Ex Parte Ottman et al

Patent Trial and Appeal Board

May 30, 2013

12341123 (P.T.A.B. May. 30, 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.
12/341,123 12/22/2008 James Bruce Ottman 64486826US01 1353
23556 7590 05/30/2013
KIMBERLY-CLARK WORLDWIDE, INC.
Tara Pohlkotte
2300 Winchester Rd.
NEENAH, WI 54956
EXAMINER
GRANO, ERNESTO ARTURIO
ART UNIT PAPER NUMBER
3788
MAIL DATE DELIVERY MODE
05/30/2013 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 JAMES BRUCE OTTMAN and ROBERT JOSEPH ZELENAK
____________

Appeal 2011- 005494
Application 12/341,123
Technology Center 3700
____________

Before ANNETTE R. REIMERS, RICHARD E. RICE and
CARL M. DeFRANCO, Administrative Patent Judges.

RICE, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
James Bruce Ottman, et al. (Appellants) seek our review under
35 U.S.C. § 134 of the Examiner’s rejections of claims 1-10. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
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Application 12/341,123

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CLAIMED SUBJECT MATTER
Claim 1, reproduced below with italics for emphasis, is the sole
independent claim and representative of the claims on appeal:
1. A tissue product comprising a clip of interfolded
facial tissues within a container, said container having a top
through which the facial tissues are withdrawn by a user, said
top comprising a poly film which is glued to the inside of the
top and which has a dispensing opening therein, said top further
having a detachable surfboard overlaying the poly film, said
detachable surfboard having a periphery defined by a
combination of cuts and perforations in the top, there being at
least one detachment opening in the top of the container
adjacent an edge of the surfboard which enables the user to
grasp and remove the surfboard to create a poly window in the
resulting opening, wherein the surfboard is releasably adhered
to the poly film by a releasable adhesive barrier which reduces
access to the space between the surfboard and the poly film
through said at least one detachment opening.

REFERENCES RELIED ON BY THE EXAMINER
Capo US 5,542,598 Aug. 6, 1996
Shiffler US 6,126,009 Oct. 3, 2000

THE REJECTIONS
Claims 1-10 are all rejected under 35 U.S.C. § 103(a) as being
unpatentable over Capo and Shiffler. However, the Examiner articulates
four separate rejections with respect to: (1) claims 1, 2 and 10; (2) claims 3
and 7; (3) claims 4-6; and (4) claims 8 and 9.

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ANALYSIS
Appellants argue the separate patentability of only claim 1. App.
Br. 2-5. Thus, claims 2 and 10 stand or fall with claim 1.1 Appellants do not
argue the rejection of claims 3 and 7, the rejection of claims 4-6 or the
rejection of claims 8 and 9 separately from the rejection of claim 1.
The “Background of the Invention” portion of Appellants’
Specification includes descriptions of the terms “surfboard,” “poly film” and
“detachment openings” as used in the facial tissue industry. Spec. 1, ll. 1-9.
As described in the Specification, “[f]acial tissue cartons are provided with a
removable ‘surfboard’ which the user detaches from the top of the carton in
order to access the tissues within the carton.” Id. at ll. 1-3. “These
surfboards are integral with the top of the carton and their edges are defined
by perforations circumscribing the surfboard, which is typically oblong-
shaped.” Id. at ll. 3-5. “For pop-up dispensing, a poly film containing a
dispensing slit underlies the surfboard and is exposed when the surfboard is
removed, creating a ‘window.’” Id. at ll. 5-6. “For ease of removal, the
surfboard can be provided with small detachment openings on each end to
enable the user to insert a finger in order to grasp and detach the surfboard
from the carton.” Id. at ll. 7-9.
The Examiner finds that Capo discloses all of the limitations of
claim 1, except “wherein the surfboard is releasably adhered to the poly film
by a releasable adhesive barrier which reduces access to the space between
the surfboard and the poly film through said at least one detachment
opening.” Ans. 3-4 (referencing Capo, col. 4, ll. 41-55, fig. 2). The
Examiner further finds that Shiffler discloses the limitation of claim 1

