Ex Parte LARSSON et al

Patent Trials and Appeals Board

Jun 28, 2019

15501237 - (D) (P.T.A.B. Jun. 28, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
15/501,237 02/02/2017
105855 7590 07/02/2019
Drinker Biddle & Reath LLP (SCA Americas)
1500 K Street NW, Suite 1100
Washington, DC 20005
FIRST NAMED INVENTOR
Bjlrn LARSSON
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.
049121-0449-00-US-549408 5359
EXAMINER
RANDALL, JR, KELVIN L
ART UNIT PAPER NUMBER
3651
NOTIFICATION DATE DELIVERY MODE
07/02/2019 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):
DBRIPDocket@dbr.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte BJORN LARSSON and JAN LUNDGREN
Appeal2019-003098
Application 15/501,237
Technology Center 3600
Before JOHN C. KERINS, STEP AN ST AI CO VICI, and
ARTHUR M. PESLAK, Administrative Patent Judges.
KERINS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Bjorn Larsson and Jan Lundgren (Appellants) 1 seek our review under
35 U.S.C. § 134 of the final rejection of claims 1-25, 27, and 28. We have
jurisdiction under 35 U.S.C. § 6(b ). An oral hearing was conducted on June
13, 2019, with Christopher P. Brunjes, Esq., appearing on behalf of
Appellants.
We AFFIRM-IN-PART, and enter a NEW GROUND OF
REJECTION under 35 U.S.C. § 112, second paragraph.
1 SCA HYGIENE PRODUCTS AB is the real party-in-interest in this
appeal. Appeal Br. 3.
Appeal2019-003098
Application 15/501,237
THE INVENTION
Appellants' invention is directed to a dispenser for a stack of sheet
products. Independent claim 1, reproduced below, is illustrative:
1. A dispenser, comprising:
a housing defining at least partly an interior volume for holding
a stack of sheet products; a dispensing mouth through which
sheet products are able to be dispensed from the dispenser in a
dispensing direction; and
one or more stack holdback members, wherein the stack
holdback members each include a stack engaging part and a
flexible hinge,
wherein the stack engaging part of each of the holdback
members is able to tum about the flexible hinge from a stack
engaging orientation to a stack loading orientation,
wherein, when the stack engaging parts of the holdback
members are in the stack engaging orientation, the stack
engaging parts of the holdback members are arranged for
engaging the front of the stack to space the front of the stack
rearwardly from the dispensing mouth, and, when the stack
engaging parts of the holdback members are in the stack
loading orientation, the stack engaging parts are arranged for
providing clearance as compared to when the stack engaging
parts are in the stack engaging orientation, the clearance
allowing a stack to pass into the interior volume defined by the
housing for loading the dispenser,
wherein the flexible hinge allows turning about the flexible
hinge as a result of relatively increased flexibility compared to
neighboring regions of material along a hinge axis or line,
wherein the stack engaging part and the flexible hinge of each
stack holdback member are integral components, and
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Application 15/501,237
wherein the one or more holdback members extends only part
way across the interior volume toward an opposed sidewall of
the housing, when the stack engaging parts of the holdback
members are in the stack engaging orientation, such that no
portion of the one or more holdback members is within the
dispensing mouth.
THE REJECTIONS
The Examiner rejects:
(i) claims 18 and 20 under 35 U.S.C. § I03(a) as being unpatentable
over Bodek (US 3,840, 146, issued Oct. 8, 197 4) in view of Merriweather
(US 5,642,836, issued July 1, 1997);
(ii) claims 1-3, 6-10, 13-17, 19, 21-25, 27, and 28 under 35 U.S.C.
§ I03(a) as being unpatentable over Bodek in view of Merriweather and
Rappleye (US 1,603,714, issued Oct. 19, 1926);
(iii) claim 4 under 35 U.S.C. § I03(a) as being unpatentable over
Bodek in view of Merriweather, Rappleye, and Baer (US 2011/0011878 Al,
published Jan. 20, 2011);
(iv) claims 5 and 11 under 35 U.S.C. § I03(a) as being unpatentable
over Bodek in view of Merriweather, Rappleye, and Reinke (US
2003/0221986 Al, published Dec. 4, 2003); and
(v) claim 12 under 35 U.S.C. § I03(a) as being unpatentable over
Bodek in view of Merriweather, Rappleye, and Wieser (US 7,178,689 B2,
issued Feb. 20, 2007).
