Trainer, Nicholas P. et al.

Patent Trials and Appeals Board

Jan 31, 2020

13888435 - (D) (P.T.A.B. Jan. 31, 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.
13/888,435 05/07/2013 Nicholas P. Trainer JR. 20896-US (38201-0106) 6097
109963 7590 01/31/2020
GP-Eversheds Sutherland (US) LLP
999 Peachtree Street, NE
Suite 2300
Atlanta, GA 30309
EXAMINER
JALLOW, EYAMINDAE CHOSSAN
ART UNIT PAPER NUMBER
3731
NOTIFICATION DATE DELIVERY MODE
01/31/2020 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):
gplawpatents@gapac.com
koch_PAIR@firsttofile.com
patentdocket@eversheds-sutherland.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte NICHOLAS P. TRAINER JR.,
THOMAS I. STAFFORD III, and RICHARD J. BIGARI
____________

Appeal 2019-003015
Application 13/888,435
Technology Center 3700
____________

Before: BENJAMIN D. M. WOOD, MICHAEL J. FITZPATRICK, and
WILLIAM A. CAPP, Administrative Patent Judges.

CAPP, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant1 seeks our review under 35 U.S.C. § 134(a) of the final
rejection of claims 1–20. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42(a). Appellant identifies GPCP IP Holdings LLC as the
Applicant and real party in interest. Appeal Br. 2.
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THE INVENTION
Appellant’s invention relates to rolled paper products. Spec. ¶¶ 3–5.
Claim 1, reproduced below, is illustrative of the subject matter on appeal.
1. A method of converting a plurality of coreless roll
products, the method comprising:
providing a first support structure;
winding a paper product around the first support structure;
cutting through the paper product and the first support
structure to form a plurality of cut portions of the paper product
each wound around a cut portion of the first support structure;
and
removing the cut portion of the first support structure from
each of the cut portions of the paper product to form a plurality
of coreless roll products each comprising a center aperture.
THE REJECTIONS
The Examiner relies upon the following as evidence in support of the
rejections:
NAME REFERENCE DATE
Warczak US 4,135,677 Jan. 23, 1979
Blom US 4,977,803 Dec. 18, 1990
Ishizu US 5,352,319 Oct. 4, 1994
Arash US 2006/0006089 A1 Jan. 12, 2006
De Luca US 2007/0095693 Al May 3, 2007
Anderson US 2011/0114778 Al May 19, 2011
The following rejections are before us for review:
1. Claims 1–8, 10, and 11 are rejected under 35 U.S.C. § 103 as being
unpatentable over Blom and Ishizu.
2. Claims 9 and 10 are rejected under 35 U.S.C. § 103 as being
unpatentable over Blom, Ishizu, and De Luca.
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3. Claims 13–17, and 19 are rejected under 35 U.S.C. § 103 as being
unpatentable over Ishizu, Anderson, and Warczak.
4. Claim 18 is rejected under 35 U.S.C. § 103 as being unpatentable
over Ishizu, Anderson, Warczak and Arash.
5. Claim 20 is rejected under 35 U.S.C. § 103 as being unpatentable
over Blom, Ishizu, and Anderson.
OPINION
Unpatentability of Claims 1–8, 10, and 11
over Blom and Ishizu
Claim 1
The Examiner finds that Blom discloses the invention substantially as
claimed except for removing the cut portion of the support structure from
each of the cut portions of the paper product, for which the Examiner relies
on Ishizu. Final Action 2–3. The Examiner concludes that it would have
been obvious to a person of ordinary skill in the art at the time the invention
was made to modify Blom so as to remove the core from each paper product,
as taught by Ishizu. Id. at 3. According to the Examiner, a person of
ordinary skill in the art would have done this to provide a coreless paper
product so that the end user would not need to dispose of a core after the
paper is used up. Id.
Appellant, among other things, challenges the Examiner’s
determination that a person of ordinary skill in the art would have combined
the teachings of Blom and Ishizu. Appeal Br. 5–10. We agree with
Appellant.
Historically, paper rolls, such as toilet paper rolls, are produced with a
core of relatively stiff material, such as cardboard. Ishizu ¶ 2. Such paper
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rolls are wound into logs approximately 90 inches long and with a diameter
of a retail-sized roll. Blom, col. 1, ll. 19–28. The logs are then cut into
segments. Id. col. 1, 22–24.
The Blom reference is directed to improving the quality of the cut of a
trim annulus at the extreme end of each roll. Id. col. 1, ll. 27–68. The
Examiner, nevertheless, is correct in finding that Blom teaches winding a
paper product around a support structure and then cutting through the paper
product and support structure to form a plurality of cut portions.
Ishizu differs from Blom in that Ishizu’s paper web is slit before it is
wound onto cores. Ishizu, col. 3, ll. 46–53. The slit webs are wound around
a plurality of cores that are about the same length as the width of the paper
that is wound thereon, which cores are supported on a common shaft. Id.
col. 4, ll. 15–20. A plurality of small perforations are formed throughout the
wall of the core. Id. col. 4, ll. 10–15. The cores are formed of metal, a
synthetic polymer, or wood, which are not damaged upon contact with water
and hot air. Id. col. 4, ll. 1–4.
In operation, an initial length of Ishizu’s paper web is sprayed with
