Ex Parte Long et al

Board of Patent Appeals and Interferences

Jun 11, 2012

10955435 (B.P.A.I. Jun. 11, 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.
10/955,435 09/30/2004 Leslie Thomas Long 20,606 4135
23556 7590 06/12/2012
KIMBERLY-CLARK WORLDWIDE, INC.
Tara Pohlkotte
2300 Winchester Rd.
NEENAH, WI 54956
EXAMINER
BUTLER, MICHAEL E
ART UNIT PAPER NUMBER
3653
MAIL DATE DELIVERY MODE
06/12/2012 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 LESLIE THOMAS LONG, EMORY EMLL
LUEBKE, and MICHELLE LYNN SEABAUGH
____________________

Appeal 2010-005239
Application 10/955,435
Technology Center 3600
____________________

Before: JOHN C. KERINS, CHARLES N. GREENHUT, and
PATRICK R. SCANLON, Administrative Patent Judges.

GREENHUT, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF CASE
Appellants appeal under 35 U.S.C. § 134 from a rejection of claims 1-
9 and 13-26. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm-in-part.

The claims are directed to a folded clip and dispenser. Claim 1,
reproduced below, is illustrative of the claimed subject matter:
1. A product comprising:
an upright dispenser having a top, a bottom, a sidewall,
and a dispensing opening;
a folded clip of sheet material located within the
dispenser having a first end, a second end, a folded end, and a
longitudinal fold axis; and
wherein the folded clip is oriented within the dispenser
such that the longitudinal fold axis intersects with the
dispenser's sidewall, and the sheet material is dispensed from
either the folded end of the clip or from the first and second
ends of the clip.

REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Nissen
Early
Veith
Schmidt
Behnke
US 3,679,094
US 3,881,632
US 6,349,525 B1
US 6,685,050 B2
US 7,028,860 B2
Jul. 25, 1972
May 6, 1975
Feb. 26, 2002
Feb. 3, 2004
Apr. 18, 2006
REJECTIONS
Claims 3-9 and 131-26 are rejected under 35 U.S.C. § 112 second
paragraph, as being indefinite. Ans. 3.

1 Claim 12 has been withdrawn.
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Claims 18-21 are rejected under 35 U.S.C. § 102(b) as being
anticipated by Veith. Ans. 4.
Claims 1-5, 13-18, 23, and 24 are rejected under 35 U.S.C. § 102(b)
as being anticipated by Early. Ans. 4.
Claims 1 and 7-9, 22, 25 and 26 are rejected under 35 U.S.C. § 103(a)
as being unpatentable over Veith and Early. Ans. 6.
Claim 26 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Veith and Schmidt. Ans. 7.
Claim 22 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Veith and Nissen. Ans. 9.
Claim 6 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Early and Behnke. Ans. 10.

OPINION
Indefiniteness
Regarding the rejection under 35 U. S. C. § 112 second paragraph the
Examiner contends that “Applicant’s open ended range limits leave it
ambiguous as to how much beyond 70 mm qualifies as about 70mm or how
much below 75 percent [is] about 75 percent.” Ans. 3-4.
In the litigation context our reviewing court
has looked at the meaning of the term "about," and similar
qualifying words or phrases, in other cases and has developed
an approach to the interpretation of such terms:

[T]he word “about” does not have a universal meaning in
patent claims, . . . the meaning depends upon the
technological facts of the particular case.
* * *
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The use of the word “about,” avoids a strict numerical
boundary to the specified parameter. Its range must be
interpreted in its technological and stylistic context.

Ortho-Mcneil Pharmaceutical V. Caraco Pharm. Lab., 476 F. 3d 1321 (Fed.
Cir. 2007) (quoting Pall Corp. v. Micron Separations, Inc., 66 F.3d 1211,
1217 (Fed.Cir.1995)).
While a different mode of claim interpretation is applicable during
prosecution of a pending application before the PTO (In re Zletz, 893 F. 2d
319, 321 (Fed. Cir. 1990)), including the term “about” in a claimed range
similarly does not necessarily render a claim indefinite. See e.g., MPEP
2173.05(b). The meaning of the term depends upon the specific facts of the
application. Pointing to the absence of a strict numerical boundary does not
persuade us that one skilled in the art would not be able to determine the
scope of the claimed invention in terms of a specified dimensional or
percentage value. See In re Mattison 509 F 2d 563, 565 (CCPA 1975); In re
Marosi, 710 F. 2d 799, 803-4 (Fed. Cir. 1983). Accordingly, we do not
sustain the Examiner’s rejection under 35 U. S. C. § 112 second paragraph.

