GPCP IP Holdings LLC

Patent Trials and Appeals Board

Feb 14, 2022

2021002804 (P.T.A.B. Feb. 14, 2022)

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. 15/479,656 04/05/2017 Brian Scott Borke GP30580USNP 48237/9047 1063 140303 7590 02/14/2022 Nelson Mullins Riley & Scarborough-Georgia Pacific IP Department One Wells Fargo Center, Suite 2300 301 South College Street Charlotte, NC 28202 EXAMINER KUMAR, RAKESH ART UNIT PAPER NUMBER 3651 NOTIFICATION DATE DELIVERY MODE 02/14/2022 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): gplawpatents@gapac.com ip@nelsonmullins.com koch_PAIR@firsttofile.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte BRIAN SCOTT BORKE, TED ALLEN CASPER, JACOB CHARLES DAHL, R. MITCHEL EDWARDS, JOHN WILLIAM GROSZ JR., ALAN JOSEPH JOHNSON, JOHN PATRICK LAITALA, NICKOLAS EVERETT MADSEN, TAMMY LYNN MILLER, DAVID WARREN MURPHY, MARK EDWIN PETERS, KYLE ANDREW PFEIFER, RYAN JOSEPH SCHUH, AARON LEE SINCLAIR, ROBERT PAUL STUEDEMANN, KEVIN MICHAEL SWANSON, and KARL DANIEL KISSINGER ____________ Appeal 2021-002804 Application 15/479,656 Technology Center 3600 ____________ Before BRUCE T. WIEDER, TARA L. HUTCHINGS, and ROBERT J. SILVERMAN, Administrative Patent Judges. HUTCHINGS, Administrative Patent Judge. DECISION ON APPEAL Appeal 2021-002804 Application 15/479,656 2 STATEMENT OF THE CASE Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s final rejection of claims 1-4, 15, 17, 28, and 35-39.2 We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. CLAIMED INVENTON Appellant’s claimed invention “generally relate[s] to dispensers and, more particularly to, sheet product dispensers.” Spec. ¶ 2. Claims 1 and 36 are the independent claims on appeal. Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. A sheet product dispenser comprising: a first roll holder configured to support a first product roll; a second roll holder configured to support a second product roll; a housing including a base portion and a cover, wherein the cover is movable relative to the base portion to define an open position and a closed position, wherein the housing is sized such that a full size first product roll and a full size second product roll fit within the housing when the cover is in the closed position; a first dispensing mechanism comprising a first drive roller, wherein the first dispensing mechanism is configured to receive sheet product of the first product roll and dispense a portion of the sheet product of the first product roll; 1 We use the term “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies GPCP IP Holdings LLC as the real party in interest. Appeal Br. 1. 2 Claims 5, 8, and 40 are objected to as being dependent on a rejected base claim. Final Act. 1, 7. Claims 29-33 are canceled, and claims 6, 7, 9-14, 16, 18-27, and 34 are withdrawn. Id. at 1; see also Appeal Br. 14-20 (Claims App.). Appeal 2021-002804 Application 15/479,656 3 a second dispensing mechanism comprising a second drive roller, wherein the second dispensing mechanism is configured to receive sheet product of the second product roll and dispense a portion of the sheet product of the second product roll; and wherein the second roll holder is movable between a first position and a second position spaced from the first position, wherein the second roll holder is attached to the sheet product dispenser when in the first position and when in the second position, wherein the second roll holder is configured to move separately from the cover, and wherein the second roll holder is configured to move while the first roll holder remains stationary. Appeal Br. 13 (Claims App.). REJECTION Claims 1-4, 15, 17, 28, and 35-39 are rejected under 35 U.S.C. § 103 as unpatentable over Rasmussen (US 4,487,375, iss. Dec. 11, 1984) and Robinson (US 5,604,992, pub. Feb. 25, 1997). ANALYSIS Appellant argues that the Examiner erred in rejecting claim 1 under 35 U.S.C. § 103, because one of ordinary skill in the art would not have been motivated to modify Rasmussen in view of Robinson to arrive at the claimed invention. Appeal Br. 4-6. The Examiner primarily relies on Rasmussen as disclosing the limitations recited in claim 1. Final Act. 2-3. Rasmussen relates to dispensers for handling multiple rolls of web material, such as paper towels, that dispense rolls in succession, and is directed to solving a problem with reliably picking up the lead end of material on the reserve roll when the primary roll is depleted. Rasmussen 1:6-2:9. To this end, Rasmussen’s dispenser uses a transfer mechanism that “is interactive with the rolls supports and the dispensing mechanism to automatically transfer Appeal 2021-002804 Application 15/479,656 4 web feed from the primary roll to the reserve roll when web depletion of the primary roll material is sensed.” Id. at 2:24-36; see also id. at 2:62-3:4 (identifying the “principal object” as providing a dispenser that uses a transfer mechanism that is interactive with the supports for the rolls and the dispensing mechanism to automatically transfer web feed from the primary roll to the reserve roll upon sensing the depletion of web material on the primary roll), 3:5-25 (detailing other objects of the invention pertaining to the transfer mechanism). Rasmussen’s roll dispenser 10 holds multiple rolls P, R and includes a web dispensing mechanism 22 and a transfer mechanism. Id. at 3:58-67, 4:19-30, Figs. 1, 3. Dispensing mechanism 22 interacts with the transfer mechanism to automatically transfer web feed from primary roll P to reserve roll R when the transfer mechanism senses depletion of the web material WP supplied from primary roll P. Id. at 4:22-30. The transfer mechanism is provided by a transfer frame 50 having parallel arms 52, and transfer plate member 56. Id. at 5:64-6:6, Fig. 3. Transfer plate member 56 carries spindle 58, which rotatably supports a series of spaced sensing wheels 