Ex Parte Dato et al

Patent Trial and Appeal BoardMay 22, 2013

11602695 (P.T.A.B. May. 22, 2013)

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. 11/602,695 11/20/2006 Kim J. Dato JDATO.001DV1C1 8672 27299 7590 05/22/2013 GAZDZINSKI & ASSOCIATES, PC 16644 WEST BERNARDO DRIVE SUITE 201 SAN DIEGO, CA 92127 EXAMINER HAUGLAND, SCOTT J ART UNIT PAPER NUMBER 3654 MAIL DATE DELIVERY MODE 05/22/2013 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 KIM J. DATO and JAMES E. DATO ____________ Appeal 2011-000884 Application 11/602,695 Technology Center 3600 ____________ Before BIBHU R. MOHANTY, MICHAEL W. KIM, and PHILIP J. HOFFMANN, Administrative Patent Judges. HOFFMANN, Administrative Patent Judge. DECISION ON APPEAL Appeal 2011-000884 Application 11/602,695 2 STATEMENT OF THE CASE Appellants appeal under 35 U.S.C. § 134 from the final rejection of claims 32-37, 39-58, 60, and 611. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. The rejected claims are directed to a dispenser for spooled material, such as ribbon, which is curled prior to being placed on the spool (Spec. p. 2, ll. 9-17). Claims 32, 39, 42, 46, 47, 53, 57, 58, 60, and 61 are independent claims. EXEMPLARY CLAIM Independent claim 32, reproduced below, is indicative of the claims on appeal. 32. A dispenser for spooled materials, comprising: a housing element having a recess formed therein; a plurality of spools of material disposed substantially within said recess of said housing element, said spools each have first and second ends, the distal portions of said ends not having any material wound thereon, said material comprising material curled by a curling mechanism prior to being disposed on said plurality of spools; and a plurality of apertures disposed in proximity to respective ones of said spools, said 1 Our decision references Appellants’ Specification (“Spec.,” filed Nov. 20, 2006), Appeal Brief (“App. Br.,” filed Apr. 12, 2010), and Reply Brief (“Reply Br.,” filed Sep. 7, 2010), as well as the Examiner’s Answer (“Ans.,” mailed Jul. 6, 2010). Appeal 2011-000884 Application 11/602,695 3 apertures being adapted to pass said material from said respective ones of said spools therethrough; wherein said housing element is substantially planar in shape, said substantially planar shape comprising a depth which is less than both a width and a length of said housing, and has at least first and second faces, said plurality of spools comprising at least a first group of spools disposed within a row in substantially parallel juxtaposed orientation within said recess, and said plurality of apertures being formed within one of said first and second faces so that said material can be individually removed from a respective one of said spools without requiring removal of material from another one of said spools. THE REJECTIONS The following rejections are the subject of this appeal2: Claims 32 and 37 under 35 U.S.C. § 103(a) as unpatentable over Cayer (US 4,369,929, iss. Jan. 25, 1983) in view of Shea (US 6,298,639 B1, iss. Oct. 9, 2001), and further in view of Brown (US 987,952, iss. Mar. 28, 1911); Claims 33-36 under 35 U.S.C. § 103(a) as unpatentable over Cayer in view of Shea and Brown, and further in view of Goldstein (US 5,407,417, iss. Apr. 18, 1995); Claims 42-51 and 60 under 35 U.S.C. § 103(a) as unpatentable over Cayer in view of Shea, and further in view of Goldstein; 2 We note page 3 of the Examiner’s Answer indicates the Examiner has withdrawn the rejection of claim 60 under 35 U.S.C. § 112, second paragraph, which was made in the final Office Action mailed August 19, 2009. Appeal 2011-000884 Application 11/602,695 4 Claims 39-41 under 35 U.S.C. § 103(a) as unpatentable over Cayer in view of Shea and Goldstein, and further in view of Schwartz (US 3,948,455, iss. Apr. 6, 1976); Claim 52 under 35 U.S.C. § 103(a) as unpatentable over Cayer in view of Shea and Goldstein, and further in view of Brown; Claims 53-56 and 58 under 35 U.S.C. § 103(a) as unpatentable over Cayer in view of Shea; and Claims 57 and 61 under 35 U.S.C. § 103(a) as unpatentable over Cayer in view of Shea, and further in view of Schwartz. ANALYSIS The Rejection of Claims 32 and 37 