Ex Parte Abbosh et al

Patent Trial and Appeal Board

Sep 22, 2016

13153602 (P.T.A.B. Sep. 22, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/153,602 06/06/2011
69638 7590 09/22/2016
KAMRATH IP Lawfirm, PA
4825 Olson Memorial Highway, Suite 150
Golden Valley, MN 55422
FIRST NAMED INVENTOR
Oday Abbosh
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.
J47234US.CON 9392
EXAMINER
RANDALL, JR., KELVIN L
ART UNIT PAPER NUMBER
3651
MAILDATE DELIVERY MODE
09/22/2016 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
Exparte ODAY ABBOSH,
IAN HAMIL TON DRYBURGH, and NIGEL LAWSON
Appeal2014-001574
Application 13/153,602
Technology Center 3600
Before JAMESON LEE, SALLY C. MEDLEY, and
BARBARA A. BENOIT, Administrative Patent Judges.
LEE, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's
Final Rejection of claims 1-7, 9-13, 15, and 16. Claims 8 and 14 were
objected to as being dependent from a rejected base claim. We have
jurisdiction over the appeal pursuant to 35 U.S.C. § 6(b). 1
We reverse.
1 This Decision refers to Appellants' Appeal Brief ("App. Br.," filed Aug. 1,
2013), the Examiner's Answer ("Ans.," mailed Sept. 3, 2013), and Final
Office Action ("Final Act.," mailed Aug. 1, 2012).
Appeal2014-001574
Application 13/153,602
The subject matter of the Application is directed to "wipes." Spec.
1 :8. The Specification states:
The term "wipes" is used herein to refer to the kinds of
disposable absorbent products known variously as tissues,
clothes, paper towels, kitchen rolls and the like, which may be
made of paper, cloth or any other suitable material and which
may be moist, wet or dry and which may be embossed,
perforated, quilted or printed or have any other surface
decoration or treatment.
Id. at 1 :8-12. The Specification also states: "[I]t is often necessary to use
two hands to extract the product from its dispenser. The present invention
seeks to improve upon these existing products." Id. at 1: 14--16.
CLAIMED SUBJECT MATTER
Of all the claims on appeal, claims 1, 5, and 11 are independent.
Claims 2--4 each depend, directly or indirectly, from claim 1. Claims 6, 7, 9
and 10 each depend, directly or indirectly, from claim 5. Claims 12, 13, 15,
and 16 each depend, directly or indirectly, from claim 11.
Claim 1 is directed to a method for producing a wipe. Claim 5 is
directed to a method for using a wipe. Claim 11 is directed to a disposable
absorbent product comprising a multiplicity of disposable wipes. Claims 1,
5, and 11 are reproduced below, with spacing and indentation inserted
between limitations to facilitate reading.
1. A method of producing a wipe comprising:
providing a generally flat piece of absorbent material
having a generally circular shape;
forming the piece of material into a non-planar form
having a three-dimensional conical shape including an apex and
a circular base and defining a hollow interior,
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Appeal2014-001574
Application 13/153,602
with forming the piece of material including
folding the piece of material to define a pleat extending
from the apex to the circular base and protruding
externally slightly from the non-planar form and away
from the hollow interior; and
storing the piece of material in said non-planar form with
said apex arranged above the circular base, with the pleat thereby
presenting a ready means for grasping by a user for removing the
stored piece of material in said non-planar form.
5. A method of using a wipe comprising:
providing a generally flat piece of absorbent material
having a generally circular shape;
forming the piece of material into a non-planar form
having a three-dimensional conical shape including an apex and
a circular base and defining a hollow interior;
storing the piece of material in said non-planar form with
said apex arranged above the circular base;
grasping the stored piece of material in said non-planar
form and placing the stored piece of material on a spill in said
non-planar form having the three-dimensional conical shape
including the apex and the circular base and defining the hollow
interior; and
returning the piece of material in the non-planar form
placed on the spill to the generally flat shape after being placed
on the spill.
