Ex Parte Mohr et al

Patent Trial and Appeal Board

Aug 19, 2013

11027286 (P.T.A.B. Aug. 19, 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.
11/027,286 12/30/2004 Rebecca Catherine Mohr KCX-901 (20183) 7982
22827 7590 08/19/2013
DORITY & MANNING, P.A.
POST OFFICE BOX 1449
GREENVILLE, SC 29602-1449
EXAMINER
RIVERA, WILLIAM ARAUZ
ART UNIT PAPER NUMBER
3654
MAIL DATE DELIVERY MODE
08/19/2013 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 REBECCA CATHERINE MOHR, MEE WHA LEE,
and MICHAEL ALAN HERMANS
____________________

Appeal 2011-007487
Application 11/027,286
Technology Center 3600
____________________

Before: PHILLIP J. KAUFFMAN, CHARLES N. GREENHUT, and
BART A. GERSTENBLITH, Administrative Patent Judges.

GREENHUT, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2011-007487
Application 11/027,286
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STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134 from a rejection of claims 1,
2, 6, 8, 9, 11-14, 18, 30-32, 34-62, 67-71, 73-76, and 78-85. App. Br. 2. We
have jurisdiction under 35 U.S.C. § 6(b).
We affirm-in-part.

The claims are directed to a disposable dispensing and display carton
for paper towels and other rolled products. Claim 1, reproduced below, is
illustrative of the claimed subject matter:
1. A dispensing and display carton in combination with a rolled
product comprising:
a sheet material wound about an axis into a roll of
material, the roll of material including an outer cylindrical
surface; and
a dispenser for dispensing the roll of material, the
dispenser comprising a housing having a first end and a second
end, the dispenser further comprising a roll holding device that
comprises a pair of opposing tabs, the roll of material being
placed in the dispenser such that the axis of the roll
substantially extends from the first end to the second end, the
roll of material being configured to rotate and unwind while in
the dispenser for dispensing the sheet material, the housing
partially encircling the outer cylindrical surface of the roll of
material so as to cover from about 40% to about 70% of the
outer cylindrical surface, the housing and the roll holding
device being integral such that both are constructed from a
single blank, the outer cylindrical surface being substantially
exposed through only one access opening, the roll of material
extending out from the one access opening.

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Application 11/027,286
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REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Huempfner
Van Dyke
Burt '620
Burt '399
Umemoto
Rice
Batra

US 1,708,725
US 3,121,542
US 3,262,620
US 3,338,399
Des. 419,015
US 6,563,510 B1
WO 01/02254 A2

Apr. 9, 1929
Feb. 18, 1964
Jul. 26, 1966
Aug. 29, 1967
Jan. 18, 2000
May 13, 2003
Jan. 11, 2001

REJECTIONS
Claims 1, 2, 6, 8, 9, 14, 30-32, and 361 are rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Burt ’399 and Umemoto. Ans. 3, 6.
Claims 1, 2, 6, 8, 9, 14, 30-32, 36 and 37 are rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Van Dyke and Umemoto. Ans. 4, 5.
Claim 18 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Burt ’399, Umemoto, and Huempfner. Ans. 5.
Claims 11-13, 34, 35, 38-62, 67-71, 73-76, and 78-85 are rejected
under 35 U.S.C. § 103(a) as being unpatentable over Burt ’620, Batra, and
Rice. Ans. 6.

OPINION
The first point of contention between Appellants and the Examiner is
the proper construction of the phrase “the housing and the roll holding
device being integral such that both are constructed from a single blank” in

