Ex Parte Kitching et al

Board of Patent Appeals and Interferences

Mar 13, 2012

10758065 (B.P.A.I. Mar. 13, 2012)

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.
10/758,065 01/15/2004 Joseph Francis Kitching 9149Q 5113
27752 7590 03/14/2012
THE PROCTER & GAMBLE COMPANY
Global Legal Department - IP
Sycamore Building - 4th Floor
299 East Sixth Street
CINCINNATI, OH 45202
EXAMINER
BUTLER, MICHAEL E
ART UNIT PAPER NUMBER
3653
MAIL DATE DELIVERY MODE
03/14/2012 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte JOSEPH FRANCIS KITCHING,
MARK JAMES KLINE, and ANDREAS MACK
____________________

Appeal 2010-003168
Application 10/758,065
Technology Center 3600
____________________

Before: LINDA E. HORNER, PHILLIP J. KAUFFMAN, and
WILLIAM V. SAINDON, Administrative Patent Judges.

KAUFFMAN, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2010-003168
Application 10/758,065
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STATEMENT OF CASE
Appellants appeal under 35 U.S.C. § 134 from a rejection of claims
1-20. We have jurisdiction under 35 U.S.C. § 6(b). We affirm.
THE INVENTION
Appellants’ claimed invention relates “to a container for dispensing
product in sheet form, such as kitchen wipes, bathroom wipes, baby wipes
and the like.” Spec. 1:11-12. The independent claims on appeal are claims
1, 7, and 15. Independent claim 1, reproduced below, is representative:
1. A container for dispensing product in sheet form comprising:
(i) said product in sheet form which will be dispensed
wherein said product in sheet form comprises a substrate that
releasably carries a composition of matter; and
(ii) a dispensing aperture for product in sheet form, said
aperture having opposing lateral edges, at least one of said
lateral edges comprising a rotatable roller, said lateral edges
providing a nip passage for controllably dispensing said product
in sheet form in a non-downwards direction.
REJECTIONS
Appellants seek review of the following rejections:
1. Claims 1, 5, 7-9, 12, 13, 15, and 16 under 35 U.S.C. § 102(b) as
anticipated by Huen (US 5,240,140; iss. Aug. 31, 1993).
2. Claims 1-5, 8, 9, 13-18, and 20 under 35 U.S.C. § 102(b) as
anticipated by Gergek (US 2002/0033405 Al; pub. Mar. 21, 2002).
3. Claims 1, 3, 4, 7-10, and 15-18 under 35 U.S.C. § 102(b) as
anticipated by, or in the alterative under 35 U.S.C. § 103(a) as obvious over,
West (US 2,440,993; iss. May 4, 1948).
4. Claims 1, 3-5, 7-10, and 15-18 under 35 U.S.C. § 103(a) as obvious
over West.
Appeal 2010-003168
Application 10/758,065
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5. Claims 1, 5, 6, 15, 16, and 18-20 under 35 U.S.C. § 103(a) as obvious
over Washington (US 6,976,634 B2; iss. Dec. 20, 2005) and Winkler
(US 4,877,230; iss. Oct. 31, 1989).
CONTENTIONS AND ISSUE
For the first rejection, Appellants present a single argument based
upon claim construction of independent claims 1, 7, and 15. However,
Appellants do not distinguish between these claims. As such, we select
claim 1 as representative and the remaining claims subject to the first
rejection stand or fall with claim 1. See 37 C.F.R. § 41.37(c)(1)(vii) (2011).
For the remaining rejections, Appellants simply repeat the claim
construction argument. Our analysis of claim 1 therefore applies to all of the
claims and rejections.
For each of the rejections, Appellants do not challenge the Examiner’s
findings that each reference discloses a container that is capable of
dispensing a product in sheet form. Rather, Appellants argue that each of
the products in sheet form disclosed in these references is not comprised of a
substrate that releasably carries a composition of matter as called for in
claim 1.1 Br. 4-8. The Examiner did not find that the references disclose
such a product. Ans. 3-7. Rather, the Examiner construed claim 1 as
directed to an apparatus (a container), and found that the structures disclosed
in the prior art references were capable of dispensing such a product. Ans.
9-10; see also Office Action of August 7, 2008, at 7.
The issue in this appeal is whether claim 1 calls for a container that
comprises a product in sheet form comprising a substrate that releasably
carries a composition of matter.

