Ex Parte Hewett

Board of Patent Appeals and Interferences

Aug 23, 2007

09883893 (B.P.A.I. Aug. 23, 2007)

The opinion in support of the decision being entered today
is not binding precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte CHRISTOPHER B. HEWETT
____________

Appeal 2006-2827
Application 09/883,893
Technology Center 3600
____________

Decided: August 23, 2007
____________

Before WILLIAM F. PATE, III, MURRIEL E. CRAWFORD, and
DAVID B. WALKER, Administrative Patent Judges.

Opinion by WALKER, Administrative Patent Judge.

Dissenting opinion by PATE, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF THE CASE
Appellant seeks our review under 35 U.S.C. § 134 of the Examiner’s final
rejection of claims 40-47 and 54. We have jurisdiction under 35 U.S.C. § 6(b). We
reverse.
THE INVENTION
Appellant claims a method of providing tissues in a shower stall including a
tissue dispensing device for retaining a heavy-duty tissue and a disposal device to
permit convenient disposal of the waste tissue. The dispensing and disposal
devices are located in the moist areas of the bathroom, such as shower, bathtub,
sauna, or steam room (Specification 2:21-25). Claim 40, the only independent
claim remaining in the application, is representative of the subject matter on
appeal.
40. A method of providing tissues in a shower stall
comprising the steps of:
A) providing a tissue dispenser having a tissue
dispenser station containing tissues to be dispensed, and a
tissue disposal station for receiving used tissues, the
tissue dispenser station separated from the tissue disposal
station by a wall and having a tissue dispensing orifice,
the tissue disposal station having a tissue disposing
orifice; and
B) mounting the tissue dispenser at the shower
stall above floor level.

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THE REJECTIONS
The Examiner relies upon the following as evidence in support of the
rejections:
Cole US 3,089,586 May 14, 1963
Yates US 3,095,087 Jun. 25, 1963
Wilson US 5,669,085 Sep. 23, 1997

The following rejections are before us for review.
1. Claims 40-45 and 54 are rejected under 35 U.S.C. § 103(a) as unpatentable
over Yates in view of Wilson.
2. Claims 40, 44, and 46-47 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Cole in view of Wilson.
ISSUE
The issue before us is whether Appellant has shown that the Examiner erred
in rejecting the following claims under 35 U.S.C. 103(a): (1) claims 40-45 and 54
as unpatentable over Yates in view of Wilson; and (2) claims 40, 44, and 46-47 as
unpatentable over Cole in view of Wilson. The dispositive issue is whether Wilson
teaches the placement in the shower of a combination tissue dispenser/disposal,
such as those taught by Yates or Cole.
Rather than repeat the arguments of Appellant and the Examiner, we make
reference to the Briefs and the Answer for their respective details. Only those
arguments actually made by Appellant have been considered in this decision.
Arguments which Appellant could have made but chose not to make in the Briefs

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have not been considered and are deemed to be waived. See 37 C.F.R.
§ 41.37(c)(1)(vii) (2004).
FINDINGS OF FACT
We find the following enumerated findings to be supported by at least a
preponderance of the evidence. Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1427, 7
USPQ2d 1152, 1156 (Fed. Cir. 1988) (explaining the general evidentiary standard
for proceedings before the Office).

