International Refills Company Ltd

Patent Trials and Appeals Board

Aug 18, 2020

14530914 - (D) (P.T.A.B. Aug. 18, 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.
14/530,914 11/03/2014 Michel MORAND SWA0251USC 4483
23413 7590 08/18/2020
CANTOR COLBURN LLP
20 Church Street
22nd Floor
Hartford, CT 06103
EXAMINER
GARFT, CHRISTOPHER
ART UNIT PAPER NUMBER
3632
NOTIFICATION DATE DELIVERY MODE
08/18/2020 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):
usptopatentmail@cantorcolburn.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MICHEL MORAND
Appeal 2019-003799
Application 14/530,914
Technology Center 3600
Before MICHAEL J. FITZPATRICK, WILLIAM A. CAPP, and
JILL D. HILL, Administrative Patent Judges.
HILL, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–10 and 12–192. Final Act. 1. We
have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42. Appellant identifies the real party in interest as International Refills
Company Ltd. Appeal Br. 2.
2 Claim 11 was withdrawn from consideration.
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BACKGROUND
Sole independent claim 1, reproduced below, illustrates the claimed
invention, with certain limitations italicized:
1. A film-supporting device for use with a waste disposal
unit comprising:
an annular body removably insertable in the waste-
disposal unit and including an inner annular wall delimiting a
central opening of the annular body, an outer annular wall, a
bottom horizontal wall at a bottom end of the annular body to
form a cavity in the annular body, outlines of each of the central
opening and the outer annular wall in a transverse plane of the
device having variable diametrical dimensions with a first
diameter being of greater dimension than a second diameter, the
outlines each having, in the transverse plane of the device, at
least two of the first diameter of generally equal dimension and
at least two of the second diameter of generally equal
dimension, with the first diameter being the maximum diameter
of the outline in the transverse plane, and with the second
diameter being the minimum diameter of the outline in the
transverse plane, a central perimeter of the cavity defined
between the outlines in the transverse plane being greater than
a central perimeter of a similarly-defined cavity of a circular
film-supporting device, where a circular outer annular wall and
a circular central opening of the circular film-supporting
device each have a constant diameter respectively equal to said
minimum diameter of each said outline in the transverse plane;
and
tubular film accumulated in the cavity between the inner
annular wall and the outer annular wall, with a free annular end
dispensed outwardly from the inner annular wall, the free
annular end being adapted to be closed to form a bag with an
opening of the bag being accessible through the central
opening, wherein a quantity of said tubular film in the cavity is
greater than a quantity of tubular film in the cavity of the
circular film-supporting device.
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Application 14/530,914

