Friday, June 07, 2013

Applicant loses in toilet paper dispenser case

From Ex parte Gabor directed to toilet paper rolls:

Accordingly, we conclude that claims 7, 8, 21, 22, and 25-27 are
indefinite for failing to particularly point out and distinctly claim the subject
matter which Appellant regards as the invention. 35 U.S.C. § 112, second
paragraph. Since these claims are indefinite, several prior art rejections as
applied to these claims must fall, pro forma, because they are necessarily
based on speculative assumptions as to the scope of the claims. See In re
Steele, 305 F.3d 859, 862-63 (CCPA 1962).
In particular, we reverse, pro
forma, Rejection I as applied to claim 21; Rejection II as applied to claims 7
and 27; and Rejection III.


It is unclear whether “the opening” refers to an opening such as that recited
in claim 3, “through one of the end walls,” or whether “the opening” refers
to the opening in an “open position” such as that recited in claim 1. We will
not speculate as to what Appellant intended to claim because “[i]t is
[Appellant’s] burden to precisely define the invention, not the PTO’s.” In re
Morris, 127 F.3d 1048, 1056 (Fed. Cir. 1997) (citing 35 U.S.C. § 112,
second paragraph).

Of rational underpinning:

Appellant contends that a skilled
artisan would not be inclined “to substitute the housing 10 of Ogden for the
casing 2 of Anderson” because the stand employed by Anderson “is not a
‘conventional holder,’ as defined by Ogden, and would not be able to
securely hold the housing 10 in position as intended.” Id. at 15 (citing In re
Ratti, 270 F.2d 810, 813 (CCPA 1959)).

We disagree. The Examiner’s rationale—that providing the device of
Ogden with a stand would allow it to be mounted to a horizontal surface
rather than a vertical surface—is based on a rational underpinning (the
surface upon which the device would stand or mount would dictate the type
of attachment). (...)

combining Ogden’s housing with the stand of
Anderson would not defeat Ogden’s intended purpose—“to provide an
apparatus for dispensing pre-moistened toilet paper” (see Ogden,
col. 1, ll. 7-8)—or require substantial reconstruction. See KSR Int’l Co. v.
Teleflex Inc., 550 U.S. 398, 421 (2007) (“A person of ordinary skill is also a
person of ordinary creativity, not an automaton.”).

Of analogous art:

“A reference qualifies as prior art for an obviousness determination
under § 103 only when it is analogous to the claimed invention.” In re
Klein, 647 F.3d 1343, 1348 (Fed. Cir. 2011) (citing Innovention Toys, LLC
v. MGA Entm’t, Inc., 637 F.3d 1314, 1321 (Fed. Cir. 2011); In re Bigio,
381 F.3d 1320, 1325 (Fed. Cir. 2004)). “Two separate tests define the scope
of analogous art: (1) whether the art is from the same field of endeavor,
regardless of the problem addressed and, (2) if the reference is not within the
field of the inventor’s endeavor, whether the reference still is reasonably
pertinent to the particular problem with which the inventor is involved.” Id.
(quoting In re Bigio, 381 F.3d at 1325). (...)

Ogden discloses a premoistened toilet paper dispenser, which
permits the unwinding of toilet paper, and is attached to a conventional toilet
paper holder mounted to a vertical surface. See, e.g., Ogden, Title; id. at
col. 2, ll. 31-32. Anderson discloses a housing, which permits the
unwinding of a hose, mounted to a stand for attachment or use on a
horizontal surface. See Anderson, Title (“Hose Reel”); id. at fig. 1. Thus,
because of the similarity of structure and function of the claimed invention
to the structures, and functions of those structures, disclosed by Ogden and
Anderson, we agree that Ogden and Anderson are analogous art and, hence,
were properly considered by the Examiner in assessing whether the claimed
subject matter would have been obvious to one of ordinary skill in the art at
the time of invention.


While the Examiner took Official Notice of
transparent covers generally, the Examiner made no finding that any such
transparent cover is “constructed and arranged to define a slot therebetween”
or that such construction and arrangement would have been obvious to one
of ordinary skill in the art. See App. Br. 19; Reply Br. 4. All words in a
claim must be considered in judging the obviousness of the claimed subject
matter. See In re Wilson, 424 F.2d 1382, 1385 (CCPA 1970).


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