Ex Parte Gabor

Patent Trial and Appeal Board

Jun 6, 2013

11858025 (P.T.A.B. Jun. 6, 2013)

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.
11/858,025 09/19/2007 Eric Gabor 7770.3001.001 1974
7590 06/06/2013
ERIC GABOR
5347 PRENTIS ROAD
WATERFORD, MI 48327
EXAMINER
RIVERA, WILLIAM ARAUZ
ART UNIT PAPER NUMBER
3654
MAIL DATE DELIVERY MODE
06/06/2013 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 ERIC GABOR
____________

Appeal 2011-004466
Application 11/858,025
Technology Center 3600
____________

Before CHARLES N. GREENHUT, PATRICK R. SCANLON, and
BART A. GERSTENBLITH, Administrative Patent Judges.

GERSTENBLITH, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF THE CASE
Eric Gabor (“Appellant”) appeals under 35 U.S.C. § 134 from the
Examiner’s decision rejecting claims 1-4, 7-17, 19-24, and 27-29.1 We have
jurisdiction under 35 U.S.C. § 6(b).
The Claimed Subject Matter
Claims 1 and 25-29 are the independent claims on appeal. Claim 1 is
illustrative of the claimed subject matter and is reproduced below.
1. A product comprising:
a toilet paper roll housing comprising a first
portion comprising a first partial cylinder portion,
a first end wall, and a second end wall;
a second portion comprising a second partial
cylinder portion, a third end wall, and a fourth end
wall, wherein at least one of the first end wall and
the second end wall or the third end wall and the
fourth end wall each comprise a receiving portion
to receive the terminal end of a toilet paper rod
supporting a toilet paper roll for rotational
movement thereon; and
wherein the first portion is constructed and
arranged to slide at least one of over or under the
second portion to an open position to allow access
to the toilet paper roll;
and a stand attached to the second portion
and extending downward and constructed and
arranged to support the toilet paper roll housing.

1 Claims 5 and 6 were objected to as being dependent upon a rejected base
claim. Final Office Action (mailed Nov. 12, 2009) at 1, 4. Claim 18 was
cancelled. Amendment (filed Sept. 24, 2010) at 4, 8. Claims 25 and 26
were allowed. Final Office Action (mailed Nov. 12, 2009) at 1, 4.
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References
The Examiner relies upon the following prior art references:
Ogden US 5,697,577 Dec. 16, 1997
Anderson US 1,350,205 Aug. 17, 1920
Newbold US 5,660,313 Aug. 26, 1997
Von Schenk US 6,056,233 May 2, 2000
Adelakun US 2002/0096597 A1 July 25, 2002
Rejections
The Examiner makes the following rejections:
I. Claims 1, 3, 4, 9, 10, 14, 15, 17-21, and 29 are rejected under
35 U.S.C. § 103(a) as unpatentable over Ogden and Anderson;
II. Claims 2, 7, 13, and 27 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Ogden, Anderson,2 and Newbold;
III. Claims 8 and 22 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Ogden, Anderson, and Adelakun;
IV. Claims 11 and 12 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Ogden and Anderson; and
V. Claims 16 and 28 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Ogden and Anderson.
SUMMARY OF DECISION
We AFFIRM-IN-PART.

