Ex Parte Clough

Patent Trial and Appeal Board

Feb 2, 2016

12607445 (P.T.A.B. Feb. 2, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/607,445 10/28/2009
23556 7590 02/03/2016
KIMBERLY-CLARK WORLDWIDE, INC,
Patent Docketing
2300 Winchester Rd.
NEENAH, WI 54956
FIRST NAMED INVENTOR
Jane Louise Clough
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.
64501815US01 4591
EXAMINER
MATHEW, FENN C
ART UNIT PAPER NUMBER
3781
MAILDATE DELIVERY MODE
02/03/2016 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 JANE LOUISE CLOUGH
Appeal2013-009846
Application 12/607,445 1
Technology Center 3700
Before STEP AN STAICOVICI, MICHAEL L. HOELTER, and
FREDERICK C. LANEY, Administrative Patent Judges.
ST AI CO VICI, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Jane Louis Clough (Appellant) appeals under 35 U.S.C. § 134(a) from
the Examiner's decision rejecting under 35 U.S.C. § 103(a) claims 1-14 as
unpatentable over Adams (US 5,261,533, iss. Nov. 16, 1993).2 We have
jurisdiction over this appeal under 35 U.S.C. § 6(b ).
According to Appellant, the real party in interest is Kimberly-Clark
Worldwide, Inc. Br. 1 (filed Jan. 16, 2013).
2 The Examiner has withdrawn the rejection under 35 U.S.C. § 103(a)
of claims 15-20 as unpatentable over Adams and Cerveny (US 7 ,845,494
B2, iss. Dec. 7, 2010). See Ans. 6 (mailed May 17, 2013). Accordingly,
claims 15-20 are not part of the instant appeal.
Appeal2013-009846
Application 12/607,445
SUMMARY OF DECISION
We AFFIRM-IN-PART.
INVENTION
Appellant's invention relates to a dual package with a connection that
allows the "packages [to] fold together in facing relation and conceal the
branding during transportation." Spec. i-f 22.
Claim 1, the sole independent claim on appeal, is representative of the
claimed invention and reads as follows:
1. A package comprising,
a first compartment defining a first compartment space
and a second compartment defining a second compartment
space, the first compartment having a first primary brand face
and the second compartment having a second primary brand
face;
a hinge joining the first compartment to the second
compartment, and
a handle bridging the hinge and having a first point of
connection with the first compartment and a second point of
connection with the second compartment, wherein the first and
second primary brand faces are substantially coplanar when the
package is in a display condition, and wherein the first and
second primary brand faces are substantially parallel when the
package is in a transport condition.
ANALYSIS
Claims 1-7
Appellant has not presented arguments for the patentability of claims
2-7 apart from claim 1. Therefore, in accordance with 37 C.F.R.
§ 41.37(c)(l)(iv) (2014), we select claim 1 as the representative claim to
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Application 12/607,445
decide the appeal of the rejection of these claims, with claims 2-7 standing
or falling with claim 1.
The Examiner finds that Adams discloses a package including first
and second compartments joined by hinge 400 and a handle 130, 230,
wherein the package includes a display condition when perforated line 900 is
severed and a transport condition when first and second compartments are
secured together. See Final Act. 2 (citing Adams, Figs. 8, 9). The Examiner
further finds that although Adams discloses the use of indicia, Adams fails to
disclose, "first and second primary brand surfaces being coplanar in the
display condition and parallel in the transport position." See id. (citing
Adams, col. 9, 1. 38). Nonetheless, the Examiner concludes that it would
have been obvious to a person of ordinary skill in the art "to modify Adams
with brand graphics as claimed in order to facilitate design choice" because
"rearranging parts of an invention involves only routine skill in the art" and
"the modification is ornamental in nature." See id. at 2-3 (citation omitted).
Appellant argues that (1) Adams fails to disclose a handle and (2) that
the Examiner has not provided an "articulated reasoning with respect to how
the structure of Adams might be altered." See Br. 6.
With respect to the first argument, Appellant explains that Adams' s
interior top portions 130, 230 cannot constitute a handle, as the Examiner
proposes, because they are "merely extensions of interior walls 120, 220"
and furthermore, "are permanently bonded to the carton" and hence, "can in
no way be or be made to be a handle 'suitable for transporting the package."'
Br. 5. We are not persuaded by Appellant's arguments because as the
Examiner correctly finds, Adams discloses an embodiment in Figure 10
employing releasable glue spots 700 that permit handle members 130, 230
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Appeal2013-009846
Application 12/607,445
"capable of being displaced from their respective mating surfaces and
utilized as a handle." Ans. 7. Appellant has not come forth with persuasive
evidence or technical reasoning explaining why Adams's members 130, 230,
collectively or separately, are not capable of being grasped by the hand,3 that
is, do not constitute a "handle," as required by claim 1. Moreover, we note
