Ex Parte Rengifo et al

Board of Patent Appeals and Interferences

Mar 25, 2008

10322976 (B.P.A.I. Mar. 25, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte PEDRO EMILIO RENGIFO, ROBIN BOVAIR STEVEN,
BRUCE CHARLES DORSTEWITZ, and JAMES LEE COLDIRON III
____________

Appeal 2008-1623
Application 10/322,976
Technology Center 3600
____________

Decided: March 25, 2008
____________

Before TONI R. SCHEINER, DEMETRA J. MILLS,
and LORA M. GREEN, Administrative Patent Judges.

GREEN, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134 from the
Examiner’s final rejection of claims 1-7, 10-14, and 16-18.1 We have

1 Claims 1-18 are pending, claims 8, 9, and 15 have been indicated as being
allowable (Ans. 4).
Appeal 2008-1623
Application 10/322,976

jurisdiction under 35 U.S.C. § 6(b). Claim 1 is representative of the claims
on appeal, and reads as follows:
1. A dispensing container for a roll of bulk sheet material, comprising:
a container body defined by a plurality of side panels defining
therebetween an internal chamber dimensioned to rotatably house a roll of
sheet material therein, the container body substantially enclosing the roll of
material in a transportation configuration;
roller means for substantially centering the roll of sheet material at a
centered level within the chamber;
at least one container side panel portion opening to configure the
container body into a dispensing configuration in which an access
passageway is exposed substantially at the centered level opposite the
centered roll of material and communicates with the container chamber and
through the passageway a free end of the material may be withdrawn at the
option of a user as the roll of material rotates within the chamber;
the container side panel portion closing the passageway at the option
of the user to place the container body and the roll of material into the
transportation configuration.

The Examiner relies on the following references:
Letourneau US 4,978,085 Dec. 18, 1990
Tan US 5,415,279 May 16, 1995
Taylor US 5,593,035 Jan. 14, 1997

We affirm.

DISCUSSION
Claims 1-5, 7, 10-13, and 16-18 stand rejected under 35 U.S.C. §
103(a) as being obvious over the combination of Tan and Letourneau.
Appellants only present separate arguments as to claim 7, thus claims 2-5,
10-13, and 16-18 stand or fall with claim 1. 37 CFR § 41.37(c)(1)(vii).
Tan is cited for teaching a dispensing container for a roll of bulk sheet
material meeting all of the limitations of claim 1 except roller means for
2
Appeal 2008-1623
Application 10/322,976

substantially centering the roll of sheet material at a centered level within the
chamber (Ans. 3 (referencing Tan, Figs. 1-3)).
Letourneau is cited for teaching a container body comprising roller
means/guide rollers (Ans. 3 (referencing Letourneau, Figs. 1 and 2)).
The Examiner concludes that it “would have been obvious to one of
ordinary skill in the art to provide the container of Tan with rollers, as taught
by Letourneau, for the purpose of allowing the roll of material to rotate
within the chamber without frictionally contacting the interior surfaces of
the container.” (Ans. 3-4.)
The burden is on the examiner to set forth a prima facie case of
obviousness. In re Fine, 837 F.2d 1071, 1074 (Fed. Cir. 1988). The
question of obviousness is resolved on the basis of underlying factual
determinations including: (1) the scope and content of the prior art; (2) the
level of ordinary skill in the art; (3) the differences between the claimed
invention and the prior art; and (4) secondary considerations of
nonobviousness, if any. Graham v. John Deere Co., 383 U.S. 1, 17 (1966).
The Supreme Court has recently emphasized that “the [obviousness] 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.” KSR
Int’l v. Teleflex Inc., 127 S. Ct. 1727, 1741 (2007). “The combination of
familiar elements according to known methods is likely to be obvious when
it does no more than yield predictable results.” Id. at 1739. Moreover, an
“[e]xpress suggestion to substitute one equivalent for another need not be
present to render such substitution obvious.” In re Fout, 675 F.2d 297, 301
(CCPA 1982).
3
Appeal 2008-1623
Application 10/322,976

