Ex Parte PRYNE et alDownload PDFPatent Trial and Appeal BoardSep 24, 201814338761 (P.T.A.B. Sep. 24, 2018) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 14/338,761 07/23/2014 23117 7590 09/26/2018 NIXON & V ANDERHYE, PC 901 NORTH GLEBE ROAD, 11 TH FLOOR ARLINGTON, VA 22203 FIRST NAMED INVENTOR Scott H. PRYNE 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. FPP-6008-18 8634 EXAMINER PHAM, TUONGMINH NGUYEN ART UNIT PAPER NUMBER 3752 NOTIFICATION DATE DELIVERY MODE 09/26/2018 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): PTOMAIL@nixonvan.com pair_nixon@firsttofile.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte SCOTT H. PRYNE, MIKE HORAZ, and MARK A. PRYNE Appeal2018-002501 Application 14/338,761 1 Technology Center 3700 Before EDWARD A. BROWN, MICHELLE R. OSINKSI, and PAUL J. KORNICZKY, Administrative Patent Judges. BROWN, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellant seeks review under 35 U.S.C. § 134(a) of the Examiner's decision rejecting claims 1-10 and 12-17, which are all the pending claims. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM-IN-PART and enter a NEW GROUND OF REJECTION. 1 American Felt & Filter Company ("Appellant") is the applicant, as provided by 37 C.F.R. § 1.46, and is identified as the real party in interest. Appeal Br. 3. Appeal2018-002501 Application 14/338,761 CLAIMED SUBJECT MATTER Appellant's disclosure "relates to a scented wafer and, more particularly, to a wafer that is impregnated with a scented material that emits a scent when heated that can be used for any suitable purpose, for example, aromatherapy, insect repellant, wild life attractant, medicinal uses, deodorants and odor control, perfume release and other desired or suitable purposes." Spec. ,r 3. Claim 1, reproduced below, is representative of the claimed subject matter: 1. A scented wafer for emitting a scent to a surrounding open environment, said scented wafer being uncovered to present a large surface area for emission of scent to the surrounding open environment, and comprising a body material formed of a heat-resistant fibrous material having a predetermined porosity resulting from a selected denier and length of fibers; and a scented material impregnated into the body material and constructed to melt and release a scent when exposed to heat of a predetermined temperature that exceeds the temperature of the surrounding open environment and a melting point of the scented material; wherein the body material retains structural integrity and does not melt at the predetermined temperature to facilitate the reuse or replacement of the wafer. Appeal Br. 12 (Claims App.). REJECTIONS 1. Claims 1, 10, 12, 13, 15, and 17 are rejected under 35 U.S.C. § 103 as unpatentable over Spector (US 5,007,529, issued Apr. 16, 1991) and Pesu (US 8,716,632 Bl, issued May 6, 2014). 2 Appeal2018-002501 Application 14/338,761 2. Claims 2--4, 6, 7, and 16 are rejected under 35 U.S.C. § 103 as unpatentable over Spector, Pesu, and Adair (US 7,670,566 B2, issued Mar. 2, 2010). 3. Claim 5 is rejected under 35 U.S.C. § 103 as unpatentable over Spector, Pesu, and McEwen (US 2004/0217188 Al, published Nov. 4, 2004). 4. Claims 8, 9, and 14 are rejected under 35 U.S.C. § 103 as unpatentable over Spector, Pesu, and Sharma (US 5,800,897, issued Sept. 1, 1998). ANALYSIS Rejection 1 Claims 1. 10. 12. 13. and 17 As for claim 1, the Examiner finds that Spector teaches a scented wafer comprising a body material (pad 12) formed of heat-resistant fibrous material and a scented material ("fragrance in wax form coats the fibers of the pad") impregnated into the body material and constructed to melt and release a scent when exposed to heat retained in can 10 of a predetermined temperature that exceeds the temperature of the surrounding open environment and a melting point of the scented material. Final Act. 2-3 (citing Spector, col. 3, 11. 3-9, col. 4, 11. 28-33); see also Spector, Figs. 1, 2. The Examiner finds that Spector does not teach that scented wafer 12 is "uncovered to present a large surface area for emission of scent to the surrounding open environment," as claimed. Id. at 3--4; see also Spector, Figs. 1, 2. Instead, pad 12 is covered by cover 11 with vent hole 17. Ans. 3. 