Ex Parte Gasper

Patent Trial and Appeal Board

Aug 29, 2017

13841229 (P.T.A.B. Aug. 29, 2017)

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.
13/841,229 03/15/2013 Thomas P. Gasper J-5662 3163
28165 7590
S.C. JOHNSON & SON, INC.
1525 HOWE STREET
RACINE, WI53403-2236
EXAMINER
NGO, LIEN M
ART UNIT PAPER NUMBER
3754
NOTIFICATION DATE DELIVERY MODE
08/31/2017 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 THOMAS P. GASPER1
Appeal 2016-005707
Application 13/841,229
Technology Center 3700
Before JENNIFER D. BAHR, MICHELLE R. OSINSKI, and
BRANDON J. WARNER, Administrative Patent Judges.
BAHR, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134 from the Examiner’s
decision rejecting claims 1, 2, and 5—20. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM-IN-PART.
1 Appellant is the Applicant, S. C. Johnson & Son, Inc., which, according to
the Appeal Brief, is the real party in interest. Appeal Br. 2.
Appeal 2016-005707
Application 13/841,229
THE CLAIMED SUBJECT MATTER
Claim 1, reproduced below, is illustrative of the claimed subject
matter.
1. A dispensing system, comprising:
a conduit including a valve stem of an aerosol container
and a volumetric capacity between an internal discharge orifice
for receipt of a flow of pressurized fluid from the valve stem and
an external discharge orifice;
a volume of pressurized fluid; and
a sensor,
wherein the fluid has a volumetric flow rate of about 0.05
ml/ms to about 15 ml/ms when released into the volumetric
capacity from the internal discharge orifice, and
wherein the sensor detects a sound at the external
discharge orifice.
REJECTIONS
I. Claims 1, 5—13, and 18—20 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over Nielsen (US 2010/0006667 Al,
pub. Jan. 14, 2010) and one of Smrt (US 5,314,097, iss. May
24, 1994) and van der Wal (US 5,318,208, iss. June 7, 1994).
II. Claim 2 stands rejected under 35 U.S.C. § 103(a) as
unpatentable over Nielsen, Tillotson (WO 2006/059059 Al,
pub. June 8, 2006), and one of Smrt and van der Wal.
III. Claims 14—16 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Nielsen.
IV. Claims 1, 5—16, and 18—20 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over Ganzeboom (US 5,938,076, iss.
Aug. 17, 1999), Nielsen, and one of Smrt and van der Wal.
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V. Claim 17 stands rejected under 35 U.S.C. § 103(a) as
unpatentable over Ganzeboom, Nielsen, and Tillotson.2
DISCUSSION
Rejection I
Claims 1 and 18—20
The Examiner finds that Nielsen discloses a dispensing system,
substantially as claimed, except for, in pertinent part, a “conduit including a
volumetric capacity between the internal orifice from the valve stem and an
external discharge orifice.” Final Act. 3. However, the Examiner finds that
each of Smrt and van der Wal discloses “an aerosol container comprising a
conduit including a val[v]e stem and a volumetric capacity between the
internal orifice from the valve stem and an external discharge orifice.” Id.
(citing Smrt, Figs. 1, 2; van der Wal, Figs. 1, 4). The Examiner determines
that it would have been obvious to modify Nielsen’s dispensing system
“with the conduit including a volumetric capacity between the internal
orifice from the valve stem and an external discharge orifice, in view ... of
Smrt... or [v]an der Wal[], in order to facilitate of spraying the contain
[sic] in an angled target with an extending nozzle.” Id.
Appellant argues that “the proposed combination would
impermissibly render Niels[e]n unsatisfactory for its intended purpose.”
2 We note that claim 17 depends from independent claim 14, which stands
rejected under 35 U.S.C. § 103(a) as being unpatentable over Ganzeboom,
Nielsen, and one of Smrt and van der Wal. See Appeal Br. 31, Claims App.;
Final Act. 5—6. Because claim 17 includes the limitations of base claim 14,
it is illogical for claim 17 to be rejected based on a combination of only
Ganzeboom, Nielsen, and Tillotson when the base claim is rejected based on
a combination of Ganzeboom, Nielsen, and one of Smrt and van der Wal.
