Ex Parte Wong

Board of Patent Appeals and Interferences

May 18, 2012

10466714 (B.P.A.I. May. 18, 2012)

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.
10/466,714 01/29/2004 Foo Tai Wong FGI-101 5989
32205 7590 05/18/2012
Carmen Patti Law Group, LLC
One N. LaSalle Street
44th Floor
Chicago, IL 60602
EXAMINER
TAWFIK, SAMEH
ART UNIT PAPER NUMBER
3721
MAIL DATE DELIVERY MODE
05/18/2012 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte FOO TAI WONG
____________________

Appeal 2010-002803
Application 10/466,714
Technology Center 3700
____________________

Before: JENNIFER D. BAHR, LINDA E. HORNER, and
STEVEN D.A. MCCARTHY, Administrative Patent Judges.

BAHR, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF THE CASE
Foo Tai Wong (Appellant) appeals under 35 U.S.C. § 134 from the
Examiner’s decision rejecting claims 1, 13-15, and 17-29. We have
jurisdiction under 35 U.S.C. § 6(b).
We REVERSE and enter a NEW GROUND OF REJECTION.
The Claimed Subject Matter
Claim 1, reproduced below, is illustrative of the claimed subject
matter:
1. A pre-printed and pre-folded paper napkin capable of being
stacked with other, identical napkins for package and storage,
the napkin being pre-printed, before being pre-folded, in a way
that the napkin, when it has been pre-folded, depicts a
recognizable 3-dimensional object, the napkin comprising a
pre-printed rectangular paper napkin pre-folded in a sequence
of multiple folds to assume a smaller, generally rectangular
shape having multiple thicknesses of paper, the pre-folded
napkin thus being capable of resting stably on a table, wherein
the napkin is pre-printed with a neckline adjacent one edge of
the napkin in its pre-folded configuration, the pre-folded napkin
then depicting an article of clothing.
Evidence
The Examiner relies on the following evidence in rejecting the claims
on appeal:
Roberti
Sieber
US 5,459,877
US 6,106,651
Oct. 24, 1995
Aug. 22, 2000
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The Board relies on the following additional evidence in entering a
new ground of rejection of the claims on appeal:
Taylor US Des. 162,097 Feb. 20, 1951
Smith US 3,274,045 Sep. 20, 19661

Rejections
The Examiner rejected claims 1, 13-15, and 23-25 under 35 U.S.C.
§ 102(a) as anticipated by Sieber.
The Examiner rejected claims 17-22, and 26-29 under 35 U.S.C.
§ 103(a) as unpatentable over Sieber and Roberti.
OPINION
Anticipation by Sieber
[U]nless a reference discloses within the four corners of the
document not only all of the limitations claimed but also all of
the limitations arranged or combined in the same way as recited
in the claim, it cannot be said to prove prior invention of the
thing claimed and, thus, cannot anticipate under 35 U.S.C.
§ 102.
Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1371 (Fed. Cir. 2008).
Appellant’s independent claims 1 and 13 are directed to a pre-folded
paper napkin pre-folded in a sequence of multiple folds to assume a smaller,
generally rectangular shape. We agree with Appellant (see App. Br. 8;
Reply Br. 6-7) that Sieber does not disclose such a napkin.
In addressing this feature, the Examiner states that
[i]t is reasonable to presume that the printed napkin of [Sieber]
as shown in Fig. 3 is re-folded [sic] and/or capable of being re-
folded [sic] to form a rectangular shape. The support for the

