Ex parte Grussmark

Board of Patent Appeals and Interferences

Mar 12, 1999

08642184 (B.P.A.I. Mar. 12, 1999)

Application for patent filed May 6, 1996. According to1
appellant, this application is a continuation of Application
No. 08/430,391 filed April 28, 1995, now abandoned; which is a
continuation-in-part of Application No. 08/194,406 filed
February 10, 1994, now abandoned.
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today (1) was not written
for publication in a law journal and (2) is not binding precedent of the Board.
Paper No. 24
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte STEPHEN M. GRUSSMARK
____________
Appeal No. 98-1252
Application No. 08/642,1841
____________
ON BRIEF
____________
Before MEISTER, ABRAMS and STAAB, Administrative Patent Judges.
MEISTER, Administrative Patent Judge.
DECISION ON APPEAL
Stephen M. Grussmark (the appellant) appeals from the
final rejection of claims 1, 2, 12, 15-17 and 22-24. Claims 6-
Appeal No. 98-1252 Page 2
Application No. 08/642,184
11 and 14 stand allowed. Claim 13, the only other claim
present in the application, has been indicated as being
allowable subject to the requirement that it be rewritten to
include all the subject matter of the claim from which it
depends.
We AFFIRM-IN-PART.
The appellant's invention pertains to a combination of a
dental floss dispenser and a stand-up toothpaste container.
Independent claim 12 is further illustrative of the appealed
subject matter and a copy thereof may be found in the APPENDIX
to the brief.
The references relied on by the examiner are:
White 2,084,568 Jun. 22,
1937
Miles et al. (Miles) 3,741,447 Jun. 26,
1973
Cordero 4,428,389 Jan. 31,
1984
Paulson 4,796,783 Jan. 10,
1989
Grussmark 4,827,951 May
9, 1989
The claims on appeal stand rejected under 35 U.S.C. § 103
in the following manner:
Appeal No. 98-1252 Page 3
Application No. 08/642,184
(1) Claims 1, 2 and 23 as being unpatentable over Miles in
view of Grussmark and Paulson;
(2) Claims 12, 15, 17 and 22 as being unpatentable over
Cordero in view of White;
(3) Claim 15 as being unpatentable over Paulson in view of
Grussmark;
(4) Claim 16 as being unpatentable over Paulson in view of
Grussmark and White; and
(5) Claim 24 as being unpatentable over Miles in view of
Grussmark.
The rejections are explained on pages 3-8 of the final
rejection. The arguments of the appellant and examiner in
support of their respective positions may be found on pages 7-
25 of the brief, pages 1-5 of the reply brief and pages 5-15 of
the answer.
OPINION
We have carefully reviewed the appellant's invention as
described in the specification, the appealed claims, the prior
art applied by the examiner and the respective positions
advanced by the appellant in the brief and reply brief, and by
the examiner in the answer. As a consequence of this review,
Appeal No. 98-1252 Page 4
Application No. 08/642,184
we will sustain Rejections (2), (3) and (5) and reverse
Rejections (1) and (4). Our reasons for these determinations
follow.
Rejection (1)
According to the examiner it would have been obvious to
provide the cap of the toothpaste container of Miles with a
dental floss dispenser in view of the teachings of Grussmark.
The examiner is further of the opinion that it would have been
obvious to form the vertically-inclined side walls of the
housing of the dental floss dispenser of the toothpaste
container of Miles, as modified by Grussmark, as a cylinder
(thus resulting in the footprints of the housing's top and
bottom walls being equal) in view of the teachings of Paulson.
We will not support the examiner's position. While we
agree with the examiner that, as a broad proposition, it would
have been obvious to provide the cap of the toothpaste
container of Miles with a dental floss dispenser in view of the
teachings of Grussmark, we cannot agree that it would have
further been obvious to form the housing of the dispenser of
the modified toothpaste container in such a manner that the
footprints of the housing's top and bottom walls were equal.
Appeal No. 98-1252 Page 5
Application No. 08/642,184
Throughout the claims the appellant has referred to the2
top and bottom walls of the dental floss dispenser as though
they were in the orientation depicted in Figs. 1, 2, 4-7, 9
and 10 of the drawings (i.e., wherein the toothpaste container
is in an inverted position). Accordingly, we will refer to
the "top" and "bottom" walls of the prior art dental floss
dispensers as though they were in this same inverted
orientation.
