GPCP IP Holdings LLC

Patent Trials and Appeals Board

Feb 14, 2022

2021004217 (P.T.A.B. Feb. 14, 2022)

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. 15/041,319 02/11/2016 Donald C. McCarthy 30279 7401 31743 7590 02/14/2022 Georgia-Pacific LLC 133 Peachtree Street NE GA030-24 Atlanta, GA 30303 EXAMINER RANDALL, JR., KELVIN L ART UNIT PAPER NUMBER 3651 NOTIFICATION DATE DELIVERY MODE 02/14/2022 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): gplawpatents@gapac.com koch_PAIR@firsttofile.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte DONALD C. MCCARTHY, WILLIAM G. BURR, and JARED S. FELIX Appeal 2021-004217 Application 15/041,319 Technology Center 3600 Before JENNIFER D. BAHR, MICHAEL J. FITZPATRICK, and LISA M. GUIJT, Administrative Patent Judges. GUIJT, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to reject claims 1-24. An oral hearing was held on January 24, 2022. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42(a). Appellant identifies the real party in interest as GPCP IP Holdings LLC. Appeal Br. 1. Appeal 2021-004217 Application 15/041,319 2 CLAIMED SUBJECT MATTER Appellant’s invention relates to a “Bend to Open Flat Poly-Pack Tissue Cassette for use in Over-Shell Dispensers.” Spec.2, Title. Claims 1, 7, 10, 16, 19, and 23 are the independent claims on appeal. Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. A package comprising: a plurality of capacious loose fitting, bend-to-open flat polymeric sheet tissue cassettes, each polymeric sheet tissue cassette comprising a clip of tissue having a heat sealed flexible polymeric film overwrap thereabout with a transversely extending medial line of perforations forming a line of weakness in said polymeric overwrap; and a rigid re-usable generally cubic over-shell having at least four upwardly extending side walls defining an interior cavity having a height of at least about 4.5 inches, and lateral dimensions of at least about 4.25 inches, said interior cavity being capped by a horizontally extending upper wall having formed therein a dispensing opening for dispensing tissue from the top of the over-shell; each polymeric sheet tissue cassette having an interior span length of at least about 9.5 inches, and an interior span width of at least about 6.0 inches; each said tissue in said clip being prefolded along its length into a configuration chosen from C-shaped (C-fold) or interfolded configuration having a length of about 7 to 9.5 inches; a width of about 3.5 to 5.75 inches, and comprising from about 50 to 150 2-ply sheets having a basis weight of from at least about 15 lbs/3000 sq. ft. ream.3 2 Notably, in Appellant’s Appeal Brief and Reply Brief, Appellant cites to the published application, US 2016/0235260 A1 (published August 18, 2016); for consistency, we will do so also. 3 We understand that this limitation means that each clip (as compared to each tissue) comprises from about 50 to 150 2-ply sheets having a basis Appeal 2021-004217 Application 15/041,319 3 THE REFERENCES The prior art relied upon by the Examiner is: Name Reference Date Hotchkiss US 4,411,374 Oct. 25, 1983 Veith US 6,349,525 B1 Feb. 26, 2002 Hood US 2006/0151515 A1 July 13, 2006 Mark US 2007/0062966 A1 Mar. 22, 2007 Zaidman US 2007/0062967 A1 Mar. 22, 2007 Luu US 2008/0008865 A1 Jan. 10, 2008 Hallam US 2012/0223093 A1 Sept. 6, 2012 Mueller US 2012/0241333 A1 Sept. 27, 2012 Sudworth US 2013/0270289 A1 Oct. 17, 2013 Stephens US 2015/0210466 A1 July 30, 2015 THE REJECTIONS The rejections before us on appeal are: I. Claims 1-6 stand rejected under 35 U.S.C. § 103 as being unpatentable over Sudworth, Veith, Zaidman, Hotchkiss, and Stephens. II. Claims 7, 8, and 19 stand rejected under 35 U.S.C. § 103 as being unpatentable over Sudworth, Zaidman, Hallam, and Stephens. weight of from at least about 15 lbs/3000 sq. ft. ream. See, e.g., Spec. ¶ 25 (“each clip 22 will hold from about 75 to about 150, preferably from about 80- 140, more preferably from about 85-135, still more preferably from around 90- 130 and most preferably around 100, single or multi-ply tissues, preferably 2-ply tissues having basis weight of around 25-45 gsm (15-20 lb/3000 sq. ft ream ) . . . .”; see also id. ¶ 26 (“each clip 22 of tissue will contain between about 90 and 100 single ply or 2-ply sheets having a basis weight from about 17 to 21 lbs/3,000 sq. ft. ream . . . .”). Notably, written description support in the Specification, as filed, for the range of from about 50 to 150 2-ply sheets in a clip, as claimed, is found in claim 1 as originally filed, according to