Ex Parte Ray et alDownload PDFPatent Trial and Appeal BoardSep 30, 201412388777 (P.T.A.B. Sep. 30, 2014) Copy Citation 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. 12/388,777 02/19/2009 Eugene W. Ray GOJ.P.203 2088 26360 7590 09/30/2014 Renner Kenner Greive Bobak Taylor & Weber Co., LPA 106 South Main Street, Suite 400 Akron, OH 44308-1412 EXAMINER RANDALL, JR., KELVIN L ART UNIT PAPER NUMBER 3651 MAIL DATE DELIVERY MODE 09/30/2014 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 EUGENE W. RAY and KEITH A. PELFREY ____________ Appeal 2012-008645 Application 12/388,7771 Technology Center 3600 ____________ Before BIBHU R. MOHANTY, MICHAEL C. ASTORINO, and SCOTT C. MOORE, Administrative Patent Judges. ASTORINO, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE The Appellants appeal under 35 U.S.C. § 134 from the Examiner’s decision rejecting claims 1, 3, 5–8, 10, 13, and 15–23.2 We have jurisdiction over the appeal under 35 U.S.C. § 6(b). We REVERSE. 1 According to the Appellants, “[t]he real party in interest is GOJO Industries, Inc.” Appeal Br. 1. 2 The Appellants list the co-pending appeal in Application 13/082,889 under the Related Appeals and Interferences section of the Appeal Brief. App. Br. 1. This related appeal has been assigned appeal number 2012-009247. Appeal 2012-008645 Application 12/388,777 2 Claimed Subject Matter Claims 1 and 23 are the independent claims on appeal. Claim 1, reproduced below, is illustrative of the subject matter on appeal. 1. A wipes dispenser comprising: a container having an interior holding a plurality of wipes; a grip orifice extending through a feed surface defining said container, said grip orifice providing communication between said interior and the exterior of said container; and a pivoting rip fence separate and distinct from said grip orifice and pivoting when employed to separate a lead wipe of said plurality of wipes from a following wipe of said plurality of wipes, said pivoting rip fence including: a body member pivotally secured to said feed surface at a pivot point located on one side of said grip orifice, and an aperture in said body member, said aperture defining a tear geometry, wherein a lead end of a lead wipe of said plurality of wipes extends through said grip orifice and then through said aperture in said rip fence, said rip fence being structured and positioned relative to said grip orifice such that said lead end of said lead wipe is pulled along a tear arc to pull said lead wipe against said tear geometry to cause the remainder of said lead wipe to be removed from said container and become disassociated with the remaining wipes of said plurality of wipes, while a following wipe of said plurality of wipes is pulled through said grip orifice to provide its lead end outside of said interior of said container, said grip orifice structured to prevent said lead end of said following wipe from falling back into said interior and said body member pivoting in response to a pressure point established when said lead wipe is pulled against said tear geometry. Rejections Claims 21 and 22 are rejected under 35 U.S.C. § 112, first paragraph, as failing to comply with the written description requirement. Appeal 2012-008645 Application 12/388,777 3 Claim 23 is rejected under 35 U.S.C. § 112, second paragraph, as indefinite. Claims 1, 3, 5, 10, 13, 15, 18, and 20–23 are rejected under 35 U.S.C. § 103(a) as unpatentable over Evans (US 7,216,775 B2, iss. May 15, 2007). Claims 16, 17, and 19 are rejected under 35 U.S.C. § 103(a) as unpatentable over Evans and Bando (US 2006/0060598 A1, pub. Mar. 23, 2006). Claims 1, 3, 5–7, 10, 15, and 21–23 are rejected under 35 U.S.C. § 103(a) as unpatentable over Thompson (US 4,337,876, iss. July 6, 1982). Claims 8, 13, 18, and 20 are rejected under 35 U.S.C. § 103(a) as unpatentable over Thompson and Evans. Claims 16, 17, and 19 are rejected under 35 U.S.C. § 103(a) as unpatentable over Thompson and Bando. ANALYSIS Written Description Claim 21 The Appellants contend that the written description supports a determination that the inventors had possession of the claimed subject matter of claim 21. See Appeal Br. 5–6, Reply Br. 1–3. The Appellants’ contention is persuasive. Claim 21 depends from claim 1 and recites, “wherein said pivoting rip fence does not grip wipes.” Appeal Br., Claims App. We understand this recitation of claim 21 to be an intended use of the pivoting rip fence. Based upon Figures 3–5 we determine that the written description reasonably conveys to skilled artisans that the Appellants possessed the subject matter Appeal 2012-008645 Application 12/388,777 4 of claim 21 as of the filing date. See Appeal Br. 