Board reverses obviousness of rejection involving Examiner affidavit of personal knowledge

Takeaway: Ex parte Moody was a rare case in which an Examiner relied on personal knowledge in a rejection. During prosecution of claims directed to a paper towel dispenser, the Examiner used, as prior art, photos of a dispenser shown alongside a tape measure. The Examiner asserted that that this dispenser had been "in use in the USPTO Crystal Park 5 restrooms since at least 1999." The Applicant traversed the rejection and demanded an affidavit of personal knowledge per CFR § 1.102(a)(d)(2). The Examiner produced two affidavits, one declaring the date of use and another attesting to the measured dimensions. On appeal, the Applicant argued that the dispenser in the photo did not disclose the claimed length of the dispensing aperture relative to the length of the paper towels. 

Details:
Ex parte Moody
Appeal 2008005114; Appl. No. 10/004,823; Tech. Center 3600
Decided:  December 1, 2009

The application was directed to a paper towel dispenser (shown below), and the limitation at issue was a shortened dispensing aperture, as emphasized.

     1. A modified gravity-feed towel dispenser for dispensing C-fold and interfolded towels,
     wherein said dispenser houses C-fold or interfolded towels having a transverse length, L,
     which are positioned to be dispensed through an elongated bottom dispensing aperture having a length of L or greater,
     said towel dispenser including means for defining a top portion, a front wall, a back wall and a pair of side walls of said towel dispenser, as well as a bottom portion collectively defining an interior for receiving a stack of C-fold or interfolded towels,
     said bottom portion of said towel dispenser defining said elongated bottom dispensing aperture,
     wherein an adapter plate is secured to said bottom portion of said towel dispenser and is configured to abridge the length of said dispensing aperture to a length L' of 80 percent to 90 percent of said transverse length, L, of said C-fold or interfolded towels.(Emphasis added.)

During prosecution, the Examiner rejected various claims using a combination of an issued patent (Gettelman) and a Bobrick 363 model towel dispenser. Bobrick was alleged to be prior art because it bore a "3/81 copyright date on the interior instruction panel" and had been "in use in the USPTO Crystal Park 5 restrooms since at least 1999." The Office Action included several photos of a tape measure along various parts of the dispenser. According to the Examiner, these photos showed that the Bobrick dispenser included a 9.75" dispensing slot and a towel magazine capable of holding 11" wide towels, which met the limitation of "a length L' of from about 80% to about 90% of transverse length, L, of C-fold or interfolded towels. The Examiner relied on the primary reference, Gettelman, for all other limitations.

The Applicant argued that the copyright date did not establish that the Bobrick dispenser was prior art, noted that the Examiner-supplied photographs were too blurry to accurately show dimensions, and demanded an affidavit of personal knowledge as to the dimensions measured by the Examiner:

     First, in order to be prior art, the dispenser must have existed in its current form as of that date. In this regard, the copyright date on the loading instructions do not establish that the aperture on a lower part of the dispenser existed in its current form before 2000. That part of the device may have been changed or modified at any time. The Examiner has not testified that he made any measurement of any device which existed before the priority date of this application.
     The rejections should also be withdrawn because the Examiner has not complied with [the personal knowledge requirement of] CFR § 1.102(a)(d)(2) ... Counsel cannot tell from the obscured photographs provided the length of the dispensing opening, nor can Applicant determine the length of towel placed therein. Other indistinguishable features include whether there are inclined terminal portions, what the angle of inclination is, the shape of the aperture, etc.
     Applicant requests that the rejections based on the PTO Bobrick model be withdrawn, or a detailed affidavit be provided with all relevant dimensions clearly labeled; this affidavit should also necessarily include relevant dates prior to Dec 2000 when the dimensions were observed.

In a Final Office Action, the Examiner acceded to the Applicant's demands for clear photographs and also provided two personal affidavits. One affidavit attested to the date of use of the Bobrick dispenser as being at least August of 1999 – though the Examiner nonetheless maintained that the copyright date "establishes by preponderance of the evidence a 1981 public sale/use date." The other affidavit attested as to various dimensions, and read as follows:

Examiner's Affidavit in Support of the Measured
Bobrick Model 363 Towel Dispenser Dimensions

