Ex Parte Smith et al

Patent Trial and Appeal Board

Jun 14, 2017

13324460 (P.T.A.B. Jun. 14, 2017)

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.
13/324,460 12/13/2011 Patrick J. Smith 12670-P1D1-USA 9650
31743 7590 06/15/2017
fTenraia-Paoifio T T C EXAMINER
133 Peachtree Street NE - GA030-42
ATLANTA, GA 30303
CHAN, KO HUNG
ART UNIT PAPER NUMBER
3631
MAIL DATE DELIVERY MODE
06/15/2017 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 PATENT TRIAL AND APPEAL BOARD
Ex parte PATRICK J. SMITH, ANDY L. KIRKPATRICK,
MICHAEL R. KILGORE, and DAVID G. HONAN
Appeal 2016-000525
Application 13/324,460
Technology Center 3600
Before THOMAS F. SMEGAL, NATHAN A. ENGELS, and
ERIC C. JESCHKE, Administrative Patent Judges.
ENGELS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from a final rejection of
claims 8—21. Claims 1—6 have been withdrawn. Claim 7 is canceled. We
have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
Appeal 2016-000525
Application 13/324,460
ILLUSTRATIVE CLAIM
Claim 8, reproduced below, is illustrative of the claimed subject
matter:
8. A dispenser for disposable cutlery, comprising:
a housing;
at least one banded stack of disposable cutlery disposed in
the housing, the banded stack comprising:
a plurality of disposable cutlery pieces disposed
adjacent one another to provide a stack of the cutlery
pieces; and
at least one band disposed about the stack between
a first end and second end of the cutlery, wherein the band
comprises an adhesive section that is only partially
disposed on the band, wherein the adhesive section of the
band makes contact and adheres to one longitudinal side
of the stack and not the other longitudinal side to hold the
plurality of disposable cutlery pieces together until
removed.
THE REJECTIONS
Claims 8—21 stand rejected under 35U.S.C. § 112, first paragraph as
failing to comply with the written-description requirement.
Claims 8—21 also stand rejected under 35 U.S.C. § 103(a) as being
unpatentable in view of Casebasse (EP 1,217,923 Bl; published Mar. 9,
2003) and Dullinger (US 3,987,901; issued Oct. 26, 1976).
ANALYSIS
The Written Description Rejections
The written description requirement provides that a patent applicant
must “clearly allow persons of ordinary skill in the art to recognize that [he]
invented what is claimed.” Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d
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Application 13/324,460
1336, 1351 (Fed. Cir. 2010) (enbanc) (quoting Vas-Cath Inc. v. Mahurkar,
935 F.2d 1555, 1563 (Fed. Cir. 1991)). Compliance with the written
description requirement is a question of fact, and “the test for sufficiency is
whether the disclosure of the application relied upon reasonably conveys to
those skilled in the art that the inventor had possession of the claimed
subject matter as of the filing date.” Id. “[T]he level of detail required to
satisfy the written description requirement varies depending on the nature
and scope of the claims and on the complexity and predictability of the
relevant technology,” with relevant factors including the existing knowledge
in the relevant art, the extent and content of the prior art, the maturity of the
science or technology, and the predictability of the aspect at issue. Id.
Here, the Examiner finds that Appellants’ Specification lacks
sufficient written-description support for the limitation of “wherein the
adhesive section of the band makes contact and adheres to one longitudinal
side of the stack” as recited in independent claim 8 and similarly recited in
independent claims 16 and 21. Specifically, the Examiner states that
Appellants’ Specification does not directly state that the adhesive section of
the band is in contact with and adheres to the stacked cutlery and “the tape
side of a band may only have adhesives on the ends in contact with the
paperboard.” Ans. 11—12.
Appellants cite, among other disclosures, the Specification disclosures
of tape that includes “food contact compatible adhesive” that “must be able
to provide a residue free or substantially residue free surface on the cutlery
after the tape is removed.” Spec. 1113. Further, Appellants’ Figure 3 and
the related description describes “peel[ing] the tape downwardly toward the
bottom of the plurality [of cutlery].” Spec. 1117. In light of these and
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Appeal 2016-000525
Application 13/324,460