this claim interpretation. Appeal 2021-004217 Application 15/041,319 4 III. Claim 9 stands rejected under 35 U.S.C. § 103 as being unpatentable over Sudworth, Zaidman, Hallam, Stephens, and Mark. IV. Claims 10, 14, and 15 stand rejected under 35 U.S.C. § 103 as being unpatentable over Sudworth and Zaidman. V. Claim 11 stands rejected under 35 U.S.C. § 103 as being unpatentable over Sudworth, Zaidman, and Hood. VI. Claims 12 and 13 stand rejected under 35 U.S.C. § 103 as being unpatentable over Sudworth, Zaidman, and Mueller. VII. Claims 16, 17, and 19-22 stand rejected under 35 U.S.C. § 103 as being unpatentable over Sudworth, Zaidman, Hallam, Stephens, Mark, and Mueller. VIII. Claim 18 stands rejected under 35 U.S.C. § 103 as being unpatentable over Sudworth, Zaidman, Hallam, Stephens, Mark, Mueller, and Hood. IX. Claims 23 and 24 stand rejected under 35 U.S.C. § 103 as being unpatentable over Sudworth, Zaidman, Hallam, Stephens, Luu, and Veith. OPINION Rejection I Regarding independent claim 1, the Examiner finds that Sudworth discloses, inter alia, a plurality of sheet tissue cassettes (i.e., package 1), each comprising a clip of tissue (i.e., tissues in a stack 10) having a flexible overwrap thereabout with a transversely extending medial line of perforations (i.e., perforation line 8). Non-Final Act. 10 (citing, e.g., Sudworth ¶¶ 124, 141, Fig. 1b). Appellant argues that the term “flexible” would be understood by one of ordinary skill in the art in view of the present specification and claims to be, inter alia, a material that is not sufficiently stiff to maintain Appeal 2021-004217 Application 15/041,319 5 the opened configuration of the claimed sheet tissue cassette when oriented in an upward-facing direction without use of a dispenser or other external support structure. Appeal Br. 12; see also Reply Br. 2 (citing Spec., Fig. 20A). In support, Appellant submits that Appellant’s Specification explains that “the claimed polymeric film may be made of any ‘suitably flexible’ material commonly used as overwraps” (citing Spec. ¶ 36) and also that “‘when it is desired to replace the tissue within a plastic shell, the replacement clip can be folded longitudinally to place the transversely extending line of weakness in tension, rupturing it and then inserting the tissue into the over-shell’” (quoting Spec. ¶ 11). Appellant argues that “Sudworth requires its packaging to be ‘sufficiently stiff to maintain the opened configuration’ without need of an additional support structure,” concluding that Sudworth, therefore, does not disclose a flexible overwrap, as claimed. Appeal Br. 13 (citing Sudworth ¶ 117); see also id. at 13-14 (citing Sudworth ¶¶ 95, 96, Figs. 4(a), 4(b)); Reply Br. 4-5. During examination of a patent application, pending claims are given their broadest reasonable construction consistent with the specification. In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). Under the broadest reasonable interpretation standard, claim terms are given their ordinary and customary meaning as would be understood by one of ordinary skill in the art in the context of the entire disclosure. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). “Even when guidance is not provided in explicit definitional format, ‘the specification may define claim terms ‘by implication’ such that the meaning may be ‘found in or ascertained by a reading of the patent documents.’” Irdeto Access, Inc. v. Echostar Satellite Corp., 383 F.3d 1295, 1300 (Fed. Cir. 2004). Appeal 2021-004217 Application 15/041,319 6 Here, the claim term “flexible” appears a single time in Appellant’s Specification and claims, as originally filed: Throughout the specification and claims, the terms “poly-“, “poly” and “polymeric” should be understood to include polyethylene in all of its variants that are suitable for packaging wrap, polypropylene, polyolefins suitable for packaging wrap as well as other suitably flexible, water impermeable polymeric material commonly used as over-wraps. Spec. ¶ 36 (emphasis added). This usage of the claim term “flexible” merely ascribes the property of flexibility to certain polymeric material that may be suitable as packaging wrap. The Specification also discusses the desirability of a “bend-to-open, or flex-to-open” tissue cassette, wherein “the consumer can simply bend or flex the flat poly-pack along the transversely extending medial line of weakness, thereby placing that line of weakness in tension and opening up the poly-pack to make its contents accessible upon inserting the folded pack into the