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REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Chomik US 2003/0218022 A1 Nov. 27, 2003
Gagnebin US 2004/0206760 A1 Oct. 21, 2004
Alvarez US 2006/0082085 A1 Apr. 20, 2006
Morand US 2009/0100806 A1 Apr. 23, 2009
Stravitz US 7,712,285 B2 May 11, 2010
REJECTIONS
I. Claims 1–8, 12, 13, 18, and 19 stand rejected under 35 U.S.C.
§ 103 as unpatentable over Morand ’029 and Gagnebin. Final Act. 2.
II. Claim 9 stands rejected under 35 U.S.C. § 103 as unpatentable
over Morand, Gagnebin, and Stravitz. Final Act. 7.
III. Claims 10, 14, and 15 stand rejected under 35 U.S.C. § 103 as
unpatentable over Morand ’029, Gagnebin, and Morand ’806. Final Act. 8.
IV. Claim 16 stands rejected under 35 U.S.C. § 103 as unpatentable
over Morand ’029, Gagnebin, and Alvarez. Final Act. 9.
V. Claim 17 stands rejected under 35 U.S.C. § 103 as unpatentable
over Morand ’029, Gagnebin, and Chomik. Final Act. 9.
OPINION
The Examiner notes that the italicized language of claim 1,
reproduced above, is understood to refer to cassette shapes having A1 > A2,
which could include “super-ellipses, squircles, octagons, hexagons, and
decagons since the minimum diameter would connect opposing sides of the
polygons and the maximum diameter would connect opposing vertexes of
the polygons.” Reply Br. 3; see also Spec. ¶39 (identifying super-ellipses,
squircles, octagons, hexagons, and decagons). The Examiner finds that
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Appellant’s Specification discloses that the ability of the claimed invention
“to support more film within the cassette is a function of the shape.” Id.
(citing ¶ 40).
Rejection I: Claims 1–8, 12, 13, 18, and 19
Regarding claim 1, the Examiner finds that Morand ’029 discloses a
waste disposal unit including the structure set forth in the recitations of
claim 1, wherein “the cassette shape and shape of the opening is an oval
(Col. 4, Lines 4-8) but other shapes of cassette are foreseen, such as circular
cassettes (Col. 4, Lines 8-10) but does not disclose the outlines each having,
in the transverse plane of the device” the claimed first and second diameters,
the non-circular shape specifically defined in the claims, or the resulting
greater tubular film quantity in the cavity. Final Act. 2–5.
The Examiner finds, however, that Gagnebin discloses a trash
receptacle with a container 2 and an insert 21 that “can be shaped as
cylindrical members or other cross-sectional configurations including
various polygons, such as square, hexagon, pentagon,” and contends that
Gagnebin’s hexagonal shape would meet “the specific limitations
concerning the diameters as claimed.” Id. at 6. According to the Examiner,
“the hexagon would have at least two maximum diameters and at least two
minimum diameters in the same manner as [Appellant’s] hexagonal shape
illustrated in Fig. 6c,” and modifying Morand ’029 to have Gagnebin’s
hexagonal shape “would produce a cassette having a greater quantity of
tubular film support[ed] in the cavity than a similar circular film supporting
device.” Id. The Examiner concludes that this cassette shape modification
would have been obvious because Morand ’029 itself suggests considering
alternate shapes, and Gagnebin discloses that “hexagonal and other
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polygonal shapes are recognized alternative shapes for mating refuse bins
and inserts.” Id. (citing Morand ’029, 4:8–10; Gagnebin ¶ 15).
The Examiner reasons that Appellant’s Specification discloses that it
is the A1 > A2 outline, as recited in claim 1, that causes Appellant’s cassette
to have “a greater amount of tubular film than cassettes without such
outlines, for a same minimum axial dimension.” Ans. 11 (citing Spec. ¶ 40).
Thus, per the Examiner, the modified device of Morand ’029, having a
hexagonal shape as disclosed by Gagnebin, would have a A1 > A2 outline,
and would therefore necessarily also “produce a cassette having a greater
quantity of tubular film supporting in the cavity than a similar circular film
supporting device.” Id.
Appellant argues claims 1–8, 12, 13, 18, and 19 as a group. Appeal
Br. 8–11. We select independent claim 1 as representative. Claims 2–8, 12,
13, 18, and 19 stand or fall with claim 1.
Appellant does not challenge the Examiner’s findings regarding the
disclosures of the prior art, instead arguing that the Examiner’s conclusion
of obviousness contains error because “[t]here is no evidence or explanation
in the record that would lead to the solution identified by the Office,” such
that “[t]here are no rational underpinnings for the reason to combine the
teaching of Morand [’029] and Gagnebin.” Appeal Br. 8.
According to Appellant, the mere existence of rounded cassettes and
hexagonal garbage bins in the prior art does not make their combination
obvious. Id. at 9. Appellant contends that Morand ’029 does not suggest the
Examiner’s proposed combination because, while Morand ’029 states that
“‘other shapes of cassette are foreseen,’” the only other shape actually
disclosed is a circle, which suggests that “the only shapes contemplated in
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Morand are ‘rounded’ shapes (e.g. circular and oval), which do not satisfy
the claimed outlines.” Id. In addition, Appellant argues, “some of the
‘alternate shapes’ disclosed in Gagnebin may not satisfy the claimed
outlines.” Id. Thus, Appellant argues, Morand ’029 and Gagnebin are “not