Appellants argue that while Tan shows a rotating roll of material, the
roll “is positioned in frictional contacting engagement with the walls of the
container and is not supported at a centered level by roller means within the
container.” (Br.2 4.) Moreover, Appellants argue, the “Tan reference
clearly does not teach or suggest an orientation in which the roll of material,
the exit passageway through which an edge of material is fed are at a
common level, nor a work surface upon which the exited material is
supported at the same common level.” (Id.) As such, Appellants assert, it is
not suitable for dispensing a heavy rolled material, and in fact would be
“inoperable in the application for which the present invention is intended.”
(Id.) Thus, Appellants argue, Tan teaches away from the claimed invention
(id.).
Appellants argue further that the Letourneau does not make up the
deficiencies of Tan (Br. 5). Appellants assert that Letourneau is drawn to a
wire-dispensing spool in which the spool is situated within a container on
rollers, wherein the wire is fed through an opening on the bottom of the
container, and is not on the same centered level as the roll (id.). Appellants
also argue that there is no teaching or suggestion of a worktable in
Letourneau (id.) Appellants urge that there is no teaching in either reference
to combine a container for dispensing wire with a container for dispensing
film, and even if the combination were to be made, “one skilled in the art
would logically place the table of Tan at the bottom of the container where
Letourneau contemplates the wire to exit.” (Id.)
According to Appellants,

2 All references to the Brief (Br.) are to Appellants’ Corrected Brief, mail
stamped September 25, 2006.
4
Appeal 2008-1623
Application 10/322,976

Still further, the Letourneau reference does not teach a
configuration capable of accommodating an inversion of the
material roll on the support rollers at the option of the user.
Indeed, using the Letourneau reference container with a top
feed oriented heavy material stock would prove infeasible for
the same reason as the Tan reference. That is, were one to top
feed material from the Letourneau container, it would require
routing the free material edge down the forward side of the
container all the way to the bottom and then at a right angle out
the opening at the bottom. For thick material stock, such a
serpentine path would prove inoperable. The subject invention,
to the contrary, by orienting the material roll, the exit
passageway, and the worktable at a common centered level,
allows for a substantially in-line removal of the sheet material
whereby allowing the material roll to be placed alternatively
within the container in either a top feeding or bottom feeding
orientation.

(Id.)
Appellants’ arguments are not convincing. First, Appellants appear to
be attacking the references separately, and not the combination.
Obviousness, however, is determined in view of the sum of all of the
relevant teachings in the art, not isolated teachings in the art. See In re
Kuderna, 426 F.2d 385, 389 (CCPA 1970); see also In re Shuman, 361 F.2d
1008, 1012 (CCPA 1966).
Second, as noted by the Examiner, Appellants are arguing limitations
that are not in the claims. Specifically, Appellants argue that the dispensing
containers of Tan and Letourneau would be inoperable for dispensing heavy
material of thick stock material (see, e,g,, Br. 5), but the claims are not
limited to dispensing such heavy material.
Third, we do not find that the references relied upon by the Examiner
would teach away from the claimed invention. Although Tan teaches that
5
Appeal 2008-1623
Application 10/322,976

the rotating roll of material is positioned in frictional contacting engagement
with the walls of the container and is not supported at a centered level by
roller means within the container, that does not teach away from the
combination with Letourneau, which teaches the use of a roller means for
centering the rolled material within the dispensing container. The ordinary
artisan would understand the advantages obtained by using such a roller
means to remove the frictional contact with the walls of the container.
In addition, we agree with the Examiner’s analysis that the
combination teaches all of the limitations of claim 1 (Ans. 4-10). Figure 1
of Tan, as annotated by the Examiner (Ans. 6), is reproduced below:

Figure 1 of Tan is drawn to a dispensing container (sleeving device),
which utilizes a shipping box 10 for a roll of sleeving material 22 (Tan, col.
1, l. 67-col. 2, l. 2). Thus, as can be seen by Figure 1, Tan teaches a
dispensing container for a roll of bulk sheet material, comprising: 1) a
container body defined by a plurality of side panels defining therebetween
6
Appeal 2008-1623
Application 10/322,976

an internal chamber dimensioned to rotatably house a roll of sheet material
therein, the container body substantially enclosing the roll of material in a
transportation configuration; 2) at least one container side panel portion
opening to configure the container body into a dispensing configuration in
which an access passageway is exposed substantially at the centered level
opposite the centered roll of material and communicates with the container
chamber and through the passageway a free end of the material may be
withdrawn at the option of a user as the roll of material rotates within the
chamber; and 3) the container side panel portion closing the passageway at
the option of the user to place the container body and the roll of material into
the transportation configuration. Thus, the only limitation that Tan fails to
teach is a roller means for substantially centering the roll of sheet material at
a centered level within the chamber.
Figure 2 of Letourneau, as annotated by the Examiner, is reproduced
below.

