Ex Parte Spagnolo

Patent Trial and Appeal Board

Jun 1, 2015

12708538 (P.T.A.B. Jun. 1, 2015)

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.
12/708,538 02/19/2010 Angelina T. Spagnolo 102-1 4672
87897 7590 06/02/2015
Leech Tishman Fuscaldo & Lampl, LLP
100 E Corson Street
3rd Floor
Pasadena, CA 91103
EXAMINER
PERREAULT, ANDREW D
ART UNIT PAPER NUMBER
3788
MAIL DATE DELIVERY MODE
06/02/2015 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte ANGELINA T. SPAGNOLO
____________

Appeal 2013-004951
Application 12/708,538
Technology Center 3700
____________

Before ANNETTE R. REIMERS, WILLIAM A. CAPP, and
ERIC C. JESCHKE, Administrative Patent Judges.

JESCHKE, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Angelina T. Spagnolo (Appellant) seeks review, under 35 U.S.C.
§ 134(a), from the Examiner’s decision to reject claims 1, 2, and 4–16. We
have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

CLAIMED SUBJECT MATTER
The disclosed subject matter relates to “an apparatus to be hung from
a toilet paper spindle configured for dispensing items.” Spec. 2.
Independent claim 1, shown below with emphasis added, is illustrative of the
claims on appeal:
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1. An apparatus for dispensing items:
(a) a flexible pouch for enclosing the items,
the pouch having a sidewall;
(b) a first hoop connected to the pouch, and
a second hoop connected to the pouch, each hoop
configured to receive a toilet paper spindle from
which the pouch hangs, the first hoop spaced apart
from the second hoop enough to provide space for
a toilet paper roll to operate on the toilet paper
spindle while the pouch hangs from the spindle;
(c) a seam formed in the side wall sized for
dispensing the items there through; and
(d) the pouch having a top, the top having an
attachment means disposed thereon for attaching
to an attachable portion of the pouch when folded
while the pouch continues to hang from the toilet
paper spindle.

EVIDENCE RELIED ON BY THE EXAMINER
Aranow US 4,723,300 Feb. 2, 1988
Terramani US 6,241,388 B1 June 5, 2001
Hankinson US 2009/0184024 A1 July 23, 2009

REJECTIONS ON APPEAL
1. Claims 1, 2, and 5–16 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Terramani and Aranow.
2. Claim 4 is rejected under 35 U.S.C. § 103(a) as unpatentable
over Terramani, Aranow, and Hankinson.

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ANALYSIS
Appellant argues the patentability of the independent claims—claims
1, 10, and 16—as a group and does not provide additional arguments for any
dependent claims. See Br. 4–6. We select independent claim 1 as
representative, with the remaining claims standing or falling with claim 1.
See 37 C.F.R. § 41.37 (c)(1)(iv) (2012).
First, Appellant contends that Terramani and Aranow “fail to disclose
or suggest a flexible pouch for enclosing items with a hoop to hang from a
toilet paper spindle that has an attachment means for attaching an attachable
portion of the pouch for folding the pouch while it is still hung from the
toilet paper spindle.” Br. 5. Appellant further states “[f]or example,
Terramani, in the abstract, only suggests that the flexible version of the
apparatus disclosed therein can be folded and stored when not in use, and
not while it is being hung from a toilet paper spindle.” Id.
The Examiner responds “[a]s [A]ppellant admits, the Terramani
device can be folded.” Ans. 12. According to the Examiner, “the device
would be able to perform the intended use of being folded whether the
device was hung or not hung.” Id. The Examiner states that “[i]f the prior
art structure is capable of performing the intended use, then it meets the
claim.” Id.
We are not apprised of error based on the first sentence in Appellant’s
argument set forth above because it merely recites certain language from
clauses (a), (b), and (d) of claim 1 and asserts that the prior art does not
disclose those limitations. See 37 C.F.R. § 41.37(c)(1)(iv) (“A statement
which merely points out what a claim recites will not be considered an
argument for separate patentability of the claim.”); see also In re Lovin, 652
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F.3d 1349, 1357 (Fed. Cir. 2011) (holding that “the Board reasonably
interpreted Rule 41.37 to require more substantive arguments in an appeal
brief than a mere recitation of the claim elements and a naked assertion that
the corresponding elements were not found in the prior art”).
We are also not apprised of error based on Appellant’s contention
regarding Terramani. “It is well settled that the recitation of a new intended
use for an old product does not make a claim to that old product patentable.”
In re Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997). Here, the fact that
Terramani does not disclose the specific use or functions recited in clause
(d)—i.e., folding the device “while the pouch continues to hang from the
toilet paper spindle”—does not demonstrate error because Appellant has not
shown that clause (d) structurally distinguishes over the proposed
combination of prior art. See id. at 1477–79. Further, Appellant has not
asserted error in the finding (Ans. 12) that the Terramani device is inherently
capable of performing the use or functions recited.1
Second, Appellant contends that Terramani and Aranow “fail to
disclose or suggest a ‘first hoop spaced apart from the second hoop enough
to provide space for a toilet paper roll to operate on the toilet paper spindle
while the pouch hangs from the spindle’ as required by each of the claims as
they stand.” Br. 5.
The Examiner responds that the identified “hoops” (elements 14 in
Terramani) are “flexible and spaced apart enough to provide space for a
toilet paper roll.” Ans. 13. According to the Examiner, the use with a toilet
paper roll is “recited in the claims as [an] intended use and a recitation of the

