Ex Parte VanBuren

Patent Trial and Appeal Board

Feb 27, 2013

11200332 (P.T.A.B. Feb. 27, 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.
11/200,332 08/09/2005 Daphne Lynn VanBuren 21,501 3254
23556 7590 02/28/2013
KIMBERLY-CLARK WORLDWIDE, INC.
Tara Pohlkotte
2300 Winchester Rd.
NEENAH, WI 54956
EXAMINER
WAGGONER, TIMOTHY R
ART UNIT PAPER NUMBER
3651
MAIL DATE DELIVERY MODE
02/28/2013 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 DAPHNE LYNN VANBUREN
____________________

Appeal 2010-012172
Application 11/200,332
Technology Center 3600
____________________

Before CHARLES N. GREENHUT, ANNETTE R. REIMERS, and
HYUN J. JUNG, Administrative Patent Judges.

JUNG, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF THE CASE
Daphne Lynn VanBuren (Appellant) appeals under 35 U.S.C. § 134
from a rejection of claims 1, 11-14, 26, and 27 under 35 U.S.C. § 103(a) as
unpatentable over Pehr (US 6,349,849 B1; iss. Feb. 26, 2002) and common
knowledge. Ans. 4. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE and enter a NEW GROUND OF REJECTION of
claims 1, 11-14, 26, and 27.

THE CLAIMED SUBJECT MATTER
Claim 1, reproduced below, is illustrative of the claimed subject
matter:
1. A product comprising:
a stack having a top and a bottom, the stack
comprising a plurality of individual sheets, and the
stack enclosed within a dispenser having a single
dispensing opening through which all of the sheets
within the stack are dispensed;
the stack having at least one first sheet
portion comprising from 2 to about 30 sheets of a
first sheet material and a second sheet portion
comprising at least 30 sheets of a second sheet
material;
wherein the first sheet material is different
from the second sheet material and wherein the
first sheet portion is located only at the top of the
stack.