3
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Application 13/841,229
Appeal Br. 12. In particular, Appellant asserts that Nielsen uses inverted
marking spray paint, whereas Smrt and van der Wal spray liquid “sideways”
at a right-angle to the direction of the valve stem. Id. at 12, 13. According
to Appellant, modifying Nielsen’s marking device to include a sideways­
firing spray head, as taught by Smrt or van der Wal, “would render Niels[e]n
entirely unusable for its intended purpose of ‘dispensing a marking
substance on the ground.”’ Id. at 14 (quoting Nielsen, Abstract). This
argument is not persuasive of error. To the extent that modifying Nielsen’s
marking device based on the teachings of Smrt or van der Wal would result
in the marking paint being sprayed sideways, Appellant does not
persuasively explain why such modification would prevent Nielsen’s
marking device from suitably operating to dispense the marking substance
on the ground. With respect to operating the marking device, Nielsen
discloses that “[t]he user grasps handle 114 of marking device 100 and aims
nozzle 130 of marking dispenser 122 at the intended target.” Nielsen 122.
In this regard, we fail to see why the proposed modification of Nielsen’s
device would result in a device that a user could not manipulate and aim to
mark an intended target, such as the ground.
For the above reasons, Appellant does not apprise us of error in the
Examiner’s determination that the subject matter of claim 1 would have been
obvious. Accordingly, we sustain the rejection of claim 1 under 35 U.S.C.
§ 103(a) as unpatentable over Nielsen and one of Smrt and van der Wal.
In contesting the rejection of independent claim 18, Appellant again
argues that modifying Nielsen’s marking device to include a sideways-firing
spray head, as taught by Smrt or van der Wal, “would render Niels[e]n
entirely unusable for its intended purpose of ‘dispensing a marking
4
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substance on the groundAppeal Br. 21 (quoting Nielsen, Abstract). This
assertion essentially repeats the argument discussed above with respect to
claim 1 and is unpersuasive with respect to claim 18 for the same reasons.
Accordingly, we sustain the rejection of claim 18, and its dependent claims
19 and 20, as unpatentable over Nielsen and one of Smrt and van der Wal.
Claim 5
Claim 5 depends from claim 1 and further recites that “the sensor
detects a level of the sound that corresponds to different flow rates.” Appeal
Br. 29, Claims App. The Examiner finds that Nielsen discloses that “sound
sensing devices or sound sensors can be used for defining whether the paint
dispenser [is becoming] empty.” Ans. 3 (citing Nielsen 1102). Appellant
contends that, “[although Niels[e]n mentions a sound sensing device for
detecting the sound of a substance being sprayed from a dispenser, Nielsen
does not teach or suggest how the sound sensing device detects the sound.”
Appeal Br. 15; see Reply Br. 2. For the following reasons, this argument is
not persuasive of error.
Nielsen discloses that various types of sensors can be used for
“determining whether the paint dispenser is becoming empty.” Nielsen
1102. More particularly, Nielsen discloses that, “[i]n one example of
determining whether the paint dispenser is becoming empty, sound sensing
devices may be used for detecting the sound of marking substance 134 being
sprayed from marking dispenser 122.” Id.', see also id. f2l (disclosing that
“marking dispenser 122 may be an aerosol canister that contains marking
paint,” and includes nozzle 130 for dispensing the marking paint). To the
extent that Nielsen may not specify how the sound sensing device detects
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sound, claim 5 only requires a sensor that detects a level of the sound
generated at the external discharge orifice. Although the claim also recites
that the detected level of the sound “corresponds to different flow rates,” this
recitation simply acknowledges an association between the detected sound
level and flow rates without placing meaningful limits on the structure of the
sensor or dispensing device.3
Further, Appellant’s Specification describes that the sensor detects
sound pressure levels generated by discharging pressurized fluid from a
container, and the sound pressure levels correspond to different fluid flow
rates. See Spec. 141 (describing that high and low sound pressure levels
correspond, respectively, to high and low flow rates). In our view, one of
ordinary skill in the art would appreciate that Nielsen’s spray dispenser, in
discharging a pressurized fluid, would similarly generate sound levels from
the discharge orifice that would correspond to different flow rates, and there
would be different sound levels as the dispenser becomes empty (i.e., the
flow rate reduces). Thus, in order for Nielsen’s sound sensing device to
determine whether the dispenser is becoming empty, the sound sensing
device must detect the sound level generated by the discharged fluid, which
corresponds to different flow rates through the discharge orifice.
3 We note that neither claim 5 nor its base claim 1 recites any structure that
discerns a particular flow rate based on a detected level of the sound (e.g., a
programmed controller). Compare Appeal Br. 29, Claims App. (claim 5
reciting a sensor detecting a level of sound, but not reciting a controller for
analyzing the detected sound level), with Spec. 141 (disclosing controller 18
for determining, by distinguishing between high sound pressure levels and
lower sound pressure levels detected, whether the container is full, less full,
or empty).
