Ex Parte Delfino

Board of Patent Appeals and Interferences

Sep 23, 2004

10108315 (B.P.A.I. Sep. 23, 2004)

1
The opinion in support of the decision being entered today was
not written for publication and is not binding precedent of the
Board.
Paper No. 23
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte NICHOLAS A. DELFINO
__________
Appeal No. 2004-1159
Application 10/108,315
___________
ON BRIEF
___________
Before COHEN, FRANKFORT, and NASE, Administrative Patent Judges.
FRANKFORT, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the examiner's final
rejection of claims 11 through 13 and 21. Claims 1 through 10
and 14 through 20, all of the other claims pending in the
application stand allowed.
As noted on page 1 of the specification, appellant’s
invention is directed to a narrow paper towel roll, having a
width approximately one-half that of a conventional 11-inch wide
Appeal No. 2004-1159
Application 10/108,315
2
paper towel roll, and to a method for supplying such a narrow
paper towel roll together with a suitable holder, wherein the
paper towel roll and holder are provided in a package for retail
sale. Independent claims 11 and 21 are representative of the
subject matter on appeal and a copy of those claims can be found
in the Appendix to appellant’s brief.
The prior art references of record relied upon by the
examiner in rejecting the appealed claims are:
Monahan 3,160,361 Dec. 8, 1964
French et al. (French) 5,909,832 Jun. 8, 1999

Claim 11 stands rejected under 35 U.S.C. § 102(b) as being
anticipated by Monahan.
Claim 11 also stands rejected under 35 U.S.C. § 102(b) as
being anticipated by French.
Claims 12, 13 and 21 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over Monahan.
Appeal No. 2004-1159
Application 10/108,315
3
Rather than attempt to reiterate the examiner's full
commentary with respect to the above-noted rejections and the
conflicting viewpoints advanced by the examiner and appellant
regarding the rejections, we make reference to the examiner's
answer (Paper No. 14, mailed October 9, 2003) for the reasoning
in support of the rejections, and to appellant’s brief (Paper No.
11, filed June 20, 2003), Supplemental Remarks contained in Paper
No. 12 (filed June 26, 2003) and reply brief (Paper No. 15, filed
November 25, 2003) for the comments and arguments thereagainst.
OPINION

