITH, and JAMES A. WORTH, Administrative Patent Judges. WORTH, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s final rejection of claims 1–5, 9, and 10.2 We have jurisdiction under 35 U.S.C. §§ 134 and 6(b). We AFFIRM-IN-PART. 1 According to Appellants, the parties in interest include the inventors and Orlandi, Inc. (Br. 4). 2 Our decision refers to the Appellants’ Appeal Brief (“Br.,” filed Oct. 7, 2011), the Examiner’s Answer (“Ans.,” mailed Jan. 19, 2012), and the Final Rejection (“Final,” mailed Mar. 1, 2011). Appeal 2012-007996 Application 12/290,815 2 Introduction Appellants’ disclosure relates to a picture frame that contains an air freshener (Spec. 2, ll. 7–8). Claim 1, reproduced below, is the independent claim on appeal. 1. A decorative device for dispensing a freshening scent into a room, comprising: a frame having at least one aperture therethrough and a means for supporting said frame upright; a container, said container occupying said at least one aperture; and, a gel locating within said container, said gel comprising one or more polymers and an oil, and a freshening scent therein released over time. Br. 16, Claims App. Prior Art Relied Upon Peters US 1,775,784 Sept. 16, 1930 Wheatley US 2004/0169091 A1 Sept. 2, 2004 Leonard US 2006/0000920 A1 Jan. 5, 2006 Rejections on Appeal The Examiner maintains, and the Appellants appeal, the following rejections: 1) Claims 1, 3, 4, 9, and 10 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Leonard and Wheatley; and 2) Claims 2 and 5 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Leonard, Wheatley, and Peters. Appeal 2012-007996 Application 12/290,815 3 ANALYSIS Independent claim 1 Appellants argue that the Examiner erred in finding that the “32 volatile material” of Leonard constitutes a “gel,” as recited by claim 1 (Br. 11). However, the Examiner relies on Wheatley (¶ 54) for the gel of claim 1 (Final 2; Ans. 5). Appellants argue that Wheatley does not describe independent ingredients such as the “one or more polymers, and oil, and a freshening scent that is contain therein, for release over a period of time,” as further required (Br. 13). We agree with the Examiner that Wheatley (¶ 54) describes a “polymer” that can be combined with a “scented oil” to form a “gel” that serves as an air freshener. Ans. 5; see also Wheatley ¶ 70 (discussing time release properties of air fresheners). Appellants argue that Wheatley does not show any type of frame, or a container for holding a gel (Br. 12–13). However, the Examiner relies on Leonard for the “frame” and “container,” as recited in claim 1 (Ans. 5–6). The Examiner correctly finds that Leonard describes container 12, which serves as an air freshener dispenser, and frame 16 for holding container 12 (see Leonard ¶¶ 7, 39). We agree with the Examiner (Ans. 5) that it would have been obvious to a person of ordinary skill in the art to modify the device of Leonard by replacing the air freshener, consisting of a volatile material, in the container with an air freshener, consisting of a gel, as in Wheatley, inter alia, to prevent leaking. Accordingly, we sustain the rejection of claim 1 under 35 U.S.C. § 103(a) as being unpatentable over Leonard and Wheatley. Appeal 2012-007996 Application 12/290,815 4 Dependent claims 3, 9, and 10 Appellants argue that Leonard does not teach a “perforated lidding,” as recited by claim 3 (Br. 12). Appellants also argue that the prior art relied on by the Examiner does not teach that a vertical surface of the gel can be exposed “directly to the atmosphere,” as required by claims 9 and 10 (Br. 12). The Examiner finds that permeable membrane 24 of Leonard is perforated to let the material evaporate to the surrounding atmosphere (Ans. 6). We have carefully examined the portions of the prior art relied on by the Examiner, and we find insufficient evidence that permeable membrane 24 of Leonard is perforated to allow direct contact between the air freshener and the atmosphere. Rather, Leonard (¶ 43) discloses that permeable membrane 24 is comprised of low density polyethylene which allows the migration of fragrance through the permeable membrane by diffusion. Accordingly, we cannot sustain the rejection of claims 3, 9, and 10 under 35 U.S.C. § 103(a) as being unpatentable over Leonard and Wheatley. Dependent claims 2, 4, and 5 Appellants argue that there is nothing in Peters that describes a frame with a rear surface, a temporary backing, an extending stand, and a container having a flange, as recited by claim 4, i.e., “said frame having a rear surface; a backing temporarily secured to said rear surface, and said supporting means including at least one stand extending perpendicular to said backing; and, said container having a flange” (Br. 13). However, as with claim 1, the Examiner (Ans. 6) relies on Leonard for the structure of frame 16 and container 12. Indeed, Leonard discloses that frame 16 has a rear face 40, Appeal 2012-007996 Application 12/290,815 5 with a temporary backing 22 and extending stand 58, and that container 12 has flange 20 (Figs. 1–2; ¶¶ 42, 46, 54). Accordingly, we sustain the rejection of claim 4 under 35 U.S.C. § 103(a) as being unpatentable over Leonard and Wheatley. Appellants also argue that it would not have been obvious to have a rectangular frame with an opening for a photo, which has an aperture for holding a structured container, incorporating a flange, for holding scented gel, made of polymer and oil, as recited by claim 5 (Br. 13–14). Specifically, Appellants argue that it would not have been obvious to combine Peters with Leonard and Wheatley (Br. 13). We are unpersuaded by Appellants’ argument. The Examiner relies on Peters to show that the picture frame of Leonard could be made into a rectangular shape, as recited by claim 5 (Ans. 7). We agree with the Examiner that the desire to change the shape of the frame is a sufficient reason to combine the teachings of Peters with Leonard and Wheatley. In KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398 (2007), the Supreme Court stated that when considering obviousness that “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. at 418. We, therefore, sustain the rejection of claim 5 under 35 U.S.C. § 103(a) as being unpatentable over Leonard, Wheatley, and Peters. Appellants do not argue the patentability of claim 2 separately from the patentability of claims 1 and 5. As such, we also sustain the rejection of claim 2 under 35 U.S.C. § 103(a) as being unpatentable over Leonard, Wheatley, and Peters. Appeal 2012-007996 Application 12/290,815 6 DECISION The decision of the Examiner to reject claims 1, 2, 4, and 5 is affirmed. The decision of the Examiner to reject claims 3, 9, and 10 is reversed. 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-IN-PART mls