6
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For the above reasons, Appellant does not apprise us of error in the
Examiner’s determination that the subject matter of claim 5 would have been
obvious. Accordingly, we sustain the rejection of claim 5 as unpatentable
over Nielsen and one of Smrt and van der Wal.
Claims 6—8 and 13
Claim 6, which depends from claim 5, further recites “a ratio of a
threshold level of sound to the detected level of sound during an actuation
state is less than one at a first stage and substantially unity at a second
stage.” Appeal Br. 29, Claims App. Claim 13, which depends from claim 1,
recites a substantially similar limitation. Id. at 30. Appellant argues that the
Examiner’s rejection fails to address this limitation, and the cited references
do not render obvious such a feature. See Appeal Br. 15—16, 19; Reply Br.
5—6. We agree that a sustainable case of obviousness has not been
established.
In rejecting claims 6 and 13, the Examiner does not make any factual
findings with respect to Nielsen, Smrt, or van der Wal regarding a ratio of a
threshold level of sound to the detected level of sound, as required in the
claims. See Final Act. 2-4; Ans. 2-4, 8—9. Moreover, the Examiner does
not articulate an apparent reason, with any rational underpinnings, as to why
this subject matter would have been obvious to a person having ordinary
skill in the art at the time of the invention. As such, the Examiner has not
made the initial factual findings to support a conclusion of obviousness with
respect to claims 6 and 13. See In re Warner, 379 F.2d 1011, 1017 (CCPA
1967) (In making a rejection based on obviousness, the examiner has the
initial duty of supplying the requisite factual basis and may not, because of
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Application 13/841,229
doubts that the invention is patentable, resort to speculation, unfounded
assumptions or hindsight reconstruction to supply deficiencies in the factual
basis). For this reason, we do not sustain the rejection of claims 6 and 13, or
claims 7 and 8, which depend from claim 6, as unpatentable over Nielsen
and one of Smrt and van der Wal.
Claim 9
Claim 9 depends from claim 1 and further recites that “the sensor
detects a frequency characteristic of the sound that is generated by at least
one of a shape of the conduit and a product formulation.” Appeal Br. 30,
Claims App. The Examiner relies on paragraph 102 of Nielsen to address
this feature. See Ans. 3. The Examiner also finds that “[a] sound sensor for
detecting frequency of the sound is well known in the art.” Id. at 7 (citing
Spec. 1136, 39, 40).
Appellant argues that “none of Niels [e]n, Smrt, van der Wal, or any
combination thereof, teaches or suggests a sensor that detects a frequency
characteristic of the sound that is generated by at least one of a shape of the
conduit and a product formulation.” Appeal Br. 17. This argument is not
persuasive. As discussed above, Nielsen discloses using a sound sensing
device to detect sound generated by discharging a marking substance from a
spray paint dispenser. See Nielsen 1102. Appellant’s Specification also
acknowledges that frequency is a known property of acoustic waves (i.e.,
sound), and “[s]uch characteristics of the acoustic waves 34 are functions of
the internal pressure of the container 28 and the mechanical design of all or
a portion of the surfaces defining the volumetric capacity of the conduit 14,
e.g., a mechanical design of the output valve of an aerosol container.”
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Application 13/841,229
Spec. 140 (emphasis added). In other words, the Specification identifies a
known relationship between the mechanical design of the conduit and the
frequency of sound generated by discharging fluid through the conduit.
Given that Nielsen discloses detecting a sound generated by discharging a
fluid and frequency is a known property of sound, Appellant fails to apprise
us of error in the Examiner’s finding that Nielsen discloses a sensor that
detects a frequency characteristic of the sound generated by the shape of the
conduit.4
For the above reasons, Appellant does not apprise us of error in the
Examiner’s determination that the subject matter of claim 9 would have been
obvious. Accordingly, we sustain the rejection of claim 9 as unpatentable
over Nielsen and one of Smrt and van der Wal.
Claims 10—12
Appellant argues that the Examiner erred in determining that the
subject matter of claim 10 would have been obvious because “none of
Niels[e]n, Smrt, van der Wal, or any combination thereof, teaches or
suggests a controller that initiates or prohibits at least one of an initial or
subsequent actuation of the dispensing system based on the detected
frequency characteristic.” Appeal Br. 17—18. For the following reasons, we
agree with Appellant.
4 Notably, claim 9 does not recite a processor for processing the sensor
output signals to analyze a frequency characteristic of the sound. See Spec.
140 (disclosing the sensor converting the waves into electrical signals for
further processing, such as analysis of frequency characteristics; the
disclosed sensor does not perform such analysis)
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Application 13/841,229
In rejecting claim 10, the Examiner finds that Nielsen discloses that
“sound sensing devices or sound sensors can be used for defining whether
the paint dispenser [is becoming] empty.” Ans. 3 (citing Nielsen 1102).
