Ex Parte Neveu

Patent Trials and Appeals Board

Feb 25, 2019

12055351 - (D) (P.T.A.B. Feb. 25, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/055,351 03/26/2008
105855 7590 02/27/2019
Drinker Biddle & Reath LLP (SCA Americas)
1500 K Street NW, Suite 1100
Washington, DC 20005
FIRST NAMED INVENTOR
Jean-Louis Neveu
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
211110-0111-01-US-489020 7647
EXAMINER
RNERA, WILLIAM ARAUZ
ART UNIT PAPER NUMBER
3654
NOTIFICATION DATE DELIVERY MODE
02/27/2019 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):
DBRIPDocket@dbr.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JEAN-LOUIS NEVEU 1
Appeal2017-005105
Application 12/055,351
Technology Center 3600
Before JENNIFER D. BAHR, WILLIAM A. CAPP, and JILL D. HILL,
Administrative Patent Judges.
HILL, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Jean-Louis Neveu ("Appellant") appeals under 35 U.S.C. § 134(a)
from the Examiner's final decision rejecting claims 1, 2, 4, 5, 10, and 12-17.
We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM and enter a new ground of rejection pursuant to our
authority under 37 C.F.R. § 41.50(b).
1 Appellant identifies the real party in interest as SCA TISSUE FRANCE.
Appeal Br. 1.
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Application 12/055,351
BACKGROUND
Independent claims 1 and 14 are pending. Independent claim 1,
reproduced below, illustrates the claimed invention, with certain limitations
italicized.
1. A toilet paper dispenser comprising:
a housing adapted to house a roll of a toilet paper strip
that has perforations transverse to the toilet paper strip defining
paper sheets whose width is transverse and whose length is
longitudinal, wherein the housing comprises a nozzle having a
dispensing orifice through which the toilet paper strip is
unwound, wherein the nozzle has a truncated shape extending
externally from the housing and the dispensing orifice is located
on an end of the nozzle external relative to the housing;
wherein the nozzle and the roll of the toilet paper strip
are disposed in such a way that the paper sheets unwind and
separate from the toilet paper strip one by one and emerge with
reduced crumpling from the dispensing orifice in the nozzle;
and
wherein the paper sheets each have a ratio of the width to
the length of between 0.45 and 1 and have a ratio of precuts of
the perforations between 12% and 30%, the diameter of the
dispensing orifice has a diameter between 6mm and 8mm such
that the dispensing orifice and the nozzle are configured to
unwind and separate the paper sheets from the toilet paper strip
one by one.
REJECTIONS
I. Claims 1, 2, 10, and 12-16 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over Johnson (US 5,785,274, iss. July 28, 1998),
Gerstein (US 3,795,355, iss. March 5, 1974), Esquivel (US 5,972,456, iss.
October 26, 1999), Mlinar (U.S. Patent No. 6,838,040 B2, iss. January 4,
2005), and Pryor (US 4,197,964, iss. April 15, 1980). Final Act. 2.
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II. Claims 4, 5, and 17 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Johnson, Gerstein, Esquivel, Mlinar, Pryor, and Neveu
(US 6,109,473, iss. August 29, 2000). Final Act. 4.
III. Claims 1, 2, 10, 12, and 13 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over King (GB 2308114 A, pub. June 18, 1997)
and Pryor. Final Act. 5.
IV. Claims 4 and 5 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over King, Pryor, and Neveu. Final Act. 6.
ANALYSIS
The Examiner finds, inter alia, that Johnson discloses a dispenser
comprising a housing 50 for a roll of paper having transverse perforations,
the housing including a nozzle 50 with (1) a dispensing orifice through
which the roll of paper is unwound, and (2) a truncated shape extending
externally from the housing. Final Act. 2. The Examiner finds that
Johnson's dispensing orifice is located on an end of its nozzle external
relative to the housing, and its "paper sheets unwind one by one and emerge
with reduced crumpling from the dispensing orifice in the nozzle." Id.
The Examiner finds that Johnson does not disclose a nozzle
configured to separate the sheets one-by-one, but that Gerstein discloses a
nozzle 19 configured to separate sheets one-by-one. Id. ( citing Gerstein
1 :38--49). The Examiner concludes that it would have been obvious to
provide Johnson with the ability to separate the individual paper sheets "as
taught by Gerstein, because such would minimize the waste of paper and the
dispensing of unneeded sheets." Id. at 2-3. The Examiner also finds that
Esquivel discloses the claimed paper sheet dimensions, Mlinar discloses the
claimed ratio of perforation precuts, and Pryor discloses the claimed orifice
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Application 12/055,351
dimensions. Id. at 3--4. The Examiner further finds that the claimed
grammage of the paper "would have been an obvious matter of design
choice, as determined through routine experimentation and optimization."