as Unpatentable over Cayer, Shea, and Brown The Examiner rejects independent claim 32 as unpatentable over a combination of Cayer, Shea, and Brown. In particular, the Examiner states “[i]t would have been obvious . . . to place pre-curled ribbon as taught by Shea in the dispenser of Cayer to allow convenient dispensing of the ribbon,” and that “[i]t would have been further obvious . . . to provide the spools of Cayer with distal ends that do not have material wound on them as taught by Brown to facilitate retaining of material on the spools without interference with sides of the housing that encloses the spools” (Ans. 4-5). Conversely, Appellants argue it would not be obvious to combine the references as proposed by the Examiner (App. Br. 7-8, Reply Br. 6-7). The Supreme Court emphasized “the need for caution in granting a patent based on the combination of elements found in the prior art,” and discussed circumstances in which a patent might be determined to be obvious without Appeal 2011-000884 Application 11/602,695 5 an explicit application of the teaching, suggestion, motivation test. KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 415-16 (2007). In particular, the Supreme Court reaffirmed that “[t]he combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results.” Id. Here, the curled ribbon taught by Shea, the dispenser taught by Cayer, and the winding taught by Brown are familiar elements, and the combination proposed by the Examiner yields predictable results. Thus, we are not persuaded of error in the Examiner’s rejection of claim 32 by this argument. Appellants further argue with respect to claim 32 that the combination of references does not teach or suggest the limitation “said plurality of apertures being formed within one of said first and second faces so that said material can be individually removed from a respective one of said spools without requiring removal of material from another one of said spools” (App. Br 8, Reply Br. 7-8). As the Examiner states, however, “Cayer has the plural apertures (30 and 31, for example) in one face (the face including wall 23) of the dispenser. Clearly, material can be removed from one of the spools without removing material from another” (Ans. 13-14). We agree with the Examiner’s analysis. Thus, we are not persuaded of error in the Examiner’s rejection of claim 32. Based on the foregoing, we sustain the Examiner’s rejection of independent claim 32 under 35 U.S.C. § 103(a) as unpatentable over Cayer in view of Shea, and further in view of Brown. With respect to claim 37, Appellants argue the claim is allowable for the same reasons as independent claim 32 from which it depends, and also because it includes the limitation “said housing element is substantially Appeal 2011-000884 Application 11/602,695 6 planar in shape, with said plurality of spools disposed in substantially juxtaposed and parallel orientation with respect to one another within said recess” (App. Br. 9, Reply. Br. 8-9). In response, however, the Examiner states “Cayer has all of this structure. The housing is planar in shape (note flat sides 22-25) and the spools 12-15 are juxtaposed and parallel to one another (see Figs. 1-4 of Cayer)” (Ans. 14). We agree with the Examiner’s analysis. Thus, we are not persuaded of error in the Examiner’s rejection of claim 37, and therefore we sustain the Examiner’s rejection of claim 37 under 35 U.S.C. § 103(a) as unpatentable over Cayer in view of Shea, and further in view of Brown. The Rejection of Claim 33-36 as Unpatentable over Cayer, Shea, Brown, and Goldstein Appellants argue claims 33-36 are allowable for the same reasons as independent claim 32 from which they depend (App. Br 9, Reply Br. 9). Inasmuch as we sustained the rejection of claim 32, we are not persuaded of error in the Examiner’s rejection by this argument. With respect to claim 33, Appellants further argue that none of the references teach or suggest the limitation “the radius of said spools further being selected so as to be substantially similar to that of said turns of said pre-curled ribbon” (App. Br. 9, Reply Br. 9-10). The Examiner states, however, “the turns of the ribbon on the spool