Ex Parte Catalfamo et alDownload PDFPatent Trial and Appeal BoardMay 17, 201611954140 (P.T.A.B. May. 17, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 111954,140 12/11/2007 27752 7590 05/19/2016 THE PROCTER & GAMBLE COMPANY Global Patent Services - Legal IP Central Building, CS One Procter and Gamble Plaza CINCINNATI, OH 45202 FIRST NAMED INVENTOR Vincenzo Catalfamo 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 ATTORNEY DOCKET NO. CONFIRMATION NO. 10667M 3419 EXAMINER DOUYON, LORNA M ART UNIT PAPER NUMBER 1761 NOTIFICATION DATE DELIVERY MODE 05/19/2016 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): centraldocket.im @pg.com pair_pg@firsttofile.com mayer.jk@pg.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte VINCENZO CAT ALF AMO and FRANK WILLIAM DENO ME Appeal2014-009073 Application 11/954,140 Technology Center 1700 Before CHUNG K. PAK, ELIZABETH M. ROESEL, and BRIAND. RANGE, Administrative Patent Judges. ROESEL, Administrative Patent Judge. DECISION ON APPEAL Appellants 1 appeal under 35 U.S.C. § 134(a) from the Examiner's decision rejecting claims 2 and 13 under 35 U.S.C. § 103(a) as unpatentable over Catlin et al. (EP 1 516 918 A2, published Mar. 23, 2005, "Catlin") in view oflcht et al. (WO 2007/034471 A2, published Mar. 29, 2007, "Icht"). We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 1 Procter & Gamble Company is identified as the real party in interest. Br. 1. Appeal2014-009073 Application 11/954, 140 STATEMENT OF THE CASE Appellants claim a unit dose detergent product for use in an automatic dishwashing machine. Br. 10 (claim 2). Claim 2 is the sole independent claim and is reproduced below from Appellants' Claims Appendix, with paragraph breaks and lettering added for ease of reference: 1. A unit dose detergent product [a] comprising multiple compartments formed from a water-soluble printed film, [b] wherein a first compartment comprises a colored liquid and a second compartment comprises a powder detergent, [ c] wherein the water soluble film forms an internal wall and external walls, [d] wherein the internal wall separates the first and second compartments, [ e] wherein the first compartment is superimposed above the second compartment, [ f] wherein the product comprises a printed image disposed on an external wall of the water-soluble film adjacent to the first compartment, [g] wherein the image indicates a preferred orientation of the first and second compartments of the unit dose detergent product in an automatic dishwashing machine, and [h] wherein the colored liquid and the printed image are different in color so as to improve the perceptibility of the images. Br. 10. 2 Appeal2014-009073 Application 11/954, 140 ANALYSIS Appellants' arguments are directed to independent claim 2 only. Dependent claim 13 is not separately argued. App. Br. 2-9. As a consequence, the appealed claims stand or fall together, and we confine our discussion to claim 2. The Examiner finds that Catlin discloses a water soluble multi- compartment dishwasher detergent pouch and that Catlin discloses all limitations of claim 2, except for paragraphs [f], [g], and [h]. Final Action 3--4 (citing, inter alia, Catlin i-f 1). 2 The Examiner finds that Icht discloses a water-soluble detergent printed film that can be used as a wrapper and that can be used for dishwashing. Id. at 4 (citing, inter alia, Icht 2, 3). Regarding paragraph [ f], the Examiner concludes that it would have been obvious to print the liquid-containing compartment of Catlin "because this would provide an aesthetic appeal to the product as taught by Icht." Id. at 5. The Examiner determines that paragraph [g] recites printed matter that does not contribute a patentable difference to the claim because "the instructions do not give rise to a new and useful function, effect or result." Id. (citing Ex parte Gwinn, 112 USPQ 439 (BPAI 1955)). Regarding paragraph [h], the Examiner finds that neither Catlin nor Icht discloses the recited color difference, but the Examiner concludes that "the selection of colors ... is within the level of ordinary skill in the art." Id. Appellants argue that Catlin and Icht are not analogous, that the Examiner's rationale for combining the references is not sufficient, that the combination of Catlin and Icht does not teach or suggest the claimed 2 Final Action dated April 15, 2014. 