1 For the obviousness rejections, Appellants contend the references do not
disclose or suggest such a product. Br. 6-8.
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Application 10/758,065
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ANALYSIS
The preamble of claim 1 recites “[a] container for dispensing product
in sheet form comprising.” The preamble does not recite a container and a
product in sheet form, nor does the claim otherwise specify a container in
combination with a product in sheet form.2 The plain language of the
preamble suggests claim 1 is directed to a container, and the function of that
container is to dispense product in sheet form.
In parity with the claim language, the Specification describes the
claimed invention as related to “a container for dispensing product in sheet
form.” Spec. 1:11-12. Further, the Specification describes the need for, “a
system for dispensing wipes,” as opposed to describing a need for a
dispensing container and a product in sheet form. Spec. 2:26-28. In light of
this, the product in sheet form of claim 1 is best described as the material
worked upon by the container. 3 Such material does not serve to patentably
distinguish the apparatus. See In re Rishoi, 197 F.2d 342, 345 (CCPA 1952)
(“there is no patentable combination between a device and the material upon
which it works” (citations omitted)). The article worked upon by the
claimed container cannot be relied upon to structurally distinguish the
claimed container from the prior art containers even where, as here, that
article is recited in the body of the claim. In re Young, 75 F.2d 996 (CCPA

2 It is appellants’ “burden to precisely define the invention, not the PTO’s.”
In re Morris, 127 F.3d 1048, 1056 (Fed. Cir. 1997). Appellants may always
amend claims during prosecution. Broad interpretation during prosecution
reduces the possibility that the claims, once issued, will be interpreted over
broadly. In re Prater, 415 F.2d 1393, 1404-05 (CCPA 1969).
3 See also Spec. 16:28 (“The manufacture of substrates for use herein forms
no part of this invention.”); 19:21-23 (“The manufacture or formulation of
suitable compositions of matter as well as their combination with substrates
to make the product in sheet form are well known and form no part of this
invention.”).
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1935) (where a claim to a machine for making concrete beams was not
patentable over the prior art, recitation in the body of the claim of the
material worked upon, a concrete beam, did not lend patentability to that
claim).4
We interpret claim 1 to be directed to a container that is capable of
dispensing a product in sheet form. As an apparatus claim, we agree with
the Examiner that Appellants must distinguish over the prior art in terms of
the structure of that apparatus. See Ans. 11-15; In re Schreiber, 128 F.3d
1473, 1478 (Fed. Cir. 1997); see also Hewlett-Packard Co. v. Bausch &
Lomb Inc., 909 F.2d 1464, 1468 (Fed. Cir. 1990) (“[A]pparatus claims cover
what a device is, not what a device does.”). Appellants fail to identify a
structural distinction between the claimed container and those of the prior
art.
By not challenging the Examiner’s findings that each reference
discloses a container capable of dispensing a product in sheet form,
Appellants conceded the prior art discloses such a container. See Ex Parte
Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential) (citing Hyatt v.
Dudas, 551 F.3d 1307, 1313-14 (Fed. Cir. 2008) for the proposition that the
Board may treat arguments appellant failed to make as waived). Use of any
of the prior art containers to dispense a product in sheet form that includes a
composition of matter would be nothing more than a new use for an old
product. Such a distinction does not patentably distinguish the subject
matter of claim 1. See Roberts v. Ryer, 91 U.S. 150, 151 (1875) (“It is no
new invention to use an old machine for a new purpose. The inventor of a

4 Cited with approval in In re Otto, 312 F.2d 937, 939 (CCPA 1963) and In
re Casey, 370 F.2d 576, 580 (CCPA 1967).
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Application 10/758,065
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machine is entitled to the benefit of all the uses to which it can be put, no
matter whether he had conceived the idea of the use or not.”).
As such, we sustain the rejection of claims 1-20.
CONCLUSION
Claim 1 does not call for a container that comprises a product in sheet
form comprising a substrate that releasably carries a composition of matter.
DECISION
We affirm the Examiner’s decision to reject 1-20.
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)(1)(iv).
AFFIRMED

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