Ex Parte Hochtritt et al

Board of Patent Appeals and Interferences

May 22, 2012

10660659 (B.P.A.I. May. 22, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte ROBERT C. HOCHTRITT and
ANDREW M. CONGER
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Appeal 2010-004499
Application 10/660,659
Technology Center 3600
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Before JENNIFER D. BAHR, LINDA E. HORNER, and
STEVEN D.A. McCARTHY, Administrative Patent Judges.

McCARTHY, Administrative Patent Judge.

DECISION ON APPEAL

At least one of the Appellants’ claims being twice rejected, the 1
Appellants1 appeal under 35 U.S.C. § 134 from the Examiner’s decision 2
rejecting claims 1-16. The Examiner rejects claims 1-13 under 35 U.S.C. 3
§ 103(a) as being unpatentable over any one of Wheeler (US 1,898,983,4

1 The Appellants identify SCA Tissue North America LLC of Neenah,
Wisconsin as the real party in interest.
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issued Feb. 21, 1933), Breger (US Des. 310,923, issued Oct. 2, 1990) or 1
Hubanks (US 6,543,641 B2, issued Apr. 8, 2003) in view of Petterson (US 2
5,100,020, issued Mar. 31, 1992); claim 14 under § 103(a) as being 3
unpatentable over any one of Wheeler, Breger or Hubanks in view of 4
Petterson and Margulies (US 4,526,291, issued Jul. 2, 1985); and claims 15 5
and 16 under § 103(a) as being unpatentable over any one of Wheeler, 6
Breger or Hubanks in view of Petterson and Boone (US 6,892,898 B1, 7
issued May 17, 2005). An oral hearing was held on May 10, 2012. We have 8
jurisdiction under 35 U.S.C. § 6(b).2 9
We REVERSE. Pursuant to our authority under 37 C.F.R. § 41.50(b), 10
we enter NEW GROUNDS OF REJECTION against claim 1 under § 103(a) 11
as being unpatentable over Hubanks and Petterson. 12
Claim 1 is the sole independent claim on appeal: 13
1. A dispenser for holding and 14
dispensing folded absorbent sheet products, 15
the dispenser comprising a body and a stand, 16
the stand comprising a base for supporting 17
the dispenser on a horizontal surface, 18
the body comprising two sections, 19
wherein a first upstream one of 20
said sections is straight and extends 21
over the majority of the length of said 22
body, and 23
wherein a second downstream 24
one of said sections extends at an 25

