Ex Parte Sherman et al

Patent Trial and Appeal Board

Sep 28, 2012

11216531 (P.T.A.B. Sep. 28, 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.
11/216,531 08/31/2005 Crystal Espinoza Sherman KCX-985 (20727) 4420
22827 7590 09/28/2012
DORITY & MANNING, P.A.
POST OFFICE BOX 1449
GREENVILLE, SC 29602-1449
EXAMINER
KUMAR, RAKESH
ART UNIT PAPER NUMBER
3651
MAIL DATE DELIVERY MODE
09/28/2012 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 PATENT TRIAL AND APPEAL BOARD
____________

Ex parte CRYSTAL ESPINOZA SHERMAN, BENJAMIN C. SARBO,
HEATHER ANNE SOREBO, and DANIEL HOO.
____________

Appeal 2010-009340
Application 11/216,531
Technology Center 3600
____________

Before: JENNIFER D. BAHR, MICHAEL L. HOELTER, and
JOHN W. MORRISON, Administrative Patent Judges.

MORRISON, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Crystal Espinoza Sherman, Benjamin C. Sarbo, Heather Anne Sorebo,
and Daniel Hoo (Appellants) seek our review under 35 U.S.C. § 134 of the
Examiner’s decision rejecting claims 1-21,23-32, and 34-37. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.
Appeal 2010-009340
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THE INVENTION
Appellants’ claimed invention relates to pop-up bath tissue products.
Spec 1. Claims 1, 21, and 27 are the independent claims on appeal. Claim 1
is illustrative and is reproduced below:
1. A bath tissue product comprising:
a dispenser defining an opening; and
a plurality of bath tissue sheets stacked
together within the dispenser, each of the tissue
sheets having a length of from about 10 inches to
about 30 inches, the tissue sheets being arranged in
the dispenser so as to be dispensed one at a time
from the dispenser opening.

THE REJECTIONS
Appellants seek review of the following rejections:
Claims 1, 3, 9, 17, and 21 are rejected under 35 U.S.C. § 103(a) over
Welchel (U.S. Patent Application Publication No. 2004/0099679 A1
published May 27, 2004) and Petersen (U.S. Patent No. 3,012,692 issued
Dec. 12, 1961).
Claim 2 is rejected under 35 U.S.C. § 103(a) over Welchel, Petersen,
and Jones (U.S. Patent No. 5,562,964 issued Oct. 8, 1996).
Claims 4-6 and 19 are rejected under 35 U.S.C. § 103(a) over
Welchel, Petersen, Jones and Penn (US Patent Application Publication No.
2004/0003521 A1 published Jan. 8, 2004).
Claims 7, 8, 16, and 18 are rejected under 35 U.S.C. § 103(a) over
Welchel, Petersen, Jones, Penn and Schutz (U.S. Patent No. 5,205,454
issued Apr. 27, 1993).
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Claims 16 and 18 are rejected under 35 U.S.C. 103(a) over Welchel,
Petersen, Jones, Penn, Schutz and Allen (U.S. Patent No. 5,007,558; issued
Apr. 16, 1991).
Claim 10 is rejected under 35 U.S.C. § 103(a) over Welchel, Petersen,
Jones, Penn, Schutz, and Grosriez (U.S. Patent Application Publication No.
2001/0025856 A1 published on Oct. 4, 2001).
Claims 11-13 are rejected under 35 U.S.C. § 103(a) over Welchel,
Petersen, Jones, Penn, Schutz, Grosriez and Lange (U.S. Patent Application
Publication No. 2004/0115394 A1 published on Jun. 17, 2004).
Claims 14, 15 and 23-26 are rejected under 35 U.S.C. § 103(a) over
Welchel, Petersen, Jones, Penn, Schutz, Grosriez, Lange and Montanez
(U.S. Patent No. 5,957,325 issued Sep. 28, 1999).
Claims 27-37 are rejected under 35 U.S.C. 1 03(a) over Welchel,
Petersen, Jones, Penn, Schutz, Grosriez, Lange, Montanez and Marino (U.S.
Patent No. 5,897,074 issued Apr. 27, 1999).