6. For example, Figure 3 reasonably coveys to skilled artisans that an intended use of pivoting rip fence 124 is to not grip wipe 130. Thus, the Examiner’s rejection of claim 21 under 35 U.S.C. § 112, first paragraph, as failing to comply with the written description requirement, is not sustained. Claim 22 The Appellants contend that the written description supports a determination that the inventors had possession of the claimed subject matter of claim 21. See Appeal Br. 5–6, Reply Br. 1–3. The Appellants’ contention is persuasive. Claim 22 depends from claim 21 and recites, “wherein said grip orifice does not serve to separate wipes.” Appeal Br., Claims App. We understand this recitation of claim 22 to be an intended use of the grip orifice. See Appeal Br. 5. The Appellants reference the Specification at paragraphs 5, 19, 27, and 29, and Figures 3–7, to support their contention. In view of these references, we determine that the written description reasonably conveys to skilled artisans that the Appellants possessed the subject matter of claim 22 as of the filing date. See Appeal Br. 5–6. For example, the Specification at paragraph 27, lines 24–25, describe “grip orifice 118 is not suitable for disassociating a lead wipe 128 from a following wipe 130.” Thus, the Examiner’s rejection of claim 22 under 35 U.S.C. § 112, first paragraph, as failing to comply with the written description requirement, is not sustained. Appeal 2012-008645 Application 12/388,777 5 Indefiniteness The Appellants contend the Examiner’s determination that claim 23 is indefinite because “grip orifice means for gripping” and “pivoting rip fence means for separating” are means-plus-function limitations that are not clearly linked or associated to the written description, and as such, are unclear (Final. Act. 14), is in error. Appeal Br. 6–7. The Appellants support this contention by pointing to the Specification at paragraph 20 and Figures 3–7 and assert, “[t]hose figures and the related disclosure alone provide enough information such that those skilled in the art would understand what structure, material or acts will perform the recited function.” Appeal Br. 6. We agree with the Appellants. The Examiner’s response to the Appellants’ contention suggests that a basis for the indefiniteness rejection is that multiple rip fences are disclosed in the Specification and Figures. Ans. 7. However, as pointed out by the Appellants, “[t]he multiple rip fences shown simply provide further guidance to one skilled in the art as to the various alternative structures that can be selected to perform the recited function,” which does not make the means-plus-function limitations unclear. See Reply Br. 3–4. Thus, the Examiner’s rejection of claim 23 under 35 U.S.C. § 112, second paragraph, as indefinite, is not sustained. Obviousness based on Evans The Appellants contend the Examiner’s finding that Evans’ central opening 55 constitutes the “grip orifice,” as recited in claim 1 (Final Act. 15–17) is in error, and that the Examiner uses impermissible hindsight by Appeal 2012-008645 Application 12/388,777 6 employing Appellants’ Specification as the only and complete guide. See Appeal Br. 11. The Appellants’ contentions are persuasive. Put simply, the Examiner’s determination concerning the capability of the Evans’s central opening 55 appears to be based on speculation and conjecture. For the purpose of this appeal only, even assuming the Examiner’s determination is correct that Evan’s central opening, due to its given dimensions, is capable of gripping sheet of a particular size by constriction (see Final Act. 16–17), such is merely evidence of the capability of the Evan’s structure. It does not necessarily follow from the Examiner’s determination that “it would have been obvious for one of ordinary skill in the art at the time the invention was made to have been motivated to use Evans[’] dispenser in such a way, so as to facilitate an ease of separation of tissue from an inside compartment as known within the art.” Final Act. 17. Rather, the Examiner is required to present evidence to explaining why the use of a structure in a particular manner is obvious, which may be distinct from evidence of a structure’s capability. In other words, the Examiner’s conclusion concerning the obvious use of Evan’s dispenser requires rational underpinning. See In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (“[R]ejections on obviousness grounds [require] some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness”) (cited with approval in KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 418 (2007)). In this case, there appears to be a lack of rational underpinning as the