Gant Innovations Limited

Patent Trials and Appeals Board

Feb 9, 2022

2021001035 (P.T.A.B. Feb. 9, 2022)

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. 14/536,095 11/07/2014 Gail Shaw BARKP0107WOUSA 3104 23908 7590 02/09/2022 RENNER OTTO BOISSELLE & SKLAR, LLP 1621 EUCLID AVENUE NINETEENTH FLOOR CLEVELAND, OH 44115 EXAMINER RUMMEL, IAN A ART UNIT PAPER NUMBER 1785 NOTIFICATION DATE DELIVERY MODE 02/09/2022 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@rennerotto.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte GAIL SHAW __________ Appeal 2021-001035 Application 14/536,095 Technology Center 1700 ____________ Before LINDA M. GAUDETTE, MICHAEL P. COLAIANNI, and CHRISTOPHER C. KENNEDY, Administrative Patent Judges. COLAIANNI, Administrative Patent Judge. DECISION ON APPEAL Appellant1 appeals under 35 U.S.C. § 134 from the final rejection of claims 1-3, 5, 6, 8-10, and 12-17. We have jurisdiction over the appeal pursuant to 35 U.S.C. § 6(b). We AFFIRM. Appellant’s invention is directed to a method of adhering adhesive to a napkin for the purpose of adhering the napkin to a person (Spec. ¶ 1; Claim 1). Claim 1 is illustrative: 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies the real party in interest as Gant Innovations Limited. (Appeal Br. 2). Appeal 2021-001035 Application 14/536,095 2 1. A method of applying adhesive to a napkin, the method comprising the steps of: folding the napkin along a first fold; after the folding the napkin along the first fold, applying first and second adhesive portions on to a first surface of a napkin; and after the folding the napkin along the first fold and the applying, folding the napkin along a second fold such that the first and second adhesive portions are brought into engagement with each other; wherein the adhesive is of a type that will allow the first and second adhesive portions to separate and allow the napkin to be adhered to an object; and wherein, when the napkin is so adhered to the object, weight of the napkin then causes the napkin to open along the first fold. Appellant appeals the following rejections: 1. Claims 1-3, 5, 6, 8-10, 12, 13, 16, and 17 are rejected under 35 U.S.C. § 103 as unpatentable over Klepfer (US 4,306,316, published Dec. 22, 1981). 2. Claims 14 and 15 are rejected under 35 U.S.C. § 103 as unpatentable over Klepfer in view of Fry (US 5,194,299, published Mar. 16, 1993). Appellant argues the subject matter of independent claim 1 only (Appeal Br. 3-11). Appellant separately addresses the rejection of claim 8 and Appeal 2021-001035 Application 14/536,095 3 claims 14 and 15, but relies on arguments made regarding claim 1 (Appeal Br. 11-12). Any claim not argued separately will stand or fall with claim 1. FINDINGS OF FACT & ANALYSIS We review the appealed rejection for reversible error based on the arguments and evidence presented by Appellant. 37 C.F.R. § 41.37(c)(1)(iv); Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential), cited with approval in In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011) (explaining that even if the Examiner had failed to make a prima facie case, “it has long been the Board’s practice to require an applicant to identify the alleged error in the examiner’s rejections”). The Examiner’s findings and conclusions regarding Klepfer with regard to claim 1 are located on pages 2-3 of the Final Office Action. The Examiner finds that Klepfer teaches a method of making a napkin with a strip of adhesive as recited in claim 1, except that Klepfer does not teach performing the first fold prior to applying the adhesive (Final Act. 2). The Examiner determines it would have been obvious to fold the napkin into virtually any desired shape with the folds formed in any order (Final Act. 2). The Examiner determines that a person of ordinary skill in the art would have determined the appropriate sequence of folding and adhesive application based on the intended shape and configuration of the napkin (Final Act. 2). The Examiner reasons the order of steps in forming the napkin is not patentable absent new or unexpected results (Final Act. 2). The Examiner finds that the order of steps may result in a different geometry than Klepfer’s geometry, but the difference in geometry does not translate into a difference in use or performance of the article (Final Act. 3). The Appeal 2021-001035 Application 14/536,095 4 Examiner finds that Klepfer’s napkin would be capable of unfolding under its own weight as recited in claim 1 (Final Act. 3). The Examiner finds the recitation that the weight of the napkin causes the napkin to open along the first fold after adhering the napkin to a person is an intended use of the napkin (Final Act. 3). Appellant argues the order of folding and applying adhesive to the napkin is important (Appeal Br. 8). Appellant argues that the order of folding the napkin and applying the glue permits the napkin to first be adhered to the individual and then unfold under its own weight (Appeal Br. 8). Appellant contends that Klepfer’s napkin must first be unfolded long ways and then opened to expose the glue to adhere the napkin to the individual (Appeal Br. 8). Appellant argues that Klepfer’s napkin would not have been capable of adhering to the individual first and then unfolding under its weight (Appeal Br. 8). Appellant argues that the level of skill in the napkin art is low such that a person skilled in the art would not have been expected to combine features from different references, used for different purposes (Appeal Br. 10). The Examiner finds that the order of unfolding the napkin goes to the manner of use of the napkin and there appears to be no material difference between Appellant’s napkin unfolding order (i.e., the napkin is unfolded first along the axis perpendicular with the adhesive strip, and then unfolded along the fold axis parallel to the adhesive strip under its own weight) and Klepfer’s unfolding pattern (i.e., napkin is first unfolded under its own weight along the axis parallel to the adhesive strip and then unfolded along the fold axis perpendicular to the adhesive strip) (Ans. 7). The Examiner finds that both Appellant’s claimed napkin and Klepfer’s