Ex Parte Jensen

Patent Trials and Appeals BoardAug 29, 2013

11632472 - (D) (P.T.A.B. Aug. 29, 2013)

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. 11/632,472 01/16/2007 Jorgen Jensen 2669LN.eh 6322 21254 7590 08/29/2013 MCGINN INTELLECTUAL PROPERTY LAW GROUP, PLLC 8321 OLD COURTHOUSE ROAD SUITE 200 VIENNA, VA 22182-3817 EXAMINER NEWAY, BLAINE GIRMA ART UNIT PAPER NUMBER 3788 MAIL DATE DELIVERY MODE 08/29/2013 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 JORGEN JENSEN ____________ Appeal 2011-008521 Application 11/632,472 Technology Center 3700 ____________ Before LYNNE H. BROWNE, ANNETTE R. REIMERS and RICHARD E. RICE, Administrative Patent Judges. REIMERS, Administrative Patent Judge. DECISION ON APPEAL Appeal 2011-008521 Application 11/632,472 2 STATEMENT OF THE CASE Jorgen Jensen (Appellant) appeals under 35 U.S.C. § 134(a) from the Examiner’s decision to reject (1) claims 22 and 24 under 35 U.S.C. § 102(b) as anticipated by Ferguson (US 2,340,116; iss. Jan. 25, 1944); (2) claims 25, 26 and 28 under 35 U.S.C. § 103(a) as unpatentable over Ferguson and Turner (US 3,622,095; iss. Nov. 23, 1971); and (3) claim 27 under 35 U.S.C. § 103(a) as unpatentable over Ferguson, Turner and Pomerantz (US 3,119,542; iss. Jan. 28, 1964). Claims 29-33 have been withdrawn. Claims 1-21 and 23 have been canceled. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. THE INVENTION Appellant’s invention relates to a device for “handling of both the sleeves and the paper rolls.” Spec. 1, ll. 17-18; figs. 1-2. Claim 22, the sole independent claim, is illustrative of the subject matter on appeal and is reproduced below: 22. An article of manufacture, comprising: a plurality of sleeves for concurrently rolling up a paper web respectively on each of said sleeves; an insert sleeve serving as a support core for said plurality of sleeves, before, during, and after said rolling up of said paper web, said support core insert sleeve comprising a rigid material web of a length substantially corresponding to a total length of said plurality of sleeves, as bent into a polygonal shape, when viewed in cross section, and inserted into centers of said plurality of sleeves; and paper web as rolled up respectively on each of said sleeves supported by said support core. Appeal 2011-008521 Application 11/632,472 3 ANALYSIS Anticipation by Ferguson - Claims 22 and 24 Independent claim 22 recites “an insert sleeve serving as a support core for said plurality of sleeves, before, during, and after said rolling up of said paper web.” App. Br., Clms. App’x. The Examiner finds that Ferguson discloses, “an insert sleeve 17 capable of serving as a support core before, during, and after said rolling up of said paper web.” Ans. 4. The Examiner further takes the position that a recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim. Id. at 8. Appellant contends that the Examiner erred in rejecting claim 22 as being anticipated by Ferguson by failing to evaluate and consider the functional limitations of the claim. See App. Br. 5, 8-9; see also Reply Br. 3-4, 13. The law governing functional limitations is well-settled: [W]here the Patent Office has reason to believe that a functional limitation asserted to be critical for establishing novelty of the claimed subject matter may, in fact, be an inherent characteristic of the prior art, it possesses the authority to require the applicant to prove that the subject matter shown to be in the prior art does not possess the characteristic relied on. In re Swinehart, 439 F.2d 210, 213 (CCPA 1971). Nevertheless, before an applicant can be put to this burdensome task, the Examiner must provide Appeal 2011-008521 Application 11/632,472 4 sufficient evidence or scientific reasoning to establish the reasonableness of the Examiner’s belief that the functional limitation is an inherent characteristic of the prior art. The fact that a certain result or characteristic may occur or be present in the prior art is not sufficient to establish the inherency of that result or characteristic. In re Rijckaert, 9 F.3d 1531, 1534 (Fed. Cir. 1993). The Examiner’s position that Ferguson’s spindle (insert sleeve) 17 “[is] capable of serving as a support core before, during, and after said rolling up of said paper web” (Ans. 4) is flawed for two reasons. First, the Examiner has failed to provide sufficient evidence or technical reasoning to establish that Ferguson’s spindle (insert sleeve) 17 would inherently be capable of performing the recited function, i.e., “[to serve] as a support core for said plurality of sleeves, before, during, and after said rolling up of said paper web.” Second, the Examiner’s position is speculative. Ferguson’s invention relates to “a packaging means” for lengths of putty-like materials. Ferguson, p. 1, col. 1, ll. 1-3. Ferguson is predominantly silent with respect to the winding (rolling) up process of the putty-like materials. Ferguson merely discloses that “[t]he winding is accomplished upon a short hollow arbor 5.” Ferguson, p. 1, col. 2, ll. 15-16. Moreover, regarding the spindle (insert sleeve) 17, Ferguson merely discloses, “[a]fter a number of rolls such as shown in [Fig. 2] are produced [wound upon the respective arbors 5], they are applied side by side over a spindle 17.” Ferguson, p. 1, col. 2, ll. 27-29, 38-40. The Examiner has not provided any persuasive evidence or technical reasoning to show that spindle (insert sleeve) 17 of Ferguson could function as a support core for the arbors (plurality of sleeves) 5, before, during, and Appeal 2011-008521 Application 11/632,472 5 after the winding (rolling) up of the separator sheet (paper web) 3. An anticipation rejection cannot be predicated on an ambiguous reference. Rather, disclosures in a reference relied on to prove anticipation must be so clear and explicit that those skilled in the art will have no difficulty in ascertaining their meaning. In re Turlay, 304 F.2d 893, 899 (CCPA 1962). Accordingly, for the foregoing reasons, the rejection of independent claim 22 and its dependent claim 24 as anticipated by Ferguson cannot be sustained. Obviousness over Ferguson and Turner and Ferguson, Turner and Pomerantz - Claims 25-28 The Examiner’s rejection of claims 25, 26 and 28 over Ferguson and Turner (see Ans. 5) and of claim 27 over Ferguson, Turner and Pomerantz (see Ans. 5-6) is based on the same unsupported findings discussed supra with respect to the disclosure of Ferguson. For the same reasons discussed supra, we do not sustain the Examiner’s rejection of claims 25, 26 and 28 over Ferguson and Turner and of claim 27 over Ferguson, Turner and Pomerantz. DECISION We REVERSE the decision of the Examiner as to claims 22 and 24- 28. REVERSED mls