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Application 15/501,237
ANALYSIS
Claims 18 and 20--§ 103(a)--Bodek/Merriweather
Claim 18
The issue joined between Appellants and the Examiner for claim 18
involves a limitation requiring that a flexible hinge of each of one or more
stack holdback members has a groove or kinked area extending along a
hinge axis of the flexible hinge. See, e.g., Appeal Br. 7-10; Ans. 4--5. The
Examiner's position is that Merriweather discloses a bend in the area of
reference numeral 18 in Figure 4, which persons of ordinary skill in the art
would recognize as a groove or kinked area, and that it would have been
obvious to the skilled artisan to modify the Bodek dispenser to employ a
hinge of this type. Final Act. 5. Appellants do not take issue with the
Examiner's articulated reason to combine the teachings of Bodek and
Merriweather, but only argue that Merriweather does not disclose a flexible
hinge having a groove or kinked area, and thus the combination does not
yield the claimed structure. Appeal Br. 7-10.
Appellants argue that the U-shaped area 18 identified by the Examiner
as corresponding to a groove or kinked area is neither. Appeal Br. 8.
Appellants' position appears to be that both a groove and a kink require a
"channel" to be present in the hinge area in order to meet the claim
limitation. Id. The Examiner counters, specifically with respect to the
inclusion of "kinked area" in the claim, that a definition of "kink" includes
"a tight curl, twist, or bend in a length of thin material." Ans. 5 ( citing
www.thefreedictionary.com). Appellants' Specification does not provide
any other or different definition of "kink" or "kinked area," and therefore the
Examiner's reliance on a common meaning or understanding is appropriate.
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A "kinked area," contrary to Appellants' argument, does not require
the presence of a channel, under the common and ordinary meaning of
"kink." Thus, the tight bend present in the area of reference numeral 18 in
Merriweather reasonably "represents . . . a kinked area which would extend
along the hinge axis," as required by claim 18. Ans. 5.
The rejection of claim 18 is therefore sustained.
Although we sustain the rejection on the basis that Merriweather
discloses the claimed kinked area, we further note that Merriweather can
reasonably be understood by a person of ordinary skill in the art as
disclosing or suggesting the presence of a thinned region, or groove, at area
18 in Figure 4 of Merriweather. Notwithstanding that the drawing figures of
Merriweather illustrate that the material in that region is of the same
thickness as the portions of the elements extending away from that region,
Merriweather describes hinge 18 as "[a] living hinge [which] is a
conventional construction widely used in plastic molded products for joining
two portions of the product, while permitting one portion to pivot or rotate
relative to the other portion." Merriweather 2:3---6. Based on even a very
brief online search for the term "living hinge," numerous websites were
returned that evidence that a living hinge is understood to be a thin flexible
hinge made from the same material as the two rigid pieces that it connects,
and is typically either thinned or cut (i.e., grooved) to allow bending or
pivoting along the line of the hinge. See, e.g.,
https://en.wikipedia.org/wiki/Living_hinge, last accessed on June 20, 2019.
Claim 20
The issue joined between Appellants and the Examiner for claim 20
involves a limitation requiring that a stack engaging part of a stack holdback
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Application 15/501,237
member "extends only part way along a sidewall of the housing from which
it projects and extends only part way across the interior volume toward an
opposed sidewall of the housing toward which it projects." Appeal Br. 10-
12; Ans. 5-6. In actuality, it is the first portion of this limitation that is in
dispute, but Appellants' arguments address the latter portion as well, in
arguing that the Examiner has incorrectly construed the claim.
For the reasons set forth below in the New Ground of Rejection of
claim 20, we conclude that claim 20 is indefinite due to the presence of the
term "extends only part way along a sidewall of the housing from which it
projects." The prior art rejection of claim 20 as being unpatentable over
Bodek and Merriweather must fall because it is necessarily based on a
speculative assumption as to the meaning of the claim. In re Steele, 305
F.2d 859,862 (CCPA 1962).
We therefore do not sustain the rejection of claim 20 under 35 U.S.C.
§ 103(a). It should be understood, however, that our decision in this regard
is based solely on the indefiniteness of the claimed subject matter, and does
not reflect on the adequacy of the prior art evidence applied in support of the
rejection.
Claims 1-3, 6--10, 13-17, 19, 21-25, 27, and 28--§ 103(a)--Bodek/
Merriweather/Rappleye
The issue joined between Appellants and the Examiner for claim 1
involves a limitation requiring that the one or more holdback members
extends only part way across the interior volume toward an opposed sidewall
of the housing, such that "no portion of the one or more holdback members
is within the dispensing mouth." Appeal Br. 12-15; Ans. 6-9.