napkin are capable Appeal 2021-001035 Application 14/536,095 5 of being used by an opening process that includes one deliberate unfolding step and one step that involves the napkin opening under its own weight (Ans. 7). The Examiner correctly finds that Klepfer’s unfolding order was reversed from the order recited in claim 1 because the folding order was reversed (Ans. 7). In other words, the Examiner finds that it would have been within the skill level of the ordinary artisan to either fold the napkin first and apply the adhesive as Appellant does or to apply the adhesive first and then fold as in Klepfer. The Examiner determines that the particular order of the method steps in claim 1 would have been obvious in the absence of unexpected results (Final Act. 2; Ans. 7). Generally, changes to the order of performing known method steps would have been prima facie obvious absent evidence of any new and unexpected result. In re Burhans, 154 F.2d 690, 691 (CCPA 1946). The Examiner correctly finds that both Klepfer and Appellant include a deliberate step of manually separating a folded napkin having juxtaposed adhesive portions and a passive step of allowing a second folded portion to open under its own weight (Ans. 7). Klepfer teaches applying adhesive to an edge portion of the garment and folding the garment over on itself so that the adhesive portions releasably adhere to one another (Klepfer col. 3, ll. 35-39; col. 4, ll. 1-11; Figs. 1 & 2). Klepfer further folds the adhesive bonded and folded sheet in a direction perpendicular to the first fold to form the folded garment shown in Figure 3 (Klepfer col. 4, ll. 11-16). In use, Klepfer unfolds the garment to a state as shown in Figure 2 and then separates the adhesive bonded and folded article to permit the garment or napkin to be placed on an individual (Klepfer col. 4, ll. 25-39). Appeal 2021-001035 Application 14/536,095 6 Klepfer teaches the steps of applying adhesive to opposite portions of a napkin, and folding. In light of Klepfer’s teachings, Appellant’s claimed folding, applying adhesive and folding is merely a rearrangement of known method steps in forming a napkin. The Examiner correctly finds that Appellant’s napkin and Klepfer’s napkin would have had the same performance and use (Ans. 6). The Examiner finds Klepfer’s and Appellant’s napkins only differ with respect to the order in which the two unfolding steps occur during use of the napkin (Ans. 7). The rearrangement of Klepfer’s known steps of forming a napkin to the order recited by claim 1 would have been obvious absent some evidence of new and unexpected results. See, Burhans, 154 F.2d at 691. Appellant contends that Burhans does not apply to the present case because unlike in Burhans the order of the method steps in claim 1 produce a different effect in the product (Appeal Br. 8). Appellant argues the different effect comprises a napkin that can be adhered to an object and then fall open on the operation of its own weight unlike the bib or napkin in Klepfer that must be unfolded first and then adhered to an object (Appeal Br. 8). However, the Examiner correctly finds that although the napkin recited in claim 1 and Klepfer’s napkin may have different fold geometries, the adhering and opening of the napkin as claimed does not constitute a new and unexpected result of applying the adhesive to a napkin (Ans. 7). The end product of Klepfer and Appellant is the same: a napkin that may be unfolded and adhered to an object results. The steps used to form Klepfer’s napkin were known and reordering the steps to apply adhesive after the first fold would have been obvious in light of the legal principle set forth in Burhans. Appeal 2021-001035 Application 14/536,095 7 Appellant argues that the declaration of Gail Shaw (Shaw Declaration) shows the secondary consideration of commercial success of the napkin (Appeal Br. 10). Appellant argues the Shaw Declaration states that the napkin was recognized by the relevant industry in finishing as a finalist for the prestigious award for innovative product of the year (Appeal Br. 10). Appellant contends that the recognition bestowed on the company has generated further business opportunities (Appeal Br. 10). Appellant argues the Shaw Declaration discusses the napkin and states in paragraph 5 the version of the napkin covered by the claims (Appeal Br. 11). The Examiner correctly finds Appellant’s evidence is insufficient to establish commercial success (Ans. 8). Although declarant Shaw states in paragraph 5 that “some versions” of the napkin includes a first fold that uncovers an adhesive for attachment to a user’s neck area or chest area from where the napkin is allowed to fall onto the user’s lower chest, the evidence of awards and marketing surveys does not state whether this napkin was the napkin used at the Tissue World Trade Fair in 2015 (Shaw Dec. ¶¶ 5-7). Rather, paragraph 6 of the Shaw Declaration states, “[t]he napkins invented by me and described in the ‘095 applications have been recognized as a significant advance by others in the field.” The Shaw Declaration does not state that the versions presented at the Tissue World Trade Fair were the same as recited in claim 1. Appellant has not shown that the alleged commercial success is derived from the claimed invention as opposed to other business practices. In re Mageli, 470 F.2d 1380 (CCPA 1973). Appellant’s evidence is insufficient to satisfy the burden to establish a nexus between the claimed method of making a napkin as recited in claim 1 and Appeal 2021-001035 Application 14/536,095 8 the alleged commercial success. In re Huang, 100 F.3d 135, 139-40 (Fed. Cir. 1996). On this record, we affirm the Examiner’s § 103 rejection of claims 1- 3, 5, 6, 8-10, 12, 13, 16, and 17 over Klepfer. For the same reason, we affirm the Examiner’s § 103 rejection of claims 14 and 15 over Klepfer and Fry. DECISION Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1-3, 5, 6, 8-10, 12, 13, 16, 17 103 Klepfer 1-3, 5, 6, 8-10, 12, 13, 16, 17 14, 15 103 Klepfer, Fry 14, 15 Overall Outcome 1-3, 5, 6, 8-10, 12-17 TIME PERIOD FOR RESPONSE 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). See 37 C.F.R. § 41.50(f). AFFIRMED