Anne D'Hiet et al.

Patent Trials and Appeals Board

Jul 17, 2019

13322007 - (D) (P.T.A.B. Jul. 17, 2019)

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.
13/322,007 02/07/2012 Anne D'Hiet 1018798-000620 2706
21839 7590 07/17/2019
BUCHANAN, INGERSOLL & ROONEY PC
POST OFFICE BOX 1404
ALEXANDRIA, VA 22313-1404
EXAMINER
RANDALL, JR., KELVIN L
ART UNIT PAPER NUMBER
3651
NOTIFICATION DATE DELIVERY MODE
07/17/2019 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):
ADIPDOC1@BIPC.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte ANNE D’HIET, JORIS SCHEPPERS, MYLÈNE PIERQUET,
MARION LIOTARD, and GERT DE SMEDT
____________

Appeal 2017-010836
Application 13/322,0071
Technology Center 3600
____________

Before LINDA E. HORNER, STEFAN STAICOVICI, and
ANNETTE R. REIMERS, Administrative Patent Judges.

HORNER, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellants seek our review under 35 U.S.C. § 134(a) of the
Examiner’s rejections of claims 1‒7, 9‒18, and 20‒25. Final Office Action
(October 7, 2016, “Final Act.”).2 We have jurisdiction under 35 U.S.C.
§ 6(b).

1 Appellants identify SCA Hygiene Products AB as the real party in interest.
Appeal Brief (February 13, 2017, “Appeal Br.”) 2.
2 Claims 8 and 19 are canceled.
Appeal 2017-010836
Application 13/322,007

2
The Examiner rejected all of the claims as unpatentable over various
combinations of prior art. Appellants argue that the Examiner has failed to
provide sufficient evidence supported by articulated reasoning and rational
underpinning to explain what would have led one having ordinary skill in
the art to combine the prior art teachings in the manner claimed.
For the reasons explained below, we agree with Appellants that the
Examiner has failed to provide adequate reasoning to support the
determination of obviousness. Thus, we REVERSE.
CLAIMED SUBJECT MATTER
The claimed subject matter on appeal relates to a dispenser for
dispensing tissue paper. Specification (November 22, 2011, “Spec.”) 1:6.
The dispenser housing is made from a flat material, and a handling section
can be folded out from a wall of the dispenser housing so that it is possible
for small children to securely grip and hold the dispenser. Id. at 2:25‒29,
3:4‒6. The dispenser housing has at least two layers of material where the
handling section is present so that the innermost layer of the flat material
remains intact and seals off the volume defined by the dispenser housing
when the handling section is folded out. Id. at 2:29‒3:2. Claim 1 is
illustrative of the subject matter on appeal and is reproduced below.
1. Dispenser for dispensing tissue paper, the
dispenser comprising a dispenser housing, the dispenser
housing being made from a single sheet of flat material, the
dispenser having at least one handling section adapted to be
folded out from a wall of the dispenser housing, the dispenser
housing having at least two layers of the flat material including
an innermost layer and a parallel outer layer that are formed of
the same material, the innermost layer including an inner
surface facing an interior of the dispenser and an opposite outer
surface facing away from the interior of the dispenser, the outer
Appeal 2017-010836
Application 13/322,007

3
layer being in direct contact with the outer surface of the
innermost layer at a location where the at least one handling
section is situated, wherein the at least one handling section is
present in the outer layer of the flat material only, such that the
at least one handling section forms a cut-out section in the outer
layer of the flat material and at least the innermost layer of the
flat material behind the cut-out section remains intact at the
location where the at least one handling section is situated and
seals off a volume defined by the dispenser housing at the
location where the at least one handling section is situated such
that the dispenser is adapted to be used as a fully operational
dispenser when the at least one handling section is folded out,
wherein a dispensing opening is defined in the flat
material, such that tissue paper can be removed at the
dispensing opening,
wherein the dispenser further comprises a stack or roll of
tissue paper in the volume defined by the dispenser housing..
Appeal Br., Claims Appendix A-1.
EVIDENCE
Palmer US 3,254,793 June 7, 1966
Schmidt US 3,346,167 Oct. 10, 1967
McPherson US 4,919,302 Apr. 24, 1990
McDonald US 2004/0178210 A1 Sept. 16, 2004
Mitchell ’309 US 2005/0077309 A1 Apr. 14, 2005
Mitchell ’342 US 6,997,342 B2 Feb. 14, 2006
Cowell US 2009/0090736 A1 Apr. 9, 2009
REJECTIONS
The Final Office Action includes the following rejections under
pre-AIA 35 U.S.C. § 103(a):
1. Claims 1, 2, 9, 11, 12, 16‒18, 21, 22, and 25 are rejected as
unpatentable over Palmer and Cowell.3

