James Alexander. Hallam et al.

Patent Trials and Appeals Board

Jan 16, 2020

13040455 - (D) (P.T.A.B. Jan. 16, 2020)

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.
13/040,455 03/04/2011 James Alexander Hallam 64760231US01 2970
23556 7590 01/16/2020
KIMBERLY-CLARK WORLDWIDE, INC.
Patent Docketing
2300 Winchester Rd.
NEENAH, WI 54956
EXAMINER
RANDALL, JR., KELVIN L
ART UNIT PAPER NUMBER
3651
NOTIFICATION DATE DELIVERY MODE
01/16/2020 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):
Kimberlyclark.docketing@kcc.com
Tisha.Sutherland@kcc.com
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

Appeal 2018-009093
Application 13/040,455
Technology Center 3600
____________

Before JOSEPH A. FISCHETTI, BRUCE T. WIEDER, and
KENNETH G. SCHOPFER, Administrative Patent Judges.

SCHOPFER, Administrative Patent Judge.

DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–7, 9–11, and 13–21. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM IN PART.

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 Kimberly-
Clark Worldwide, Inc. Appeal Br. 1.
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BACKGROUND
The Specification “relates to a tissue carton comprising a stack of
compressed tissues.” Spec. 1, l. 3.

CLAIMS
Claims 1, 14, and 17 are the independent claims on appeal. Claims 1
and 14 are illustrative of the appealed claims and recite:
1. A carton comprising:
a. a top face and a bottom face extending inwardly
from a first and a second sidewall, the top face comprising a top
panel having an interior surface and a removable surfboard, the
top panel comprising from about 15 to about 50 percent of the
top face surface area;
b. a carton opening located in the top panel; and
c. a dispensing window disposed adjacent to at least a
portion of the interior surface of the top panel and covering at
least a portion of the carton opening, the dispensing window
having a dispensing opening disposed thereon; wherein the area
of the carton opening is from about 50 percent to about 85
percent of the area of the top surface.

14. A carton for dispensing a compressed stack of tissues
comprising:
a. [a] top face having a surface area and comprising a
top panel having an interior surface, the top panel comprising
from about 15 to about 50 percent of the top face surface area;
b. a carton opening disposed on the top panel, the
carton opening having an area that is from about 50 percent to
about 85 percent of the area of the top face;
c. a pair of side panels;
d. a flexible dispensing window disposed about the
entire periphery of the carton opening, the window further
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attached to the interior surface of the top panel and a portion of
at least one side panel;
e. a dispensing opening disposed on the dispensing
window;
f. a removable surfboard overlaying at least a portion
of the dispensing window;
g. a compressed stack of tissues; and
h. a bottom face.
Appeal Br. 10–11.
REJECTIONS
1. The Examiner rejects claims 1, 2, 4, 5, 13, and 21 under 35 U.S.C.
§ 103(a) as unpatentable over Trunick2 in view of Szymonski.3
2. The Examiner rejects claim 3 under 35 U.S.C. § 103(a) as unpatentable
over Trunick in view of Szymonski and Gao.4
3. The Examiner rejects claims 6, 7, 17, and 19 under 35 U.S.C. § 103(a) as
unpatentable over Trunick in view of Szymonski and Harwood.5
4. The Examiner rejects claims 9 and 11 under 35 U.S.C. § 103(a) as
unpatentable over Trunick in view of Szymonski and Thoms.6
5. The Examiner rejects claim 10 under 35 U.S.C. § 103(a) as unpatentable
over Trunick in view of Szymonski and Nasrallah.7
6. The Examiner rejects claims 14–16 under 35 U.S.C. § 103(a) as
unpatentable over Trunick in view of Szymonski, Gao, and Harwood.