11. A disposable absorbent product comprising
a multiplicity of disposable wipes, wherein each wipe
comprises a generally flat piece of absorbent material having a
generally circular shape,
first and second folds in the generally flat piece of material
to form the generally flat piece of material into a non-planar form
having a three-dimensional conical shape for storage in said non-
planar form, with the conical shape including an apex and a
circular base defining a hollow interior,
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Appeal2014-001574
Application I3/153,602
with the first and second folds each extending from the
apex to first and second points on the circular base, with the first
and second folds in the piece of material defining a pleat that
protrudes externally slightly from the non-planar form and away
from the hollow interior,
with the multiplicity of wipes being arranged in a stack
one upon the other in succession, with the apex of each wipe
arranged above its circular base, with the pleat of the uppermost
wipe providing a ready means for grasping by a user, with the
uppermost wipe abutting with the pleat of the next wipe m
succession in the stack.
PERTINENT APPLICATION DISCLOSURE
Figures IA, IB, and IC are reproduced below.
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FIG. 18
FIG. 1A
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Appeal2014-001574
Application I3/153,602
Figures IA, IB, and IC show a wipe according to the invention in its
various stages of formation. Spec. I :30-3 I. The Specification states:
As seen in Figures I a, I b and I c, the wipe is transformed
from the planar form of disc I 0 seen in Figure I a into the three-
dimensional form I I seen in Figure I c by tucking in a pleat I 3
formed by two radial fold lines I 4, I 5 in the disc I 0. The pleat
I 3 enables the disc I 0 to be partially wrapped over itself, as seen
in Figure I b, which has the effect of drawing it into a conical
configuration, as seen in Figure I c.
Id. at 2: I3-I 7.
Figures 2--4 are reproduced below:
FIG. 2
FIG. 3
Figures 2--4 show various forms of dispensers for storing the wipes. Id.
at 2: I-2. The Specification states:
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Appeal2014-001574
Application 13/153,602
A stack of wipes stored and presented in the manner
described above [Figures 2--4] offers a more attractive solution
for a kitchen than the more traditional forms of the paper roller.
The arrangement also facilitates use of the wipes, because they
can be picked up with just one hand, unlike removing a tissue
from a conventional roll of kitchen paper, which often requires
two hands.
Id. at 3: 10-14.
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is listed as follows:
Horwitt
Kelly
Bennett
Spiegelberg
Smiley
Widlund
us 1,501,662
us 2,533,815
us 2, 705,889
us 4,143,762
us 4,619,166
US 2004/0222582 Al
REJECTIONS
July 15, 1924
Dec. 12, 1950
Mar. 29, 1955
Mar. 13, 1979
Oct. 28, 1986
Nov. 11, 2004
Claims 1, 2, 11, and 16 were finally rejected under 35 U.S.C. § 103(a)
as unpatentable over Kelly, Bennett, and Smiley. Final Act. 5-8.
Claims 3, 4, 12, and 13 were finally rejected under 35 U.S.C. § 103(a)
as unpatentable over Kelly, Bennett, Smiley, and Widlund. Id. at 8.
Claims 5, 6, and 10 were finally rejected under 35 U.S.C. § 103(a) as
unpatentable over Kelly, Bennett, Smiley, and Horwitt. Id. at 9-11.
Claim 7 was finally rejected under 35 U.S.C. § 103(a) as unpatentable
over Kelly, Bennett, Smiley, Horwitt, and Widlund. Id. at 11.
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Appeal2014-001574
Application 13/153,602
Claims 9 and 15 were finally rejected under 35 U.S.C. § 103(a) as
unpatentable over Kelly, Bennett, Smiley, Horwitt, and Spiegelberg. Id. at
11-12.
ISSUES
Have Appellants shown that the Examiner erred in concluding that
claims 1, 2, 11, and 16 would have been obvious over Kelly, Bennett, and
Smiley?
Have Appellants shown that the Examiner erred in concluding that
claims 3, 4, 12, and 13 would have been obvious over Kelly, Bennett,
Smiley, and Widlund?
Have Appellants shown that the Examiner erred in concluding that
claims 5, 6, and 10 would have been obvious over Kelly, Bennett, Smiley,
and Horwitt?
Have Appellants shown that the Examiner erred in concluding that
claim 7 would have been obvious over Kelly, Bennett, Smiley, Horwitt, and
Widlund?
Have Appellants shown that the Examiner erred in concluding that
claims 9 and 15 would have been obvious over Kelly, Bennett, Smiley,
Horwitt, and Spiegelberg?
