Ex Parte Springer et al

Patent Trial and Appeal Board

Jul 20, 2017

13927484 (P.T.A.B. Jul. 20, 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.
13/927,484 06/26/2013 Ruth Springer 31530-4 4231
76656 7590
Patent Docket Department
Armstrong Teasdale LLP
7700 Forsyth Boulevard
Suite 1800
St. Louis, MO 63105
EXAMINER
RANDALL, JR., KELVIN L
ART UNIT PAPER NUMBER
3651
NOTIFICATION DATE DELIVERY MODE
07/24/2017 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):
USpatents @ armstrongteasdale. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte RUTH SPRINGER and JEFFREY SPRINGER
Appeal 2017-004653
Application 13/927,484
Technology Center 3600
Before JOSEPH L. DIXON, MICHAEL J. STRAUSS, and
AARON W. MOORE, Administrative Patent Judges.
STRAUSS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Final Rejection
of claims 1—8, 10—16, and 18—20. Claim 17 is indicated as allowable and
claim 9 is indicated to be allowable if rewritten in independent form. We
have jurisdiction over the rejected claims under 35 U.S.C. § 6(b).
We affirm.
THE INVENTION
The claims are directed to a pet waste bag dispenser. Spec., Title.
Claim 1, reproduced below, is representative of the claimed subject matter:
1. A pet waste bag dispenser comprising:
a housing defining an interior compartment and having at
least one opening in communication with the interior
compartment; and
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a pair of positioning plates located within the interior
compartment of the housing, the pair of positioning plates being
configured to receive therebetween and vertically align at least
one box containing rolled pet waste bags within the housing so
that the at least one box containing rolled pet waste bags is
positioned relative to the opening such that the rolled pet waste
bags can be dispensed through the opening in the housing, the
pair of positioning plates also being configured to position a
plurality of stacked pet waste bags relative to the opening such
that stacked pet waste bags can be dispensed through the opening
in the housing.
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Peters US 3,028,046 Apr. 3, 1962
Requena US 6,264,059 B1 July 24, 2001
Baughman US 6,708,841 B2 Mar. 23, 2004
Myers US 6,915,907 B2 July 12, 2005
Wilkes US 2002/0079322 A1 June 27, 2002
Tramontina US 2002/0139811 A1 Oct. 3, 2002
Sommers US 2005/0189366 A1 Sept. 1,2005
REJECTIONS
The Examiner made the following rejections:
Claims 1—3 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Baughman and Sommers. Final Act. 3—5.
Claims 4 and 10 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Baughman, Sommers, and Wilkes. Final Act. 5—6.
Claim 5 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Baughman, Sommers, and Tramontina. Final Act. 6—7.
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Application 13/927,484
Claims 6—8, 13, 14, and 16 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Baughman, Sommers, Tramontina, and Requena.
Final Act. 7—10.
Claim 11 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Baughman, Sommers, Wilkes, and Myers. Final Act. 10-
11.
Claim 12 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Baughman, Sommers, Wilkes, Myers, and Peters. Final
Act. 11.
Claims 15 and 18 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Baughman, Sommers, Tramontina, Requena, and Wilkes.
Final Act. 11—12.
Claim 19 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Baughman, Sommers, Tramontina, Requena, Wilkes, and
Myers. Final Act. 12—13.
Claim 20 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Baughman, Sommers, Tramontina, Requena, Wilkes,
Myers, and Peters. Final Act. 13—14.
APPELLANTS’ CONTENTIONS
1. Appellants contend Baughman’s side guides 227 support box 16 at an
angle within dispenser 1 to provide an angled removal of gloves, not
vertical alignment of the box as required by claim 1. Br. 6—7.
2. Appellants contend Baughman’s angled box teaches away from the
vertical alignment of claim 1 and modifying Baughman to include
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vertical alignment of a product-dispensing box “would render the
dispenser of Baughman inoperable for its intended purpose.” Br. 7.
3. Appellants contend the combination of Baughman and Sommers in
rejecting claim 1 is improper. Br. 10—11.
4. Appellants contend “Baughman expressly teaches away from a
dispensing apparatus having an opening in the front panel that is
vertically aligned on the front panel as recited in claim 13 because it
results in non-ergonomic dispensing.” Br. 15.
5. Appellants contend “the opening 100 of Baughman is not spaced from
the bottom panel nor is it vertically aligned on the front wall 20 as
recited in claim 13.” Br. 16.
6. Appellants contend the combination of Baughman and Sommers is
improper. Br. 18—20.
ANALYSIS
Appellants’ arguments are unpersuasive of Examiner error.
Accordingly, we adopt as our own (1) the findings and reasons set forth by
the Examiner in the Final Office Action from which this appeal is taken
(Final Act. 2—14) and (2) the reasons set forth by the Examiner in the
Examiner’s Answer in response to Appellants’ Appeal Brief (Ans. 2—6) and
concur with the conclusions reached by the Examiner. We highlight the
following for emphasis.