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The Examiner acknowledges that Bodek does not disclose this claim
limitation, and makes no finding to the effect that Merriweather does, either.
Final Act. 8-10. The Examiner cites to Rappleye as evidencing that is was
known to provide a dispenser in which the one or more holdback members
extend only part way across an interior volume toward an opposed sidewall,
and in which no portion of the one or more holdback members is within the
dispensing mouth of the dispenser. Id. at 10. The Examiner concludes that
it would have been obvious to a person of ordinary skill in the art to modify
Bodek in view of Rappleye "to provide an alternative design choice from a
finite number of choices" known to a person of ordinary skill in the art. Id.
Appellants traverse the rejection on the basis that the Examiner has
provided no sound technical or functional reason to make the proposed
modification to Bodek, and that the proposed modification would eliminate
the ability to load the Bodek dispenser through a dispensing slot that is
sufficiently wide to permit ready insertion of towels to restock the dispenser.
Appeal Br. 13-14; Reply Br. 7-8. According to Appellants, who accurately
characterize the teachings of Bodek in this respect, the modification would
render Bodek "incapable of functioning as intended." Appeal Br. 14.
Appellants have the better position here. A main focus of Bodek is to
provide a towel dispenser that does not require a hinged or removable cover
that must be opened to restock towels therein. Bodek, 1 : 6-4 7. Bodek
achieves this principally by providing an opening 22a in an enclosure 22 that
is "of sufficient dimension to pass folded paper towels." Id. at 2:35-39. As
noted by Appellants, narrowing that opening so as to have housing 22 extend
completely over retainer strips 14 (i.e., so that no part of retainer strips 14
are within the dispensing mouth), would preclude the insertion of a new
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stack of towels therethrough, and would require the housing to be opened in
some manner for restocking, the very operation the Bodek dispenser is
designed to avoid. Appeal Br. 13-14.
Thus, the Examiner's suggestion that the proposed modification
merely provides an alternate design option fails to take into account specific
teachings in Bodek that weigh heavily against a conclusion that the
modification would have been obvious to a skilled artisan. The rejection of
claim 1 is therefore not sustained. Claims 2, 3, 6-10, 13-17, 19, 21-25, 27,
and 28 depend from claim 1, and the rejection is not sustained as to these
claims for the same reasons provided above.
Claim 4--§ 103 (a)--Bodek/Merriweather/Rappleye/Baer
Claims 5 and 11--35 U.S.C. § 103(a)--Bodek/Merriweather/Rappleye/Reinke
Claim 12--§ 103 (a)--Bodek/Merriweather/Rappleye/Wieser
The claims subject to these rejections depend either directly or
indirectly from claim 1. The Examiner does not rely on any of Baer, Reinke,
or Wieser in any manner that cures the deficiencies, discussed above, of the
rejection of claim 1 over Bodek, Merriweather and Rappleye. Accordingly,
these rejections are not sustained.
Claim 20--§ 112, second paragraph--NEW GROUND OF REJECTION
Claim 20 is rejected under 35 U.S.C. § 112, second paragraph, as
being indefinite for failing to specifically point out and distinctly claim the
subject matter Appellants regard as the invention.
A claim is properly rejected as being indefinite under 35 U.S.C. § 112,
second paragraph if, after applying the broadest reasonable interpretation in
light of the specification, the metes and bounds of a claim are not clear
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because the claim "contains words or phrases whose meaning is unclear." In
re Packard, 751 F.3d 1307, 1310 (Fed Cir. 2014). During prosecution,
claims are to be given their broadest reasonable interpretation in light of the
supporting disclosure. In re Morris, 127 F.3d 1048, 1054-55 (Fed. Cir.
1997). Limitations appearing in the specification but not recited in a claim,
however, are not to be read into the claim. E-Pass Techs., Inc. v. 3Com
Corp., 343 F.3d 1364, 1369 (Fed. Cir. 2003) ( claims must be interpreted "in
view of the specification" without importing limitations from the
specification into the claims unnecessarily). In re Prater, 415 F.2d 1393,
1404-05 (CCP A 1969).
