Ex Parte Huizinga

Patent Trial and Appeal Board

Aug 30, 2016

12699199 (P.T.A.B. Aug. 30, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/699, 199 02/03/2010
105718 7590 09/01/2016
SCA Hygiene Products AB
c/o Buchanan Ingersoll & Rooney, PC
1737 King Street, Suite 500
Alexandria, VA 22314
FIRST NAMED INVENTOR
Jozef Huizinga
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.
1018798-000747 5461
EXAMINER
GILL, JENNIFER FRANCES
ART UNIT PAPER NUMBER
3776
NOTIFICATION DATE DELIVERY MODE
09/01/2016 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):
ADIPDOC 1@BIPC.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JOZEF HUIZINGA
Appeal2014-007918
Application 12/699, 199
Technology Center 3700
Before MICHELLE R. OSINSKI, LISA M. GUIJT, and
ERIC C. JESCHKE, Administrative Patent Judges.
OSINSKI, Administrative Patent Judge.
DECISION ON APPEAL
STATEivIENT OF THE CASE
Jozef Huizinga (Appellant) 1 appeals under 35 U.S.C. § 134 from the
Examiner's final decision rejecting claims 1-14, 19, and 20. Claims 15-18
are withdrawn. Final Act. 1. We have jurisdiction under 35 U.S.C. § 6(b ).
We REVERSE and enter a NEW GROUND OF REJECTION
pursuant to our authority under 37 C.F.R. § 41.50(b).
1 Appellant identifies the real party in interest as SCA Hygiene Products
Assen B.V. Appeal Br. 2.
Appeal2014-007918
Application 12/699,199
THE CLAIMED SUBJECT MATTER
Claim 1, the sole independent claim on appeal, is reproduced below
and is representative of the claimed subject matter on appeal.
1. A washcloth comprising at least first, second, and third cloth
parts, each of the at least three cloth parts associated with a
respective side of the washcloth, and each of the cloth parts
including first and second longitudinal edges and first and second
transverse edges;
wherein the at least three cloth parts are mutually
connected to form a single internal hand receiving space, an
opening to the single internal hand receiving space being defined
by the first transverse edges of the first, second, and third cloth
parts, whereby each of the cloth parts provides a surface of the
internal hand receiving space, and
wherein each of the cloth parts provides an external work
surface, such that, during use, the work surfaces are arranged
around a hand inserted into the internal hand receiving space, and
a desired work surface is exclusively selectable for use by
rotating the washcloth around the hand so as to position the
desired work surface in front of a palm of the hand.
EVIDENCE
The Examiner relied on the following evidence in rejecting the claims
on appeal:
Zhou us 6, 112,372
REJECTIONS
Sept. 5, 2000
I. Claims 1-11, 13, 14, 19, and 20 stand rejected under 35 U.S.C.
§ 102(b) as anticipated by Zhou. Final Act. 3-5.
II. Claim 12 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over Zhou. Id. at 5---6.
2
Appeal2014-007918
Application 12/699,199
Rejection I
OPfNION
The Examiner finds that Zhou discloses all of the limitations of
independent claim 1. Final Act. 3-5. As to each of the at least three cloth
parts of the washcloth including first and second longitudinal edges and first
and second transverse edges, the Examiner's position is that Zhou teaches
that the triangular cloth panel embodiment illustrated in Figures 5a-5d could
instead be made of rectangular panels. The Examiner points to the
disclosure at column 3, lines 40-65; column 2, lines 50-60; and column 5,
lines 25-35 in support thereof. Final Act. 4, 6; Ans. 4--5.
To demonstrate anticipation, the Examiner must demonstrate that a
prior art reference shows every element of the claimed invention identically,
in the same relationship as in the claim. In re Bond, 910 F.2d 831, 832 (Fed.
Cir. 1990). The invention must have been known to the art in the detail of
the claim; that is, all of the elements and limitations of the claim must be
shown in a single prior art reference, arranged as in the claim. Karsten Mfg.
Corp. v. Cleveland Golf Co., 242 F.3d 1376, 1383 (Fed. Cir. 2001).
"[D]ifferences between the prior art reference and a claimed invention,
however slight, invoke the question of obviousness, not anticipation .... [To
anticipate], it is not enough that the prior art reference discloses ... multiple,
distinct teachings that the artisan might somehow combine to achieve the
claimed invention." NetMoneyIN Inc. v. VeriSign, Inc., 545 F.3d 1359, 1369
(Fed. Cir. 2008); see also In re Arkley, 455 F.2d 586, 587 (CCPA 1972)
("The [prior art] reference must clearly and unequivocally disclose the
claimed [invention] or direct those skilled in the art to the [invention]
3
Appeal2014-007918
Application 12/699,199
without any need for picking, choosing, and combining various disclosures
not directly related to each other by the teachings of the cited reference.").