The Examiner also finds that Appellant’s Specification admits that “a
controller having a plurality of preprogrammed operational parameters
associated with a plurality of preprogrammed frequency characteristics,
wherein the controller compares a frequency characteristic of the sound to
the plurality of preprogrammed frequency characteristics,” is known in the
art. Id. at 4 (citing Spec. 143).
The portion of Appellant’s Specification cited by the Examiner
describes that “[t]he determination of a full or empty container 28 may be
based on a threshold sound pressure level that is known for full or empty
containers 28 and preprogrammed into the controller 18 for implementation
during a full or empty control logic.” Spec. 143. However, to the extent
that this portion of the Specification describes a controller that is
preprogrammed with a known threshold sound pressure level for full or
empty containers, such disclosure does not constitute an admission that the
preprogrammed controller recited in claim 10 was known in the art. Rather,
the “known” threshold sound pressure level is simply a predetermined
threshold sound pressure level.
Moreover, the Examiner does not articulate an apparent reason with
rational underpinnings why it would have been obvious to modify Nielsen to
include a controller programmed as required in claim 10. See KSR Int’l Co.
v. Teleflex Inc., 550 U.S. 398, 418 (2007) (pointing out that a conclusion of
obviousness must be supported by explicit findings and analysis establishing
an apparent reason to combine the known elements in the manner required in
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Application 13/841,229
the claim at issue). Consequently, the Examiner has not met the burden of
establishing a proper case of obviousness.
Accordingly, for at least the above reasons, we do not sustain the
rejection of claim 10, or its dependent claims 11 and 12, as unpatentable
over Nielsen and one of Smrt and van der Wal.
Rejection II
With respect to the rejection of claim 2, Appellant does not set forth
any additional substantive arguments separate from the arguments discussed
above, instead relying on the dependency of this claim from independent
claim 1. See Appeal Br. 14. Accordingly, Appellant does not apprise us of
error in the rejection of claim 2 under 35 U.S.C. § 103(a), which we sustain.
Rejection III
Independent claim 14 recites, in relevant part, “a controller having a
plurality of preprogrammed operational parameters associated with a
plurality of preprogrammed frequency characteristics, wherein the controller
compares a frequency characteristic of the sound to the plurality of
preprogrammed frequency characteristics.” Appeal Br. 31, Claims App.
Appellant argues that Nielsen fails to disclose such a feature. See id. at 6—8.
We agree with Appellant.
In rejecting claim 14, the Examiner finds that Nielsen discloses a
“dispensing system comprising control electronic 144 communicating with
a[nd] processing information from the detection mechanism 140; the control
electronic including a processor 150, a user interface 152, a storage device
154, a detection algorithm 156, etc.” Final Act. 4 (citing Nielsen || 25—30).
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The Examiner also finds that Nielsen discloses “an electronic controller 144
having a plurality of preprogramed operational parameters with a plurality of
preprogrammed characteristics^] and the controller comparing a
characteristic of the detecting of the sensor to the plurality of the
preprogrammed characteristics.” Ans. 7—8 (citing Nielsen || 25, 26, 29).
As discussed above, Nielsen discloses a marking device that
determines whether the paint dispenser is becoming empty. Nielsen
discloses, in an exemplary embodiment, using a sound sensing device
(detection mechanism 140) to detect the sound of paint being sprayed. See
Nielsen 1102. Control electronics 144 processes information from detection
mechanism 140 (e.g., sound sensing device) using processor 150, which is
programmed with detection algorithm 156. See id. 125. However, to the
extent that Nielsen discloses a controller preprogrammed with operational
parameters (i.e., control electronics 144 with processor 150 executing
detection algorithm 156), we discern no disclosure in Nielsen as to the
controller comparing a sound frequency characteristic to a plurality of
preprogrammed frequency characteristics, as required by claim 14.
The Examiner takes the position that Appellant’s Specification admits
that “a controller having a plurality of preprogrammed operational
parameters] associated with [a] plurality of preprogrammed frequency
characteristics as claimed is . . . known.” Ans. 8 (citing Spec. 143).
However, such a position is untenable. As discussed above with respect to
Rejection I of claim 10, the Specification describes a controller
preprogrammed with a known (i.e., predetermined) threshold sound pressure
level for full or empty containers, which does not constitute an admission
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that a preprogrammed controller as recited in claim 14 was known in the art.
See Spec. 143.
Moreover, the Examiner does not articulate an apparent reason with
rational underpinnings why it would have been obvious to modify Nielsen’s
controller to compare a detected sound frequency characteristic to a plurality
of preprogrammed frequency characteristics. See KSR, 550 U.S, at 418.
