Franklin, Linda R.

Patent Trials and Appeals Board

Feb 11, 2020

13930014 - (D) (P.T.A.B. Feb. 11, 2020)

UNITED STATES PATENT AND TRADEMARK OFFICE
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.
13/930,014 06/28/2013 Linda R. Franklin 4012687-193180 8393
23570 7590 02/11/2020
PORTER WRIGHT MORRIS & ARTHUR, LLP
INTELLECTUAL PROPERTY GROUP
41 SOUTH HIGH STREET
29TH FLOOR
COLUMBUS, OH 43215
EXAMINER
KUMAR, RAKESH
ART UNIT PAPER NUMBER
3651
NOTIFICATION DATE DELIVERY MODE
02/11/2020 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
ipdocket@porterwright.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte LINDA R. FRANKLIN
__________________

Appeal 2019-003838
Application 13/930,014
Technology Center 3600
____________________

Before EDWARD A. BROWN, JAMES P. CALVE, and
PAUL J. KORNICZKY, Administrative Patent Judges.

CALVE, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the decision
of the Examiner to reject claims 1–4, 6–8, and 21–28. Br. 8, 14. Claims 5,
9–20, 29, and 30 are cancelled. See id. at 16–17 (Claims App.). We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 “Appellant” refers to “applicant” as defined in 37 C.F.R. § 1.42. Appellant
identifies Linda R. Franklin as the real party in interest. Br. 3.
Appeal 2018-003838
Application 13/930,014
2
CLAIMED SUBJECT MATTER
The claims are directed to “tissue dispensers having integral waste
receptacles for soiled tissues and other debris.” Spec. ¶ 6. Claim 1, the sole
independent claim, is reproduced below.
1. A tissue dispenser comprising, in combination:
a container having a plurality of walls forming a
rectangular-shaped hollow interior space for holding clean
tissues and a dispensing opening for removing clean tissues
from the interior space;
wherein the plurality of walls of the container comprise
plastic film;
a plastic bag having opposed inner and outer walls
forming an interior cavity between the outer and inner walls,
and an access opening for inserting soiled tissues into the
interior cavity;
wherein the inner and outer walls of the plastic bag
comprise plastic film;
wherein the inner wall of the plastic bag is fully secured
to an exterior surface of the container so that the inner wall lays
fully flat against the exterior surface of the container when the
interior space of the plastic bag is empty and when soiled
tissues are within the interior space of the plastic bag;
wherein at least a portion of the plastic film of the outer
wall is stretchable so that the plastic film of the outer wall
elastically expands when soiled tissues are in the interior cavity
of the plastic bag to generally conform the outer wall to a shape
of the soiled tissues in the interior cavity and to resiliently hold
the soiled tissues within the interior cavity;
wherein the inner wall of the plastic bag is fully secured
to the exterior surface of the container with adhesive; and
wherein substantially an entire outer surface of the
inner wall of the plastic bag is secured to the exterior surface of
the container with the adhesive.

Appeal 2018-003838
Application 13/930,014
3
REJECTION2
Claims 1–4, 6–8, and 21–28 are rejected under 35 U.S.C. § 103 as
unpatentable over Campbell (US 2002/0175094 A1, pub. Nov. 28, 2002),
Bando (US 8,960,439 B2, iss. Feb. 24, 2015), Yokoi (JP 2002302172A, pub.
Oct. 15, 2002), and Saggar (US 2011/0164835 A1, pub. July 7, 2011).3
ANALYSIS
Appellant argues the rejected claims as a group. Br. 8–14. We select
claim 1 as representative. See 37 C.F.R. § 41.37(c)(1)(iv).
As to claim 1, the Examiner cites Campbell for its teaching of a tissue
dispenser comprising container 12 with plural walls for holding tissues 13
and plastic bag 1 fully secured to container 12. Final Act. 3; Ans. 4. The
Examiner also finds that plastic bag 1 comprises inner and outer opposing
walls made of plastic film to form a cavity that can be expanded by opening
the bag to insert soiled tissues inside. Final Act. 3–4; Ans. 4. The Examiner
also finds that the inner wall of plastic bag 1 is secured fully to an exterior
surface of container 1 with adhesive as claimed. Final Act. 3; Ans. 4.
The Examiner relies on Bando to teach package or container walls
made of a plastic film (a thermoplastic resin film), as claimed. Final Act. 4;
Ans. 5. The Examiner determines it would have been obvious to a skilled
artisan to include Bando’s plastic in Campbell to reduce the cost of the
container, prevent moisture from entering the dispenser, and maintain the
contents in a sanitary condition. Final Act. 4; Ans. 5.

