Nathan J. Erickson et al.

Patent Trials and Appeals Board

Jul 25, 2019

13286709 - (D) (P.T.A.B. Jul. 25, 2019)

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.
13/286,709 11/01/2011 Nathan J. Erickson 20813-USA 2965
31743 7590 07/25/2019
Georgia-Pacific LLC
133 Peachtree Street NE
GA030-23
ATLANTA, GA 30303
EXAMINER
RANDALL, JR., KELVIN L
ART UNIT PAPER NUMBER
3651
NOTIFICATION DATE DELIVERY MODE
07/25/2019 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
koch_PAIR@firsttofile.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte NATHAN J. ERICKSON and RICHARD S. WALTERS
____________

Appeal 2019-003086
Application 13/286,7091
Technology Center 3600
____________

Before EDWARD A. BROWN, ARTHUR M. PESLAK, and
SEAN P. O’HANLON, Administrative Patent Judges.

BROWN, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellants seek review under 35 U.S.C. § 134(a) of the Examiner’s
decision rejecting claims 1–17 and 21–24.2 We have jurisdiction under 35
U.S.C. § 6(b).
We REVERSE.

1 GPCP IP Holdings LLC is identified as the real party in interest. Br. 2.
2 Claims 18–20 are cancelled. Br. 28 (Claims App.).
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CLAIMED SUBJECT MATTER
Claims 1, 10, and 21 are independent. Claim 1 illustrates the claimed
subject matter:
1. A dispenser for dispensing cutlery utensils, the
dispenser comprising:
a housing configured to contain a stack of nested cutlery
utensils for dispensing, each cutlery utensil having an axial cross-
section that varies along a length thereof;
a dispensing mechanism comprising:
at least one belt configured to contact a first side of
the stack of nested cutlery utensils and to be driven and separate
a cutlery utensil from the stack of nested cutlery utensils in a
direction substantially perpendicular to a longitudinal axis of the
cutlery utensil;
a stationary support comprising a flat surface
configured to contact an opposite second side of the stack of
nested cutlery utensils; and
at least one drive mechanism configured to drive the
at least one belt; and
a receptacle configured to receive the cutlery utensil
separated from the stack of nested cutlery utensils.

Br. 26 (Claims App.).

REJECTIONS
Claims 1, 4–6, 8, 9, 16, and 17 are rejected under 35 U.S.C. § 103(a)
as unpatentable over Jones (US 4,308,974, issued Jan. 5, 1982), Huang (US
2008/0128445 A1, published June 5, 2008), Bush (US 2,953,170, issued
Sept. 20, 1960), and Calvert (US 8,114,357 B2, issued Feb. 14, 2012).
Claims 2 and 3 are rejected under 35 U.S.C. § 103(a) as unpatentable
over Jones, Huang, Bush, Calvert, and Miley (US 4,963,072, issued Oct. 16,
1990).
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Claim 7 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Jones, Huang, Bush, Calvert, and Rubin (US 7,513,089 B2, issued Apr. 7,
2009).
Claims 10–14 and 21–24 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Jones, Huang, Bush, and Rubin.
Claim 15 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Jones, Huang, Bush, Rubin, and Smith (US 2007/0108141 A1, published
May 17, 2007).

