Ex Parte Huizinga

Patent Trials and Appeals Board

Feb 28, 2019

12699199 - (D) (P.T.A.B. Feb. 28, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/699, 199 02/03/2010
105718 7590 03/04/2019
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
3772
NOTIFICATION DATE DELIVERY MODE
03/04/2019 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):
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
Appeal2018-000233
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
STATEMENT OF THE CASE
Jozef Huizinga (Appellant) 1 appeals under 35 U.S.C. § 134(a) from
the Examiner's decision rejecting claims 4--14 and 21. 2 We have
jurisdiction under 35 U.S.C. § 6(b ).
We AFFIRM.
1 Appellant identifies the real party in interest as SCA Hygiene Products
AB. Appeal Br. (June 16, 2017), 2.
2 Claims 1-3 and 20 are cancelled, and claims 15-19 are withdrawn.
Amendment (Jan. 10, 2017), 2-5.
Appeal2018-000233
Application 12/ 699, 199
THE CLAIMED SUBJECT MATTER
Claim 4, the sole independent claim, is reproduced below.
4. 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
transversal 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 second transversal 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;
wherein for each of said cloth parts:
the first longitudinal edge of each of said cloth parts is
connected along its entire length with an entire length of the
second longitudinal edge of a first neighboring cloth part, and
the second longitudinal edge of each of said cloth parts is
connected along its entire length with the entire length of the first
longitudinal edge of a second neighboring cloth part;
wherein each first transversal edge is composed of a first
length and second length, and wherein the first transversal edge
of each of said cloth parts is connected over the first length with
the second length of the first transversal edge of the first
neighboring cloth part and, conversely, the first transversal edge
of each of said cloth parts is connected over the second length
with the first length of the first transversal edge of the second
neighboring cloth part.
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Appeal2018-000233
Application 12/ 699, 199
EVIDENCE
The Examiner relied on the following evidence in rejecting the claims
on appeal:
Thomas
Zhou
us 5,900,068
us 6,112,372
THE REJECTION3
May4, 1999
Sept. 5, 2000
Claims 4--14 and 21 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Thomas and Zhou. Final Act. (March 2, 2017), 3-7.
PROCEDURAL HISTORY
The present application came before the Board previously on appeal.
See Prior Board Decision in Appeal 2014-007918, dated September 1, 2016
("Prior Decision"). In the Prior Decision, the Board reversed the Examiner's
rejections of then-pending claims 1-11, 13, 14, 19, and 20 under 35 U.S.C.
§ 102(b) as anticipated by Zhou and claim 12 under 35 U.S.C. § 103(a) as
unpatentable over Zhou. Prior Decision 11. The Board also entered a new
ground of rejection against then-pending claims 1-3, 5-14, 19, and 20 under
35 U.S.C. § 103(a) as unpatentable over Zhou. Id. at 6-11. The Board did
not enter a new ground of rejection against then-pending claim 4, failing to
see how Zhou renders obvious the claimed subject matter. Id. at 8-9.
Subsequent to the Board's Prior Decision, Appellant amended claim 4
so as to be rewritten in independent form including all of the language from
the intermediate claims. Amendment After Appeal (Oct. 26, 2016), 2-3, 7.
Appellant also amended claims 2, 5, 6, 8-17, 19 to maintain consistency
3 The rejection of claim 2 under 35 U.S.C. § 112, second paragraph, as
being indefinite (Final Act. 2) is moot because claim 2 was cancelled by
Amendment (Amendment (Jan. 10, 2017), 2) prior to the final rejection.
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Application 12/ 699, 199
with language in the Specification, cancelled claim 20 to avoid duplication
with claim 4, and added new claim 21 directed to the four-sided
embodiment. Id. at 2-7. The Examiner then issued an office action
rejecting all of the then-pending, non-withdrawn claims 2, 4--14, and 21
under 35 U.S.C. § 103(a) as unpatentable over Thomas and Zhou. Non-
Final Act. (Nov. 15, 2016), 4--8. The Examiner maintained this rejection in
the Final Office Action. Final Act. 3-7.
OPINION
The Examiner finds in the Final Office Action that Thomas teaches
substantially all of the limitations of independent claim 4, "except for a
single internal hand receiving space defined by the second transverse edges
of the cloth parts in order to allow a user to more comfortably position their
hand within the device during use." Final Act. 4--5. The Examiner finds
that Zhou "discloses a pot holder ... comprising three cloth parts ...
mutually connected to form a single internal hand receiving space ( 40)
[depending on the size of the hand in question]." Id. at 5 (bracketing in
original).