1 See 37 C.F.R. § 41.37(c)(1)(vii) (2011).
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missing from Capo. Ans. 4 (referencing Shiffler, col. 4, ll. 51-53). The
Examiner concludes that it would have been obvious to one of ordinary skill
in the art at the time of the invention to have modified Capo in view of
Shiffler “in order [to] adhere the surfboard 30 to the poly film 12 as taught
by [Shiffler], col. 4, ll. 41-53.” Ans. 4; see Shiffler, col. 4, ll. 43-44
(disclosing “a resealable closure device for the tissue opening”), fig. 1.
Appellants contend that the Examiner has not provided a sufficient
reason why one of ordinary skill in the art would have been motivated to
modify the surfboard of Capo by adhering it to the top wall as taught by
Shiffler. App. Br. 4. Appellants first argue that it would not have been
obvious “to adhere the surfboard of Capo to the top wall as taught by
Shiffler” because “Capo teaches removal of the material covering the
packing [sic] opening, while Shiffler teaches its reuse.” Id. at 3. In this
regard, Appellants argue that Capo discloses a tissue carton with a
removable surfboard that the user removes to access the contents of the
carton (id. at 2, referencing Capo, col. 4, ll. 15-20), while Shiffler discloses a
portable soft pack of facial tissues with a re-usable closure flap 30 that the
user affixes to the top wall 12 of the container 10 using a releasable adhesive
32 (App. Br. 3, referencing Shiffler, col. 4, ll. 55-62). Appellants
additionally argue that “Capo and Shiffler address distinctly different
problems than the problem solved by the present invention,” which is “the
problem of preventing tampering by reducing the space between the poly
film and surfboard” and that “[h]aving failed to recognize the problem
addressed by the present invention, there would be no reason for one skilled
in the art to spend time or resources modifying the surfboard of Capo by
applying the adhesive of Shiffler, even if such modification would have been
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technologically possible.” App. Br. 4. Appellants also argue that “it would
not be obvious to provide the carton of Capo with a releasable adhesive
between the surfboard and the poly film as claimed by [Appellants] since it
would not serve any useful purpose known in the art at the time.” Id.
Appellants lastly argue that “the failure of the prior art to recognize the
problem solved by the present invention and the lack of motivation to
combine the disparate inventions disclosed in Capo and Shiffler, renders the
Examiner’s ‘obvious to try’ rationale inapplicable.” Id. at 5.
The Examiner responds that the reason why one skilled in the art
would have modified the surfboard of Capo is “to allow the tissue pack to be
resealed when not in use” as taught by Shiffler (Ans. 7) and that “[t]he
useful purpose of modifying Capo with a releasable adhesive between the
surfboard and the poly film is to allow a user to reseal the dispensing
opening so that when not in use the stored tissues remain protected from
dirt or dust” (id. at 8). In response to Appellants’ argument that Capo and
Shiffler address different problems than the claimed invention, the Examiner
explains that “[t]he reason or motivation to modify the reference may often
suggest what the inventor has done, but for a different purpose or to solve a
different problem” and that “[i]t is not necessary that the prior art suggest the
combination to achieve the same advantage or result discovered by
applicant.” Id. at 7 (referencing In re Kahn, 441 F.3d 977, 987 (Fed. Cir.
2006)).
We determine that the Examiner’s conclusion of obviousness is
supported by adequate articulated reasoning with rational underpinning.
Appellants largely argue the references individually and do not adequately
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address the rejection as articulated by the Examiner.2 In particular,
Appellants have not persuaded us of any error in the Examiner’s reasoning
that a person of ordinary skill in the art, desiring a resealable closure device
for the tissue opening, would have provided a releasable adhesive as taught
by Shiffler between the surfboard and the poly film of Capo’s tissue carton.
Nor have Appellants provided persuasive argument or evidence that such a
releasable adhesive would not satisfy the limitation of claim 1 “wherein the
surfboard is releasably adhered to the poly film by a releasable adhesive
barrier which reduces access to the space between the surfboard and the poly
film through said at least one detachment opening.”
Accordingly, we sustain the Examiner’s rejection of claim 1, and
claims 2 and 10 dependent therefrom, under 35 U.S.C. § 103(a) as being
unpatentable over Capo and Shiffler. Because, as discussed supra,
Appellants do not argue the rejections of claims 3-9 separately from the
rejection of claim 1, we also sustain the Examiner’s rejections of claims 3-9
under 35 U.S.C. § 103(a) as being unpatentable over Capo and Shiffler.

DECISION
We affirm the rejections of claims 1-10.

2 See In re Merck & Co., Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986) (one
cannot show nonobviousness by attacking references individually where the
rejections are based on combinations of references) (citing In re Keller,
642 F.2d 413, 425 (CCPA 1981)).
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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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