GPCP IP Holdings LLC

Patent Trials and Appeals Board

Feb 12, 2020

14595694 - (D) (P.T.A.B. Feb. 12, 2020)

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.
14/595,694 01/13/2015 Jared Steven Felix 30349 (38201-0254) 3527
109963 7590 02/12/2020
GP-Eversheds Sutherland (US) LLP
999 Peachtree Street, NE
Suite 2300
Atlanta, GA 30309
EXAMINER
KUMAR, RAKESH
ART UNIT PAPER NUMBER
3651
NOTIFICATION DATE DELIVERY MODE
02/12/2020 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):
gplawpatents@gapac.com
koch_PAIR@firsttofile.com
patentdocket@eversheds-sutherland.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte JARED STEVEN FELIX and PAUL JAMES RUTHVEN

____________

Appeal 2019-004404
Application 14/595,694
Technology Center 3600
____________

Before CHARLES N. GREENHUT, WILLIAM A. CAPP, and
MICHAEL L. WOODS, Administrative Patent Judges.

CAPP, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant1 seeks our review under 35 U.S.C. § 134(a) of the final
rejection of claims 1, 5, 23, and 37–39 as unpatentable under 35 U.S.C.
§ 103 over Yamaura (JP 2000043960 A, pub. Feb. 15, 2000) and Hotchkiss
(US 4,411,374, iss. Oct. 25, 1983) and claims 2–4 over Yamaura, Hotchkiss,
and Hallam (US 2012/0223093 Al, pub. Sept. 6, 2012). We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM and enter a NEW GROUND OF REJECTION pursuant
to our authority under 37 C.F.R. § 41.50(b).