The Examiner concludes that it would have been obvious "to modify
the device of Thomas to include a single internal receiving space defined by
the second transversal edges of the first, second, third, and fourth cloth parts
in view of Zhou in order to allow a user to arrange the fingers of their hands
comfortably inside the device while using the device." Id. at 5---6. The
Examiner asserts that "modifying the washcloth of Thomas to include a hand
receiving space makes it easier not to lose the device during use[;] it also
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Application 12/ 699, 199
makes it less likely to misplace or drop the device during use since it is
mounted to a user's hand." Id. at 9.
Appellant first argues that Zhou's potholder would not have led one of
ordinary skill in the art to modify Thomas' s washcloth because of the many
differences between potholders and washcloths. Appeal Br. 7-8; Reply
Br. 4. The Examiner responds that "Zhou is being utilized solely for the
teaching of creating an interior hand receiving space in a cloth pad-like
object." Ans. 9; see also id. ("Zhou is used as a teaching for placing a hand
receiving hole inside of cloth items in order to make them more versatile.
For example[,] a washcloth with a hand receiving space in the center, as
proposed by the combination in the above rejection, would allow the cloth of
Thomas to be used as both a washcloth and a potholder. It would also allow
a user to store items within the washcloth, if desired.") and id. at 10
("[P]roviding a washcloth with a hand-receiving space would allow a user to
place items inside the washcloth and it would allow a user to grip the device
in an additional way (by placing a user's hand inside the washcloth)."). The
presence of differences between two references does not necessarily
undermine a prima facie case of obviousness. See In re Beattie, 974 F.2d
1309, 1312-13 (Fed. Cir. 1992). Appellant has not persuaded us that the
differences between washcloths and pot holders would have dissuaded one
of ordinary skill in the art from being led to have modified Thomas so as to
include a receiving space in the center of Thomas, in accordance with the
teachings of Zhou, so as to improve the versatility of Thomas' s washcloth.
Appellant also argues that "the longitudinal edges of each cloth part of
Thomas are not in contact with each other," rather "the non-absorbent
barrier layer 12 separates each cloth part 11 from adjacent cloth parts 11."
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Application 12/ 699, 199
Appeal Br. 9 (italics omitted). The Examiner responds that "the barrier layer
of Thomas is a lamination of the various cloth parts together, meaning the
barrier layer serves as the joint between the cloth parts, thereby joining the
cloth parts together, or 'connecting' these parts as claimed." Ans. 9--10.
The claims do not require contact or a direct connection between
longitudinal edges of adjacent cloth parts, and consequently, the Examiner's
position that adjacent cloth parts are connected even with the inclusion of a
barrier layer therebetween has not been shown to be in error.
Appellant next argues that "[i]f Thomas was modified so as to include
an internal space for a hand, then the configuration disclose[d] by Thomas
and defined by claim 1 of Thomas [in which the barrier has a central axis
with multiple barrier segments extending from the central axis, with cleaning
layers being attached directly to the barrier segments] could not be made."
Appeal Br. 10 (italics omitted). Appellant asserts that, consequently, "the
proposed modification would change the principle of operation of Thomas."
Id. We are not persuaded by Appellant's argument because it too narrowly
defines the principle of operation of Thomas.
The "principle of operation" referred to by Appellant relates to the
"basic principles" under which the prior art device was designed to operate.
In re Ratti, 270 F.2d 810, 813 (CCPA 1959). Under Ratti, "a change in the
basic principles" refers to change that is fundamental in scope so as to relate
to scientific or technical principles under which the invention is designed to
operate. Id. ("This suggested combination of references would require a
substantial reconstruction and redesign of the elements shown in [the
primary reference] as well as a change in the basic principles under which
the [primary reference] construction was designed to operate." ( emphasis
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added)). We do not find that a "change in basic principles" occurs by the
Examiner's proposed modification. That is, even if some modification of
the barrier layer might be necessary as part of the Examiner's rejection, any
necessary modification of the barrier layer does not affect the overall
principle of operation of Thomas, which is directed more broadly toward a
cleaning and/or applicator device that is hand-held, has absorbent exterior
layers, and interior non-absorbent barrier layers that resist migration of
liquids, pastes, and powders therethrough. Thomas 1 :4--9, 3: 1--4.
