Ex Parte Siebel

Patent Trial and Appeal Board

Oct 25, 2017

13616904 (P.T.A.B. Oct. 25, 2017)

United States Patent and Trademark Office
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
13/616,904 09/14/2012 Justin Franklin Siebel 049121-0225-00-US-489786 3571
105855 7590 10/27/2017
Drinker Biddle & Reath LLP
1500 K Street NW, Suite 1100
Washington, DC 20005
EXAMINER
KUMAR, RAKESH
ART UNIT PAPER NUMBER
3651
NOTIFICATION DATE DELIVERY MODE
10/27/2017 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):
DB RIPDocket @ dbr. com
penelope. mongelluzzo @ dbr. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JUSTIN FRANKLIN SIEBEL
Appeal 2015-007718
Application 13/616,904
Technology Center 3600
Before KEN B. BARRETT, EDWARD A. BROWN, and
LEE L. STEPINA, Administrative Patent Judges.
BARRETT, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Justin Franklin Siebel (Appellant) seeks our review under 35 U.S.C.
§ 134 of the Examiner’s rejection of claims 1—3, 5—12, and 21—25. We
heard oral argument on September 20, 2017. We have jurisdiction under 35
U.S.C. § 6(b).
We REVERSE.
Appeal 2015-007718
Application 13/616,904
THE INVENTION
Appellant’s claimed invention pertains to “dispensers and, more
particularly, to dispensers of napkins and other paper products.” Spec. 11.
Claims 1 and 21 are independent claims. Claim 1, reproduced below, is
illustrative of the subject matter on appeal1 2.
1. A dispenser of paper products, comprising:
a plurality of walls defining an interior of said dispenser,
said interior being configured to store the paper products;
a pair of dispensing mouths at oppositely disposed ones of
said walls, said dispensing mouths being configured to provide
access to the paper products in said interior;
a biasing member and a pair of support elements in said
interior, said support elements being configured to support the
products there against, said biasing member urging each of said
support elements toward a respectively adjacent one of said
dispensing mouths; and
a plurality of guiding elements in said interior of the
dispenser configured to maintain an orientation of said support
elements during inward and outward movement thereof,
wherein:
the dispenser has a geometric center defined by the
distance between said dispensing mouths,
each of said support elements is configured to move
outwardly toward one of said dispensing mouths and inwardly
away from said one of said dispensing mouths, and
1 For purposes of deciding this appeal, we review the claims as set forth in
the Appendix to the Appeal Brief. We understand that the After-Final
Amendment dated September 18, 2014, was entered notwithstanding the
checked box No. 3 on the Advisory Action of October 22, 2014, indicating
that the amendment would not be entered. See Advisory Action (10/22/14)
(checked box No. 7 and continuation page indicating the amendment will be
entered); Amendment After Final (as Annotated; filed 10/22/14) (containing
the annotation “OK TO ENTER”); see also App. Br. 1 (Appellant indicating
the understanding that the amendment was entered).
2
Appeal 2015-007718
Application 13/616,904
at least one of said support elements is free to travel
inwardly to reach at least the geometric center.
App. Br., Claims Appendix A-l.
THE REJECTIONS
The following Examiner’s rejections are before us for review:
1. Claims 1—232 are rejected under 35 U.S.C. § 102(b) as being
unpatentable over Gessler (US 2,011,403, iss. Aug. 13, 1935); and
2. Claims 1—3, 5—12, and 21—25 are rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Gessler and LaCount (US 6,257,443 Bl,
iss. July 10, 2001).
ANALYSIS
A. The Anticipation Rejection
The Final Action (Aug. 5, 2014) contains a stated ground of rejection
of claims 1—23 as anticipated by Gessler. Final Act. 4. Neither the Final
Action nor the Answer contains a further discussion of the rejection. See id.;
Ans. passim. Appellant challenges the rejection, arguing that the Examiner
has failed to explain how Gessler discloses all the limitations of the rejected
claims. App. Br. 4; see also id. (noting that the Examiner, in the
obviousness rejection, states that the plurality of guiding elements feature is
missing from Gessler).
2 We recognize that not all of claims 1—23 are before us on appeal, with
claims 4 and 13—20 having been withdrawn from consideration. See Final
Act. 1. We, nonetheless, identify the ground of rejection as that stated by
the Examiner. See id. at 4.
3
Appeal 2015-007718
Application 13/616,904
To the extent that this anticipation rejection has not been withdrawn,
we cannot sustain the rejection as it lacks any discussion or analysis by the
Examiner for our review.
B. The Obviousness Rejection
The claimed invention pertains to a paper product (e.g., napkin)
dispenser having a biasing member (e.g., a spring) urging support elements
or platens, which support the paper products, toward a dispensing opening.
The Examiner finds that Gessler discloses much of the claimed invention of
independent claim 1, but fails to disclose a plurality of guiding elements in
the interior of the dispenser to maintain an orientation of the support
elements. Final Act. 6. The Examiner turns to LaCount for that feature,
reasoning:
It would have been obvious to one of ordinary skill in the art at
the time the invention was made to have modified the teachings
of Gessler to have included a plurality of guiding elements in the
interior of the dispenser to maintain an orientation of said support
elements as taught by LaCount because the position of said
support elements can be guided as they are biased in an engaged
position and assuring the support elements do not become
twisted within the dispenser.
Id. at 7.
Gessler discloses a napkin dispenser formed from a single paper blank
and a spring. Gessler, 2, col. 1,11. 32—35; Fig. 5. Gessler’s dispenser is
designed to be inexpensive and disposable, and to have the benefit of being
able to be shipped in a flat form. Id. at 1, col. 1,11. 2—5, 15—25. LaCount
discloses a more substantial napkin holder having apertures 64 in the bottom
of the dispenser into which is fitted insert 70 made of, e.g., plastic, and
having two spaced-apart pairs of legs 74. LaCount, col. 3,11. 51—56. An
4
Appeal 2015-007718
Application 13/616,904
aperture in the insert acts as a guide channel for plates 54 and 56, which
support the napkins. Id.; see Figs. 3, 5, 7. The Examiner finds that
components of the insert correspond to the claimed guiding elements. Final
Act. 6.
We are not persuaded that the Examiner has provided adequate
reasoning with rational underpinning as to why one of ordinary skill would
have modified Gessler’s dispenser to have an aperture and the inserts of
LaCount. See App. Br. 5—7. The reasoning as to why one would add
guiding elements so the support elements of Gessler can be guided is
circular, and there does not appear in the record or in the Examiner’s
explanation that there was a need to avoid twisting of the support elements
that would prompt one to modify Gessler’s napkin dispenser. Without more,
we cannot sustain the rejection of independent claim 1 as obvious over
Gessler and LaCount.
Independent claim 21 recites similar pertinent features with different
labels—platens and tracks. Accordingly, we also cannot sustain the
rejection of independent claim 21, or of the remaining rejected claims, which
depend from either claim 1 or claim 21.
DECISION
The decision of the Examiner to reject claims 1—3, 5—12, and 21—25 is
reversed.
REVERSED
5