1. Yates discloses a combination tissue dispenser station and disposal
station (Yates, col. 1, ll. 9-11, Figs. 1-3). The tissue dispenser station is
separated from the tissue disposal station by a wall 19 (Yates, col. 2, ll. 4-
12, Fig. 1-3).
2. Yates further teaches a tissue dispensing orifice 17 (Yates, col. 2, ll. 12-
14, Fig. 1), and a tissue disposing orifice (Yates, col. 3, ll. 49-57).
3. Yates shows the tissue dispenser station overlying the tissue disposal
station with the tissue dispensing orifice facing upwardly and the tissue
disposing orifice facing downwardly (Yates, Figs. 1-5).
4. Wilson teaches “a multifunction bathroom device which may be utilized
either to provide a water-resistant closure for soap used in the bathtub or
shower or in the bathroom as a bathroom tissue cover to provide a water-
resistant closure for the bathroom environment” (Wilson, col. 2, ll.
35-39).
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5. Wilson does not teach mounting, or any reason for mounting, the
multifunction bathroom device in the shower stall for use as a tissue
dispenser (Wilson, passim).
6. Wilson teaches that “the sloping cover can be attached to the wall
attachment mounting frame with a smaller overhang so as to prevent
shower water or water splashed directly on the pivotal sloping cover from
entering into the water-resistant closure” (Wilson, col. 2, l. 65 – col. 3, l.
2). The mounting frame is shown on the rear portion of the multifunction
bathroom device (Wilson, Fig. 1-3).
7. Cole teaches a tissue dispensing station 11 with an orifice 13 and a tissue
disposal station 15 having an orifice (Cole, col. 1, ll. 45-56, Fig. 1).
8. Cole does not teach that the dispensing station and the disposal station
are separated by a wall (Cole, passim).

PRINCIPLES OF LAW
“Section 103 forbids issuance of a patent when ‘the differences between the
subject matter sought to be patented and the prior art are such that the subject
matter as a whole would have been obvious at the time the invention was made to a
person having ordinary skill in the art to which said subject matter pertains.’” KSR
Int'l Co. v. Teleflex Inc., 127 S.Ct. 1727, 1734, 82 USPQ2d 1385, 1391 (2007).
The question of obviousness is resolved on the basis of underlying factual
determinations including (1) the scope and content of the prior art, (2) any
differences between the claimed subject matter and the prior art, (3) the level of
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skill in the art, and (4) where in evidence, so-called secondary considerations.
Graham v. John Deere Co., 383 U.S. 1, 17-18, 148 USPQ 459, 467 (1966). See
also KSR, 127 S.Ct. at 1734, 82 USPQ2d at 1391 (“While the sequence of these
questions might be reordered in any particular case, the [Graham] factors continue
to define the inquiry that controls.”). The Court noted that “[t]o facilitate review,
this analysis should be made explicit.” KSR, 127 S.Ct. at 1740-41, 82 USPQ2d at
1396. (citing In re Kahn, 441 F.3d 977, 988, 78 USPQ2d 1329, 1336 (Fed. Cir.
2006) (“[R]ejections on obviousness grounds cannot be sustained by mere
conclusory statements; instead, there must be some articulated reasoning with
some rational underpinning to support the legal conclusion of obviousness”)).
However, “the analysis need not seek out precise teachings directed to the specific
subject matter of the challenged claim, for a court can take account of the
inferences and creative steps that a person of ordinary skill in the art would
employ.” Id.
A factfinder should be aware, of course, of the distortion
caused by hindsight bias and must be cautious of
arguments reliant upon ex post reasoning. See Graham,
383 U.S. at 36, 86 S.Ct. 684 (warning against a
“temptation to read into the prior art the teachings of the
invention in issue” and instructing courts to “ ‘guard
against slipping into the use of hindsight’ ” (quoting
Monroe Auto Equipment Co. v. Heckethorn Mfg. &
Supply Co., 332 F.2d 406, 412 (C.A.6 1964))).
KSR, 127 S.Ct. at 1742, 82 USPQ2d at 1397.
In KSR, the Supreme Court emphasized “the need for caution in granting a
patent based on the combination of elements found in the prior art,” id. at 1739, 82
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USPQ2d at 1395, and discussed circumstances in which a patent might be
determined to be obvious. In particular, the Supreme Court emphasized that “the
principles laid down in Graham reaffirmed the ‘functional approach’ of Hotchkiss,
11 How. 248.” KSR, 127 S.Ct. at 1739, 82 USPQ2d at 1395 (citing Graham v.
John Deere Co., 383 U.S. 1, 12 (1966) (emphasis added)), and reaffirmed
principles based on its precedent that “[t]he combination of familiar elements
according to known methods is likely to be obvious when it does no more than
yield predictable results.” Id. The Court explained:
When a work is available in one field of endeavor, design
incentives and other market forces can prompt variations
of it, either in the same field or a different one. If a
person of ordinary skill can implement a predictable
variation, §103 likely bars its patentability. For the same
reason, if a technique has been used to improve one
device, and a person of ordinary skill in the art would
recognize that it would improve similar devices in the
same way, using the technique is obvious unless its
actual application is beyond his or her skill.
Id. at 1740, 82 USPQ2d at 1396. The operative question in this “functional
approach” is thus “whether the improvement is more than the predictable use of
prior art elements according to their established functions.” Id.
The Supreme Court stated that there are “[t]hree cases decided after Graham
[that] illustrate this doctrine.” Id. at 1739, 82 USPQ2d at 1395. “In United States
v. Adams, … [t]he Court recognized that when a patent claims a structure already
known in the prior art that is altered by the mere substitution of one element for
another known in the field, the combination must do more than yield a predictable
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result.” Id. at 1739-40, 82 USPQ2d at 1395. It nevertheless rejected the
Government's claim that Adams' battery was obvious. In doing so, the Court
relied upon the corollary principle that when the prior art teaches away from
combining certain known elements, discovery of a successful means of combining
them is more likely to be nonobvious. Id. at 1740, 82 USPQ2d at 1395. (citing
United States v. Adams, 383 U.S. 39, 51-52 (1966)). Sakraida and Anderson’s-
Black Rock are illustrative – a court must ask whether the improvement is more
that the predictable use of prior art elements according to their established
function.” Id.