2 The first paragraph of Rejection II does not specifically mention Anderson
as a reference relied upon. Ans. 4. The second paragraph of the rejection,
however, states “[w]ith respect to Claims 2, 7, 13, and 27, Ogden in view of
Anderson are advanced above.” Id. Appellant’s brief makes clear that
Appellant understood that the Examiner relied upon Anderson in support of
Rejection II. See App. Br. 8 (identifying the second ground of rejection as
relying upon Ogden, Anderson, and Newbold).
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We enter a NEW GROUND OF REJECTION pursuant to our
authority under 37 C.F.R. § 41.50(b) against claims 7, 8, 21, 22, and 27
under 35 U.S.C. § 112, second paragraph, as indefinite.
OPINION
New Ground of Rejection
Claims 7, 8, 21, 22, and 27 each recite the phrase “the opening”
without providing an antecedent basis for the phrase. Because the Examiner
and Appellant appear to refer to different “openings” as “the opening,”3
resolution of several issues in this appeal depend upon which opening is
claimed. Accordingly, we conclude that claims 7, 8, 21, 22, and 25-27 are
indefinite for failing to particularly point out and distinctly claim the subject
matter which Appellant regards as the invention. 35 U.S.C. § 112, second
paragraph. Since these claims are indefinite, several prior art rejections as
applied to these claims must fall, pro forma, because they are necessarily
based on speculative assumptions as to the scope of the claims. See In re
Steele, 305 F.3d 859, 862-63 (CCPA 1962). In particular, we reverse, pro
forma, Rejection I as applied to claim 21; Rejection II as applied to claims 7
and 27; and Rejection III.

3 It is unclear whether “the opening” refers to an opening such as that recited
in claim 3, “through one of the end walls,” or whether “the opening” refers
to the opening in an “open position” such as that recited in claim 1. We will
not speculate as to what Appellant intended to claim because “[i]t is
[Appellant’s] burden to precisely define the invention, not the PTO’s.” In re
Morris, 127 F.3d 1048, 1056 (Fed. Cir. 1997) (citing 35 U.S.C. § 112,
second paragraph).
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Rejection I – Claims 1, 3, 4, 9, 10, 14, 15, 17-21, and 29
The Examiner concluded that the combination of Ogden and
Anderson would have rendered the subject matter of claims 1, 3, 4, 9, 10, 14,
15, 17-21, and 29 obvious to one of ordinary skill in the art. Ans. 3-4. The
Examiner found that Ogden discloses each of the elements of the claims
except for a stand. Id. at 4. The Examiner found that Anderson discloses
“an enclosure mounted on a stand.” Id. The Examiner also found that
Ogden and Anderson are in the field of “winding/unwinding,” each teaches a
housing that encloses material to be wound or unwound, and each teaches a
type of mounting. Id. at 7. The Examiner determined that it would have
been obvious to one of ordinary skill in the art at the time of invention “to
provide Ogden with a stand, as taught by Anderson, for the purpose of
allowing the product to be mounted to a horizontal rather than a vertical
surface.” Id. at 4.
Appellant asserts two main arguments as to why Rejection I is
erroneous.4 First, Appellant contends that the Examiner “failed to identify a
sufficient reason supported by some rational underpinning that would
prompt a skilled artisan to combine the teachings of Anderson and Ogden to
arrive at the invention set forth in claim 1.” App. Br. 12. Appellant asserts
that the Examiner’s proffered reason as to why one of ordinary skill in the
art would have been prompted to combine the teachings of Ogden and