2 Trunick, US 3,576,243, iss. Apr. 27, 1971.
3 Szymonski et al., US 7,661,554 B2, iss. Feb. 16, 2010.
4 Gao et al., US 2005/0269343 A1, pub. Dec. 8, 2005.
5 Harwood, US 3,172,563, iss. Mar. 9, 1965.
6 Thoms, US 2003/0168467 A1, pub. Sept. 11, 2003.
7 Nasrallah, US 8,210,393 B1, iss. July 3, 2012.
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7. The Examiner rejects claims 18 and 20 under 35 U.S.C. § 103(a) as
unpatentable over Trunick in view of Szymonski, Gao, Harwood,
Hirasawa,8 and Nasrallah.
DISCUSSION
Rejections of claims 1–7, 9–11, 13, and 21
As an initial matter, we note that we previously rendered a decision
regarding this application in which we entered a new ground of rejection
regarding claim 1 as unpatentable over Trunick. See Decision at 4–5, mailed
Jan. 28, 2016. Our previous decision was based on a version of claim 1
reciting, inter alia, “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.” Id. at 2. With
respect to that claim, we found that Trunick disclosed a dispensing window
as defined by flaps 36, 37, 38, and 39 and a carton opening as defined by
score lines 32, 33, 34, and 35. Id. at 4.
Here, Appellant has amended claim 1 to now recite, inter alia, “a
dispensing window disposed adjacent to at least a portion of the interior
surface of the top panel and covering at least a portion of the carton opening,
the dispensing window having a dispensing opening thereon.” With respect
to the claim as presently worded, the Examiner finds that Trunick teaches a
dispensing window as claimed. See Final Act. 2–3. However, we are
persuaded by Appellant’s argument that Trunick does not disclose a
dispensing window as claimed. Appellant argues that Trunick does not
disclose a carton with a dispensing window disposed adjacent to a portion of