The Fill Ratio
In each of the rejections above based on Veith, Early or the
combination thereof, the Examiner found that Veith or Early disclosed the
claimed fill ratio. This is the only point of contention regarding the
Examiner’s rejection of claims 18-21 as anticipated by Veith (App. Br. 4),
and regarding the Examiner’s rejection of claim 18 as anticipated by Early
(App. Br. 5). This same issue is raised, though not further developed,
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regarding the rejection based on the combinations of Veith and Early (App.
Br. 5), and Veith and Schmidt (App. Br. 6).
In each case the Examiner selected exemplary dimensional values
from the Specifications of Veith and Early and from these values was able to
calculate the void volume or empty space within each respective box and the
volume of the boxes themselves. From these values the Examiner calculated
the tissue volume as the difference between the box volume and void
volume and divided the result by the box volume. Multiplying that result by
100 provides an approximation2 of the “fill ratio” in accordance with the
meaning of that term as it is used in Appellants’ Specification: “The Fill
Ratio compares the volume occupied by the uncompressed flat clip to the
available interior volume of the upright dispenser.” Spec. 11:5-24.
Where the Examiner points to dimensions in Veith, such as α, the
Examiner is not alleging these dimensions represent the fill ratio, nor are the
sole determinative factor thereof. Contra App. Br. 4. Rather, the Examiner
correctly found that these dimensions can be used to calculate the “fill ratio.”
Ans. 11-15. This is not a case where the Examiner improperly relied upon
speculation (See App. Br. 5), for example by relying on dimensions
discerned only from drawings. Cf. e.g., Hockerson-Halberstadt, Inc. v. Avia
Group Int'l, 222 F.3d 951, 956 (Fed. Cir. 2000). Rather, the Examiner relied
on dimensional examples expressly disclosed in Early and Veith. Ans. 11-
15. Appellants’ arguments are generally non-responsive to the Examiner’s
position in this regard.

2 Neglecting the effects of compression and/or folding.
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Accordingly, we do not find Appellants’ arguments concerning the
claimed “fill ratio” persuasive and we agree with the Examiner that both
Veith and Early disclose such a ratio within the range claimed.

The longitudinal fold axis
Appellants contend that neither Veith nor Early discloses a folded clip
of tissues in which the longitudinal fold axis intersects the dispenser sidewall
as required by claim 1. App. Br. 4, 5. However, the Examiner relies only on
Early and not Veith for this limitation. Ans. 4-8, 10, 13-14. Appellants
contend that “the longitudinal fold axis 40 of the [Early] clip is vertical, not
in the direction of ‘W’ in Figure 1 of Early. The direction ‘W’ of Early is
parallel to what Appellants refer to as the ‘transverse fold axis.’”
We recognize, even when no lexicographic definition of a disputed
term is provided, as is the case here, our construction of that term cannot be
divorced from Appellants’ Specification. See e.g., In re NTP, 654 F. 3d
1279, 1288 (Fed. Cir. 2011). However, where, as here, Appellants chose to
describe a feature in the claims in a manner more broadly than was used in
the Specification, we must decline to import limitations of the preferred
embodiment into the claims. See Ans. 13; See also e.g., SuperGuide Corp.
v. DirecTV Enters., Inc., 358 F.3d 870, 875 (Fed. Cir. 2004).
While the longitudinal fold axis 40 in Appellants’ figure 2 may be an
axis extending in the longitudinal direction of the unfolded clip, claim 1
makes no such restriction on the orientation of the “longitudinal fold axis.”
Thus, we agree with the Examiner that, when given its broadest reasonable
interpretation, the term may be reasonably interpreted to include an axis in
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the longitudinal direction3 W of the dispensing package 20 about which the
clip is folded. Ans. 4. Appellants do not present any arguments to
persuasively demonstrate why such a claim interpretation is unreasonable.
Accordingly, we do not find Appellants’ arguments concerning the
claimed “longitudinal fold axis” persuasive and we agree with the Examiner
that Early discloses a clip having a longitudinal fold axis that intersects with
the dispenser’s sidewall.

The Transverse Fold Axis Offset from a Transverse Central Axis
Appellants provide only brief arguments concerning the offset of
claims 13 and 23. App. Br. 5. Like the arguments advanced by Appellants
regarding the “longitudinal fold axis” discussed above, Appellants are again
presuming the Examiner is relying on axes analogous to the transverse fold
axis 36 and the transverse central axis 34 depicted in Appellants’ figure 1.
However, while the Examiner relies on the transverse axis about which the
clip is folded as the fold axis, the Examiner interprets the central axis of the
dispenser as “a transverse central axis.” The offset between these axes is
readily calculated by the Examiner, based on the dimensions disclosed by
Early, to fall within the claimed range. Again, Appellants have not
addressed the position taken by the Examiner by advancing any arguments
to demonstrate why the Examiner’s interpretation is unreasonable. Like the
“longitudinal fold axis” discussed above, we can identify no limitation in
claims 13 or 23 precluding such an interpretation of “a central transverse
axis.”