are necessarily substantially similar to the radius of the spool since they are wound on the spools” (Ans. 14). We agree with the Examiner’s analysis. Thus, we are not persuaded of error in the Examiner’s rejection by this argument. Appeal 2011-000884 Application 11/602,695 7 Based on the foregoing, we sustain the Examiner’s rejection of claims 33-36 under 35 U.S.C. § 103(a) as unpatentable over Cayer in view of Shea and Brown, and further in view of Goldstein. The Rejection of Claims 42-51 and 60 as Unpatentable over Cayer, Shea, and Goldstein Appellants argue independent claim 42 is allowable for the reasons “as set forth previously herein with regards to Claim 32” (App. Br. 10, Reply Br. 10). Inasmuch as we sustained the rejection of claim 32, we do not find such arguments persuasive with respect to claim 42. Appellants further argue with respect to claim 42 that the Examiner has erred in relying on Goldstein to teach “curling at least a portion of said ribbon utilizing a non-thermal conditioning apparatus” (App. Br. 10, Reply Br. 10). Appellants’ arguments are unpersuasive because the Examiner relies on Shea to teach the curled ribbon (Ans. 6). Thus, we are not persuaded of error in the Examiner’s rejection of claim 42. With respect to claims 43-45, Appellants argue these dependent claims are allowable for the same reasons as independent claim 42 from which they depend (App. Br. 10, Reply Br. 10). For the same reasons as set forth above, we are not persuaded of error in the Examiner’s rejection of claims 43-45. Appellants argue independent claim 46 is allowable for the reasons discussed with respect to claim 32 (App. Br. 10-11, Reply Br. 11). Inasmuch as we sustained the rejection of claim 32, we do not find such arguments persuasive with respect to claim 46. With respect to Appellants’ other arguments for claim 46, we note that the curled ribbon taught by Shea, the dispenser taught by Cayer, and the Appeal 2011-000884 Application 11/602,695 8 winding taught by Goldstein are familiar elements, and thus the combination proposed by the Examiner yields predictable results. Therefore, we are not persuaded of error in the Examiner’s rejection of claim 46. Appellants argue independent claim 47 is allowable for the reasons “as set forth previously herein with regards to Claim 32” (App. Br. 12, Reply Br. 12). Inasmuch as we sustained the rejection of claim 32, we do not find such arguments persuasive with respect to claim 47. With respect to Appellants’ other arguments for claim 47, we note that the curled ribbon taught by Shea, the dispenser taught by Cayer, and the winding taught by Goldstein are familiar elements, and thus the combination proposed by the Examiner yields predictable results. Therefore, we are not persuaded of error in the Examiner’s rejection of claim 47. With respect to claims 48-51, Appellants argue these dependent claims are allowable for the same reasons as independent claim 47 from which they depend (App. Br 12, Reply Br. 13). For the same reasons as set forth above, we are not persuaded of error in the Examiner’s rejection of claims 48-51. Appellants argue independent claim 60 is allowable for the reasons “as set forth previously herein with regards to Claim 32” (App. Br. 12-13, Reply Br. 13). Inasmuch as we sustained the rejection of claim 32, we do not find such arguments persuasive with respect to claim 60. With respect to Appellants’ other arguments for claim 60, we note that the curled ribbon taught by Shea, the dispenser taught by Cayer, and the winding taught by Goldstein are familiar elements, and thus the combination proposed by the Examiner yields predictable results. Further, as stated by the Examiner, Cayer teaches the limitation “said apertures and spools are Appeal 2011-000884 Application 11/602,695 9 configured so that said ribbon can be simultaneously grasped and removed from all of said spools by a user” (Ans. 16). We agree with the Examiner’s analysis. Therefore, we are not persuaded of error in the Examiner’s rejection of claim 60. Based on the foregoing, we sustain the Examiner’s rejection of claims 42-51 and 60 under 35 U.S.C. § 103(a) as unpatentable over Cayer in view of Shea, and