water so that a leading portion of the wound web has a wet inner portion
adjacent to the core. Id. col. 4, ll. 34–39. After winding is complete
(including a length of dry paper), the inner shaft is removed from the interior
of the cores. Id. col. 4, ll. 40–56. The rolled webs and their corresponding
cores are then conveyed to drying zone 104, where the wet inner portion is
dried using heated airflow. Id. col. 4, ll. 56–65; col. 6, ll. 1–6. The aforesaid
perforations facilitate air flow in the drying step. Id. col. 5, ll. 32–40. Such
drying results in an integrally bound, relatively rigid, tubular layer adjacent
the core. Id. col. 4, ll. 62–65. The cores are then displaced from the interior
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of the rolls by a mechanism and method that are described in considerable
detail from column 8, line 39 to column 11, line 44.
Having considered the individual teachings of Blom and Ishizu, we
are not persuaded that a person of ordinary skill in the art would have
combined their respective teachings in the manner proposed by the
Examiner. A traditional cardboard core, such as used in Blom, does not lend
itself to being removed by the mechanism and method taught by Ishizu.
Similarly, we are not persuaded that the cores of Ishizu lend themselves to
being joined end-to-end such that they may be cut into shorter, retail sized
lengths. Moreover, Ishizu’s shaft (col. 3, ll. 25–36), that runs through the
interior of the cores, would be damaged or destroyed by Blom’s cutting
blades.
In view of the foregoing discussion, we determine that the Examiner's
findings of fact are not supported by a preponderance of the evidence and
further determine that the Examiner’s legal conclusion of unpatentability is
not well-founded. Accordingly, we do not sustain the Examiner's
unpatentability rejection of claim 1.
Claims 2–8, 10, and 11
These claims depend, directly or indirectly, from claim 1. Claims
App. The Examiner’s rejection of these claims suffers from the same
infirmity that was identified above with respect to claim 1. Thus, for
essentially the same reason expressed above in connection with claim 1, we
do not sustain the rejection of claims 2–8, 10, and 11.
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Unpatentability of Claims 9 and 10
over Blom, Ishizu, and De Luca
These claims depend from claim 1. Claims App. The Examiner’s
rejection of these claims suffers from at least the same infirmity that was
identified above with respect to claim 1, which infirmity is not cured by any
findings based on the De Luca reference. Moreover, among other things, we
are not persuaded that Ishizu’s winding, wetting, drying, and core removal
steps could be satisfactorily performed if De Luca’s foam support were
substituted for Ishizu’s perforated cores and accompanying shaft.
Consequently, we do not sustain the rejection of claims 9 and 10.
Unpatentability of Claims 13–17, and 19
over Ishizu, Anderson, and Warczak
Claim 13
Claim 13 is an independent claim that is directed to a method for
preparing a retail sized paper roll product for storage or shipment. Claims
App. The key feature of claim 13 is the use of a balloon in the interior
aperture of the roll to prevent the roll from collapsing. Id., ¶ 20, Figs 3A–C.
The Examiner relies on the combined teachings of Anderson and
Warczak to teach the balloon support device element of claim 13. Final
Action 10–11. Appellant challenges the Examiner’s underlying reasoning
and analysis as to how and why Anderson and Warczak are combinable to
achieve the invention of claim 13. Appellant has the better position.
As explained by Ishizu, one of the primary reasons for making
coreless toilet paper rolls is to save the expense associated with a cardboard
support tube. Ishizu, col. 1, ll. 8–15. However, one of the problems with
coreless paper rolls is that they have a tendency to collapse. Anderson ¶ 3.
As explained by Appellant:
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[S]ince coreless roll products do not include a supporting tube
to provide stability, the coreless roll products are prone to being
crushed during shipment or storage. When a coreless roll
product is crushed, i.e., when the center aperture of the core less
roll is at least partially deformed, the coreless roll product may
be difficult to insert onto a spindle for dispensing.
Spec. ¶ 3.
Anderson is directed to providing end plugs for toilet paper rolls that
are inserted into the ends of a coreless paper roll and are designed to be
compatible with a dispenser. Anderson ¶ 3. Anderson’s device has a flange
(end plate 2) that lies against a side of the paper roll on which the plug has
been inserted. Id. ¶ 30. Wing elements protrude into the interior of the roll
aperture. Id. ¶ 31, Figs 1–16. On the opposite side of the flange is a peg for
attachment to a dispenser. Id ¶ 32, Figs. 5, 10, 13, 15.
Warczak is directed to a pneumatic shaft for roll stock. Warczak,
Abstract. Warczak is comprised of a relatively complex assembly of
components including a center support shaft 2 that is engaged in socket
recess 3 in journal end piece 4. Id. col. 5, 15–20. Journal 4 features an axial
air supply channel 6 that is aligned with channel 7 in shaft 2, which
terminates in a T-shaped supply duct 8 that communicates with air space 9.