1 We presume the Examiner’s inclusion of claim 66 in this rejection was
inadvertent since both the Examiner and Appellants agree that claim was
cancelled. Ans. 2; App. Br. 2; Amdt. entered May 11, 2009.
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Application 11/027,286
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independent claims 1 and 30. The Examiner contends that this limitation
does not require the housing and roll holding device to be constructed from
the same single blank. Ans. 8. Appellants do not directly address the
Examiner’s position in this regard. However, it is evident from their
arguments that Appellants are presuming that the only reasonable
interpretation of the phrase requires the housing and the roll holding device
to be constructed from the same blank. For the reasons below, we agree with
that interpretation.
The Examiner reasons that the frame of Burt ’399, interpreted as the
recited “housing” and the core support, interpreted as the “roll holding
device” are made integral by fastening, gluing, or welding and that “both” of
these structures of Burt ’399 are made from a single blank, just different
blanks. Ans. 8. The problem with the Examiner’s interpretation is that it
dissects the phrase into discrete portions without giving any consideration to
the terminology between them. All words in a claim must be considered in
judging the patentability of the claimed subject matter. See In re Wilson, 424
F.2d 1382, 1385 (CCPA 1970). The claim requires the housing and roll
holding device to be integral “such that” both are constructed from a single
blank. The phrase “such that” conveys the relationship between the integral
and single blank requirements; forming them from a single blank is how the
two structures are integral. In light of this interpretation the Examiner’s
rejections based in part on Burt ’399 clearly cannot be sustained.
Independent claims 1 and 30 also recite “the roll of material extending
out from the one access opening.” The Examiner makes no mention of this
limitation in rejecting the claims based in part on Burt ’399 or Burt ’620. In
the rejection that relies in part on Van Dyke, the Examiner reproduces
Figure 2 of Van Dyke and alleges that figure demonstrates a structure
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Application 11/027,286
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satisfying this limitation. Ans. 10-11. However, the roll depicted in that
figure does not appear to extend out from the structure presumably
interpreted as the access openings through which the roll is dispensed. Even
though this feature appears to be present in Umemoto, the Examiner makes
it clear that “the Umemoto reference was only used to teach that a roll of
paper can be enclosed on one end thereby allowing another end to be
substantially exposed through only one access opening.” Ans. 8. The claim
limitations concerning exposure of the role are distinct from those requiring
it to extend out from the opening. The Examiner does not appear to make
any factual findings or articulate any reasoning to address this limitation.
Thus, we cannot sustain the rejections based in part on Burt ’399 or Van
Dyke or the rejection of claims 11-13, 34, and 35 based in part on Burt ’620.
We turn to the rejection of claims 38-62. Claim 38 requires “the outer
cylindrical surface being substantially exposed through only one access
opening”—a feature the Examiner found was not present in Burt ’399. In
rejecting these claims the Examiner only states “Burt et al. discloses
structure as set forth above.” Ans. 6. And, in responding to Appellants’
arguments states
With respect to appellants' remarks on page 25-27
regarding the roll of material being exposed through only one
access opening, the examiner has already shown above how it
would have been obvious to one of ordinary skill in the art to
provide only one access opening and set forth reasons
accordingly.
Ans. 14. However, the position taken by the Examiner referenced by this
statement relied on Umemoto—a reference upon which the Examiner does
not appear to rely in rejecting claims 38-62. Ans. 6.
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Appellants speculate that the Examiner relies on Umemoto for this
rejection as well. App. Br. 27-28. However it not Appellants’ burden to
speculate as to the Examiner’s rejection. This Board is only free to affirm
rejections to which Appellants had a fair opportunity to respond. In re
Kronig, 539 F.2d 1300, 1302-03 (CCPA 1976). Notice as to the references
relied upon by the Examiner is a key element in providing Appellants with
such an opportunity. In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011). As
the rejection leaves a claim limitation entirely unaddressed, we are
constrained to reverse.
Lastly, we turn to the rejection of claims 67-71, 73-76, and 78-85. We
agree with the Examiner that the disputed limitations concerning coloring
amount to mere ornamentation on the device. Ans. 14-15. It is undisputed
that Batra demonstrates that it was known to coordinate designs between
dispenser and product and Rice demonstrates that it was known to choose
colors using the Munsell scale. We need not determine whether the specific
colors selected or the specific differences between the colors would have
been obvious. In a utility patent application the claimed subject matter
cannot be distinguished over the prior art based only on the addition of
nonfunctional ornamentation or artwork, even if that ornamentation or
artwork might, itself, be novel and nonobvious. Appellants do not assert, and
the Specification does not evidence, that the printed indicia in this case bears
any new, nonobvious, functional relationship with the substrate. As noted
above, Batra demonstrates that it was known to provide such products with
design elements. The specific design elements selected by Appellants are
provided only for aesthetics or ornamentation. Spec. 4-5, 11-15. In a utility
patent application such features do not patentably distinguish the claimed
subject matter from a device lacking that same ornamentation. See In re
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Seid, 161 F.2d 229, 231 (CCPA 1947); In re Sterling, 70 F.2d 910, 912
(CCPA 1934). To hold otherwise would permit the patenting of rolled
products and their cartons indefinitely provided that new artwork is added
thereto. See In re Ngai, 367 F.3d 1336, 1339 (Fed. Cir. 2004).

DECISION
The rejections of claims 1, 2, 6, 8, 9, 11-14, 18, 30-32, and 34-62 are
reversed. The rejection of claims 67-71, 73-76, and 78-85 is sustained.
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-IN-PART

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