Id. at 4.
Rejection I: Claims 1, 2, 10, and 12-16
Claims 14-16
Appellant argues claims 14--16 as a group. We select independent
claim 14 as representative. 37 C.F.R. § 4I.37(c)(l)(iv). Claims 15 and 16
stand or fall with claim 14.
Nozzle that Separates Sheets
Appellant argues that none of the references disclose a dispensing
orifice and nozzle "configured to unwind and separate the paper sheets from
the toilet paper strip one by one." Appeal Br. 7 (emphasis added).
According to Appellant, Johnson is the only reference disclosing a nozzle,
yet does not disclose a dispensing orifice and nozzle "configured to unwind
and separate the paper sheets from the toilet paper strip one by one." Id.
The Examiner, however, relied on Gerstein for sheet separation. To
that end, Appellant argues that the combination of Johnson and Gerstein do
not disclose a dispensing orifice and nozzle "configured to unwind and
separate the paper sheets from the toilet paper strip one by one" because,
although Gerstein discloses separating sheets, Gerstein does not do so via a
nozzle; rather, Gerstein discloses "a slit and flap system." Id. Appellant's
argument is not persuasive, because the Examiner finds that Johnson
discloses a nozzle, and Appellant fails to provide a construction of the term
"nozzle" that excludes the slit and flap system of Gerstein.
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Teaching Away
Appellant argues that Johnson teaches away from the Examiner's
proposed combination with Gerstein and Pryor. Appeal Br. 7-8. According
to Appellant, Gerstein' s facial tissue is known to be a stronger fibrous
material than toilet paper, and "structures developed to automatically
separate such facial tissues would be expected to destroy toilet paper," such
that "it would not have been expected that solutions designed for facial
tissue dispensing, i.e. slit and flap system of Gerstein, would be feasible for
toilet paper." Id. at 8. Appellant contends that Johnson's cone-shaped
funnel 44 is specifically designed to prevent sheet separation. Id. at 9 ( citing
Johnson 4:33-36 ("Aperture 42 is attached to a cone shaped funnel 44 which
guides the loose paper end of paper roll 12 toward aperture 42, and
minimizes accidental tearing or separation of the paper roll 12.").
While we agree with Appellant that "the fact that the slit and flap
system of Gerstein for separating individual sheets of paper when dispensing
from a container was developed for facial tissues and not toilet paper is
relevant to whether it would have been obvious to combine the teachings of
Johnson and Gerstein" (Appeal Br. 8), this relevance does not rise to the
level of teaching away.
Regarding the combination of Johnson and Pryor, Appellant argues
that "[t]he differences in the structure and function of Pryor and Johnson
teach away from their combination." Appeal Br. 10. According to
Appellant, Johnson's dispensing opening "has completely different
structural features from those of Pryor," because Johnson discloses a cone-
shaped funnel to guide paper toward an aperture and minimize accidental
tearing, and Pryor instead discloses a slit or slot that is optimized for pop-up
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dispensing and holding facial tissue in a vertical direction. Id. Appellant
contends that "the restrictive dispensing orifice disclosed in Pryor would
have been expected to tear, destroy, or prevent the extraction of toilet paper"
from Johnson's housing, which Johnson seeks to avoid. Id. at 10-11. The
noted difference between Johnson and Pryor does not establish teaching
away.
To teach away, the prior art must "criticize, discredit, or otherwise
discourage the solution claimed .... " In re Fulton, 391 F.3d 1195, 1201
(Fed. Cir. 2004). Even if Johnson discloses an objective of guiding paper
toward an aperture while minimizing accidental tearing, this objective does
not "criticize, discredit, or otherwise discourage" separating paper sheets
that are intended for individual use, or sizing a nozzle and orifice to apply
enough tension to cause perforations to separate in an intentional manner.
Appellant's teaching away argument is therefore not persuasive.
Appellant next argues that the rejection fails to consider whether the
"invention as a whole" would have been obvious, instead determining
whether the differences between Johnson and the invention would have been
obvious. Appeal Br. 5, 11-12 ("The Office does not provide any rationale
for why it would have been obvious to modify Johnson so as to arrive at a
dispenser system falling within the scope of claim 14. Instead, the Office
looked at each individual difference between Johnson and claim 14 and tried
to determine if each individual difference would have been obvious.").