4 Appellant argues the claims subject to Rejection I as a group, with the
exception of claim 3 for which Appellant includes an additional argument in
the Reply Brief. See App. Br. 12-15; Reply Br. 1-3. We select claim 1 as
representative. Accordingly, claims 4, 9, 10, 14, 15, 17-21, and 29 stand or
fall with claim 1. See 37 C.F.R. § 41.37(c)(1)(vii) (2011); see also In re
Lovin, 652 F.3d 1349, 1351 (Fed. Cir. 2011). We separately address
Appellant’s argument with respect to claim 3.
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Anderson “does not take into account the teachings of those two references
as a whole.” Id. at 13. In particular, Appellant contends that a skilled
artisan would not be inclined “to substitute the housing 10 of Ogden for the
casing 2 of Anderson” because the stand employed by Anderson “is not a
‘conventional holder,’ as defined by Ogden, and would not be able to
securely hold the housing 10 in position as intended.” Id. at 15 (citing In re
Ratti, 270 F.2d 810, 813 (CCPA 1959)).
We disagree. The Examiner’s rationale—that providing the device of
Ogden with a stand would allow it to be mounted to a horizontal surface
rather than a vertical surface—is based on a rational underpinning (the
surface upon which the device would stand or mount would dictate the type
of attachment). While Ogden discloses that one objective for its toilet paper
dispensing apparatus is to “fit within a conventional toilet paper holder” (see
Ogden, col. 2, ll. 31-32), combining Ogden’s housing with the stand of
Anderson would not defeat Ogden’s intended purpose—“to provide an
apparatus for dispensing pre-moistened toilet paper” (see Ogden,
col. 1, ll. 7-8)—or require substantial reconstruction. See KSR Int’l Co. v.
Teleflex Inc., 550 U.S. 398, 421 (2007) (“A person of ordinary skill is also a
person of ordinary creativity, not an automaton.”). Accordingly, we agree
with the Examiner’s conclusion that combining the teachings of Ogden and
Anderson, including modifying Ogden’s housing to be mounted on a stand
such as that disclosed by Anderson, would have been obvious to one of
ordinary skill in the art at the time of invention.
Second, Appellant asserts that Ogden and Anderson are non-
analogous art, and thus the combination of their teachings is improper.
Reply Br. 2. In particular, Appellant contends that the Examiner’s finding—
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that the claimed invention’s field of endeavor is winding/unwinding—is
erroneous. Id. Appellant also asserts that Ogden and Anderson are not
directed to solving the same or similar problems as the claimed invention
because one of ordinary skill in the art seeking “to provide a device to
prevent children and pets from pulling toilet paper from a toilet paper roll
would not look to Anderson for a solution.” Id.
“A reference qualifies as prior art for an obviousness determination
under § 103 only when it is analogous to the claimed invention.” In re
Klein, 647 F.3d 1343, 1348 (Fed. Cir. 2011) (citing Innovention Toys, LLC
v. MGA Entm’t, Inc., 637 F.3d 1314, 1321 (Fed. Cir. 2011); In re Bigio,
381 F.3d 1320, 1325 (Fed. Cir. 2004)). “Two separate tests define the scope
of analogous art: (1) whether the art is from the same field of endeavor,
regardless of the problem addressed and, (2) if the reference is not within the
field of the inventor’s endeavor, whether the reference still is reasonably
pertinent to the particular problem with which the inventor is involved.” Id.
(quoting In re Bigio, 381 F.3d at 1325). The “field of endeavor” test
“requires the PTO to determine the appropriate field of endeavor by
reference to explanations of the invention’s subject matter in the patent
application, including the embodiments, function, and structure of the
claimed invention.” In re Bigio, 381 F.3d at 1325. If the structure and
function of the prior art would have been considered by a person of ordinary
skill in the art because of similarity to the structure and function of the
claimed invention as disclosed in the application, the prior art is properly
considered within the same field of endeavor. See id. at 1325-26.
We disagree with Appellant that Ogden and Anderson are non-
analogous art. While there may be more than one field of endeavor to which
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Appellant’s claims are directed, we agree with the Examiner that the claims
pertain to a housing, which permits the unwinding of a material, and a
mounting. Ogden discloses a premoistened toilet paper dispenser, which
permits the unwinding of toilet paper, and is attached to a conventional toilet
paper holder mounted to a vertical surface. See, e.g., Ogden, Title; id. at
col. 2, ll. 31-32. Anderson discloses a housing, which permits the
unwinding of a hose, mounted to a stand for attachment or use on a
horizontal surface. See Anderson, Title (“Hose Reel”); id. at fig. 1. Thus,
because of the similarity of structure and function of the claimed invention
to the structures, and functions of those structures, disclosed by Ogden and
Anderson, we agree that Ogden and Anderson are analogous art and, hence,
were properly considered by the Examiner in assessing whether the claimed
subject matter would have been obvious to one of ordinary skill in the art at
the time of invention.
Appellant raises a separate argument directed to the patentability of
claim 3. Reply Br. 3. In particular, Appellant contends that claims 5 and 6,
which the Examiner indicated would be allowable if rewritten in
independent form, depend from claim 3. Id. Appellant points to language in
claim 3 calling for an opening through one of the end walls, and asserts that
“[c]laim 3 would not have been obvious because providing such an opening
would defeat the intended purpose of Ogden to provide a sealed contained
[sic] to prevent evaporation of moisture and loss of heat need [sic] to keep
the moist toilet paper warm.” Id.
Appellant’s argument is premised upon an incorrect understanding of
Rejection I. The Examiner did not rely on a modification of Ogden to
disclose an opening through one of the end walls. Rather, the Examiner
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found that Figures 1-6 of Ogden expressly disclose each element of the
rejected claims, including claim 3. Ans. 3-4. Ogden’s disclosure supports
the Examiner’s finding. See Ogden, col. 4, ll. 27-30 (“The present invention
also provides means for attaching housing 10 to holder 12. By way of
example and not by limitation, first end wall 14 has an access 60 extending
therethrough and aligned with rod 50.”) (emphasis added); see also fig. 2
(showing hole 60 extending through end wall 14). Accordingly, Appellant’s
argument as to whether including an opening in one of the end walls of
Ogden would defeat Ogden’s intended purpose is inapposite as Ogden
discloses such an opening.
Accordingly, we affirm Rejection I as applied to claims 1, 3, 4, 9, 10,
14, 15, 17-20, and 29. As explained in our new ground of rejection, we
reverse, pro forma, Rejection I with respect to claim 21.
Rejection II – Claims 2, 7, 13, and 27
The Examiner concluded that the combination of Ogden, Anderson,
and Newbold would have rendered the subject matter of claims 2, 7, 13, and
27 obvious to one of ordinary skill in the art. Ans. 4. In addition to the
Examiner’s reliance upon Ogden and Anderson, as explained in the context
of Rejection I, the Examiner found that Newbold discloses “a fastener, a
hinged portion.” Id. The Examiner determined that it would have been
obvious to one of ordinary skill in the art at the time of invention “to provide
Ogden with a fastener, as taught by Newbold, for the purpose of locking the
first and second portions.” Id.
Appellant argues that the Examiner erred for the same reasons argued
by Appellant in the context of Rejection I. App. Br. 16; Reply Br. 3.
Appellant asserts additional arguments with respect to claims 7 and 27 that
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depend upon “the opening” limitation called for by those claims. App. Br.
16-17; Reply Br. 3.
For the reasons we explained in the context of Rejection I, we do not
find Appellant’s arguments directed to claims 2 and 13 persuasive.
Appellant’s arguments directed to claims 7 and 27, however, depend upon
the proper interpretation of the phrase “the opening,” which, as explained in
our new ground of rejection, we have found to be indefinite for lack of an
antecedent basis.
Accordingly, we affirm Rejection II as applied to claims 2 and 13; and
reverse, pro forma, Rejection II as applied to claims 7 and 27.
Rejection III – Claims 8 and 22
The Examiner concluded that the combination of Ogden, Anderson,
and Adelakun would have rendered the subject matter of claims 8 and 22
obvious to one of ordinary skill in the art. Ans. 5. In addition to the
Examiner’s reliance upon Ogden and Anderson, as explained in the context
of Rejection I, the Examiner found that Adelakun discloses “the use of a
reducer.” Id. The Examiner determined that it would have been obvious to
one of ordinary skill in the art at the time of invention to “provide a reducer,
as taught by Adelakun, for the purpose of accommodating different types of
sizes of spindles.” Id.
Aside from raising the same arguments as those directed to Rejection
I (App. Br. 17), Appellant asserts that item 140 in Adelakun is not a
“reducer” as understood in the context of the claims (Reply Br. 4).
Appellant’s argument, however, depends upon “the opening” limitation of
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claims 8 and 22,5 which we have found indefinite for lack of an antecedent
basis as explained in our new ground of rejection.
Accordingly, we reverse, pro forma, Rejection III.
Rejection IV – Claims 11 and 12
The Examiner concluded that the combination of Ogden and
Anderson would have rendered the subject matter of claims 11 and 12
obvious to one of ordinary skill in the art. Ans. 5. Appellant asserts that
Rejection IV is erroneous for the same reasons presented in the context of
Rejection I. App. Br. 18.
As we explained in the context of Rejection I, we do not find
Appellant’s arguments persuasive. Accordingly, we affirm Rejection IV.
Rejection V – Claims 16 and 28
The Examiner concluded that the combination of Ogden and
Anderson would have rendered the subject matter of claims 16 and 28
obvious to one of ordinary skill in the art. Ans. 5-6. The Examiner found
that Ogden teaches each element of the housing “except for a transparent
cover.” Id. at 5. The Examiner appears to rely upon Von Schenk in support
of taking Official Notice that “transparent covers are notoriously old and
well known.” See Ans. 8 (“It should be noted that the Von Schenk reference
is only being used to support the examiner’s Official Notice position.”).
Claim 16 calls for a toilet paper housing as set forth in claim 1, further
comprising a transparent cover “over at least a portion of one of the first
portion or the second portion and constructed and arranged to define a slot
therebetween, wherein a decorative sheet may be positioned in the slot and

