Ex Parte Bechyne

Patent Trial and Appeal Board

Jan 10, 2017

13777728 (P.T.A.B. Jan. 10, 2017)

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.
64885592US01 6828
EXAMINER
ZETTL, JENNIFER N
ART UNIT PAPER NUMBER
3782
MAIL DATE DELIVERY MODE
13/777,728 02/26/2013
23556 7590 01/10/2017
KIMBERLY-CLARK WORLDWIDE, INC.
Patent Docketing
2300 Winchester Rd.
NEENAH, WI54956
Christopher M. Bechyne
01/10/2017 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 PATENT TRIAL AND APPEAL BOARD
Ex parte CHRISTOPHER M. BECHYNE
Appeal 2015-002204
Application 13/777,7281
Technology Center 3700
Before CHARLES N. GREENHUT, THOMAS F. SMEGAL, and
GORDON D. KINDER, Administrative Patent Judges.
SMEGAL, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Christopher M. Bechtyne (Appellant) seeks our review under 35
U.S.C. § 134 of the Examiner’s final rejection under 35 U.S.C. § 103(a) of
claims 1—3, 6, 9-12, and 17 as unpatentable over Miquel (EP 1,717,162 Al,
pub. Nov. 2, 2006) and Babcock (US 2008/0073312 Al, pub. Mar. 27,
2008); and of claims 4, 5, 7, 8, 13—16 and 18 as unpatentable over Miquel,
Babcock, and Hayes (US 5,083,671, iss. Jan. 28, 1992).2 We have
jurisdiction under 35 U.S.C. § 6(b).
1 According to Appellant, the real party in interest is Kimberly-Clark
Worldwide, Inc. Appeal Br. 1.
2 The Examiner withdrew the rejection of claim 1 under 35 U.S.C. § 112,
second paragraph, as being indefinite for failing to particularly point out and
distinctly claim the subject matter which the inventor regards as the
invention. Ans. 2.
Appeal 2015-002204
Application 13/777,728
We REVERSE.
CLAIMED SUBJECT MATTER
Claims 1,10, and 18 are independent. Claim 1 is reproduced below
and illustrates the claimed subject matter, with disputed limitations
emphasized.
1. A wipes container adapted to be set on a flat surface, the
container comprising:
a dispenser housing defining a top wall spaced apart from
and generally parallel to a bottom wall, a first side wall spaced
apart from and generally parallel to a second side wall, and a first
end wall spaced apart from and generally parallel to a second end
wall, wherein all of the walls collectively define an interior
space,
wherein the top wall includes a dispensing orifice through
which wipes can be extracted from the interior space; and
a plurality of wipes disposed within the interior space,
each wipe adapted to be extracted from the interior space through
the dispensing orifice,
the first end wall having a first slip-resistant periphery and
the second end wall having a second slip-resistant periphery,
each slip-resistant periphery comprising thermoplastic
elastomer material,
wherein said thermoplastic elastomer material is disposed
along each periphery such that:
(1) thermoplastic elastomer material in the first slip-
resistant periphery and thermoplastic elastomer material in the
second slip-resistant periphery each contact said flat surface
when the bottom wall faces said flat surface;
(2) thermoplastic elastomer material in the first slip-
resistant periphery and thermoplastic elastomer material in the
second slip-resistant periphery each contact said flat surface
when either of the first and second side walls faces said flat
surface;
(3) thermoplastic elastomer material in the first slip-
resistant periphery contacts said flat surface when the first end
wall faces said flat surface; and
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Appeal 2015-002204
Application 13/777,728
(4) thermoplastic elastomer material in the second slip-
resistant periphery contacts said flat surface when the second end
wall faces said flat surface.
ANALYSIS
Obviousness of Claims 1—3, 6, 9—12, and 17 over Miquel and Babcock
We are persuaded by Appellant’s arguments that the Examiner erred
in rejecting claims 1—3, 6, 9-12, and 17 over Miquel and Babcock. See
Appeal Br. 4—6.
In rejecting claim 1, the Examiner determines that Miquel teaches a
wipes container having substantially all the claim limitations of claim 1
including “a first end wall 10 (Fig. 5) spaced apart from and generally
parallel to a second end wall 2,” but “does not teach the first end wall having
a first slip-resistant periphery and the second end wall having a second slip-