ANALYSIS
The Examiner finds that Pehr discloses the subject matter of claims 1,
11-14, 26, and 27 except that Pehr does not disclose the specific quantities or
different material of sheets. Ans. 4. The Examiner finds that it is common
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knowledge to provide a new product with the purchase of an existing
product and concludes that it would have been obvious to provide sample
sheets at either the top or bottom of a stack of sheets. Id.
The Appellant argues that Pehr and common knowledge do not
disclose providing two different tissue products in a dispenser having only
one dispensing opening, as recited by the claims. Br. 4. The Appellant
states that Pehr is directed to a common problem associated with pop-up
tissue dispensers known as “fall back” where pulling one tissue fails to pull
the next tissue partially through an opening at the top of the dispenser. Id.
The Appellant states that Pehr’s second opening allows a user to withdraw
tissues at a lower point in the dispenser to avoid “fall back.” Id.
The Appellant also cites column 4, lines 4-7, of Pehr, as disclosing a
slot in a top wall and another slot in a bottom wall so that two different types
of tissues can be dispensed. Id. However, the Appellant argues that these
two slots are necessary to dispense the two different types of tissues. Id. at
5.
The Examiner responds that removing one of the two openings of
Pehr still renders obvious a single opening. Ans. 4-5. The Examiner finds
that having a single opening does not involve an inventive step and Pehr
discloses two types of tissues being dispensed. Id. at 5.
The Appellant’s arguments are persuasive. The Examiner makes no
findings and does not provide a reason that one of ordinary skill in the art
would modify Pehr to have one opening. See Ans. 4. Also, the Examiner’s
finding that having a single opening instead of two, as Pehr explicitly
discloses, does not involve an inventive step fails to explain why one skilled
in the art would remove the second opening to arrive at the claimed
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invention. See Ans. 5. Based on the record before us, the Examiner’s
conclusion of obviousness lacks articulated reasoning with rational
underpinnings.
Accordingly, we cannot sustain the Examiner’s rejection of claims 1,
11-14, 26, and 27 under 35 U.S.C. § 103(a) as unpatentable over Pehr and
common knowledge.
New Ground of Rejection
We enter a new ground of rejection of claims 1, 11-14, 26, and 27
under 35 U.S.C. § 103(a) as unpatentable over Pehr.
Pehr discloses a product, tissue dispenser 1. Pehr, col. 3, ll. 7-9, and
figs. 1-3. Column 3, lines 7-9, of Pehr discloses that the tissue dispenser 1 is
“for sequentially dispensing a plurality of tissues contained therein.” Lines
34-36 of the same column discloses that the “tissues 5 initially generally fill
the box 17 and are normally initially at least at the level of the phantom line
tissue level 37, shown in FIG. 2.” Figure 2 shows a tissue 43 being
withdrawn from the top of a stack of tissues with a bottom near a bottom
wall 11 of the tissue dispenser 1. Thus, Pehr discloses a product comprising
“a stack having a top and a bottom, the stack comprising a plurality of
individual sheets,” as recited by claims 1, 11, and 12.
Also, Pehr discloses that “each of the slots 34 and 35 is wide enough
to allow a user to push their hand down through the slot 34 and 35 into the
box 17 to withdraw an initial tissue from the tissues 5 therefrom to start a
continuous feed through either slot 34 or 35.” Pehr, col. 3, ll. 30-34. Pehr
further discloses that “[a]s the level of tissues in the box 17 diminishes, such
as is shown by the solid tissue level 39 in FIG. 2, an insufficient amount of
each succeeding tissue 5 may be drawn through the top slot 34 to leave the
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succeeding tissue 5 extending from the box 17” and “[i]n this situation, the
user illustrated by the hand 42 in FIG. 1 reaches into the box 17 through the
slot 35 and withdraws a first tissue 5, such as tissue 43, from the lower slot
35.” Id. at col. 3, ll. 42-49. Thus, Pehr teaches that a top slot 34 is
constructed to be wide enough so that all the tissues can be withdrawn
through that slot 34 either by continuous feed or by a user pushing their hand
down through the slot 34. See also id at col. 1, ll. 23-25. Also, Pehr teaches
that the use of the second slot 35 is conditional. The second slot 35 is used
in situations when a succeeding tissue after the withdrawn tissue does not
adequately extend from the top slot 34. However, these situations may
happen and “is especially troublesome with the larger boxes that hold 500 or
more tissues.” See id. at col. 1, ll. 16-27. Thus, a skilled artisan would
understand Pehr as teaching that all the tissues can be withdrawn from the
top slot 34 without having to resort to the additional second slot 35.
Therefore, Pehr discloses “the stack enclosed within a dispenser having a
single dispensing opening through which all of the sheets within the stack
are dispensed,” as recited by claims 1, 11, and 12. In reaching this finding,
we construe “a single dispensing opening through which all of the sheets
within the stack are dispensed” as limiting the “single dispensing opening”
through its manner of use and not necessarily requiring a particular structure.
Pehr further discloses that “[f]or example, there could be a slot in the
top wall 10 and in the bottom wall 11” and that “[i]n this manner tissues of
different type, for example, a different color could be withdrawn from
opposite ends of the dispenser 1 by simply turning the dispenser 1 over.” Id.
at col. 4, ll. 2-7. Appellant defines “a first sheet material is different from a
second sheet material” so that a “variation in the color of the sheet materials
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through dying is not considered a difference for the purposes of this
invention if the sheet materials are otherwise identical in nature.” Spec.
4:13-19. Pehr cites different tissue colors as an example; however, we find
no indications that differences other than tissue color cannot be used for the
tissues in the dispenser 1 of Pehr. Thus, the skilled artisan would understand
that the “tissues of different type, for example . . .” is not limited to merely
differences in tissue color. Therefore, Pehr discloses “the stack having at
least one first sheet portion . . . of a first sheet material and a second sheet
portion . . . of a second sheet material, wherein the first sheet material is
different from the second sheet material,” as recited by claims 1, 11, and 12.
Because Pehr discloses that two different types of tissues can be withdrawn
from slots in the top and bottom walls such that one of the two types can be
withdrawn from the top or bottom slot, Pehr also discloses “wherein the first
sheet portion is located only at the top of the stack,” as recited by claim 1,