3 Appeal2014-009073 Application 11/954, 140 structure, and that the Final Action does not articulate a reason to combine Catlin and Icht in the manner recited in paragraphs [fJ, [g], and [h]. Br. 4---6. Appellants further argue that the differences between the claimed subject matter and the cited art are not limited to printed matter and, even if they were, claim 2 recites a functional relationship between the printed image and the unit dose detergent product. Id. at 6-8 (citing In re Gulack, 703 F .2d 1381 (Fed. Cir. 1983) and Ex parte Brassey, No. 2000-2223, 2003 WL 23013149 (BPAI 2003) (non-precedential) and distinguishing Ex parte Gwinn). Upon consideration of the evidence presented in this Appeal and each of Appellants' arguments, we are not persuaded that Appellants identify reversible error, and we find that a preponderance of evidence supports the Examiner's conclusion that the subject matter of Appellants' claims is unpatentable over the applied prior art. We sustain the appealed rejection based on the Examiner;s findings of fact, conclusions of law, and rebuttals to Appellants' arguments, as expressed in the Final Action and the Answer. We add the following for emphasis. We are not persuaded that the Examiner's rationale for combining the cited teachings of Catlin and Icht is insufficient. Appellants do not identify error in the Examiner's finding that the references are analogous art and analogous to one another. Ans. 3. That finding is supported by a preponderance of the evidence, which shows that both references relate to detergent products having water soluble films that can be used in 4 Appeal2014-009073 Application 11/954, 140 dishwashing. See, e.g., Catlin i-fi-f l, 16, 34, 76; Icht Abstract, 4(9); 3 cf Spec. 1: 12-14 ("invention is in the field of printed films ... used in unit does detergent products"). Appellants also do not identify error in the Examiner's finding that a desire to provide aesthetic appeal to the product, as taught by Icht, would have motivated one of ordinary skill in the art to combine the teachings of Icht and Catlin. Final Action 5. Appellants emphasize Icht's disclosure of a film that includes detergent within the structure of the film. Br. 4. Appellants do not, however, address the Examiner's finding that Icht also teaches that the disclosed printed film can be used as a wrapper. Final Action 4 (citing Icht 3 :3---6). That teaching further supports the Examiner's rationale for combining Icht's printed images with Catlin's multi- compartment detergent pouch. Id.; Ans. 3; Catlin i129. We are persuaded that the combination of Catlin and Icht is sufficient to teach or suggest all elements of claim 2 and that the Examiner provides sufficient reasons why one of ordinary skill in the art would combined those elements in the manner recited in paragraphs [ f], [g], and [h]. Appellants argue that combined references do not teach or suggest "the claimed compartments, location of the printing, or the relationship of the colored liquid with the printed matter." Br. 5. Appellants' arguments are not, however, sufficient to identify error in the Examiner's findings and conclusions that: (i) Catlin teaches the claimed compartments, Final Action 3 (citing, e.g., Catlin i-f l); (ii) locating a printed image on Catlin's liquid- 3 Number in parentheses refers to an unnumbered paragraph on the cited page of Icht. 5 Appeal2014-009073 Application 11/954, 140 containing compartment would have been obvious in view of Icht, id. at 5, and (iii) it would have been "within the level of ordinary skill in the art" to select colors such that the colored liquid and printed image are different in color, id.; Ans. 5---6. Regarding the location of the printing, we note that the Examiner's findings and the cited teachings of Catlin and Icht are sufficient to support a conclusion that it would have been obvious to locate a printed image on all portions of a film that forms a multi-compartment pouch, including a portion that holds liquid detergent. We now tum the arguments regarding printed matter. The Examiner and Appellants agree that claim 2, paragraph [g] recites printed matter, i.e., "matter claimed for what it communicates." In re Distefano, 808 F.3d 845, 849 (Fed. Cir. 2015); see id. at 848 ("The first step of the printed matter analysis is the determination that the limitation in question is in fact directed toward printed matter.") The dispute is what patentable weight should