3 It is noted that the Examiner appears to have expressed 4 3/8 as 4.75 instead
of 4.375. This error appears to be inconsequential to the Examiner’s
position since either is greater than 4 ¼ (4.25).
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Adopting the Examiner’s, as opposed to the Appellant’s, proposed
interpretation of a transverse fold axis offset from a transverse central axis,
no “J-shape” is mandated merely by the presence of that limitation. Contra
App. Br. 5.

The angle α between the longitudinal fold axis and the diagonal dispenser
axis.
Regarding the Examiner’s rejection of claim 6, Appellants contend
that “[t]he longitudinal fold axis of the clip is perfectly vertical” and “the
diagonal dispenser axis would be a line drawn from the lower right corner
(just below reference number 18) to the upper left corner (where the lid
meets the sidewall, above and between reference numbers 28
and 58).” However, once again, Appellants fail to address the position taken
by the Examiner. The Examiner interprets the “longitudinal fold axis” in
Behnke in the same manner as was done regarding Early and parent claim 1
discussed above. Again Appellants do not apprise us of, and we can identify
no reason why such an interpretation is unreasonable. Further, Appellants
do not apprise us of, and we can identify no reason why the Examiner’s
interpretation of “a diagonal dispenser axis” as an axis extending in both the
longitudinal, transverse and optionally vertical, directions of Behnke’s
container is unreasonable. See Ans. 16 (describing Behnke fig. 8). With this
interpretation and the dimensions disclosed in Behnke, the Examiner readily
calculated an angle α between the aforementioned axes which falls within
the claimed range. Appellants do not apprise us of any error in this
calculation.

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The J-shaped clip
The Examiner determined that “[i]t would have been obvious at the
time of the invention for Veith et al. to substitute J-shape clip to minimize
unwanted folding during dispensing as taught by Early.” Ans. 7. The
Examiner cites Early column 7, lines 5-10 and figures 6-84 in support of this
position. Ans. 6-7. The Examiner is apparently referring to a portion of the
top sheet 47, for example between half fold 81 and quarter fold 82, as folded
in the alternative arrangement depicted in figures 6 or 7. While this portion
does have a J-shape, claim 22 calls for a J-shaped clip. This limitation is not
met by a J-shaped portion of a particular sheet or interleaved sheets,
particularly where the parent claim, claim 18 also requires the clip to have a
fill ratio between about 75 and 100 percent. The Examiner’s reliance on
Nissen in the alternative does not cure this deficiency for similar reasons.5
App. Br. 6.
Accordingly, we cannot sustain the Examiner’s rejection of claim 22
based on the combination of Veith and Early or Veith and Nissen.

Appellants remaining arguments
Appellant argues the Examiner’s rejection of claims 24 and 26 based
solely upon dependency. App. Br. 5, 6. Since we have found those

4 Early does not have a Fig. 8.
5 While it is not entirely clear what portion of Nissen the Examiner is
referring to by citing clip 41/42 in figs 21 and 22 (Ans. 9, 15), which
reference numerals do not appear in Nissen, Nissen does not appear to add
anything substantial to Early, teaching only a J-shaped fold in a portion of a
sheet in a portion of a stack and not an entire clip. See col. 3, ll. 4-14, Fig.
11.
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arguments directed to the claims from which claims 24 and 26 depend
unpersuasive, we also find these arguments unpersuasive.

DECISION
The Examiner’s rejection of claims 3-9 and 13-26 under 35 U.S.C.
§ 112 second paragraph is reversed.
The Examiner’s rejection of claims 18-21 as being anticipated by
Veith is affirmed.
The Examiner’s rejection of claims 1-5, 13-18, 23, and 24 as being
anticipated by Early is affirmed.
The Examiner’s rejection of claims 1 and 7-9, 25 and 26 as being
unpatentable over Veith and Early is affirmed.
The Examiner’s rejection of claim 26 as being unpatentable over
Veith and Schmidt is affirmed.
The Examiner’s rejection of claim 22 based on the combination of
Veith and Early is reversed.
The Examiner’s rejection of claim 22 based on the combination of
Veith and Nissen is reversed.

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

MP