and “wherein the first sheet portion is located only at the bottom of the
stack,” as recited by claim 11.
As for claim 12’s recitation of “wherein one first sheet portion is
located at the top of the stack, another first sheet portion is located at the
bottom of the stack, and the second sheet portion forms the middle of the
stack,” we find that such an arrangement is a duplication of one of the
“tissues of different type” as taught by Pehr, such that one such tissue type is
located at the top of the stack, another type is located under the first type,
and another of the first type is located under the second type with no new
unexpected result and thus has no patentable significance. See In re Harza,
274 F.2d 669, 774 (CCPA 1960) (“the mere duplication of parts has no
patentable significance unless a new an unexpected result is produced”).
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Pehr does not explicitly disclose that the first sheet portion comprises
from 2 to about 30 sheets of a first sheet material and that the second sheet
portion comprises at least 30 sheets of a second sheet material, as required
by claims 1, 11, and 12. Claims 13 and 14 depend from claims 1, 11, or 12
and recite “wherein the first sheet portion comprises between about 5 to
about 20 sheets” and “wherein the first sheet portion comprises between
about 5 to about 10 sheets,” respectively. Pehr does teach that paper tissues
are frequently sold in a container that has a withdrawal slot in the top of the
container, and larger boxes hold 500 or more tissues. Pehr, col. 1, ll. 9-11
and 26-27. We cannot find, and the Appellant does not point to, any
indication that the difference in the number of tissues as taught by Pehr and
the recited number of sheets would result in the claimed product performing
differently from the tissue dispenser 1 of Pehr, and thus, we find that the
recited number of sheets is not a patentable distinction from Pehr. See
Gardner v. TEC Systems, Inc., 725 F.2d 1338, 1345 (Fed. Cir. 1984); cert.
denied, 469 U.S. 830 (1984) (holding that, where the only difference
between the prior art and the claims was a recitation of relative dimensions
of the claimed device and a device having the claimed relative dimensions
would not perform differently than the prior art device, the claimed device
was not patentably distinct from the prior art device) and In re Chu, 66 F.3d
292, 298-99 (Fed. Cir. 1995) (“design choice” is appropriate where the
applicant fails to set forth any reasons why the differences between the
claimed invention and the prior art would result in a different function).
Dependent claim 26 recites “wherein the first and second sheet
materials are folded for reach-in dispensing.” Br., Claims App’x. The
Appellant argues Pehr fails to disclose a tissue product having a dispenser
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designed for “reach-in” dispensing. Br. 6. The Appellant asserts that a
reach-in opening is not merely a slot and is not covered with a plastic film
containing a slit. Id. The Appellant further argues that Pehr is limited to
“pop-up” style dispensers. Id. As discussed above, Pehr discloses that
“each of the slots 34 and 35 is wide enough to allow a user to push their
hand down through the slot 34 and 35 into the box 17 to withdraw an initial
tissue from the tissues 5 therefrom to start a continuous feed through either
slot 34 or 35.” Pehr, col. 3, ll. 30-34. The ability of a user “to push their
hand down through the slot 34 and 35 into the box 17” is indicative of
“reaching-in.” While defining the slot or dispenser as “reach-in” might limit
the dispenser or slot, the Appellant fails to apprise us why “folded for reach-
in dispensing,” as recited by claim 26, creates any structural difference in the
sheet materials. The Appellant’s argument is therefore not commensurate
with the scope of the claim.
The Appellant also argues that individual sheets within the stack
inside a reach-in dispenser are not interfolded. Br. 6. The Appellant’s
argument suggests that “reach-in” folding implicitly requires the absence of
interfolding. However, the claim merely requires “the first and the second
sheet materials are folded for reach-in dispensing.” Br., Claims App’x. The
Appellant’s arguments appear to be incorporating limitations from the
Specification into the claim, i.e., “folded for reach-in dispensing into a C-
fold or other folded configuration where withdrawal of a preceding sheet
does not partially withdraw the next sheet into the dispensing opening 56 or
interfolded for pop-up dispensing into a V-fold as illustrated or other folded
configuration where withdrawal of a preceding sheet partially withdraws the
next sheet into the dispensing opening 56.” Spec. 6, ll. 6-11; see also fig. 1.
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Therefore, Appellant’s argument is unpersuasive because the scope of claim
26 cannot be narrowed by reading limitations from disclosed embodiments
into the claim where such limitations have no express basis in the claim.
As for dependent claim 27, the Appellant does not provide any
separate arguments. Br. 7. Furthermore, the Appellant states that “the
teachings of Pehr are limited solely to ‘pop-up’ style dispensers.” Br. 6.
The Appellant thus appears to concede that the tissues of the Pehr dispenser
disclose “wherein the first and second sheet materials are interfolded for
pop-up dispensing,” as recited by claim 27.
We therefore conclude that the subject matter of claims 1, 11-14, 26,
and 27 would have been obvious in view of Pehr. Because our conclusion is
based on reasoning and findings of fact that differ from the rejection
articulated by the Examiner, we reenter the rejection as a new ground of
rejection under 37 C.F.R. § 41.50(b) to provide the Appellant with a full and
fair opportunity to respond to the rejection.

DECISION
For the above reasons, the Examiner’s rejection of claims 1, 11-14,
26, and 27 is reversed.
We enter a new ground of rejection of claims 1, 11-14, 26, and 27
under 35 U.S.C. § 103(a) as unpatentable over Pehr.

This decision contains a new ground of rejection pursuant to
37 C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides “[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review.”
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37 C.F.R. § 41.50(b) also provides that Appellant, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new ground of rejection to
avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an
appropriate amendment of the claims so rejected or
new evidence relating to the claims so rejected, or
both, and have the matter reconsidered by the
examiner, in which event the proceeding will be
remanded to the examiner. . . .

(2) Request rehearing. Request that the
proceeding be reheard under § 41.52 by the Board
upon the same record. . . .

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) (2010).

REVERSED; 37 C.F.R. § 41.50(b)

Vsh