be given to the printed matter. Our reviewing Court provides the following guidance in this regard: "[O]nce it is determined that [a] limitation is directed to printed matter, one must then determine if the matter is functionally or structurally related to the associated physical substrate, and only if the answer is 'no' is the printed matter owed no patentable weight." Distefano, 808 F.3d at 851. In Gulack, for example, the Court determined that, while a sequence of digits printed on a wrist band constituted printed matter, the sequence deserved patentable weight because the informational content of the sequence (what numbers were represented) was functionally related to the endless-band physical structure of the substrate. Gulack, 703 F.2d at 1385. Similarly, in In re Miller, the Court determined that while the text written on 6 Appeal2014-009073 Application 11/954, 140 a measuring vessel was printed matter, it must be given patentable weight because the claims define a "functional relationship between a measuring receptacle, volumetric indicia thereon indicating volume in a certain ratio to actual volume, and a legend indicating the ratio." 418 F.2d 1392, 1396 (CCP A 1969). In Gwinn, on the other hand, the Court determined that indicia on the faces of dice was printed matter that did not impart patentability because neither the arrangement of the printed matter relative to the dice, nor the way the dice were used, was different from the prior art. 112 USPQ at 447. In In re Ngai, the printed matter was instructions included in a kit for amplifying RNA. 367 F.3d 1336, 1337-38 (Fed. Cir. 2004). The Court distinguished Gulack, holding that "addition of a new set of instructions into a known kit does not interrelate with the kit in the same way as the numbers [in Gulack] interrelated with the band." Id. at 1339. Thus, "the critical question is whether there exists any new and unobvious functional relationship between the printed matter and the substrate." Gulack, 703 F.2d at 1386; see also Distefano, 808 F.3d at 851. Appellants argue that, in claim 2, there is a functional relationship between the printed matter and the product because the printed image "indicates a preferred orientation of the first and second compartments of the unit dose detergent product in an automatic dishwashing machine." Br. 8. We disagree. The printed image recited in paragraphs [fJ, [g], and [h] does not interrelate with the unit dose detergent product in the same way as the endless sequence of digits in Gulack related to the endless band or the volumetric indicia in Miller related to the measuring vessel. Appellants' printed image directs the user how to orient the multi-compartment unit dose 7 Appeal2014-009073 Application 11/954, 140 detergent product, when placing it in an automatic dishwashing machine dispenser. Br. 10 (claim 2); Spec. 2:30-31, 2:35-37. This direction to the user is analogous to the instructions in Ngai. As in Ngai, Appellants' printed image in no way depends on the unit dose detergent product, and the unit dose detergent product does not depend on the printed image. 367 F.3d at 1339. Further, as in Ngai, patentability is not conferred on Appellants' unit dose detergent product, which is otherwise obvious from the prior art, "by simply attaching a set of instructions to that product." Id. If anything, these facts present an even stronger case of unpatentability than N gai because, as noted by the Examiner, the "preferred orientation" is not specified in the claim, Ans. 5, and Appellants do not argue that this "preferred orientation," i.e., the method of using the product, differs from what was known or obvious from the prior art. Accordingly, in our view, the Examiner correctly determined that the printed image recited in paragraphs [tl, [g], and [h] does not patentably distinguish Appellants' unit dose detergent product from the prior art. Final Action 5; Ans. 5.4 We, therefore, conclude that the weight of the evidence supports the Examiner's conclusion of obviousness. 4 Ex parte Brassey, 2003 WL 23013149, cited by Appellants, is not binding precedent and was based on facts different from those presented here. 8 Appeal2014-009073 Application 11/954, 140 CONCLUSION OF LAW AND DECISION The decision of the Examiner is affirmed. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a) (1). AFFIRMED 9 Copy with citationCopy as parenthetical citation