Ex Parte Decker

Patent Trial and Appeal BoardOct 20, 2017

12827393 (P.T.A.B. Oct. 20, 2017)

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. 12/827,393 06/30/2010 Kip K. Decker 20759 (38201-0056) 5014 109963 7590 10/24/2017 GP-Eversheds Sutherland (US) LLP 999 Peachtree Street, NE Suite 2300 Atlanta, GA 30309 EXAMINER DESAI, KAUSHIKKUMAR A ART UNIT PAPER NUMBER 3788 NOTIFICATION DATE DELIVERY MODE 10/24/2017 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): patentdocket @ eversheds-sutherland. com gplawpatents @ gapac .com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte KIP K. DECKER Appeal 2016-008667 Application 12/827,393 Technology Center 3700 Before JENNIFER D. BAHR, MICHELLE R. OSINSKI, and BRANDON J. WARNER, Administrative Patent Judges. BAHR, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Kip K. Decker (Appellant)1 appeals under 35 U.S.C. § 134 from the Examiner’s decision rejecting claims 1-20. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. 1 According to Appellant, the real party in interest is Georgia-Pacific Consumer Products LP. Appeal Br. 2. Appeal 2016-008667 Application 12/827,393 THE CLAIMED SUBJECT MATTER Claim 1, reproduced below, is illustrative of the claimed subject matter. 1. A dispenser plate for a roll of sheet product, the dispenser plate comprising: a rigid plate member having an orifice centrally arranged in the plate member, the orifice including a central portion, a first channel portion having a first channel length extending radially from the central portion, and a second channel having a second channel length extending radially from the central portion, wherein the first channel length is greater than the second channel length, wherein the first and second channels each have a width such that a user may access the roll of sheet product through the channel. REJECTIONS I. Claims 1-7 and 10-19 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Sellars (US 2008/0017750 Al, pub. Jan. 24, 2008) and Finkelstein (US 4,289,262, iss. Sept. 15, 1981). II. Claims 8 and 9 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Sellars, Finkelstein, and Grebonval (US 2004/0251292 Al, pub. Dec. 16, 2004). III. Claim 20 stands rejected under 35 U.S.C. § 103(a) as unpatentable over Sellars, Finkelstein, and Butler, III (US 2005/0069665 Al, pub. Mar. 31, 2005). DISCUSSION All of the Examiner’s rejections under 35 U.S.C. § 103(a) are grounded in part on the Examiner’s determination that it would have been 2 Appeal 2016-008667 Application 12/827,393 obvious “to substitute [Sellars’s] orifice with [an] orifice as suggested in the Finkelstein disclosure to provide ... a multiplicity of pairs of slot-forming converging edges to enable the user to pull and tear material via any of said pairs of edges.” Final Act. 3-5; see also id. at 7-8 (the second and third grounds of rejection referring back to the combination of Sellars and Finkelstein as applied in the first ground of rejection of the independent claims). The Examiner explains that “Sellars[’s] dispenser plate slots are modified with analogous secondary teaching reference Finkelstein’s equivalent dispenser plate aperture 19 [figure 9] comprising multiplicity pairs of slots [column 3 lines 7-9].” Ans. 4; see also Final Act. 3, 4 (the Examiner finding, with reference to the annotated reproduction of Figure 9 of Finkelstein on page 4 of the Final Action, that “Finkelstein teaches an equivalent orifice [19, fig 9] wherein the first channel [see annotated figure 9] length is greater than the second channel length [see annotated figure 9]”). Appellant argues that a person of ordinary skill in the art would not have found it obvious to modify the dispenser plate of Sellars as proposed by the Examiner. See Appeal Br. 5. In particular, Appellant asserts that the Examiner’s rejection is based on impermissible hindsight. See id. at 10-11. We agree that a sustainable case of obviousness has not been established. Sellars teaches “disc 16' having a generally circular opening 16.1 ’ with diametrically opposed slots extending outwardly from the opening to define confronting lobes 16.2' on each side of the opening, the lobes being effective to engage individual sheets of toweling as the latter are withdrawn from the roll.” Sellars ^ 46. Finkelstein teaches, with reference to Figure 9, that “aperture 19 is provided with a multiplicity of pairs of slot-forming converging edges 6 to enable the user to pull and tear material via any of 3 Appeal 2016-008667 Application 12/827,393 said pairs of edges.” Finkelstein, col. 3,11. 9-12. Finkelstein also teaches that “there are provided more than one wide zone allowing to reach through into the dispenser’s wall 4 in order to get hold of the material.” Id., 11. 12- 14. In the annotated Figure 9 of Finkelstein, the Examiner identifies first, second, and third slots extending radially from a circular wide zone at the left side of the aperture, and, thus, appears to rely only on this portion of Finkelstein’s aperture in modifying Sellars. See Final Act. 4. In other words, the Examiner’s proposed modification of Sellars’s dispenser plate appears to entail replacing the slots between Sellars’s confronting lobes 16.2' with the narrow slots emanating from the circular wide zone on the left side portion of aperture 19 identified by the Examiner in Finkelstein’s Figure 9. See id. at 3, 5. However, the Examiner has not provided adequate reasoning to explain why such a modification would have been obvious to one of ordinary skill in the art. More specifically, it is not apparent, and the Examiner does not adequately explain, why, absent hindsight, a person having ordinary skill in the art would have been prompted to extract only the left portion of Finkelstein’s aperture 19, to the exclusion of the remainder of the aperture disclosed by Finkelstein, and substitute just that portion for the orifice (circular opening and slots) of Sellars. It is impermissible within the framework of section 103 to pick and choose from any one reference only so much of it as will support a given position, to the exclusion of other parts necessary to the full appreciation of what such reference fairly suggests to one of ordinary skill in the art. In re Wesslau, 353 F.2d 238, 241 (CCPA 1965) (cited with approval in Bausch & Lomb, Inc. v. Barnes Hind/Hydrocurve, Inc., 796 F.2d 443, 448 (Fed. Cir. 1986)). 4 Appeal 2016-008667 Application 12/827,393 The Examiner does not rely on Grebonval or Butler, III for any teaching, nor articulate any additional findings or reasoning, that would remedy the aforementioned deficiency. Thus, we do not sustain the Examiner’s rejections of claims 1-20 under 35 U.S.C. § 103(a). DECISION The Examiner’s decision rejecting claims 1-20 is reversed. REVERSED 5