1 This patent, already of record in the present application, was cited by the
Examiner in the Notice of References Cited (PTO-892), mailed October 20,
2004.
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Application 10/466,714
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presumption is based on the fact that [Sieber] discloses that the
printed napkin is folded (column 5, lines 33-35); “the napkin is
folded.”
Ans. 6.
The sentence of Sieber from which by the Examiner quotes reads
“[w]e have also found that even when the napkin is folded or crumpled,
label 42 remains attached to napkin 40 and the entire product still retains a
napkin-like characteristic.” Col. 5, ll. 33-36. This sentence more than
amply supports the Examiner’s “presumption” that Sieber’s napkin is
capable of being folded (and thus “pre-folded”). However, we find no
support for the Examiner’s finding that it is “reasonable to presume” that
Sieber’s printed napkin as shown in figure 3 is folded (or re-folded or pre-
folded). In fact, the cross sectional view of the napkin of figure 3 shown in
figure 4 shows only a single layer of napkin 40, having a preprinted label 42
attached thereto with a layer of adhesive 44 (col. 5, ll. 11-13), thus indicating
that the napkin depicted in figure 3 is not folded.
As noted by Appellant (Reply Br. 7), a presumption of the capability
of the napkin to be folded is insufficient to anticipate a pre-folded paper
napkin pre-folded in a sequence of multiple folds to assume a smaller,
generally rectangular paper napkin, as called for in claims 1 and 13. We do
not sustain the rejection of claims 1 and 13 and their dependent claims 14,
15, and 23-25, as anticipated by Sieber.
Obviousness in view of Sieber and Roberti
Dependent claims 26 and 28, and claims 17-22, 27, and 29, which
depend directly or indirectly from either claim 26 or claim 28, further recite
that the article of clothing depicted by the napkin is a shirt. Claims 17 and
18 further require that the generally rectangular shape assumed by the pre-
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folded napkin comprise a rectangular body of a sports shirt with sleeves that
protrude from two sides thereof. The Examiner found that Sieber does not
disclose a napkin depicting a sport shirt with sleeves. Ans. 4. The Examiner
found, however, that “Roberti discloses a similar napkin with sleeves pulled
out from two sides, see for example (Figs. 1-5).” Id. The Examiner then
concluded that it would have been obvious to modify Sieber’s napkin “by
representing the shape of the [napkin] to be with sleeves pulled out from two
sides, as suggested by Roberti, in order to come up with [an] attractive shape
to the napkin (column 1, lines 43-45).” Id.
The Examiner’s conclusion of obviousness is premised on two
incorrect findings. First, contrary to the Examiner’s finding, Roberti does
not disclose a napkin with sleeves pulled out from two sides. Rather, figures
1-5 of Roberti, which the Examiner cited for this finding, depict two corners
folded inwardly to form a cup portion 32 that functions to collect the
contents of an infant’s mouth when burping or regurgitating. See col. 3, ll.
13-19; App. Br. 19. Second, Roberti provides no teachings directed to, or
even suggestive of, coming up with an attractive shape to a napkin, as stated
by the Examiner. Rather, as pointed out by Appellant (App. Br. 19),
“Roberti is concerned with the problem of ‘the soiling of clothes when an
infant is held by an adult.’” App. Br. 19 (quoting Roberti, col. 1, ll. 13-14);
see also Roberti, col. 1, ll. 29-31 (identifying as an object of the invention
providing “a multi-purpose bib which prevents an infant from soiling an
adult’s clothing”).
We do not sustain the Examiner’s rejection of claims 17-22 and 26-29
as unpatentable over Sieber and Roberti, because it is predicated on incorrect
findings.
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NEW GROUND OF REJECTION
Pursuant to our authority under 37 C.F.R. § 41.50(b), we enter the
following new ground of rejection.
Claims 1, 13-15, and 17-29 are rejected under 35 U.S.C. § 103(a) as
unpatentable over the combined teachings of Taylor, Smith, and Sieber.
As evidenced by Taylor, folded paper napkins provided with
decorative indicia simulating an object on one surface thereof, formed by
folding a pre-decorated generally rectangular paper napkin (fig. 2) in a
sequence of multiple folds (e.g., quarter folds) to assume a smaller, generally
rectangular shape (fig. 1) having the decorative indicia adjacent an edge
thereof, were known in the art at the time of Appellant’s invention.
Further, decorative folded paper napkins, substantially rectangular in
shape when unfolded and provided with cut-outs, coloring, and surface
decoration to simulate a three-dimensional object when folded, were known
in the art at the time of Appellant’s invention. Smith, col. 1, ll. 40-61; fig.
6. Smith teaches folding the napkin in a sequence of multiple folds to
simulate the three dimensional object. Col. 1, ll. 62-66; fig. 5 (folds shown
by dotted lines). The resulting napkin is capable of being placed directly on
a table. Smith, col. 1, ll. 66-68. Its flat surface also renders it capable of
being stacked with other, identical napkins for package and storage.
Neither Taylor nor Smith discloses how the coloring and decorations
are applied to the napkin surface. However, as evidenced by Sieber, it was
known in the art at the time of Appellant’s invention to decorate paper
napkins by printing artwork or other printed material thereon. Col. 1, ll. 19-
23, 30-42; col. 5, l. 44 – col. 6, l. 12.
It would have been obvious to a person of ordinary skill in the art to
use the known technique of pre-printing, as taught by Sieber, to provide the
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coloring and decoration on a folded decorative napkin of the type described
by Taylor or Smith. This combination is nothing more than the mere
application of a known technique to a piece of prior art ready for the
improvement, or the predictable use of prior art elements, known for use in
making decorative napkins, according to their established functions. See
KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 417 (2007). The resulting
napkin is a pre-printed generally rectangular napkin pre-printed with
decoration as taught by Sieber and folded into a smaller shape in a sequence
of multiple folds to simulate an object, as taught by Smith and Taylor. The
resulting folded napkin is capable of resting stably on a table and of being
stacked with other, identical napkins for package and storage. The only
differences between the resulting pre-printed and pre-folded napkin and the
subject matter of Appellant’s claims relate to the particulars of the
appearance of the napkin and the object to be simulated.
The particulars of the object to be simulated by the folded paper
napkin relate to the appearance of the napkin and have no mechanical
function, and thus cannot be relied upon for patentability. In re Seid, 161
F.2d 229, 231 (CCPA 1947) (Features that relate to ornamentation only and
have no mechanical function whatsoever cannot be relied upon for
patentability of a claim in a utility patent application.). The details of the
printing and the particulars of the object to be simulated are “‘useful and
intelligible only to the human mind.’” See In re Lowry, 32 F.3d 1579, 1583
(Fed. Cir. 1994) (quoting In re Bernhart, 417 F.2d 1395, 1399 (CCPA
1969)) (distinguishing such claim limitations from claim limitations defining
functional characteristics). They do not exploit or interrelate with any other
structural elements of the underlying napkin. Accordingly, we do not find
that the appearance limitations at issue are functionally related to the napkin
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so as to patentably distinguish the subject matter of Appellant’s claims from
the decorative folded napkin of the combination of Taylor, Smith, and
Sieber.
DECISION
The Examiner’s decision rejecting claims 1, 13-15, and 17-29 is
reversed.
FINALITY OF DECISION
This decision contains a new ground of rejection pursuant to
37 C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides “[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review.”
37 C.F.R. § 41.50(b) also provides that the appellant, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new ground of rejection to
avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate amendment of
the claims so rejected or new evidence relating to the claims so
rejected, or both, and have the matter reconsidered by the
examiner, in which event the proceeding will be remanded to
the examiner. . . .
(2) Request rehearing. Request that the proceeding be reheard
under § 41.52 by the Board upon the same record. . . .
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).

REVERSED; 37 C.F.R. § 41.50(b)

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