Ex Parte Chu et al

Patent Trial and Appeal Board

Nov 3, 2016

13675069 (P.T.A.B. Nov. 3, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/675,069 11113/2012
27752 7590 11/07/2016
THE PROCTER & GAMBLE COMPANY
Global IP Services
Central Building, C9
One Procter and Gamble Plaza
CINCINNATI, OH 45202
FIRST NAMED INVENTOR
WenFei Chu
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.
12659 5172
EXAMINER
FLORES JR, DONALD M
ART UNIT PAPER NUMBER
1781
NOTIFICATION DATE DELIVERY MODE
11/07/2016 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 WEN PEI CHU, LYNNE CHERYL HANNEN, and
EMMALYNN SARTIN!
Appeal2015-005297
Application 13/675,069
Technology Center 1700
Before: BRADLEY R. GARRIS, BEYERL YA. FRANKLIN, and
LILAN REN, Administrative Patent Judges.
REN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants 1 appeal under 35 U.S.C. § 134(a) from a rejection of
claims 1-14 and 16-20.2 We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
1 The Procter & Gamble Company of Cincinnati, Ohio is identified as the
real party in interest. (Appeal Brief, filed November 24 2014 ("App. Br."),
1.)
2 Final Rejection mailed May 30 2014 ("Final Act.")
Appeal2015-005297
Application 13/675,069
CLAIMED SUBJECT MATTER
The claims are directed to a "rolled absorbent paper product having an
emboss design pattern visible on an outside layer that facilitates
identification of a manufacturer." (Spec. 2, 11. 7-8.)3 Claims 1, 13 and 20,
reproduced below, are illustrative of the claimed subject matter:
1. A rolled absorbent paper product, said product
compnsmg:
a. an absorbent paper substrate having at least one ply
with an emboss pattern comprising two visually distinct emboss
design elements disposed in a plurality of predetermined,
spaced-apart positions across said ply;
b. said two emboss design elements comprising a first
emboss design element occupying all but at least one of said
positions in a first repeating pattern, and a second emboss design
element occupying said at least one of said positions not
occupied by said first emboss design element;
c. said second emboss design element being a word
comprising a line emboss defining line-embossed letters wherein
each line-embossed letter comprises an open area within said line
emboss; and,
d. said first and second emboss design elements each
have an emboss area of from about 7% to about 25% and a
difference in emboss area relative to each other of less than
about 10%.
3 Application 13/675,069, Absorbent Paper Product Having Source
IdentifYing Emboss Element, filed December 13 2012. We refer to the
'"069 Specification," which we cite as "Spec."
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Application 13/675,069
13. A rolled absorbent paper product, said product
compnsmg:
a. an absorbent paper having a plurality of individual
sheets each comprising at least one ply having an emboss pattern
comprising two visually distinct emboss design elements
disposed in a plurality of predetermined, spaced apart positions
across said ply, wherein adjacent of said individual sheets are
separated by a line of weakness;
b. said two emboss design elements comprising a first
emboss design element occupying all but at least one of said
positions in a first repeating pattern, and a second emboss design
element occupying said at least one of said positions not
occupied by said first emboss design element;
c. said second emboss design element being a word
comprising letters; and,
d. wherein said second emboss element at least
partially traverses at least one said line of weakness.
20. A rolled absorbent paper product, said product
compnsmg:
a. a multi-ply absorbent paper having a plurality of
individual sheets each comprising at least one ply having an
emboss pattern comprising two visually distinct emboss design
elements disposed in a plurality of predetermined, spaced-apart
positions across said ply, wherein adjacent of said individual
sheets are separated by a line of weakness;
b. said two emboss design elements comprising a first
emboss design element occupying all but at least one of said
positions in a first repeating pattern, and a second emboss design
element occupying said at least one of said positions not
occupied by said first emboss design element;
c. said second emboss design element being one of a
logo, trademark, or brand name identifying a manufacturer or
marketer of said rolled absorbent product, said second emboss
design element comprising line-embossed letters wherein each
line-embossed letter comprises an open area within said line
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Application 13/675,069
emboss, said line-embossed letters being comprised of line
embossments having no MD oriented letter segments; and,
d. wherein said rolled absorbent paper product
comprises a plurality of second emboss design elements that
each at least partially traverse one of said lines of weakness and
at least one second emboss design element that does not traverse
one of said lines of weakness.