Moreover, Appellant does not provide factual evidence or persuasive
technical reasoning to explain how or why modifying Thomas to include an
internal space for a hand would render Thomas's cleaning and/or applicator
device unsatisfactory for its intended purpose as a cleaning and/or applicator
device that is "hand held" and contains multiple "cleaning/applicator
layers." Thomas 1:4--9; see also Ans. 10 ("[T]he proposed modification
would not preclude the device of Thomas from being grasped by a user's
fingers as Thomas intended, nor would the proposed modification prevent
the device of modified Thomas, from being used as a washcloth with a user
voluntarily rotating various different faces of the device to have a new clean
surface with which to work when cleaning."). In addition, "[a] reference
does not teach away ... if it merely expresses a general preference for an
alternative invention but does not 'criticize, discredit, or otherwise
discourage' investigation into the invention claimed." DePuy Spine, Inc. v.
Medtronic Sofamor Danek, Inc., 567 F.3d 1314, 1327 (Fed. Cir. 2009)
(quoting In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004)). Although
Thomas discloses a certain configuration for its barrier layer, Appellant has
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Application 12/ 699, 199
not identified any passage in Thomas that actually criticizes, discredits, or
discourages differently configured barrier layers.
Appellant further argues that "[ t ]he fact that the applicator layers ( 11,
11 ', 11 ") of Thomas are held together by liquid-resistant barrier layers
teaches away from modifying the Thomas applicator device to separate the
applicator layers with an opening for a hand." Reply Br. 3 ( emphasis
omitted). We do not find this argument persuasive in that there is no
indication that the Examiner's rejection proposes to remove the liquid-
resistant barrier layers (see Ans. 11 ("the non-absorbent barrier layers of
Thomas do not change the ability of a user to store [an object] within the
device[,] if it has an internal hand receiving space")), nor is there any
indication that including a single internal receiving space defined by the
second transversal edges of the various cloth parts (Final Act. 5---6) would
require removal (as opposed to merely modification) of the liquid-resistant
barrier layers.
Appellant also argues that "[ t ]here is no reason to make the proposed
combination." Appeal Br. 10 (emphasis omitted). More specifically,
Appellant argues that the proposed modification does not further Thomas' s
objective of providing a multi-task device that can be grasped by fingers. Id.
at 12. We are not persuaded by this line of argument. As an initial matter,
the Examiner determines that "[p ]roviding an additional way to grasp and
use the washcloth of Thomas does not prevent the washcloth from still
folding and being able to be grasped as taught by Thomas." Ans. 11.
Appellant's argument is also not persuasive because it does not specifically
address the Examiner's reasoning articulated in support of the conclusion of
obviousness or adequately explain why the Examiner's stated reasoning
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lacks rational underpinning. We have not been apprised of error in the
Examiner's stated reasoning that "providing a washcloth with a hand-
receiving space would allow a user to place items inside the washcloth and it
would allow a user to grip the device in an additional way (by placing a
user's hand inside the washcloth)" and that "it makes it less likely to
misplace or drop the device during use since it is mounted to a user's hand."
Ans. 10-11.
Appellant's assertion that "the rejection is merely based on hindsight
reconstruction using the claims of the present application" (Appeal Br. 13) is
not adequately supported in that Appellant does not identify any knowledge
relied upon by the Examiner that was gleaned only from Appellant's
disclosure and was not otherwise within the level of ordinary skill in the art
at the time of the invention. See In re McLaughlin, 443 F.2d 1392, 1395
( CCP A 1971) ("Any judgment on obviousness is in a sense necessarily a
reconstruction based upon hindsight reasoning, but so long as it takes into
account only knowledge which was within the level of ordinary skill at the
time the claimed invention was made and does not include knowledge
gleaned only from applicant's disclosure, such a reconstruction is proper.").
For the foregoing reasons, Appellant does not apprise us of error in
the Examiner's conclusion that the combination of Thomas and Zhou
renders obvious the subject matter of independent claim 4. We sustain the
rejection of claim 4 under 35 U.S.C. § 103(a) as unpatentable over Thomas
and Zhou. Appellant relies on the same arguments and reasoning we found
unpersuasive in connection with independent claim 4 as the basis for seeking
the reversal of claims 5-14 and 21, which depend therefrom. Appeal Br. 13.
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Accordingly, we also sustain the rejection of claims 5-14 and 21 under
35 U.S.C. § 103(a) as unpatentable over Thomas and Zhou.
DECISION
The Examiner's decision to reject claims 4--14 and 21 under 35 U.S.C.
§ 103(a) as unpatentable over Thomas and Zhou is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(l )(iv).
AFFIRMED
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