plastic over-shell.” Id. ¶ 12 (emphasis added); see also, e.g., id. ¶¶ 14-21, 23. However, the Specification fails to consistently support Appellant’s definition (i.e., requiring a dispenser or other external support structure to maintain an opened configuration in order to be “flexible”), in that the Specification discloses that “[i]n most cases, poly pack tissue cassette 20 (Figure 1) will still be opened by bending, flexing or folding . . . , then unfolded to lie within long box over-shell 39.” Id. ¶ 37 (emphasis added). Notably, paragraph 11 of the Specification as relied on by Appellant does not disclose that flexibility is required by the cassette because, without the plastic shell as a support, the cassette of tissues would not maintain an opened position. Instead, paragraph 11 of the Specification discloses that flexibility is required by the cassette to place the line of Appeal 2021-004217 Application 15/041,319 7 weakness (or perforation) in tension to rupture the line of weakness to open the cassette. See Spec. ¶ 11. Thus, we decline to accept Appellant’s definition of the claim term “flexible,” which Appellant casts in terms of an insufficient stiffness resulting in the inability of a sheet tissue cassette to maintain an opened configuration when oriented in an upward-facing direction without use of an external support structure, because this definition is dependent upon undefined, structural aspects of a sheet tissue cassette and a support which may affect the sufficiency of the stiffness of the cassette to remain opened. We adopt an ordinary and customary meaning, namely, a dictionary definition, of the claim term “flexible”: “capable of bending or being bent.” See Appendix A (documenting Merriam-Webster’s definition of the term “flexible.” This definition is as would be understood by one of ordinary skill in the art in the context of the entire disclosure of Appellant’s Specification, which explains that a cassette is capable of bending, flexing, or folding, for example, to be opened by placing the line of weakness in tension, and also to be held within a rigid over-shell having a smaller length than the length of the cassette. Sudworth discloses a package comprising a stack of absorbent tissue paper sheets, wherein the package comprises at least one line of weakness that has an unbroken configuration and a broken configuration, and wherein the package is configured to be able to be flexed to pull apart the line of weakness when the line of weakness is in the broken configuration to open the package to allow a sheet in the stack to be withdrawn through the open package. Sudworth ¶ 9 (emphasis added). Appeal 2021-004217 Application 15/041,319 8 Thus, a preponderance of evidence supports the Examiner’s finding that Sudworth discloses a package, or sheet tissue cassette comprising an overwrap, that is able to be flexed (i.e., flexible), as claimed. Moreover, because Sudworth’s sheet tissue cassette is disclosed as flexible, Sudworth does not teach away from having a sheet tissue cassette comprising a flexible overwrap, as claimed.4 See Appeal Br. 17-18 (citing Sudworth ¶¶ 18, 117) (arguing that Sudworth “teaches away” from the claimed invention). The Examiner also determines that Sudworth fails to disclose a rigid re-usable generally cubic over-shell, as claimed, and the Examiner relies on Veith for disclosing a rigid re-usable generally cubic over-shell, as claimed. Non-Final Act. 11 (citing Veith 3:10-27, Figs. 1-5). The Examiner reasons that it would have been obvious to have combined the teachings of Sudworth and Veith “to provide an alternative housing or container for folded tissue clips intended to be supported in an upright orientation for dispensing.” Id. The Examiner also reasons that “[o]ne of ordinary skill in the art would recognize the alternative arrangements a package may be placed in for convenience of use in particular situations.” Ans. 12; see also id. at 19 (“Such a modification would allow a dispenser and package to be placed in a more desired orientation/position for usage as seen fit by a particular user.”). Appellant argues that “Sudworth does not have any teaching or suggestion of the use of a hard-shell dispenser when its sheet tissue cassettes 4 Notably, Appellant does not dispute the Examiner’s finding that Sudworth’s package corresponds to Appellant’s claimed overwrap. Appeal Br. 6-27; see also Appeal Br. 17 (citing Sudworth ¶ 141) (acknowledging Sudworth’s “single mention of ‘a thin polymer wrap’”). Appeal 2021-004217 Application 15/041,319 9 are used