Ex Parte Stobbe

Patent Trial and Appeal Board

Sep 29, 2017

13329578 (P.T.A.B. Sep. 29, 2017)

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.
13/329,578 12/19/2011 Warren A. STOBBE TP-STOW-TPS4 1026
62439 7590
SINORICA, LLC
20251 Century Blvd.
Suite 140
Germantown, MD 20874
EXAMINER
MANSEN, MICHAEL R
ART UNIT PAPER NUMBER
3654
NOTIFICATION DATE DELIVERY MODE
10/03/2017 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
SINORICA@GMAIL.COM
sinorica@outlook.com
pair @ sinorica.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte WARREN A. STOBBE
Appeal 2016-007949
Application 13/329,578
Technology Center 3600
Before JAMES R. HUGHES, ERIC S. FRAHM, and
JOYCE CRAIG, Administrative Patent Judges.
HUGHES, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant seeks our review under 35 U.S.C. § 134(a) of the
Examiner’s final decision rejecting claims 1—3, which constitute all the
claims pending in this application. Final Act. 1; Br. 2.1 We have
jurisdiction under 35 U.S.C. § 6(b).
We affirm.
1 We refer to Appellant’s Specification (“Spec.”), filed Dec. 19, 2011 and
Appeal Brief (“Br.”) filed Feb. 22, 2016. We also refer to the Examiner’s
Answer (“Ans.”) mailed Aug. 11, 2016, and Final Office Action (Final
Rejection) (“Final Act.”) mailed Dec. 3, 2015. We also note that
Appellant’s Appeal Brief lacks page numbers. We cite to the Brief as if it
were consecutively numbered from page 1—10.
Appeal 2016-007949
Application 13/329,578
Appellant’s Invention
The invention concerns cardboard structures and methods of using
cardboard structures, the structure being a cardboard structure add-on for an
existing toilet paper roll, including a wing fashioned from a piece of
cardboard material having perforated lines placed horizontally across the
wing defining multiple faces for displaying advertisements. The wing is
folded at a center perforated line enabling the wing to flex and bend into a
folded state. When the wing is in the folded state, the cardboard structure is
capable of being fixedly positioned completely inside a tube of the toilet
paper roll so as to conceal the advertisements from view. Spec. 1:8—10;
2:14—22; Abstract.
Representative Claim
Independent claim 1, reproduced below with key disputed limitations
emphasized, further illustrates the invention:
1. A cardboard structure add-on for an existing toilet
paper roll comprises,
a wing;
the wing being made of a thin, flexible piece of cardboard
material,
a pouch;
the wing comprising a plurality of perforated lines and a
plurality of faces',
the plurality ofperforated lines horizontally placed across
the wing',
the plurality of faces defined by the plurality of perforated
lines',
the plurality of faces displaying a plurality of
advertisements;
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Application 13/329,578
the wing folded at a center perforated line of the plurality
of perforated lines, the center perforated line enabling the wing
to flex and bend into a folded state', and
when the wing is in the folded state, the cardboard
structure is capable of being fixedly positioned completely inside
a tube of the toilet paper roll so as to conceal the advertisements
from view.
Rejection on Appeal
The Examiner rejects claims 1—3 under 35 U.S.C. § 103(a) as being
unpatentable over Jensen (US 2008/0230417 Al, published Sept. 25, 2008),
Lahaussois (US 5,255,864, issued Oct. 26, 1993), Neckel (US 2007/0209246
Al, published Sept. 13, 2007) and Buell et al. (US 5,255,865, issued Oct. 26,
1993) (“Buell”).
ISSUE
Based upon our review of the record, Appellant’s contentions, and the
Examiner’s findings and conclusions, the principal issue before us follows:
Did the Examiner err in finding that Jensen, Lahaussois, Neckel, and Buell
collectively would have taught or suggested “a wing” “made of a thin,
flexible piece of cardboard material” “comprising a plurality of perforated
lines” “horizontally placed across the wing” and a “plurality of faces defined
by the plurality of perforated lines” for “displaying a plurality of
advertisements,” where “the wing [is] folded at a center perforated line of
the plurality of perforated lines, the center perforated line enabling the wing
to flex and bend into a folded state” and when “in the folded state, the
cardboard structure is capable of being fixedly positioned completely inside
a tube of the toilet paper roll so as to conceal the advertisements from view,”
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Application 13/329,578
within the meaning of Appellants’ claim 1 and the commensurate limitations