ANALYSIS
A. Rejection of claims 40-45 and 54 under 35 U.S.C. § 103(a) as
unpatentable over Yates in view of Wilson.
The Examiner found that it would have been obvious for one to mount a
combination tissue dispenser and disposal on a shower wall as taught by Wilson,
“because Wilson protects the tissue from shower spatter, persons often have runny
or congested noses needing clearing while in the shower or persons need tissues for
localized cleaning while in the shower” (Answer 5-6). The only discussion of
“persons often have runny or congested noses needing clearing while in the shower
or persons need tissues for localized cleaning while in the shower,” as cited by the
Examiner, appears not in the prior art but in the Specification. See, e.g.,
Specification, 1:15-18 (“Use of these tissues in the dry areas of the bathroom does
not result in the most effective cleansing of the nasal passages, because the mucus
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contained in the nasal passages is not as loose and easy to expel in the dry areas of
the bathroom as it is in the areas that are moister and wetter, such as a shower,
bathtub, sauna or steam room.”). The Examiner’s justification to combine Yates
with Wilson thus is based on impermissible hindsight analysis. KSR, 127 S.Ct. at
1742, 82 USPQ2d at 1397.
The Examiner further found that “Wilson '085 expressly describes its fixture
as being mountable in a shower or bathtub stall: Wilson '085 discloses contents
including tissue dispensers and portable accessories.” (Answer 6-7). In response
to the latter statement, the Appellant argues that
To the extent that such a statement is intended to imply
that Wilson discloses to place a toilet tissue dispenser in
a shower or bathtub stall, the statement is incorrect. The
type of dispenser that Wilson describes as being
mountable in a shower or bathtub is a soap dispenser (see
column 2, lines 35-39 and 41-46). Wilson also discloses
a toilet tissue dispenser but does not disclose mounting it
at a bathtub or shower stall.
(Reply Br. 1).
Wilson teaches “a multifunction bathroom device that may be utilized either
(1) to provide a water-resistant closure for soap used in the bathtub or shower; or
(2) in the bathroom as a bathroom tissue cover to provide a water-resistant closure
for the bathroom environment.” (Finding of Fact 4) (emphasis and numbering
added). Appellant is correct that Wilson does not teach locating the multifunction
bathroom device in the shower as a bathroom tissue cover. When mounted in the
shower, Wilson teaches the multifunction device is a soap dispenser not a tissue
dispenser. Wilson makes no other mention of tissue in connection with the
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multifunction device than its use as a bathroom tissue cover in the bathroom
environment, which it distinguishes from the bathtub or shower. Thus, Wilson
teaches the use of the multifunction device in the shower as a soap dispenser and as
a bathroom tissue cover outside the shower.
Moreover, Wilson teaches the multifunction bathroom device as a water
resistant closure for a roll of toilet tissue, not a box of tissues with an integral
disposal device as disclosed in Yates. Neither Yates nor Wilson provides any
reason for mounting a combination tissue dispenser and disposal in a shower.
While it may appear obvious in hindsight to mount a combination tissue dispenser
and disposal in a shower, we see no reason from the prior art relied upon by the
Examiner why one having ordinary skill in the art would have added this feature to
the method of Yates absent the Appellants’ teaching to do so. The Examiner thus
erred in rejecting claims 40-45 and 54 as obvious over Yates in view of Wilson.