Examiner does not point out why Evans’ dispenser would have been used according to its alleged capabilities, e.g., why would one of ordinary skill in the art use central opening 55 to grip a sheet of a particular size by constriction. Thus, for the foregoing reasons, we Appeal 2012-008645 Application 12/388,777 7 determine that the Appellants’ contention that the Examiner uses impermissible hindsight in rejecting the subject matter of claim 1 is persuasive. Thus, the Examiner’s rejection of independent claim 1, and its dependent claims, under 35 U.S.C. § 103(a) as unpatentable over Evans, is not sustained. For similar reasons as discussed above, the Examiner’s rejection of independent claim 23, which includes similar requirements as compared to independent claim 1, under 35 U.S.C. § 103(a) as unpatentable over Evans, is not sustained. Obviousness based on Evans and Bando The remaining rejection based on Evans in combination with Bando relies on the inadequately supported rejection of claim 1 under 35 U.S.C. § 103(a) as unpatentable over Evans, as discussed above. As such, we do not sustain the Examiner’s rejection of claims 16, 17, and 19 as being unpatentable over Evans and Bando. Obviousness based on Thompson The Appellants contend the Examiner’s finding that Thompson’s protrusion 18 having an opening 19 constitutes the “pivoting rip fence including . . . an aperture . . . defining a tear geometry” as recited in claim 1 (Final Act. 20–21) is in error, and the Examiner uses impermissible hindsight reconstruction. See Appeal Br. 20–22. The Appellants’ contentions are persuasive. Put simply, the Examiner’s determination concerning the capability of the Thompson’s protrusion 18 and opening 19 appears to be based on speculation and conjecture. For the purpose of this appeal only, even Appeal 2012-008645 Application 12/388,777 8 assuming the Examiner’s determination is correct that “one of ordinary skill in the art would be capable of placing a sheet through member [(opening)] 19 and pulling on said sheet at a tear arc so that a sheet is dispensed” (Final Act. 21), such is merely evidence of the capability of the Thompson’s structure. It does not necessarily follow from the Examiner’s determination that “it would have been obvious for one of ordinary skill in the art at the time the invention was made to have been motivated to use Thompson’s dispenser in such a way, so as to facilitate an ease of separation of tissue from an inside compartment as known within the art.” Final Act. 21. Rather, the Examiner is required to present evidence explaining why the use of a structure in a particular manner is obvious, which may be distinct from evidence of a structure’s capability. In other words, the Examiner’s conclusion concerning the obvious use of Thompson’s dispenser requires rational underpinning. See In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (“[R]ejections on obviousness grounds [require] some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness”) (cited with approval in KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 418 (2007)). In this case, there appears to be a lack of rational underpinning as the Examiner does not point out why Thompson’s dispenser would have been used according to its alleged capabilities, e.g., why would one of ordinary skill in the art would place a sheet through opening 19 and pull on said sheet at a tear arc so that a sheet is dispensed. Thus, for the foregoing reasons, we determine that the Appellants’ contention that the Examiner uses impermissible hindsight in rejecting the subject matter of claim 1 is persuasive. Appeal 2012-008645 Application 12/388,777 9 Thus, the Examiner’s rejection of independent claim 1, and its dependent claims, under 35 U.S.C. § 103(a) as unpatentable over Thompson, is not sustained. For similar reasons as discussed above, the Examiner’s rejection of independent claim 23, which includes similar requirements as compared to independent claim 1, under 35 U.S.C. § 103(a) as unpatentable over Evans is not sustained. Obviousness based on Thompson and Evans and Obviousness based on Thompson and Bando The remaining rejections based on Thompson in combination with Evans or Bando rely on the inadequately supported rejection of claim 1 under 35 U.S.C. § 103(a) as unpatentable over Thompson, as discussed above. As such, we do not sustain the Examiner’s rejections under 35 U.S.C. § 103(a) of: claims 8, 13, 18, and 20 as unpatentable over Thompson and Evans; and claims 16, 17, and 19 as unpatentable over Thompson and Bando. DECISION We REVERSE the rejections of claims 1, 3, 5–8, 10, 13, and 15–23. REVERSED Klh Copy with citationCopy as parenthetical citation