Paul Bui Vinh. Tran

Patent Trials and Appeals Board

Oct 31, 2019

13983482 - (D) (P.T.A.B. Oct. 31, 2019)

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.
13/983,482 08/02/2013 Paul Bui Vinh Tran SW8-108 US-WO 1019
116840 7590 10/31/2019
Paul Tran
23679 Calabasas Road, Suite 943
Calabasas, CA 91302
EXAMINER
KUMAR, RAKESH
ART UNIT PAPER NUMBER
3651
MAIL DATE DELIVERY MODE
10/31/2019 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 PAUL BUI VINH TRAN
____________

Appeal 2018-003578
Application 13/983,482
Technology Center 3600
____________

Before PHILIP J. HOFFMANN, AMEE A. SHAH, and
ROBERT J. SILVERMAN, Administrative Patent Judges.

SILVERMAN, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
The Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
decision rejecting claims 87, 101–107, 112, and 113.2 We have jurisdiction
under 35 U.S.C. § 6(b).
We REVERSE.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. The Appellant identifies Napabe, LLC as the real party in
interest. Appeal Br. 3.
2 Portions of the Appeal Brief indicate that dependent claims 88–92
and 108–111 might be included in this Appeal. See Appeal Br. 5, 9. The
Appellant had canceled these claims. See Response to Office Action
(Aug. 17, 2016) 2–3, 5. See also Answer 3, 6.
Appeal 2018-003578
Application 13/983,482

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ILLUSTRATIVE CLAIM
87. A sheet dispenser for dispensing a sheet from a stack
of interleaved sheets of material, comprising
a housing for holding a container for said stack, said
housing having a top wall which is adjacent to and parallel to a
top wall of said container,
wherein said top wall of said housing cooperates with
said top wall of said container to form a space therebetween
which is sufficient to allow said sheet to travel therein in a
direction which is parallel to said top wall of said container to
exit said housing, said space is about 0.5 to about 1-inch in
height.
CITED REFERENCES
The Examiner relies upon the following references:
Trenner US 1,208,701 Dec. 21, 1916
Sigl et al. US 4,638,921 Jan. 27, 1987
(hereinafter “Sigl”)
REJECTION
Claims 87, 101–107, 112, and 113 are rejected under 35 U.S.C.
§ 103(a) as unpatentable over Trenner and Sigl.
FINDINGS OF FACT
The findings of fact relied upon, which are supported by a
preponderance of the evidence, appear in the following Analysis.
ANALYSIS
The outcome of this Appeal turns on whether the prior art teaches or
suggests claim 1’s limitation of “said space is about 0.5 to about 1-inch in
height.” The Examiner states:
Although, Trenner fully discloses a space between the
top wall of the housing . . . and the container top wall . . . for
Appeal 2018-003578
Application 13/983,482

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allowing the sheet product to move therein towards the outlet of
the dispenser, Trenner does not specifically disclose the space is
about 0.5 to 1.0 inches in height.
Final Action 4. See also Answer 7. Nevertheless, the Examiner provides
the following explanation for the prior art’s suggestion of claim 1’s
limitation of a container having a “space” between the “housing” and the
“top wall,” wherein the “space is about 0.5 to about 1-inch in height”:
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 Trenner in view of Sigl to have adjusted the space
between the top wall of the housing and the top wall of the
container to comprise a space in a range of about 0.5 to 1.0
inches in height, since it has been held that where the general
conditions of a claim are disclosed in the prior art, discovering
the optimum or workable ranges involves only routine skill in
the art. [In re Aller, 220 F.2d 454 (CCPA 1955)].
Final Action 4.
The Examiner relies upon the principle, set forth in Aller, 220 F.2d
at 456, that “where the general conditions of a claim are disclosed in the
prior art, it is not inventive to discover the optimum or workable ranges by
routine experimentation.” Yet, an “exception” to this principle exists
“where the parameter optimized was not recognized in the prior art as one
that would affect the results.” Ex parte Whalen II, 2008 WL 2957928, at *8
(BPAI July 23, 2008) (precedential) (citing In re Antonie, 559 F.2d 618, 620
(CCPA 1977)).
Here, the Examiner has not pointed to any teaching in the cited
references, or provided any explanation based on technical reasoning, that
would support the conclusion that those skilled in the art would have
considered it obvious to attain an optimum or workable dimension for the
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Application 13/983,482

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claimed “space” in the recited range of “about 0.5 to about 1-inch.” See
Appeal Br. 8. Notably, the Appellant points out that Trenner characterizes
the corresponding portion of the identified embodiment as a narrow passage,
so as to maintain an environment free from contaminants. Id. at 7–8.
Indeed, consistent with the purpose described in the reference, Trenner
indicates that the dispensing passage should be narrow:
[M]y invention, as has been explained, relates to a container
from which sterile material is dispensed through a passage
which prevents the entrance into the container of pathogenic
organisms, and deleterious or infectious insects or dust.
Whatever form my container takes for the several uses to which
it is adapted, it consists of what may be termed a closed casing
within which the sterile articles are held, this casing being
provided with an exit passage which, broadly speaking,
prevents the entrance into the container of pathogenic
organisms, dust-laden air, etc. This passage may take the form
of a relatively long, narrow or thin duct either between walls
which are relatively rigid, though yielding, or between walls
which are quite yielding. In the first form the passage is
arranged so that the material in being taken therethrough moves
in a downwardly direction for the purpose of better preventing
the entrance into the container of pathogenic organisms, etc.
Trenner 3, ll. 96–119.
Because the Examiner has not adequately established the predicate
findings necessary to rely upon the cited principle of Aller, we do not sustain
the rejection of independent claim 87 and its dependent claims 101–107,
112, and 113.
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Application 13/983,482

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CONCLUSION
In summary:
Claims
Rejected
35 U.S.C. § Basis Affirmed Reversed
87, 101–107,
112, 113
103(a) Trenner, Sigl 87, 101–107,
112, 113
Overall Outcome 87, 101–107,
112, 113

REVERSED