Ex Parte Mohr et alDownload PDFPatent Trial and Appeal BoardAug 19, 201311027286 (P.T.A.B. Aug. 19, 2013) Copy Citation 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. 11/027,286 12/30/2004 Rebecca Catherine Mohr KCX-901 (20183) 7982 22827 7590 08/19/2013 DORITY & MANNING, P.A. POST OFFICE BOX 1449 GREENVILLE, SC 29602-1449 EXAMINER RIVERA, WILLIAM ARAUZ ART UNIT PAPER NUMBER 3654 MAIL DATE DELIVERY MODE 08/19/2013 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 REBECCA CATHERINE MOHR, MEE WHA LEE, and MICHAEL ALAN HERMANS ____________________ Appeal 2011-007487 Application 11/027,286 Technology Center 3600 ____________________ Before: PHILLIP J. KAUFFMAN, CHARLES N. GREENHUT, and BART A. GERSTENBLITH, Administrative Patent Judges. GREENHUT, Administrative Patent Judge. DECISION ON APPEAL Appeal 2011-007487 Application 11/027,286 2 STATEMENT OF THE CASE Appellants appeal under 35 U.S.C. § 134 from a rejection of claims 1, 2, 6, 8, 9, 11-14, 18, 30-32, 34-62, 67-71, 73-76, and 78-85. App. Br. 2. We have jurisdiction under 35 U.S.C. § 6(b). We affirm-in-part. The claims are directed to a disposable dispensing and display carton for paper towels and other rolled products. Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. A dispensing and display carton in combination with a rolled product comprising: a sheet material wound about an axis into a roll of material, the roll of material including an outer cylindrical surface; and a dispenser for dispensing the roll of material, the dispenser comprising a housing having a first end and a second end, the dispenser further comprising a roll holding device that comprises a pair of opposing tabs, the roll of material being placed in the dispenser such that the axis of the roll substantially extends from the first end to the second end, the roll of material being configured to rotate and unwind while in the dispenser for dispensing the sheet material, the housing partially encircling the outer cylindrical surface of the roll of material so as to cover from about 40% to about 70% of the outer cylindrical surface, the housing and the roll holding device being integral such that both are constructed from a single blank, the outer cylindrical surface being substantially exposed through only one access opening, the roll of material extending out from the one access opening. Appeal 2011-007487 Application 11/027,286 3 REFERENCES The prior art relied upon by the Examiner in rejecting the claims on appeal is: Huempfner Van Dyke Burt '620 Burt '399 Umemoto Rice Batra US 1,708,725 US 3,121,542 US 3,262,620 US 3,338,399 Des. 419,015 US 6,563,510 B1 WO 01/02254 A2 Apr. 9, 1929 Feb. 18, 1964 Jul. 26, 1966 Aug. 29, 1967 Jan. 18, 2000 May 13, 2003 Jan. 11, 2001 REJECTIONS Claims 1, 2, 6, 8, 9, 14, 30-32, and 361 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Burt ’399 and Umemoto. Ans. 3, 6. Claims 1, 2, 6, 8, 9, 14, 30-32, 36 and 37 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Van Dyke and Umemoto. Ans. 4, 5. Claim 18 is rejected under 35 U.S.C. § 103(a) as being unpatentable over Burt ’399, Umemoto, and Huempfner. Ans. 5. Claims 11-13, 34, 35, 38-62, 67-71, 73-76, and 78-85 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Burt ’620, Batra, and Rice. Ans. 6. OPINION The first point of contention between Appellants and the Examiner is the proper construction of the phrase “the housing and the roll holding device being integral such that both are constructed from a single blank” in 1 We presume the Examiner’s inclusion of claim 66 in this rejection was inadvertent since both the Examiner and Appellants agree that claim was cancelled. Ans. 2; App. Br. 2; Amdt. entered May 11, 2009. Appeal 2011-007487 Application 11/027,286 4 independent claims 1 and 30. The Examiner contends that this limitation does not require the housing and roll holding device to be constructed from the same single blank. Ans. 8. Appellants do not directly address the Examiner’s position in this regard. However, it is evident from their arguments that Appellants are presuming that the only reasonable interpretation of the phrase requires the housing and the roll holding device to be constructed from the same blank. For the reasons below, we agree with that interpretation. The Examiner reasons that the frame of Burt ’399, interpreted as the recited “housing” and the core support, interpreted as the “roll holding device” are made integral by fastening, gluing, or welding and that “both” of these structures of Burt ’399 are made from a single blank, just different blanks. Ans. 8. The problem with the Examiner’s interpretation is that it dissects the phrase into discrete portions without giving any consideration to the terminology between them. All words in a claim must be considered in judging the patentability of the claimed subject matter. See In re Wilson, 424 F.2d 1382, 1385 (CCPA 1970). The claim requires the housing and roll holding device to be integral “such that” both are constructed from a single