S.C. Johnson & Son, Inc.

Patent Trials and Appeals Board

Jul 27, 2020

13633791 - (D) (P.T.A.B. Jul. 27, 2020)

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.
13/633,791 10/02/2012 David C. Belongia J-5865US (510009.01818) 7966
155316 7590 07/27/2020
S.C. JOHNSON & SON, INC./Quarles & Brady LLP
1525 Howe Street
Racine, WI 53403-2236
EXAMINER
HOBSON, STEPHEN
ART UNIT PAPER NUMBER
1776
NOTIFICATION DATE DELIVERY MODE
07/27/2020 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):
MJZolnow@scj.com
SELechne@scj.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte DAVID C. BELONGIA
____________

Appeal 2019-005181
Application 13/633,791
Technology Center 1700
____________

Before KAREN M. HASTINGS, BRIAN D. RANGE, and
MERRELL C. CASHION, JR., Administrative Patent Judges.

CASHION, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from a final
rejection of claims 1–10, 21, and 22. We have jurisdiction under 35 U.S.C.
§ 6(b).
We AFFIRM.

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies the real party in interest as S. C. Johnson
& Son, Inc. Appeal Br. 2.
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The invention is generally directed to a volatile material dispensing
system designed to inconspicuously dispense volatile materials in large
spaces. Spec. ¶ 4. The dispensing system receives a volatile material
dispenser comprising an impermeable reservoir and a permeable membrane
in an orientation where the dispenser’s impermeable reservoir faces the
airflow directed to the dispenser, which results in an indirect airflow
contacting the permeable membrane. Application Figures 3, 3A, 7, 13;
Spec. ¶¶ 46, 48. This airflow pattern creates a pressure gradient across the
permeable membrane, with a higher pressure existing in the ambient air than
the pressure in the dispenser, which causes the volatile material to diffuse
across the membrane and into the ambient air. Spec. ¶ 39. Claim 1 is
illustrative of the subject matter claimed and is reproduced below from the
Claims Appendix to the Appeal Brief:
1. A dispensing system for dispensing a material,
comprising:

a housing for receipt of a dispenser having an
impermeable reservoir holding the material and a permeable
membrane extending across an open end of the impermeable
reservoir, wherein the permeable membrane is configured to
diffuse the material and faces at least one inlet vent of the
housing and is spaced apart from a top surface of the housing,
and wherein the housing includes a plurality of vents positioned
360 degrees around a perimeter of the housing;

a lid hingedly attached to the housing, wherein the lid
includes vents; and

a fan disposed within the housing,

wherein the fan is adapted to draw air into the housing
and diffuse the material charged air from the plurality of vents
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of the housing with a 360 degree dispersal pattern.

Independent claims 21 and 22 are also directed to a dispensing system
similar to the dispensing system of claim 1 but include additional features.
Appellant requests review of the following rejections from the
Examiner’s Final Office Action:
I. Claims 1–5 rejected under 35 U.S.C. § 103(a) as unpatentable
over Yamamoto (US 2007/0183940 Al, published August 9, 2007) and
McElfresh (US 5,478,505, issued December 26, 1995).

II. Claims 6 and 7 rejected under 35 U.S.C. § 103(a) as
unpatentable over Yamamoto, McElfresh, and Huffman (US 2007/0094835
Al, published May 3, 2007).

III. Claims 8–10 rejected under 35 U.S.C. § 103(a) as unpatentable
over Yamamoto, McElfresh, Huffman, and Wu (US 2006/0280601 Al,
published December 14, 2006).

IV. Claims 21 and 22 rejected under 35 U.S.C. § 103(a) as
unpatentable over Yamamoto, McElfresh, and Brown (US 2006/0043619 Al,
published March 2, 2006).

Appellant presents arguments only for claim 1 and relies on these
arguments to address the rejections of all dependent claims. See generally
Appeal Br. Accordingly, we select claim 1 as representative of the subject
matter claimed and decide the appeal as to all grounds of rejections based on
the arguments presented for claim 1.

OPINION
After review of the respective positions Appellant provides in the
Appeal and Reply Briefs and the Examiner provides in the Final Action and
the Answer, we AFFIRM the Examiner’s prior art rejections of claims 1–10,
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21, and 22 under 35 U.S.C. § 103(a) for essentially the reasons the
Examiner presents in the Final Office Action and the Answer. We add the
following for emphasis.