of claims 2 and 3?
ANALYSIS
Appellant argues independent claims 1, 2, and 3 together as a group.
See Br. 4—10. Accordingly, we select independent claim 1 as representative
of Appellant’s arguments and grouping with respect to claims 1—3. 37
C.F.R. §41.37(c)(l)(iv).
We adopt as our own (1) the findings and reasons set forth by the
Examiner in the action from which this appeal is taken (Final Act. 2-4), and
(2) the reasons set forth by the Examiner in the Examiner’s Answer (Ans. 2—
4) in response to Appellant’s Appeal Brief. We concur with the findings and
conclusions reached by the Examiner, and we provide the following for
emphasis.
Appellant contends that Jensen, Lahaussois, Neckel, and Buell do not
teach the disputed features of representative claim 1. See Br. 4—10.
Specifically, Appellant contends Jensen does not describe the disputed
features of a wing “made up of a plurality of perforated lines [] that spans
across the entire wing [] and a plurality of faces [] on which the different
advertisements are displayed” (Br. 7). See Br. 4—9.
We agree with the Examiner and find a preponderance of the evidence
demonstrates that the combination of Jensen, Lahaussois, Neckel, and Buell
would have taught or at least suggested the disputed features of Appellant’s
claim 1. The Examiner relies on Jensen in combination with Buell to teach
the disputed features of “a wing” and “perforated lines horizontally placed
across the wing” (claim 1). See Final Act. 2—A\ Ans. 2-4. The Examiner
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Application 13/329,578
explains that Appellant does not provide an explicit definition for the “wing”
terminology (see Ans. 3 4) and Appellant’s arguments are directed to
features not recited in the instant claims (see Ans. 2—3). Indeed Appellant
fails to clarify anywhere in their Appeal Brief what constitutes a wing,
except to state that Jensen does not describe a wing (see Br. 6). Appellant’s
claim 1 recites the intended use of the “wing” and some relative dimensional
requirements — “when the wing is in the folded state, the cardboard
structure is capable of being fixedly positioned completely inside a tube of
the toilet paper roll so as to conceal the advertisements from view” (claim
1). The fact that a folded piece of cardboard may fit inside a toilet paper
roll, however, does not clarity the shape or dimensions of the cardboard
piece because when unfolded, the piece could have any number of faces and
dimensions. See Spec. 4:13—25. To the extent Appellant contends the wing
must have a “v” shape when folded (see Spec. 4:4—5:4), such features are not
recited in the claims and we decline to read such features into the recited
wing feature.
The Examiner finds, and Appellant does not contest, that Jensen
describes a piece of cardboard having multiple ceases for folding into a
shape that fits within a roll — in particular, a triangular sleeve. See Final
Act. 2; Jensen Figs. 1, 2, 5, 7. Appellant asserts that “common sense”
dictates Jensen’s sleeve cannot describe Appellant’s “wing.” Br. 6. But,
Appellant does not explain why this is so. Given Jensen’s disclosure of
folding a rectangular piece into a multitude of shapes (supra), we find
Jensen would at least suggest any number of shapes. Accordingly, even if
we read in a requirement that the “wing” have a “v” shape, we find that
Jensen at least suggests the v-shaped wing. Further, Appellant contends
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Jensen does not describe the recited perforated lines. See Br. 6—9. The
Examiner cited Buell in combination with Jensen to teach the perforated
lines. See Final Act. 2—3; Ans. 4. Appellant does not address Buell.
Further, Appellant failed to file a Reply Brief addressing the
Examiner’s clarified findings and additional discussion of the disputed
limitations, or otherwise rebutting the findings and responsive arguments
made by the Examiner in the Answer.
Thus, Appellant does not persuade us of error in the Examiner’s
obviousness rejection of representative independent claim 1. Accordingly,
we affirm the Examiner’s rejection of representative claim 1 and
independent claims 2 and 3, not separately argued with particularity {supra).
CONCLUSION
Appellant has not shown that the Examiner erred in rejecting claims
1-3 under 35 U.S.C. § 103(a).
DECISION
We affirm the Examiner’s obviousness rejection of claims 1—3 under
35 U.S.C. § 103(a).
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED
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