2 The rejection of claim 1 under 35 U.S.C. § 112(b) is withdrawn. Ans. 3.
3 Although the caption of this rejection cites 35 U.S.C. § 102(a)(1), we
understand the rejection to be made under 35 U.S.C. § 103 based on the
references applied. See Br. 8 (characterizing the rejection as being under
35 U.S.C. § 103(a)). We do not review the rejection of claims 29 and 30
because they are cancelled. See Br. 17 (Claims App.).
Appeal 2018-003838
Application 13/930,014
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The Examiner cites Yokoi to teach a pocket tissue dispenser and trash
bag 2 wherein an outer surface of the inner wall of bag 2 is secured fully to
an exterior surface of container 1 as illustrated in Figure 1 of Yokoi. The
Examiner finds that Figure 1 illustrates substantially an entire outer surface
of the interior wall of bag 2 lying flat against an exterior surface to indicate
that it is secured fully to the exterior surface of container 1 with adhesive as
claimed. Final Act. 4–5; Ans. 5. The Examiner finds that garbage bag 2 is
described as “bonded” to the main body of the tissue dispenser and a pasted
plastic bag 2 having the same size as the pocket tissue body 1. Ans. 9 (citing
translation at https://patents.google.com/patent/JP2002302172Nen). The
Examiner determines that it would have been obvious to a skilled artisan to
position the interior wall of the expandable plastic bag of Campbell flatly
against the surface of the container to “reduce the overall footprint of the
dispenser and . . . the [aesthetic] appeal of the dispenser would be improved
by positioning the bag tightly against the side surface.” Final Act. 5; Ans. 6.
The Examiner finds that Campbell teaches an expandable plastic bag
but does not expressly teach an expandable plastic bag where “the outer wall
elastically expands” as claimed. Ans. 8. Thus, the Examiner considers the
teachings of Saggar to make a plastic film based material that is registered
with texturing to form a structurally elastic-like film web substrate that has
inherent elongation properties that allow bag material to expand elastically
as claimed. Final Act. 5; Ans. 6. The Examiner determines it would have
been obvious to a skilled artisan to modify the expandable bag of Campbell
in view of Yokoi to expand elastically as Saggar teaches so the plastic film
elastically expands to conform the outer wall to the shape of the contained
articles and to form a minimum allowable size while holding soiled articles
that are placed therein to consume the least volume. Final Act. 6; Ans. 6–7.
Appeal 2018-003838
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Plastic Bag Fully Attached with Adhesive
Appellant argues that “Yokoi appears to be silent as to whether the
inner side of the bag is fully attached with adhesive let alone substantially its
entire inner surface.” Appeal Br. 11; see also id. at 10 (“Saggar does not
have a bag attached to the container.”). In particular, Appellant argues that
[j]ust because the bag initially lies against the container does
not disclose that the bag inner wall is fully secured to the
container with adhesive or that substantially an entire outer
surface of the inner wall of the plastic bag is secured to the
exterior surface of the container with the adhesive.
Appeal Br. 12 (“The Examiner’s recitation of FIG. 1 of Yokoi clearly does
not disclose the limitations as asserted.”).
The Examiner has the better position. We reproduce Figures 1 and 3
of Yokoi below to illustrate the Examiner’s findings.

