Ex Parte Jensen

Patent Trials and Appeals Board

Aug 29, 2013

11632472 - (D) (P.T.A.B. Aug. 29, 2013)

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.
11/632,472 01/16/2007 Jorgen Jensen 2669LN.eh 6322
21254 7590 08/29/2013
MCGINN INTELLECTUAL PROPERTY LAW GROUP, PLLC
8321 OLD COURTHOUSE ROAD
SUITE 200
VIENNA, VA 22182-3817
EXAMINER
NEWAY, BLAINE GIRMA
ART UNIT PAPER NUMBER
3788
MAIL DATE DELIVERY MODE
08/29/2013 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 JORGEN JENSEN
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Appeal 2011-008521
Application 11/632,472
Technology Center 3700
____________

Before LYNNE H. BROWNE, ANNETTE R. REIMERS and
RICHARD E. RICE, Administrative Patent Judges.

REIMERS, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2011-008521
Application 11/632,472

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STATEMENT OF THE CASE
Jorgen Jensen (Appellant) appeals under 35 U.S.C. § 134(a) from the
Examiner’s decision to reject (1) claims 22 and 24 under 35 U.S.C. § 102(b)
as anticipated by Ferguson (US 2,340,116; iss. Jan. 25, 1944); (2) claims 25,
26 and 28 under 35 U.S.C. § 103(a) as unpatentable over Ferguson and
Turner (US 3,622,095; iss. Nov. 23, 1971); and (3) claim 27 under 35 U.S.C.
§ 103(a) as unpatentable over Ferguson, Turner and Pomerantz (US
3,119,542; iss. Jan. 28, 1964). Claims 29-33 have been withdrawn. Claims
1-21 and 23 have been canceled. We have jurisdiction under 35 U.S.C. §
6(b). We REVERSE.

THE INVENTION
Appellant’s invention relates to a device for “handling of both the
sleeves and the paper rolls.” Spec. 1, ll. 17-18; figs. 1-2.
Claim 22, the sole independent claim, is illustrative of the subject
matter on appeal and is reproduced below:
22. An article of manufacture, comprising:
a plurality of sleeves for concurrently rolling up a
paper web respectively on each of said sleeves;
an insert sleeve serving as a support core for said
plurality of sleeves, before, during, and after said rolling
up of said paper web, said support core insert sleeve
comprising a rigid material web of a length substantially
corresponding to a total length of said plurality of
sleeves, as bent into a polygonal shape, when viewed in
cross section, and inserted into centers of said plurality of
sleeves; and
paper web as rolled up respectively on each of said
sleeves supported by said support core.
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Application 11/632,472

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ANALYSIS
Anticipation by Ferguson - Claims 22 and 24
Independent claim 22 recites “an insert sleeve serving as a support
core for said plurality of sleeves, before, during, and after said rolling up of
said paper web.” App. Br., Clms. App’x.
The Examiner finds that Ferguson discloses, “an insert sleeve 17
capable of serving as a support core before, during, and after said rolling up
of said paper web.” Ans. 4. The Examiner further takes the position that
a recitation of the intended use of the claimed
invention must result in a structural difference
between the claimed invention and the prior art in
order to patentably distinguish the claimed
invention from the prior art. If the prior art
structure is capable of performing the intended use,
then it meets the claim.
Id. at 8.
Appellant contends that the Examiner erred in rejecting claim 22 as
being anticipated by Ferguson by failing to evaluate and consider the
functional limitations of the claim. See App. Br. 5, 8-9; see also Reply Br.
3-4, 13.
The law governing functional limitations is well-settled:
[W]here the Patent Office has reason to believe
that a functional limitation asserted to be critical
for establishing novelty of the claimed subject
matter may, in fact, be an inherent characteristic of
the prior art, it possesses the authority to require
the applicant to prove that the subject matter
shown to be in the prior art does not possess the
characteristic relied on.
In re Swinehart, 439 F.2d 210, 213 (CCPA 1971). Nevertheless, before an
applicant can be put to this burdensome task, the Examiner must provide
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Application 11/632,472

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sufficient evidence or scientific reasoning to establish the reasonableness of
the Examiner’s belief that the functional limitation is an inherent
characteristic of the prior art. The fact that a certain result or characteristic
may occur or be present in the prior art is not sufficient to establish the
inherency of that result or characteristic. In re Rijckaert, 9 F.3d 1531, 1534
(Fed. Cir. 1993).
The Examiner’s position that Ferguson’s spindle (insert sleeve) 17
“[is] capable of serving as a support core before, during, and after said
rolling up of said paper web” (Ans. 4) is flawed for two reasons.
First, the Examiner has failed to provide sufficient evidence or
technical reasoning to establish that Ferguson’s spindle (insert sleeve) 17
would inherently be capable of performing the recited function, i.e., “[to
serve] as a support core for said plurality of sleeves, before, during, and after
said rolling up of said paper web.”
Second, the Examiner’s position is speculative. Ferguson’s invention
relates to “a packaging means” for lengths of putty-like materials. Ferguson,
p. 1, col. 1, ll. 1-3. Ferguson is predominantly silent with respect to the
winding (rolling) up process of the putty-like materials. Ferguson merely
discloses that “[t]he winding is accomplished upon a short hollow arbor 5.”
Ferguson, p. 1, col. 2, ll. 15-16. Moreover, regarding the spindle (insert
sleeve) 17, Ferguson merely discloses, “[a]fter a number of rolls such as
shown in [Fig. 2] are produced [wound upon the respective arbors 5], they
are applied side by side over a spindle 17.” Ferguson, p. 1, col. 2, ll. 27-29,
38-40. The Examiner has not provided any persuasive evidence or technical
reasoning to show that spindle (insert sleeve) 17 of Ferguson could function
as a support core for the arbors (plurality of sleeves) 5, before, during, and
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after the winding (rolling) up of the separator sheet (paper web) 3. An
anticipation rejection cannot be predicated on an ambiguous reference.
Rather, disclosures in a reference relied on to prove anticipation must be so
clear and explicit that those skilled in the art will have no difficulty in
ascertaining their meaning. In re Turlay, 304 F.2d 893, 899 (CCPA 1962).
Accordingly, for the foregoing reasons, the rejection of independent
claim 22 and its dependent claim 24 as anticipated by Ferguson cannot be
sustained.
Obviousness over Ferguson and Turner and Ferguson, Turner and
Pomerantz - Claims 25-28
The Examiner’s rejection of claims 25, 26 and 28 over Ferguson and
Turner (see Ans. 5) and of claim 27 over Ferguson, Turner and Pomerantz
(see Ans. 5-6) is based on the same unsupported findings discussed supra
with respect to the disclosure of Ferguson. For the same reasons discussed
supra, we do not sustain the Examiner’s rejection of claims 25, 26 and 28
over Ferguson and Turner and of claim 27 over Ferguson, Turner and
Pomerantz.
DECISION
We REVERSE the decision of the Examiner as to claims 22 and 24-
28.

REVERSED

mls