Babak Emam et al.

Patent Trials and Appeals BoardMar 2, 2021

2020005496 (P.T.A.B. Mar. 2, 2021)

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. 15/658,472 07/25/2017 Babak Emam 105173-0007.US1 6434 174738 7590 03/02/2021 Daniel J. Schlue Schlue IP Law 8596 Harlequin Circle NW Massillon, OH 44646 EXAMINER KUMAR, RAKESH ART UNIT PAPER NUMBER 3651 NOTIFICATION DATE DELIVERY MODE 03/02/2021 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): dan.schlue@schlueiplaw.com eofficeaction@appcoll.com ip@schlueiplaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte BABAK EMAM and PEYMAN PAKDEL Appeal 2020-005496 Application 15/658,472 Technology Center 3600 Before DANIEL S. SONG, BRETT C. MARTIN, and MICHELLE R. OSINSKI, Administrative Patent Judges. MARTIN, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to reject claims 1–13 and 15. See Final Act. 1. Oral arguments were heard in this case on February 19, 2021, a transcript of which will be entered into the record in due course. We have jurisdiction under 35 U.S.C. § 6(b). 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 Babak Emam et al. Appeal Br. 1. Although the Appellant does not provide the common courtesy of including page numbers in its Appeal Brief, we cite to the page of the Appeal Brief as if it was paginated. Appeal 2020-005496 Application 15/658,472 2 We REVERSE. CLAIMED SUBJECT MATTER The claims are directed to “folded dispenser napkins having tab portions.” Spec. 2. Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. A stacked dispenser-napkin composition comprising: a plurality of stacked and interfolded dispenser napkins; each dispenser napkin being embossed and having a male side of the emboss and a female side of the emboss; each dispenser napkin having a first, second, third, and fourth panel, the four panels being defined by a first fold and a second fold; each dispenser napkin’s first and second panels being adjacent to each other and having respective areas that are substantially equal; each dispenser napkin’s third and fourth panels being adjacent to each other and having respective areas that are substantially equal; the combined areas of each dispenser napkin’s first and second panels being greater than the combined areas of the dispenser napkin’s third and fourth panels; each dispenser napkin having a tab portion, the tab portion being the portions of the first and second panel areas that are not covered by the third and fourth panel areas when the first and second panels are folded onto the third and fourth panels via the first fold; the plurality of stacked and interfolded dispenser napkins being arranged within the stack such that the positions of the respective tab portions on adjacent dispenser napkins alternate between two opposing sides of the stack; and the plurality of stacked and interfolded dispenser napkins being arranged within the stack such that the position of a stacked dispenser napkin's male side of its emboss is in contact with an adjacent dispenser napkin's female side of its emboss. Appeal 2020-005496 Application 15/658,472 3 REFERENCES The prior art relied upon by the Examiner is: Name Reference Date Zander US 6,030,331 Feb. 29, 2000 Formon US 9,320,372 B2 Apr. 26, 2016 REJECTIONS Claims 1–13 and 15 are rejected under 35 U.S.C. § 112(b) or 35 U.S.C. § 112 (pre–AIA), second paragraph, as being indefinite. Final Act. 4. Claims 1–13 and 15 are rejected under 35 U.S.C. § 103 as being unpatentable over Formon (US 9,320,372) in view of Zander (US 6,030,331). Final Act. 5. OPINION Objection to Drawings Drawing objections are not an appealable matter, but may be petitioned to the Director. Accordingly, the drawing objections are not properly before us and we will not address the objections further. Indefiniteness The Examiner rejects the claims as indefinite because [i]t is unclear as how a plurality of sheets (10) as shown in Figure 12 can be folded along a first and second fold[] and yet yield an alternating outer surface of the folded sheet comprising either a male or female emboss, when the original sheet only has a single configuration such [as] a top male emboss or a top female emboss. Final Act. 4. The Examiner goes on to state that “as best construed . . . there are actually two types of sheets (not a single one type), one folded sheet with the male emboss position[ed] on the outside and a second folded sheet with Appeal 2020-005496 Application 15/658,472 4 the female emboss positioned on the outside, thus allowing a male and female side contacting each other as claimed.” Id. As Appellant correctly notes, the term “‘[s]heets’ is not claimed.” Appeal Br. 15. Appellant also correctly points out that in Figures 6a and 6b “two different directions for folding a napkin are shown, and one of these directions would result in the female side of the emboss being on the outside of the fold and the other direction would result in the female side of the emboss being on the inside of the fold.” Id. The Examiner’s statement above acknowledges this teaching. Accordingly, it is clear that the Examiner understands the intent of the claim language and because the claims do not refer to there being two different “sheets,” we fail to see any inconsistency in the claims as written. The claims are clear that the stack of napkins includes interfolded napkins whereby adjacent napkins include contact between a male and a female emboss. This is achieved by alternating the folding of the napkins as shown in Figures 6a and 6b. Nothing in the claims is inconsistent with this understanding. Accordingly, we do not sustain the Examiner’s rejection. Obviousness As to the Examiner’s obviousness rejection, the Examiner acknowledges that “Formon does not specifically [disclose a] stack being arranged such that the positions of the respective tab portions on adjacent dispenser napkins alternate between two opposing sides of the stack.” Final Act. 6. The Examiner finds this limitation in Zander. Id. Regarding the mating of the male and female emboss, the Examiner merely states that this “is not shown in the drawings and is not clear as to how such folding is configured.” Final Act. 7. The Examiner does not find any teaching of embossing in Zander. Appeal 2020-005496 Application 15/658,472 5 Nonetheless, the Examiner concludes that: [i]t would have been obvious to one of ordinary skill in the art at the time the invention was made to have modified the teachings of Formon in view of Zander to have included the top surface of the napkin comprising both male and female embossing elements such that when the napkin is folded and stacked, the bottom of the topmost napkin male embossing contacts the female embossing of the bottom adjacent napkin because the combination of male and female embossing would reduce the frictional contact between the napkins, or each of the individual napkin sheet can be folded in the opposite direction thereby having female and male embossing facing upwards. Id. It is unclear, however, how two references, neither of which is used for teaching embossing, are somehow combined to teach mating male and female embossing when such is not discussed in the references. Furthermore, we note that Zander teaches a stack of wet wipes that have no interfolding at all. Zander merely teaches a staggering of the placement of the leading edge of the folded sheet so that it is easier to grasp the edge of the next sheet in the stack each time a new sheet is removed. Regardless of any configuration of the stack in Zander, we do not see how such a stack is applicable to a stack of interfolded napkins where the purpose of the interfolding is to pull the next napkin partially out of the dispenser each time a napkin is removed. One of skill in the art would not glean any meaningful information from Zander’s stack in relation to dispenser napkins because interfolded napkins, such as in Formon and the claims, operate entirely differently than non-interfolded wet wipes, such as in Zander. Accordingly, we do not sustain the Examiner’s rejection. Appeal 2020-005496 Application 15/658,472 6 CONCLUSION The Examiner’s rejections are REVERSED. More specifically, DECISION SUMMARY Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1–13, 15 112(b) Indefiniteness 1–13, 15 1–13, 15 103 Formon, Zander 1–13, 15 Overall Outcome 1–13, 15 REVERSED