In the present Appeal, Appellants and the Examiner construe the
limitation requiring that the stack engaging part "extends only part way
along a sidewall of the housing from which it projects," differently, and both
constructions appear to us to be plausible under the broadest reasonable
interpretation standard. The Examiner takes the position that the direction of
the extension of the stack engaging part along a sidewall of the housing is in
a vertical or top-to-bottom orientation. Ans. 6 ( citing Figs. 2, 3 of Bodek);
Adv. Act. 3. 2 Appellants maintain, referring to an annotated version of
Figure 2 of the present application, that the limitation at issue "is referring to
the horizontal distance along the sidewall." Reply Br. 6-7. Appellants
argue that the person of ordinary skill in the art "would have understood the
phrase to be defining two separate dimensions of the holdback member
when it is projecting from the sidewall of the housing. Id. at 6. In this
regard, Appellants posit that "[t]he term 'project' connotes an extension
2 Advisory Action dated September 21, 2018.
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away from a surface," such as the sidewall of the housing, whereas the
Examiner's use of a vertical direction "relates to the length of the holdback
member when it is laying along the sidewall and not 'projecting' from it."
Id.
We disagree with Appellants that the only reasonable interpretation of
the claim phrase requires determining the extension of the stack engaging
part along a horizontal distance. At the outset, Appellants' attempt to
construe the term "projects" as connoting only the stack engaging
orientation of the stack engaging parts, we note that other portions of claim
20 define various characteristics of the dispenser in terms of whether that
stack engaging parts are in either a stack engaging orientation or a stack
loading orientation, but claim 20 does not do so with respect to the limitation
at issue. The stack engaging parts project away from the sidewall in both the
stack engaging orientation and the stack loading orientation, albeit arguably
to a lesser extent in the latter. The term "projects" can be seen as defining
which sidewall of the housing the claimed "holdback members extend[] only
part way along," that is, the sidewall(s) from which the holdback member(s)
are attached and project.
In order to construe the claim as urged by Appellants, it would
require, at best, reading a limitation into the claim from the Specification.
However, the Specification also supports the interpretation employed by the
Examiner. While Appellants cite to Figure 2 of their disclosure as
illustrating that the stack engaging member does not extend along the full
horizontal extent of the sidewall, Figure 7 also clearly illustrates an
embodiment in which the stack engaging member extends only part way
along the sidewall in a vertical or top-to-bottom direction as well.
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Appellants do not explain persuasively why it is reasonable to infer that
claim 20 is referring to and is limited to a horizontal direction, and
unreasonable to otherwise infer that the claim is referring to and is limited to
a vertical direction.
As such, we conclude that the metes and bounds of claim 20 are not
clear because the claim "contains words or phrases whose meaning is
unclear." Packard, 751 F.3d at 1310.
DECISION
The rejection of claim 18 under 35 U.S.C. § 103(a) as being
unpatentable over Bodek in view of Merriweather is affirmed.
The rejection of claim 20 under 35 U.S.C. § 103(a) as being
unpatentable over Bodek in view of Merriweather is reversed, proforma.
The rejection of claims 1-3, 6-10, 13-17, 19, 21-25, 27, and 28 under
35 U.S.C. § 103(a) as being unpatentable over Bodek in view of
Merriweather and Rappleye is reversed.
The rejection of claim 4 under 35 U.S.C. § 103(a) as being
unpatentable over Bodek in view of Merriweather, Rappleye, and Baer, is
reversed.
The rejection of claims 5 and 11 under 35 U.S.C. § 103(a) as being
unpatentable over Bodek in view of Merriweather, Rappleye, and Reinke, is
reversed.
The rejection of claim 12 under 35 U.S.C. § 103(a) as being
unpatentable over Bodek in view of Merriweather, Rappleye, and Weiser, is
reversed.
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Claim 20 is rejected, in a new ground of rejection pursuant to 37
C.F.R. § 4I.50(b), under 35 U.S.C. § 112, second paragraph, as being
indefinite.
This decision contains new grounds of rejection pursuant to 37 C.F.R.
§ 4I.50(b). Section 4I.50(b) provides "[a] new ground of rejection pursuant
to this paragraph shall not be considered final for judicial review." Section
41.50(b) also provides:
When the Board enters such a non-final decision, the appellant, within
two months from the date of the decision, must exercise one of the following
two options with respect to the new ground 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
prosecution will be remanded to the examiner. The new ground of rejection
is binding upon the examiner unless an amendment or new evidence not
previously of record is made which, in the opinion of the examiner,
overcomes the new ground of rejection designated in the decision. Should
the examiner reject the claims, appellant may again appeal to the Board
pursuant to this subpart.
(2) Request rehearing. Request that the proceeding be reheard under
§ 41.52 by the Board upon the same record. The request for rehearing must
address any new ground of rejection and state with particularity the points
believed to have been misapprehended or overlooked in entering the new
ground of rejection and also state all other grounds upon which rehearing is
sought.
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Further guidance on responding to a new ground of rejection can be
found in the Manual of Patent Examining Procedure§ 1214.01.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED-IN-PART
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