Ex Parte Pearl et alDownload PDFPatent Trial and Appeal BoardJun 18, 201311438192 (P.T.A.B. Jun. 18, 2013) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte JAYSON PEARL, TOM WOZNY, PAUL A. OMDOLL, and NORM FAIOLA ____________ Appeal 2011-006660 Application 11/438,192 Technology Center 3700 ____________ Before CHARLES N. GREENHUT, BARRY L. GROSSMAN, and BART A. GERSTENBLITH, Administrative Patent Judges. GERSTENBLITH, Administrative Patent Judge. DECISION ON APPEAL Appeal 2011-006660 Application 11/438,192 2 STATEMENT OF THE CASE Jayson Pearl, Tom Wozny, Paul A. Omdoll, and Norm Faiola (“Appellants”) appeal under 35 U.S.C. § 134 from the Examiner’s decision rejecting claims 2-7, 21, 22, and 31-33. We have jurisdiction under 35 U.S.C. § 6(b). The Claimed Subject Matter Claims 31 and 33 are the independent claims on appeal. Claims 31 and 33 are illustrative of the claimed subject matter and are reproduced below. 31. A wrap dispensing station comprising: a housing having a first cavity configured to receive a roll of material to be dispensed; a first cover pivotably coupled to the housing to selectively close the first cavity; a cutting apparatus mounted in the housing for cutting lengths of material to be dispensed; a second cavity formed in the first cover; at least one divider removably coupled to the first cover and operative to partition the second cavity into at least two recesses, wherein the recesses are adapted for storing items used in wrapping and storing food items; and a second cover for covering at least a portion of the second cavity. 33. A food wrapping dispensing station comprising: an enclosure defining a partially curved wall sized to support a roll of food wrapping material; a first cover hinged to the enclosure and operative to selectively open and close the enclosure to permit and preclude access to the roll of food wrapping material; Appeal 2011-006660 Application 11/438,192 3 a cutting apparatus associated with the enclosure and configured to cut the wrapping material; a plurality of recesses formed in the first cover; and at least one second cover to selectively close at least one of the plurality of recesses. App. Br. 25-26 (Claims App’x, Claims 31, 33). References The Examiner relies upon the following prior art references: Tuttle US 2,550,209 Apr. 24, 1951 Gordon US 4,417,495 Nov. 29, 1983 Kaiser Des. 347,345 May 31, 1994 Rejections The Examiner makes the following rejections: I. Claims 2, 6, 7, 21, 22, 31, and 33 are rejected under 35 U.S.C. § 103(a) as unpatentable over Gordon; II. Claims 3-5 are rejected under 35 U.S.C. § 103(a) as unpatentable over Gordon and Tuttle; and III. Claim 32 is rejected under 35 U.S.C. § 103(a) as unpatentable over Gordon and Kaiser. SUMMARY OF DECISION We AFFIRM-IN-PART. OPINION Rejection I The Examiner concluded that Gordon would have rendered the subject matter of claims 2, 6, 7, 21, 22, 31, and 33 obvious to one of ordinary skill in the art. Ans. 3-5. With respect to claim 31, the Examiner found that Gordon discloses each of the elements of the claim except for two Appeal 2011-006660 Application 11/438,192 4 recesses. Id. at 4. The Examiner found that Gordon discloses “at least one divider removably coupled to the first cover and operative to partition the second cavity into at least two recesses.” Id. at 3; see Ans. 8 (identifying latch 28a as the claimed divider); see also Final Office Action (mailed June 14, 2010) at 6 (identifying hook 28a as the claimed divider). The Examiner determined that it would have been obvious to one of ordinary skill in the art to modify Gordon’s latch arrangement to include more than one latch assembly, and hence more than one recess, because “mere duplication of the essential working parts of a device involves only routine skill in the art.” Ans. 4 (citation omitted). The Examiner also found that one of ordinary skill in the art at the time of invention would have been prompted to add a second latch assembly “in order to strength[en] the closing/locking between the cover and body of the dispenser.” Id. at 8 (citation omitted). The Examiner further found that Gordon’s second cavity 42 is “capable of storing items.” Id. Appellants raise several arguments in response to this rejection. First, Appellants contend that a prima facie case of obviousness has not been established because “the Examiner has failed to factually