Ex Parte Goddard et al

Board of Patent Appeals and Interferences

Nov 23, 2010

11107850 (B.P.A.I. Nov. 23, 2010)

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.
11/107,850 04/18/2005 George Hill Goddard 060942-5009-US 9566
9629 7590 11/23/2010
MORGAN LEWIS & BOCKIUS LLP
1111 PENNSYLVANIA AVENUE NW
WASHINGTON, DC 20004
EXAMINER
COLLINS, MICHAEL
ART UNIT PAPER NUMBER
3651
MAIL DATE DELIVERY MODE
11/23/2010 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte GEORGE HILL GODDARD and MERYL ALTUCH
____________

Appeal 2009-008589
Application 11/107,850
Technology Center 3600
____________

Before: LINDA E. HORNER, JOHN C. KERINS, and KEN B. BARRETT,
Administrative Patent Judges.

HORNER, Administrative Patent Judge.

DECISION ON APPEAL1

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.
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Application 11/107,850

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STATEMENT OF THE CASE
George Hill Goddard and Meryl Altuch (Appellants) seek our review
under 35 U.S.C. § 134 of the Examiner’s decision rejecting claims 1-25. We
have jurisdiction under 35 U.S.C. § 6(b).
SUMMARY OF DECISION
WE AFFIRM-IN-PART.
INVENTION
Appellants’ claimed invention relates to a dispenser for folders.
Spec. 1, para. [0001]. Claim 1, reproduced below, is representative of the
subject matter on appeal.
1. A dispensing apparatus for dispensing flexible folders, the
dispensing apparatus comprising a body for housing a roll of a
plurality of folders not connected to each other, the body
comprising a holding member extending into an interior space
defined by the body and arranged for holding the plurality of
folders in a roll arrangement, wherein the roll of a plurality of
folders is in the shape of a number six.
REJECTIONS
1. The Examiner rejected claims 1-23 and 25 under 35 U.S.C. § 102(e)
as being anticipated by Groch (PCT Publication WO 2005/035264
A2, published April 21, 2005).
2. The Examiner rejected claim 24 under 35 U.S.C. § 103(a) as being
unpatentable over Groch.
ISSUES
The issues presented by this appeal are:
1. Is the subject matter of independent claim 1 anticipated by Groch?
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2. Does Groch’s dispensing apparatus include foldable flaps on
opposing sides of the panel, as called for in claim 22?
3. Did the Examiner make a finding that Groch discloses the end
flaps called for in independent claim 16?
ANALYSIS
Anticipation by Groch
Claims 1-15, 17, 18, 20, and 21
Appellants argue claims 1-15, 17, 18, 20, and 21 as a group. Br. 14-
16. We select claim 1 as the representative claim, and claims 2-15, 17, 18,
20, and 21 stand or fall with claim 1. See 37 C.F.R. § 41.37(c)(1)(vii).
The Examiner’s determination that independent claim 1 is anticipated
by Groch is based in part on the finding that Groch’s dispensing apparatus is
“arranged for holding the plurality of folders in a roll arrangement, wherein
the roll of a plurality of folders is in the shape of a number six.” Ans. 3.
The Examiner further clarified that the anticipation determination is based
on the finding that Groch’s structure is capable of holding the folders in the
shape of the number six. Ans. 11-13.
Claim 1 calls for “[a] dispensing apparatus for dispensing flexible
folders, the dispensing apparatus comprising a body for housing a roll of a
plurality of folders … wherein the roll of a plurality of folders is in the shape
of a number six.” Appellants assert that the limitation “wherein the roll of a
plurality of folders is in the shape of a number six” is a structural
requirement in that the structure of the body of the dispensing apparatus
must be “suitable” for housing a roll of a plurality of folders in a roll
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arrangement shaped like the number six. Br. 15-16. We discern no
meaningful distinction between Appellants’ claim construction that the body
of the dispensing apparatus must be “suitable” for holding the plurality of
folders in a roll arrangement shaped like the number six, and the Examiner’s
claim construction that the body of the dispensing apparatus must be capable
of holding the plurality of folders in a roll arrangement shaped like the
number six.
Because the Examiner found that Groch’s structure is capable of
holding the folders in the shape of the number six (Ans. 11-13), the burden
shifted to Appellants to demonstrate that Groch’s structure is not capable of
performing such function. See In re Swinehart, 439 F.2d 210, 213 (CCPA
1971):
where the Patent Office has reason to believe that a functional
limitation asserted to be critical for establishing novelty in the
claimed subject matter may, in fact, be an inherent
characteristic of the prior art, it possesses the authority to
require the applicant to prove that the subject matter shown to