8 Hirasawa et al., US 7,886,933 B2, iss. Feb. 15, 2011.
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the interior surface of the top panel and also covering at least a portion of the
carton opening. Appeal Br. 2. Appellant acknowledges that Trunick
discloses an embodiment in which flaps 36, 37, 38, and 39 are folded under
and thus, are disposed adjacent to an interior surface of the top panel. Id. at
3. However, Appellant asserts that in such an embodiment the carton does
not include a window that covers a portion of the carton opening. Id. at 3.
As presently worded, we find that one of ordinary skill in the art
would understand that the claimed “dispensing window” is not merely an
open space, but is a specific structure that is disposed adjacent to the interior
of the top panel and extends over, i.e., covers, a portion of the carton
opening. This interpretation is supported by the claim language itself, which
further requires the structure of a dispensing opening on the dispensing
window and thus indicates that the dispensing window is not an opening
itself. The Specification supports this interpretation. Specifically, the
Specification refers to a dispensing window 35 that is a separate structure
from the carton opening 30, with a separate dispensing opening. Spec. 5, ll.
9–12. In short, when read in light of the Specification, one of ordinary skill
would understand the claim to require a dispensing window that is a separate
structure from the carton opening.
Under this interpretation, we find reversible error in the Examiner’s
finding that Trunick discloses a “dispensing window (33, 35, 36, 38)
disposed adjacent to at least a portion of the interior surface of the top panel
(17) and covering at least a portion of the carton opening (42), the
dispensing window (33, 35, 36, 38) having a dispensing opening (31)
disposed thereon (see Fig. 1 ).” Final Act. 3. Specifically, the Examiner has
not identified a dispensing window in Trunick that is disposed adjacent to an
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interior portion of the top panel, covers a portion of the carton opening, and
includes a dispensing opening disposed thereon. At best, Trunick’s flaps 33,
35, 36, and 38 may be said to be adjacent to the top panel when folded
under, but they do not also cover a portion of the opening or include a
dispensing opening thereon in this configuration.
Based on the foregoing, we are persuaded of reversible error in the
rejection of claim 1, and thus, we do not sustain the rejection of claim 1.
With respect to dependent claims 2–7, 9–11, 13, and 21, the Examiner does
not rely on the art of record in a manner that cures the deficiency in the
rejection of claim 1, and thus, we also do not sustain the rejections of these
claims.
Rejection of claims 14–16
With respect to claim 14, the Examiner finds that Trunick discloses a
carton as claimed except that Trunick
fails to teach a flexible dispensing window disposed about the
entire periphery of the carton opening, the window further
attached to the interior surface of the top panel and a portion of
at least one side panel; a dispensing opening disposed on the
dispensing window; a removable surfboard overlaying at least a
portion of the dispensing window; a compressed stack of tissues.
Final Act. 8–9. The Examiner concludes that it would have been obvious to
include a flexible dispensing window with a dispensing opening as claimed
based on the teachings of Szymonski and Gao. Id. at 9. The Examiner also
determines that the use of a removable surfboard would have been obvious
in view of Szymonki. Id. And finally, the Examiner determines that it
would have been obvious to include a compressed stack of tissues in the
carton based on the teachings of Harwood. Id. at 10.
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As discussed below, we are not persuaded of reversible error in the
Examiner’s rejection of claim 14.
Appellant first argues that Trunick’s device would be inoperable if
combined with Szymonski because adding Szymonski’s window “would
prevent a user from folding Trunick’s flaps to stabilize the carton as
suggested.” Appeal Br. 3. Appellant asserts that the proposed combination
would require a substantial reconstruction and redesign in Trunick and
change its principle of operation. Id. at 3–4. Appellant raises substantially
the same argument regarding the Examiner’s reliance on Gao. Id. at 6.
We are not persuaded of reversible error. The Examiner makes clear
that the proposed combination would replace Trunick’s window flaps with
Szymonski’s window. Ans. at 7. Thus, the presence of foldable flaps would
be eliminated in the combination. Further, we agree with the Examiner that
removing these flaps would not render Trunick inoperable or require a
substantial reconstruction. Id. Specifically, we agree with the Examiner that
the device would still be usable as a dispenser, with or without such flaps,
and we fail to see why removing such flaps would require a substantial
redesign or reconstruction. Id.
Appellant also argues that “there would have been no motivation [to]
modify Trunick’s carton with Szymonski’s window.” Appeal Br. 5.
Appellant asserts:
Trunick provides “a smooth, rounded, finished edge,” by folding
under the flaps, “which reduces the effort to withdraw tissues
packaged therewithin since the sharp edges with the uncut
sections which normally impede and snag the tissues are no
longer present.” Trunick at col. 3, II. 1-5. Thus, Trunick provides
a sufficient solution to smooth dispensing and there would have
been no motivation to resort to a dispensing window as presently
claimed.
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Id. We are not persuaded of error. Rather, we agree with the Examiner that
Szymonski provides adequate reasoning to support the combination
proposed. Final Act. 9. In particular, Szymonski discloses that plastic sheet
windows with dispensing slots are generally used in disposable sheet
dispensers to eliminate problems in dispensers including pulling out multiple
sheets at a time and “presenting sheets for subsequent removal,” i.e.,
preventing subsequent sheets from falling back into the container. Although
Trunick may provide “a smooth, rounded, finished edge” for ease of
withdrawal of tissues, it is not clear to us that this prevents the problems
addressed in Szmonski.
Finally, Appellant argues that one of ordinary skill would be
“dissuaded from applying a surfboard to the carton” of Trunick because
“Trunick specifically discusses the disadvantages of using surfboards
including resulting sharp edges, increased drag, increased snags and a non-
uniform appearance. Appeal Br. 54, (citing Trunick at col. 1, ll. 21–40).
Trunick discusses certain problems associated with cartons having top
panels with removable portions defined by perforations. See Trunick, col. 1,
ll. 9–49. For example, Trunick discloses that removing these removable
portions often results in sharp and ragged edges, exposure of different
colored material, and bowing of edges around the carton opening. Id.
A reference may be said to teach away when a person of ordinary
skill, upon reading the reference, would be discouraged from following the
path set out in the reference, or would be led in a direction divergent from
the path that was taken by the applicant. In re Gurley, 27 F.3d 551, 553
(Fed. Cir. 1994). We are not persuaded that Trunick teaches away from the
combination proposed by the Examiner. Rather than teaching away from the
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use of any surfboards, Trunick discusses particular disadvantages that may
occur from the use of certain perforated, removable, rectangular carton tops.
See Trunick col. 1, ll. 15–49. Without further explanation, we are not
persuaded that one of ordinary skill in the art would have been discouraged
from the use of the structure of Szymonski in the proposed combination
because it is not clear to us that Szymonski’s device results in any of the
problems discussed in Trunick.
Based on the foregoing, we are not persuaded of reversible error with
respect to the rejection of claim 14. Accordingly, we sustain the rejection of
claim 14. We also sustain the rejection of dependent claims 15 and 16 for
the same reasons.
Rejection of Claim 17
With respect to independent claim 17, Appellant first relies on the
argument addressed above that Trunick’s folded edges are not compatible
with Szymonski and Gao. Appeal Br. 6. As discussed above, we are not
persuaded of error by this argument. Second, Appellant argues that the
Examiner erred in relying on Harwood. Id. at 7. However, Appellant’s
argument regarding Harwood is directed to the percentage of compression
required by claim 19. Id. Claim 17 does not require a specific range of
compression and only requires that the carton is “configured to house a stack
of compressed interfolded tissues.” Appeal Br. 12. With respect to this
claim, the Examiner relies on Harwood’s teaching of a compressed stack of
tissues. Final Act. 10 (citing Harwood col. 10, ll. 30–40). Appellant’s
argument regarding the percentage of compression does not address this
claim or the Examiner’s reliance on Harwood with respect to this claim, and
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thus, we find it unpersuasive. Accordingly, we are not persuaded of
reversible error, and thus, we sustain the rejection of claim 17.
Rejection of Claim 18
Claim 18 depends from claim 17 and further recites “wherein the
dispensing window covers the carton opening and at least two sides of the
container.” Appeal Br. 12. Appellant does not present separate arguments
regarding the rejection of this claim.9 See Id. at 8. Accordingly, we sustain
the rejection of claim 18 for the reasons we sustain the rejection of
independent claim 17, from which claim 18 depends.
Rejection of Claim 19
Claim 19 depends from claim 17 and requires that “the stack has a
compressed height (h3) that is from about 30 percent to about 60 percent less
than the height of an identical uncompressed stack of interfolded disposable
sheets (h1).” Appeal Br. 12. The Examiner determines that this limitation
would have been obvious in view of Harwood’s teachings. Final Act. 6
(citing Harwood col. 10, ll. 30–40). Appellant argues that Harwood teaches
a range outside of the claimed range and Harwood does not provide
motivation to compress the tissue stack further. Appeal Br. 7.
We are not persuaded of error. Notably, as Appellant acknowledges,
Harwood discloses compression of a tissue stack from about 12 to 29
percent. Harwood col. 8, ll. 66–75. We consider the disclosed range in
Harwood to be substantially close to the claimed range such that a prima
facie case of obviousness exists. See Titanium Metals Corp. of America v.