establish why one skilled in the art would have found it obvious to modify the dispenser disclosed by [Gordon] to include a second latch assembly.” App. Br. 11. Appellants assert that instead of providing a reason for such modification, the Examiner simply found that the mere duplication of essential parts is obvious. Id. at 11-12. We disagree. While the Examiner did indicate that the mere duplication of essential parts involves only routine skill in the art, the Examiner also found that one of ordinary skill in the art would have been Appeal 2011-006660 Application 11/438,192 5 prompted to add a second latch assembly “to strength[en] the closing/locking between the cover and body of the dispenser.” Ans. 8. In the context of Gordon’s disclosure, which indicates that “other latch arrangements can be used to releasably lock the cover in its closed position” (Gordon, col. 5, ll. 57-58), we find that the Examiner’s rationale is based on a rational underpinning.1 See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). Second, Appellants assert that Gordon “teaches away from the need for a second latch assembly.” App. Br. 12. Appellants point to Gordon’s disclosure that while other latch arrangements can be used the one specifically disclosed has proven to be advantageous. Id. at 12-13 (citing Gordon, col. 5, ll. 57-62). We disagree that Gordon teaches away from adding a second latch assembly. “A reference may be said to teach away when a person of ordinary skill, upon reading the reference, . . . would be led in a direction divergent from the path that was taken by the applicant.” In re Haruna, 249 1 Appellants also assert that the Examiner “has not factually established why one skilled in the art would have found such a single latch design to be inadequate to keep the front cover in the closed position.” App. Br. 14-15. The Examiner, however, as explained above, found that a second latch assembly would strengthen the closing/locking between the cover and the body of the dispenser. Ans. 8. Simply because one latch assembly is adequate to keep the cover in a closed position does not mean that a second latch assembly would not strengthen the closing/locking as found by the Examiner. In other words, the Examiner need not find that Gordon’s one latch assembly was inadequate (and such finding (had it been made) would likely be unpersuasive in light of Gordon’s disclosure that the one latch assembly appears to adequately function to maintain the closure) to have a rational basis for finding that it would have been obvious to one of ordinary skill in the art to add a second latch assembly. Appeal 2011-006660 Application 11/438,192 6 F.3d 1327, 1335 (Fed. Cir. 2001) (quoting Tec Air, Inc. v. Denso Mfg. Mich. Inc., 192 F.3d 1353, 1360 (Fed. Cir. 1999)). Gordon indicates that [o]bviously other latch arrangements can be used to releasably lock the cover in its closed position. The one specifically illustrated has proven to be advantageous because it is rugged and easy to assemble and cannot be operated in a manner to damage the latching mechanism. Gordon, col. 5, ll. 57-62. Gordon thus identifies the ruggedness, ease of assembly, and manner of operation of the latch assembly as advantages. Nothing in that disclosure discourages one of ordinary skill in the art from duplicating the same latch assembly, or would lead one of ordinary skill in the art away from duplicating the same latch assembly, because one of ordinary skill in the art would expect a second identical latch assembly to have the same advantages as the one disclosed by Gordon. E.g., In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994). Accordingly, Gordon does not teach away from duplicating the same latch assembly disclosed therein. Third, Appellants contend that Gordon fails to disclose each element of the claimed invention. App. Br. 15. With respect to claim 31, Appellants assert that the wedge-shaped recess in Gordon is “adapted for storing items used in wrapping and storing food items” because the structure is not capable of performing the storing function. See id. at 16-17. Appellants also contend that the Examiner’s finding that latchhook 28a constitutes a divider that partitions the wedge-shaped recess into at least two recesses is incorrect because in the raised position, the recess is not divided into more than one recess. Id. at 17-18. We agree