Walters, Richard S.

Patent Trials and Appeals Board

Jun 24, 2020

2019002787 (P.T.A.B. Jun. 24, 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.
13/284,215 10/28/2011 Richard S. Walters 20815-USA 1023
31743 7590 06/24/2020
Georgia-Pacific LLC
133 Peachtree Street NE
GA030-24
Atlanta, GA 30303
EXAMINER
KUMAR, RAKESH
ART UNIT PAPER NUMBER
3651
NOTIFICATION DATE DELIVERY MODE
06/24/2020 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
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte RICHARD S. WALTERS
Appeal 2019-002787
Application 13/284,215
Technology Center 3600
Before ALLEN R. MacDONALD, DAVID J. CUTITTA II, and
MICHAEL J. ENGLE, Administrative Patent Judges.
ENGLE, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
decision rejecting claims 1–8, 10–17, and 19–24, which are all of the claims
pending in the application. 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(a). Appellant identifies GPCP IP Holdings LLC as the real
party in interest. Appeal Br. 2.
Appeal 2019-002787
Application 13/284,215

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TECHNOLOGY
The application relates to a “dispenser for dispensing cutlery,” such as
sporks. Spec. Abstract, ¶ 19.
ILLUSTRATIVE CLAIM
Claim 1 is illustrative and reproduced below with the limitations at
issue emphasized:
1. A dispenser for dispensing cutlery, the dispenser comprising:
a housing configured to contain a plurality of cutlery
utensils for dispensing;
a dispensing mechanism comprising:
at least one separating member configured to
separate a cutlery utensil from a stack of cutlery utensils,
the at least one separating member comprising:
a top end;
a bottom end positioned opposite the top end;
an unthreaded portion extending from the top
end toward the bottom end and comprising a
cylindrical body configured to extend along one or
more first cutlery utensils of the stack of cutlery
utensils and a circumferential flange projecting
from the cylindrical body, the cylindrical body
having a first diameter, and the circumferential
flange having a second diameter greater than the
first diameter; and
a threaded portion extending from the
unthreaded portion toward the bottom end and
comprising at least one external helical thread
configured to engage one or more second cutlery
utensils of the stack of cutlery utensils, the threaded
portion having a minor diameter equal to the first
diameter and a major diameter greater than the first
diameter; and
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a drive mechanism associated with the at least one
separating member and configured to drive the at least one
separating member; and
a receptacle configured to receive the cutlery utensil
separated from the stack of cutlery utensils.
REFERENCES
The Examiner relies on the following prior art references:
Davis US 5,064,093 Nov. 12, 1991
Fosslien US 4,120,662 Oct. 17, 1978
Phinney US 2,149,099 Feb. 28, 1939
Spatafora US 6,098,379 Aug. 8, 2000
Talmer US 7,731,899 B2 June 8, 2010
REJECTIONS ON APPEAL
Claims 1–7, 10–17, 20–22, and 24 stand rejected under 35 U.S.C.
§ 103(a) as obvious over Phinney, Talmer, and Spatafora. See Final Act. 6,
15 (discussing claim 20); Appeal Br. 11.
Claims 19 and 23 stand rejected under 35 U.S.C. § 103(a) as obvious
over Phinney, Talmer, Spatafora, and Davis. Final Act. 12.
Claims 8 and 10–17 stand rejected under 35 U.S.C. § 103(a) as
obvious over Phinney, Talmer, Spatafora, and Fosslien. Final Act. 14–15.
The rejections under 35 U.S.C. § 112, first and second paragraphs
were withdrawn. Ans. 3.2
ISSUE
Did the Examiner err in finding that a person of ordinary skill in the
art would have had reason to combine Phinney and Spatafora for purposes of
“a circumferential flange projecting from the cylindrical body, the

2 “Ans.” refers to the Examiner’s Answer as amended on February 13, 2019.
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Application 13/284,215

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cylindrical body having a first diameter, and the circumferential flange
having a second diameter greater than the first diameter,” as recited in
claim 1?
ANALYSIS
Independent claims 1, 10, and 24 recite a “cylindrical body” and “a
circumferential flange projecting from the cylindrical body, the cylindrical
body having a first diameter, and the circumferential flange having a second
diameter greater than the first diameter.” This limitation was added after we
previously affirmed an obviousness rejection based on many of the same
prior art references in Appeal No. 2016-002014 (mailed June 12, 2017).
The Examiner finds that “Phinney in view of Talmer do not disclose[]
a circumferential flange projecting from the cylindrical body.” Final Act. 8.
Instead, the Examiner adds a new prior art reference: Spatafora. Id. at 8–9.
Figure 4 of Spatafora is reproduced below.

