Ex Parte Shannon et al

Board of Patent Appeals and Interferences

Jul 17, 2012

11220378 (B.P.A.I. Jul. 17, 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.
11/220,378 08/31/2005 Thomas G. Shannon KCX-996 (21015) 1611
22827 7590 07/17/2012
DORITY & MANNING, P.A.
POST OFFICE BOX 1449
GREENVILLE, SC 29602-1449
EXAMINER
O'HERN, BRENT T
ART UNIT PAPER NUMBER
1783
MAIL DATE DELIVERY MODE
07/17/2012 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 THOMAS G. SHANNON,
REBECCA C. MOHR, and CRYSTAL E. SHERMAN
__________

Appeal 2010-010983
Application 11/220,378
Technology Center 1700
____________

Before PETER F. KRATZ, JEFFREY T. SMITH, and
MICHAEL P. COLAIANNI, Administrative Patent Judges.

COLAIANNI, Administrative Patent Judge.

DECISION ON APPEAL

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Appellants appeal under 35 U.S.C. § 134 the final rejection of claims
14-25. We have jurisdiction over the appeal pursuant to 35 U.S.C. § 6(b).
We AFFIRM.
Appellants’ invention is said to be directed to a rolled tissue product
that includes a repeating pattern located on a first surface of the tissue
product (Spec. 5:31-33; 6:3-5). The repeating pattern aids in potty training
children by teaching them the proper amount of tissue paper to use (Spec.
2:1-5).
Claim 14 is illustrative:
14. A rolled tissue product comprising:
a tissue web spirally wound onto a roll, said tissue web
defining a first surface, said tissue web formed from tissue
sheets separated by perforations along said tissue web; and
a design located on said first surface, said design
comprising groups, each said group consisting essentially of a
repeating character, wherein each said group comprises a
different repeating character than the adjacent groups on said
tissue web, each said group extending over a distance of from
about 2 to about 5 tissue sheets.
Appellants appeal the following rejections:
1. Claims 14-17, and 19-25 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Penn (US 2004/0003521 A1 published Jan. 8,
2004).
2. Claim 18 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Penn in view of Gooding Jr. (US 4,963,406 issued Oct. 16,
1990).

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Regarding rejection (1), Appellants separately argue claims 14, 17,
19, and 20-22 (App. Br. 5-14).
Appellants do not separately argue rejection (2), relying instead on
arguments made regarding claim 14 under rejection (1) (id. at 14).
Accordingly, claim 18 will stand or fall with our analysis regarding claim 14
under rejection (1).

ISSUE
Did the Examiner reversibly err in determining that the teachings of
Penn would have rendered obvious the subject matter of claim 14 which
includes a design comprising groups consisting essentially of a repeating
character with adjacent groups comprising a different repeating character?
We decide this issue in the negative.

