Ex Parte Hallam et al

Patent Trial and Appeal BoardMar 23, 2016

13040455 (P.T.A.B. Mar. 23, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 13/040,455 03/04/2011 23556 7590 01/28/2016 KIMBERLY-CLARK WORLDWIDE, INC. Patent Docketing 2300 Winchester Rd. NEENAH, WI 54956 FIRST NAMED INVENTOR James Alexander Hallam 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 ATTORNEY DOCKET NO. CONFIRMATION NO. 64760231US01 2970 EXAMINER RANDALL, JR, KELVIN L ART UNIT PAPER NUMBER 3651 MAILDATE DELIVERY MODE 01/28/2016 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 JAMES ALEXANDER HALLAM, DENNIS EDWARD FRYER, MARTIN CHRISTOPHER BUNCE, PETER BOOTH, and JAMES MALLION Appeal2014-000958 Application 13/040,455 1 Technology Center 3600 Before JOSEPH A. FISCHETTI, BRUCE T. WIEDER, and KENNETH G. SCHOPPER, Administrative Patent Judges. SCHOPPER, Administrative Patent Judge. DECISION ON APPEAL This is an appeal under 35 U.S.C. Â§ 134 involving claims to cartons. The Examiner rejected the claims as obvious. We have jurisdiction under 35 U.S.C. Â§ 6(b). We reverse and enter a NEW GROUND OF REJECTION pursuant to our authority under 37 C.F.R. Â§ 41.50(b). 1 According to Appellants, the real party in interest is Kimberly-Clark Worldwide, Inc. App. Br. 1. Appeal2014-000958 Application 13/040,455 STATEivIENT OF THE CASE Background According to Appellants, "[the] disclosure relates to a tissue carton comprising a stack of compressed tissues. Various compressed tissue cartons are disclosed. By providing a carton with an oversized carton opening it has been discovered that the compressed stack of tissues may be dispensed normally by a user." Spec. 1. The Claims Claims 1-20 are on appeal. Claim 1 is illustrative and recites: 1. A carton comprising: App. Br. 9. a. a top panel; b. a first and a second sidewall; c. a carton opening located in the top panel; and d. a dispensing window covering at least a portion of the carton opening; wherein the area of the carton opening is from about 50 percent to about 85 percent of the area of the top panel. The Rejections 1. The Examiner rejects claims 1, 4, 5, 8, 12, 13, and 17 as obvious under 35 U.S.C. Â§ 103(a) over Morin2 in view of Trunick. 3 2. The Examiner rejects claims 2, 3, 14, 16, and 18 as obvious under 35 U.S.C. Â§ 103(a) over Morin in view of Trunick and Gao. 4 2 Morin, US 2003/0155264 Al, pub. Aug. 21, 2003. 3 Trunick, US 3,576,243, iss. Apr. 27, 1971. 4 Gao et al., US 2005/0269343 Al, pub. Dec. 8, 2005. 2 Appeal2014-000958 Application 13/040,455 3. The Examiner rejects claims 6, 7, and 19 as obvious under 35 U.S.C. Â§ 103(a) over Morin in view of Trunick and Harwood. 5 4. The Examiner rejects claims 9 and 11 as obvious under 35 U.S.C. Â§ 103(a) over Morin in view ofTrunick and Thoms. 6 5. The Examiner rejects claim 10 as obvious under 35 U.S.C. Â§ 103(a) over Morin in view of Trunick and Nasrallah. 7 6. The Examiner rejects claim 15 as obvious under 35 U.S.C. Â§ 103(a) over Morin in view of Trunick, Gao, and Harwood. 7. The Examiner rejects claim 20 as obvious under 35 U.S.C. Â§ 103(a) over Morin in view of Trunick, Hirasawa, 8 and Nasrallah. DISCUSSION Each of the claims is rejected on a combination of art including at least Morin and Trunick. See Final Action 4--11. With respect to each of the independent claims, the Examiner finds that Morin teaches a carton with a top panel, side panels, a carton opening, and a dispensing window. Id. at 4, 6. The Examiner acknowledges that Morin does not disclose an opening that is from about 50 percent to about 85 percent of the area of the top panel, and the Examiner relies on Trunick for this limitation, concluding that "it would have been obvious for one of ordinary skill in the art at the time the invention was made to have been motivated to combine the teachings of Morin with that of Trunick so as to provide a stable device for efficient dispensing of a product." Id. 5 Harwood, US 3,172,563, iss. Mar. 9, 1965. 6 Thoms, US 2003/0168467 Al, pub. Sept. 11, 2003. 7 Nasrallah, US 8,210,393 Bl, iss. July 3, 2012. 8 Hirasawa et al., US 7,886,933 B2, iss. Feb. 15, 2011. 