ANALYSIS
A. Rejection of Claims 1, 2, 11, and 16 under 35 U.S.C. § 103(a)
as Unpatentable over Kelly, Bennett, and Smiley
The Examiner determined that Kelly discloses most of the limitations
of independent claims 1 and 11, with Bennett accounting for limitations
relating to storing and Smiley accounting for limitations relating to grasping
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Application 13/153,602
for removal. Final Act. 5-8. Claim 2 depends from claim 1, and claim 16
depends from claim 11.
Kelly states: "This invention relates to filter racks and more
particularly to a filter rack to be placed in a filtering funnel to hold a filter
paper or tissue out of contact with the inner surface of the funnel during a
filtering operation." Kelly, 1:1-5. Figures 4 and 5 of Kelly are reproduced
below.
FIG, £1;,
Figure 4 "is a perspective view of a paper filter showing the manner in
which a circular piece of filter paper is folded to produce a conical filter."
Id. at 1:36-39. Figure 5 "is a top plan view of a circular blank of filter paper
or tissue indicating an initial stage in the folding of such blank to produce
the conical filter illustrated in Figure 4." Id. at 1:40-43. Figure 1 of Kelly is
reproduced below:
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Application 13/153,602
Figure 1 "is a side elevation of a filter funnel with a paper filter and filter
rack illustrative of the invention operatively disposed therein, a portion of
the funnel filter and rack being broken away and shown in cross section to
better illustrate the construction thereof." Id. at 1 :28-32.
Patent Owner argues that Kelly is non-analogous art to the claimed
invention, and thus may not be relied on for establishing obviousness of the
claimed invention. App. Br. 3-8. Two separate tests define the scope of
analogous prior art: ( 1) whether the art is from the same field of endeavor,
regardless of the problem addressed and, (2) if the reference is not within the
field of the inventor's endeavor, whether the reference still is reasonably
pertinent to the particular problem with which the inventor is involved. In re
Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004); In re Deminski, 796 F.2d 436,
442 (Fed. Cir. 1986). If a prior art reference satisfies either test, it is not
nonanalogous. Also, when a patent applicant has asserted that an applied
prior art reference is nonanalogous, as here, it is incumbent upon the
Examiner to explain why it is not.
The record does not contain an explanation by the Examiner as to why
Kelly is either within the same field of endeavor as the Appellants' claimed
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Application 13/153,602
invention, or is reasonably pertinent to any particular problem with which
the inventors were involved. On this record, it is not apparent to us how
either test would be met.
Even assuming that Kelly is not nonanalogous, the Examiner's
reliance on Kelly as disclosing a piece of "absorbent material" (Final Act. 5)
as is required by each of claims 1, 2, 11, and 16, is in error because it is
unsupported by the evidence. In that regard, the Examiner contends, in
effect, that if a material is "porous," it is absorbent. Final Act. 2; Ans. 2.
We disagree. Kelly relates to filter paper, not a "wipe." Kelly states: "The
filter paper, generally indicated at 14 [Figs. 1, 4, 5], is also of conventional
construction and comprises a circular piece or blank of paper or tissue of the
desired porosity." Kelly, 2: 10-13. The Examiner has not explained why
that "desired porosity" pertains to absorbency as in the case of a "wipe,"
rather than to screening or filtration as in the case of a filter. On this record,
in Kelly, the referenced porosity refers to filtration and not absorption,
because Kelly discloses a filter paper. As is noted by Appellants: "For
example, steel wool is clearly porous and readily able to allow liquid to pass
through it. However, it is clearly not capable of soaking up liquid or
absorbing it." App. Br. 5. The Examiner has not taken the position that
paper is inherently capable of absorbing liquid and thus filter paper is
necessarily absorbent material. In any event, the evidence of record would
not support that contention with regard to filter paper.
Furthermore, the Examiner has not provided reasoning with rational
underpinnings as to why one with ordinary skill in the art would want to
form a "wipe" in a conical shape, as is recited in the claims. As is asserted
by Appellants, "[t]he filters of Kelly and Smiley and the disposable cup of
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Appeal2014-001574
Application 13/153,602
Bennett are the shapes that they are principally because of the functions that
they are intended to perform." App. Br. 7. A "wipe" does not share those
functions, i.e., filtering liquid or holding substantial quantity of fluid.
For the foregoing reasons, the Examiner has not established that any
one of claims 1, 2, 11, and 16 would have been obvious over Kelly, Bennett,
and Smiley.