2 The application underlying this appeal was the subject of previous
Appeal 2007-3501, decided June 25, 2008. The opinion in Appeal 2007-
3501 included a dissent by Judge Pate (the “prior dissent”), starting on page
9 of the opinion. Judge Pate has since retired from the Board.
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angle relative to said first section and 1
communicates with a dispensing 2
opening, and 3
wherein, when said dispenser is 4
supported by said stand on said 5
horizontal surface, each of said first 6
and second sections forms an oblique 7
angle relative to said horizontal 8
surface, 9
said first section forming 10
an angle that is more nearly 11
vertical, and 12
said second section 13
forming an angle that is more 14
nearly horizontal. 15
Petterson describes a dispenser apparatus 20 for dispensing C-folded 16
napkins. The dispensing apparatus 20 includes a “generally vertically 17
oriented housing” 22 supported above a horizontal surface by a support 48. 18
(Petterson, col. 3, ll. 48-51; col. 4, ll. 57-59; and figs. 2 and 3.) The housing 19
22 has a curvature which matches the natural curvature of a stack of C-20
folded napkins. (Petterson, col. 3, ll. 54-57.) Petterson teaches that this 21
curvature causes the housing 22 to bear a portion of the weight of a stack of 22
napkins to be dispensed. The capacity of the housing to bear a portion of the 23
weight of the stack reduces the friction on a bottom napkin positioned to be 24
dispensed from the housing 22. (Petterson, col. 4, ll. 15-40.) 25
Wheeler describes a cabinet for distributing paper towels. (Wheeler 1, 26
ll. 1-4.) As depicted in Figures 1 and 2 of Wheeler, the cabinet consists of a 27
box. The upper portion of the box is straight over much of its length and 28
extends along a vertical plane. The lower portion of the box curves 29
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outwardly away from the vertical plane in order to expose a slot 24 through 1
which towels may be removed. (See Wheeler 1, ll. 37-49.) 2
Breger depicts a towel dispenser. (Breger, claim.) As depicted in 3
Figures 1 and 2 of Breger, the cabinet consists of a box. The upper portion 4
of the box is straight and extends along a vertical plane. The lower portion 5
of the box is straight but bends outwardly away from the vertical plane. 6
Figures 7-10 of Hubanks depict a paper towel dispenser 110. The 7
dispenser 110 includes a housing 112 having an internal chamber 114 for 8
holding a generally vertically oriented stack 116 of folded paper towels 118. 9
(Hubanks, col. 6. ll. 4-13.) The housing 112 includes a bottom portion 130 10
which is angled outwardly away from the remainder of the housing 112. 11
(Hubanks, col. 7, ll. 42-45.) Hubanks teaches that the shape of the bottom 12
portion 130 of the housing 112 transfers the pressure applied by the stack 13
116 away from the bottom-most towel so as to reduce the force required for 14
a user to extract the bottom-most towel from the dispenser 110. (Hubanks, 15
col. 7, ll. 45-53.) As depicted in Figures 7-10, the bottom-most towel is 16
pulled nearly vertically downwardly in order to remove the towel from the 17
dispenser 110. 18
“[I]f a technique has been used to improve one device, and a person of 19
ordinary skill in the art would recognize that it would improve similar 20
devices in the same way, using the technique is obvious unless its 21
application is beyond his or her skill.” KSR Int’l Co. v. Teleflex, Inc., 550 22
U.S. 398, 417 (2007). Petterson describes a napkin dispenser including a 23
housing and a stand comprising a base for supporting the dispenser on a 24
horizontal surface. Wheeler, Breger and Hubanks each appear to describe 25
towel dispensers having housings or cabinets including vertical housing or 26
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cabinet sections susceptible of being mounted on a wall. In view of the 1
structural similarity between the housing of Petterson, on the one hand, and 2
the housings or cabinets disclosed by Wheeler, Breger and Hubanks, on the 3
other, it would have been obvious to support any one of the housings or 4
cabinets described by Wheeler, Breger or Hubanks on a stand comprising a 5
base for supporting the dispenser on a horizontal surface rather than on a 6
wall mount. The Appellants do not identify any reason why such a 7
modification would have been beyond the level of ordinary skill in the art or 8
why the results of such a modification might have been unpredictable. 9
The Examiner reasons that it would have been obvious to mount the 10
housing of Wheeler, Breger or Hubanks “to a stand as taught by Petterson 11
because [the combination would allow] for a high capacity dispenser to be 12
used on a counter top, or other narrow flat surfaces.” (Ans. 4 and 5.) While 13
the Examiner is correct in concluding that it would have been obvious to 14
mount the housing or cabinet of Wheeler, Breger or Hubanks to a stand 15
comprising a base for supporting the dispenser on a horizontal surface, the 16
Examiner’s reasoning in support of the appealed rejection does not explain 17
why it might have been obvious to mount the housing at an angle on the 18
stand such that a straight, upstream first section of the housing or cabinet 19
formed an oblique angle relative to said horizontal surface. This is 20
particularly true where Petterson itself teaches the use of a “generally 21
vertically oriented housing.” (Petterson, col. 3, ll. 48-51.) In the absence of 22
reasoning with some rational underpinning sufficient to explain why a 23
dispenser including this feature would have been obvious, we do not sustain 24
the appealed rejection of claims 1-13 under § 103(a) as being unpatentable 25
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over any one of Wheeler, Breger or Hubanks in view of Petterson. (See, 1
e.g., App. Br. 8, 11 and 13-14.) 2
The Examiner cites Margulies as disclosing “flanges (46) cooperating 3
with a cover (4).” (Ans. 5.) This teaching does not remedy the deficiencies 4
in the Examiner’s reasoning as discussed in connection with the rejection of 5
independent claim 1. We do not sustain the rejection of claim 14 under 6
§ 103(a) as being unpatentable over any one of Wheeler, Breger or Hubanks 7
in view of Petterson and Margulies. 8
The Examiner cites Boone as disclosing that a cover for a dispenser 9
housing may be either transparent or opaque. (Ans. 6.) This teaching does 10
not remedy the deficiencies in the Examiner’s reasoning as discussed in 11
connection with the rejection of independent claim 1. We do not sustain the 12
rejection of claims 15 and 16 under § 103(a) as being unpatentable over any 13
one of Wheeler, Breger or Hubanks in view of Petterson and Boone. 14
Although we do not sustain the rejection as articulated by the 15
Examiner in this appeal, we believe that the disclosures of Hubanks and 16
Petterson support the conclusion that the subject matter of claim 1 would 17
have been obvious. Hubanks describes a dispenser 110 for holding and 18
dispensing folded absorbent sheet products, namely, paper towels 118. 19
(Hubanks, col. 6, ll. 4-13.) The dispenser 110 includes a body 112 20
comprising two sections. As depicted in Figure 9 of Hubanks, the first 21
upstream section is straight and extends over the majority of the length of 22
the body 112. The second downstream section 130 extends at an angle 23
relative to the first section and communicates with a dispensing opening 24
150. (Hubanks, col. 6, ll. 17-25.) 25
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As discussed earlier, it would have been obvious from the teachings of 1
Hubanks and Petterson to support the Hubanks’ body 112 on a stand. The 2
resulting dispenser would have included a body and a stand similar to 3
Petterson’s stand 48 comprising a base 50 for supporting the dispenser on a 4
horizontal surface. 5
In addition, it would have been obvious as a matter of common sense 6
to mount Hubanks’ body 112 on the stand with the dispensing opening 150 7
opening as nearly vertically extending as possible to provide for a more user 8
friendly way for one to reach the opening of the dispenser. In order to 9
implement this feature, it would have been necessary to mount the body 112 10
with the bottom section 130 of the body 112 extending at the shallowest 11
oblique angle consistent with gravity feed of the towels 118 to the 12
dispensing opening 150. The shallower the oblique angle between the 13
extension of the bottom section 130 and horizontal, the lesser degree to 14
which a user would have had to pull a dispensed towel downwardly onto the 15
horizontal surface supporting the modified dispenser. 16
One of ordinary skill in the art mounting the body 112 with the 17
bottom section 130 of the body 112 extending at the shallowest oblique 18
angle consistent with gravity feed of the towels 118 to the dispensing 19
opening 150 also would have had reason to mount the straight, top section of 20
the body 112 at a more nearly vertical oblique angle relative to horizontal. 21
Were the body 112 mounted with the bottom section 130 of the body 112 22
extending at the shallowest oblique angle consistent with gravity feed of the 23
towels 118 to the dispensing opening 150 while allowing the top section to 24
extend vertically and straight, the corner through which the stack of towels 25
would have to negotiate to pass from the top section to the bottom section 26
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130 would become sharper and more difficult to negotiate than the corner 1
indicated in Hubanks. One of ordinary skill in the art would have had reason 2
to also mount the top portion at a small angle oblique with respect to 3
horizontal in order to relieve some of the sharpness of the curve. When the 4
resulting dispenser was supported by the stand on the horizontal surface, 5
each of the top and bottom sections would have formed an oblique angle 6
relative to said horizontal surface, the first section forming an angle that was 7
more nearly vertical, and the second section forming an angle that was more 8
nearly horizontal. As such, the resulting structure would have met all 9
limitations of appealed claim 1. 10
11
DECISION 12
We REVERSE the Examiner’s decision rejecting claims 1-16. 13
Pursuant to our authority under 37 C.F.R. § 41.50(b), we enter a New 14
GROUND OF REJECTION against claim 1 under § 103(a) as being 15
unpatentable over Hubanks and Petterson. No inference should be drawn 16
from the failure to make a new ground of rejection of other claims.3 As the 17
Board’s function is primarily one of review, we leave to the Examiner to 18
determine the patentability of the dependent claims in view of the new 19
ground of rejection and the prior art. Section 41.50(b) provides that “[a] 20