While the Examiner indeed uses a standard method of formulating the
rejection, by explaining why each proposed modification would have been
obvious, it is unclear to us what additional reasoning Appellant considers
necessary to establish prima facie obviousness. Separating sheets to
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minimize paper waste, and then selecting a workable combination of paper
grammage, sheet size, perforation strength, and dispensing orifice size was
indicated by the Examiner to have been obvious. Final Act. 2--4 ("one of
ordinary skill would have been expected to have routinely experimented to
determine the optimum dimensions for a particular use.). Appellant has not
persuaded us that the Examiner's method of explaining why each proposed
modification would have been obvious, in and of itself, is a source of error.
Appellant also argues that "there is little to no overlap in the teachings
of the references. Instead, the five references teach completely different
products and methods." Appeal Br. 13. We are not persuaded that any lack
of overlap among the reference teachings causes the Examiner's reasoning
to lack a rational underpinning. Appellant does not allege, or explain why,
the references are from differing fields of endeavor, or lacked pertinence to
the problem faced by the inventor. See In re Bigio, 381 F.3d 1320, 1325
(Fed. Cir. 2004).
For the reasons set forth above, we are not persuaded by Appellant's
arguments, and we sustain the rejection of claims 14--16.
Claims 1, 2, 10, 12, and 13
Appellant argues claims 1, 2, 10, 12, and 13 as a group. We select
independent claim 1 as representative. 37 C.F.R. § 4I.37(c)(l)(iv).
Claims 2, 10, 12, and 13 stand or fall with claim 1.
Appellant makes the same arguments regarding the patentability of
independent claim 1 that were made for independent claim 14. See Appeal
Br. 15-16. For the reasons set forth above regarding independent claim 14,
we do not sustain the rejection of independent claim 1, or claims 2, 10, 12,
and 13 that depend therefrom.
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All of Appellant's arguments, contentions, and statements set forth in
the Appeal Brief and the Reply Brief regarding Rejection I, have been
considered and are not persuasive.
Rejection II: Claims 4, 5, and 17
Claims 4, 5, and 17 depend directly or indirectly from claim 1.
Appellant makes no argument that claims 4, 5, or 17 would be patentable
over Johnson, Gerstein, Esquivel, Mlinar, Pryor, and Neveu, if claim 1 is not
patentable over Johnson, Gerstein, Esquivel, Mlinar, and Pryor. For the
reasons explained above in our analysis of claim 1 and Rejection I, we
sustain Rejection II.
Rejection III: Claims 1, 2, 10, 12, and 13
The Examiner finds that King discloses, inter alia, a dispenser
comprising a housing 6 adapted to house a roll of a perforated paper strip,
the housing including a nozzle 7 with a dispensing orifice through which the
paper strip is unwound. Final Act. 5. The Examiner finds that King's
nozzle 7 "extend[ s] externally from the housing" as required by claim 1.
Final Act. 9.
Appellant argues, inter alia, that "King fails to disclose a nozzle
extending externally from the housing." Appeal Br. 17. According to
Appellant, King discloses an aperture ( or opening) 7 in a bottom surface of
its housing 6, rather than a nozzle extending externally from its housing. Id.
We agree with Appellant that King fails to disclose a nozzle extending
externally from its housing. The Examiner does not find that Pryor cures
this deficiency of King. For this reason, we do not sustain the rejection of
claim 1, or the rejection of claims 2, 10, 12, and 13 that depend therefrom.
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Rejection IV: Claims 4 and 5
Claims 4 and 5 depend from claim 1. The Examiner does not find that
Neveu cures the deficiency of King discussed above. We therefore do not
sustain Rejection IV.
NEW GROUND OF REJECTION
35 U.S.C. § 112, second paragraph-Indefiniteness
Legal Principles of Indefiniteness
"Because the claims perform the fundamental function of delineating
the scope of the invention, the purpose of the definiteness requirement is to
ensure that the claims delineate the scope of the invention using language
that adequately notifies the public of the patentee's right to exclude."
Datamize, LLC v. Plumtree Software, Inc., 417 F.3d 1342, 1347 (Fed. Cir.
2005) ( citation omitted). The governing section of the Patent Code provides,
in pertinent part, that:
The specification shall conclude with one or more
claims particularly pointing out and distinctly claiming
the subject matter which the inventor or a joint inventor
regards as the invention.
35 U.S.C. § 112, second paragraph. A claim is properly rejected as
indefinite if, after applying the broadest reasonable interpretation in light of
the specification, the metes and bounds of a claim are not clear because the
claim "contains words or phrases whose meaning is unclear." In re
Packard, 751 F.3d 1307, 1310, 1322 (Fed. Cir. 2014) (per curiam)
(approving, for pre-issuance claims, the standard from MPEP § 2173.05(e));
see also Ex parte McAward, Appeal 2015-006416, 2017 WL 3669566, at *5
(PTAB Aug. 25, 2017) (precedential) (adopting the approach for assessing
indefiniteness approved by the Federal Circuit in Packard).