in the upward-facing orientation.” Appeal Br. 19. Appellant concludes that “[t]hus, Sudworth fails to teach the combination of a sheet tissue cassette and an upward facing hard-shell dispenser, as claimed.” Id. Appellant further argues that “as Sudworth teaches its sheet tissue cassettes are designed to be ‘self supporting’ in the upward orientation,” Sudworth “lacks any need for a hard-shell dispenser.” Id. Appellant submits that “there would have been no motivation for one of ordinary skill in the art to have attempted to combine the tissue package of Sudworth with the generally cubic upward facing dispensers of Veith or Zaidman,” but rather, “one of ordinary skill in the art would have been taught away from such a combination and would have had no expectation of success.” Id. at 23-24. We are not persuaded by Appellant’s arguments. First, the Examiner relies on Veith, not Sudworth, for disclosing a hard-shell dispenser or rigid re-usable generally cubic over-shell, as claimed. Non-obviousness cannot be established by attacking references individually where the rejection is based upon the teachings of a combination of references. In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986); In re Keller, 642 F.2d 413, 425 (CCPA 1981). Second, Sudworth discloses that [t]he package is preferably stiff enough to maintain the open configuration . . . . Such an embodiment enables the package to serve as a counter top tissue paper dispenser. Put another way, the package is stiff enough that when empty it at least substantially retains the shape it has when it is full. The package may be made of cardboard, paper or plastic. Sudworth ¶ 18. Thus, Sudworth contemplates the sheet tissue cassette or package as being used as a counter top tissue paper dispenser. Notably, Appeal 2021-004217 Application 15/041,319 10 Appellant’s own Specification admits that it is “common” to place “[a] boutique carton” containing a stack of sheet tissue “either in a free standing box or more commonly in a five sided plastic over-shell without a bottom.” Spec. ¶ 4. In sum, Appellant’s argument does not apprise us of error in the Examiner’s reasoning that it would have been obvious to a person of ordinary skill in the art, at the time of the invention, to provide an alternative housing or container for Sudworth’s package by placing Sudworth’s countertop package into a rigid re-usable generally cubic over-shell, as taught in Veith, and to do so with a reasonable expectation of success. See In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (requiring an obviousness conclusion to be based on explicit articulated reasoning with rational underpinning); cited with approval in KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). The Examiner further determines that Sudworth fails to disclose that each sheet tissue cassette or package has an interior span width of at least about 6.0 inches, as compared to a width of about 3.5 to 5.75 inches of the tissues contained therein, as required by claim 1. Non-Final Act. 10. The Examiner relies on Zaidman for disclosing a sheet tissue cassette (i.e., pack 50) having an interior span width of at least about 6.0 inches (citing Zaidman ¶¶ 40, 55-56), noting that “the width [of the pack] can be substantially longer than the effective width of the stack as seen in Fig. 2 for optimization purposes.” Id. at 11-12. The Examiner reasons that it would have been obvious to have provided the relative widths, as claimed, with respect to Sudworths’ package 1 and tissue stack 10, in view of the teachings of Zaidman, “as commonly known within the art and as by a design choice of c finite number of choices as suggested by Zaidman.” Id. at 12. The Appeal 2021-004217 Application 15/041,319 11 Examiner further finds that “the teachings for using a particular sized tissue within a [cassette] can be found within Zaidman” and reasons that it would have been obvious through routine experimentation and optimization, for one of ordinary skill in the art to modify their invention to include the most optimum results and efficiency necessary for their particular invention since it has been held where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. Id. at 13. See In re Aller, 220 F.2d 454, 456 (CCPA 1955) (“where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation”). Appellant submits that [t]he[] claimed size differences do not simply establish that the cassette is large enough to hold a tissue clip, but establish that the cassette is (i) meaningfully larger than the tissue clip in a way that provides