B. Rejection of claims 40, 44, and 46-47 under 35 U.S.C. § 103(a) as
unpatentable over Cole in view of Wilson.
The Examiner relies on Wilson for essentially the same modification
(mounting in the shower) as he does above. For the same reasons as noted above,
this rejection is improper. In addition, the base reference, Cole, fails to disclose a
wall between the tissue dispenser and the tissue disposal as required by claim 40
(Finding of Fact 8). The Examiner has thus failed to make a prima facie case of
obviousness of claims 40, 44, and 46-47 over Cole in view of Wilson.
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CONCLUSIONS
We conclude that Appellant has shown that the Examiner erred in rejecting
claims 40-47 and 54 under 35 U.S.C. § 103(a).

DECISION
The decision of the Examiner to reject claims 40-47 and 54 under 35 U.S.C.
§ 103(a) is reversed.

REVERSED

JRG/vsh
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DISSENTING OPINION

William F. Pate, III, Administrative Patent Judge, dissenting.

I respectfully dissent.

As I understand it, my colleagues are reversing based on the rationale that
“[n]either Yates nor Wilson provides any reason for mounting a combination tissue
dispenser and disposal in a shower.” My response is that Wilson does not provide a
reason, he just does it. Wilson mounts a tissue dispenser in a shower.
In my colleague’s Findings of Fact, they emphasize the alternative uses of
Wilson quoting from col. 2, ll. 35-39. They state that Wilson discloses “a
multifunctional device which may be utilized either to provide a water-resistant
closure for soap used in the bathtub or shower or in the bathroom as a bathroom
tissue cover to provide a water resistant closure for the bathroom environment.”
See Finding of Fact 4.
In fact, the first full sentence of Wilson states, “[t]he present invention
pertains to a water-resistant multifunctional bathroom fixture which may be
utilized as either or for both providing a water-resistant soap dish holder or as a
bathroom tissue fixture which prevents water spray from interfering with soap or
bathroom tissue located in the bathroom”(emphasis supplied). Accordingly,
Wilson is at least suggestive of mounting a tissue holder in a shower. Perhaps

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Wilson is contemplating usage of his device in an RV environment where a toilet
is commonly located in a shower for space-saving purposes.
However, my real argument with the majority position is that Wilson fully
teaches the two claimed manipulative steps of the independent claim 40 on appeal.
Wilson is a tissue dispenser. Wilson is mounted in a shower. This is all that the
claim requires. When Wilson is first mounted in a shower, before soap or tissue is
placed therein, has not the method step of mounting a tissue dispenser in a shower
been performed? Isn’t the underlying intention of a user who mounts Wilson in a
shower completely irrelevant as to whether the method step at issue has been
performed? While it is true that Wilson does not teach both a dispenser and
disposal station in the same device, Yates has been cited to show that this method
step or feature is well known. The combination of Yates with Wilson would have
been obvious for the reason given by Yates of insuring other articles such as clean
tissues or the surroundings are not contaminated by the soiled tissues.
Stepping back a little, I believe it to have been obvious to place tissues and a
tissue dispenser anywhere one wishes to blow one’s nose. Accordingly, if one
wishes to blow one’s nose in the shower or perhaps out-of-doors, one of ordinary
skill would have found it obvious to provide a waterproof tissue dispenser in such
a location. Mounting above the floor level, anywhere, was likewise obvious as a
matter of convenience obviating bending or crouching. I see nothing in Appellant’s
independent claim that would not have been obvious to one of ordinary skill.

JRG/vsh
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