Bj¿rn Larsson

Patent Trials and Appeals Board

Jan 27, 2020

14131744 - (D) (P.T.A.B. Jan. 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.
14/131,744 01/09/2014 Björn Larsson 1018798-000741 5966
105718 7590 01/27/2020
SCA Hygiene Products AB
c/o Buchanan Ingersoll & Rooney, PC
1737 King Street, Suite 500
Alexandria, VA 22314
EXAMINER
KUMAR, RAKESH
ART UNIT PAPER NUMBER
3651
NOTIFICATION DATE DELIVERY MODE
01/27/2020 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):
ADIPDOC1@BIPC.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte BJÖRN LARSSON
____________

Appeal 2018-005595
Application 14/131,744
Technology Center 3600
____________

Before JOHN C. KERINS, WILLIAM A. CAPP and
BRANDON J. WARNER, Administrative Patent Judges.
CAPP, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant1 seeks our review under 35 U.S.C. § 134(a) of the final
rejection of claims 1–7, 9, 10, 13, 14, and 18–29. We have jurisdiction
under 35 U.S.C. § 6(b).
We AFFIRM.
THE INVENTION
Appellant’s invention is a dispenser for paper napkins (or some other,
similar stack of sheet products). Spec. ¶ 1. Claim 1, reproduced below, is
illustrative of the subject matter on appeal.

1 SCA Hygiene Products AB is the real party in interest. Appeal Br. 2.

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Claim 1. A dispenser, comprising:
at least one stack of interfolded webs, wherein the stack
comprises at least two webs, including:
a first elongate web divided into sheet products defined
between longitudinally separated lines of weakness extending
across the first web; and
a second elongate web divided into sheet products defined
between longitudinally separated lines of weakness extending
across the second web;
wherein the webs are interfolded to form the stack so that
the lines of weakness of the first web are offset from the lines
of weakness of the second web in a longitudinal direction of the
first web;
a housing defining a product reservoir, wherein the at least
one stack of interfolded webs is contained in the product
reservoir;
a dispensing opening at a front of the housing, wherein the
housing comprises a front wall forming a front wall of the
product reservoir, wherein the front wall has a front surface
facing the front of the housing, and a rear surface facing a rear
of the housing, wherein
the front surface of the front wall is revealed by opening a
refill door of the dispenser;
wherein a leading portion of the webs of the stack is
supported in a dispensing path from the product reservoir to the
dispensing opening;
wherein the weight of the stack is downwardly oriented to
bare against a bottom of the stack and the leading portion of the
first and second webs extends from a top of the stack,
wherein the webs extend upwardly from the top of the
stack, are supported at a guide portion disposed above the
dispensing opening and having a curved apex portion followed
by a substantially planar portion along the dispensing path, and
then extend downwardly to the dispensing opening, with
respect to a dispensing direction along the dispensing path.
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Application 14/131,744
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THE REJECTIONS
The Examiner relies upon the following as evidence in support of the
rejections:
NAME REFERENCE DATE
Marcuse US 2,809,082 Oct. 8, 1957
Skerrett US 6,213,346 B1 Apr. 10, 2001
Granger US 2011/0101020 A1 May 5, 2011
The following rejections are before us for review:2, 3
1. Claims 1–6, 9, 10, 13, 14, and 18–29 are rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Granger and Skerrett.
2. Claim 7 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Granger, Skerrett, and Marcuse.
OPINION
Unpatentability of Claims 1–6, 9, 10, 13, 14, and 18–29
over Granger and Skerrett
Appellant argues claims 1–6, 9, 10, 13, 14, and 18–29 as a group.
Appeal Br. 12–21. We select claim 1 as representative. See 37 C.F.R.
§ 41.37(c)(1)(iv).
The Examiner finds that Granger discloses the invention substantially
as claimed except for using two webs with offset perforations, for which the
Examiner relies on Skerrett. Final Action 4–6. The Examiner concludes
that it would have been obvious to a person of ordinary skill in the art at the

