Ex Parte Pulch et al

Patent Trial and Appeal Board

Aug 28, 2013

11498442 (P.T.A.B. Aug. 28, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte PAUL GUENTHER PULCH and SABINE UNNASCH
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Appeal 2011-009730
Application 11/498,442
Technology Center 3700
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Before PHILLIP J. KAUFFMAN, BARRY L. GROSSMAN, and
BART A. GERSTENBLITH, Administrative Patent Judges.

GROSSMAN, Administrative Patent Judge.

DECISION ON APPEAL
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STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134 from the Examiner’s
decision finally rejecting claims 1-6, 8-11, 13, 14, 16, and 17. We have
jurisdiction over the appeal under 35 U.S.C. § 6(b).
We affirm the decision of the Examiner.

CLAIMED SUBJECT MATTER
The claimed subject matter relates generally to an apparatus for
dispensing fluids and tissues. Spec., p. 1, l. 6. Claim 1, the sole independent
claim, is representative of the subject matter on appeal, and recites:
1. A fluid dispenser also being useful as a
tissue roll dispenser for tissue rolls comprising an
axial void space,
said fluid dispenser comprising a dispensing
head, a base and a hollow body, said dispensing
head comprising a pump, said pump being
configured to pump a fluid out of said hollow body
and to dispense it through said dispensing head,
said hollow body serving as a reservoir for
said fluid and said hollow body having a bottom, a
proximal end and a distal closed end that forms the
bottom of the hollow body and said hollow body
having a longitudinal dimension and perpendicular
thereto a maximum cross section dimension of less
than about 60 mm such that the hollow body at
least partially fits inside the axial void space of a
tissue roll, said proximal end being connected to
said dispensing head,
the hollow body being substantially
cylindrical along its longitudinal dimension;
said base being disposed at the distal closed
end of said hollow body and providing a
substantially stable stand for said fluid dispenser
and said base comprising an extension;
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wherein said distal closed end of the hollow
body engages the extension and is detachably
connected to said extension such as to release said
distal closed end and to allow the insertion of said
distal closed end into said axial void space of a
tissue roll and wherein the extension maintains the
tissue roll in an upright position.

REFERENCES
The Examiner relied on Irwin, U.S. Patent No. 6,431,405 B2, issued
Aug. 13, 2002 to reject all the claims.

REJECTION
The rejection of claims 1-6, 8-11, 13, 14, 16, and 17 under 35 U.S.C.
§ 103(a) as unpatentable over Irwin is before us for review.