1 We use the word “Appellant” to refer to “Applicant” as defined in 37
C.F.R. § 1.42(a). Appellant identifies GPCP IP Holdings LLC as the
Applicant and real party in interest. Appeal Br. 2.
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THE INVENTION
Appellant’s invention relates to dispensing systems for paper towels
and the like. Spec. ¶¶ 102–03. Claim 1, reproduced below, is illustrative of
the subject matter on appeal.
1. A sheet product dispensing system, comprising:
a housing having one or more vertically stacked cartridges
therein, each cartridge containing a plurality of individual sheet
products for dispensing through a dispensing opening of the
cartridge,
wherein the housing defines a load opening in a side panel
or top end of the housing, the load opening being configured to
receive the one or more cartridges therethrough,
wherein the housing defines a dispensing slot in a side panel
or bottom end of the housing, the dispensing slot being
configured to at least partially align with the dispensing
opening of a bottommost cartridge of the one or more vertically
stacked cartridges, such that the individual sheet products are
accessible therethrough, and
wherein the cartridges are each formed of a flexible panel
material, such that the cartridge does not maintain its shape
when empty of sheet products so that an exhausted cartridge is
removable from the housing via the dispensing slot.
OPINION
Unpatentability of Claims 1, 5, 23, and 37–39
over Yamaura and Hotchkiss
Claim 1
The Examiner finds that Yamaura discloses the invention substantially
as claimed except for flexible cartridge materials, for which the Examiner
relies on Hotchkiss. Final Action 5–6. The Examiner concludes that it
would have been obvious to a person of ordinary skill in the art at the time
the invention was made to use cartridges made of flexible materials in
Yamaura. Id. at 6. According to the Examiner, a person of ordinary skill in
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the art would have done this to reduce the cost of a replacement cartridge.
Id.
Appellant argues that an advantage of the invention is that
replacement cartridges may be loaded without any delay for removal of
unused cartridges that may be vertically stacked above the exhausted
cartridge. Appeal Br. 7. However, claim 1 may be satisfied by a dispensing
system that only accommodates a single cartridge. Claims App. claim 1 (“a
housing having one or more vertically stacked cartridges therein”). The “or
more” language indicates an optional feature that does not limit the claim.
In re Johnston, 435 F.3d 1381, 1384 (Fed. Cir. 2006) (“As a matter of
linguistic precision, optional elements do not narrow the claim because they
can always be omitted”). Thus, Appellant’s argument is not commensurate
with the scope of the claim.
Appellant next argues that Yamaura fails to provide any guidance as
to how one would modify its dispenser to provide for dispensing from
flexible cartridges. Id. at 8. This argument is not persuasive. Yamaura
discloses a dispensing system for tissue paper boxes. Yamaura, Abstract;
Figs. 1–8. A person of ordinary skill in the art would understand that tissue
boxes are loaded into the top of Yamaura’s dispenser, after which tissues are
eventually dispensed through slot 6. Id. Gravity would operate on a soft-
sided cartridge to lower it into the dispensing position in much the same way
that a typical tissue box would be lowered into the dispensing position. The
path traveled by the cartridges is, more-or-less, a straight line and the
distance traveled by the cartridges is only about 2 cartridge widths. Id.
Fig. 6. We are not apprised of any technological challenges that would be
encountered if Yamaura’s dispenser is loaded with soft-sided cartridges
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instead of more rigid, for example, paperboard cartridges. Essentially, all an
operator needs to do is place a cartridge above the opening on the top of the
dispenser and then let go of it so that it can fall, by gravity, into position.
Appellant provides neither evidence nor persuasive technical reasoning as to
why a person of ordinary skill in the art would need additional guidance to
make and use a Yamaura dispenser with a soft-sided cartridge.
Next, Appellant argues that Hotchkiss teaches that its cartridge is
removed through a side opening. Appeal Br. 10. In response, the Examiner
points out that Hotchkiss’ cartridge is capable of being removed through the
dispenser opening. Ans. 8.
We note that the claim at issue is an apparatus claim, not a method
claim. Claims App. It is well settled that where all the structural elements
of a claim exist in a prior art product, and that prior art product is capable of
satisfying all functional or intended use limitations, the claimed invention is
nothing more than an unpatentable new use for an old product. In re
Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997). The claim limitation at
issue here is “removable” or, in other words, that the cartridge is capable of