similar disclosures cited by Appellants, we agree with Appellants that the
Specification provides adequate written-description support for a band
having an adhesive section in contact with and adhering to the stack of
disposable cutlery.
The Examiner additionally finds a lack of written description support
for the “continuous band” recited in claim 21. The Examiner finds the
Specification discloses that “[t]he band cannot be ‘a continuous band’ to
bound first and second sides of the stack as recited because according to
paragraph [0112], the ends of the band portion are ‘attached’ to the ends of
the paperboard portion.” Ans. 12.
Appellants argue, and we agree, that the broadest reasonable
interpretation of claim 21 read in light of Appellants’ Specification includes,
and is adequately supported by, Appellants’ disclosures of a band made up
of more than one materials, such as the tape and paperboard portions of a
band described in the Specification. Spec. ^fl[ 112, 135 (“FIG. 4 illustrates
banding 58(a) comprising flexible tape 62 joined to flexible paperboard strip
64 just subsequent to withdrawal between packets 54 and 56.”). Contrary to
the Examiner’s rejection, nothing in claim 21 or the written description
defines or limits the claimed band to a “monolithic” structure. Accordingly,
we do not sustain the Examiner’s rejections of claims 8, 16, and 21 for
failure to comply with the written description requirement.
The Obviousness Rejection
The Examiner finds Casebasse teaches a dispenser and a banded stack
of disposable cutlery as claimed except that Casebasse does not disclose
using a band having an adhesive section in the interior surface and a
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Appeal 2016-000525
Application 13/324,460
paperboard section. Final Act. 3^4 (citing Casebasse Figs. 1, 5, 6, 9, col. 2,
11. 55—58). In addition to the teachings of Casebasse, the Examiner finds that
binding a stack of items with a band having an adhesive section and a
paperboard section is old and well-known in the art, as evidenced by
Dullinger. Final Act. 4—5; Ans. 13 (citing Dullinger Fig. 4, col. 3,11. 10-17,
col. 5,11. 45—48, col. 7,11. 10-17).
Appellants argue Dullinger “does not teach or suggest the desirability
of an adhesive section on one side of a stack and a paper section on the
other. Dullinger merely discloses an adhesive tape that is applied to both
sides of a stack of labels— not one or the other but both sides.” Appeal Br.
12 (italics omitted); accord Reply Br. 5. According to Appellants,
“[therefore, a combination of Casebasse and Dullinger cannot arrive at all
the limitations of any [of] claim[s] 8—21.” Appeal Br. 12—13 (italics
omitted).
Having considered the Examiner’s rejection in light of Appellants’
arguments and the evidence of record, we are unpersuaded that the Examiner
erred in rejecting claims 8—21 as obvious in light of the prior art. As cited
by the Examiner (see Ans. 13 (citing Dullinger Fig. 4 and related
descriptions)), among other relevant disclosures, Dullinger teaches an
adhesive tape 3 that contacts and adheres to one longitudinal side of a stack
of labels and connects to both ends of the underside of a backing section 8,
which intervenes between adhesive tape 3 and the other side of the labels.
Dullinger col. 5,11. 39-49 (describing Fig. 4) (“The adhesive tape covers a
longitudinal side and the two end faces of the stack and is attached to the
underside of the backing element.”), col. 7,11. 10-17. Accordingly, contrary
to Appellants’ arguments, Dullinger teaches an adhesive tape that contacts
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Application 13/324,460
and adheres to one longitudinal side of a stack of labels and not the other
longitudinal side of the stack (i.e., the side covered by the backing element).
As such, Appellants have not persuasively rebutted the Examiner’s findings
that the prior art teaches each limitation of the claims at issue nor the
Examiner’s conclusion of obviousness, and we sustain the Examiner’s
obviousness rejection of claims 8—21.
DECISION
For the above reasons, we affirm the Examiner’s rejection of claims
8—21 under 35 U.S.C. § 103(a). We reverse the Examiner’s rejection of
claims 8—21 under 35 U.S.C. § 112, first paragraph.
No time period for taking any subsequent action in connection with
this appeal maybe extended. 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED
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