Figure 2 of Letourneau is a side elevation of the dispensing container
(casing) of Letourneau, showing a spool in position in the casing
7
Appeal 2008-1623
Application 10/322,976

(Letourneau, col. 2, ll. 22-25). Roller members 21, 22, 23, and 24, are
disposed at of the four corner extremities of the casing in an X-like
configuration (Letourneau, col. 3, ll. 7-15), and thus serve to center the roll
of material within the dispensing container.
As noted by the United States Supreme Court,

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.

KSR, 127 S. Ct. at 1740. The combination of the Examiner demonstrates
that it was known in the art to use roller means for substantially centering
the roll of sheet material at a centered level within the chamber, and thus it
would have been obvious to the ordinary artisan to use such roller means to
prevent the rolled material from coming into frictional contact with the sides
of the dispensing container.
Thus, we conclude that the combination renders obvious the
dispensing container of claim 1, and the rejection is affirmed as to that
claim. As claims 2-5, 10-13, and 16-18 stand or fall with claim 1, the
rejection is affirmed as to those claims as well.
As to claim 7, Appellants assert that supplying Tan with rollers to
dispense roll material is unsupported by Tan, and Letournou does not center
a roll for center feeding of a free edge (Br. 8). Appellants assert that the
Examiner has engaged in hindsight, as neither reference “teaches a centered
free rolling roll of material dispensed from a center of the container.” (Id.)
8
Appeal 2008-1623
Application 10/322,976

Again, Appellants are attacking the references individually. For the
reasons set forth above with respect to the analysis of claim 1, we find that it
would have been obvious to add rollers as taught by Letournou to the
dispensing container of Tan.

Claims 6 and 14 stand rejected under 35 U.S.C. § 103(a) as being
obvious over the combination of Tan and Letourneau, as further combined
with Taylor.
The combination of Tan and Letourneau is relied upon as above (Ans.
4). Taylor is relied upon for teaching “a roll of material including a pivot
shaft 18 having protruding opposing ends and the container body comprises
a slot channel 100 in opposite side panels, each receiving a respective pivot
shaft end therein to center the roll of material with the body chamber.” (Id.)
The Examiner concludes that it “would have been obvious to one of ordinary
skill in the art to provide Tan with protruding shafts, as taught by Taylor . . .,
for the purpose of rotating the mandrel from outside of the chamber.” (Id.)
Appellants reiterate their arguments as to the combination of Tan and
Letourneau (Br. 9). Those arguments are not convincing for the reasons set
forth above with respect to the combination.
Appellants argue further that Taylor buttresses their position as it
teaches a dispensing container that dispenses a sheet of material from the
bottom of the container, and is thus cumulative to Letourneau (Br. 9).
Appellants argue further that Taylor would be inoperative for dispensing a
roll of heavy material, and by teaching that the sole support of the roll
material is the spindle ends actually teaches away from the invention (id.).
9
Appeal 2008-1623
Application 10/322,976

Again, Appellants are attacking the references individually. The
claims do not require dispensing a heavy material. Moreover, it would have
been well within the level of ordinary skill in the art to dispense any material
from any location from the container, as evidenced by Tan, Letourneau, and
Taylor. As noted by the Court in KSR, “[a] person of ordinary skill is also a
person of ordinary creativity, not an automaton.” 127 S.Ct. at 1742.

CONCLUSION
In summary, the rejection of claims 1-5, 7, 10-13, and 16-18 under 35
U.S.C. § 103(a) over the combination of Tan and Letourneau, and the
rejection of claims 6 and 14 under 35 U.S.C. § 103(a) over the combination
of Tan and Letourneau, as further combined with Taylor, are affirmed.
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

Ssc:

WOOD, HERRON & EVANS, LLP
2700 CAREW TOWER
441 VINE STREET
CINCINNATI, OH 45202

10