being removed from the housing via the dispensing slot. Claims App. Thus,
our focus here is not on whether Hotchkiss teaches the use of a side opening
but rather whether Hotchkiss’s cartridge is capable of being removed from
the dispenser of Yamaura via the dispensing slot.
Appellant next argues that Hotchkiss teaches cartridges that are too
rigid to be removed through a dispenser opening. Appeal Br. 11. Appellant
argues that the cartridges are necessarily rigid to prevent collapse. Id.
According to Appellant: “Hotchkiss's reinforcing plastic strut prevents
removal of an exhausted cartridge through its dispensing slot.” Id. In
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response, the Examiner points out that the strut of Hotchkiss only prevents
collapse until the last tissue is removed. Ans. 9.
In Hotchkiss, a stack of tissues is dispensed through perforated
opening 14 in film overwrap 16. Hotchkiss, Fig. 2, col. 4, ll. 28–38. The
tissue is further threaded through dispensing slot 18 in a face plate of
dispenser cabinet 20. Id. The front face of the overwrap is maintained at the
front side of the cabinet by tensile forces attributable to the interaction
between curled edges of the tissues and plastic overwrap protruding through
dispensing slot 18. Id. col. 6, l. 5 – col. 7, l. 8. According to Hotchkiss:
Backface 16b of package 16 includes I-shaped, plastic strut 30
formed by sealed seam 23 best seen in FIG. 3e extending the
length of the package and two side seals 24--24 extending the
width of the package. Strut 30 provides structural strength to
the backface of the package which prevents the backface of
package 16 from collapsing. Strut 30 cooperatively interacts
with the compressive forces originating from the truncated hip
roof shape front face to provide a structure which extends away
from slot 18 of the dispensing cabinet and which maintains the
clip upright and steady until the last tissue is removed.
Id. col. 5, ll. 15–27.
As the clip becomes depleted the sealed seam 23 and the sealed
ends 24--24 forming the I-shape, plastic strut 30 in the walls of
the back face 16b of the overwrap package provides structural
strength to the back half of the package which prevents the
plastic from collapsing, and causing the plastic walls to sag,
hindering the dispensing of the interleaved tissues. It is believed
the I-shape strut 30 also has the unusual effect of aiding in
keeping the nearly deleted clip from collapsing since the clip
remains upright and steady until the last tissue is removed from
package 16.
Id. col. 7, ll. 9–20; see also Figs. 3a–f, 4a–d. The foregoing passages and
referenced Figures of Hotchkiss support, by a preponderance of the
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evidence, the Examiner’s findings of fact that Hotchkiss’s cartridge, once it
is exhausted, is sufficiently collapsed, or at least collapsible, that it can be
removed through dispensing slot 18 of cabinet 20.
In reaching our determination, it bears mention that Appellant
provides little or no teaching disclosure regarding the composition and
structure of the material panels that comprise the claimed cartridge.
Appellant merely makes passing mention of the fact that cartridges are
formed of a “flexible panel material” so that an empty cartridge may be
removed in the same manner in which the sheet products are dispensed.
Spec. ¶¶ 146, 170, 194. Appellant also mentions that flexible panel
materials may be composed of a polymer film such as low density
polyethylene. Id. ¶ 146. There is no additional detailed teaching disclosure
about how to make the panel material sufficiently rigid so that the cartridge
maintains its shape until it is empty and then becomes sufficiently flexible so
that the cartridge may be removed through the dispenser opening. The most
reasonable conclusion to draw from such a lack of teaching disclosure is that
Appellant, in drafting the Specification, understood that such was a matter
that was already well within the ambit of ordinary skill, as specifically found
by the Examiner. Final Action 7; see also Streck, Inc. v. Research &
Diagnostic Sys., Inc., 665 F.3d 1269, 1288 (Fed. Cir. 2012) (explaining that
a patent need not teach, and preferably omits, what is well known in the art).
We sustain the Examiner’s unpatentability rejection of claim 1.
Claims 5, 23, and 39
Appellant does not argue for the separate patentability of claims 5, 23,
and 39 apart from arguments presented with respect to claim 1, which we
have previously considered. We sustain the Examiner’s rejection of
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claims 5, 23, and 39. See 37 C.F.R. § 41.37(c)(1)(iv) (failure to separately
argue claims constitutes a waiver of arguments for separate patentability).
Claim 37
Claim 37 depends from claim 1 and adds the limitation: “wherein the
housing is closed other than the load opening and the dispensing slot.”
Claims App. The Examiner finds that Yamaura’s Figure 7 discloses the
closed housing. Final Action 8.
Appellant disagrees, and argues that Yamaura, in addition to having a
load opening and a dispensing slot, also has an opening for advancing a