Figure 1 of Yokoi illustrates bag 2 (for putting used tissue therein as
trash) attached to a pocket tissue main body 1. Yokoi, Abstract (“To solve
problems incidental to carrying of pocket tissue and disposal of used tissue
which normally requires a trash box . . . not necessarily found anywhere.”).
Figure 3 of Yokoi illustrates how tissues 5 are arranged inside main body 1.
Yokoi teaches plastic garbage bag 2 is bonded to tissue main body 1.
Yokoi ¶ 4 (cited in Ans. 9). Plastic bag 2 is a pasted plastic bag 2 having
the same size as pocket tissue body 1. Id. Example 1 (cited in Ans. 9).
Appeal 2018-003838
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Drawings in a utility or design patent can be cited against claims of a
utility patent application. See In re Aslanian, 590 F.2d 911, 913–14 (CCPA
1979). Prior art teachings, including the drawings, are evaluated on the basis
of what they reasonably disclose and suggest to a skilled artisan. Id. at 914.
“[A] claimed invention may be anticipated or rendered obvious by a drawing
in a reference, whether the drawing disclosure be accidental or intentional.”
In re Meng, 492 F.2d 843, 847 (CCPA 1974) (citation omitted); Aslanian,
590 F.2d at 914 (holding “a drawing in a utility patent can be cited against
the claims of a utility patent application even though the feature shown in
the drawing was unintended or unexplained in the specification of the
reference patent.”); In re Mraz, 455 F.2d 1069, 1072 (CCPA 1972) (holding
that things shown clearly in patent drawings are not to be disregarded).
As persons of scientific competence in the fields in which
they work, examiners and administrative patent judges on the
Board are responsible for making findings, informed by their
scientific knowledge, as to the meaning of prior art references
to persons of ordinary skill in the art and the motivation those
references would provide to such persons. Absent legal error or
contrary factual evidence, those findings can establish a prima
facie case of obviousness.
In re Berg, 320 F.3d 1310, 1315 (Fed. Cir. 2003).
The Examiner reasonably interprets Figure 1 of Yokoi as teaching a
plastic bag 2 fully secured to an exterior surface of container 1 with adhesive
across substantially an entire outer surface of the inner wall of plastic bag 2.
The drawings reasonably convey to a skilled artisan that the bonded, pasted
plastic bag 2 is adhered to main body 1 across substantially the entire outer
surface of the inner wall of plastic bag 2 as evidenced by the fact that their
respective surfaces contact one another along the entire extent of their length
in Figure 1 to form a minimal size as a pocket tissue pack. Yokoi, Abstract.
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Furthermore, Yokoi’s written description supports this finding by the
Examiner by describing plastic bag as “pasted plastic bag 2” in an English
language translation. See Ans. 9 (citing Yokoi, Example 1). Yokoi further
describes plastic bag 2 as being bonded to the tissue main body. Id. (citing
Yokoi ¶ 4). Therefore, we agree with the Examiner that a skilled artisan
would understand these teachings of Yokoi in Figure 1 and the specification
to mean that the inner wall of plastic bag 2 is secured fully to the exterior
surface of main tissue body 1 with adhesive (pasted) so that substantially an
entire outer surface of the inner wall is secured to the exterior surface of the
container as claimed to form a compact pocket tissue packet and trash box.
Appellant admits that Figure 1 illustrates bag 2 against the container
in Figure 1 of Yokoi but argues that bag 2 is not fully secured with adhesive
across substantially an entire outer surface of the inner wall of the bag.
Appeal Br. 12. This argument is not persuasive in view of Yokoi’s teaching
of bag 2 as a “pasted plastic bag 2” having the same size as pocket tissue
body 1 and being bonded to tissue main body. These teachings indicate that
plastic bag 2 is adhered (bonded, pasted) along its entire inner wall to main
body 1 (the container) as illustrated in Yokoi, Figure 1.
Claim 1 does not recite any particular type of adhesive. Appellant’s
Specification indicates plastic bag 22 can be secured to tissue container 12
with a pressure sensitive adhesive or alternatively “with any other suitable
adhesive and/or in any other suitable manner.” Spec. ¶ 47. Claim 6, which
depends from claim 1, recites “wherein the adhesive is a pressure sensitive
