Ex parte NEWBY et al.

Board of Patent Appeals and Interferences

Jan 28, 1998

08212379 (B.P.A.I. Jan. 28, 1998)

Application for patent filed March 14, 1994. According1
to appellants, this application is a continuation of
application 08/135,751, filed October 12, 1993, abandoned,
which is a continuation of application 07/758,926, filed
September 11, 1991, abandoned.
1
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today
(1) was not written for publication in a law journal and
(2) is not binding precedent of the Board.
Paper No. 48
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte STEPHEN K. NEWBY and RANDY G. OGG
__________
Appeal No. 96-2657
Application 08/212,3791
__________
ON BRIEF
__________
Before COHEN, KRASS and FLEMING, Administrative Patent Judges.
FLEMING, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the final rejection of
Appeal No. 96-2657
Application 08/212,379
2
claims 8 through 13, all of the claims present in the
application. Claims 1 through 7 have been canceled.
The invention relates to core-wound paper products.
Appellants' invention is directed to reducing the costs
associated with the contribution of the package volume by
compressing the product, reducing the void space of the hollow
core. On page 3 of the specification, Appellants disclose
that the object of their invention is to improve the ability
of the consumer to reround, with fewer occurrences of core
inversion, the core of the compressed core-wound paper product
to a generally cylindrically shaped paper product.
The independent claim 8 is reproduced as follows:
8. A method of making a compressed core-wound paper product,
said method comprising the steps of:
providing a generally tubular core having a circular
cross section;
providing a cellulosic paper product;
winding said paper product about said tubular core
in a spiral pattern;
flattening said core until two diametrically opposed
vertices defining a major axis and a minor axis
orthogonal thereto are formed and opposing halves of
said core are in contact, said major and minor axes
lying within said cross section of said core;
Appeal No. 96-2657
Application 08/212,379
3
providing a constraining means for maintaining said
core-wound paper product in a compressed state;
packaging said core-wound paper product in said
constraining means while said core-wound paper
product is in a compressed state;
providing a means in said compressed core-wound
paper product for opening said core to a dimension
of said minor axis of about 0.16 centimeters to
about 1.27 centimeters, after said core has been
flattened until
opposing halves of said core are in contact with one
another; and
opening said core to said dimension of said minor
axis while said core-wound paper product is packaged
in said constraining means.
The Examiner relies on the following reference:
Watanabe et al. (Watanabe) 4,762,061 Aug. 09,
1988
Watanabe 4,909,388 Mar.
20, 1990
Mathieson 1,096,821 Mar.
03, 1981
(Canadian patent)
Claims 8 through 13 stand rejected under 35 U.S.C. § 103
as being unpatentable over Watanabe 061 in view of Watanabe
388 or Mathieson.
Rather than reiterate the arguments of Appellants and the
Appeal No. 96-2657
Application 08/212,379
Appellants filed an appeal brief on October 27, 1995. We2
will refer to this appeal brief as simply the brief.
Appellants filed a reply appeal brief on April 1, 1996. We
will refer to this reply appeal brief as the reply brief. The
Examiner responded with mailing a second Examiner's answer on
May 1, 1996. The Appellants responded to the second Examiner's
answer by filing a second reply appeal brief on May 14, 1996
by resubmitting the reply brief. The Examiner responded to
the reply brief with a letter, mailed May 28, 1996, stating
that the reply brief has been entered and considered but no
further response by the Examiner is deemed necessary.
The Examiner responded to the brief with an Examiner's3
answer, dated January 29, 1996. The Examiner responded to the
reply brief filed April 1, 1996 with a substitute Examiner's
answer, mailed May 1, 1996. We will refer to the substitute
Examiner's answer as simply the answer.
4
Examiner, reference is made to the briefs and answers for the 2 3
respective details thereof.
OPINION
We will not sustain the rejection of claims 8 through 13
under 35 U.S.C. § 103.
The Examiner has failed to set forth a prima facie case.
It is the burden of the Examiner to establish why one having
ordinary skill in the art would have been led to the claimed