2 At the time of the Final Action, claims 1–7 and 9–30 were pending.
Claims 12 and 16 are allowed. Claims 11, 15, 17, and 30 are objected to as
being dependent upon a rejected base claim. Final Action 12.
3 A rejection of claim 10 under 35 U.S.C. § 112, second paragraph, has been
withdrawn by the Examiner. Final Action 3–4, Ans. 3.
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Application 14/131,744
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time of the invention to replace Granger’s single web with two interfolded
webs as taught by Skerrett and so achieve the claimed invention. Id. at 6.
According to the Examiner, a person of ordinary skill in the art would have
done this to provide an improved means for cleaning a surface. Id.
Appellant argues that Granger fails to teach a stack comprising at least
two, interfolded webs as claimed, a point already conceded by the Examiner.
Appeal Br. 12. Appellant further argues that the rejection ignores
“important facts and context” that militate against combining the two
references. Id. at 13.
First, Appellant points out that Granger feeds the web from the top of
the stack whereas Skerrett feeds from the bottom of the stack. Id. Appellant
characterizes the function of the two dispensers as completely different with
each dispenser imposing “completely different” demands on the material
being dispensed. Id. Appellant argues that such difference is “significant”
and has “meaningful implications” in the design of the dispenser and stack
of webs inserted therein. Id. at 14. More particularly, Appellant argues that,
in the bottom feeding dispenser of Skerrett, the weight of the stack is on the
web when it is being pulled out, which produces substantial pressure on the
napkin being dispensed that needs to be overcome.
In response, the Examiner points out that the proposed combination
results in the material feeding from the top of the stack and, consequently,
Appellant’s “bottom of the stack” argument is irrelevant. Ans. 5. The
Examiner further explains that feeding Skerrett’s stack from the top results
in a less demanding mode of operation and thus would have no ill effects for
dispensing from the top as argued by the Appellant. Id. at 6.
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In reply, Appellant accuses the Examiner of improperly relying on
Official Notice with respect to finding that feeding from the top of the stack
is less demanding. Reply Br. 3.
Appellant’s arguments are not persuasive. The Examiner’s finding
that feeding from the top of the stack is less demanding merely echoes
Appellant’s argument that, when feeding from the bottom of the stack:
[T]he weight of the entire stack is on the web when it is being
pulled out. There is substantial pressure on the napkin being
dispensed, which must be overcome. Thus, the stack
arrangement . . . must allow for this weight and pressure, which
cause difficulty in dispensing.
Appeal Br. 15. Otherwise, the Examiner’s finding that feeding from the top
of the stack is less demanding than feeding from the bottom of the stack
appears to be based on sound technical reasoning that is well within the
Examiner’s scope of expertise. See In re Berg, 320 F.3d 1310, 1315 (Fed.
Cir. 2003) (explaining that examiners are considered to be persons of
scientific competence in the fields in which they work).
Next, Appellant argues that Granger and Skerrett dispense different
types of web materials. Appeal Br. 15. Appellant notes that Granger
dispenses wipe materials used in bathrooms whereas Skerrett dispenses
napkins. Id.
In response, the Examiner observes that claim 1 does not recite any
limitation pertaining to material used in the web. Ans. 6. The Examiner
further finds that Granger, as modified by Skerrett, would be expected to be
operable in a broader range of applications than merely in bathrooms. Id.
In reply, Appellant accuses the Examiner of exhibiting a “complete
lack of understanding” of the arguments at issue. Appeal Br. 4. Appellant
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argues that, since Granger and Skerrett have two different uses, there is no
reason to combine the teachings of the two references.
Appellant’s argument that paper product dispensers have “different
uses,” is not persuasive. It is common sense that familiar items may have
obvious uses beyond their primary purposes, and a person of ordinary skill
often will be able to fit the teachings of multiple patents together like pieces
of a puzzle. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 420 (2007).
Consequently, it is well settled that a “reference may be read for all that it
teaches, including uses beyond its primary purpose.” In re Mouttet, 686
F.3d 1322, 1331 (Fed. Cir. 2012), citing KSR, at 418–421. Therefore, a
“reference must be considered for everything that it teaches, not simply the