I, Michael E. Butler, do hereby afftrm the following facts based on measurements made on the Bobrick Model 363 Towel Dispensers located in the USPTO Crystal Park 5 restrooms.
The dispensing slot has a length of 10 1/2  inches.
The dispensing magazine has a towel major axis length of 11"
The dispensing slot has a width of  2 1/2 nches in the middle
The dispensing slot has a width of  3/4 inches at the end of the straight base
The arcuate surface bearing the dispensing slot has a chord of 10.5 cm
The arcuate surface bearing the dispensing slot has an arcuate length of 11.7 em
The arcuate surface commences tangent to the horizontal back of the dispensing slot curving upward to a frontal non tangential termination relative the front panel with the following projections:
The arcuate surface has projection on the horizontal axis of 9.4 cm
The arcuate surface has a projection on the vertical axis of 6 cm

The Examiner provided the following rationale for obviousness:

It would have been obvious for the Gettelman et al. retrofit adapter to have dimensions selected from those used in the proven BOBRICK 363 towel dispenser because such dispenser has proven itself effective in minimizing multiple dispensed towels and fall through and come up with the instant invention.

The Examiner further explained that:

The magazine is well capable of holding towels exceeding the width by about 10-25% and would have been obvious to one of ordinary skill in the art to place towels of such dimensions in the dispenser ... The length of slot is sufficiently close to 90% of available towel length to obviate a slot about 80-90% of the towel length.

On appeal, the Applicant argued that the Bobrick Dispenser did not teach the claimed dimensions. Specifically, the Applicant argued that the Examiner's Affidavit did not support the rejection, and that the Examiner had mischaracterized the Bobrick dispenser:

     The commercial dispenser was asserted in the Final Rejection to have a 9.75 inch dispensing slot between 11 inch sidewalls (88%). That statement is clearly mistaken. The Examiner's Affidavit contradicts that assertion stating that the dispensing slot is 10-1/2 inches or over 95% of the distance between sidewalls; not at all suggestive of the claimed relative length of about 80-90%.
     Furthermore, upon examination of the photographs of the dispenser [provided by the Examiner], it appears that the dispensing slot actually extends from sidewall to sidewall, just as in Fig. 3 of  Gettner [the primary reference], and therefore does not at all suggest dispensing a towel through an aperture shorter than the towel.
(Emphasis added.)

The Applicant also attacked the Examiner's rationale for combining, arguing that there is no motivation to modify the adapter in Gettelman using the Bobrick dispenser (which did not use an adapter). According to the Applicant, "an adapter plate modifies a dispenser, not vice-versa."

In the Examiner's Answer, the Examiner disagreed with the Applicant about the width of the dispensing slot shown in the photos:

Contrary to applicant's assertion, the slot in the Bobrick '363 model dispenser and the Gettlemen et al. dispenser do not extend the entire magazine cavity distance.

On appeal, the Board agreed with the Examiner that Bobrick's dispensing aperture was not identical to the dispensing magazine's length, finding it to be slightly shorter (95%). The Board also found that in Gettelman, the transverse length of the aperture and of the adapter were nearly identical. The  Board reversed because the Examiner did not provide a rational reason why a POSITA would shorten Gettleman's adapter plate based on the dispensing aperture in Bobrick's towel dispenser. The Board found that the "extensive amount of modification needed to the adapter plate of Gettelman is suggested nowhere in the cited art," but was instead "born from the use of impermissible hindsight reconstruction in view of Appellant’s Specification."

My two cents: I included the Board's discussion of why the Examiner's obviousness rationale was deficient, but did so just to be complete. My real interest in this case is the Examiner Affidavit of personal knowledge – this is the only case I can recall where the Examiner provided one. I think this is a useful example of when to ask for an affidavit, how to do so, and what to look for in the Examiner's Affidavit when he provides it.

Here, it was crystal clear that the Examiner really was relying on personal knowledge. But from what I've seen, some Applicants request a personal affidavit as sort of a boilerplate response whenever the Examiner uses Official Notice, "well known", inherency, or even KSR's "creative inferences." It's usually abundantly clear from the record that the Examiner is not relying on personal knowledge, adn in such cases I'm not sure why Applicants bother with the request. See my post Examiner affidavit of personal knowledge for some of those.

And for an example of another case where the Applicant probably should have asked for an Examiner Affidavit, check out my blog post here about Ex parte Gray. In Gray, the Examiner asserted that a patent reference was really a Gillette Mach 3 razor. The Examiner then used his own measurements of a Mach 3 razor rather than the dimensions depicted in the patent drawing. The Applicant disputed the assertion, but did not ask for an affidavit of personal knowledge. The Board ignored the Examiner's unsupported assertion.