be in the prior art does not possess the characteristic relied on.
See also In re Spada, 911 F.2d 705, 708 (Fed. Cir. 1990) (“when the PTO
shows sound basis for believing that the products of the applicant and the
prior art are the same, the applicant has the burden of showing that they are
not.”).
Appellants contend, and we agree, that Groch shows its dispenser
holding the plurality of folders in the shape of the letter “S” rather than in
the shape of the number six. Br. 15; Groch, 38:10-12. This contention,
however, does not address the Examiner’s finding that Groch’s dispenser is
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inherently “capable of” holding the folders in the shape of the number six.
Appellants have not presented adequate evidence or argument to rebut the
Examiner’s finding that Groch’s dispensing apparatus is capable of holding
the plurality of folders in the shape of the number six. Br. passim.
Consequently, we sustain the rejection of independent claim 1, and claims 2-
15, 17, 18, 20, and 21 fall with claim 1.
Claims 22, 23, 25
Independent claim 22 is directed to a blank for constructing a
dispensing apparatus for a supply of flexible folders comprised of six panels,
where the first, second, third, and sixth panels include foldable flaps on
opposing sides for forming ends of the dispensing apparatus.
The Examiner found that Groch’s panel (closing flap area 738)
includes foldable flaps (tabs 740) on opposing sides. Ans. 14. However,
Groch’s foldable flaps (tabs 740) are on opposite ends of the same side of
the panel (closing flap 738), and not on opposing sides of the panel as called
for in independent claim 22. Groch, 42:6-7; fig. 15i. Consequently, the
rejection of independent claim 22 is in error. The rejection of claims 23 and
25, which depend from independent claim 22, suffers from the same
shortcoming.
Claims 16 and 19
Independent claims 16 and 19 do not call for the roll of a plurality of
folders to be in the shape of the number six. Appellants argue that claims 16
and 19 should be allowed because an amendment to add this limitation was
improperly denied by the Examiner. App. Br. 16. We agree with the
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Examiner (Ans. 14) that the denial of entry of an amendment is a
petitionable matter and not one properly addressed by the Board. See
37 C.F.R. § 1.181; 37 C.F.R. § 1.127; In re Berger, 279 F.3d 975, 984 (Fed.
Cir. 2002) (citing In re Mindick, 371 F.2d 892, 894 (CCPA 1967)); In re
Hengehold, 440 F.2d 1395, 1403 (CCPA 1971)); and Manual of Patent
Examining Procedure (“MPEP”) §§ 1002, 1002.02(c), 8th ed., rev. 8, July
2010.
Appellants make no further arguments for the patentability of claim
19, and for that reason, we sustain the rejection of claim 19. Ex Parte Frye,
94 USPQ2d 1072, 1075 (BPAI 2010) (precedential) (citing to Hyatt v.
Dudas, 551 F.3d 1307, 1313-14 (Fed. Cir. 2008) for the proposition that the
Board may treat arguments appellant failed to make as waived).
Appellants argue that the Examiner’s rejection of claim 16 does not
identify where the claimed end flaps are found in Groch. Br. 17. Contrary
to Appellants’ assertion, the Examiner’s rejection identifies the claimed end
flaps as corresponding to Groch’s elements 752, 754, 756, 760, and 758.
Ans. 6. Appellants have failed to present an argument to explain why this
finding by the Examiner is in error. As such, we are not persuaded by
Appellants’ argument as it does not address the rejection as articulated by
the Examiner.
Obviousness in view of Groch
Claim 24 depends from independent claim 22. The Examiner’s
conclusion of obviousness for claim 24 as unpatentable over Groch, like the
Examiner’s determination of anticipation of independent claim 22, is based
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in part on the Examiner’s finding that Groch’s panel (closing flap area 738)
includes foldable flaps (tabs 740) on opposing sides. Ans. 9. For the
reasons explained in the analysis of claim 22, supra, that finding of fact is in
error, and as a result, the rejection of claim 24 is also in error.
CONCLUSIONS
1. The subject matter of independent claim 1 is anticipated by Groch.
2. Groch’s dispensing apparatus does not include foldable flaps on
opposing sides of the panel, as called for in claim 22.
3. The Examiner made a finding regarding the end flaps called for in
independent claim 16.
DECISION
We AFFIRM the Examiner’s decision to reject claims 1-21 as
anticipated by Groch.
We REVERSE the Examiner’s decision to reject claims 22, 23, and
25 as anticipated by Groch.
We REVERSE the Examiner’s decision to reject claim 24 under
35 U.S.C. § 103(a) as unpatentable over Groch.

AFFIRMED-IN-PART

nlk

MORGAN LEWIS & BOCKIUS LLP
1111 PENNSYLVANIA AVENUE NW
WASHINGTON DC 20004