ANALYSIS
We first address the claims on appeal. Appellants state that claims 1-
6, 8-11, 13, 14, 16 and 17 “are pending and rejected,” but that only “[c]laims
9 and 10 are appealed.” Br. 1. Claims that are rejected but not appealed
generally are canceled upon return of jurisdiction of the appealed application
to the Examiner. See Ex parte Ghuman, 88 USPQ2d 1478, 1480 (BPAI
2008) (precedential).
Notwithstanding their statement that only claims 9 and 10 are
appealed, under the heading “Grounds Of Rejection To Be Reviewed On
Appeal,” Appellants identify the rejection against “[c]laims 1-6, 8-11, 13, 14
and 16-17.” Br. 3. Appellants proceed to argue only for the patentability of
these claims based upon claim 1. Id.
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We determine that claims 1-6, 8-11, 13, 14, 16, and 17 are before us
for review. We agree with the Examiner’s analysis that Appellants only
present argument for independent claim 1. Ans. 9; Br. 3. No other claim is
separately argued. Accordingly, claims 2-6, 8-11, 13, 14, 16, and 17 stand
or fall with claim 1. 37 C.F.R. § 41.37(c)(1)(vii) (2011).
Appellants allege reversible error in the rejection of claim 1 because
Irwin does not disclose or suggest the following claim limitations:
1. a hollow body having a maximum cross section dimension of less
than about 60 mm (Br. 5);
2. a hollow body that is substantially cylindrical along its longitudinal
dimension (id. at 5-6); and
3. the distal closed end of the hollow body engaging and detachably
connected to an extension of the base (id. at 6).
Maximum Cross Section of Less Than About 60 mm
Appellants and the Examiner agree that Irwin is silent as to the cross
section dimensions of the hollow body. .Br. 5; Ans. 5, 11-12.
The Examiner found that the 60 mm claim limitation was a “results
effective variable” relating to the volume of the container and the roll size
which can be accommodated. Ans. 6. Accordingly, the Examiner
determined that it would have been obvious to one having ordinary skill in
the art at the time of the invention to have selected the “less than about 60
mm” dimension “in order to optimize the apparatus to dispensing a desired
quantity of liquid and a selected type and size of roll material appropriate for
a desired application.” Id. The Examiner’s rationale for this determination
was that “it is not inventive to discover the optimum or workable ranges by
routine experimentation” and “changes of size and proportion do not make a
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device patentably distinct from the prior art where the prior art device
performs in the same way.” Id. The Examiner made his position clear in
explaining that the proposed modification is not to limit the cross section
dimension of Irwin's entire hollow body (reference numeral 14 in the Irwin
specification and drawings), but rather to limit the cross section dimension
of the hub stem portion of the hollow body (the hub stem is designated by
reference numeral 26) to less than 60 mm. Ans. 12.
The Examiner’s rationale for the proposed modification is that it is
consistent with Irwin’s disclosure that the maximum cross section dimension
of the hub stem (26) is based on the dimension of the roll core (44) intended
to fit on and be rotatable about the hub stem. Ans. 12.
Appellants argue that the proposed modification is inconsistent with
Irwin’s characterization of prior art dispensers of fluids and tissues. Br. 5.
In so doing, Appellants mischaracterize Irwin’s disclosure. Irwin discloses
that prior art devices that have a fluid dispenser “located entirely within the
core of the sheet roll” provide limited fluid reservoirs. Irwin, col. 2, ll. 52-
63. Contrary to Appellants’ argument, Irwin does not “criticize the structure
of the claimed invention.” Br. 5. The invention in claim 1 calls for a hollow
body that “partially fits inside the axial void space of a tissue roll.” Irwin
does not criticize a fluid dispenser in which a portion of the dispenser is
located within the core of the sheet roll, since that is exactly what Irwin
discloses for hub stem (26).
Irwin discloses that one of the objectives for his dispenser is to
provide “an ample fluid reservoir commensurate to the quantity of sheet
material being dispensed.” Irwin, col. 5, ll. 1-2. Thus, the Examiner’s
determination that selecting a result determinative maximum dimension of
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less than about 60 mm is fully consistent with Irwin’s disclosure and
objectives – choose the cross section dimension of the hollow body based on
the sheet material being dispensed. It is also fully consistent with the
limitation in claim 1 that the claimed hollow body “partially fits inside the
axial void space of a tissue roll.” This is exactly the structure disclosed in
Irwin – hollow body (bottle 14) partially fits inside the tissue roll by means
of hub stem (26).
The Examiner’s position also is in accord with Appellants’ disclosure
defining the claim term “maximum cross section dimension.” Ans. 13-14.
As stated in the Specification, “[t]he only region to be considered as for the
‘maximum cross section’ is the region that can be inserted into the axial void
space (14) of a tissue roll.” Spec. 7, ll. 18-20. Thus, only Irwin’s hub stem
(26) must meet this claim limitation.
Appellants’ arguments do not apprise us of any error in the
Examiner’s findings or conclusions that the claim limitation that the hollow
body has a maximum cross section dimension of less than about 60 mm is a
result effective variable that would have been obvious to one having
ordinary skill in the relevant technology.
A Hollow Body That Is Substantially Cylindrical
The Examiner found that Irwin disclosed a hollow body (bottle 14),
which includes the hub stem (26), that is “substantially cylindrical along its
longitudinal dimension,” as called for in claim 1. Ans. 4. As found by the
Examiner, claim 1 does not require the entire hollow body be substantially
cylindrical along its entire longitudinal axis. Ans. 11. The Examiner found
that claim 1 merely requires the hollow body to have “a longitudinal
dimension” and to be “substantially cylindrical along its longitudinal
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dimension.” Id. As found by the Examiner, Irwin’s hollow body (bottle 14),
which includes hub stem (26) clearly has a longitudinal dimension and the
hub stem portion is clearly shown and disclosed as cylindrical. See Irwin,
Figs. 1B, 1C; col. 8, ll. 3-7.
The lower hub stem (26) portion of hollow body (bottle 14) shown in
Figures 1B, 1C, 1D, and 1F may appear to be about equal in longitudinal
dimension to the upper bell-shaped portion (unnumbered) of hollow body
(14). However, these figures show the hub stem portion only extending part
way into sheet dispenser (12). As found by the Examiner, Irwin discloses
that hub stem (26) could reach all the way to the bottom to mate and
interlock with push-up hub (40). Ans. 16. In this disclosed embodiment in
Irwin, the hub stem (26) would comprise a substantial portion of the
longitudinal dimension. Thus, the hollow body clearly would be
substantially cylindrical along its longitudinal dimension.
Appellants offer no evidence to support their statement that Irwin does
not disclose a hollow body that is substantially cylindrical along its
longitudinal dimension. Appellants’ statement does apprise us of any error
in the Examiner’s well-reasoned articulation of the basis for his findings and
conclusions, and the evidence supporting them, concerning Irwin’s
disclosure of a hollow body that is “substantially cylindrical along its
longitudinal dimension,” as called for in claim 1.
Distal Close End Detachably Connected To the Base
The Examiner found that claim 1 only requires that the hollow body
"at least partially" fit inside the axial void space of a tissue roll. Ans. 16.
The Examiner also found that only the hub stem (26) portion of Irwin, which
is the distal end of hollow body (bottle 14), need extend into the tissue roll
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axial space, and thus into the tub (28) of sheet dispenser 12 to meet the claim
limitation. Id. The Examiner found that Irwin explicitly teaches that the hub
stem (26) could reach all the way to the bottom to mate and interlock with
the push-up hub 40. Id.
Appellants allege error because the Examiner mapped one claim
element to two different portions of a prior art feature. Br. 16. As explained
in the Examiner’s Answer, summarized above, the Examiner’s interpretation
and application of Irwin established that Irwin discloses that hub stem (26)
“both engage[s] the base and extend[s] into the axial space of the rolled
tissue,” which is exactly what Appellants argue is called for in claim 1 (see
Br. 6).
Accordingly, Appellants do not apprise us of error in the Examiner’s
determination that Irwin discloses that the distal end of the hollow body
(14), i.e., hub stem (26), engages and is detachably connected to the
extension.

DECISION
Upon consideration of the record as a whole in light of Appellants’
contentions and the preponderance of relevant evidence, we affirm the
Examiner’s decision rejecting claims 1-6,8-11, 13, 14, 16, and 17.
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

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