The cap of Miles is of the two-part type wherein a second part
14 is pivotally mounted with respect to a first part 13, and
the second part 14 of the cap of Miles and the dental floss
dispenser 22 of Grussmark are both of a generally frusto-
conical configuration. The outermost surface of Grussmark's
cap 16 is provided with a recess or socket (defined by
peripheral wall 18) for receiving the "top wall 20" of the2
dental floss dispenser 22, but the housing of this dispenser
has a cross-section that is octagonal in shape and has
vertically inclined sidewalls, resulting in the housing's top
wall 20 having a significantly larger footprint than the bottom
wall 25. It is true that Paulson mounts dental floss dispenser
"on" a cap 12 of a toothpaste container, and this cap has a
cylindrical side wall 14. In Paulson, however, the dental
floss dispenser has no separate housing that includes top,
bottom and side walls. Instead, a coil of dental floss is
Appeal No. 98-1252 Page 6
Application No. 08/642,184
mounted within the cap by simply supporting the coil on a
rotatable flat disc 30 that in turn is supported on the
internally-threaded cylindrical member 24 which serves as the
means to attach the cap to the externally-threaded outlet or
nozzle 26 of the toothpaste container. In our view, the
examiner has impermissibly relied on the appellant's own
disclosure for a suggestion to single out the feature of a
cylindrical side wall from the cap of Paulson and incorporate
this feature into the side wall of the separate housing that
forms the dental floss dispenser in the toothpaste container of
Miles, as modified by Grussmark. This being the case, we will
not sustain the rejection of 1, 2 and 23 under 35 U.S.C. § 103
based on the combined teachings of Miles, Grussmark and
Paulson.
Rejection (2)
The examiner is of the opinion that it would have been
obvious to configure or size the surface of the cap or bottom
wall 7 of the dental floss dispenser 2 of Cordero in such a
manner that it will stand upright on a planar surface in view
Appeal No. 98-1252 Page 7
Application No. 08/642,184
of the teachings of White. The appellant, however, argues that
the bottom wall 7 has a protrusion 6 that precludes Cordero's
combination of a dental dispenser 2 and a squeezable toothpaste
container 1 from standing upright, and that "[r]emoving the
protrusion will thereby completely change the intended function
of Sanches Cordero which allows for replacement of the roll of
dental floss" (brief, page 21). The appellant also contends
that Cordero does not teach a means adjacent the top wall (as
distinguished from bottom wall) of the housing of the dental
floss dispenser that interfits with the cap means in such a
manner that the dispenser is removably mounted on the cap
means.
We are unpersuaded by such contentions. In our view,
Cordero teaches all the subject matter defined by the claims
under consideration with the exception that bottom wall 7 of
the housing of Cordero's floss dispenser is provided with a
protrusion 6 which would appear to prevent the dispenser from
standing completely "upright" (claims 12 and 22) or "squarely"
(claims 15 and 17) on a planar surface. That is, Cordero
teaches a combination of a dental floss dispenser and a
squeezable toothpaste container including a flexible tube means
Appeal No. 98-1252 Page 8
Application No. 08/642,184
1 for storing toothpaste having a nozzle means at one end
thereof (see Fig. 2), a cap means 10 cooperating with the
nozzle means for selectively opening and closing the nozzle
means and a dental floss dispenser comprising a housing 2 for
storing dental floss, a top wall (the wide-angled frusto-
conical surface 9 depicted in Figs. 2 and 3), a removable
bottom wall 7, a side wall (the cylindrical side wall depicted
in Fig. 2) and means (the steeply angled frusto-conical surface
or socket 9 depicted in Figs. 2 and 3) which is "adjacent" to
the top wall for attaching the housing to the cap means 10 in a
press-fit relation (see column 2 lines 41 and 42; column 3,
lines 30-33). As we have noted above, the protrusion 6 (which
serves as a handle for removing the removable bottom wall 7)
would appear to prevent the dispenser from standing completely
upright or squarely on a planar surface.
White, however, teaches a closure or cap for a flexible
tube with a "bottom surface" which "will form a broad flat
surface sufficiently large" (page 1, column 1, lines 52 and 53)
for the purpose of providing
a broad base for the tube on which it will stand
upright, permitting of more convenient disposal that
Appeal No. 98-1252 Page 9
Application No. 08/642,184
is possible with present tubes of the collapsible
type. [Page 2, column 2, lines 9-13.]
Thus, White teaches that in order to achieve the advantage of
standing a squeezable toothpaste container in an upright
position, the end structure or bottom surface should be
provided with a broad flat surface. In our view, a combined
consideration of Cordero and White would have fairly suggested
to one of ordinary skill in this art to provide the end
structure 7 (i.e., the cap or bottom wall) of Cordero with a
broad flat surface in order to achieve White's expressly stated
advantage of providing a toothpaste container which will stand
upright, thus permitting more convenient disposal. While the
appellant makes much of the fact that Cordero has a protrusion
6 (which serves a handle for grasping and removing the bottom
wall 7), we must point out that skill, rather than the
converse, is presumed on the part of those practicing in the
art. In re Sovish, 769 F.2d 738, 743, 226 USPQ 771, 774 (Fed.