Claim 1
As a preliminary matter, system claim 1 recites an apparatus. An
apparatus must be distinguished from the prior art apparatus on the basis of
structure. Therefore, the patentability of an apparatus claim depends only on
the claimed structure for the apparatus, not on the use or purpose of that
structure or the function or result of that structure. Catalina Mktg. Int’l, Inc.
v. Coolsavings.com Inc., 289 F.3d 801, 809 (Fed. Cir. 2002); In re Danly,
263 F.2d 844, 848 (CCPA 1959); In re Gardiner, 171 F.2d 313, 315–16
(CCPA 1948).
In addition, while claim 1 describes a dispenser for use with the
claimed apparatus, the claim does not positively recite this dispenser.
Instead, the claim only recites that the apparatus provides a housing for
receipt of a dispenser. Further, the dispenser recited in the claim is
tantamount to a material upon which the apparatus components work. See
Application Figures 7–8; Spec. ¶ 39. Language in an apparatus claim
directed to the function, operation, intent-of-use, and materials upon which
these apparatus components work that does not structurally limit the
apparatus components or patentably differentiate the claimed apparatus from
an otherwise identical prior art apparatus will not support patentability. See,
e.g., In re Rishoi, 197 F.2d 342, 344–45 (CCPA 1952); In re Otto, 312 F.2d
937, 940 (CCPA 1963); In re Ludtke, 441 F.2d 660, 663–64 (CCPA 1971);
In re Yanush, 477 F.2d 958, 959 (CCPA 1973).
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The Examiner finds that Yamamoto discloses a dispensing system
comprising the claimed device’s structural components. Final Act. 4–5.
The Examiner finds that Yamamoto does not disclose the dispenser recited
in claim 1. Id. at 5. The Examiner turns to McElfresh as teaching that the
claimed volatile material dispenser comprising an impermeable reservoir
and a permeable membrane is known.2 Final Act. 6; McElfresh Figure 3.
The Examiner finds that McElfresh also teaches placing the dispenser in an
orientation where the dispenser’s impermeable reservoir faces the airflow
directed to the dispenser, which results in an indirect airflow contacting the
permeable membrane. Final Act. 6; McElfresh Figure 11, col. 7, ll. 1–15.
The Examiner determines that it would have been obvious to one of ordinary
skill in the art to modify Yamamoto’s dispensing system so as to receive
McElfresh’s dispenser and to provide the requisite airflow for diffusion of
the volatile material as taught by McElfresh. Final Act. 6; Ans. 20.
Appellant has not contested adequately the Examiner’s findings that
Yamamoto discloses the claimed apparatus structure. See generally Appeal
and Reply Briefs. Instead, the premise of Appellant’s arguments is that
Yamamoto’s device would not be capable of generating the requisite airflow
necessary to diffuse the volatile material from McElfresh’s dispenser.
Appellant argues that using McElfresh’s dispenser comprising an
impermeable reservoir in Yamamoto’s dispensing system would render
Yamamoto’s device unusable because Yamamoto uses a dispenser that is air