resistant periphery.” 3 Final Act. 3—A. However, the Examiner finds that
“Babcock teaches a composite closure 10 that includes a closure cap 12 and
a slip-resistant periphery layer 14 preferably made from a thermoplastic
elastomeric material,” and that it would be obvious “to modify the end caps
of Miquel to include the slip-resistant periphery of Babcock in order to
provide enhanced gripping and manipulation of the container by the
consumers in addition to reducing the container from sliding upon any
surface it is placed on.” Id. at 4 (citing Babcock, 123 and Fig. I).4
3 Independent claim 10 includes similar language in reciting “a
thermoplastic elastomer loop” that wraps around the first and second end of
the container. See Appeal Br. 8—9, Claims App.
4 The rejection of claim 10 is based on substantially the same findings. See
Final Act. 6—7.
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Appeal 2015-002204
Application 13/777,728
In contesting the Examiner’s rejection as obvious over Miquel and
Babcock, Appellant first points out that “Miquel does not suggest that its
container has this unmet need (prevention of slipping on a flat surface),”
reasoning “one of skill would not be motivated to use the thermoplastic
elastomeric material of the outer gripping layer 14 of Babcock as a coating
on the dispenser of Miquel to prevent slippage on a flat surface.” Appeal Br.
5. Appellant explains that “one of skill in the art would not be motivated to
include a slip-resistant coating around the periphery of the end walls in the
manner claimed by [Appellant], because it is highly unlikely that the
dispenser of Miquel could be set on either side or either end,” pointing out
that “the side and end walls of Miquel’s dispenser each define an upward
slope, to form a trapezoidal pyramid,” so that “[a]n attempt to set the
dispenser [of Miquel] on a side or an end would cause it to tip over onto its
top.” Id. Appellant concludes that “one would not be motivated to dispose
slip-resistant peripheries on opposite end walls of the dispenser of Miquel,
because doing so would serve no purpose.” Id.
In response the Examiner contends that even if “Babcock does not
explicitly suggest that the outer gripping layer would or could function as a
coating that would prevent the container from slipping on a flat surface,”
that “this suggestion [is] fairly inherent and would be easily obvious to one
of ordinary skill in the art... as it is common sense that a gripping coating
(or any coating that provides extra friction) would aid in preventing a
container from slipping on a flat surface.” Ans. 4. (emphasis added). The
Examiner also reasons “that the same motivation suggested by the instant
invention does not need to be found within the prior art reference,” and
without further elaboration, contends that “[a]s long as the prior art reference
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Appeal 2015-002204
Application 13/777,728
provides a motivation for modifying the stmcture of the base reference, the
invention cannot be found to be inventive over the prior art of record.” Id.
While the Examiner may be correct that it is “common sense” that the
gripping coating of Babcock could also prevent slipping, we agree with
Appellant that the Examiner fails to articulate a reason or motivation
supported by rational underpinnings for adding a slip-resistant periphery to
the trapezoidal pyramid shaped end walls of Miquel. Absent some
articulated rationale for incorporating the slip-resistant coating in the
specific location recited, the Examiner’s conclusory assertion is inadequate
to support a conclusion of obviousness. See KSR Int 7 Co. v. Teleflex Inc.,
550 U.S. 398, 418 (2007); see also In re Warner, 379 F.2d 1011, 1017
(CCPA 1967) (“The legal conclusion of obviousness must be supported by
facts. Where the legal conclusion is not supported by facts it cannot
stand.”).
The rejections of independent claim 18 and dependent claims 4, 5, 7,
8, and 13—16 over Miquel, Babcock, and Hayes, are based on the same
unsupported findings discussed above and must be reversed for similar
reasons.
DECISION
We REVERSE the Examiner’s rejections.
REVERSED
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