3 Although the heading of the rejection on page 2 of the Final Office Action
Appeal 2017-010836
Application 13/322,007

4
2. Claims 3, 10, 13, and 24 are rejected as unpatentable over Palmer,
Cowell, and Mitchell ’309.
3. Claims 4, 20, and 23 are rejected as unpatentable over Palmer,
Cowell, and Mitchell ’342.
4. Claims 5, 6, and 14 are rejected as unpatentable over Palmer,
Cowell, and McPherson
5. Claim 7 is rejected as unpatentable over Palmer, Cowell, and
Schmidt.
6. Claim 15 is rejected as unpatentable over Palmer, Cowell, and
McDonald.
ANALYSIS
The Examiner found that Palmer discloses the dispenser of claim 1
including dispenser housing (10) made from a single sheet of flat material
and having handling section (34) adapted to be folded out from wall (12) of
the dispenser housing (10). Final Act. 2. The Examiner also found that
Palmer’s dispenser (10) includes innermost layer (42) that remains intact
when handling section (34) is folded out from outer layer (12) of dispenser
housing (10). Id. at 2‒3. The Examiner acknowledged that Palmer “fails to
specifically teach an innermost layer and a parallel outer layer that are
formed of the same material.” Id. at 3. The Examiner noted, however, that
“one-piece construction, in place of separate elements fastened together, is a
design consideration within the skill of the art.” Id. (citing In re Kohno, 391
F.2d 959 (CCPA 1968) and In re Larson, 340 F.2d 965 (CCPA 1965)).

omits claim 21, the discussion of the rejection that follows includes a
rejection of claim 21 as unpatentable over Palmer and Cowell. Final Act. 4.
Appeal 2017-010836
Application 13/322,007

5
The Examiner also found that “Cowell teaches a container made of
polyethylene, polypropylene, polystyrene, copolymer polypropylene or
various other thermoformable-type materials or combinations thereof.”
Final Act. 3 (citing Cowell ¶ 67). The Examiner determined that it would
have been obvious to one having ordinary skill in the art to “combine the
teachings of Palmer with that of Cowell so as to provide a design choice as
known within the art.” Id. at 3‒4.
As to this proposed modification, Appellants argued that one of
ordinary skill in the art would have had no reason to form Palmer’s
dispenser housing using Cowell’s thin plastic flexible film material as an
innermost layer and a parallel outer layer. Appeal Br. 9. The Examiner, in
response, pointed to a different portion in Cowell that teaches another
embodiment using a semi-rigid plastic housing. Examiner’s Answer (June
27, 2017, “Ans.”) 3 (citing Cowell ¶ 65). The Examiner determined that the
combination of Palmer and Cowell “would suggest a dispenser housing with
an inner layer window made of the same material without changing the
principal operation of Palmer in that the contents would still be visible
through the container as a whole.” Id. The Examiner also stated that the
combination would have an obvious “design choice from a finite number of
choices as suggested by Cowell.” Id. at 4 (citing Cowell ¶ 65). In reply,
Appellants again contested the Examiner’s reasons for the proposed
modification of Palmer’s dispenser housing with Cowell’s plastic material.
Reply Brief (August 21, 2017, “Reply Br.”), 3‒4. For the reasons that
follow, the Examiner has not provided an adequate explanation of why one
having ordinary skill in the art would have been led to modify Palmer’s
dispenser in the manner claimed based on the teachings of Cowell.
Appeal 2017-010836
Application 13/322,007

6
Palmer discloses a dispenser container having a paperboard frame 2
with a transparent window 42 that cooperates with the frame to provide a
relatively strong assembly. Palmer 1:26‒30, 2:47‒52, Fig. 1. Palmer
constructs dispenser frame 2 using “a relatively rigid and opaque sheet
material such as paperboard.” Id. at 1:62‒64. Palmer’s window 42 is
constructed of “semi-rigid synthetic plastic sheet material [4].” Id. at 1:64‒
65, Fig. 2. Palmer discloses that container may be economically formed
from the paperboard blank and the plastic window secured to the frame. Id.
at 1:66‒67, 2:21‒25, 3:25‒27, Figs. 2, 3. Removable cover portion 28 is
formed in the paperboard blank of frame 2, the removal of which forms
window aperture 26 through which tissues within the container can be
observed. Id. at 2:68‒3:9, Fig. 1. Palmer discloses that the window is larger
than the window aperture, so that the marginal portions of the frame adjacent
the window aperture overlap the corresponding marginal portions of the
window. Id. at 3:12‒16, Fig. 3.
Palmer teaches that the paperboard material for the frame should be
relatively rigid to provide optimum strength and that it may be dyed or
printed readily to provide wide variations in appearance of the container. Id.
at 4:26‒27, 30‒32. Palmer provides the semi-rigid synthetic plastic sheet
material may be made from “biaxially oriented polystyrene, cellulose
acetate, cellulose acetate butyrate, polyvinyl chloride-acetate copolymer,
polyethylene and polypropylene.” Id. at 4:48‒52. Palmer describes that
“[b]y securing the frame and window together to obtain composite action, a
relatively large window area may be provided in a relatively high-strength
container to permit rapid visual inspection of goods received therein.” Id. at
5:3‒6. Palmer also describes that “[t]he container may be fabricated from
Appeal 2017-010836
Application 13/322,007