Having carefully reviewed the anticipation and obviousness
issues raised in this appeal in light of the record before us, we
have come to the conclusion that the examiner's rejection of
claim 11 under 35 U.S.C. § 102(b) based on French will be
sustained, while that based on Monahan will not be sustained.
The examiner’s rejection of claims 12, 13 and 21 under 35 U.S.C.
§ 103(a) as being unpatentable over Monahan, will also not be
sustained. Our reasoning in support of these determinations
follows.
Appeal No. 2004-1159
Application 10/108,315
4
In responding to the examiner’s rejection of independent
claim 11 under 35 U.S.C. § 102(b) based on Monahan, appellant
contends that Monahan discloses only a holder or rack (R) for a
conventional paper towel roll (T), and fails to provide any
disclosure or teaching of a “package for retail sale” as set
forth in claim 11 on appeal. The examiner expresses the view
(answer, page 6) that the language “for retail sale” is merely
intended use and that Monahan clearly teaches a “package” since
the rack and paper towel roll have been combined into a single
unit, which the examiner apparently views as being accepted or
rejected as a single unit. We do not agree. Like appellant, it
is our opinion that one of ordinary skill in the art would not
reasonably view the rack and roll of paper toweling associated
therewith as shown in Figure 1 of Monahan as being a “package for
retail sale.” In that regard, we generally share appellant’s
views as expressed in the brief (pages 3-4) and reply brief
(pages 1-3).
Before the USPTO, when evaluating claim language during
examination of a patent application, the examiner is required to
give the terminology of the claims its broadest reasonable
interpretation consistent with the specification, and to remember
Appeal No. 2004-1159
Application 10/108,315
5
that the claim language cannot be read in a vacuum, but instead
must be read in light of the specification as it would be
interpreted by one of ordinary skill in the pertinent art. See
In re Sneed, 710 F.2d 1544, 1548, 218 USPQ 385, 388 (Fed. Cir.
1983); In re Bond, 910 F.2d 831, 833, 15 USPQ2d 1566, 1567 (Fed.
Cir. 1990) and In re Morris, 127 F.3d 1048, 1054, 44 USPQ2d 1023,
1027 (Fed. Cir. 1997). Looking to the package for retail sale
seen in Figure 4 of the present application and to the disclosure
associated therewith (specification, page 7), it is clear to us
that the examiner in formulating the present rejection has
dissected the claim language, read the claim language “package
for retail sale” in a vacuum, and clearly not read such language
in light of the specification as it would be understood and
interpreted by one of ordinary skill in the pertinent art.
In light of the foregoing, we will not sustain the
examiner’s rejection of claim 11 under 35 U.S.C. § 102(b) as
being anticipated by Monahan.
As for the examiner’s rejection of claim 11 under 35 U.S.C.
§ 102(b) as being anticipated by French, we share the examiner’s
view that the vehicle cleaning kit (10) containing the items seen
Appeal No. 2004-1159
Application 10/108,315
6
in Figures 1-3 of that patent would have been reasonably viewed
by one of ordinary skill in the art as being a “package for
retail sale.” In that regard, we consider that the housing (12)
and securable housing lid (26) of French provide a container or
package for the paper towel holder (30) and roll of paper towels
(39), as well as for the other accessory items contained in the
cleaning kit and carried in the closed and secured housing (note,
col. 4, lines 20-28). We see no need for the container/package
of French to be further boxed or wrapped in order to permit
retail sale thereof. Moreover, contrary to appellant’s assertion
in the paragraph bridging pages 4 and 5 of the brief, we find
that the arm portions (32, 34) of French’s paper towel holder
(30) are clearly “movable into positions extending along opposite
ends of said paper towel roll,” as set forth in claim 11, and are
resiliently and releasably engageable with the ends of paper
towel roll (39) via roll support plugs (unnumbered) shown in
Figure 1.
For the above reasons, we will sustain the examiner’s
rejection of independent claim 11 under 35 U.S.C. § 102(b) as
being anticipated by French.
Appeal No. 2004-1159
Application 10/108,315
7
In rejecting claims 12, 13 and 21 under 35 U.S.C. § 103(a)
based on Monahan, the examiner has expressed the following views
on page 5 of the answer:
With respect to Claims 13 and 21, Monahan is advanced
above. Monahan, column 3, lines 30-32, mention the length
of the holder which above that being claimed. However, it
would have been obvious, as determined through routine
experimentation and optimization, to dimension the roll
holder of Monahan because one of ordinary skill would have
been expected to have routinely experimented to determine
the optimum dimensions for a particular use. For example,
one would select a narrower roll for the purpose of saving
space and/or saving paper.
With respect to Claim 12, Monahan does not mention a
plurality of rolls. However, it would have been obvious to
one of ordinary skill in the art to provide a plurality
because it has been held that mere duplication of the
essential parts of a device involve only routine skill in
the art. Such plurality would allow for the ease of
refilling or replacing the roll.
We will not sustain this rejection. Claims 12 and 13 depend
from independent claim 11, and are thus also directed to a
“package for retail sale.” Since we have determined above that
Monahan provides no disclosure or teaching of a package for
retail sale, and since it is apparent that the examiner’s reasons
for rejecting claims 12 and 13 do not otherwise account for this
limitation, it follows that the rejection of dependent claims 12
and 13 will also not be sustained.
Appeal No. 2004-1159
Application 10/108,315
8
As for independent claim 21, which is directed to a roll of
paper towels having, inter alia, “a width of 12.7 to 15.24
centimeters (5 to 6 inches),” suffice it to say that the
examiner’s above-noted position represents a clear case of
hindsight reconstruction, since the applied patent to Monahan
provides no teaching or suggestion whatsoever of modifying the
paper towel rack therein to be of any size other than that
necessary to accommodate a conventional roll of paper towels
(see, col. 3, lines 28-37 of Monahan). In that regard, we
observe that the mere fact that the prior art could be modified