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During patent prosecution, when claims can be amended, ambiguities
should be recognized, scope and breadth of language explored, and
clarification imposed. See In re Zietz, 893 F .2d 319, 321 (Fed. Cir. 1989).
Section 112 places the burden of precise claim drafting on the applicant. See
In re Morris, 127 F.3d 1048, 1056-57 (Fed. Cir. 1997). Ifno reasonably
definite meaning can be ascribed to certain claim terms, the subject matter
becomes indefinite, not obvious. See In re Wilson, 424 F.2d 1382, 1385
(CCP A 1970).
More specifically, when a "word of degree" is used, the patent
application must provide a standard for measuring that degree. Enzo
Biochem, Inc. v. Applera Corp., 599 F.3d 1325, 1332 (Fed. Cir. 2010)
( quoting Seattle Box Co., Inc. v. Indus. Crating & Packing, Inc., 731 F.2d
818,826 (Fed. Cir. 1984)). The definiteness ofa term of degree is
problematic if its baseline for comparison is unclear to those of ordinary
skill in the art. Liberty Ammunition, Inc. v. United States, 835 F.3d 1388,
1395 (Fed. Cir. 2016).
We especially take caution when presented with
terms of degree following the Supreme Court's decision
in Nautilus, Inc. v. Biosig Instruments, Inc., [572 U.S.
898], 134 S.Ct. 2120, 189 L.Ed.2d 37 (2014), which
instructs that a claim must "inform those skilled in the art
about the scope of the invention with reasonable
certainty" to meet the definiteness requirement of 35
U.S.C. § 112, ,r 2, id. at 2129. While our post-Nautilus
cases indicate that terms of degree are not "inherently
indefinite" in light of the Supreme Court's decision, we
have recognized that claims having terms of degree will
fail for indefiniteness unless they "provide objective
boundaries for those of skill in the art" when read in light
of the specification and the prosecution history.
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Id. at 1395-96 (citing Interval Licensing LLC v. AOL, Inc., 766 F.3d 1364,
1370-71 (Fed. Cir. 2014)).
Each of independent claims 1 and 14 recites a nozzle and a roll of
paper sheet that are "disposed in such a way that the paper sheets unwind
and separate from the toilet paper strip one by one and emerge with reduced
crumpling from the dispensing orifice in the nozzle." Appellant argues, in
part, that limitations directed to reduced crumpling relate to the problem to
be solved by their invention and distinguish their invention from the prior
art. See, e.g., Appeal Br. 15.
The term "reduced" is a term of degree, requiring a comparison
against a baseline. See Liberty, 835 F.3d at 1395 (finding that "reduced area
of contact" is a term of degree, because it necessarily calls for a comparison
against some baseline).
We find no disclosure in Appellant's Specification providing a
baseline for comparison from which a skilled artisan could determine any
degree to which crumpling is reduced to fall within the claims. Our review
of the Specification informs us that Appellant has not provided an objective
standard, with respect to measuring a crumpling, which can serve as a
baseline of comparison to determine whether crumpling caused by the
invention is reduced. Lacking such an objective standard, the term is
indefinite. See Datamize, 417 F.3d at 1351 (explaining that the specification
must provide some standard for measuring that degree).
Consequently, we hereby enter a NEW GROUND OF REJECTION
that independent claims 1 and 14, and consequently claims 2, 4, 5, 10, 12,
13, and 15-17 that depend therefrom, are unpatentable as indefinite under 35
U.S.C. § 112, second paragraph.
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DECISION
We AFFIRM the rejection of claims 1, 2, 10, and 12-16 as
unpatentable over Johnson, Gerstein, Esquivel, Mlinar, and Pryor.
We AFFIRM the rejection of claims 4, 5, and 17 as unpatentable over
Johnson, Gerstein, Esquivel, Mlinar, Pryor, and Neveu.
We REVERSE the rejection of claims 1, 2, 10, 12, and 13 as
unpatentable over King and Pryor.
We REVERSE the rejection of claims 4 and 5 as unpatentable over
King, Pryor, and Neveu.
We enter a NEW GROUND of rejection under 35 U.S.C. § 112,
second paragraph against claims 1, 2, 4, 5, 10, and 12-17.
37 C.F.R. § 4I.50(b) provides that Appellant, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new grounds of rejection to
avoid termination of the appeal as to the rejected claims:
( 1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new evidence relating
to the claims so rejected, or both, and have the matter
reconsidered by the Examiner, in which event the proceeding
will be remanded to the Examiner. ...
(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same record ....
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED; 37 C.F.R. § 4I.50(b)
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