Obviousness over Welchel and Petersen
Referring now to claim 1, the examiner has determined that it would
have been obvious to one of ordinary skill in the art at the time the invention
was made to modify the teachings of Welchel to include a dispenser
comprising tissue sheets having a length in the range of 15 inches as taught
by Petersen because the larger sheets would allow for a greater cleaning
surface per sheet. Ans. 5 The Appellants contend that their invention
requires bath tissues, not the industrial cleaning products disclosed in
Petersen. Appeal Br. 11. The intended use of Petersen is of no moment as
the cleaning product of Petersen is capable of being used as a bath sheet.
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The Appellants further argue that the 15 inch sheets of Petersen do not allow
the selection of various lengths of tissue to “reduce the waste and use of
excess bath tissue.” Appeal Br. 13. The argument is not persuasive as the
15 inch tissue length of Petersen falls within the claimed tissue length range
of about 10 to about 30 inches required by claim 1.
The Appellants yet further argue that “absent Appellants’ disclosure,
one skilled in the art appreciates that if greater cleaning surface is required,
the user may simply unroll more squares from a typical tissue roll, and thus,
absent Appellants’ disclosure, one skilled in the art would not seek to
modify Welchel as proposed by the Examiner.” App. Br. 11. While this is
one solution that a person could use to address the problem of obtaining a
greater cleaning surface, Petersen addresses the same problem in a different
manner. The Examiner points out that Peterson teaches “the invention also
may be provided for dispensing sheets of various sizes intended for various
uses such as for dispensing cleansing tissues of well-known type (Col. 1
lines 24-31).” Ans. 14. Therefore, the Examiner’s articulated reason for
modifying Welchel with the larger sheet sizes of Petersen for use with larger
cleaning surfaces is explicitly based on the teachings of Petersen. For the
above reasons, we sustain the rejection of claim 1. We also sustain the
rejection of dependent claims 3 and 9, for which Appellants do not present
any separate arguments and which thus fall with claim 1.
Referring now to claim 17, the Appellants contend that neither
Welchel nor Petersen teaches a “non-cubicle1 ornamental shape”. Both
references teach rectangular boxes that are non-cubical but rectangular in
shape. As to the “ornamental shape”, it has long been held that features that

1 We interpret the term “cubicle” as “cubical”.
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relate to “ornamentation only and have no mechanical function whatsoever”
cannot be relied upon for patentability of a claim in a utility patent
application. In re Seid, 161 F.2d 229, 231 (CCPA 1947). As ornamentation
is the only argued claim element, we sustain the rejection of claim 17.
Referring now to claim 21, the Examiner has determined that:
It would have been obvious to one of ordinary skill
in the art at the time the invention was made to
modify the teachings of Welchel to include the two
types of articles to be dispensed as being dry tissue
sheets and further wherein each tissue size is
different from the adjacent sheet because the two
size sheets would allow a user to selective[ly]
choose the sheet type while reducing waste.

Ans. 6. The Appellents argue that ““there must be some articulated
reasoning with some rational underpinning to support the legal conclusion of
obviousness." KSR Int'l Co. v. Teleflex Inc., 550 U.S, 398 (U.S. 2007)
quoting In re Kahn, 441 F.3d 977,988 (CA Fed. 2006).” Appeal Br. 17.
“We must still be careful not to allow hindsight reconstruction of
references to reach the claimed invention without any explanation as to how
or why the references would be combined to produce the claimed
invention.” Innogenetics, N.V. v. Abbott Labs., 512 F.3d 1363, 1374 n.3
(Fed. Cir. 2008). In this instance, we agree with Appellants that the
Examiner has impermissibly engaged in hindsight reconstruction of
Appellants claimed invention, and has not provided adequate reasoning why
one of ordinary skill in the art would have combined the references to
include either (1) the use of two types of dry tissues in a single dispenser or
(2) a dispenser capable of dispensing two different length tissues from
different openings. As such, we cannot sustain the rejection of claim 21.
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Obviousness over Welchel, Petersen, and Jones
Addressing claim 2, the Examiner has introduced Jones to remedy the
deficiency that Welchel and Petersen do not specifically disclose the use of
connected sheets separated by perforations. The Appellants argue only that
Jones fails to remedy the deficiencies of Welchel and Petersen. App. Br. 18.
Because Jones was not introduced to remedy any deficiency in the rejection
of claim 1 and because the Appellants do not apprise us of error in the
Examiner’s rejection of claim 1 based on Welchel and Petersen, the
Appellants’ argument is non-persuasive. Therefore, we sustain the rejection
of claim 2.

Obviousness over Welchel, Petersen, Jones, and Penn
Addressing claim 4-6, and 19, the Examiner has introduced Penn to
remedy the deficiency that Welchel, Petersen, and Jones do not specifically
disclose the use of alphanumeric designation or similar ornamental figure.
The Appellants counter only that Jones and Penn do not remedy the
deficiencies of the rejection of independent claim 1. App. Br. 18. Because
Penn and Jones were not introduced to remedy any deficiency in the
rejection of claim 1 and the Appellants do not apprise us of error in the
Examiner’s rejection of claim 1 based on Welchel and Petersen, the
Appellants’ argument is non-persuasive. Therefore, we sustain the rejection
of claim 4-6, and 19.

