12606515 (P.T.A.B. Feb. 27, 2015)

Ex Parte Hada et al

Patent Trial and Appeal BoardFeb 27, 2015

12606515 (P.T.A.B. Feb. 27, 2015)

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. 12/606,515 10/27/2009 Frank Stephen Hada 64476316US01 2890 23556 7590 02/27/2015 KIMBERLY-CLARK WORLDWIDE, INC. Patent Docketing 2300 Winchester Rd. NEENAH, WI 54956 EXAMINER KIM, SANG K ART UNIT PAPER NUMBER 3654 MAIL DATE DELIVERY MODE 02/27/2015 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 FRANK STEPHEN HADA, JAMES LEO BAGGOT, ROBERT EUGENE KRAUTKRAMER, and STEVEN JAMES WOJCIK ____________________ Appeal 2013-001656 Application 12/606,515 Technology Center 3600 ____________________ Before JOHN C. KERINS, MICHAEL L. WOODS, and LEE L. STEPINA, Administrative Patent Judges. WOODS, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Frank Stephen Hada et al. (“Appellants”) seek our review under 35 U.S.C. § 134 of the final rejection of claims 4–8. Br. 1. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM-IN-PART. Appeal 2013-001656 Application 12/606,515 2 CLAIMED SUBJECT MATTER Appellants’ invention is directed to “coreless rolled tissue products, such as bath tissue and paper towels.” Spec. 2, ll. 8–9. Claims 4–8 depend from claim 1, which is the sole independent claim. Br. 6, Claims App. Claims 1 and 4 are reproduced below to further provide an understanding of the claimed invention, with emphasis on a key disputed claim limitation. 1. A coreless roll of tissue comprising a plurality of tissue sheet windings emanating from an axially-oriented central open area and terminating on the outside of the roll, the axially-oriented central open area being lined only by the tissue sheets, wherein two or more consecutive windings closest to the central open area have registered perforations. 4. The roll of tissue of claim 1 wherein registered perforations in the first two consecutive windings are positioned diametrically opposite each other in the roll. Br. 6, Claims App. (emphasis added). THE REJECTION Claims 1–8 and 19 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Hawk (US 1,592,359, iss. July 13, 1926). Ans. 4. ANALYSIS Non-Appealed Claims 1–3 and 19 The Notice of Appeal indicates that Appellants intend to appeal the Examiner’s final rejection of claims 1–8 and 19. Notice of Appeal (dated May 1, 2012). The Appeal Brief, on the other hand, indicates that Appellants only intend to appeal the rejection of claims 4–8, despite confirming that claims 1–8 and 19 stand rejected. Br. 1; see also id. at 2. Accordingly, the rejection of claims 1–3 and 19 is summarily sustained. Appeal 2013-001656 Application 12/606,515 3 Appealed Claims 4–8 In rejecting independent claim 1, including dependent claims 4–8, the Examiner finds that Hawk discloses, a plurality of windings (i.e., other fabrics) emanating from an axially-oriented central open area (e.g., an aperture of 1) and terminating on the outside of the roll, wherein two or more consecutive windings closest to the central open area have registered perforations (i.e., 15 causing more than 2 perforations, especially if the material is tissue sheet since the carpet material thickness is greater than a tissue sheet). Ans. 4 (citing Hawk, Figs. 1–6). The Examiner concludes that It would have been obvious . . . to modify to use a particular material since tissue sheets are known in the winding industry and not limited to winding only fabric material. Also, it would have been obvious . . . to modify the location of the pins as claimed by applicant's claimed invention, since it has been held that mere duplication of the essential working parts of a device involves only routine skill in the art. Id. at 4–5 (citation omitted). We note that Figures 1–6 of Hawk depict a collapsible roller with carpet wound thereon, and further denotes reference numeral 1 as a shell and reference numeral 15 as a series of pins. Hawk, col. 1, ll. 23–35, and col. 2, l. 60. As Hawk describes, pins 15 temporarily secure the edge of the carpet to the collapsible roller. Id. at col. 2, ll. 80–83. Appeal 2013-001656 Application 12/606,515 4 Figures 1, 5, and 6 of Hawk are reproduced below: Figures 1, 5, and 6 depict Hawk’s collapsible roller with a series of pins 15 for securing the edge of a carpet wound thereon. In contesting the rejection, Appellants argue that the Examiner failed to establish a prima facie case of obviousness because all of the claimed elements are not found in the prior art. Br. 3. In particular, Appellants assert that, “[u]nlike Hawk, the appealed claims are directed to two or more consecutive windings . . . having more than one registered perforation[.]” Id. Appellants explain that “Hawk, on the other hand, is [l]imited to a roll of carpet having a single row of perforations, which are imposed by a single row of pins.” Id. (citing Hawk, Figs. 5 and 6). Appellants also refer to Figure 3 of the Specification to illustrate an embodiment of the “registered perforations,” denoted as 5, 6, 7, 8, 9, and 10. See Br. 2–3 (citing Spec., Fig. 3); see also Spec. 8, ll. 23–28, and Fig. 3. Appeal 2013-001656 Application 12/606,515 5 Figure 3 of the Specification is reproduced below: Figure 3 “illustrat[es] the concept of ‘registered perforations’” 5, 6, 7, 8, 9, and 10. Spec. 7, ll. 4–5; id. at 8, ll. 23–28. We further note that Appellants define “registered perforations” as “holes in adjacent windings that completely overlay each other or at least overlap each other.” Spec. 3, ll. 16–19. In explaining how the relevant claim limitation is met, the Examiner states that Hawk’s series of pins 15 causes “more than 2 perforations, especially if the material is tissue sheet since the carpet material thickness is greater than a tissue sheet.” Ans. 4 (citing Hawk, Figs. 1–6). Upon reviewing the record before us, we conclude that the Examiner inadequately explains how Hawk’s series of pins 15, which are used for securing the edge of a carpet (or other fabric) to a collapsible roller, reasonably teaches two or more tissue sheet windings having registered perforations, as recited in independent claim 1, which claims 4–8 depend therefrom. For the foregoing reasons, we do not sustain the rejection under 35 U.S.C. § 103(a) of claims 4–8 as being unpatentable over Hawk. Appeal 2013-001656 Application 12/606,515 6 SUMMARY The Examiner’s decision to reject claims 1–3 and 19 under 35 U.S.C. § 103(a) as being unpatentable over Hawk is sustained. The Examiner’s decision to reject claims 4–8 under 35 U.S.C. § 103(a) as being unpatentable over Hawk is reversed. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED-IN-PART em