According to Appellant, although Zhou discloses a two-panel device
with rectangular panels, Zhou fails to disclose a three-panel device with
rectangular panels, and, thus, fails to disclose a washcloth with first, second,
and third cloth parts in which each of the cloth parts has two longitudinal
edges and two transverse edges, as claimed. Appeal Br. 5---6. In particular,
Appellant argues that the Examiner is improperly mixing features of
different embodiments in Zhou to arrive at the claimed invention. Id. at 5;
Reply Br. 2. Appellant asserts that the portions of Zhou relied on by the
Examiner do not sufficiently relate the teachings of the different
embodiments so as to support an anticipation rejection.
Appellant asserts that the disclosures at column 3, lines 50---65 2 and
column 2, lines 50-603 disclose only that a two-panel pot holder can have
rectangular panels. Appeal Br. 5; Reply Br. 2. We agree with Appellant
that this disclosure is not related to the three-panel pot holder embodiment of
Figure 5.
2 Column 3, lines 50-65 states in part: "Referring to the FIGS. la to le, the
pot holder of the present invention is generally designated by numeral
reference 1. The pot holder 1 can comprise first and second panels 10 and
20 connected to each other. The pot holder 1 thus formed can have a flat
shape, or other geometric shapes with artistic designs (see FIGS. 2a and 3e) .
. . . The first panel 10 can be made in various shapes, such as semicircular,
rectangular or animated shapes."
3 Column 2, lines 50-60 states in part: "In addition, the two panels can have
the same shape, such a[s] semicircular or a rectangular shape."
4
Appeal2014-007918
Application 12/699,199
Appellant asserts that the disclosure at column 5, lines 25-35 4
discloses only that each of the panels of that particular embodiment of
Figure 5 have a triangular shape, not that the panels described throughout the
disclosure are applicable to Figure 5. Reply Br. 3. Although we find that
this disclosure could refer back to panels described earlier in the disclosure,
we find that the disclosure is limited to the structure or, more precisely, the
arrangement of layers and filling members and the means of sewing and
adhesion described to connect them together (see, e.g., Zhou, 3:66-4: 10,
4:47-53), not the shape of the panels.
As to the disclosure at column 3, lines 40-50, which "indicates that
the same reference numerals are used throughout the disclosure to indicate
the same features and that repetitive descriptions are omitted" (Ans. 4), we
do not find that this general statement adequately links the disclosure of
rectangular panels in some embodiments to the particular embodiment of
Figures 5a-5d.
Because we are not persuaded that any of the passages of Zhou
identified by the Examiner adequately link the disclosure of rectangular
panels for two-panel pot holders to the particular three-panel embodiment of
Figures 5a-5d, we are not persuaded that Zhou clearly and unequivocally
discloses a three-panel pot holder having rectangular panels or that one of
ordinary skill in the art would understand Zhou to disclose a three-panel pot
holder having rectangular panels through directly related disclosures of
4 Column 5, lines 25-35 states in part: "FIGS. Sa to Sd show another
preferred embodiment of the present invention which includes multiple
panels 10 having a triangular shape and 20 having two lateral edge portions
22 and a curved edge 14. Each of the multiple panels 10 and 20 has similar
structure to that of the first panel 10 as described above."
5
Appeal2014-007918
Application 12/699,199
Zhou. Accordingly, we are not persuaded that Zhou discloses a device with
first, second, and third cloth parts in which each of the cloth parts has two
longitudinal edges and two transverse edges, as claimed.
For the foregoing reasons, we are persuaded that the Examiner erred
in finding that Zhou discloses all of the limitations of independent claim 1,
and we do not sustain the rejection of independent claim 1, nor claims 2-11,
13, 14, 19, and 20, which depend therefrom, under 35 U.S.C. § 102(b) as
anticipated by Zhou.
Rejection II
The Examiner's rejection of claim 12 relies on the Examiner's
erroneous finding that Zhou discloses all of the limitations "except for the
cloth parts being manufactured from different materials." Final Act. 5. The
Examiner articulates no persuasive reasoning as to why a three-panel pot
holder having rectangular panels might have been obvious over Zhou.
Therefore, we do not sustain the rejection, under 35 U.S.C. § 103(a), of
claim 12 as unpatentable over Zhou.
