Ex Parte Cittadino et al

Patent Trial and Appeal Board

Sep 27, 2018

13904128 (P.T.A.B. Sep. 27, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/904, 128 05/29/2013
109963 7590 10/01/2018
GP-Eversheds Sutherland (US) LLP
999 Peachtree Street, NE
Suite 2300
Atlanta, GA 30309
FIRST NAMED INVENTOR
Antonio M. Cittadino
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.
21110-US (38201-0105) 2529
EXAMINER
GALLION, MICHAELE
ART UNIT PAPER NUMBER
3654
NOTIFICATION DATE DELIVERY MODE
10/01/2018 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):
patentdocket@eversheds-sutherland.com
gplawpatents@gapac.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ANTONIO M. CITTADINO,
STEVEN B. MATTHEEUSSEN, and TOM MUDAY
Appeal2018-002386
Application 13/904,128
Technology Center 3600
Before MICHAEL L. HOELTER, RICHARD H. MARSCHALL, and
PAUL J. KORNICZKY, Administrative Patent Judges.
KORNICZKY, Administrative Patent Judge.
DECISION ON APPEAL
Appeal2018-002386
Application 13/904, 128
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner's decision, as set forth in the Non-Final Office Action dated
March 31, 2017 ("Non-Final Act."), rejecting claims 1, 2, 4, 5, 8, 10-22, and
24--27 under pre-AIA 35 U.S.C. § 102(b) as being anticipated by Bolton (US
448,113, issued March 10, 1891). 2 We have jurisdiction under 35 U.S.C.
§ 6(b ).
We AFFIRM.
THE CLAIMED SUBJECT MATTER
The claims are directed to a sheet product dispenser with a load
inducement portion. Claims 1, 13, and 1 7 are the independent claims on
appeal. Claim 1, reproduced below with disputed limitations italicized for
emphasis, is illustrative of the claimed subject matter:
1. A sheet product dispenser for dispensing a roll of sheet
product mounted thereto, the dispenser comprising:
a housing portion defining a space operative to receive the
roll of sheet product for rotation about an axis to dispense the
sheet product; and
a load inducement portion operative to induce a frictional
force between the roll of sheet product and the load inducement
portion during rotation of the roll of sheet product, the load
inducement portion comprising:
a guide member; and
a load member slidably engaged with the guide member,
the load member comprising:
Georgia-Pacific Consumer Products LP ("Appellant") is the applicant
pursuant to 37 C.F.R. § 1.46, and is identified as the real party in interest.
Appeal Brief, dated June 14, 2017 ("Br."), at 2.
2 Claims 3, 6, 7, and 23, are cancelled, and claim 9 is objected to.
Appeal Br. 16-19 (Claims App.); 2.
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Application 13/904, 128
a contact portion defined along a first side of the load
member and having a curved shape, the contact portion operative
to contact and apply a load to an outer surface of the roll of sheet
product due to a force of gravity; and
a non-contact portion defined along a second side of the
load member opposite the first side of the load member;
wherein the load member is engaged with the guide
member such that the contact portion remains oriented toward
the roll of sheet product as the load member slides with respect
to the guide member and during rotation of the roll of sheet
product and such that the non-contact portion remains oriented
away from the roll of sheet product as the load member slides
with respect to the guide member and during rotation of the roll
of sheet product; and
wherein the load inducement portion is operative such that
the load applied by the contact portion due to the force of gravity
changes as an outer diameter of the roll of sheet product is
reduced by dispensing of the sheet product.
DISCUSSION
Rejection 1: Claims 1, 2, 4, 5, 8, 10-22, and 24-27
as Anticipated By Bolton
Independent Claims 1, 13, and 1 7
Independent claims 1, 13, and 1 7 have the following similar
limitations. Claims 1 and 13 recite, in part, "the load inducement portion is
operative such that the load applied by the contact portion due to the force of
gravity changes as an outer diameter of the roll of sheet product is reduced
by dispensing of the sheet product." Claim 1 7 recites, in part, "the load
applied by the load inducement portion due to the force of gravity changes
as an outer diameter of the roll of sheet product is reduced by dispensing of
the sheet product." For ease of reference, we shall refer to these limitations
as the "load inducement limitation."