Cir. 1985). Therefore, we perceive that one of ordinary skill
in this art when making the bottom wall 7 of Cordero broad and
flat in accordance with the teachings of White, would simply
have simply recessed the protrusion 6 as suggested by the
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Application No. 08/642,184
examiner (see answer, page 12) or provided a laterally
extending grasping means such as that taught by White at 9 (see
page 1, column 2, lines 19-21).
The appellant further argues that even if the references
were combined in the manner proposed by the examiner "the
closure cap 10 [of Cordero] is removably attached to the inner
conical wall rather than the top wall of the dispenser" (see
brief, pages 21 and 22). First, this argument is not
commensurate in scope with the claimed subject matter since
there is no claim limitation which requires the cap to be
removably attached to the top wall of the dental floss
dispenser. Instead, the claims under consideration more
broadly recite a means adjacent the top wall for removably
attaching the dispenser to the cap. As we have noted above,
the steeply angled frusto-conical surface or socket 9 depicted
in Figs. 2 and 3 of Cordero is clearly "adjacent" the top wall
for attaching the housing to the cap means 10. Second, even if
such a limitation had been claimed, the steeply angled frusto-
conical surface or socket 9 depicted in Figs. 2 and 3 of
Appeal No. 98-1252 Page 11
Application No. 08/642,184
Cordero is indeed attached to the "top wall" (i.e., the wide-
angled frusto-conical surface 9 depicted in Figs. 2 and 3).
In view of the above, we will sustain the rejection of 12,
15, 17 and 22 under 35 U.S.C. § 103 based on the combined
teachings of Cordero and White.
Rejection (3)
The examiner is of the opinion that it would have been
obvious to removably mount a dental floss dispenser on the cap
Paulson (rather than mounting a coil of dental floss within the
cap as taught by Paulson in Fig. 3) in view of the teachings of
Grussmark. According to the appellant, however,
the Examiner's combination here is illogical and
incorrect because Grussmark teaches removably
attaching a dental floss dispenser to a closure cap
and Paulson teaches a closure cap which also
functions as a dental floss dispenser. Combining
both references in this manner without hindsight
reconstruction using the teachings of Appellant's
invention would lead to a dental floss dispenser
attaching to the combination of a closure cap and
dental floss dispenser, thereby rendering device with
two dental floss dispensers. [Brief, pages 17 and
18.]
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Application No. 08/642,184
Such contentions are not persuasive. The test for
obviousness is what the combined teachings of the references
would have suggested to one of ordinary skill in the art. In
re Young, 927 F.2d 588, 591, 18 USPQ2d 1089, 1091 (Fed. Cir.
1991) and In re Keller, 642 F.2d 413, 425, 208 USPQ 871, 881
(CCPA 1981). Here, as we have noted above, Paulson discloses a
dental floss dispenser mounted within the cavity of the cap 12
of a toothpaste container (see Fig. 3) and Grussmark teaches
removably attaching (note column 4, lines 32-34) a dental floss
dispenser 22 to a socket or recess defined by a peripheral wall
18 on the cap 16 of a toothpaste container. In our view, a
combined consideration of Paulson and Grussmark would have
fairly suggested to the artisan to provide a removably mounted
dental floss dispenser on the surface 16 of the cap means 12 of
Paulson (in lieu of the dental floss dispenser 30, 32 disposed
internally within the cap means 12) as taught by Grussmark at
22 in order to achieve Grussmark's self-evident advantages of
easy replacement of the dental floss holder and the ability to
use the toothpaste container and dental floss holder
separately. As to the appellant's contention that the
Appeal No. 98-1252 Page 13
Application No. 08/642,184
examiner's combination of Paulson and Grussmark would result in
two dental floss holders, we must point out that all of the
features of the secondary reference need not be bodily
incorporated into the primary reference (see In re Keller, at
642 F.2d 425, 208 USPQ 881) and the artisan is not compelled to
blindly follow the teaching of one prior art reference over the
other without the exercise of independent judgment (Lear
Siegler, Inc. v. Aeroquip Corp., 733 F.2d 881, 889, 221 USPQ
1025, 1032 (Fed. Cir. 1984). Accordingly, we do not believe
that one of ordinary skill in this art, in following the
combined teachings of Paulson and Grussmark, would be so
unskilled as to provide the modified device of Paulson with two
dental floss dispensers as the appellant would have us believe.
