Ex Parte Fryer et al

Patent Trial and Appeal BoardNov 20, 2012

12290586 (P.T.A.B. Nov. 20, 2012)

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. 12/290,586 10/31/2008 Dennis Edward Fryer 64481608US01 6495 23556 7590 11/21/2012 KIMBERLY-CLARK WORLDWIDE, INC. Tara Pohlkotte 2300 Winchester Rd. NEENAH, WI 54956 EXAMINER NEWAY, BLAINE GIRMA ART UNIT PAPER NUMBER 3788 MAIL DATE DELIVERY MODE 11/21/2012 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 DENNIS EDWARD FRYER, MARTIN CHRISTOPHER BUNCE, WILLIAM JOHN MASKELL, and THOMAS ROBERT WALTON ____________________ Appeal 2010-010327 Application 12/290,586 Technology Center 3700 ____________________ Before: MICHAEL C. ASTORINO, MICHAEL L. HOELTER, and SCOTT A. DANIELS, Administrative Patent Judges. DANIELS, Administrative Patent Judge. DECISION ON APPEAL Appeal 2010-010327 Application 12/290,586 2 STATEMENT OF CASE Dennis E. Fryer, Martin C. Bunce, William J. Maskell, and Thomas R. Walton (Appellants) appeal under 35 U.S.C. § 134 from the Examiner’s rejections of claims 1-17. We have jurisdiction under 35 U.S.C. § 6(b). We reverse. The claims are directed to a portable rolled wiping product. Claim 1, reproduced below, is representative of the claimed subject matter: 1. A product comprising a roll of a wiping material contained within a flexible wrapper, said roll having an axis around which the wiping material is wound, said wrapper having a roll housing portion and an extended dispensing portion through which sheets of the wiping material are unwound from the roll and withdrawn by a user in a direction perpendicular to the axis of the roll, wherein the roll freely rotates within the roll housing portion as the sheets of wiping material are unwound from the roll. REFERENCES The prior art relied upon by the Examiner in rejecting the claims on appeal is: Mills Marchesani Behnke Strand Lewis Mauclair US 2,684,716 US 4,002,264 US 5,609,269 US 6,360,513 B1 US 6,578,731 B1 US 6,688,078 B2 Jul. 27, 1954 Jan. 11, 1977 Mar. 11, 1997 Mar. 26, 2002 Jun. 17, 2003 Feb. 10, 2004 Appeal 2010-010327 Application 12/290,586 3 REJECTIONS The Examiner made the following rejections: Claims 1-3, 5, 7-10 and 14-16 stand rejected under 35 U.S.C §103(a) as being unpatentable over Marchesani, and Mills. Ans. 2. Claims 4 and 6 stand rejected under 35 U.S.C §103(a) as being unpatentable over Marchesani, Mills, and Behnke. Ans. 4. Claim 13 stands rejected under 35 U.S.C §103(a) as being unpatentable over Marchesani, Mills, and Lewis. Ans. 6. Claim 17 stands rejected under 35 U.S.C §103(a) as being unpatentable over Marchesani, Mills, and Strand. Ans. 6. Claims 11 and 12 stand rejected under 35 U.S.C §103(a) as being unpatentable over Marchesani, Mills, and Mauclair. Ans. 7. ANALYSIS Appellants argue claims 1-3, 5, 7-10 and 14-16 as a group, where claim 1 is the only independent claim, and present separate arguments as to dependent claims 4-6, 11-13 and 17. See App. Br. 2. We initially select claim 1 as representative of the group where claims 2, 3, 5, 7-10 and 14-16 stand or fall with claim 1. See 37 C.F.R. 41.37(c)(1)(vii) (2011). The Examiner found that Marchesani disclosed all the features of claim 1 with the exception of “the wiping material being withdrawn in a direction perpendicular to the axis of the roll, wherein the roll freely rotates within the roll housing portion as the sheets of wiping material are unwound from the roll.” Ans. 3. The Examiner found that Mills teaches a cylindrical roll of material which is withdrawn perpendicular to an axis of the cylindrical roll of material. Id. The Examiner reasoned that it would be Appeal 2010-010327 Application 12/290,586 4 obvious to one of ordinary skill in the art “to rearrange the roll of Marchesani in order to withdraw the wiping material from the outside of the roll and in a direction perpendicular to the axis of the roll, as taught by Mills for the predictable result minimizing evaporative losses of the outer tissues of the roll.” Id. Appellants persuasively argue that the Examiner’s reasoning does not provide a sufficient basis to support the obviousness rejection because Marchesani is not specifically concerned with evaporative losses aside from the nature of the flexible bag “which is provided for the specific purpose of minimizing evaporative loss of the moisture and to protect the wipes (column 1, lines 66-68).” Br. 4. Appellants also persuasively argue that the issue of evaporation is irrelevant with respect to Mills’ dry gauze and “[h]ence there is no teaching or suggestion by Mills et al. that dispensing from the outside of the roll is advantageous for preventing moisture loss. Consequently, we agree with the Appellant that there is no justification for completely re-designing the product of Marchesani based on the teachings of Mills et al.” Id. We appreciate that Mills describes a dry gauze bandage material where the outside layer of material on the roll is withdrawn perpendicular to an axis around which the material is wound, however the Examiner’s rejection insufficiently explains what in the prior art would have prompted a person having ordinary skill in the art to replace the centrally dispensed roll of Marchesani with the outer layer dispensing roll of Mills. The Examiner has not provided any findings that either Marchesani or Mills recognized a problem with the conventional centrally dispensed roll in the flexible bag of Marchesani. The reason proffered by the Examiner, i.e., “for the predictable Appeal 2010-010327 Application 12/290,586 5 result minimizing evaporative losses of the outer tissues of the roll” appears to be already accomplished by the bag of Marchesani which is liquid impervious and has a closure so the moist tissues do not dry out. Marchesani col. 2, ll. 22-25 and col. 1, ll. 66-68, Br. 3-4. Marchesani’s bag and centrally dispensed roll of moist tissues already has sufficient structure and function to maintain an adequately moist environment for the centrally dispensed roll of moist tissues. Br. 4. Moreover, Mills is directed to a sterile, dry gauze bandage material such that moisture evaporation is not an issue. Mills col. 1, ll. 1-4, Br. 4. Mills does not disclose or teach anything in regards to moisture retention in such rolled products, or any benefit in this regard to dispensing a roll from the outer layer of the roll as opposed to from the center of the roll. It is thus not clear to us how the Examiner’s proposed modification of Marchesani’s dispensing of the moist tissues from an outside layer of the roll would yield a “predictable result minimizing evaporative losses of the outer tissues of the roll,” as the Examiner suggests. Marchesani is silent with regards to any other structural, functional or causal features relating to evaporation and the manner in which the tissues are withdrawn from the roll. Without an articulated reasoning with some rational underpinning for modifying the reference as proposed, the Examiner’s rejection appears to be the result of impermissible hindsight See In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006), cited with approval in KSR, 550 U.S. at 418. Accordingly, for the foregoing reasons, we cannot sustain the rejection of independent claim 1 and the Examiner’s findings and reasoning with regards to dependent claims 2-17 as unpatentable over Marchesani, Mills, Behnke, Lewis and Strand do not remedy the deficiency in the Appeal 2010-010327 Application 12/290,586 6 Examiner’s rejection of claim 1. See In re Fine, 837 F.2d 1071, 1076 (Fed. Cir. 1988). DECISION For the above reasons, the Examiner’s rejections of claims 1-17 are reversed. REVERSED Klh