3 Appeal2018-002501 Application 14/338,761 Spector discloses an air-freshener package comprising a container including can 10 and cover 11 and porous pad 12 housed in the container. See Spector, col. 2, 11. 38--43, Figs. 1, 2. Vent hole 17 is formed in cover 11 to allow discharge of aromatic vapor from the package. Id. at col. 3, 11. 34-- 41, 55-59, Fig. 2. The container is formed of a material that is permeable to and not heated by microwave energy. Id. at col. 2, 11. 43--49. Pad 12 is formed of a porous absorbent material and "is more or less permeable to microwave energy and therefore only slightly heated thereby." Id. at col. 3, 11. 3-7. The fragrance impregnating pad 12 can be in liquid form, or "may be incorporated in a solid wax or other material which coats the fibers of the pad and which when rendered molten by microwave energy, releases the fragrance." Id. at col. 4, 11. 28-32. When the package is irradiated with microwave energy, only the fragrance is heated, causing the fragrance to generate an aromatic vapor discharged into the atmosphere. Id. at col. 3, 11. 28-33. The Examiner finds that Pesu teaches a system for adding fragrance into a room by heating a scent bowl warmer assembly (scent pod warmer 300, scent pod warmer surface 302, scent pod container 102, base 104) containing an uncovered scent emitter (scented wax 112). Final Act. 4 (citing Pesu, col. 5, 11. 21-31; showing annotated Fig. 2 of Pesu). The Examiner also finds that Pesu teaches that the scent emitter can be a fragrance impregnated substrate made of a material that does not melt. Ans. 3 ( citing Pesu, col. 5, 11. 21-27). The Examiner determines that it would have been obvious to modify Spector in view of Pesu to result in "the scented wafer being uncovered to present a large surface area for emission of scent to the surrounding open environment" to "disperse the scent 4 Appeal2018-002501 Application 14/338,761 throughout the space at much faster rate." Final Act. 4 (citing Pesu, col. 5, 11. 21-31 ); see also Ans. 3 ("an entire top surface of the pad 12 [ of Spector] can be exposed for greater amount of fragrance vapor allowed to be emitted into the air, instead of emission via a tiny vent hole"). Appellant contends that the air-freshener package of Spector requires the use of a microwave oven, a porous pad that will be heated by microwave energy, and a container 10 formed of thermal insulation material permeable to microwave energy enclosing the porous pad. Appeal Br. 6-7. In contrast, Appellant contends that all that is required to emit a scent to the surrounding open environment in the present invention is to expose the uncovered scented wafer to heat of a predetermined temperature. Id. at 7. Appellant also contends that Pesu's scent bowl warmer assembly containing a scent emitter is different from the claimed uncovered scented wafer. Appeal Br. 7. Appellant also contends that Pesu's scent emitter melts when exposed to heat from the scent pod warmer, whereas the claimed body material does not melt at the predetermined temperature. Id. Appellant's contentions are unpersuasive. The Examiner does not propose to modify Spector to utilize Pesu's scent pod warmer. Appeal Br. 7. Rather, the Examiner proposes to modify Spector so that porous pad 12 is used "uncovered" in view of Pesu. Ans. 3. Removing cover 11 of Spector's container would leave the upper surface of pad 12 completely uncovered. Claim 1 recites that the scented material is "constructed to melt and release a scent when exposed to heat of a predetermined temperature that exceeds the temperature of the surrounding open environment and a melting point of the scented material." Appeal Br. 12 (Claims App. (emphasis added)). Claim 1 does not recite any limitation that excludes the use of microwave energy to 5 Appeal2018-002501 Application 14/338,761 heat the uncovered pad 12 in Spector. Uncovering the upper surface of pad 12 in Spector would still allow pad 12 to be heated by microwave energy and, consequently, to release a scent. It is the Examiner's position that uncovering the upper surface of pad 12 in Spector would provide increased discharge of aromatic vapor to the surrounding environment when desired. Accordingly, the Examiner identifies a benefit of uncovering pad 12. At the same time, because cover 11, like can 10, has good thermal insulation properties, removing cover 11 would appear to also have some effect on heat transfer from the interior of the container to the exterior. See Spector, col. 3, 11. 