sufficient space to allow for bend opening of the flexible cassette overwrap and/or (ii) not so much larger that the cassette would relax and prevent the dispensing of the tissue sheets during use. Appeal Br. 25. Appellant argues that the Examiner’s “analysis only considers the references individually, instead of collectively for what they teach as a whole” and provides no basis for why one of skill in the art would have been motivated to modify the relative sizes for Sudworth’s cassette and tissue clip such that the cassette would be meaningfully larger than the tissue clip, as claimed, nor any benefit or expectation of success that would result from such a modification if one were to do so. Id. at 25-26. Appellant submits that because Sudworth’s cassette is “made of a ‘stiff’ material . . . , there would be no reason to size its sheet tissue Appeal 2021-004217 Application 15/041,319 12 cassette as meaningfully larger than the size of the tissue clip contained therein.” Id. at 27. Appellant also argues that the Examiner’s reasoning “is a mix of legal buzz words without substance or applicability to the pending claims or rejection” and that the Examiner improperly relies on hindsight. Reply Br. 8. Zaidman discloses that “[a]ccording to one aspect of the invention, the volume of the chamber 54 [of pack 50] formed therein between the two seams is substantially larger than the volume occupied by the stack 10, such that the pack 10 may be loosely accommodated therein.” Zaidman ¶ 50; see also, e.g., id., Fig. 1. In particular, Zaidman discloses that “the width of the pack 50 may optionally be substantially larger than the effective width d of the stack 10, allowing substantial relative sideways movement between the stack and the chamber 54.” Id. ¶ 56. Thus, Zaidman provides support for the Examiner’s finding that the relative widths of a cassette and the tissues contained therein is recognized in the art as a result-effective variable, wherein such sizing affects the ability of the tissues to move sideways within the cassette. In sum, Appellant’s argument does not apprise of error in the Examiner’s finding, notwithstanding the stiffness of Sudworth’s flexible cassette. Appellant submits the Declaration of William G. Burr as evidence that “the costs associated with shipping the claimed poly-pack product . . . compared those to the shipping costs for both the standard cube shaped box and the standard rectangular flat box” (paragraph 3) represent “almost [a] 50% decrease” (paragraph 6). Declaration of William G. Burr, dated March 28, 2018. However, we find that such evidence of an economic benefit of the claimed invention is insufficient to overcome the Examiner’s obviousness rejection, as the evidence of an economic benefit does not Appeal 2021-004217 Application 15/041,319 13 demonstrate, for example, why selecting the claimed relative widths produces an unexpected or surprising result. Accordingly, we sustain the Examiner’s rejection of independent claim 1. Appellant chose not to present separate arguments for the patentability of claims 2-6, which depend from independent claim 1, and therefore, for essentially the same reasons as stated supra, we also sustain the Examiner’s rejection of claims 2-6. Appeal Br. 8-28. Rejections II-IX Appellant relies on the same arguments presented for the patentability of independent claim 1 supra for the patentability of independent claims 7, 10, 19, and 23, and Appellant chose not to present arguments for the patentability of dependent claims 8, 9, 11-18, 20-22, and 24 apart from the arguments presented for the independent claims. Appeal Br. 8-28. Therefore, for essentially the same reasons as stated supra, we also sustain the Examiner’s rejection of claims 7-24. CONCLUSION The Examiner’s rejections are affirmed. Appeal 2021-004217 Application 15/041,319 14 DECISION SUMMARY In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1-6 103 Sudworth, Veith, Zaidman, Hotchkiss, Stephens 1-6 7, 8, 19 103 Sudworth, Zaidman, Hallam, Stephens 7, 8, 19 9 103 Sudworth, Zaidman, Hallam, Stephens, Mark 9 10, 14, 15 103 Sudworth, Zaidman 10, 14, 15 11 103 Sudworth, Zaidman, Hood 11 12, 13 103 Sudworth, Zaidman, Mueller 12, 13 16, 17, 19-22 103 Sudworth, Zaidman, Hallam, Stephens, Mark, Mueller 16, 17, 19-22 18 103 Sudworth, Zaidman, Hallam, Stephens, Mark, Mueller, Hood 18 23, 24 103 Sudworth, Zaidman, Hallam, Stephens, Luu, Veith 23, 24 Overall Outcome 1-24 Appeal 2021-004217 Application 15/041,319 15 TIME PERIOD FOR RESPONSE 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