In connection with contention 1, Appellants argue Baughman’s box 16
is not held vertically aligned within a housing by side guides 227 as required
by claim 1. Br. 6—8. That is, Appellants argue, the front edges of
Baughman’s position plates 227 form an angle with back plate 3 such that a
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frontal dispensing surface of box 3 is supported at an angle with respect to
back plate 3 rather than being in vertical alignment within housing 1 as per
claim 1.
Appellants’ contention 1 is unpersuasive. During examination of a
patent application, pending claims are given their broadest reasonable
construction consistent with the specification. In re Am. Acad, of Sci. Tech.
Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004); In re Prater, 415 F.2d 1393,
1404—05 (CCPA 1969). Because “applicants may amend claims to narrow
their scope, a broad construction during prosecution creates no unfairness to
the applicant or patentee.” In re ICON Health & Fitness, Inc., 496 F.3d
1374, 1379 (Fed. Cir. 2007) (citing Am. Acad., 367 F.3d at 1364).
Appellants’ Specification discloses, in relevant part,
Two of the boxes 50 (the left and right most boxes as viewed in
Figures 10 and 11) are held in vertical alignment (i.e., inhibited
from canting) by the respective side panels 20, 22 and the
positioner 36 and more specifically, the respective medial
portions 40 and spacing portions 42 of the positioner.
Spec. 136 (emphasis added) (see also Spec. 1 51). Thus, when interpreted
in view of the Specification, vertical alignment refers to positioning a box
without left-to-right canting. That is, claim 1 does not require a front surface
of a box be aligned parallel to a back or front surface of the dispenser (i.e.,
not angled from front to back). Thus, Appellants’ argument directed to
vertical alignment based on a front-to-back angle (as depicted by
Baughman), is not commensurate in scope with claim 1. Instead, because
Baughman’s box 16 is not canted from side-to-side but has opposite end
panels vertically aligned within housing 1, under a broad but reasonable
interpretation consistent with the Specification, the reference teaches or
suggests the disputed limitation.
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Appellants’ contention 2 is unpersuasive because, as is the case with
contention 1, Appellants’ argument is not commensurate in scope with claim
1. Although Baughman discloses a “device that allows for the gloves to be
dispensed at an angle (rather than only downward or forward)” (Baughman
col. 2,11. 31—33), the disputed limitation of claim 1 requiring a pair of
positioning plates that vertically align a box within a dispenser housing, at
most, limits side-to-side canting of the box, not angling ffont-to-back as
disclosed by Baughman. Furthermore, although Baughman discloses the
advantages of “gloves to be dispensed at an angle (rather than only
downward or forward), which allows a more natural movement of the hand
and arm when obtaining a glove from the dispenser,” Baughman discloses
the angled dispensing angle to be an improvement over the prior art
(Baughman col. 1,11. 65—67; col. 2,11. 43^46).
Appellants fail to provide sufficient evidence or argument that
Baughman so disparages the non-angled approach of the prior art as to
discourage the ordinary artisan from a box alignment that dispenses product
downward or forward. See In re Geisler, 116 F.3d 1465, 1471 (Fed. Cir.
1997) (holding that merely “express[ing] a preference” falls short of
discouraging one of ordinary skill in the art from following a particular
path); In re Dunn, 349 F.2d 433, 438 (CCPA 1965) (merely teaching an
alternative or equivalent method does not teach away from the use of a
claimed method). Likewise, Appellants provide insufficient evidence that
modifying Baughman to include vertical alignment of a product-dispensing
box “would render the dispenser of Baughman inoperable for its intended
purpose.” Br. 7. In the absence of persuasive evidence to the contrary,
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although possibly less ergonomic, Baughman’s apparatus would still
function to dispense gloves.
In connection with contention 3, Appellants argue the Examiner’s
reasoning for combining Baughman’s glove dispenser to dispense rolled and
stacked bags as disclosed by Sommers is conclusory, lacking “articulated . . .
factual underpinnings in support of the contention that one of ordinary skill
in the art would have been motivated to combine the teachings of Baughman
and Sommers to arrive at the claimed invention.” Br. 11. The Examiner
responds that the motivation for making the combination is “to provide an
art equivalent alternative dispensing product as known within the art without
additional inventive skill.” Ans. 4.
Appellants’ contention 3 is unpersuasive. Appellants fail to explain
why one skilled in the art would not have substituted any desired product,
such as Sommer’s rolled or stacked plastic bags, for Baughman’s gloves
dispensed from box 16. We do not agree the Examiner’s reasoning fails to
“provide a link between the factual findings and the legal conclusion of
obviousness.” Br. 11. Instead, the Examiner finds the reason to combine the
teachings of Baughman and Sommers is “to dispense a particular product.”