(Claim Appendix, App. Br. 15, 17-18, 19-20 (emphases added).)
REFERENCES
The prior art references relied upon by the Examiner in rejecting the
claims on appeal are:
Schulz '873
Schulz '608
Schulz '057
Kershaw
Maciag
Mellin
CA 2 835 873
us 4,659,608
us 5,436,057
US 6,348,131 Bl
US 2004/0258886 Al
US 2010/0294445 Al
REJECTIONS4
October 31, 2000
Apr. 21, 1987
July 25, 1995
Feb. 19,2002
Dec. 23, 2004
Nov. 25, 2010
Claims 13, 14, 16-19 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Schulz '608 in view of Maciag. (Final Act. 5.)5
Claims 1-12 and 20 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Schulz '608 in view of Maciag and Kershaw, further
evidenced by Schulz '873, Mellin, and Schulz '057. (Final Act. 8.)
Claims 1-3 and 5-10 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Schulz '057 in view of Maciag. (Final Act. 18.)
4 All rejections under 35 U.S.C. § 102(b) has been withdrawn. Examiner's
Answer mailed April 10 2015 ("Ans."), 12.
5 Claim 15 has been with drawn and the rejection of claim 15 is therefore
moot. (See Ans. 12.)
4
Appeal2015-005297
Application 13/675,069
Claim 136
OPINION
The Examiner finds that Figure 1 of Schultz '608 (reproduced below)
discloses every element of claim 13 except a "second emboss design element
being a word comprising letters" for which the Examiner cites Maciag.
(Final Act. 5.)
Figure 1 of Schultz '608 illustrates an absorbent paper 10 having "a
pattern of identical bosses 17." (3:16-17.) The Examiner finds that Figure 1
illustrates at least two different "shape/profile[s]" 17. (Ans. 13.) The
6 Consistent with the provisions of 37 C.F.R. § 41.37(c)(l)(iv) (2013) and
Appellants' argument, claims 14, 16-19 stand or fall with claim 13 with
regard to the rejection under 35 U.S.C. § 103(a) over Schulz '608 in view of
Maciag. (App. Br. 9.)
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Application 13/675,069
Examiner finds that Figure 1 illustrates that one of the shapes/profiles 17 "at
least partially traverses at least one said line of weakness" which is line 13,
as recited in claim 13. (Final Act. 5.)
Based on Maciag's teaching that an "embossed image ... comprises
any perceptible pattern" which "may include ... words," the Examiner finds
that a skilled artisan would have combined the references to have "an
absorbent article with embossments of words and images in a themed
relationship." (Final Act. 6-7 (citing Maciag ,-i,-i 4, 33).)
Appellants argue that the Examiner erred because Schultz '608 does
not teach or suggest "an emboss design element that differs in visual
appearance from the first emboss design element." (App. Br. 6.) While
acknowledging that "certain of Schultz' emboss designs do, in fact, cross a
perforation line," Appellants argue that this prior art teaching "is
inconsequential" as "such a condition is inevitable with repeating design of a
closely spaced single design element as shown in Schultz[.]" (Id. at 7.)
The '069 Specification provides that "visually distinct emboss design
elements are design elements that can be visually distinguished as discrete,
separate design elements." (Spec. 4:6-7.) The '069 Specification therefore
does not limit the claim term "two visually distinct emboss design elements"
to two elements "that differ[] in visual appearance" as Appellants assert.
(Compare App. Br. 6.) All claim 13 recites is "two emboss design elements"
that "can be visually distinguished as discrete, separate design elements" as
provided by the '069 Specification. (Spec. 4:6-7.)