adhesive.” Appeal Br. 16 (Claims App.). This recital in a dependent claim
indicates that claim 1 covers other types of adhesive, which the Specification
indicates can include any suitable adhesive. See Inline Plastics Corp. v.
EasyPak, LLC, 799 F.3d 1364, 1371 (Fed. Cir. 2015).
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Figure 4 of Campbell teaches plastic film outer bag 1 attached to the
(tissue box 12) by adhesive attachment strip 10. Campbell ¶ 13, Fig. 4. The
Examiner proposes to improve Campbell by attaching plastic bag 1 across
substantially all of its inner wall to container 12 to improve the aesthetic
appeal of the dispenser by positioning the bag tightly against the side surface
and thereby also reduce the overall footprint of the dispenser. Final Act. 5;
Ans. 6. This teaching of Yokoi would improve Campbell similarly. See
KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007) (holding that using a
known technique in similar devices for similar benefits is obvious unless its
application is beyond the level of ordinary skill in the art); see also DyStar
Textilfarben GmbH & Co. Deutschland KG v. C.H. Patrick Co., 464 F.3d
1356, 1368 (Fed. Cir. 2006) (holding that an implicit motivation to combine
exists when an “improvement” makes a product stronger, cheaper, faster,
lighter, smaller, more durable, or more efficient). Appellant does not apprise
us of error in the Examiner’s obviousness determination, which is supported
by rational underpinnings as discussed above. See Appeal Br. 11–12.
Stretchable Outer Wall of Plastic Bag Film Elastically Expands
Appellant argues that Campbell’s plastic bag expands, but has entirely
different structure that expands in entirely different ways than elastically as
claimed. Appeal Br. 13. Appellant also argues that the inventive insight
was to secure an inner wall of the plastic bag fully to a container to lie flatly
against a tissue container so the expandable plastic bag has minimal impact
during shipping, handling, and storage prior to being used to hold tissues.
Id. Appellant argues that Saggar is asserted to have inherent elongation but
textures the container to inform the consumer rather than to have elastic
properties and therefore the Examiner uses impermissible hindsight. Id.
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Application 13/930,014
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The Examiner has the better position. First, the Examiner relies on
Campbell to teach an expandable bag but recognizes Campbell’s bag is not
elastically expandable as claimed. Final Act. 3–5; Ans. 4, 6. The Examiner
proposes to improve Campbell’s plastic bag by making it expand elastically
as taught by Saggar “so that the plastic film elastically expands to conform
the outer wall to a shape of the contained articles . . . to comprise a minimum
allowable size as soiled articles are placed into the bag thus assuring the
disposed bag consumes a smallest volume while holding soiled articles.”
Ans. 6–7; Final Act. 7 (same). This reasoning is supported by a rational
underpinning of improving Campbell similarly as Saggar. KSR, 550 U.S. at
417 (use of known technique discussed above); DyStar, 464 F.3d at 1368
(implicit motivation to make a product stronger, cheaper, faster, lighter,
smaller, more durable, or more efficient).
Saggar also teaches that textured plastic film made by embossing or
SELFING techniques conveys to consumers the texture of products in the
package by mimicking the texture of the product. Saggar ¶ 5. However, the
Examiner is not relying on this purpose/use of Saggar’s textured packaging
film. More pertinent to the plastic film bag of the claimed tissue dispenser is
Saggar’s teaching that such film packaging material “has several advantages
over cardboard or other packaging, such as the ability to tightly wrap the
enclosed products so as to minimize the footprint on retail shelving” and “be
moisture impermeable, thereby protecting the packaged products from
external elements and retaining moisture of pre-wetted articles stored in the
packaging.” Id. ¶ 2. Furthermore, Saggar teaches that textured web material
is “intended for collecting refuse because of the increased strength properties
of the resulting film.” Id. ¶ 7 (emphasis added).
Appeal 2018-003838
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Saggar’s teachings that film packaging minimizes the footprint of a
package (Saggar ¶ 2) supports the Examiner’s rationale that its use on the