7
relatively inexpensive materials and may be economically and easily erected
from a relatively economical and easily fabricated blank.” Id. at 5:7‒10.
Cowell pertains to a refillable travel dispenser for wet wipes. Cowell,
cover page, (54). Cowell discloses that its container is made of a rigid or
semi-rigid plastic material, which can include “polypropylene, copolymer
polypropylene, polystyrene, thermoplastic elastomers, combinations thereof,
and various forms therein.” Id. ¶ 65. Cowell also discloses that in another
embodiment, “the container is made from at least one thin plastic flexible
film material.” Id. ¶ 67. Cowell describes that “[s]uitable thermoplastic
film materials for the container can include polyethylene, polypropylene,
polystyrene, copolymer polypropylene or various other thermoformable-type
materials or combinations thereof.” Id.
Although the types of materials described as suitable for use in
making Cowell’s dispenser container overlap with the materials described as
suitable for use in making Palmer’s window, the Examiner has not explained
adequately what would have prompted one to modify Palmer’s dispenser
frame, made from a sturdy paperboard blank, to make it from either
Cowell’s thin plastic flexible material or Cowell’s rigid or semi-rigid plastic
material.
As to the proposed modification to use thin plastic flexible film, such
a modification would be contrary to the teachings of Palmer. As discussed
above, Palmer discloses that an aim of its invention is to use a strong and
economical material for the container frame in combination with a semi‒
rigid plastic sheet window to create a strong dispenser. It is not clear from
the Examiner’s explanation why one would have been led to use a thin
flexible material for the frame in Palmer simply because Cowell discloses
Appeal 2017-010836
Application 13/322,007

8
that such material is suitable for Cowell’s container. In fact, it is not clear
that Cowell’s thin plastic flexible film would be sturdy enough to achieve
the objective of Palmer to create a strong dispenser.
As to proposed modification to use either Cowell’s thin plastic
flexible film or Cowell’s semi-rigid plastic material, again the Examiner’s
reasoning is not articulated adequately. Cowell does not disclose that either
disclosed material is transparent. So, if one were to modify Palmer as
proposed by the Examiner so that Palmer’s plastic sheet 4 and frame 2 were
made from the same material (i.e., Cowell’s material), then Palmer’s
dispenser, as modified, would no longer contain a transparent window. If,
on the other hand, in modifying Palmer to make both plastic sheet 4 and
frame 2 of the same material, one were to maintain the transparent nature of
Palmer’s plastic sheet, then the resulting container would be made from
entirely transparent material, such that the window would no longer be
necessary.
Also, Palmer touts the composite nature of its construction made from
relatively inexpensive materials. The Examiner’s reason for modifying
Palmer is because other materials were known in the prior art for making
dispenser containers. The modification to Palmer’s paperboard frame,
however, eliminates an advantage discussed in Palmer of being able to make
the dispenser housing economically from a paperboard blank. The Examiner
has not explained sufficiently what would have led one to replace this
economical dispenser housing with a plastic housing.
“Design choice” may be appropriate reasoning to modify a prior art
teaching where the applicant fails to set forth any reasons why the
differences between the claimed invention and the prior art would result in a
Appeal 2017-010836
Application 13/322,007

9
different function or give unexpected results. See In re Chu, 66 F.3d 292,
298–99 (Fed. Cir. 1995). However, in this case, Appellants have explained
how making Palmer’s frame 2 from the same material as its plastic sheet 4
would result in a different function than that shown by Palmer. Namely,
making Palmer’s frame 2 from one of the materials disclosed in Cowell
would either eliminate the structural rigidity of the container, or eliminate
the transparent window, or obviate the need for a window at all. See Appeal
Br. 9‒10; Reply Br. 3. Without more explanation, the Examiner has not
articulated adequate reasoning to explain why one skilled in the art would
have modified Palmer’s materials in the manner claimed, when doing so
would change the structural rigidity and possibly the economic aspects of the
invention and might destroy the function of Palmer’s window.
DECISION
The decision of the Examiner rejecting claims 1‒7, 9‒18, and 20‒25
is reversed.

REVERSED