The '069 Specification further provides that "virtually any emboss
design element can be utilized for either first or second emboss design
elements." (Spec. 4: 11-12.) To the extent that Appellants consider
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Application 13/675,069
component 17 in Schultz '608 "a single design element" (App. Br. 6), prior
art component 1 7 includes at least two "visually distinctive" shapes or
profiles as illustrated in Figure 1. No reversible error has been identified in
the Examiner's finding in this aspect of the obviousness analysis.
Appellants also argue that Schulz '608 fails to teach that its product
may be used to "help[] ensure that the manufacturer's and/or marketers'
identification is reinforced as the user is reminded of the source of the rolled
absorbent product." (App. Br. 7.) Claim 13, however, does not recite that
either "emboss element" may be used to identify the source of the product.
In any event, "[i]t is well settled that the recitation of a new intended use for
an old product does not make a claim to that old product patentable." In re
Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997).7
Appellants next argue that because Maciag teaches "printed" letters
instead of embossed ones, a skilled artisan would not have combined the
references. (App. Br. 8.) According to Appellants, "it is impossible for the
skilled person to be taught or motivated to modify Schulz to have
embossments of letters and words." (Id.) Appellants, however, do not
identify reversible error in the Examiner's finding that Maciag discloses
various "embossed images" having "any perceptible pattern in the tissue-
towel substrate." (Maciag ,-i 33; see also Reply 4.) Appellants do not
7 Moreover, any differences between the claimed invention and the prior art
are no more than an aesthetic design change. See MPEP 2144.04(1).
Appellants have not argued that this aesthetic difference has a mechanical
function (see App. Br. 7), and it therefore does not patentably distinguish the
claimed invention from the prior art. See In re Seid, 161 F .2d 229, 231
( CCP A 194 7) (finding that a particular shape and arrangement lacks
mechanical function and therefore cannot be relied on to distinguish
structural claims over the prior art).
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identify reversible error in the Examiner's finding that Maciag discloses a
"relationship of images and patterns" such as "a specific business or group
of business" including "the trademarks of ... products, and images
representing those products .... " (Maciag ,-i 44; see also Reply 4.)
"If a person of ordinary skill can implement a predictable variation [of
a known work],§ 103 likely bars its patentability." KSR Int'! Co. v. Teleflex
Inc., 550 U.S. 398, 417 (2007). Appellants in this case have not provided
sufficient evidence to show that the Examiner reversibly erred in analyzing
the combined prior art teachings.
For the first time in the Reply Brief, Appellants raise the argument
that the combined prior art teachings do not teach or suggest a product
having "two emboss design elements comprising a first emboss design
element occupying all but at least one of said positions in a first repeating
pattern, and a second emboss design element occupying said at least one of
said positions not occupied by said first emboss design element" as recited
in claim 13. (Reply. 2-3.)8
An argument raised for the first time in a Reply Brief can be
considered waived if Appellants do not explain why it could not have been
raised previously. 37 C.F.R. § 41.4l(b)(2) (2013); see also Ex parte
Nakashima, 93 USPQ2d 1834 (BPAI 2010) (informative) (explaining that
arguments and evidence not timely presented in the principal Brief will not
be considered when filed in a Reply Brief, absent a showing of good cause
explaining why the argument could not have been presented in the Principal
Brief); Ex parte Borden, 93 USPQ2d 1473, 1477 (BPAI 2010) (informative)
("Properly interpreted, the Rules do not require the Board to take up a
8 Reply Brief dated April 10, 2015 ("Reply").
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Application 13/675,069
belated argument that has not been addressed by the Examiner, absent a
showing of good cause.").
Appellants here have not provided an explanation as to why the
argument was not raised previously. In any event, Appellants do not provide
factual evidence to explain why Schulz '608 fails to meet this limitation of
the claim. (See Reply 3 (stating, without citation to the record, that the prior
art component 17 "does not replace the so-called first design element ... and
is not positioned where the first element is expected to be").) No reversible
error has been identified in the Examiner's findings here. In re Jung, 637
F.3d 1356, 1365 (Fed. Cir. 2011) ("[I]t has long been the Board's practice to
require an applicant to identify the alleged error in the examiner's rejections
.... ").