described invention or a preferred embodiment.” In re Applied Materials,
Inc., 692 F.3d 1289, 1298 (Fed. Cir. 2012). Granger and Skerrett both
dispense paper products. A person of ordinary skill in the art would readily
understand that their respective teachings could be used in a variety of
product applications. KSR, 550 U.S. at 421 (“A person of ordinary skill is
also a person of ordinary creativity, not an automaton.”).
Appellant next argues that the Examiner fails to supply any discussion
or reason as to why a skilled artisan would modify Granger by the teachings
of Skerrett. Appeal Br. 16. Appellant argues that “[w]ithout this analysis,
the entire rejection lacks a rational underpinning that would be followed by
one skilled in the art.” Id. Appellant accuses the Examiner of creating a
reason to combine or a problem “where none existed.” Appeal Br. 18.
In response, the Examiner reiterates the rationale previously expressed
in the Final Action. See Ans. 4 (improved surface cleaning, thicker
materials can be separated without requiring a large force); see also Final
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Action 6. The Examiner further finds that modifying Skerrett to dispense
upwardly results in a less demanding mode of operation. Id.
In reply, Appellant challenges the Examiner’s reasoning that the
proposed modification would result in dispensing a double thickness of web
material. Reply Br. 2. According to Appellant:
The Examiner confuses a “double ply” web, with a web of
offset sheets. A “double ply” web has two layers (plies) that
are glued, quilted, or otherwise connected together. When
dispensed, the “double ply” web remains together (a web
material with 2 layers).
The offset sheets of Skerrett are actually two different sheets,
which are not connected together by gluing or quilting (they are
simply interfolded).
. . .
Once the offset sheets of Skerrett are dispensed, the sheets
separate from each other. The resultant material for use is only
one sheet thick; the same as Granger.
. . . Thus the alleged advantages from the modification
(improved surface cleaning, etc.) are simply non-existent.
Id. at 2–3.
Appellant’s reason to modify arguments are not persuasive.
Appellant’s “Background” section discusses a number of alleged problems
that are known in the art that are purportedly overcome by the invention.
Spec. ¶¶ 2–5. It is well settled that a motivation to combine can be found in
“any need or problem known in the field of endeavor at the time of the
invention and addressed by the patent.” KSR, 550 U.S. at 420. Furthermore,
a reason to modify a prior art reference may be found explicitly or implicitly
in market forces; design incentives; the “interrelated teachings of multiple
patents”; and the background knowledge, creativity, and common sense of
the person of ordinary skill. Perfect Web Techs., Inc. v. InfoUSA, Inc., 587
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F.3d 1324, 1328–29 (Fed. Cir. 2009) (quoting KSR, 550 U.S. at 418–21)).
Moreover, an implicit motivation to combine exists when the improvement
is technology-independent and the combination of references results in a
product or process that is more desirable, for example because it is stronger,
cheaper, cleaner, faster, lighter, smaller, more durable, or more efficient.
Dystar Textilfarben GmBH & Co, v. C.H. Patrick Co., 464 F.3d 1356, 1368
(Fed. Cir. 2006). In appropriate circumstances a motivation to combine may
be found inferentially based on the entirety of the evidentiary record. Wyers
v. Master Lock Co., 616 F.3d 1231, 1239–40 (Fed. Cir. 2010), citing KSR,
550 U.S. at 427 (explaining that the motivation to combine references may
boil down to a question of common sense).
In the rejection under review, the Examiner finds that Granger
discloses the invention as claimed except for using two webs of interfolded
material, for which the Examiner relies on Skerrett. Final Action 5. The
Examiner merely substitutes Skerrett’s two, interfolded webs for Granger’s
single web. In essence, therefore, the rejection amounts to a mere
substitution of one known element for another, yielding a predictable result.
KSR, 550 U.S. at 416, quoting United States v. Adams, 383 U.S. 39, 50–51
(1966). Similarly, when a patent “simply arranges old elements with each
performing the same function it had been known to perform” and yields no
more than one would expect from such an arrangement, the combination is
obvious. KSR, 550 U.S. at 417, quoting Sakraida v. Ag Pro, Inc., 425
U.S. 273, 282 (1976). In the instant case, Appellant presents no evidence or
persuasive technical reasoning that substituting Skerrett’s two interfolded
webs for Granger’s single web requires more than ordinary skill or produces
unexpected results. Taking the foregoing considerations into account,
