Ex Parte Dobler

Patent Trial and Appeal Board

Jan 28, 2016

13136777 (P.T.A.B. Jan. 28, 2016)

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.
13/136,777 08/11/2011 Sven Dobler 7913 7422
77083 7590 01/28/2016
Paul M. Denk
763 South New Ballas
Ste. 305
St. Louis, MO 63141
EXAMINER
AHMED, HASAN SYED
ART UNIT PAPER NUMBER
1615
MAIL DATE DELIVERY MODE
01/28/2016 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 SVEN DOBLER1
__________

Appeal 2013-008701
Application 13/136,777
Technology Center 1600
__________

Before ERIC B. GRIMES, ULRIKE W. JENKS, and TAWEN CHANG,
Administrative Patent Judges.

CHANG, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims to a sampler
for inserting into an article such as a magazine or a mass mailing. The
Examiner has rejected these claims as obvious. We have jurisdiction under
35 U.S.C. § 6(b).
We affirm-in-part.

1 Appellant identifies the Real Parties in Interest as the inventor, Sven
Dobler, and Orlandi, Inc. (Appeal Br. 4.)
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STATEMENT OF THE CASE
According to the Specification, current samplers for distributing wet
fragrance or cosmetic samples in magazines and direct mail have various
drawbacks including, for instance, sample leakage, cost, and manufacturing
complications. (Spec. 3:10–4:4.) The Specification describes a sampler for
insertion into an article such as a magazine or a mass mailing, comprising a
bottom ply, a top ply, and a well formed in the plie(s) for receiving the
sample, where the top and bottom plies are adhered together to form a seal to
substantially prevent sample leakage. (Id. at 6:23–30.)
Claims 1–5 are on appeal. Claims 1 and 5 are the only independent
claims and read:
1. A sampler for inserting into an article such as a magazine
or a mass mailing, said sampler including a cosmetic sample for
application to the face, such as foundation, blush, or rouge, said
sampler including:
a bottom ply having an upper surface and a lower surface, and
an integral wall extending upwardly from said bottom ply upper
surface, said wall having an end surface away from said upper
surface, and said bottom ply wall defining a well receiving a cosmetic
sample therein;
a top ply having an upper surface and a lower surface, and an
integral wall extending downwardly from said top ply bottom surface,
and said wall having an end surface away from said lower surface and
said wall having a height the same as said wall of said bottom ply;
and,
said wall of said top ply aligning with said wall of said bottom
ply and said end surface of said bottom ply wall joining said end
surface of said top ply wall thus sealing said top ply to said bottom ply
liquid tight.

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5. A sampler for inserting into an article such as a magazine
or a mass mailing, said sampler including a cosmetic sample, said
sampler including:
a bottom ply having an upper surface and a lower surface, and a
concave well extending below said bottom ply adapted to receive a
cosmetic sample, said well having a perimeter, and said well integral
upon its entire perimeter to said lower surface and said upper surface;
a top ply having an upper surface and a lower surface, and an
integral wall extending downwardly from said top ply lower surface,
said top ply locating opposite said well, said wall having a bottom flat
surface away from said lower surface; and,
said bottom flat surface of said wall of said top ply abutting
said upper surface of said bottom ply and said wall surrounding said
well thus sealing said top ply to said bottom ply.

(Appeal Br. 16–17 (Appendix (Claims)).
The claims stand rejected as follows:
Claims 1–4 are rejected under 35 U.S.C. § 103(a) as being obvious
over the combination of Greenland2 and Seidler.3
Claim 5 is rejected under 35 U.S.C. § 103(a) as being obvious over
the combination of Greenland and Cloud.4
I.
Issue
The Examiner has rejected claims 1–4 under 35 U.S.C. § 103(a) as
being unpatentable over Greenland and Seidler. The Examiner finds that
Greenland teaches

2 Greenland, U.S. Patent No. 5,622,263, issued Apr. 22, 1997.
3 Seidler, U.S. Patent No. 5,031,647, issued Jul. 16, 1991.
4 Cloud, U.S. Patent No. 5,348,031, issued Sep. 20, 1994.
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a sampler package comprising first and second flexible plies having
inner confronting . . . surfaces and oppositely facing outer surfaces,
reading on the bottom ply . . . and the top ply . . . of claim 1.
[Greenland’s] sample[r] further comprises a wall which defines a . . .
sealed chamber to contain a product sample, reading on the well . . .
and . . . walls formed in the bottom ply . . . and the liquid tight seal of
claim 1.

(Ans. 3 (citations omitted).) The Examiner also finds that Seidler teaches a
sampler applicator comprising
a reservoir surrounded by an inner “upstanding wall” and an outer
“projecting wall[.]” . . . [T]he “projecting wall” . . . corresponds to a
wall extending down from the top ply and the “upstanding wall” . . .
corresponds to a wall extending up from the bottom ply. . . . “[T]he
applicator . . . includes a cover . . . which releasably seals the recessed
portion during storage[,]”[] suggesting the limitation “sealing said
to[p] ply to said bottom ply liquid tight[.]” . . . . [T]he sampler
disclosed by Seidler is configured to have both walls with a flat end
surface. The top ply of Seidler aligns with the wall of the bottom ply
and the end flat surface of the bottom ply wall joins the end flat
surface of the top ply wall to seal the top ply to the bottom ply . . . .