48-54. We note, however, that a combination of references may simultaneously have advantages and disadvantages, and the benefits, both lost and gained, are to be weighed against each other. See Medichem, S.A. v. Rolabo, S.L., 437 F.3d 1157, 1165 (Fed. Cir. 2006); Winner Int'! Royalty Corp. v. Wang, 202 F.3d 1340, 1349 n.8 (Fed. Cir. 2000). As the Examiner identifies a benefit associated with Pesu's uncovered scent emitter for modifying Spector, which Appellant does not persuasively refute, Appellant has not apprised us of any error in the Examiner's findings or rationale. Accordingly, we sustain the rejection of claim 1, and of dependent claims 10, 12, 13, and 17, which are not separately argued, as unpatentable over Spector and Pesu. Claim 15 Claim 15 depends from claim 1 and recites, "the body being formed with numerous edges and grooves to create a large surface area for emission of the scented material when heated and melted." Appeal Br. 13 (Claims 6 Appeal2018-002501 Application 14/338,761 App. (emphasis added)). The Examiner finds that body 12 in Spector meets this limitation. Final Act. 6. According to the Examiner: Id. it is interpreted that the fibrous/sponge-like material has numerous edges and grooves within its porous body via fiber strands being woven or connection points of different fiber materials being bonded, therefore already provided with larger surface area than, for example, a solid sheet of paper; 'porosity' via definition 'having full of tiny holes', hence having numerous edges and grooves). Appellant contends that claim 15 recites "a porous wafer body material and the numerous edges and grooves to create the large surface area," which is in not disclosed in Spector. Appeal Br. 8. Regarding the claimed subject matter, Appellant refers to edges and grooves 14, 114, and 214 provided in wafer bodies 12, 112 and 212 shown in Figures 1, IA, and lB of the application. Id. The Examiner responds that claim 15 does not define that the "numerous edges and grooves are additional to or are different from the edges and grooves of the pores in the pad due to its porosity." Ans. 4. Appellant's contention that Spector does not disclose the claimed edges and grooves is persuasive. Figures 1, IA, and IB of Appellant's application show that edges and grooves 14, 114, and 214 are formed in the outer surface of wafer 10. These edges and grooves "create a greater surface area for emission of the scent." Spec. ,r 22. As such, these features are exterior, surface structures in addition to the internal porous structure of the porous body material. Spector discloses a "cylindrical porous pad 12" as shown in Figure 3. See Spector, col. 2, 1. 42. Pad 12 does not include "numerous edges and grooves," as claimed. 7 Appeal2018-002501 Application 14/338,761 Accordingly, we do not sustain the rejection of claim 15 as unpatentable over Spector and Pesu. Rejections 2-4 Appellant contends that each of Adair, McEwen, and Sharma fails to cure the deficiencies of Spector and Pesu with regard to claim 1. Appeal Br. 8-9. As Appellant has not apprised us of any error in the rejection of claim 1, we thus sustain the rejections of claims 2--4, 6, 7, and 16 as unpatentable over Spector, Pesu, and Adair, claim 5 as unpatentable over Spector, Pesu, and McEwen, and claims 8, 9, and 14 as unpatentable over Spector, Pesu, and Sharma, for the same reasons as for claim 1. New Ground of Re} ection Pursuant to 37 C.F.R. § 4I.50(b), we enter a new ground of rejection against claim 1 under 35 U.S.C. § 102(a)(l) as anticipated by Spector. We find that Spector discloses all the limitations recited in claim 1. Particularly, Spector discloses a scented wafer for emitting a scent to a surrounding open environment. See, e.g., Spector, Abstract, Figs. 1-3. Spector also depicts the scented wafer as uncovered to present a large surface area for emission of scent to the surrounding open environment. See, e.g., id. Fig. 3 (showing porous pad 12 uncovered). The scented wafer comprises a body material formed of a heat-resistant fibrous material that has a predetermined porosity resulting from a selected denier and length of fibers. 