NEW GROUND OF REJECTION
We enter a new ground of rejection of claims 1-3 and 5-14, 19, and
20 under 35 U.S.C. § 103(a) as unpatentable over Zhou. We adopt and
incorporate by reference the Examiner's findings with respect to Zhou on
pages 3---6 of the Final Action up to the heading "Response to Arguments,"
except for the following portion:
also provide for each of the cloth parts to comprise first and
second transverse edges joined over a first length with the first
transverse edge of the first neighboring part with which it's
connected at its first longitudinal edge and a second length of the
6
Appeal2014-007918
Application 12/699,199
first transverse edge being joined to the second neighboring cloth
part with which it's connected at its second longitudinal edge
with the second transversal edges of each of the cloth parts
Final Act. 4.
The Examiner finds that panels 10, 20 are of a generally triangular
shape in the Figures, but "can be rectangular." Final Act. 4. We agree. We
find that Zhou, in a preferred embodiment shown in Figures Sa to Sd,
teaches panels 10, 20 "having a triangular shape" and/or "having two lateral
edge portions 22 and a curved edge 14." Zhou, S:28-31. We conclude that
it would have been obvious to a person of ordinary skill in the art at the time
of the invention to have made the panels of the preferred embodiment of
Figures Sa to Sd in a rectangular shape as an obvious design choice within
the skill of the art. See In re Dailey, 3S7 F.2d 669, 672-73 (CCPA 1966)
(holding the configuration of a claimed disposable plastic nursing container
was a matter of choice which a person of ordinary skill in the art would have
found obvious absent persuasive evidence that the particular configuration of
the claimed container was significant); see also In re Kuhle, S26 F.2d SS3,
SSS (CCPA 197S) (use of claimed feature solves no stated problem and
presents no unexpected result and "would be an obvious matter of design
choice within the skill of the art" (citations omitted)).
Zhou specifically teaches the use of rectangular-shaped panels and
also teaches the interchangeable use of differently shaped panels. See, e.g.,
Zhou, 2:SS-S7, 3:63---64, S:S-7. Zhou also teaches that using the same
design for each of multiple panels can "simplify the making of ... pot
holder 1." Id. at S:7-10. We find no evidence to support that a change in
shape to a rectangular-shaped panel from a generally triangular-shaped panel
solves a problem or presents an unexpected result such that the use of
7
Appeal2014-007918
Application 12/699,199
rectangular-shaped panels in place of generally triangular-shaped panels is
significant or anything more than a design choice that a person of ordinary
skill in the art would have found obvious in light of Zhou's explicit teaching
of rectangular-shaped panels.
Accordingly, we enter a new ground of rejection of claim 1 under 35
U.S.C. § 103(a) as being unpatentable over Zhou.
As to dependent claims 2, 3, and 5-14, 19, and 20, we rely on the
Examiner's findings that we have adopted and incorporated by reference,
and we make additional determinations with respect to dependent claims 3,
5, 14, and 20, as set forth below. As to dependent claim 4, we fail to see
how Zhou renders obvious the claimed subject matter and explain our
reasoning in detail below.
In connection with dependent claim 3, we note in particular the
Examiner's findings that
[ t ]he cloth parts each comprise first and second longitudinal
edges connected by a seam (30; Col. 4, 10-22) such that the first
edge of each part is connected with the second edge of a first
neighboring part and the second edge is connected with the first
edge of the second neighboring part (see Figs[.] 5c-5d), etc.
Final Act. 4. To the extent that only the center panel illustrated in each of
Figures 5a-5d may be considered to have both its first and second
longitudinal edge connected by a seam to the edges of first and second
neighboring parts, we conclude that it would have been obvious to a person
of ordinary skill in the art at the time of the invention to have integrated both
longitudinal edges of each of the three panels as a matter of obvious design
choice with the skill of the art. See In re Larson, 340 F .2d 965, 968 ( CCP A
1965) ("the use of a one piece construction instead of the [multiple piece]
construction disclosed in [the prior art] would be merely a matter of obvious
8
Appeal2014-007918
Application 12/699,199
engineering choice"). Zhou specifically teaches panels that are fixedly
connected to each other in the form of a continuous stitch seam. Zhou,
4:13-16. We find no evidence to support that integrating both edges of each
of the three panels with those of neighboring panels is anything more than a
design choice that a person of ordinary skill in the art would have found
obvious in light of Zhou's specific teaching of fixedly connecting adjacent
panels.
In connection with dependent claim 4, we agree with Appellant that
Zhou (even as modified to include rectangular panels in which first and
second longitudinal edges of each cloth part are connected with the
longitudinal edges of neighboring cloth parts) does not teach or suggest the
second transverse edge of each of the three cloth parts being composed of a
first length and second length in which the second transverse edge is
connected over the first length with the second length of a neighboring cloth
part and over the second length with the first length of a neighboring cloth
part, as recited in claim 4. See Appeal Br. 6.