60, at an end adjacent the back wall of chassis 12. Id. at 6:7-10; Figs. 3-4. Cradle 66, mounted on a back wall of chassis 12, has a series of spaced apertures 68 corresponding in number and spacing to sensed wheels 60. Id. at 6:16-22, Figs. 3-4. When web paper WP is supplied from primary roll P, it passes between cradle 66 and sensing wheels 60, covering apertures 68 of cradle 66, causing sensing wheels 60 to sense that primary roll P is not depleted. Id. at col. 6:28-31; Figs. 3-4. Then, web paper extends around rollers 24, 26, and 28 of dispensing mechanism 22, exiting at aperture 20. Id. at 6:31- 34, Fig. 3. When primary roll P is exhausted, sensing wheels 60 determine Appeal 2021-002804 Application 15/479,656 5 that paper WP does not cover apertures 68, resulting in transfer frame 50 shifting to begin dispensing web paper WR from reserve roll R. Id. at 6:37- 45, Fig. 5. Specifically, an end portion of web material WR is held by bracket 72 (id. at 7:19-22), and when frame 50 shifts, tucking fingers 70 attached to the end of parallel arms 50 fold the end portion of web material WR into recesses 32 of roller 26 (id. at 7:1-3). Then, the paper is drawn between rollers 24 and 26, exiting at aperture 20. Id. at 7:3-11, 22-28. The Examiner acknowledges that Rasmussen teaches one dispensing mechanism instead of the claimed first and second dispensing mechanisms. Final Act. 3 (finding that the claimed “first dispensing mechanism and second dispensing mechanism . . . are the same member 22 [of Rasmussen]”); Ans. 4 (finding that Rasmussen’s single dispensing mechanism 22 is configured with two separate roll holders, and that Rasmussen does not teach a first dispensing mechanism and a second dispensing mechanism). For this aspect of the claim language, the Examiner relies on Robinson. Final Act. 4 (citing Robinson Fig. 11). In particular, the Examiner finds Robinson teaches a sheet product dispenser that has first dispensing mechanism 116 and 86 and second dispensing mechanism 114 and 82. Id. The Examiner reasons that it would have been obvious to modify Rasmussen’s sheet product dispenser “to have included a first dispensing mechanism and second mechanism[,] as taught by Robinson[,] because each of the separate dispensing mechanisms can be configured to dispense from separate rolls[,] thus assuring paper jamming in one dispensing mechanism [would] allow the sheets to be dispensed through the second dispensing mechanism.” Id.; see also Ans. 4. However, we agree with Appellant that the Examiner has not adequately explained how or why one of ordinary skill in the art would have Appeal 2021-002804 Application 15/479,656 6 been motivated to modify Rasmussen in view of Robinson to arrive at the claimed invention. See Reply Br. 2-5; Appeal Br. 5-6. For example, the Examiner indicates that multiple dispensing mechanisms would have been obvious to allow dispensing from another dispensing mechanism in the event that one dispensing mechanism is jammed. Yet, the Examiner does not indicate any support in Rasmussen or Robinson that indicates jamming is a problem or that dual dispensing mechanisms would provide a solution to that problem. Further, the Examiner provides no technical reasoning that explains how Rasmussen’s dispenser would be modified to incorporate two dispensing mechanisms, or how the modified structure would function. For example, if paper were stuck within the dispenser during a paper jam, Rasmussen’s sensor wheels would not sense the absence of paper from the primary roll that indicates that the primary roll is depleted. As a result, the transfer mechanism would not be triggered to dispense feed from the reserve roll to the same dispensing mechanism. Rasmussen’s dispenser, as modified by the Examiner, thus, would no longer operate by dispensing paper from the reserve roll until an absence of paper from the primary roll is detected and then dispense paper from the reserve roll. It is unclear what, if any, form of Rasmussen’s transfer mechanism would exist in the modified structure, given that it has separate dispensing mechanisms for each of the rolls, and the rolls would no longer load sequentially. Further, because Rasmussen is directed to improving the reliability in picking up the leading edge of paper on a reserve roll in a multi-roll dispenser that loads paper sequentially (Rasmussen 1:10-2:15), and the transfer mechanism as a principal object of the invention (id. at 2:62-3:25), it is unclear why the skilled artisan would be motivated to eliminate the transfer mechanism and Appeal 2021-002804 Application 15/479,656 7 provide two dispensing mechanisms in view of Robinson’s disclosure of two dispensing mechanism. Accordingly, we are persuaded that the Examiner has not provided sufficient technical reasoning with adequate evidentiary support to support the obviousness determination. Therefore we do not sustain the rejection under 35 U.S.C. § 103 of independent claim 1 and its dependent claims. Claim 36 recites language similar to claim 1. Therefore, we do not sustain the rejection under 35 U.S.C. § 103 of independent claim 36 and its dependent claims for the same reasons. Rejoinder of Claims Appellant requests rejoinder of claims 6, 7, 9-14, 16, 18-27, and 34, which were withdrawn as being drawn to a non-elected invention. Appeal Br. 11. Appellant argues that these claims ultimately depend from claim 1, and therefore are eligible for rejoinder. However, our jurisdiction is limited to the review of the merits of rejections of claims and those matters that directly relate to matters involving the merits of those rejections. See 35 U.S.C. §§ 6(b) and 134(a); see also 37 C.F.R. § 51.50(a)(1). Appeal 2021-002804 Application 15/479,656 8 CONCLUSION In summary: Claims Rejected 35 U.S.C. § Basis/References Affirmed Reversed 1-4, 15, 17, 28, 35-39 103 Rasmussen, Robinson 1-4, 15, 17, 28, 35-39 REVERSED