3 See 37 C.F.R. § 41.50(b). See also Manual of Patent Examining Procedure
(MPEP), 8th ed., rev. 8, July 2010, § 1213.02. Under 37 C.F.R. § 41.50(b),
the Board may, in its decision, make a new rejection of one or more of any
of the claims pending in the case. Since the exercise of authority under
37 C.F.R. § 41.50(b) is discretionary, no inference should be drawn from the
decision to exercise that discretion with respect to some but not all of the
claims on appeal.
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new ground of rejection pursuant to this paragraph shall not be considered 1
final for judicial review.” 2
Section 41.50(b) also provides that the Appellants, WITHIN TWO 3
MONTHS FROM THE DATE OF THE DECISION, must exercise one of 4
the following two options with respect to the new grounds of rejection to 5
avoid termination of the appeal as to the rejected claims: 6
(1) Reopen prosecution. Submit an 7
appropriate amendment of the claims so rejected or 8
new evidence relating to the claims so rejected, or 9
both, and have the matter reconsidered by the 10
examiner, in which event the proceeding will be 11
remanded to the examiner . . . 12
(2) Request rehearing. Request that the 13
proceeding be reheard under § 41.52 by the Board 14
upon the same record . . . 15
No time period for taking any subsequent action in connection with 16
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv). 17
18
REVERSED—37 C.F.R. § 41.50(b) 19
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