that in contrast to Appellant's argument; claim 1 does not require "interior
walls." Limitations not appearing in the claims cannot be relied upon for
patentability. In re Self, 671F.2d1344, 1348(CCPA1982).
As to Appellant's second argument, Appellant further argues that
Adams fails to disclose, "primary brand faces" because "[t]he only indicia
disclosed by Adams is on cigarette packs themselves." Br. 6 (emphasis
added). We do not agree with Appellant's position because the Examiner
agrees that Adams discloses indicia on the cigarette packs, but concludes
that it would have been obvious to a person of ordinary skill in the art to
place indicia on Adams' s first and second compartments (cartons) because
"the modification is ornamental in nature." See Final Act. 2-3. The
Examiner is correct that providing indicia on the faces of Adams' s first and
second compartments (cartons) is a matter related to ornamentation that has
no mechanical function and thus cannot be relied upon to patentably
distinguish the claimed invention from the prior art. See Ans. 8; see also In
re Seid, 161F.2d229, 231 (CCPA 1947). Moreover, an artisan must be
presumed to know something about the art apart from what the references
3 Like Appellant, we find that an ordinary and customary meaning of
the term "handle" is "a part that is designed especially to be grasped by the
hand." Compare Br. 5 with Merriam Webster's Collegiate Dictionary (10th
ed. 1997).
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Application 12/607,445
disclose. See Jn re Jacoby, 309 F.2d 513, 516 (CCPA 1962). Here, the
Examiner is correct in that a person of ordinary skill in the art of packages
would have readily understood that providing indicia on Adams' s first and
second compartments (cartons) "is a routine, ordinary practice" (see Ans. 8)
that would facilitate recognition of the product contained in the
compartments (cartons). As such, Appellant does not persuade us of error in
the Examiner's reasoning. Moreover, we note that in contrast to Appellant's
position that Adams has indicia only on the cigarette packages, Adams
specifically discloses pricing indicia on interior walls 120, 220 of first and
second compartments (cartons), respectively. See Adams, col. 2, 11. 34--36.
Accordingly, Adams' s pricing indicia on interior walls 120, 220 of first and
second compartments (cartons), respectively, are parallel in a transport
condition when first and second compartments are secured together by
handle 130, 230 and coplanar in a display condition when perforated line
900 is severed. See Adams, Fig. 9.
In conclusion, for the foregoing reasons, we sustain the rejection
under 35 U.S.C. § 103(a) of claim 1, and claims 2-7 falling with claim 1, as
unpatentable over Adams.
Claims 8-14
With respect to the rejection of claim 8, Appellant argues that the
"Office Action does not mention" a "hinge" and Adams fails to disclose a
"hinge" that is "joined to and in facing relation with the front wall of the first
compartment and joined to and in facing relation with the front wall of the
second compartment." Br. 6.
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Application 12/607,445
In response, the Examiner finds that "Adams discloses a hinge ( 400)
joined to and in facing relation with first and second compartment front
walls (fig. 6)." Ans. 9. More specifically, Adams discloses hinge 400
joined to and in facing relation with bottom walls 110, 210. See Adams, col.
4, 11. 9-21; Figs. 1, 6.
When construing claim terminology in the United States Patent and
Trademark Office, claims are to be given their broadest reasonable
interpretation consistent with the Specification. In re Am. A cad. of Sci.
Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). In this case, although we
appreciate that Appellant has not defined a "front wall" of the first and
second compartments, nonetheless, Appellant's Specification describes a
first compartment having a front wall 12, a back wall 20, a top wall 24, a
bottom wall 28, and side walls 32, 36. See Spec. i-f 23, Fig. 1. In other
words, according to Appellant's Specification, a front wall is different from
a bottom wall. As such, we do not agree with the Examiner's finding that
Adams' s bottom walls 110, 210 constitute front walls, and hence, Adams' s
hinge 400 is not joined to and in facing relation with first and second
compartment front walls, as called for by claim 8. Accordingly, the
Examiner's legal conclusion of obviousness is not supported by facts, and
thus, cannot stand. See In re Warner, 379 F.2d 1011, 1017 (CCPA 1967)
(holding that "[t]he legal conclusion of obviousness must be supported by
facts. Where the legal conclusion is not supported by facts it cannot
stand.").
In conclusion, for the foregoing reasons, we do not sustain the
rejection of claim 8, and dependent claims 9-14, under 35 U.S.C. § 103(a)
as unpatentable over Adams.
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SUMMARY
The Examiner's decision to reject claims 1-14 is affirmed as to claims
1-7 and reversed as to claims 8-14.
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-IN-PART
rvb
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