Claim 1
The Examiner issued two obviousness rejections of claim 1: a first
obviousness rejection over Schulz '608 in view of Maciag, and Kershaw,
further evidenced by Schulz '873, Mellin, and Schulz '057 ("first
obviousness rejection of claim l ") and a second obviousness rejection over
Schulz '057 and Maciag ("second obviousness rejection of claim l"). 9 We
address each rejection in tum.
For the first obviousness rejection of claim 1, the dispositive issue is
whether the combined prior art teachings would have rendered a paper
product having "first and second emboss design elements each hav[ing] an
9 Consistent with the provisions of 37 C.F.R. § 41.37(c)(l)(iv) (2013) and
Appellants' arguments, claims 2-12 stand or fall with claim 1 with regard to
the first obviousness rejection of claim 1 whereas claims 2, 3, and 5-10
stand or fall with claim 1 with regard to the second obviousness rejection of
claim 1. (App. Br. 10, 14.)
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emboss area of from about 7% to about 25% and a difference in emboss area
relative to each other of less than about 10%" as recited in claim 1 obvious.
The Examiner acknowledges that the combined teachings of Schultz
'608 and Maciag do not disclose the claim limitation at issue and finds that
Kershaw teaches an absorbent paper product having "an emboss pattern
comprising a plurality of design elements, wherein up to about 50 percent of
the surface area of said absorbent sheet is embossed." (Kershaw 11 :34-36;
compare App. Br. 9 with Final Act. 10.) The Examiner also finds that
Schultz '873 discloses a paper product having up to about half of the total
area embossed. (Ans. 18.) The Examiner finds that Mellin discloses a
substrate having two emboss elements making up more than 7% of the
embossed area. (Id.)
The Examiner further cites Schultz '057 which discloses, among
others, a paper product having a "stitchlike debossment" and "a signature
debossment" such as a "tulip" design "inside the overlapping pattern of the
stitchlike debossment." (Schultz '057 4:34--40.) Schultz '057 discloses
various arrangements of the debossments. In one embodiment, for example,
"the stitchlike debossment should have an area of less than 10%" whereas
the "signature debossment should have an area of less than 5%." (5:4-7.)
Appellants argue that a skilled artisan would not have found the
recited "emboss area of from about 7% to about 25%" and the difference of
"less than 10%" obvious in light of the teaching in Kershaw. (App. Br. 9.)
Appellants, however, do not address the combined prior art teachings
including those of Schultz '057, Schultz '873, and Mellin. (App. Br. 9-10;
Reply 5-6.)
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Because Appellants do not address the combined prior art teachings,
no reversible error has been identified in the Examiner's findings here.
For the second obviousness rejection of claim 1, Appellants argue that
Schultz '057 does not teach or suggest a paper product having "two visually
distinct emboss design elements disposed in a plurality of predetermined,
spaced-apart positions across said ply." (App. Br. 12.)
Appellants, however, do not point to evidence in the record in support
of their argument. Appellants do not dispute the Examiner's finding that
Schultz '057 discloses "an embossed tissue having dots arranged in a
diamond pattern around embossed flowers." (Compare Ans. 18 with Reply
3.) Appellants repeat the same argument for claim 13 with regard to
teaching of Maciag which we have addressed supra. No reversible error has
been identified here. Jung, 637 F.3d at 1365 ("[I]t has long been the Board's
practice to require an applicant to identify the alleged error in the examiner's
rejections .... ").
Claim 20
The dispositive issue here is whether the combined prior art teachings
would have rendered a paper product having "plurality of second emboss
design elements that each at least partially traverse one of said lines of
weakness and at least one second emboss design element that does not
traverse one of said lines of weakness" as recited in claim 20 obvious.
Appellants' argument with regard to claim 20 mirrors that for claim
13. (Compare App. Br. 10-12 with App. Br. 7-8.) For those reasons
provided with regard to claim 13, no reversible error has been shown here.
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DECISION
The Examiner's rejections of claims 1-14 and 16-20 are affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § l.136(a). See 37 C.F.R.
§ l.136(a)(l )(iv).
AFFIRMED
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