spent cartridge and another opening provides an exit path for the spent
cartridge. Appeal Br. 16. We have reviewed Figures 1, 4, 5, 7, and 8 of
Yamaura and agree with Appellant that Yamaura’s housing is not closed on
all six sides except for two openings. Yamaura, Figs. 1, 4, 5, 7, and 8.
Nevertheless, it would have been obvious to modify Yamaura’s
housing to arrive at the claimed housing. The additional two openings
identified by Appellant are utilized for removing an empty, exhausted
cartridge from Yamaura’s housing. Id. The Examiner’s proposed
modification of Yamaura provides for an empty, flexible cartridge to be
removed through the dispenser opening, thereby obviating any need for the
additional openings. Final Action 5–7.
It is well settled that merely omitting an element and its function in a
combination where the remaining elements perform the same functions as
before involves only routine skill in the art. In re Karlson, 311 F.2d 581,
584 (CCPA 1963). Thus, the fact that Appellant’s claim dispenses with the
two additional, but otherwise unnecessary, openings does not impart
patentability to Appellant’s invention.
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Consequently, we sustain the Examiner’s unpatentability rejection of
claim 37. However, inasmuch as our reasoning departs somewhat from that
of the Examiner, we designate our affirmance as a NEW GROUND OF
REJECTION so as to provide Appellant with an opportunity to react to the
thrust of the rejection. See In re Biedermann, 733 F.3d 329, 337 (Fed.
Cir. 2013) (explaining that an applicant is entitled to a fair opportunity to
react to the thrust of a rejection).
Claim 38
Claim 38 depends from claim 1 and adds the limitations:
wherein
each cartridge comprises a pair of opposed rectangular side
panels that lie in planes perpendicular to a plane in which the
panel in which the dispensing opening of the cartridge is
disposed, and
each of the opposed rectangular side panels comprises a flat
panel surface.
Claims App.
Appellant argues that Hotchkiss features protruding seals 24 on each
side of its cartridge and, therefore, the cartridge does not have “flat” panel
surfaces as claimed. Appeal Br. 18.
Appellant’s argument is not persuasive. During examination of a
patent application, pending claims are given their broadest reasonable
construction consistent with the specification. In re Am. Acad. of Sci. Tech
Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). Under the broadest reasonable
interpretation standard, claim terms are given their ordinary and customary
meaning as would be understood by one of ordinary skill in the art in the
context of the entire disclosure. In re Translogic Tech., Inc., 504 F.3d 1249,
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1257 (Fed. Cir. 2007). In the instant case, we are dealing with the packaging
art. Appellant’s Specification teaches that:
In one embodiment, at least two of the material panels are
formed from a unitary material sheet that is folded to form
distinct panels about the surfaces of the stack of sheet products.
In certain embodiments, as shown in FIG. 8, each of the
plurality of material panels 810, 820, 830, 840, 850, 860 is
formed from a unitary material sheet that is foldable to form the
cartridge 800. In other embodiments, the plurality of material
panels includes at least two distinct material panels that are
associated or connected to form the cartridge.
Spec. ¶ 142, Fig. 8. Thus, a person of ordinary skill in the art would have
understood that packages are routinely made by starting with a flat piece of
material (sometimes referred to as a blank) and then folding, bending, or
wrapping that flat piece of material to form an enclosure. Id. Completion of
the packaging enclosure frequently entails overlapping material at or near
their edges to form a joint, seam, or seal which edges are joined such as by
adhesive, heat sealing, etc. A person of ordinary skill in the art would
understand that de minimis departures from a perfectly flat surface in order
to accommodate joints, seams, and seals would nevertheless fall within the
scope of “flat panel surface” as it is used in claim 38.
We sustain the Examiner’s unpatentability rejection of claim 38.
Unpatentability of Claims 2–4
over Yamaura, Hotchkiss, and Hallam
Claim 2 depends from claim 1 and adds the limitation: “wherein the
dispensing slot is sized such that a detachable area of the cartridge is
removable therethrough, to form the dispensing opening of the cartridge,”
for which the Examiner relies on Hallam. Claims App.; Final Action 10–11.
Appellant’s brief fails to comply with our rules regarding arguing claims
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under separate subheadings. See 37 C.F.R. § 41.37(c)(1)(iv) (“any claim(s)
argued separately . . . shall be argued under a separate subheading that
identifies the claim(s) by number”). As near as we are able to determine,
Appellant appears to devote pages 13–16 of the Appeal Brief to arguments
for claim 2.
Appellant traverses the rejection by arguing that Hallam discloses a