2 In this regard, Spector discloses that the pad comprises fibers and is formed of a porous material and can be a highly-porous absorbent material. See, e.g., id. col. 3, 11. 3-5, col. 4, 11. 31-32. A scented material is 2 We adopt the Examiner's finding. See Final Act. 2. Appellant has not apprised us of any error in this finding. 8 Appeal2018-002501 Application 14/338,761 "impregnated into the body material and constructed to melt and release a scent when exposed to heat of a predetermined temperature that exceeds the temperature of the surrounding open environment and a melting point of the scented material," as claimed. See, e.g., id. col. 4, 11. 28-32. The body material of the scented wafer retains structural integrity and does not melt at the predetermined temperature to facilitate the reuse or replacement of the wafer. See, e.g., id. col. 3, 11. 3-9 (describing pad "is more or less permeable to microwave energy and therefore only slightly heated thereby"), 11. 60-65 (describing that the pad can be reused). Therefore, we enter a new ground of rejection of claim 1 under 35 U.S.C. § 102(a)(l) as anticipated by Spector. No inference should be drawn from our not making a new ground of rejection of other pending claims. 3 Should there be further prosecution of the application, the Examiner can determine whether to make a new ground of rejection of any other claims. DECISION We affirm the rejections of claims 1-14, 16, and 17, and reverse the rejection of claim 15. We enter a new ground of rejection of claim 1 under 35 U.S.C. § 102(a)(l) as anticipated by Spector. 3 See 37 C.F.R. § 4I.50(b); see also MPEP § 1213.02. Under§ 4I.50(b), the Board may, in its decision, make a new rejection of any pending claim. However, because the Board's exercise of authority under this provision is discretionary, no inference should be drawn from the decision to exercise that discretion with respect to only some of the claims on appeal. 9 Appeal2018-002501 Application 14/338,761 FINALITY OF DECISION This decision contains a new ground of rejection pursuant to 37 C.F.R. § 4I.50(b). 37 C.F.R. § 4I.50(b) provides "[a] new ground of rejection pursuant to this paragraph shall not be considered final for judicial review." 37 C.F.R. § 4I.50(b) also provides: When the Board enters such a non-final decision, [Appellant], within two months from the date of the decision, must exercise one of the following two options with respect to the new ground of rejection to avoid termination of the appeal as to the rejected claims: ( 1) Reopen prosecution. Submit an appropriate amendment of the claims so rejected or new Evidence relating to the claims so rejected, or both, and have the matter reconsidered by the examiner, in which event the prosecution will be remanded to the examiner. The new ground of rejection is binding upon the examiner unless an amendment or new Evidence not previously of Record is made which, in the opinion of the examiner, overcomes the new ground of rejection designated in the decision. Should the examiner reject the claims, [Appellant] may again appeal to the Board pursuant to this subpart. (2) Request rehearing. Request that the proceeding be reheard under § 41.52 by the Board upon the same Record. The request for rehearing must address any new ground of rejection and state with particularity the points believed to have been misapprehended or overlooked in entering the new ground of rejection and also state all other grounds upon which rehearing is sought. Further guidance on responding to a new ground of rejection can be found in MPEP § 1214.01. 10 Appeal2018-002501 Application 14/338,761 No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv). AFFIRMED-IN-PART 37 C.F.R. § 4I.50(b) 11 Copy with citationCopy as parenthetical citation