further in view of Goldstein. The Rejection of Claims 39-41 as Unpatentable over Cayer, Shea, Goldstein, and Schwartz Appellants argue independent claim 39 is allowable for the reasons “as set forth previously herein with regards to Claim 32” (App. Br. 13, Reply Br. 14). Inasmuch as we sustained the rejection of claim 32, we do not find such arguments persuasive with respect to claim 39. With respect to Appellants’ other arguments for claim 39, we note that the curled ribbon taught by Shea, the dispenser taught by Cayer, the winding taught by Goldstein, and the transparent housing of Schwartz are familiar elements, and thus the combination proposed by the Examiner yields predictable results. Therefore, we are not persuaded of error in the Examiner’s rejection of claim 39. With respect to claims 40 and 41, Appellants argue these dependent claims are allowable for the same reasons as independent claim 39 from which they depend (App. Br 14, Reply Br. 15). For the same reasons as set forth above, we are not persuaded of error in the Examiner’s rejection of claims 40-41. Appeal 2011-000884 Application 11/602,695 10 Based on the foregoing, we sustain the Examiner’s rejection of claims 39-41 under 35 U.S.C. § 103(a) as unpatentable over Cayer in view of Shea and Goldstein, and further in view of Schwartz. The Rejection of Claim 52 as Unpatentable over Cayer, Shea, Goldstein, and Brown Appellants argue claim 52 is allowable for the same reasons as independent claim 47, from which it depends (App. Br. 14, Reply Br. 15). Inasmuch as we sustained the rejection of independent claim 47, we are not persuaded of error in the Examiner’s rejection. Therefore, we sustain the Examiner’s rejection of claim 52 under 35 U.S.C. § 103(a) as unpatentable over Cayer in view of Shea and Goldstein, and further in view of Brown. The Rejection of Claims 53-56 and 58 as Unpatentable over Cayer and Shea Appellants argue claims 53-56 are allowable for reasons substantially the same as those Appellants argued for claims 42-51 and 60 (App. Br. 14- 15, Reply Br. 16). Inasmuch as we sustained the rejection of claims 42-51 and 60, we are not persuaded of error in the Examiner’s rejection of claims 53-56. Appellants argue claim 58 is allowable for the same reasons as independent claim 32 (App. Br. 15, Reply Br. 16). Inasmuch as we sustained the rejection of claim 32, we are not persuaded of error in the Examiner’s rejection of claim 58. Appellants further argue claim 58 is allowable because Shea does not teach or suggest the limitation “a plurality of spools of pre-curled ribbon curled by said blade-containing curling mechanism” (App. Br. 15, Reply Br. 16). We note, however, that claim 58 is directed to an apparatus, and thus Appeal 2011-000884 Application 11/602,695 11 the claim must be distinguished from the prior art in terms of structure rather than the method by which it is produced. Shea teaches a curled ribbon. Therefore, we are again not persuaded of error in the Examiner’s rejection of claim 58. Based on the foregoing, we sustain the Examiner’s rejection of claims 53-56 and 58 under 35 U.S.C. § 103(a) as unpatentable over Cayer in view of Shea. The Rejection of Claims 57 and 61 as Unpatentable over Cayer, Shea, and Schwartz Appellants argue independent claim 57 is allowable for the reasons “as set forth previously herein with regards to Claim 32” (App. Br. 15-16, Reply Br. 17). Inasmuch as we sustained the rejection of claim 32, we do not find such arguments persuasive with respect to claim 57. Appellants argue independent claim 61 is allowable for reasons substantially similar to those Appellants argued for claim 39 (App. Br 16, Reply Br. 17). Inasmuch as we sustained the rejection of claim 39, we are not persuaded of error in the Examiner’s rejection of claim 61. Based on the foregoing, we sustain the Examiner’s rejection of claims 57 and 61 under 35 U.S.C. § 103(a) as unpatentable over Cayer in view of Shea, and further in view of Schwartz. DECISION The Examiner’s rejection of claims 32-37, 39-58, 60, and 61 under 35 U.S.C. § 103(a) is AFFIRMED. Appeal 2011-000884 Application 11/602,695 12 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 hh