blank. The phrase “such that” conveys the relationship between the integral and single blank requirements; forming them from a single blank is how the two structures are integral. In light of this interpretation the Examiner’s rejections based in part on Burt ’399 clearly cannot be sustained. Independent claims 1 and 30 also recite “the roll of material extending out from the one access opening.” The Examiner makes no mention of this limitation in rejecting the claims based in part on Burt ’399 or Burt ’620. In the rejection that relies in part on Van Dyke, the Examiner reproduces Figure 2 of Van Dyke and alleges that figure demonstrates a structure Appeal 2011-007487 Application 11/027,286 5 satisfying this limitation. Ans. 10-11. However, the roll depicted in that figure does not appear to extend out from the structure presumably interpreted as the access openings through which the roll is dispensed. Even though this feature appears to be present in Umemoto, the Examiner makes it clear that “the Umemoto reference was only used to teach that a roll of paper can be enclosed on one end thereby allowing another end to be substantially exposed through only one access opening.” Ans. 8. The claim limitations concerning exposure of the role are distinct from those requiring it to extend out from the opening. The Examiner does not appear to make any factual findings or articulate any reasoning to address this limitation. Thus, we cannot sustain the rejections based in part on Burt ’399 or Van Dyke or the rejection of claims 11-13, 34, and 35 based in part on Burt ’620. We turn to the rejection of claims 38-62. Claim 38 requires “the outer cylindrical surface being substantially exposed through only one access opening”—a feature the Examiner found was not present in Burt ’399. In rejecting these claims the Examiner only states “Burt et al. discloses structure as set forth above.” Ans. 6. And, in responding to Appellants’ arguments states With respect to appellants' remarks on page 25-27 regarding the roll of material being exposed through only one access opening, the examiner has already shown above how it would have been obvious to one of ordinary skill in the art to provide only one access opening and set forth reasons accordingly. Ans. 14. However, the position taken by the Examiner referenced by this statement relied on Umemoto—a reference upon which the Examiner does not appear to rely in rejecting claims 38-62. Ans. 6. Appeal 2011-007487 Application 11/027,286 6 Appellants speculate that the Examiner relies on Umemoto for this rejection as well. App. Br. 27-28. However it not Appellants’ burden to speculate as to the Examiner’s rejection. This Board is only free to affirm rejections to which Appellants had a fair opportunity to respond. In re Kronig, 539 F.2d 1300, 1302-03 (CCPA 1976). Notice as to the references relied upon by the Examiner is a key element in providing Appellants with such an opportunity. In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011). As the rejection leaves a claim limitation entirely unaddressed, we are constrained to reverse. Lastly, we turn to the rejection of claims 67-71, 73-76, and 78-85. We agree with the Examiner that the disputed limitations concerning coloring amount to mere ornamentation on the device. Ans. 14-15. It is undisputed that Batra demonstrates that it was known to coordinate designs between dispenser and product and Rice demonstrates that it was known to choose colors using the Munsell scale. We need not determine whether the specific colors selected or the specific differences between the colors would have been obvious. In a utility patent application the claimed subject matter cannot be distinguished over the prior art based only on the addition of nonfunctional ornamentation or artwork, even if that ornamentation or artwork might, itself, be novel and nonobvious. Appellants do not assert, and the Specification does not evidence, that the printed indicia in this case bears any new, nonobvious, functional relationship with the substrate. As noted above, Batra demonstrates that it was known to provide such products with design elements. The specific design elements selected by Appellants are provided only for aesthetics or ornamentation. Spec. 4-5, 11-15. In a utility patent application such features do not patentably distinguish the claimed subject matter from a device lacking that same ornamentation. See In re Appeal 2011-007487 Application 11/027,286 7 Seid, 161 F.2d 229, 231 (CCPA 1947); In re Sterling, 70 F.2d 910, 912 (CCPA 1934). To hold otherwise would permit the patenting of rolled products and their cartons indefinitely provided that new artwork is added thereto. See In re Ngai, 367 F.3d 1336, 1339 (Fed. Cir. 2004). DECISION The rejections of claims 1, 2, 6, 8, 9, 11-14, 18, 30-32, and 34-62 are reversed. The rejection of claims 67-71, 73-76, and 78-85 is sustained. 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-IN-PART hh Copy with citationCopy as parenthetical citation