in the manner urged by the examiner would not have made such
modification obvious unless the prior art suggested the
desirability of the modification. See In re Gordon, 773 F.2d
900, 902, 221 USPQ 1125, 1127 (Fed. Cir. 1984) and In re Fritch,
972 F.2d 1260, 1266 n.14, 23 USPQ2d 1780, 1783-84 n.14 (Fed. Cir.
1992).
In this case, it is our opinion that the examiner has
impermissibly drawn from appellant’s own teaching in concluding,
without any factual basis in the applied prior art, that it would
have been obvious to one of ordinary skill in the art to have
Appeal No. 2004-1159
Application 10/108,315
9
routinely experimented to determine optimum dimensions of the
paper towel roll and holder of Monahan for some particular use.
Since we have determined that the teachings and suggestions
that would have been fairly derived from Monahan would not have
made the subject matter as a whole of claim 21 on appeal obvious
to one of ordinary skill in the art at the time of appellant’s
invention, we must refuse to sustain the examiner’s rejection of
that claim under 35 U.S.C. § 103(a).
To summarize, we have refused to sustain the examiner’s
rejection of claim 11 under 35 U.S.C. § 102(b) based on Monahan
and the rejection of claims 12, 13 and 21 under 35 U.S.C.
§ 103(a) based on Monahan. However, we have sustained the
examiner’s rejection of claim 11 under 35 U.S.C. § 102(b) based
on French. Thus, the examiner’s decision is affirmed-in-part.
In addition to the foregoing, we REMAND this application to
the examiner under 37 CFR § 41.50(a) for 1) a more complete
search of the prior art and 2) consideration of a rejection of
claim 21 under 35 U.S.C. § 103(a) based on U.S. Patent No.
Appeal No. 2004-1159
Application 10/108,315
10
4,097,002 to John H. Krueger, which patent was cited by appellant
in an Information Disclosure Statement filed March 28, 2002
(Paper No. 3).
In regard to a further search, we note that during
examination of an application for patent, the examiner is charged
with the responsibility of conducting a thorough search of the
prior art, which search should cover the invention as described
and claimed, including the inventive concepts toward which the
claims are directed. For the present application, the inventive
concept involved in independent claim 11 deals with promotional
packaging where a product and a refillable holder/dispenser for
that product are included together in a “package for retail
sale.” This type of tying arrangement between a replaceable
product and a holder/dispenser is not new in the art of
commercial retailing. One example that come to mind from many
years ago is where Dixie® cups and a plastic holder/dispenser for
the cups were packaged together for retail sale. Another example
is where PEZ® candy and a refillable holder/dispenser for such
candy are marketed together in a package for retail sale. The
examiner should make an appropriate search of arts addressing
Appeal No. 2004-1159
Application 10/108,315
11
such promotional packaging and consider applying any teachings
derived therefrom to appellant’s paper towel roll and holder
package set forth in claim 11 on appeal. As for the inventive
concept involved in independent claim 21, this claim essentially
addresses a roll of paper towels that is approximately one-half
the width of a conventional roll of paper towels. We suggest
that the examiner may wish to search prior art concerning
children’s play kitchens, where all aspects of the play kitchen
have been downsized to accommodate the play of small children,
perhaps even to the extent of having a small sized roll of paper
towels used in such a play kitchen.
With regard to claim 21, we also direct the examiner’s
attention to U.S. Patent No. 4,097,002 to John H. Krueger. More
specifically, we note Figure 2 of that patent and the disclosure
associated therewith (e.g., col. 1, lines 10-20 and lines 34-39,
col. 2, lines 62-68 and patent claim 3) concerning a roll of
paper towels (64) that is constructed so as to be separated into
smaller sections widthwise by having at least one continuous
longitudinal score line provided in the toweling and core (68),
whereby a separated discrete section of the roll of paper towels
Appeal No. 2004-1159
Application 10/108,315
12
can then be used in the patentee’s adjustable length
holder/dispenser (10). If the roll of paper towels in the
Krueger patent were of a conventional size (i.e., approximately
11 inches in width), then a single score line down the middle of
the roll of toweling would appear to result in two rolls of paper
towels, each approximately 5.5 inches in width. This size roll
of paper towels clearly falls within appellant’s claimed size
range of 5 to 6 inches set forth in claim 21 on appeal.
In addition to affirming the examiner's rejection of one or
more claims, this decision contains a remand. 37 CFR § 41.50(e)
(effective September 13, 2004, 69 Fed. Reg. 49960 (August 12,
2004), 1286 Off. Gaz. Pat. Office 21 (September 7, 2004)) provides
that
[w]henever a decision of the Board includes a remand,
that decision shall not be considered final for judicial
review. When appropriate, upon conclusion of proceedings on
remand before the examiner, the Board may enter an order
otherwise making its decision final for judicial review.

Appeal No. 2004-1159
Application 10/108,315
13
Regarding any affirmed rejection, 37 CFR § 41.52(a)(1)
provides "[a]ppellant may file a single request for rehearing
within two months from the date of the original decision of the
Board."
The effective date of the affirmance is deferred until
conclusion of the proceedings before the examiner unless, as a
mere incident to the limited proceedings, the affirmed rejection
is overcome. If the proceedings before the examiner do not
result in allowance of the application, abandonment or a second
appeal, this case should be returned to the Board of Patent
Appeals and Interferences for final action on the affirmed
rejections, including any timely request for rehearing thereof.
Appeal No. 2004-1159
Application 10/108,315
14
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
AFFIRMED-IN-PART and REMANDED
IRWIN CHARLES COHEN )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
CHARLES E. FRANKFORT )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
JEFFREY V. NASE )
Administrative Patent Judge )
CEF:pgc
Appeal No. 2004-1159
Application 10/108,315
15
Ronald V. Davidge
Suite 514
3300 University Drive
Coral Springs, FL 33065