5 Claim 22 depends from claim 8, and thus also includes “the opening”
limitation of claim 8.
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under the transparent cover.”6 While the Examiner took Official Notice of
transparent covers generally, the Examiner made no finding that any such
transparent cover is “constructed and arranged to define a slot therebetween”
or that such construction and arrangement would have been obvious to one
of ordinary skill in the art. See App. Br. 19; Reply Br. 4. All words in a
claim must be considered in judging the obviousness of the claimed subject
matter. See In re Wilson, 424 F.2d 1382, 1385 (CCPA 1970).
Accordingly, we reverse Rejection V.
DECISION
We AFFIRM the Examiner’s decision rejecting 1, 3, 4, 9, 10, 14, 15,
17-20, and 29 as reflected in Rejection I. We REVERSE, pro forma, the
Examiner’s decision rejecting claim 21 as reflected in Rejection I. We
AFFIRM the Examiner’s decision rejecting claims 2 and 13 as reflected in
Rejection II. We REVERSE, pro forma, the Examiner’s decision rejecting
claims 7 and 27 as reflected in Rejection II. We REVERSE, pro forma, the
Examiner’s decision rejecting claims 8 and 22 as reflected in Rejection III.
We AFFIRM the Examiner’s decision rejecting claims 11 and 12 as
reflected in Rejection IV. We REVERSE the Examiner’s decision rejecting
claims 16 and 28 as reflected in Rejection V.
We enter a NEW GROUND OF REJECTION of claims 7, 8, 21, 22,
and 27 as indefinite under 35 U.S.C. § 112, second paragraph, for failing to
particularly point out and distinctly claim the subject matter which Appellant
regards as the invention.