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Application 13/904, 128
The Examiner finds that Bolton discloses all of the limitations in the
pending claims, including the load inducement limitation. Annotated Figure
2 of Bolton is depicted below:
......._--- .........
"' ,./f \
\
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'a
!v
J
I
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/
----
Figure 5 is a vertical sectional view of the cutting stand and knife. Bolton
1 :22-23. We have annotated Figure 2 to show three portions of arm C - an
upper straight arm, a middle curved arm, and a lower straight arm.
The Examiner finds that Bolton discloses "a load inducement portion
(C, C', D, D') operative to induce a frictional force (friction applied to roll)
between the roll of sheet product and the load inducement portion." Non-
Final Act. 2. The Examiner finds that "the load inducement portion (D, D',
D4, I) is operative such that the load applied by the contact portion due to
the force of gravity changes as an outer diameter of the roll of sheet product
is reduced by dispensing of the sheet product" because the "force of gravity
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Application 13/904, 128
changes or is reduced as the load member slides from a more vertical portion
of the guide member C [i.e., the upper straight arm in annotated Figure 2] to
a more horizontal portion of C [i.e., the lower straight arm in annotated
Figure 2] as the roll is dispensed." Id. at 3. The Examiner states that
the load inducement is positioned in the channel based on the size
of the roll mounted. As such, a larger roll would position the
load inducement on the curved portion [i.e., the upper and middle
arm in annotated Figure 2] having a certain gravitational force
which would change or decrease once the load inducement is slid
to the linear portion [i.e., the lower arm in annotated Figure 2].
Furthermore, because element D' has a cylindrical portion would
account for the curved region still allowing the inducement to
operate and cut the roll.
Id. at 8.
Appellant asserts that the Examiner's rejection is erroneous for
several reasons. First, Appellant asserts that Bolton's load inducement
portion does not change due to the force of gravity as the outer diameter of
roll G is reduced because Bolton does not describe that 'journals d' of the
cutting blade D [are] ever [] positioned along the straight upper portions or
the curved intermediate portions (i.e., the 'more vertical portions') of the
inclined arms C during normal intended use of the stand." Br. 8. According
to Appellant, Bolton discloses that
the journals d' of the cutting blade D are positioned only along
the straight lower portions (i.e., the "more horizontal portions")
of the inclined arms C during the normal intended use of the
stand, that the straight upper portions of the arms C are used only
for loading the cutting blade D and/ or the shaft H into the grooves
c' of the arms C, and that the curved intermediate portions merely
connect the respective lower and upper portions.
Br. 8-9.
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Application 13/904, 128
The Examiner responds that the term "operative" indicates that the
load inducement limitations in claims 1 and 13 are "functional" limitations.
Ans. 2, 4. "It is axiomatic that anticipation of a claim under § 102 can be
found if the prior art reference discloses every element of the claim." In re
King, 801 F.2d 1324, 1326 (Fed. Cir. 1986). Claims directed to an apparatus
must be distinguished from the prior art in terms of structure rather than
function. In re Schrieber, 128 F.3d 1473, 1477-78 (Fed. Cir. 1997);
Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1469 (Fed.
Cir. 1990) ("[ A Jpparatus claims cover what a device is, not what a device
does.").
In order to insure that an applicant is not awarded a claim that fails to
patentably distinguish a claimed structure from prior art structures, the
Federal Circuit has articulated a burden shifting rule with regard to
functional claiming: Where there is reason to believe that the prior art
structure possesses all the claimed structural characteristics including the
capability of performing the claimed function, the burden shifts to the
applicant to show that, in fact, the claimed function structurally distinguishes
the claimed apparatus from the prior art apparatus. In re Schreiber, 128 F.3d
1473, 1478 (Fed. Cir. 1997). Specifically, "[w]here, as here, the claimed
and prior art products are identical or substantially identical ... the PTO can
require an applicant to prove that the prior art products do not necessarily or
inherently possess the characteristics of his claimed product." In re Best,
562 F.2d 1252, 1255 (CCPA 1977).
Here, Appellant does not dispute that the load due to the force of
gravity at upper straight arm, the middle curved arm, and the lower straight
arm changes as an outer diameter of the roll of sheet product is reduced by
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Application 13/904, 128
dispensing of the sheet product. Appellant's attorney argues that the Bolton
discloses that journals d' are only positioned along the straight lower
portions and are not intended to function in the straight upper arm portion
and curved middle arm portion. Br. 9. Appellant's attorney's argument,
however, does not present persuasive evidence that the diameter of roll G is
limited to that shown in Figure 2 and cannot be larger, or that Bolton's load
inducement portion does not and cannot operate along the straight upper arm
and curved middle arm. See In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir.