ANALYSIS
Obviousness over Jones, Huang, Bush, and Calvert
(Claims 1, 4–6, 8, 9, 16, and 17)
As for claim 1, the Examiner finds that Jones teaches, inter alia, a
dispenser comprising a housing (housing 12) configured to contain a stack of
nested utensils (tampons 40) for dispensing, and a dispensing mechanism
including a belt (metering mechanism 214), but finds that Jones does not
teach “nested cutlery utensils, each having an axial cross-section that varies
along [its] length,” and “a stationary support comprising a flat surface
configured to contact an opposite second side of the stack of nested cutlery
utensils,” as claimed. Final Act. 10 (citing Jones, Fig. 9). The Examiner
relies on Huang as teaching nested cutlery and using tampons and cutlery in
a common dispensing device, and on Bush as teaching a cutlery utensil
(bottle 10, tubular portion 14) having the claimed cross-section. Id. at 11
(citing Huang ¶ 26; Bush, Figs. 1–3). The Examiner concludes that it would
have been obvious to one of ordinary skill in the art to combine the
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teachings of Huang and Bush with Jones “to dispense a common product as
known within the art and recognized as an art equivalent.” Id.
The Examiner also finds that Calvert teaches a stationary support
(absorbent pad 30) comprising “a flat surface configured to contact an
opposite second side of a stack of nested cutlery utensils (products).” Id.
(citing Calvert, Figs. 8, 9). The Examiner concludes that it would have been
obvious to one of ordinary skill in the art to combine this teaching of Calvert
with those of Jones, Huang, and Bush “to product contents upon dispensing
in a sanitized method.” Id. The Examiner reasons that “one of ordinary skill
in the art would have seen dispensing of . . . products in a sanitized manner
as [an] obvious alternative method of dispensing of products to be handled.”
Id. at 6. The Examiner also submits that “the combination would be obvious
for one of ordinary skill in the art for sanitizing reasons as the outer surface
of a product being clean or cleaned would appease to one of ordinary skill in
dealing with matters of hygiene.” Advisory Act. (Cont. Sheet 3).
Appellants contend that the Examiner’s rationale for modifying Jones
in view of Calvert is unrelated to the proposed modification. Br. 12.
Particularly, Appellants contend that providing Jones’ dispenser 10 with a
stationary support including a flat surface configured to contact the stack of
tampons 40 would not cause tampons 40 to be dispensed “in a sanitized
method.” Id. Rather, Appellants contend, the sanitizing benefit of Calvert’s
apparatus is provided by the disinfectant solution 66, not by absorbent pad
30 itself. Id. Accordingly, Appellants contend that the Examiner’s rationale
does not support the proposed modification because numerous other aspects
of Calvert’s apparatus would need to also be incorporated into Jones’
dispenser 10 to be able to provide a sanitizing benefit. Id. Moreover,
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Appellants contend, there appears to be no need to sanitize the products
provided by Jones’ dispenser 10, as the products are unused, uncontaminated
articles stored within housing 12 for dispensing. Id. at 12–13.
The Examiner responds:
Examiner further notes that Calvert teaches both an
alternative method for conveying type dispensing and means for
sanitizing. Examiner notes that Calvert teaches an alternative
dispensing technique of a stationary surface opposite a
conveying belt for transporting a product from one end of the
container to another end. One of ordinary skill in the art would
have seen such an alternative configuration as capable for
dispensing of cylindrical type product. Examiner further notes
that additionally Calvert is combinable for sanitizing purposes of
products which are to be held by the hand.
Ans. 9.
We agree with Appellants that the Examiner’s rationale for modifying
Jones in view of Calvert is unrelated to the asserted modification. The
rationale is dependent on Calvert’s teaching that absorbent pad 30 is
included in the sanitizing apparatus for sanitizing products and on modifying
the combination of Jones, Huang, and Bush by relying on this teaching to
result in a dispenser that dispenses sanitized products. Final Act. 11;
Advisory Act. (Cont. Sheet 3). Although Figures 8 and 9 of Calvert seem to
show that absorbent pad 30 has a flat surface that contacts writing utensil 78,
Calvert does not teach that absorbent pad 30, by itself, provides sanitizing.
Instead, Calvert teaches that “the disinfectant solution 66 may be in both the
conveyor belt 33 and the absorbent pad 30,” and that “[t]he disinfectant 66
may get into the absorbent pad 30 as excess solution is transferred from the
writing utensil 78.” See Calvert, col. 5, ll. 26–29, Fig. 8. Accordingly,
absorbent pad 30 functions in combination with conveyor belt 33 and
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disinfectant solution 66 to sanitize writing utensil 78. Consequently, the
Examiner’s proposed modification of Jones to incorporate only absorbent
pad 30 would not provide the sanitizing effect that is the basis for the
proposed modification.
And, even if the disclosure in Calvert that the Examiner relies on may
teach an “alternative method” for conveying a product, the Examiner still
does not explain adequately why one of ordinary skill in the art would have
replaced one of Jones’ conveyor type belt assemblies 310, 312 with
Calvert’s absorbent pad 30. Calvert’s absorbent pad 30 is structured and
positioned to absorb excess disinfectant solution in the sanitizing apparatus.
However, there would be no apparent reason to incorporate absorbent pad 30
into Jones’ dispenser without also adding the other elements of Calvert’s
sanitizing apparatus needed to provide the sanitizing function that the
Examiner reasons the combination would provide. However, the Examiner
proposes to incorporate only absorbent pad 30 into Jones’ dispenser.
For these reasons, we do not sustain the rejection of claim 1, or claims
4–6, 8, 9, 16, and 17 depending therefrom, as unpatentable over Jones,
Huang, Bush, and Calvert.

Obviousness over Jones, Huang, Bush, Calvert, and Miley
(Claims 2 and 3)
Obviousness over Jones, Huang, Bush, Calvert, and Rubin
(Claim 7)
For claims 2, 3, and 7, the Examiner does not rely on Miley or Rubin
to cure the deficiency in the rejection of parent claim 1. Final Act. 12–13.
We thus do not sustain the rejection of claims 2 and 3 as unpatentable over
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Jones, Huang, Bush, Calvert, and Miley, or the rejection of claim 7 as
unpatentable over Jones, Huang, Bush, Calvert, and Rubin for the same
reasons as for claim 1.