6 Claim 28 includes the same claim language reciting a transparent cover.
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Regarding the affirmed rejection(s), 37 C.F.R. § 41.52(a)(1) provides
“Appellant may file a single request for rehearing within two months from
the date of the original decision of the Board.”
In addition to affirming the Examiner’s rejections of one or more
claims, this decision contains new grounds of rejection pursuant to 37 C.F.R.
§ 41.50(b) (2008). 37 C.F.R. § 41.50(b) provides “[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review.”
37 C.F.R. § 41.50(b) also provides that Appellants, 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. . . .

Should Appellant elect to prosecute further before the Examiner
pursuant to 37 C.F.R. § 41.50(b)(1), in order to preserve the right to seek
review under 35 U.S.C. §§ 141 or 145 with respect to the affirmed rejection,
the effective date of the affirmance is deferred until conclusion of the
prosecution before the Examiner unless, as a mere incident to the limited
prosecution, the affirmed rejection is overcome.
If Appellant elects prosecution before the Examiner and this does not
result in allowance of the application, abandonment or a second appeal, this
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case should be returned to the Patent Trial and Appeal Board for final action
on the affirmed rejection, including any timely request for rehearing thereof.
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)(1)(iv).

AFFIRMED-IN-PART; 37 C.F.R. § 41.50(b)

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