Therefore, the Examiner has set forth articulated reasoning based on rational
underpinning, sufficient to support a conclusion of obviousness. See In re
Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (“[Rejections on obviousness
grounds . . . must [include] some articulated reasoning with some rational
underpinning to support the legal conclusion of obviousness”) (cited with
approval in KSR Inti Co v. Teleflex Inc., 550 U.S. 398, 418 (2007)).
Furthermore, we note in passing and without reliance in arriving at
our decision, Appellants fail to explain what structural limitations are
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imposed by a requirement for the dispenser of claim 1 to receive a box
containing a particular product, i.e., rolled pet waste bags as taught or
suggested by Sommers. At most, claim 1 recites an intended use of the
positioning plates to receive and vertically align a box within the housing
without including either the box itself as part of the claimed dispenser or
reciting structure specific to what the box is used for, i.e., to store rolled pet
waste bags. Such intended use does not change the structure of the recited
dispenser and, in this instance, does not further limit the scope of the claim.
A statement of intended use in an apparatus claim cannot distinguish over a
prior art apparatus that discloses all the recited structural limitations and is
capable of performing the recited function. See In re Schreiber, 128 F.3d
1473, 1477 (Fed. Cir. 1997). We also note “[a]n intended use or purpose
usually will not limit the scope of the claim because such statements usually
do no more than define a context in which the invention operates.” See
Boehringer Ingelheim Vetmedica, Inc. v. Schering-Plough Corp., 320 F.3d
1339, 1345 (Fed. Cir. 2003); In re Stencel, 828 F.2d 751, 754 (Fed. Cir.
1987) (Although “[s]uch statements often . . . appear in the claim’s preamble
. . .,” a statement of intended use or purpose can appear elsewhere in a
claim.). Accordingly, under this claim interpretation, the structure of claim 1
is taught or suggested by Baughman without the need to include the
cumulative teachings of Sommers.
For the reasons discussed supra, we are not persuaded the Examiner
erred in rejecting claim 1. Accordingly, we sustain the rejection of claim 1
under 35 U.S.C. § 103(a) over Baughman and Sommers, together with the
rejections of dependent claims 2—8 and 10—12 which are not argued
separately with particularity.
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In connection with contention 4, Appellants present argument similar
to that present in support of contention 2, i.e., “Baughman expressly teaches
away from a dispensing apparatus having an opening in the front panel that
is vertically aligned on the front panel as recited in claim 13 because it
results in non-ergonomic dispensing.” Br. 15. This argument is
unpersuasive for the reasons discussed supra in connection with contention
2.
In connection with contention 5, Appellants argue “opening 100 of
Baughman is not spaced from the bottom panel.” Br. 16. The Examiner
finds Baughman’s plate 61 of bottom wall 60 corresponds to the claimed
bottom panel and, as such, is spaced from aperture 100 corresponding to the
claimed opening. Final Act. 8.
Under a broad but reasonable interpretation of the argued claim
limitation, we are unpersuaded of Examiner error. The Examiner maps only
plate 61, not intersecting plate 62, to the bottom panel of claim 13. As
depicted in Baughman’s Figure 2, a portion of aperture 100 is formed in a
side of plate 62 opposite plate 61. Accordingly, contrary to Appellants’
argument, we agree with the Examiner in finding Baughman’s aperture 100
(the claimed opening) is spaced from plate 61 (the claimed bottom panel) by
a rear portion of plate 62, thereby teaching or suggesting the disputed
limitation.
Appellants’ arguments in support of contention 6 are substantially the
same as those presented in connection with contention 3, and are
unpersuasive for similar reasons. In particular, Appellants’ contention that,
in combining the prior art, the Examiner “fails to provide any reason(s) why
it would have been obvious to one of ordinary skill in the art to combine
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what is taught in Baughman, Sommers, Tramontina, and Requena to produce
the claimed invention” (Br. 19), is itself conclusory. Instead, the Examiner
has set forth articulated reasoning based on rational underpinnings (Final
Act. 9—10) that are sufficient to support a conclusion of obviousness.
Accordingly, in the absence of sufficient persuasive evidence, Appellants’
contention that the combination is improper is unpersuasive of Examiner
error.
For the reasons discussed supra, Appellants’ contentions in connection
with the rejection of independent claim 13 are unpersuasive of Examiner
error. Accordingly, we sustain the rejection of independent claim 13 under
35 U.S.C. § 103(a) over Baughman, Sommers, Tramontina, and Requena,
together with the rejections of dependent claims 14—16 and 18—20 which are
not argued separately with particularity.
DECISION
We affirm the Examiner’s decision to reject claims 1—8, 10—16, and
18-20.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED
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