2 Appellant also acknowledges in the Specification that “[t]he present
dispenser 38 [that is, the claimed dispenser] and the volatile material 64 are
similar to those described in U.S. Patent Nos. 7,213,770, 7,523,577, and
7,665,238.” Spec. ¶ 37.
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permeable. Appeal Br. 7. That is, Appellant argues that Yamamoto’s
dispensing system would not provide the requisite airflow pattern to draw
the volatile material from McElfresh’s dispenser.
Appellant’s argument does not identify reversible error in the
Examiner’s determination of obviousness. As the Examiner explains in the
Answer, the substitution of the type of volatile material dispenser would
require modification of the device to alter the airflow pattern needed for the
dispenser, as taught by McElfresh’s Figure 11. Ans. 20. Thus, the
Examiner’s rejection is not merely replacing dispensers but also modifying
Yamamoto’s device to provide the airflow pattern needed for the dispenser
used. It is well established that the obviousness inquiry does not ask
“whether the references could be physically combined but whether the
claimed inventions are rendered obvious by the teachings of the prior art as a
whole.” In re Etter, 756 F.2d 852, 859 (Fed. Cir. 1985) (en banc); see also
In re Keller, 642 F.2d 413, 425 (CCPA 1981) (stating “[t]he test for
obviousness is not whether the features of a secondary reference may be
bodily incorporated into the structure of the primary reference”). “[T]he test
[for obviousness] is what the combined teachings of the references would
have suggested to those of ordinary skill in the art.” Keller, 642 F.2d at
425–26. Therefore, Appellant’s argument does not address adequately the
rejection the Examiner presents.
Moreover, McElfresh teaches that the disclosed dispenser can be used
by either having the permeable membrane of the dispenser facing directly to
the airflow (McElfresh col. 2, ll. 46–49) or having the impermeable reservoir
of the dispenser facing directly to the airflow (with indirect airflow to the
permeable membrane) (id. at col. 2, ll. 34–45) with equivalent results in the
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diffusion of the volatile material. Given this disclosure, Appellant has not
explained adequately why one skilled in the art, using no more than ordinary
creativity, would not have been capable of modifying Yamamoto’s device to
provide the airflow necessary to draw the volatile material from a dispenser
taking into account the orientation of McElfresh’s dispenser with respect to
the airflow. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007) (“A
person of ordinary skill is also a person of ordinary creativity, not an
automaton.”); see also In re Sovish, 769 F.2d 738, 743 (Fed. Cir. 1985)
(presuming skill on the part of one of ordinary skill in the art).
Appellant argues that the Examiner’s proposed modifications are
based on impermissible hindsight and would change the principle of
operation of Yamamoto’s device. Appeal Br. 7–9.
This argument also lacks persuasive merit for the reasons we give
above. Appellant’s argument does not take into account that the rejection
modifies Yamamoto’s device to provide the requisite airflow pattern based
on the orientation of the volatile material dispenser in light of McElfresh’s
teachings.
Appellant argues that McElfresh’s device will always generate
turbulent negative pressure regardless of the type of fragrance containment
device located within the housing 10 because there is no airflow through the
housing 10. Appeal Br. 10.
This argument is also unpersuasive of reversible error in the
Examiner’s determination of obviousness. We first note that both McElfresh
and Appellant’s provide space3 for the volatile material to cross the

3 We have considered Appellant’s arguments with respect to the dispenser
being spaced apart from the housing. Appeal Br. 5–6. However, we agree
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permeable membrane where it contacts the air that entrains it for subsequent
diffusion. Spec. ¶¶ 39, 45, 46; McElfresh col. 2, ll. 39–46. Therefore,
regardless of whether the airflow is directed inside a device or external to it,
the technique for entraining the volatile material is the same. The Examiner
provided a reasonable basis for one skilled in the art to modify Yamamoto’s
device to provide the requisite airflow pattern for the distribution of a
volatile material based on the dispenser used in the device. In re O’Farrell,
853 F.2d 894, 904 (Fed. Cir. 1988) (“For obviousness under § 103, all that is
required is a reasonable expectation of success.”). Appellant’s argument
again fails to address the rejection the Examiner presents. Etter, 756 F.2d at
859; Keller, 642 F.2d at 425–26.
Accordingly, we AFFIRM the Examiner’s prior art rejections of
claims 1–10, 21, and 22 under 35 U.S.C. § 103(a) for the reasons presented
by the Examiner and given above.

with the Examiner that the claim only recites the permeable membrane as
being spaced apart and Yamamoto’s Figure 7 shows this limitation. Ans. 18.
Moreover, this limitation is related to the association of the dispenser, the
material worked upon, with a dispensing system component. As indicated
above, this does not structurally limit the apparatus components or
patentably differentiate the claimed apparatus from the prior art apparatus.
Rishoi, 197 F.2d at 344–45; Otto, 312 F.2d at 940; Ludtke, 441 F.2d at 663–
64; Yanush, 477 F.2d at 959.
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CONCLUSION
In summary:

Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–5 103(a) Yamamoto,
McElfresh
1–5
6, 7 103(a) Yamamoto,
McElfresh,
Huffman
6, 7
8–10 103(a) Yamamoto,
McElfresh,
Huffman, Wu
8–10
21, 22 103(a) Yamamoto,
McElfresh, Brown
21, 22
Overall
Outcome
1-10, 21,
22

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED