Ex Parte Hallam et al

Patent Trial and Appeal Board

Aug 29, 2016

13040464 (P.T.A.B. Aug. 29, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/040,464 03/04/2011
23556 7590 08/29/2016
KIMBERLY-CLARK WORLDWIDE, INC.
Patent Docketing
2300 Winchester Rd.
NEENAH, WI 54956
FIRST NAMED INVENTOR
James Alexander Hallam
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
64760238US01 2989
EXAMINER
KUMAR, RAKESH
ART UNIT PAPER NUMBER
3651
MAILDATE DELIVERY MODE
08/29/2016 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 JAMES ALEXANDER HALLAM, DENNIS EDWARD FRYER,
MARTIN CHRISTOPHER BUNCE, PETER BOOTH,
and JAMES MALLION
Appeal2014-009923
Application 13/040,464 1
Technology Center 3600
Before NINA L. MEDLOCK, KENNETH G. SCHOPPER, and
MATTHEWS. MEYERS, Administrative Patent Judges.
SCHOPPER, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 from the rejection of
claims 1-19. We have jurisdiction under 35 U.S.C. § 6(b ).
We AFFIRM-IN-PART.
BACKGROUND
According to Appellants:
This disclosure relates to a tissue carton comprising a
stack of compressed tissues wrapped in a releasable
1 According to Appellants, the real party in interest is Kimberly-Clark
Worldwide, Inc. Br. 1.
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Application 13/040,464
constrammg device which maintains the tissues m a
compressed state until released by a user. Various
embodiments of compressed tissue stacks and cartons are
disclosed. By wrapping the compressed tissues in a releasable
constraining device it has been discovered that the tissues may
be packed in smaller volume cartons, while allowing users to
dispense the tissues normally.
Spec. 1, 11. 3-8.
CLAIMS
Claims 1-19 are on appeal. Claim 1 is illustrative of the appealed
claims and recites:
Br. 9
1. A tissue carton for dispensing a compressed stack of
tissues comprising:
a. one or more panels forming the outer walls of the
carton;
b. a carton opening disposed on at least one panel; and
c. an overwrapped compressed stack of tissues disposed
within the carton, the overwrap having a dispensing
openmg defined by a tear strip disposed on its upper
surface.
REJECTIONS
1. The Examiner rejects claims 1 and 9 under 35 U.S.C. § 103(a) as
unpatentable over McLaren2 in view of Takashima. 3
2. The Examiner rejects claim 2 under 35 U.S.C. § 103(a) as
unpatentable over McLaren in view of Takashima and Harrison. 4
2 McLaren et al., US 3,970,215, iss. July 20, 1976.
3 Takashima, JP 09140623A, pub. June 3, 1997.
4 Harrison, US 3,684,086, iss. Aug. 15, 1972.
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Application 13/040,464
3. The Examiner rejects claims 3-5, 7, 8 under 35 U.S.C. § 103(a) as
unpatentable over McLaren in view of Takashima, Harrison, and
Nowak. 5
4. The Examiner rejects claims 6 under 35 U.S.C. § 103(a) as
unpatentable over McLaren in view of Takashima, Harrison,
Nowak, and Long. 6
5. The Examiner rejects claims 10-197 under 35 U.S.C. § 103(a) as
unpatentable over McLaren in view of Takashima, Harrison,
Nowak, Long, and Shannon. 8
DISCUSSION
Rejection 1
Independent Claim 1 and Dependent Claim 9
The Examiner finds that McLaren discloses a tissue carton as claimed
except that McLaren does not disclose that the tissues are compressed, for
which the Examiner relies on Takashima. Final Act. 2-3.
Appellants argue only that McLaren does not disclose a tear strip as
claimed because McLaren only discloses a piece of tape that does not define
the dispensing opening and the tape cannot be interpreted as a tear strip
5 Nowak, US 2008/0061120 Al, pub. Mar. 13, 2008.
6 Long et al., US 8,205,748 B2, iss. June 26, 2012.
7 The Examiner includes claims 13-16 and 18 in the rejection over
McLaren, Takashima, Harrison, and Nowak and includes claim 17 in the
rejection over McLaren, Takashima, Harrison, Nowak, and Long. See Final
Act. 4, 6. However, these claims each ultimately depend from independent
claim 10, which has only been rejected over McLaren, Takashima, Harrison,
Nowak, Long, and Shannon. Id. at 7. For this reason, we address claims
13-18 with respect to the rejection including Shannon.
8 Shannon et al., US 2010/0078444 Al, pub. Apr. 1, 2010.
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Application 13/040,464
because "it is not part of the package that is removed to create a package
opening ... the tape is removed and reattached- it is a seal." Appeal Br. 2.
We agree with the Examiner that under the broadest reasonable
interpretation of the claim McLaren's piece of tape may be considered to
define the dispensing opening because the removal of the tape is required to
create the opening between the overlapping portions of McLaren's
overwrap. See Ans. 3. We also agree with the Examiner that the tape may
be said to form a tear strip under the broadest reasonable interpretation of the
claim. Id. The Specification does not provide a specific definition of tear
strip, but indicates that it is a releasable constraining device that is removed
to create a dispensing opening. See Spec. 1, 11. 29-31. McLaren discloses
that the tape is removed to allow for dispensing of tissues, and thus, it may
be considered a releasable constraining device removed to create an opening.
See McLaren col. 1, 11. 41--44.
Further, to the extent that Appellants also argue that McLaren's tape is
not a tear strip because it is reattached (see Br. 2--4), we are not persuaded.
Rather, we agree with the Examiner that McLaren does not expressly
disclose that the tape is reattached (see Ans. 4), and McLaren indicates that
the overlapping edges of the wrap "will remain in position to retard the loss
of moisture from the package." See McLaren col. 1, 11. 42--44.
Accordingly, we find that Appellants have not identified any error in
the rejection, and thus, we sustain the rejection of claim 1. Appellants did
not provide separate arguments with respect to claim 9, and thus, we also
sustain the rejection of claim 9 for the same reasons.
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Rejection 2
Dependent Claim 2
With respect to claim 2, the Examiner relies on Harrison to disclose a
tear strip with a pair of parallel lines of weakness. See Final Act. 3 (citing
Harrison Fig. 2, Abstract).
Appellants first argue that the combination would change McLaren's
principle of operation by leaving McLaren's moist wipes exposed to the
environment. Br. 3--4. We disagree. This argument presupposes that the
sealing tape in McLaren is designed to be reattached to prevent moisture
loss, but, as discussed above, McLaren provides an overlapping wrapper to
reduce moisture loss once the package is open and does not disclose that the
tape is reattached.
Appellants also argue that there is no reason to combine the references
and that the combination is based on hindsight because the "only plausible
basis for combining ... is hindsight based upon Appellants' disclosure."
Br. 4. The Examiner concludes that it would be obvious to modify McLaren
to include a strip that can open the package "in a controlled manner and
wherein the tear strip would [] provide a consistent cleaner edge at both
end[ s] of the opening." Final Act. 4. Appellants assert:
This reasoning overlooks the objectives of McLaren's package,
overly simplifies the dispensing issue solved by the present
invention and fails to provide the requisite reasoning why one
would combine the references as asserted. In reality, the
asserted combination is based upon the claimed invention itself.
Such hindsight however, is not permitted and cannot serve as
the basis for a rejection under 35 U.S.C. §103.
Br. 4. Beyond the argument that the Examiner's conclusion overlooks the
objectives of McLaren's package, which was addressed above with respect
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to moisture loss, Appellants have not otherwise provided an explanation as
to why the Examiner's reasoning is incorrect and have provided no basis for
us to conclude that the rejection is based on impermissible hindsight.
Accordingly, we are not persuaded of error, and thus, we sustain the
rejection of claim 2.
Rejection 3
Dependent Claims 3 and 4
With respect to claim 3, the Examiner further relies on Nowak as
disclosing a tear strip with the claimed dimensions. Final Act. 4--5 (citing
Nowak Fig. 1, i-fi-131-34). The Examiner concludes that the width of the tear
strip is a result effective variable and that discovering the optimum working
range would have been obvious and would involve only routine skill in the
art. Id. at 5.
Appellants argue that the claimed tear strip defines a dispensing
opening that is unrelated to Nowak's tear strip and there is nothing in the art
that would lead one to the recited width for the tear strip. Br. 5. Further,
Appellants assert that the Examiner's assertion that the width is "merely a
design choice" is inappropriate because "the width of the tear strip is
significant as it provides a space for the compressed tissues to expand into
and facilitates formation of the proper dispensing opening." Id. at 5---6. We
are not persuaded that Nowak's tear strip is unrelated to the claimed tear
strip. To the extent Appellants are arguing that Nowak is not analogous art,
Appellants have not adequately explained why Nowak is not in the same
field of endeavor as the claimed invention or reasonably pertinent to the
problem with which Appellants were involved. See In re Klein, 647 F.3d
1343 (Fed. Cir. 2011).
