Ex Parte Shannon et al

Patent Trial and Appeal Board

Jul 12, 2013

11848953 (P.T.A.B. Jul. 12, 2013)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
11/848,953 08/31/2007 Thomas Gerard Shannon KCX-1383
(64121390US01)
4695
22827 7590 07/12/2013
DORITY & MANNING, P.A.
POST OFFICE BOX 1449
GREENVILLE, SC 29602-1449
EXAMINER
COLE, ELIZABETH M
ART UNIT PAPER NUMBER
1789
MAIL DATE DELIVERY MODE
07/12/2013 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 THOMAS GERARD SHANNON
and BENJAMIN JOSEPH KRUCHOSKI
____________________

Appeal 2012-001596
Application 11/848,953
Technology Center 1700
____________________

Before CATHERINE Q. TIMM, DEBORAH KATZ, and GEORGE C.
BEST, Administrative Patent Judges.

TIMM, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF CASE
Appellants appeal under 35 U.S.C. § 134 from the Examiner’s
decision to reject claims 9-16 and 19-21. The Examiner rejects claims 19-21
under 35 U.S.C. § 103(a) as obvious over Andersen1 in view of Kubota2; and
claims 9, 12-14, 16, and 19-21 under 35 U.S.C. § 103(a) as obvious over

1 Andersen et al., US 5,709,913, patented Jan. 20, 1998.
2 Kubota et al., JP 2001-224525 A1, pub. Aug. 21, 2001.
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Butler3 in view of Kubota. 4 The Examiner further relies upon Jones5 in
addition to Butler and Kubota to reject claim 10 and Neckel6 in addition to
Butler and Kubota to reject claims 11 and 15. We have jurisdiction under 35
U.S.C. § 6(b).
We AFFIRM.
The claims are directed to a rolled tissue product having a flexible
core. The issues on appeal focus on the requirement in all the claims that the
core be flexible and the requirement in claim 19, and claims depending
therefrom, that the flexible core disintegrate when submerged in water.
Claim 19 is representative:
19. A rolled tissue product comprising:
a flexible core comprising a polymeric sheet of a
hydrophilic synthetic polymer such that the flexible core
disintegrates when submerged in water, wherein the flexible
core has a strength, and wherein the polymeric sheet has a basis
weight of about 5 grams per square meter to about 150 grams
per square meter; and
a nonwoven tissue web comprising pulp fibers wrapped
about the flexible core to form the rolled tissue product,
wherein the nonwoven tissue web and the flexible core are
attached to each other at an inner layer of the nonwoven tissue
web by an attachment mechanism, and wherein the tissue web
defines a machine direction, the tissue web having a tensile

3 Butler, III, US 2005/0069665 A1, pub. Mar. 31, 2005.
4 Claims 1-8, 17, and 18 were canceled (see Amendment filed March 21,
2011, entered pursuant to Miscellaneous Communication dated July 1,
2011). We do not list the canceled claims in our statement of the rejections.
5 Jones et al., US 2005/0050608 A1, pub. Mar. 10, 2005.
6 Neckel, US 2007/0209246 A1, pub. Sep. 13, 2007.
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strength in the machine direction that is weaker than the
strength of the flexible core.
(Claims App’x at Br. 11 (emphasis added).)

OPINION
With respect to the rejection over Andersen in view of Kubota,
Appellants contend that:
Anderson et al. [sic, Andersen et al.] fails to teach or disclose a
polymeric sheet of a hydrophilic synthetic polymer such that
the flexible core disintegrates when submerged in water.
Instead, the synthetic polymers in [Andersen et al.] are only
used as binders to adhere non-hydrophilic aggregate.
([Andersen. et al.], col. 25, ll. 10-15). However, the aggregate
in [Andersen, et al.] do not disintegrate when submerged in
water. (See [Andersen. et al.], col. 27-28). Thus, when an
[Andersen, et al.] core is submerged in water, the binders may
disintegrate, but the aggregate does not disintegrate. Therefore,
[Andersen et al.] does not disclose a flexible core that
disintegrates when submerged in water.
(Br. 5-6.)
However, as pointed out by the Examiner:
the claims do not require that the entire core dissolves in water
but that it disintegrates. Since the binder is what holds the core
of Andersen together and the binder is water soluble and
dissolves in water, the core itself disintegrates in water. A core
which is held together by water soluble binder such that the
binder dissolves in water is a core which disintegrates in water.
(Ans. 10.)
Appellants’ claim 19 places the emphasis on the hydrophilic polymer
as the source of the disintegration (see Claim 19 “comprising a polymeric
sheets of a hydrophilic synthetic polymer such that the flexible core
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disintegrates” (emphasis added)). Claim 19 does not require that all
materials within the core dissolve; it only requires that the polymer be
hydrophilic such that the core disintegrates.
There is no dispute that Andersen’s binders will dissolve in water (Br.
5-6), and Andersen clearly suggests formulations allowing water to degrade
the sheet after it has been discarded (Andersen, col. 40, ll. 56-58). The
preponderance of the evidence supports the Examiner’s finding that
Andersen suggests forming a core that will disintegrate when submerged in
water.
Appellants have not convinced us of a reversible error in the
Examiner’s conclusion of obviousness over Andersen in view of Kubota.
With respect to the rejection over Butler in view of Kubota,
Appellants contend that Butler fails to disclose or suggest a flexible core (Br.
7). The Examiner, on the other hand, points out that the claim does not
require any particular level of flexibility and flexibility and rigidity are
relative terms (Ans. 10). The Examiner finds that the materials in Butler
will have at least some ability to be flexed due to the nature of the materials,
their thickness, intended uses, etc. (id.).
Appellants do not point us to any definition of “flexible” in their
Specification that limits the term to a particular degree of flexibility, and we
find no such definition. Therefore, we interpret the term in view of its
ordinary meaning, i.e., “capable of being bent, usually without breaking.”
Dictionary.com. The broadest reasonable interpretation includes any degree
of bending that does not result in breaking.
Butler teaches a soluble paper-roll core which preferably contains a
rapidly-dissolving water-soluble support material such as Dissolvo™ paper,
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polyvinyl alcohol polymers, starch, gelatin, etc. (Butler, ¶ 0054), that may be
layered with cleaning ingredients (Butler, ¶¶ 0057-58). After the paper
wound onto the roll is used, the remaining paper-roll can be disposed of in
the toilet or garbage disposal (Butler, ¶¶ 0073 and 75).
A preponderance of the evidence supports the Examiner’s finding that
the nature of the materials, and intended use in a paper roll that can be
disposed of in a toilet or garbage disposal indicates that Butler’s dispensing
core would have at least some flexibility.
Appellants do not advance any further arguments directed to the
additional limitations of dependent claims or added references. Therefore,
Appellants have not shown reversible error in those rejections.

CONCLUSION
We sustain the Examiner’s rejections.

DECISION
The Examiner’s decision is affirmed.

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)(1).

AFFIRMED

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