FINDINGS OF FACT AND ANALYSES
CLAIM 14
Appellants argue that Penn fails to teach groups of a repeating
character and the Examiner has misinterpreted the scope of claim 14 (App.
Br. 5-8). Appellants contend that Penn teaches repeating of a group of
different characters, not a repeated character within a group as shown, for
example, in Appellants’ Figure 1 (id. at 6-7). Appellants further contend
that the Examiner’s statement that “the claims do not specify the characters
repeating within each group” is at odds with the express language in claim
14 (id. at 7-8). Appellants contend that the proper scope of claim 14
requires that the first repeating character be the same within a group with an
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adjacent group consisting essentially of a different repeating character (id. at
8).
We begin our analysis by construing claim 14. We note that claim 14
requires a design located on the first surface of the toilet paper wherein the
design comprises groups that consist essentially of a repeating character with
adjacent groups on the first surface comprising a different repeating
character. We understand “a repeating character” to mean that within a
group one of the characters is the same (i.e., repeated). This embodiment is
as depicted in Appellants’ Figures 1 and 2 as argued by Appellants (id. at 8-
9).
With this proper construction, we address the obviousness of the
claimed invention over Penn. We note that Penn teaches that a series of
characters, such as circles, triangles, cartoon characters, etc. may be placed
on every given number of sheets of toilet tissue to instruct a potty training
child on the proper amount of toilet tissue to use (Penn para. [0040]). Penn
further teaches that the other designs such as numbers and letters may be
alternatingly formed on the toilet tissue for toilet training and educational
purposes (id. at para. [0039]).
Based on these findings, we agree with the Examiner that Penn would
have rendered obvious the subject matter of claim 14 that includes a design
of a repeated character and an adjacent design of a different repeated
character. One of ordinary skill in the art would have reasonably inferred
from Penn’s teaching that different groupings of designs (e.g., letters then
numbers) may be alternatingly formed and Penn’s teaching that a series of
markings may be used to designate the proper amount of toilet tissue that
Penn would have suggested forming a tissue paper roller having a group of a
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repeating character (e.g., circles) followed by a group of a different
repeating character (e.g., triangles) to designate the proper amount of toilet
tissue for potty training purposes. KSR Int’l Co. v. Teleflex Inc., 550 US
398, 418 (2007) (The obviousness analysis need not seek out precise
teachings directed to the specific subject matter of the challenged claim, for
a court can take account of the inferences and creative steps that a person of
ordinary skill in the art would employ.).
Appellants further argue that Penn expressly teaches that the pictures
within each group are different such that Penn teaches away from using the
same reference character within a group (App. Br. 11). However, we do not
find that Penn discourages the use of the same character within a grouping.
Though Penn may teach embodiments where different story sets are depicted
with different characters as argued (id.), Penn further teaches that a series of
a reference character (e.g., circles) may be used to designate a proper
amount of toilet tissue (Penn para. [0040]; Figures 9 and 10). We do not
find that Penn teaches away from the claimed subject matter.

CLAIMS 17 AND 19
Regarding claim 17, Appellants argue that since Penn does not teach
groupings having repeated images, Penn does not teach perforations
registered between such groupings (App. Br. 12). Regarding claim 19,
Appellants argue that Penn’s failure to teach groupings having repeated
images means that Penn does not teach providing a visual cue indicating
where the perforation line registered between each group is located (id.).
We are unpersuaded by these arguments for the reasons noted above
and we agree that Penn would have rendered obvious the groupings with a
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repeated character and a different repeated character. We agree with the
Examiner that Penn teaches perforations and a visual cue where such
perforations are located (Ans. 3-7, 12). Penn teaches that a colored band
may be used as a visual cue to indicate the location of the perforation for an
appropriate length of toilet tissue (i.e., a length of toilet tissue having a
grouping as a repeated character as suggested by Penn) (Penn para. [0041]).

CLAIM 20
Appellants argue that Penn does not teach that the characters in the
group are unregistered with respect to the perforations (App. Br. 13).
Appellants contend that the Examiner’s reliance on reference numerals 46
and 48 of Penn’s Figure 6 as showing the character spanning a perforation is
undermined by Penn’s clear intent that the characters be contained on a
single sheet and not bridge two adjacent sheets by extending over a
perforation (id.).
Missing from Appellants’ response is any acknowledgement or
addressing of the Examiner’s finding that it would have been within the skill
of an ordinary artisan (e.g., a design choice) as to the location of the
characters, which may include bridging a perforation or spanning more than
one toilet tissue sheet (Final Off. Act. 7; Ans. 7). Moreover, we agree with
the Examiner that Penn’s Figure 6 shows that character 48 spans a
perforation.

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CLAIMS 21 AND 22
Appellants argue that Penn does not teach a grouping of a repeated
character extending over 3 (claim 21) or 4 (claim 22) sheets of toilet tissue
(App. Br. 14).
For the reasons discussed regarding claim 14, we disagree. Penn
plainly teaches that the designs extend over a length of toilet tissue that may
be two or more sheets (Penn para. [0035]), which overlaps and includes
Appellants’ claimed toilet tissue lengths. Penn’s Figures 9 and 10 show a
proper length of toilet tissue may be three sheets. In light of our analysis
regarding claim 14, we find that Appellants’ arguments regarding claims 21
and 22 are without persuasive merit.
On this record for the above reasons, we affirm the Examiner’s § 103
rejection (1) over Penn. We further affirm the Examiner’s rejection (2) of
claim 18 over Penn in view of Gooding, Jr. for the same reasons.

DECISION
The Examiner’s decision is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136.

ORDER
AFFIRMED

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