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Further, Appellants' argument that design choice 1s mappropriate as a
basis for rejection because the width of the tear strip is related to providing
space for the compressed tissues to expand and that "[t]he [E]xaminer has
provided no evidence that tear strips were known in the art as a means of
releasing a compressed stack of tissues and forming a dispensing opening" is
not commensurate with scope of claim 3, which along with claims 1 and 2,
does not recite any relationship between removing the tear strip and causing
the tissues to expand, i.e., claim 1 requires only that the tissues are in a
compressed stack and separately requires that the dispensing opening is
defined by a tear strip. Thus, these claims require only that the tear strip
defines the dispensing opening, and as discussed above, the art of record
provides evidence that this was known.
Accordingly, we are not persuaded of error, and thus, we sustain the
rejection of claim 3. Appellants do not raise separate arguments with respect
to claim 4, and thus, we sustain the rejection of claim 4 for the same reasons.
Dependent Claims 5, 7, and 8
With respect to claims 5, 7, and 8, Appellants argue:
It is unclear to Appellants how this relates to the size of the
carton opening (claim 5), a removable surfboard (claim 7), the
dimensions of the surfboard (claim 16) or adhesive disposed on
a surfboard (claims 8 and 18). Provided the complete lack of
reasoning for rejecting these claims over Nowak, which is
directed to a method of opening a ream of paper, Appellants
respectfully submit that the rejection of claims 5, 7, 8, 16 and
18 is improper and should be reversed.
Br. 5. Without further explanation, we are not persuaded of error with
respect to the rejection of claims 5, 7, and 8. With respect to claim 5, the
Examiner concludes that the claimed dimensions in both claims 3 and 5
would have been obvious in light ofNowak's disclosure. See Final Act. 5.
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Appellants have not sufficiently explained why or how the Examiner erred
in reaching this conclusion. With respect to claims 7 and 8, the Examiner
identified a surfboard opening in McLaren as well as an adhesive, and
Appellants have not identified any error in these findings. Id. at 6. 9 For
these reasons, we sustain the rejection of claims 5, 7, and 8.
Rejection 4
Dependent Claim 6
With respect to claim 6, the Examiner finds that it would have been
obvious to include a stack of compressed wipes as claimed based on Long's
disclosure of compression of tissues from about 30% to about 50%. Final
Act. 6 (citing Long col. 5, 11. 24). With respect to this claim, Appellants
argue only that the motivation to combine provided by the Examiner "is
insufficient to support the cobbling together of Long, McLaren, Takashima,
Harrison and Nowak to reach the invention of' claim 6. Br. 6. However,
the Examiner has articulated reasons for each of the proposed modifications,
and we find that the number of references used, by itself, does not indicate
any error in the rejection. Because Appellants have not shown any error in
the rejection, we sustain the rejection of claim 6.
9 Although the Examiner references "Andersson" in the rejection, the
Examiner refers to portions of McLaren, e.g., surfboard 13A and tear
strip 38. Final Act. 6. Thus, we understand the Examiner to be referencing
McLaren rather than Andersson for the rejection of claims 7 and 8.
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Rejection 5
Independent Claim 10 and Dependent Claims 11-19
Claim 10 is similar to claim 1 except that it specifically requires that
removal of the tear strip causes the compressed stack of tissues to expand to
an uncompressed height. Br. 10.
The Examiner relies on the combination of references for claim 1
further in view of Shannon as follows:
Shannon discloses a compressed tissue dispenser
(Figure 2) wherein a removal of a tear strip (L; Figure 5) results
[sic] the dispenser to expand to an uncompressed state.
It would have been obvious to one of ordinary skill in the
art at the time the invention was made to have modified the
teachings of McLaren in view Takashima in view of Harrison
in view of Nowak and Long to have included the dispenser
expanding to an uncompressed state when the tear strip is
removed as taught by Shannon because the dispenser could
transported in a compressed state thus reducing the volume
required to transport the dispenser.
Final Act. 7.
We agree with the Appellants that although the Examiner's reasoning
"may be general motivation for one skilled in art to set out an attempt to
solve the problem of compressed tissue packaging, storage and dispensing, it
is not motivation to combine Shannon, Long, McLaren, Takashima,
Harrison and Nowak in a manner similar to claim 10." Br. 7. Shannon
discloses a sticker that is removed to expand a tissue box. See Shannon
i-f 27. However, the Examiner has not sufficiently explained why Shannon's
sticker is a tear strip as claimed, and the Examiner has not sufficiently
articulated why any portion of the art of record would have motivated one of
ordinary skill to modify McLaren's tape closure to cause a compressed stack
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of tissues to expand to an uncompressed height. For these reasons, we are
persuaded of error with respect to the rejection of claim 10. Accordingly,
we do not sustain the rejection of claim 10 or the rejection of claims 11-19,
which each ultimately depends from claim 10.
CONCLUSION
For the reasons set forth above, we AFFIRM the rejections of
claims 1-9, and we REVERSE the rejections of claims 10-19.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED-IN-PART
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