Obviousness over Welchel, Petersen, Jones, Penn and Schutz
Addressing claims 7, 8, 16, and 18, the Examiner has introduced
Schutz to remedy the deficiency that Welchel, Petersen, Jones, and Penn do
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not specifically disclose ornamental tissues. The Appellants counter with
the argument that Schutz does not remedy the deficiencies of the rejection of
independent claim 1. App. Br. 19. Because Schutz was not introduced to
remedy the rejection of claim 1 and the Appellants do not apprise us of error
in the Examiner’s rejection of claim 1 based on Welchel and Petersen, the
Appellants’ argument is non-persuasive.
Addressing claims 7 and 8, the Appellants contend that the above
combination of references fails to teach “sheets” that are ornamental, while
acknowledging that Schutz teaches non-rectangular sheets. Appeal Br. 21.
Once again, it is well known that features which relate to “ornamentation
only and have no mechanical function whatsoever” cannot be relied upon for
patentability of a claim in a utility patent application. See In re Seid.
Accordingly, the Appellants’ arguments directed to ornamentation are not
persuasive. Thus, we sustain the rejection of claims 7 and 8.
Addressing claim 16, the Appellants argue that the ornamentation of
the sheets is coordinated with the ornamentation of the tissues. Again,
ornamentation alone cannot be relied on for patentability. Id. We sustain the
rejection of claim 16.
Addressing claim 18, the Appellants correctly assert that the prior art
of record does not teach a “first portion of tissue sheets have a first non-
rectangular,… shape, and second non-rectangular,… shape. The first and
second … shapes alternating within the tissue sheet stack.” Appeal Br. 22.
The Examiner’s rejection does not articulate any reasoning which addresses
the claimed alternating shapes within the stack. Note, that the ornamentation
of the tissues within the stack has no bearing on the analysis of this rejection.
Id. Therefore, we cannot sustain the rejection of claim 18.
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Obviousness over Welchel, Petersen, Jones, Penn, Schutz and Allen
The Appellants present no argument against the rejection of Claims 16
and 18 over Welchel, Petersen, Jones, Penn, Schutz and Allen. Ans. 8.
Therefore the rejection of claims 16 and 18 is sustained.

Obviousness over Welchel, Petersen, Jones, Penn, Schutz, and Grosriez
Addressing claim 10, the Examiner finds that “Grosriez discloses a
stack of sheets (Figure 2) wherein the stack comprises unattached individual
sheets (361,362), each sheet being prefolded and being configured to remain
in a prefolded state (Figure 1a-2) as the sheet[s] are to be dispensed.” Ans. 9
The Appellants contend that “the cited references do not teach that each
sheet is prefolded and being configured to remain in a prefolded state as the
sheet is dispensed.” Appeal Br. 23. We disagree. Grosriez, in Fig. 2,
teaches sheets that would remain in a prefolded state as dispensed.
Therefore, we sustain the rejection of claim 10.
Addressing claim 11, the examiner finds that “Lange discloses wipe
sheets within a dispenser (Figure 7) wherein each individual sheet (32;
Figure 5A) is prefolded by being bunched (see area 34) at each end of the
sheet (front and back end of sheet 32).” Ans.10. The Examiner then
determines that:
It would have been obvious to one of ordinary
skill in the art at the time the invention was made
to modify the teachings of Welchel in view of
Jones, Penn, Schutz and Grosriez to include sheets
prefolded by being bunched at each end of the
sheet as taught by Lange because it would provide
a greater selection of articles that can be dispensed
by the above disclosed apparatus.

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Id. The Appellants counter that “The differential retraction between the
Pleat-like zone 34 and the main portion 68 results from zone 34 being
treated by heat, pressure, embossing, thermal embossing, or any other
treatment” that is different from the bunching called for in claim 11. Appeal
Br. 25. The Appellants’ argument appears to be directed to features not
recited in claim 11. There is no method of bunching required by claim 11,
and the method disclosed in Lange renders the claimed feature of being
“bunched at each end” obvious. Therefore, we sustain the rejection of claim
11. Claims 12 and 13 are not separately argued. Therefore, we also sustain
the rejection to claims 12 and 13.