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Appellant’s challenge to the Examiner’s reasons for combining Granger and
Skerrett does not rise to the level of establishing reversible error.
Appellant next takes the position that modifying Granger as proposed
would change its principle of operation. Appeal Br. 17. Appellant focuses
on Granger’s feature of dispensing from the top of the stack, a feature that is
shared with Appellant’s invention. Id., Claims App., claim 1. Appellant
notes that dispensing from the top of the stack requires continuity as a break
in the web material, inside of the dispenser, will cause a dispensing failure.
Appeal Br. 15. Appellant further argues that Granger uses a special type of
refill stack that can interconnect with the existing stack to continue
dispensing from the top. According to Appellant, “[w]ithout this
interconnection, the dispensing would fail and require intervention.” Id.
at 17.
In response, the Examiner points out that the special refill stack
feature of Granger is not claimed by Appellant. Ans. 6. Thus, at most, the
Examiner’s proposed combination omits a feature of Granger that is not
claimed by Appellant. It is well settled that merely omitting an element and
its function in a combination where the remaining elements perform the
same functions as before involves only routine skill in the art. In re
Karlson, 311 F.2d 581, 584 (CCPA 1963). Omitting the special refill stack
feature would merely change how and when Granger’s device is refilled.
For example, an operator might wait until the dispenser is empty before
installing a refill stack. However, it would still function as a dispenser both
before and after the refilling. We do not agree with Appellant’s position that
the principle of operation would change.
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Appellant accuses the Examiner of engaging in impermissible
hindsight. Appeal Br. 18. We disagree. See In re Cree, Inc., 818 F.3d 694,
702 n.3 (Fed. Cir. 2016) (explaining that a hindsight argument is of no
moment where the Examiner provides a sufficient, non-hindsight reason to
combine the references). Here, the Examiner’s stated reasons for combining
the references is sufficient to defeat Appellant’s hindsight argument. Final
Action 6, Ans. 4, 6.
Next, Appellant argues that claim 1 is patentable because it achieves
“synergistic effects.” Appeal Br. 20.
Surprisingly, the claimed offset webs, loaded in the claimed
dispenser, tend to support one another along the upward
dispensing path.
Id. (emphasis added). We are not persuaded that such naked attorney
argument rises to the level of evidence of unexpected results to support a
claim of patentability. “It is well settled that unexpected results must be
established by factual evidence. Mere argument or conclusory statements in
the specification does not suffice.” In re De Blauwe, 736 F.2d 699, 705
(Fed. Cir. 1984); see also In re Wood, 582 F.2d 638, 642 (CCPA 1978)
(“Mere lawyer’s arguments and conclusory statements in the specification,
unsupported by objective evidence, are insufficient to establish unexpected
results.”).
Finally, Appellant argues that claim 1 recites that a front surface of
the front wall is revealed by opening a refill door of the dispenser and then
asserts that such feature is not taught or suggested by the cited art. Appeal
Br. 20–21. No further analysis or discussion as to how the recited element is
distinguishable from the prior art is provided. Id. Appellant’s argument
does not rise to the level of a separate argument for the patentability of the
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claim. 37 C.F.R. § 41.37(c)(1)(iv) (“A statement which merely points out
what a claim recites will not be considered an argument for separate
patentability of the claim”); see also In re Lovin, 652 F.3d 1349, 1357 (Fed.
Cir. 2011) (Rule 41.37 requires more than recitation of the claim elements
and a naked assertion that the elements are not found in the prior art).
We have considered Appellant’s remaining arguments and find them
to be without merit. In view of the foregoing discussion, we determine the
Examiner’s findings of fact are supported by a preponderance of the
evidence and that the Examiner’s legal conclusion of unpatentability is well-
founded. Accordingly, we sustain the Examiner’s unpatentability rejection
of claims 1–6, 9, 10, 13, 14, and 18–29.
Unpatentability of Claim 7
over Granger, Skerrett, and Marcuse
Claim 7 depends from claim 1 and is not separately argued. Appellant
has waived the right to separately argue this claim and we, therefore, sustain
its rejection. See 37 C.F.R. §41.37(c)(1)(iv).
CONCLUSION
Claims
Rejected
§ Reference(s)/Basis Aff’d Rev’d
1-6, 9, 10, 13,
14, 18-29
103 Granger, Skerrett 1-6, 9, 10, 13,
14, 18-29

7 103 Granger, Skerrett,
Marcuse
7
Overall
Outcome
1-7, 9, 10, 13,
14, 18-29

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