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Figure 4 of Spatafora depicts a schematic of “a system for the
packaging of food products 4” that includes a “conveyor 2 on which a
plurality of trays 3 are fed.” Spatafora 2:3–16. In Figure 4, “a storage unit
22” can “accumulate a larger number of trays” using “a screw feed means
designed to engage a part of an edge of each tray 3.” Id. at 3:16–38.
Relying on Figure 4, the Examiner finds Spatafora teaches “a
cylindrical body (23) having a first diameter (diameter of 23) and a
circumferential flange (30) projecting from the cylindrical body (23), the
cylindrical body (23) having a first diameter (diameter of 23), and the
circumferential flange (30) having a second diameter (diameter of 30)
greater than the first diameter (diameter of 23).” Final Act. 8–9. The
Examiner further determines:
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 Phinney in view of Talmer to have included a circumferential
flange projecting from the cylindrical body comprising a second
diameter greater than the first diameter of the cylindrical body as
taught by Spatafora because a circumferential flange projecting
from the cylindrical body would provide for an enlarged terminal
end on the separating member.
Final Act. 9 (emphasis added). The Examiner also finds that “the enlarged
terminal end would provide a visual indication as to the maximum size of
the stack that can be inserted into the dispenser or provide an indicator to
designate the terminal end of the separating member.” Ans. 7.
Appellant argues that the Examiner “fails to provide an adequate
reason why one of ordinary skill in the art would have made the asserted
modification.” Appeal Br. 17. In particular, Appellant argues that “the
purpose of the bevel gears 29’, 30’ of Spatafora (identified by the Examiner
as corresponding to the claimed ‘circumferential flange’) is to facilitate
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rotation of the columns 23, not to ‘indicate’ ends of the columns 23, allow
one to ‘easily determine’ a maximum stack size, or allow one to ‘readily
distinguish’ end portions of the columns 23.” Reply Br. 4. Further, “the
upper article supporting member 65 [in Phinney] is not intended to indicate a
maximum stack size of the articles 15 that may be used with the dispenser”
because “the stack of articles 15 extends well above the upper article
supporting member 65.” Id. (citing Phinney Fig. 13). Moreover, “there does
not appear to be any need to provide the upper article supporting member 65
with an additional feature in order to more ‘readily distinguish’ the end
portion of the upper article supporting member 65.” Id.
We agree with Appellant that the Examiner has not sufficiently
explained why a person of ordinary skill in the art would have had reason to
modify Phinney with Spatafora’s bevel gears. In Spatafora, the system
“rotates the columns about their longitudinal axes through corresponding
bevel gear pairs 29, 29' and 30, 30'.” Spatafora 3:34–38. Given the record
before us, the Examiner does not propose modifying Phinney to change its
method of rotation, so the bevel gears would not be fulfilling their primary
purpose of rotation, and Appellant correctly points out that the shape alone
(i.e., an enlarged terminal end) does not appear particularly practical or
beneficial to Phinney’s design, especially given that Phinney’s articles 15
extend above the beginning of member 65. See Phinney Fig. 13; Reply
Br. 4.
Accordingly, on the record before us, we do not sustain the
Examiner’s rejection of independent claims 1, 10, and 24, and their
dependent claims 2–8, 11–17, and 19–23.
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DECISION
The following table summarizes the outcome of each rejection:
Claims
Rejected Statute References Affirmed Reversed
1–7, 10–17,
20–22, 24
§ 103 Phinney, Talmer,
Spatafora
1–7, 10–17,
20–22, 24
19, 23 § 103 Phinney, Talmer,
Spatafora, Davis
19, 23
8, 10–17 § 103 Phinney, Talmer,
Spatafora, Fosslien
8, 10–17
OVERALL 1–8, 10–17, 19–24
REVERSED