Ex Parte PRYNE et al

Patent Trial and Appeal Board

Sep 24, 2018

14338761 (P.T.A.B. Sep. 24, 2018)

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).
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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.
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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
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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
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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
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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.
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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.
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"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.
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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.
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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)
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