9 Although Appellant lists claim 18 under a separate heading, no arguments
regarding the specific requirements of the claim are advanced.
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Banner, 778 F.2d 775, 783, (Fed. Cir. 1985) (holding that prior art
percentages were sufficiently close that one skilled in the art would expect
them to have the same properties); see also MPEP § 2144.05. Here, we find
that compression of about 29 percent is sufficiently close to the claimed
range starting at 30 that one of ordinary skill in the art would understand
them to have substantially the same properties. Further, Appellant has not
set forth a showing that the claimed range is critical to overcome this
rejection. See In re Woodruff, 919 F.2d 1575 (Fed. Cir. 1990). Accordingly,
we sustain the rejection of claim 19.
Rejection of Claim 20
Claim 20 depends from claim 17 and further recites “a dispensing
opening disposed on the dispensing window, the dispensing opening having
a width from about 10 to about 15 mm and a length from about 60 percent to
about 80 percent of the length of the carton opening.” Appeal Br. 12. The
Examiner finds that providing a dispensing opening with the claimed width
would have been obvious in view of Hirasawa. Final Act. 11. Specifically,
the Examiner finds that Hirasawa teaches “a width from about 10 to about
20mm” and that a width of 20 mm is about 15 mm. Id. (citing Hirasawa
col. 6, ll. 29–32). We are persuaded by Appellant’s argument that Hirasawa
does not support the Examiner’s conclusion that providing the claimed width
of opening would have been obvious. As noted by Appellant, Hirasawa
discloses an opening width above 20 mm and also explains that opening
widths below 20 mm do not allow for a finger to be inserted therein.
Hirasawa col. 6, ll. 29–32 (“The maximum width W1 of the taking-out
opening is at least 20 mm or more, preferably, 38 mm or more. In a range of
less than 20 mm, a function as the finger inserting portion 28 can not be
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obtained.”). Given this disclosure, we agree with Appellant that one of
ordinary skill in the art would not conclude that 15 mm is about 20 mm, as
the Examiner argues, or that an opening of 15 mm would have the same
properties as an opening above 20 mm. The Examiner does not adequately
support or explain the finding that an opening of about 15 mm “is capable of
providing a functional dispenser” in light of the evidence in Hirasawa to the
contrary.
Based on the foregoing, we do not sustain the rejection of claim 20.
CONCLUSION
We AFFIRM the rejections of claims 14–19. We REVERSE the
rejections of claims 1–7, 9–11, 13, 20, and 21.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136 (a). See 37 C.F.R. §
1.136 (a)(l)(iv).

In summary:
Claims
Rejected
35 U.S.C. § Basis  Affirmed Reversed
1, 2, 4, 5, 13,
21
103(a) Trunick,
Szymonski
1, 2, 4, 5,
13, 21
3 103(a) Trunick,
Szymonski, Gao
3
6, 7, 17, 19 103(a) Trunick,
Szymonski,
Harwood
17, 19 6, 7
9, 11 103(a) Trunick,
Szymonski,
Thoms
9, 11
10 103(a) Trunick,
Szymonski,
Nasrallah
10
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Claims
Rejected
35 U.S.C. § Basis  Affirmed Reversed
14–16 103(a) Trunick,
Szymonski,
Gao, Harwood
14–16
18, 20 103(a) Trunick,
Szymonski,
Gao, Harwood,
Hirasawa,
Nasrallah
18 20
Overall
Outcome
14–19 1–7, 9–
11, 13,
20, 21

AFFIRMED IN PART