invention by the express teachings or suggestions found in the
prior art, or by implications contained in such teachings or
Appeal No. 96-2657
Application 08/212,379
5
suggestions. In re Sernaker, 702 F.2d 989, 995, 217 USPQ 1, 6
(Fed. Cir. 1983). "Additionally, when determining
obviousness, the claimed invention should be considered as a
whole; there is no legally recognizable 'heart' of the
invention." Para-Ordnance Mfg. v. SGS Importers Int’l, Inc.,
73 F.3d 1085, 1087, 37 USPQ2d 1237, 1239 (Fed. Cir. 1995),
cert. denied, 117 S.Ct. 80 (1996) citing W. L. Gore & Assocs.,
Inc. v. Garlock, Inc., 721 F.2d 1540, 1548, 220 USPQ 303, 309
(Fed. Cir. 1983), cert. denied, 469 U.S. 851 (1984).
Appellants argue on page 5 of the brief that neither the
combination of Watanabe 061 and Watanabe 388 nor Watanabe and
Mathieson teaches or suggests the claimed limitation that the
core will self-reopen and stay open to the minor axis
dimension
while the core is within a constraining means required by the
rejected claims. Appellants further emphasize these arguments
in the reply brief.
We note that Appellants’ claim 8 recites in part the
following:
Appeal No. 96-2657
Application 08/212,379
6
A method of making a compressed core-wound paper
product, said method comprising the steps of: ...
flattening said core until two diametrically opposed
vertices defining a major and a minor axis
orthogonal thereto are formed and opposing halves of
said core are in contact ...
providing a constraining means for maintaining said
core-wound paper product in a compressed state;
packaging said core-wound paper product in said
constraining means while said core-wound paper
product is in a compressed state;
providing a means in said compressed core-wound
paper product for opening said core to a dimension
of said minor axis of about 0.16 to about 1.27
centimeters, after said core has been flattened
until opposing halves of said core are in contact
with one another; and
opening said core to said dimension of said minor
axis while said core-wound paper product is packaged
in said constraining means.
We note that Appellants’ other independent claim, claim 10,
recites similar limitations.
On page 4 of the answer, the Examiner states that
Watanabe 061 discloses "the claimed method except for
maintaining the minor axis of the core within the constraining
means." The
Examiner goes on to argue that Watanabe 388 in column 2, lines
Appeal No. 96-2657
Application 08/212,379
7
23-27 and lines 49-58, discloses "constraining a compressed
roll of paper to define a shape having a major and minor axis
with elasticity of the core allowing inherent reopening of the
core." On pages 6 and 7 of the answer, the Examiner makes a
similar rejection stating that Mathieson in Figure 5
"discloses constraining a compressed roll of paper to define a
shape having a major and minor axis (elliptical)."
However, the Examiner has failed to show that the prior
art teaches or suggests the method steps recited in
Appellants’ claim that we have emphasized above. We agree
that the prior art teaches a paper wound core product that is
shaped into an elliptical shape, but we fail to find that the
prior art method teaches or suggests the method steps as
recited in Appellants’ claims to arrive at a core with a
dimension of said minor axis of about 0.16 centimeters to
about 1.27 centimeters. Both Watanabe 388 and Mathieson are
silent as to the method steps that are required to arrive at
the elliptical shape.
We are not inclined to dispense with proof by evidence
when the proposition at issue is not supported by a teaching
in a prior art reference or shown to be common knowledge of
Appeal No. 96-2657
Application 08/212,379
8
unquestionable demonstration. Our reviewing court requires
this
evidence in order to establish a prima facie case. In re
Knapp-Monarch Co., 296 F.2d 230, 232, 132 USPQ 6, 8 (CCPA
1961); In re Cofer, 354 F.2d 664, 668, 148 USPQ 268, 271-72
(CCPA 1966).
We have not sustained the rejection of claims 8 through
13 under 35 U.S.C. § 103. Accordingly, the Examiner's
decision is reversed.
REVERSED
IRWIN CHARLES COHEN )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
ERROL A. KRASS ) APPEALS AND
Administrative Patent Judge ) INTERFERENCES
)
)
)
MICHAEL R. FLEMING )
Administrative Patent Judge )
Appeal No. 96-2657
Application 08/212,379
9
Appeal No. 96-2657
Application 08/212,379
10
Larry L. Huston
The Procter & Gamble Company
Winton Hill Technical Center
6100 Center Hill Avenue
Cincinnati, OH 45224