1984) (lawyer arguments and conclusory statements which are unsupported
by factual evidence are entitled to little probative value); In re Pearson, 494
F.2d 1399, 1405 (CCPA 1974) ("Attorney's arguments in a brief cannot take
the place of evidence.").
With respect to the load inducement limitations in claims 1, 13, and
17, we agree with the Examiner's finding that the "load applied by the
contact portion due to the force of gravity would reduce from the curved
portion to the straight portion because of the change of angle of the guide
member (C)." Ans. 2. The Examiner correctly explains that because Bolton
"discloses opening c2 on both ends of the arms C to receive the journals d',"
"the journal d' would be dropped into the opening and travels down within
the guide until it reached the roll," and as "element d' is positioned along the
curved portion thus allowing changes in gravitational forces." Id. at 2-3.
Bolton specifically teaches that the beveled edge of cutting blade D remains
"tangent to the roll in order to adapt the blade to cut readily the paper."
Bolton 1 :68-72. Due to the non-linear nature of arms C, and due to blade D
remaining "tangent to the roll" as above, it would have been readily
understood by one skilled in the art that blade D's point of tangency with the
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Application 13/904, 128
roll would change circumferentially as blade D slides along arm C, via
gravity, during paper consumption. See also Bolton 1 :94--97.
Appellant does not persuasively argue that Bolton "does not describe
using the stand with a roll having a diameter of a size that would cause the
cutting blade D to be positioned along the straight upper portions or the
curved intermediate portions of the inclined arms C during dispensing of the
roll." Br. 10. Bolton's Figures 1-2, for example, disclose that the limit of
the diameter of roll G will be the smaller of base B, top F, or upper opening
C2, which ever prevents the paper holder and cutter from operating properly.
Thus, we agree with the Examiner's finding that "a larger roll would
position the load inducement on the curved portion [i.e., the upper and
middle arm in annotated Figure 2] having a certain gravitational force which
would change or decrease once the load inducement is slid to the linear
portion [i.e., the lower arm in annotated Figure 2]." Non-Final Act. 8.
Appellant does not persuasively show how the load inducement limitations
distinguishes claims 1, 13, and 17 from Bolton's paper holder and cutter.
Thus, Appellant's argument is not persuasive.
Second, Appellant asserts that "if a user attempted to use the stand
with the journals d' of the cutting blade D being positioned along the straight
upper portions or the curved intermediate portions of the inclined arms C,
the cutting blade D would not function for its intended purpose." Br. 9. We
disagree. The Examiner correctly finds that "element d' is cylindrical and
would allow the blade to be pivoted in a way to always allow the blade to
contact the roll and thus still function on any portion of the guide." Ans. 3-
4. Appellant does not persuasively explain how rotation journals i and
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projection d5 somehow limit the diameter of roll G. Appellant's argument is
not persuasive. Br. 9.
For the reasons above, the rejection of independent claim 1 is
sustained. Appellant's arguments relating to independent claims 13 and 17
are essentially identical to those presented for claim 1 (see Br. 10-13), and,
thus, the rejection of claims 13 and 17 are sustained for the same reasons.
Dependent Claims 2, 4, 5, 8, 10-12, 14--16, 18-22, and 24--27
Appellant argues that because "[c]laims 2, 4, 5, 8, 10-12, 14--16, 18-
22, and 24--27 depend from one of independent claims 1, 13, and 17," "the
rejections of these dependent claims over Bolton are improper for at least the
reasons presented above." Br. 13. Because we sustain the rejections of
claims 1, 13, and 17, Appellant's argument is not persuasive. We discern no
error in the Examiner's rejection of claims 2, 4, 5, 8, 10-12, 14--16, 18-22,
and 24--27, and also sustain the rejection of those claims.
DECISION
For the above reasons, the Examiner's rejection of claims 1, 2, 4, 5, 8,
10-22, and 24--27 under 35 U.S.C. § 102(b) is AFFIRMED.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(l )(iv).
AFFIRMED
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