Accordingly, we will sustain the rejection of claim 15 under 35
U.S.C. § 103 based on the combined teachings of Paulson and
Grussmark.
Rejection (4)
The examiner relies upon the combined teachings of Paulson
and Grussmark in the manner set forth above in Rejection (3),
and further concludes that it would have been obvious to form
Appeal No. 98-1252 Page 14
Application No. 08/642,184
the dispenser of Paulson, as modified by Grussmark, with a
bottom wall having a footprint that is greater than the top
wall thereof in view of the teachings of White. Even if we
were to agree with the examiner that it would have been obvious
to combine the teachings of the references in the manner
proposed, we must point out that the claimed invention would
not result. That is, claim 16 expressly requires that the
socket means on the cap frictionally receive the side wall of
the dental floss dispenser. The examiner has relied upon
Grussmark for a teaching of mounting a dental floss holder on
the cap of the toothpaste container by means of a socket. In
Grussmark, however, the socket formed by the peripheral wall 18
does not engage the side wall of the dental floss dispenser
but, instead, is spaced therefrom (see, e.g., Fig. 3).
Instead, in Grussmark only the peripheral end of the top wall
20 of the dental floss dispenser frictionally engages the
socket. This being the case, we will not sustain the rejection
of claim 16 under 35 U.S.C. § 103 based on the combined
teachings of Paulson, Grussmark and White.
Rejection (5)
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Application No. 08/642,184
It is the examiner's position that it would have been
obvious to provide the cap on the toothpaste container of Miles
with a dental floss dispenser in view of the teachings of
Grussmark. The appellant disagrees, contending that Grussmark
does not teach (1) that the top wall of the dental floss
dispenser should be connected to the second part of a two-part
cap of a toothpaste container and (2) a bottom wall that is
"sized and formed" to allow the combination container and
dispenser to stand on a planar surface.
We do not agree with the appellant's contentions. The cap
on the toothpaste container of Miles is of the two-part type
wherein a second part 14 is pivotally mounted with respect to a
first part 13, and the second part 14 of the cap of Miles has a
planar surface. Grussmark teaches a combination toothpaste
container and dental floss dispenser wherein the outermost
surface of Grussmark's cap 16 is provided with a recess or
socket (defined by peripheral wall 18) for receiving the top
wall 20 of dental floss dispenser 22 and the bottom wall of
this dispenser has a planar surface 25 of significant extent
(see Figs. 2 and 3). We share the examiner's view that one of
ordinary skill in this art would have found it obvious to mount
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Application No. 08/642,184
a dental floss dispenser on the second part 14 of the two-part
cap means of Miles in order to achieve Grussmark's expressly
stated advantage of providing a dental product that reminds a
user to floss, as well as brush, their teeth (see column 1,
lines 37 and 38). In view of the significant extent of the
planar bottom wall 25 of Grussmark's dental floss dispenser, we
are of the opinion that there is a sound basis for the
examiner's conclusion that the bottom wall in the combination
toothpaste container and dental floss holder of Miles, as
modified by Grussmark, would inherently "adapt" the modified
device to stand in an upright position (see final rejection,
pages 8 and 9). This being the case, we will sustain the
rejection of claim 24 under 35 U.S.C. § 103 based on the
combined teachings of Miles and Grussmark.
In summary:
The rejection of claims 1, 2 and 23 under 35 U.S.C. § 103
based on the combined teachings of Miles, Grussmark and Paulson
is reversed.
The rejection of 12, 15, 17 and 22 under 35 U.S.C. § 103
based on the combined teachings of Cordero and White is
affirmed.
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Application No. 08/642,184
The rejection of claim 15 under 35 U.S.C. § 103 based on
the combined teachings of Paulson and Grussmark is affirmed.
The rejection of claim 16 under 35 U.S.C. § 103 based on
the combined teachings of Paulson in view of Grussmark and
White is reversed.
The rejection of claim 24 under 35 U.S.C. § 103 as being
unpatentable over Miles in view of Grussmark is affirmed.
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR §
1.136(a).
AFFIRMED-IN-PART
JAMES M. MEISTER )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
NEAL E. ABRAMS ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
LAWRENCE J. STAAB )
Appeal No. 98-1252 Page 18
Application No. 08/642,184
Administrative Patent Judge )
JMM/jlb
Appeal No. 98-1252 Page 19
Application No. 08/642,184
Lloyd L. Zickert
79 West Monroe Street
Chicago, IL 60603