as suggestive to the person of ordinary skill in the art as the Office Action
implies” and provide no evidence that would have led a person of ordinary
skill to modify Morand’s cassette to have a hexagonal shape “over
Gagnebin’s other shapes which may not satisfy the claimed outlines.” Id.
The Examiner responds that Gagnebin discloses each of the various
shapes listed therein, “some which meet the claimed outlines (square,
hexagon)” and “provides guidance to one of ordinary skill to choose any of
the listed shapes and therefore since a hexagon is one of the listed shape[s],”
Gagnebin guides a skilled artisan to select a hexagonal shape for container
and liner walls. Ans. 10.
Appellant replies that the Examiner’s selection or “singl[ing] out” of a
hexagonal shape from Gagnebin was guided by Appellant’s disclosure and
therefore “results entirely from the impermissible use of hindsight. See
Reply Br. 2–3.
Regarding hindsight, the Examiner responds that any judgment on
obviousness is in a sense necessarily a reconstruction based upon hindsight
reasoning; but so long as it takes into account only knowledge which was
within the level of ordinary skill at the time the claimed invention was made,
and does not include knowledge gleaned only from the Appellant’s
disclosure, such a reconstruction is proper. Ans. 10 (citing In re
McLaughlin, 443 F.2d 1392 (CCPA 1971)). The Examiner asserts that the
rejection of claim 1 relies solely upon the disclosures of Morand ’029 and
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Gagnebin, rather than Appellant’s disclosure. Ans. 10, 12. For this reason,
the impermissible hindsight was not used in rejecting claim 1.
The issue in the case is whether a claim reciting a combination of
elements, each of which is disclosed in the prior art, is obvious. In such a
case, “[i]f a person of ordinary skill can implement a predictable variation,
§ 103 likely bars its patentability.” KSR Int’l Co. v. Teleflex Inc., 550 U.S.
398, 417 (2007). In KSR, the Supreme Court identified a number of
exemplary rationales to support a conclusion of obviousness including, e.g.,
(1) the simple substitution of one known element for another to obtain
predictable results. See KSR, 550 U.S. at 401, 417.
Here, the known elements are an oval or circular shape for a waste
cassette as disclosed in Morand ’029, and a hexagonal shape for a
container/liner of a waste container as disclosed in Gagnebin. Substituting a
hexagonal shape for an ovoid shape is properly considered a simple
substitution that could be understood and performed by a skilled artisan.
Further, Appellant has not apprised or persuaded us of any unpredictable
results of such a simple substitution of shapes.
Regarding the result of substituting a hexagonal shape for a circular
shape, Appellant argues that “[i]ncreasing or optimizing the film used in a
cassette, . . . is not an issue contemplated in either Morand [’029] or
Gagnebin.” Appeal Br. 10. Appellant does not, however, argue that such
optimization of film use is other than a predictable result of the Examiner’s
proposed shape substitution. There is no requirement that the prior art
appreciate the benefit(s) set forth by Appellant to render the claim
unpatentable. That the prior art suggested such shape substitutability is
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enough to establish a rational basis for the Examiner’s reasoning, lacking
evidence of unexpected results of the substitution.
Appellant further argues that the Examiner “makes no attempt to
explain why the person of ordinary skill would choose some of Gagnebin's
polygonal shape[s] over Gagnebin’s other shapes that may not satisfy the
claimed outlines,” and “[k]nowledge of different shapes alone is not a good
enough reason to combine the teachings of the prior art.” Id. at 11. This
argument is not persuasive. That Gagnebin discloses a hexagonal shape is
enough –– neither Gagnebin nor the Examiner must identify specific
advantages of selecting one of the many shapes disclosed by Gagnebin, or
explain why such a shape is particularly suited for use in the device of
Morand ’029. That another combination of prior art features might be more
advantageous/obvious is not evidence that the proposed combination is
nonobvious. See In re Mouttet, 686 F.3d 1322, 1334 (Fed. Cir. 2012) (“just
because better alternatives exist in the prior art does not mean that an
inferior combination is inapt for obviousness purposes”).
For the reasons explained above, we sustain the rejection of claim 1.
Claims 2–8, 12, 13, 18, 19 fall with claim 1.
Rejections II–V: Claims 9, 10, and 14–17
Appellant makes no argument that claims 9, 10, and 14–17 would be
patentable over the applied references if claim 1 is not patentable over
Morand ’029 and Gagnebin. For the reasons explained above in our analysis
of Rejection I, we sustain Rejections II–V.
CONCLUSION
The Examiner’s rejections are affirmed as to claims 1–10 and 12–19.
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More specifically:
DECISION SUMMARY
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–8, 12,
13, 18, 19
103 Morand ’029, Gagnebin 1–8, 12,
13, 18, 19

9 103 Morand ’029,
Gagnebin, Stravitz
9
10, 14, 15 103 Morand ’029,
Gagnebin, Morand ’806
10, 14, 15
16 103 Morand ’029,
Gagnebin, Alvarez
16
17 103 Morand ’029,
Gagnebin, Chomik
17
Overall
Outcome
1–10, 12–
19

TIME PERIOD FOR RESPONSE
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