1 Appellant did not file a reply brief.
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intended use of the claimed invention must result in a structural difference
between the claimed invention and the prior art in order to patentably
distinguish the claimed invention from the prior art.” Id. The Examiner
states that the device in Terramani is capable of performing the claimed
intended use, and therefore satisfies clause (b). Id.
We are not apprised of error based on Appellant’s argument because it
merely recites certain language from clause (b) and asserts that the prior art
does not disclose those limitations. See 37 C.F.R. § 41.37(c)(1)(iv); Lovin,
652 F.3d at 1357. Accordingly, Appellant has not demonstrated error in the
factual findings or reasoning set forth by the Examiner. See Ans. 3–4, 13.
Third, Appellant argues that the Examiner failed to set forth a prima
facie case of obviousness by failing to provide “motivation for modifying
Terramani’s hard inflexible hanging box only meant to hang from a shower
soap dish or shower head with the diaper purse in Aranow not meant to hang
from anything but the arm of a parent to change diapers.” Br. 5. According
to Appellant, it would not have been obvious “to replace Terramani’s hard
inflexible hanging box with the diaper bag of Aranow because it would be
directly contrary to the whole purpose of the system of Aranow to provide a
diaper purse that folds out to provide a changing service for human babies.”
Id. In addition, Appellant contends that the Examiner “provid[ed] no
structural method by which the two systems of [Terramani and Aranow]
could be combined” and failed to “demonstrate[e] how one skilled in the art
would merge the two structures.” Id. at 6.
The Examiner responds “[a]s Appellant has previously admitted, the
Terramani device can be folded, and therefore must be flexible.” Ans. 14.
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The Examiner provides the following reasoning to modify Terramani in
view of Aranow:
It would have been obvious to one of ordinary skill in the art at
the time of the invention to modify Terramani in view of
Aranow, including the top having an attachment means
disposed thereon for attaching to an attachable portion of the
pouch, to allow the device to be properly closed with fasteners
while in the rolled or folded position.
Id. (citations omitted). The Examiner states that “the test for obviousness is
not whether the features of a secondary reference may be bodily
incorporated into the structure of the primary reference; nor is it that the
claimed invention must be expressly suggested in any one or all of the
references” but rather “what the combined teachings of the references would
have suggested to those of ordinary skill in the art.” Id. (citing In re Keller,
642 F.2d 413 (CCPA 1981)). The Examiner states, “the attachment means
(54) of Aranow is merely provided and not the entire diaper purse.” Id.
We are not apprised of error based on Appellant’s third set of
arguments generally for the reasons set forth by the Examiner, with some
additional comments. A conclusion of obviousness must be supported by
findings and analysis establishing a reason to combine the known elements
in the manner required in the claim at issue. KSR Int’l Co. v. Teleflex Inc.,
550 U.S. 398, 418 (2007). The analysis, however, “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.” Id. “Common sense
teaches . . . that familiar items may have obvious uses beyond their primary
purposes, and in many cases a person of ordinary skill will be able to fit the
teachings of multiple patents together like pieces of a puzzle.” Id. at 420.
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Although Aranow discloses the use of its device in a different setting, we see
no error in the findings (Ans. 4, 14) that one of ordinary skill in the art
would have had reason to modify Terramani in view of Aranow.
For the reasons set forth above, we sustain the decision to reject
independent claim 1, and claims 2 and 4–16 falling with claim 1, as
unpatentable over the combined teachings relied upon by the Examiner.

CONCLUSION
For the reasons set forth above, we AFFIRM the decision to reject
claims 1, 2, and 4–16 under 35 U.S.C. § 103(a).
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
JRG