Obviousness over Welchel, Petersen, Jones, Penn, Schutz, Grosriez, Lange
and Montanez
Addressing claims 14, 15, 20, and 23-26, the Examiner has introduced
Montanez to remedy the deficiency that Welchel, Petersen, Jones, Penn,
Schutz, Grosriez, and Lange do not specifically disclose various interactive
ways to place ornamentation on the surface of the container. The
Appellants counter with arguments that Jones, Penn, Schutz, Grosriez,
Lange and Montanez do not remedy the argued deficiencies of the rjections
of independent claims 1 and 21. The Appellants’ argument is not persuasive
as to claims 14, 15 and 20, which depend from claim 1, because we found no
deficiencies in the rejection of claim 21. However, as the rejection to claim
21 was not sustained, for reasons discussed supra, the Appellants’ argument
is persuasive as to the rejection of claims 23-26,which we do not sustain.
Addressing claims 14 and 20 specifically, the Examiner finds that
“Montanez discloses a dispenser comprising a frame disposed on the outside
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of the dispenser housing wherein the frame comprises illustrative pictures of
the housing. Montanez teaches a display element can be disposed on the
outside of the dispenser.” Ans. 17 The Examiner then determines that “it
would have been obvious to one of ordinary skill in the art to have modified
the Welchel in view [of Petersen], Jones, Schutz, Grosriez, and Lange and
include a picture that can be colored by a user of indicia for educating the
user such as displaying the name of the product. (Re. claim 20) or place
stickers and labels on the outside of the dispenser.” Ans. 17-18. Without
addressing the Examiner’s combination, the Appellants argue that Montanez
is an apparatus for dispensing diapers. Appeal Br. 26. We find this
argument non persuasive as Montanez was not introduced for the type of
dispenser, but rather for the type of ornamentation that could be provided on
the outer surface of a container. The Appellants’ argument does not apprise
us of error in the combination proposed by the Examiner. Therefore, we
sustain the rejection of claims 14 and 20. We also sustain the rejection of
claim 15, for which the Appellants do not assert any separate arguments
apart from claim 14 and which thus falls with claim 14.

Obviousness over Welchel, Petersen, Jones, Penn, Schutz, Gosriez, Lange,
Montanez, and Marino
Addressing now claims 27-32 and 34-37, the Examiner has found that
“Marino discloses two dispensers (Figure 1) wherein the dispensers are
disposed above each other by a means of straps (20).” Ans. 12. The
Examiner then determines that:
It would have been obvious to one of ordinary skill
in the art at the time the invention was made to
modify the teachings of Welchel in view of
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Petersen, Jones, Penn, Schutz, Grosriez, Lange and
Montanez to include two tissue dispensers of
Welchel configured as a single unit connected by
an attachment device as taught by Marino because
each dispenser apparatus would be able to house a
greater number and different types of tissues to be
dispensed [to] provide for a greater selection for
the user.
Id. With respect to Claim 27, the Appellants first argue that this
combination does not teach tissues having a “length of from about 10 inches
to about 30 inches”. Appeal Br. 29. As discussed above, this limitation is
taught by Peterson. Therefore, this argument is non-persuasive. The
Appellants next argue that “Marino merely discloses a single wet tissue
dispenser that may be attached to a conventional bathroom fixture.” Appeal
Br. 29. However, the Examiner is relying on Welchel to teach two tissue
dispensers and an attachment device and Marino for the teaching of two
dispensers being spaced apart or one “disposed above” the other2. Ans. 12.
In addition, Marino clearly discloses two dispensers, one attached to the
wall, and a second dispenser attached to the wall dispenser via the
attachment device. As such, the Appellants’ arguments against Marino
teaching two dispensers are non-persuasive. Therefore, we sustain the
rejection of claim 27, and claims 29-32 and 34-37 which depend therefrom
and are not separately argued.
Addressing claim 28, the Appellants argue that none of the references
show a “first dispenser is spaced apart from the second dispenser”. Appeal

2 The a Examiner uses the phrase “disposed above each other” which is best
interpreted to mean “one disposed above the other” as shown in Fig. 1 of
Marino.
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Br. 41. Again, the Examiner found that “Marino discloses two dispensers
(Figure 1) wherein the dispensers are disposed above each other by a
means of straps (20).” Ans.12 One dispenser is a fixture attached to the
wall, and the second dispenser is attached to the first dispenser via an
attachment device, the straps 20. Looking at Fig. 1, Marino discloses a
second dispenser 27 spaced apart from the first dispenser, the bathroom
fixture. Therefore, the Appellants’ arguments are non-persuasive. As such,
we sustain the rejection of claim 28.

DECISION
The Examiner’s decision rejecting claims 1-21, 23-32, and 34-37 is
affirmed as to claims 1-19, 20, 27-32, and 34-37, and is reversed as to claims
21, and 23-26.
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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