B. Rejection of Claims 3, 4, 12, and 13 under 35 U.S.C. § 103(a)
as Unpatentable over Kelly, Bennett, Smiley, and Widlund
Claims 3 and 4 each depend from claim 2. Claims 12 and 13 each
depend from claim 11. As applied by the Examiner, Widlund does not cure
the deficiencies of the Examiner's position with regard to claim 2 as
discussed above. Also, as applied by the Examiner, Widlund does not cure
the deficiencies of the Examiner's position with regard to claim 11 as
discussed above.
C. Rejection of Claims 5, 6, and 10 under 35 U.S.C. § 103(a)
as Unpatentable over Kelly, Bennett, Smiley, and Horwitt
Claim 5 is independent. Claim 6 depends from claim 5, and claim 10
depends from claim 6. Like claims 1 and 11, claim 5 requires a piece of
absorbent material. As in the case of claims 1 and 11, the Examiner relies
on Kelly as disclosing the piece of absorbent material. Final Act. 9. For the
same reasons as those discussed above in connection with independent
claims 1 and 11, the Examiner has not established that any one of claims 5,
6, and 10 would have been obvious over Kelly, Bennett, Smiley, and
Horwitt. As applied by the Examiner, Horwitt does not cure the deficiencies
of the Examiner's position.
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Application 13/153,602
D. Rejection of Claim 7 under 35 U.S.C. § 103(a) as
Unpatentable over Kelly, Bennett, Smiley, Horwitt, and
Widlund
Claim 7 depends from claim 6, and claim 6 depends from claim 5.
As applied by the Examiner, Widlund does not cure the deficiencies of the
Examiner's position with regard to the limitations of claims 5 and 6 as
discussed above. Accordingly, the Examiner has not established that claim 7
would have been obvious over Kelly, Bennett, Smiley, Horwitt, and
Widlund.
E. Rejection of Claims 9 and 15 under 35 U.S.C. § 103(a) as
Unpatentable over Kelly, Bennett, Smiley, Horwitt, and
Spiegelberg
Claim 9 depends from claim 6. Claim 15 depends from claim 11. As
applied by the Examiner, Spiegelberg does not cure the deficiencies of the
Examiner's position with regard to claim 6 as explained above. Also, as
applied by the Examiner; Horwitt and Spiegelberg do not cure the
deficiencies of the Examiner's position with regard to claim 11 as explained
above. Accordingly, the Examiner has not established that either claim 9 or
claim 15 would have been obvious over Kelly, Bennett, Smiley, Horwitt,
and Spiegelberg.
CONCLUSION
Appellants have shown error in the Examiner's conclusion that
claims 1, 2, 11, and 16 are unpatentable as obvious over Kelly, Bennett, and
Smiley.
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Application 13/153,602
Appellants have shown error in the Examiner's conclusion that
claims 3, 4, 12, and 13 are unpatentable as obvious over Kelly, Bennett,
Smiley, and Widlund.
Appellants have shown error in the Examiner's conclusion that
claims 5, 6, and 10 are unpatentable as obvious over Kelly, Bennett, Smiley,
and Horwitt.
Appellants have shown error in the Examiner's conclusion that claim
7 is unpatentable as obvious over Kelly, Bennett, Smiley, Horwitt, and
Widlund.
Appellants have shown error in the Examiner's conclusion that claims
9 and 15 are unpatentable as obvious over Kelly, Bennett, Smiley, Horwitt,
and Spiegelberg.
DECISION
The rejection of claims 1, 2, 11, and 16 under 35 U.S.C. § 103(a) as
obvious over Kelly, Bennett, and Smiley is reversed.
The rejection of claims 3, 4, 12, and 13 under 35 U.S.C. § 103(a) as
obvious over Kelly, Bennett, Smiley, and Widlund is reversed.
The rejection of claims 5, 6, and 10 under 35 U.S.C. § 103(a) as
obvious over Kelly, Bennett, Smiley, and Horwitt is reversed.
The rejection of claim 7 under 35 U.S.C. § 103(a) as obvious over
Kelly, Bennett, Smiley, Horwitt, and Widlund is reversed.
The rejection of claims 9 and 15 under 35 U.S.C. § 103(a) as obvious
over Kelly, Bennett, Smiley, Horwitt, and Spiegelberg is reversed.
REVERSED
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