bag of Campbell would help to minimize the footprint/size of the tissue bag
to the smallest volume possible while holding tissues. Saggar’s teaching of
the use of embossed/SELFING plastic film to collect refuse because of the
increased strength properties supports the Examiner’s second rationale that
Saggar’s embossed film would improve Campbell’s plastic bag similarly by
expanding to conform to the shape of tissues placed therein while holding
the tissues in the smallest volume possible due to its inherent elastic
properties. In other words, the elastic properties of the embossed material
cause the bag to expand while placing a compressive force on the contained
contents to reduce the size of the bag to the smallest volume possible. The
Examiner’s reasons do not have to be the same as Appellant’s to support a
rejection as long as those reasons are supported by rational underpinnings.
In re Kahn, 441 F.3d 977, 988, 990 (Fed. Cir. 2006) (“[T]he skilled artisan
need not be motivated to combine [the prior art] for the same reason
contemplated by [the inventor].”) (citation omitted); In re Beattie, 974 F.2d
1309, 1312 (Fed. Cir. 1992) (“As long as some motivation or suggestion to
combine the references is provided by the prior art taken as a whole, the law
does not require that the references be combined for the reasons
contemplated by the inventor.”) (citation omitted).
Appellant’s argument regarding impermissible hindsight restates the
argument that there is insufficient evidence to combine the teachings of
Saggar and Campbell. This argument is answered fully by the presence of
articulated reasons supported by rational underpinnings. See In re Cree,
Inc., 818 F.3d 694, 702 n.3 (Fed. Cir. 2016).
Appeal 2018-003838
Application 13/930,014
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The Examiner’s finding that Saggar’s textured plastic packaging has
inherent elastic, elongation properties also is supported by a preponderance
of evidence. First, Saggar describes this textured material as being made by
a SELFING process that improves its “inherent elongation properties” and
strength for uses such as collecting refuse. Saggar ¶¶ 5–7. A skilled artisan
would understand this teaching to mean, among other things, that the bag
has improved elastic properties and strength to contain refuse.
Second, Saggar teaches that the “inherent elongation properties” are
imparted by a SELFING process described in U.S. Patent No. 7,270,861 to
Broering, which is incorporated by reference in Saggar. Id. ¶¶ 6, 7. Saggar
teaches that SELFING modifies the inherent elongation properties of web
materials by imparting texture/protruberances to the web material. Id. ¶ 6;
see Final Act. 5 (Saggar’s substrate comprises inherent elongate properties).
Broering describes this SELFING process as providing web materials
with differential elastic-like behavior in the direction of applied elongation.
The web material extends in a direction of applied elongation and returns to
a substantial degree to its untensioned condition when the applied elongation
is released. Brokering, 1:55–65. A skilled artisan would understand these
elastic material properties to disclose “the outer wall elastically expands” as
recited in claim 1 and as the Examiner correctly finds. Ans. 6; Final Act. 5.
Moreover, Appellant’s own Specification describes the claimed
plastic bag 22 as formed by SELFING to increase its elasticity. Spec. ¶ 45.
The Specification thus admits that SELFING improves the elasticity of the
plastic film so it stretches around objects instead of puncturing/tearing. Id.
(citing US patents describing SELFING). This disclosure that SELFING
provides the claimed elastic expansion of the outer wall also supports the
Examiner’s finding that Saggar teaches this features.
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Application 13/930,014
12
In view of the foregoing, we determine that the Examiner’s findings
are supported by a preponderance of evidence, and the Examiner’s
determinations of obviousness are supported by rational underpinnings.
Appellant’s arguments do not apprise us of error in any of these elements of
the rejection.
Thus, we sustain the rejection of claim 1 and claims 2–4, 6–8, and 21–
28, which fall therewith.
CONCLUSION
Claims
Rejected
35 U.S.C.
§
Reference/Basis Affirmed Reversed
1–4, 6–8,
21–28
103 Campbell, Bando,
Yokoi, Saggar
1–4, 6–8,
21–28

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)(iv).
AFFIRMED