Consequently, the Examiner fails to set forth a proper case of obviousness.
Accordingly, for at least the above reasons, we do not sustain the
rejection of independent claim 14, and its dependent claims 15 and 16, as
unpatentable over Nielsen.
Rejection IV
In the rejection of claims 1, 5—16, and 18—20 as unpatentable over
Ganzeboom, Nielsen, and one of Smrt and van der Wal, the Examiner finds
that Ganzeboom discloses a dispensing system, substantially as claimed,
except for “the sensor for detecting a level of the sound corresponding to
different flow rates.” Final Act. 5. However, the Examiner finds that the
combination of Nielsen and one of Smrt and van der Wal “teach[es] an
aerosol dispensing system comprising a sensor for detecting a level of the
sound at the external discharge orifice corresponding to different flow rates
to sense the condition of the charge of the aerosol container corresponding to
the empty state of the container.” Id. The Examiner determines that it
would have been obvious “to replace the sensor in the invention of
Ganzeboom with a sensor for detecting a level of the sound corresponding to
different flow rates to sense the condition of the charge of the aerosol
container corresponding to the empty state of the container.” Id. at 6.
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Appellant argues that a person of ordinary skill in the art “would not
have a reason to modify Ganzeboom to include a sensor to detect a level of
the sound corresponding to different flow rates.” Appeal Br. 21. In
particular, Appellant asserts that “Ganzeboom already includes a
temperature sensor (10) specifically for the purpose of determining if the
aerosol can is empty.” Id. We find this argument persuasive of error.
“A rejection based on section 103 clearly must rest on a factual basis,
and these facts must be interpreted without hindsight reconstruction of the
invention from the prior art.” In re Warner, 379 F.2d at 1017. Further,
“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), cited with approval in KSR, 550
U.S. at 418. Here, the Examiner fails to meet this burden.
Ganzeboom discloses that “temperature sensor 10 measures the
temperature of the outflowing gas from the aerosol can,” and, “[i]f this
temperature rises below a preset ‘too high’ value, such as the temperature
when the can is empty, the high temperature signal is processed by controller
25 such that LED indicator 12 gives a signal.” Ganzeboom, col. 4,1. 65—col.
5,1. 3. Given that Ganzeboom’s temperature sensor already provides
information to controller 25 for determining whether a can is empty, the
Examiner does not adequately explain why one of ordinary skill in the art
would have been prompted to replace the temperature sensor with the sound
sensing device of Nielsen to accomplish the same function. As such, the
Examiner’s articulated reason (i.e., “to sense the condition of the charge of
the aerosol container corresponding to the empty state of the container”) in
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support of the proposed modification to Ganzeboom lacks rational
underpinnings.
For the above reasons, the Examiner fails to establish that a proper
case of obviousness. Thus, we do not sustain the Examiner’s rejection of
claims 1, 5—16, and 18—20 as unpatentable over Ganzeboom, Nielsen, and
one of Smrt and van der Wal.
Rejection V
In the rejection of claim 17, which depends from independent claim
14, the Examiner does not articulate any findings or reasoning, or rely on
any teachings of Tillotson, that would remedy the aforementioned deficiency
in the combination of Ganzeboom, Nielsen, and one of Smrt and van der
Wal. See Final Act. 6. Accordingly, we do not sustain the rejection of claim
17 under 35 U.S.C § 103(a).
DECISION
The Examiner’s decision rejecting claims 1, 5, 9, and 18—20 under
35 U.S.C. § 103(a) as unpatentable over Nielsen and one of Smrt and van
der Wal is AFFIRMED.
The Examiner’s decision rejecting claim 2 under 35 U.S.C. § 103(a)
as unpatentable over Nielsen, Tillotson, and one of Smrt and van der Wal is
AFFIRMED.
The Examiner’s decision rejecting claims 6—8 and 10—13 under
35 U.S.C. § 103(a) as unpatentable over Nielsen and one of Smrt and van
der Wal is REVERSED.
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The Examiner’s decision rejecting claims 14—16 under 35 U.S.C.
§ 103(a) as unpatentable over Nielsen is REVERSED.
The Examiner’s decision rejecting claims 1, 5—16, and 18—20 under
35 U.S.C. § 103(a) as unpatentable over Ganzeboom, Nielsen, and one of
Smrt and van der Wal is REVERSED.
The Examiner’s decision rejecting claims 17 under 35 U.S.C. § 103(a)
as unpatentable over Ganzeboom, Nielsen, and Tillotson 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)(l)(iv).
AFFIRMED-IN-PART
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