with Appellants that Gordon’s latchhook 28a is not “at least one divider removably coupled to the first cover and operative to partition Appeal 2011-006660 Application 11/438,192 7 the second cavity into at least two recesses” as recited by claim 31. Gordon discloses the following with respect to the wedge-shaped recess and the latch assembly: More particularly, a wedge-shaped recess 42 is formed in cover wall 14a. The bottom of recess 42 or [sic] opens into the interior of cover 14 except that a relatively narrow strap 44 extends between the cover front wall 14a and the recess rear wall 42a. When the cover 14 is in its closed position shown in FIG. 6, and the knob 36 is rotated counterclockwise to its position shown in FIG. 3, the latchhook 28a engages over strap 44 thereby releasably locking the cover in that closed position. Gordon, col. 5, ll. 42-51. As reflected in Figures 2 and 3, when latchhook 28a engages strap 44, the top of latchhook 28a does not divide recess 42 because the top of the latchhook barely enters the recess. In other words, the latchhook does not separate2 recess 42 (which the Examiner refers to as the second cavity) into two recesses as called for by claim 31.3 2 The plain and ordinary meaning of “divider” is one that divides. See, e.g., THE AMERICAN HERITAGE DICTIONARY OF THE ENGLISH LANGUAGE (2007), available at http://www.credoreference.com/entry/hmdictenglang/divider (last visited June 14, 2013). And, the plain and ordinary meaning of “divide” is generally “to separate.” See, e.g., id. available at http://www.credoreference.com/entry/hmdictenglang/divide (last visited June 14, 2013). While the invention claims a priority date earlier than 2007 (see Spec. at 1), we have no reason to suspect that the plain and ordinary meaning of “divider” or “divide” changed during the time period between the date of invention and the publication of the definitions recited above, i.e., 2007. 3 If the Examiner had intended to rely upon “the bottom of recess 42” that opens into the interior of cover 14, we note that the bottom of recess 42 is simply an opening and not a recess as the plain and ordinary meaning of that term would have been understood by one of ordinary skill in the art at the time of invention. See, e.g., THE AMERICAN HERITAGE DICTIONARY OF THE ENGLISH LANGUAGE (2007), available at Appeal 2011-006660 Application 11/438,192 8 Accordingly, we do not sustain Rejection I as applied to claim 31 and claims 2, 6, 7, 21, and 22, which depend therefrom. Claim 33, the other independent claim on appeal, does not recite a “divider” or recesses that “are adapted for storing items used in wrapping and storing food items.”4 See App. Br. 26 (Claims App’x, Claim 33). Therefore, Appellants’ arguments directed to claim 33 are limited to the first and second arguments, discussed above, which we did not find persuasive. Accordingly, we sustain Rejection I as applied to claim 33. Rejections II and III The Examiner concluded that Gordon and Tuttle would have rendered the subject matter of claims 3-5 (Rejection II), and that Gordon and Kaiser would have rendered the subject matter of claim 32 (Rejection III), obvious to one of ordinary skill in the art at the time of invention. Ans. 5-6. The Examiner did not rely upon Tuttle or Kaiser as disclosing a divider as called for by claims 3-5 and 32 based upon their dependency from claim 31. See id. Rather, Rejections II and III rely upon Gordon for the disclosure of a divider, which we addressed in the context of Rejection I. Accordingly, we do not sustain Rejections II and III. http://www.credoreference.com/entry/hmdictenglang/recess (last visited June 14, 2013) (indicating that “recess” means “an indentation or small hollow”). 4 We note that it is unclear whether Appellants intended that their additional arguments regarding these elements apply to claim 33. Compare App. Br. 15 (referring to claim 31) with id. at 19 (referring to claims 31 and 33). Regardless, because claim 33 does not include the same elements as claim 31, Appellants’ additional arguments do not apply to claim 33. Appeal 2011-006660 Application 11/438,192 9 DECISION We REVERSE the Examiner’s decision rejecting claims 2-7, 21, 22, 31, and 32. We AFFIRM the Examiner’s decision rejecting claim 33. 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 mls Copy with citationCopy as parenthetical citation