Obviousness over Jones, Huang, Bush, and Rubin
(Claims 10–14 and 21–24)
Claim 10 recites a method of dispensing cutlery utensils from a
dispenser. Br. 27 (Claims App.). In addressing several deficiencies of Jones
as to claim 10, the Examiner relies on Huang and Bush for the same
teachings as discussed above for claim 1. Final Act. 13–14. Claim 10
further recites the step of “supporting the stack of nested cutlery utensils
with at least one belt contacting the handle portion of each cutlery utensil of
the stack of nested cutlery utensils and spaced apart from the head portion
of each cutlery utensil of the stack of nested cutlery utensils.” Br. 27
(Claims App.) (emphasis added) (hereinafter, “the supporting step”). The
Examiner relies on Rubin as teaching at least one belt (“at 26”) configured to
contact the handle portion and also be spaced apart from the head portion of
each cutlery utensil of a stack of nested cutlery utensils. Final Act. 14
(citing Rubin, col. 3, l. 6–col. 4, l. 15). The Examiner concludes that it
would have been obvious to one of ordinary skill in the art to combine these
teachings of Rubin with those of Jones, Huang, and Bush “to provide an
alternative dispensing means as known within the art.” Id. at 14–15.
Appellants disagree that Rubin teaches the supporting step in claim
10. Br. 16. Appellants contend that Rubin discloses an apparatus including
a cassette 15 having holders 26 forming a belt. Id. at 16–17 (citing Rubin,
col. 3, l. 63–col. 4, l. 13, Figs. 8, 9). Appellants maintain that “[e]ach holder
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26 supports a single utensil 27 by contacting the handle portion and the head
portion of the utensil 27.” Id. at 17 (citing Rubin, Fig. 8) (emphasis added).
Accordingly, “the belt formed by the holders 26 is not spaced apart from the
head portion of the utensil 27.” Id. at 19. Therefore, Appellants contend,
Rubin does not teach the supporting step. Id. at 18. The Examiner responds
that “claim 10 does not specifically recite that only the handle portion may
be contacted and the head portion may not be contacted.” Ans. 11.
We agree with Appellants that the Examiner misconstrues the
supporting step. Br. 19. This step requires “at least one belt . . . spaced
apart from the head portion of each cutlery utensil of the stack of nested
cutlery utensils.” Br. 27 (Claims App.). This construction is consistent with
Appellants’ Figures 2 and 3, which show the head portions of respective
utensils 20 spaced from a belt 22, whereas the handle portions of the utensils
are in contact with the belt 22. Applying the proper construction of the
supporting step, Rubin’s holders 26, in contrast, appear to contact both the
handle portions and head portions of utensils 27. See, e.g., Rubin, Fig. 8.
Therefore, the belt formed by holders 26 cannot reasonably be considered
spaced apart from the head portions of utensils 27. Id.
The Examiner also submits, “Rubin does not specifically recite that
member 26 in [sic] what does the holding of product. Rubin describes that
member 28 which is a part of member 26 does the holding of product.
Examiner notes that member 28 contacts the product handle and is spaced
from the head.” Ans. 11. However, claim 10 requires that the at least one
belt both contact the handle portion and be spaced apart from the head
portion of each cutlery utensil of the stack. The Examiner’s rejection is
based on the finding that Rubin teaches “at least one belt (at 26).” Final Act.
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14. This finding that holders 26 form at least one belt is consistent with
Rubin’s description that “[t]he holders 26 are attached to each other and
form a belt that may be rotated by a gear and a motor or mechanical means.”
See Rubin, col. 4, ll. 3–5, Fig. 8 (emphasis added). Rubin also describes,
“[a] clip 28 holding the prescribed utensil 27 opens and releases the utensil
27 onto a ramp 29 when the clip is engaged with the ramp 29 or roller 30
and opens up.” See id. at col. 4, ll. 5–7, Fig. 8. However, Rubin does not
disclose, nor does the Examiner find, that clips 28 form a belt in Rubin’s
utensil dispenser. Consequently, although clips 28 both contact the handle
and are spaced from the head of utensils 27, this does not establish that
Rubin’s belt, which is formed by holders 26, contacts the handle portion and
is spaced apart from the head portion of each cutlery utensil of the stack.
We thus do not sustain the rejection of claim 10, or dependent claims 11–14,
as unpatentable over Jones, Huang, Bush, and Rubin.
Claim 21 recites a dispenser system for dispensing cutlery utensils
comprising, inter alia, “at least one belt contacting the handle portion of
each cutlery utensil . . . and spaced apart from the head portion of each
cutlery utensil of the stack of nested cutlery utensils.” Br. 28–29 (Claims
App.) (emphasis added). For the reasons discussed for claim 10, we do not
sustain the rejection of claim 21, or dependent claims 22–24, as unpatentable
over Jones, Huang, Bush, and Rubin.

Obviousness over Jones, Huang, Bush, Rubin, and Smith
(Claim 15)
Claim 15 depends from claim 10. The Examiner does not rely on
Smith to cure the deficiency in the rejection of claim 10. Final Act. 16–17.
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Accordingly, we do not sustain the rejection of claim 15 as unpatentable
over Jones, Huang, Bush, Calvert, Rubin, and Smith for the same reasons as
for claim 10.

DECISION
We reverse the rejection of claims 1–17 and 21–24.

REVERSED