Id. col. 5, ll. 20–22. Air is supplied for inflated pressure via check valve 10
in journal recess 11. Id. col. 5, ll. 22–25. Tubular bladder 12 is sealed to
shaft 2, by sealing ring 13. Id. col. 5, ll. 25–26. Overlying the bladder is a
first, inner protective and expandable sleeve 17. Id. col. 5, ll. 37–38. This
inner sleeve has a plurality of slots spaced equally around its circumference
and parallel to the center axis of the shaft. Id. col. 5, ll. 42–44. Overlying
the first, inner sleeve is second, outer slotted sleeve 20 made of steel. Id.
col. 5, ll. 52–54. Two inner sleeve strips push radially outwardly on each
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outer sleeve rib when the bladder is inflated. Id. col. 5, ll. 61–63. In
operation, Warczak’s air shaft is inserted into the center of roll stock and
inflated to 60–120 psi. Id. col. 6, ll. 3–7. This causes the bladder and
sleeves to expand which, in turn, causes the shaft to grip the inside surface
of the roll stock core. Id. col. 6, ll. 7–15. A person of ordinary skill in the
art reading Warczak would understand that it is designed and intended to
facilitate dispensing of a paper product as opposed to merely preventing the
paper roll aperture from collapsing during shipment and storage.
We are at a loss to understand, based on the Examiner’s cursory
analysis, how Anderson and Warczak would have been modified to achieve
the invention of claim 13. Anderson’s flanges appear to be completely
incompatible with Warczak’s journal end pieces 4, 5. Yet the Examiner
does not explain whether Anderson’s teaching, or Warczak’s teaching, or
some combination of the two, are retained for use in the proposed
combination.
When contemplating Appellant’s invention, we are mindful that the
goal is to provide a simple, cost-effective means for preventing the collapse
of a coreless paper roll during shipment and storage. The overall context of
providing a paper roll that is “coreless” is to reduce or eliminate the
relatively modest cost of a cardboard support tube. Appellant achieves this
goal by using a balloon. Claims App., claim 13. We infer from the problem
to be solved and the claimed solution that the balloon solution is cheaper
than the cardboard tube problem.
“An obviousness determination requires finding that a person of
ordinary skill in the art would have been motivated to combine or modify the
teachings in the prior art and would have had a reasonable expectation of
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success in doing so.” Regents of Univ. of Cal. v. Broad Inst., Inc., 903
F.3d 1286, 1291 (Fed. Cir. 2018). “The court should consider a range of
real-world facts to determine ‘whether there was an apparent reason to
combine the known elements in the fashion claimed by the patent at issue.’ ”
Arctic Cat Inc. v. Bombardier Recreational Prods. Inc., 876 F.3d 1350, 1359
(Fed. Cir. 2017) (quoting Intercontinental Great Brands LLC v. Kellogg N.
America Co., 869 F.3d 1336, 1344 (Fed. Cir. 2017).
The Examiner’s rejection looks to two, substantially disparate,
relatively complex devices that are used to dispense paper products. We can
reasonably deduce that the references provide a solution to Appellant’s
problem that is cost prohibitive relative to the cost of a cardboard tube or a
simple balloon. Given the real-world context of the problem to be solved,
we do not agree with the Examiner that a person of ordinary skill in the art
would have looked to Anderson and/or Warczak, whether alone or in
combination, to achieve the subject matter of claim 13.
In view of the foregoing discussion, we do not sustain the Examiner’s
rejection of claim 13.
Claims 14–17, and 19
These claims depend from claim 13. Claims App. The Examiner’s
rejection of these claims suffers from the same infirmity that was identified
above with respect to claim 13. Thus, for essentially the same reason
expressed above in connection with claim 13, we do not sustain the rejection
of claims 14–17 and 19.
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Unpatentability of Claim 18
over Ishizu, Anderson, Warczak and Arash
Claim 18 depends from claim 13 and adds a limitation directed to an
outer wrapping. Claims App. The Examiner relies on Arash for the outer
wrapping. Final Action 15–16. Arash does not solve the deficiencies that
we noted above with respect to the rejection of claim 13. Accordingly, we
do not sustain the Examiner’s unpatentability rejection of claim 18.
Unpatentability of Claim 20
over Blom, Ishizu, and Anderson
Claim 20 is an independent method claim that combines elements of
independent claims 1 and 13. Claims App. The Examiner’s rejection relies
on the same erroneous findings and conclusions that caused us not to sustain
the rejection of claim 1 above. Final Action 16–17. Our discussion
regarding the combinability of Blom and Ishizu with respect to the rejection
of claim 1 applies with equal force to the Examiner’s rejection of claim 20,
which is also not sustained.
CONCLUSION
Claims
Rejected
§ Reference(s) Aff’d Rev’d
1-8, 10, 11 103 Blom, Ishizu 1-8, 10, 11
9, 10 103 Blom, Ishizu, De Luca 9, 10
13-17, 19 103 Ishizu, Anderson, Warczak 13-17, 19
18 103 Ishizu, Anderson, Warczak,
Arash
18
20 103 Blom, Ishizu, Anderson 20
Overall
Outcome
1–20
REVERSED