3 Appeal2014-000958 Application 13/040,455 "[R ]ejections on obviousness grounds cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness." In re Kahn, 441F.3d977, 988 (Fed. Cir. 2006). We agree with Appellants that the Examiner has failed to articulate a sufficient reason that would have prompted one of ordinary skill in the art to make the proposed modification to Morin's device. As noted, the Examiner states only that the modification would "provide a stable device for efficient dispensing of a product." Final Action 4. However, the Examiner fails to adequately explain this conclusion or provide any support in the record before us showing that the resulting device would be more stable or efficient such that one of ordinary skill would have been motivated to combine the references as proposed. In particular, we find that the cited portions of Morin and Trunick do not provide support for the Examiner's conclusion. For this reason, we determine that the Examiner fails to establish a prima facie showing of obviousness with respect to independent claims 1, 14, and 17. Accordingly, we do not sustain any of the rejections before us. NEW GROUND OF REJECTION We make the following new ground of rejection pursuant to our authority under 3 7 C.F .R. Â§ 41. 50(b ). Claim 1 is rejected under 35 U.S.C. Â§ 103(a) as being unpatentable over Trunick. Trunick discloses a carton including a top panel 1 7, first and second sidewalls 20/21, a carton opening defined by score lines 32, 33, 34, and 3 5, and a dispensing window covering the carton opening defined by flaps 36, 37, 38, and 39. See Trunick Figs. 1, 2. However, Trunick does not explicitly disclose that the carton opening is from about 50 percent to about 4 Appeal2014-000958 Application 13/040,455 85 percent of the area of the top panel. Trunick does disclose that the opening may be greater than 45 percent of the area of the top panel. Id. col. 4, 11. 2---6. Additionally, we note that the figures suggest an opening greater than 50 percent of the area of the top panel. See id. Fig. 2. Based on these disclosures, we find that one of ordinary skill in the art would have found it obvious to include an opening between 50 percent and 85 percent of the area of the top panel as a design choice that would yield predictable results. See, In re Hopkins, 342 F2d 1010, 1015 (CCPA 1965). In rejecting claim 1, we note that we are primarily a reviewing body, rather than a place of initial examination. We, therefore, leave it to the Examiner to determine whether the remaining claims in the application should be rejected on similar grounds to those set forth herein or in combination with additional prior art. The fact that we do not enter new grounds of rejection for claims 2-20 should not be construed to mean that we consider those claims to be patentable over the prior art of record. CONCLUSION For the reasons indicated above, we reverse the rejection of claims 1- 20. Pursuant to our authority under 37 C.F.R. Â§ 41.50(b), we enter a new ground of rejection, rejecting claim 1 under 35 U.S.C. Â§ 103(a) as unpatentable over Trunick. This decision contains a new ground of rejection pursuant to 37 C.F.R. Â§ 41.50(b). Section 41.50(b) provides that "[a] new ground of rejection pursuant to this paragraph shall not be considered final for judicial review." 5 Appeal2014-000958 Application 13/040,455 Rather, WITHil~ TWO ivIONTHS FROivI THE DATE OF THE DECISION, Appellants must exercise one of the following two options with respect to the new ground of rejection to avoid termination of the appeal as to the newly rejected claims: ( 1) Reopen prosecution. Submit an appropriate amendment of the claims so rejected or new Evidence relating to the claims so rejected, or both, and have the matter reconsidered by the examiner, in which event the prosecution will be remanded to the examiner .... (2) Request rehearing. Request that the proceeding be reheard under Â§ 41.52 by the Board upon the same Record .... No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. Â§ 1.136(a)(l )(iv). REVERSED; 37 C.F.R. Â§ 41.50(b) CONCLUSION For the reasons set forth above, we reverse the rejection of claims 1-20. REVERSED pgc 6