cartridge, not a housing of a dispenser as claimed. Appeal Br. 14. In
response, the Examiner finds that Hallam discloses a cartridge (20) that is
inserted into a dispenser (50). Ans. 10. The Examiner further notes that
upon removal of surfboard (54) from dispenser housing (5), a dispensing slot
is created. Id. The Examiner further finds that detachable area (34) is
removed through the dispensing slot in housing (50). Id.
With reference to Figures 6 and 7 thereof, Hallam teaches the
following:
The operation of the carton 10 will now be discussed with
reference to FIGS. 6 and 7. In one embodiment the carton 10 is
opened by removing the surfboard 54 which is defined by a line
of weakness 56, such as a line of perforations or the like.
Preferably the surfboard 54 has a finger tab 57 to facilitate
removal. Removal of the surfboard 54 forms a carton opening
51 and exposes the overwrapped package 20 of compressed
tissues, which may contain, in a preferred embodiment, from
about 50 to about 200 tissues. The user opens the overwrapped
package 20 by grasping the finger tab 34 and removing the tear
strip 30, which separates along the lines of weakness 32 to form
a dispensing opening in the overwrap through which tissues
may be dispensed.
Hallam ¶ 33. Appellant’s effort to characterize element 10 of Hallam as
something other than a dispenser is off the mark. Appeal Br. 14. It is well
settled that a reference need not satisfy an ipsissimis verbis test. In re
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Gleave, 560 F.3d 1331, 1334 (Fed. Cir. 2009). For purposes of the instant
rejection, particularly in light of what Yamaura and Hotchkiss already teach,
overwrapped package of compressed tissues 20 of Hallam may be
considered reasonably to correspond to Appellant’s cartridge and Hallam’s
carton 10 may be considered reasonably to correspond to Appellant’s
housing. Hallam, Fig. 6. The Examiner’s finding that Hallam’s detachable
area is removable through a dispensing slot that is sized to accommodate
such removal is supported by the record before us. Id. ¶ 33, Fig 6.
Appellant argues that person of ordinary skill in the art would not
have been motivated to modify Yamaura and Hotchkiss by the teachings of
Hallam. Appeal Br. 15–16.
Hallam' s teachings regarding fully enclosed, rigid cartridges
having a detachable surfboard do not provide any teaching
relevant to the housing of Yamaura and the cartridges of
Hotchkiss. A person of ordinary skill in the art would not have
had any reason to modify the references in the way proposed by
the Examiner, absent improper hindsight reconstruction based
on Appellant's claims and application.
Id.
In the final rejection, the Examiner states that a person of ordinary
skill in the art would have modified the prior art as proposed because the
detachable panel could be removed while the cartridge resides in the
dispenser. Final Action 10–11. As we understand the Examiner’s
reasoning, a plurality of tissue cartridges, each with a removable surfboard
as taught by Hallam, could be stored in Yamaura’s dispenser, but the
surfboard need not be removed until previously used, exhausted cartridges
are removed, and the replacement cartridge stacked vertically in the
dispenser (Yamaura, top two element 10’s in Figure 6) drops into alignment
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with dispenser opening 6. See Yamaura, Fig. 6. A common sense, obvious
advantage to this would be to maintain the tissues in a more sanitary
condition until they are needed. The Examiner’s reasoning is sufficient to
support the rejection. See In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)
(requiring an obviousness conclusion to be based on explicit articulated
reasoning with rational underpinning) cited with approval in KSR Int’l Co. v.
Teleflex Inc., 550 U.S. 398, 418 (2007).
We sustain the Examiner’s unpatentability rejection of claim 2.
Claims 3 and 4
These claims are not separately argued and fall with claim 2. 37
C.F.R. § 41.37(c)(1)(iv).

CONCLUSION
In summary:
Claims
Rejected
§ Reference(s) Aff’d Rev’d New
Ground
1, 5, 23,
37-39
103 Yamaura, Hotchkiss 1, 5, 23,
37-39
37
2-4 103 Yamaura, Hotchkiss,
Hallam
2-4
Overall
Outcome
1-5, 23,
37-39
37

TIME PERIOD FOR RESPONSE
This decision contains a new ground of rejection pursuant to
37 C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides “[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review.”
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37 C.F.R. § 41.50(b) also provides that the Appellant, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new ground of rejection to
avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new Evidence relating
to the claims so rejected, or both, and have the matter
reconsidered by the examiner, in which event the proceeding
will be remanded to the examiner. . . .
(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same Record. . . .

Further guidance on responding to a new ground of rejection can be
found in the Manual of Patent Examining Procedure § 1214.01.
AFFIRMED; 37 C.F.R. 41.50(b)