In connection with dependent claim 5, which is a multiple dependent
claim that depends on claims 3 and 4 in the alternative, we conclude that
Zhou renders obvious the subject matter of claim 5 when incorporating the
limitations of claim 3. We rely on the reasoning described above in
connection with dependent claim 3, as well as the Examiner's findings
applicable to claim 5, which have been adopted and incorporated by
reference.
In connection with dependent claim 14, which recites that "at least
one of the cloth parts is impregnated" (App. Br. (Claims App.)), we agree
with the Examiner that "the presence of a heat insulating layer or 'filling
9
Appeal2014-007918
Application 12/699,199
member' ... constitutes the layer being 'impregnated' with a heat insulating
member." Ans. 5 (citing Zhou, 1:62-2: 10). In particular, the heat insulating
filling member fills in between the outer layer and inner layer of each panel.
Zhou, 1:62-2: 10; see also The American Heritage Dictionary of the English
Language, available at
https://www.ahdictionary.com/word/search.html? q=impregnated (defining
"impregnate" as "[t]o fill throughout" (last visited Aug. 19, 2016). We are
not persuaded that the Specification mandates a narrower interpretation of
"impregnated" so as to make the Examiner's interpretation unreasonable.
With respect to dependent claim 20, we conclude that Zhou renders
obvious the claimed subject matter. In particular, we find that considering
the center panel of Figures 5a-5d to be the claimed first cloth part, Zhou, as
modified to include rectangular panels in which first and second longitudinal
edges of each cloth part are connected with the longitudinal edges of
neighboring cloth parts as described above, teaches
the first longitudinal edge of the first cloth part is connected to
the second longitudinal edge of the second cloth part, and the
second longitudinal edge of the first cloth part is connected to the
first longitudinal edge of the third cloth part, and a portion of the
second transverse edge of the first cloth part is connected to a
portion of the second transverse edge of the second cloth part,
and another portion of the second transverse edge of the first
cloth part is connected to a portion of the second transverse edge
of the third cloth part
as set forth in dependent claim 20. App. Br. (Claims App.).
Unlike dependent claim 4, which requires portions of the transverse
edges of adjacent cloth parts to be connected over the lengths of these
portions, dependent claim 20 merely requires a first portion of the transverse
edge of the first cloth part be connected to a portion of the transverse edge of
10
Appeal2014-007918
Application 12/699,199
a second cloth part and another portion of the transverse edge of the first
cloth part be connected to a portion of the transverse edge of a third cloth
part. We find that at least the ends of the transverse edge of the first cloth
part are connected to the end of the transverse edge of the second cloth part
and the end of the transverse edge of the third cloth part, respectively, so as
to meet the claim.
Accordingly, we enter a new ground of rejection of claims 2, 3, and
5-14, 19, and 20 under 35 U.S.C. § 103(a) as being unpatentable over Zhou.
DECISION
The Examiner's decision to reject claims 1-11, 13, 14, 19, and 20
under 35 U.S.C. § 102(b) is reversed.
The Examiner's decision to reject claim 12 under 35 U.S.C. § 103(a)
is reversed.
We enter a NEW GROUND OF REJECTION of claims 1-3 and 5-
14, 19, and 20 under 35 U.S.C. § 103(a) as unpatentable over Zhou.
This decision contains a new ground of rejection pursuant to 37
C.F.R. § 41.50(b). Section 41.50(b) provides "[a] new ground of rejection
pursuant to this paragraph shall not be considered final for judicial review."
Section 41.50(b) also provides:
When the Board enters such a non-final decision, the appellant,
within two months from the date of the decision, must exercise
one of the following two options with respect to the new ground
of rejection to avoid termination of the appeal as to the rejected
claims:
(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new Evidence relating to
the claims so rejected, or both, and have the matter reconsidered
by the examiner, in which event the prosecution will be
11
Appeal2014-007918
Application 12/699,199
remanded to the examiner. The new ground of rejection is
binding upon the examiner unless an amendment or new
Evidence not previously of Record is made which, in the opinion
of the examiner, overcomes the new ground of rejection
designated in the decision. Should the examiner reject the
claims, appellant may again appeal to the Board pursuant to this
subpart.
(2) Request rehearing. Request that the proceeding be
reheard under§ 41.52 by the Board upon the same Record. The
request for rehearing must address any new ground of rejection
and state with particularity the points believed to have been
misapprehended or overlooked in entering the new ground of
rejection and also state all other grounds upon which rehearing
is sought.
Further guidance on responding to a new ground of rejection can be
found in the Manual of Patent Examining Procedure§ 1214.01.
No time period for taking any subsequent action in connection with
this appeal may be extended under 3 7 C.F .R. § 1.13 6( a )(1 )(iv).
REVERSED; 37 C.F.R. § 41.50(b)
12