(Id. at 8–9 (citations omitted).)
The Examiner finds that “Greenland . . . does not teach the double
wall of claim 2 or the second wall of claims 3 and 4.” (Ans. 4.) However,
the Examiner finds that the inner and outer walls surrounding the product
sample reservoir in Seidler read on these limitations. (Ans. 4–5.) The
Examiner concludes that a skilled artisan would be motivated to make the
claimed samplers in light of the prior art, since Greenland teaches that the
wall between the plies of its sampler serves to maintain a separation between
the plies when the sampler is subject to compressive forces. (Id. at 4, 6.)
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Appellant contends that Greenland merely disclosed a sampler
comprising two plies with “a small bead of hot melt adhesive . . . around the
perimeter of the . . . sampler” to hold the sampler closed. (Appeal Br. 12.)
Thus, Appellant contends that Greenland and other cited art do not disclose
the sampler structure set forth in claim 1. (Id. at 11–12.) Appellant also
contends that Seidler does not disclose a sample insert that can be used for
mass mailing. (Id. at 12.) Finally, with respect to the dependent claims,
Appellant contends that the cited art does not disclose walls that align with
each other as required by claim 3, that have a crenellated appearance as
required by claim 2, or that are in a collapsed form as required by claim 4.
(Id. at 12–13.)
The issue with respect to this rejection is whether a preponderance of
the evidence of record supports the Examiner’s conclusion that claims 1–4
are obvious in light of Greenland and Seidler.
Findings of Fact
FF1. Greenland relates to “the packaging of free flowing products in
small amounts for distribution as samples or single use unit packages,”
where “‘free flowing’ describes dimensionally unstable products, examples
of which include liquids, gels, powders, etc.” (Greenland 1:5–9.)
FF2. Greenland discloses as one of its general objectives an improved
sampler package that avoids or substantially minimizes the drawbacks
associated with known prior art devices for packaging free flowing cosmetic
and fragrance products. (Id. at 1:13–57.)
FF3. Greenland discloses a sampler package as depicted in its Figure
2, which is reproduced below.
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Greenland’s Figure 2 is a section view of a sampler package in accordance
with its teaching. (Id. at 2:21–24.) Greenland teaches that the sampler
package comprises
superimposed first and second flexible plies 12, 14 respectively
having confronting inner thermoplastic surfaces 12a, 14a and
oppositely facing outer surfaces 12b, 14b. . . . . A narrow bead-
shaped thermoplastic wall 16 surrounds an area between the
confronting thermoplastic surfaces 12a, 14a. The confronting surfaces
12a, 14a are physically separated by and cooperate in a melt-bonded
relationship with the wall 16 to define a hermetically sealed chamber
18 appropriately configured and dimensioned to contain a product
sample 20, which may typically comprise a liquid or gel-like product.

(Id. at 2:37–51; see also id. at 2:6–14.)
FF4. Greenland describes an embodiment of its sampler having
“generally circular bead-like walls 16” and a preferred manufacturing
method in which the thermoplastic material used to form wall 16 is
deposited onto the inner surface 14a of ply 14 before being fused to both
plies 12 and 14. (Id. at 3:33–35, 53–58, 64–67.) However, Greenland
teaches that “the configuration of the continuous walls 16 can be varied to
include, for example, squares, rectangles, triangles, ovals, etc.” and further
teaches that “[t]he molten wall material may alternatively be applied to the
upper surface 12a of the ply 12.” (Id. at 5:66–6:4.)
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FF5. Greenland teaches that
the continuous wall 16 serves to maintain a separation between the
plies 12, 14 under conditions where the sampler package is subjected
to compressive forces exerted by planar surfaces . . . as would be the
case for example if the sampler package were incorporated in a
magazine or other like publication. The physical separation provided
by the wall 16 insures that volume of chamber 18 remains
substantially intact, thereby avoiding any tendency of the product
sample 20 to transmit the compressive forces to the wall 16, and
avoiding forces sufficient to produce a hydraulic rupture.

(Id. at 5:31–43.)
FF6. Seidler discloses “a cosmetic sampler applicator device
particularly suited for use in providing samples of a creamy or gelled
cosmetic such as lipstick, eyeshadow or the like.” (Seidler 1:8–10.)
FF7. Seidler discloses that the sampler applicator includes “a
recessed portion forming a well defined by an upstanding wall extending
around the periphery thereof,” which holds the cosmetic product. (Id. at
1:44–54.)
FF8. Seidler discloses a preferred embodiment where the sampler
applicator includes “a cover member which can be formed . . . through a
living hinge arrangement which releasably seals the recessed portion during
storage.” (Id. at 1:55–59.)
FF9. Seidler discloses embodiments of its sampler applicator where
the upstanding wall has a flat upper surface. (Id. at 3:50–60; 5:58–59; 6:17–
21.)

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Analysis
Claim 1
We find no error in the Examiner’s conclusion that claim 1 is prima
facie obvious in view of Greenland and Seidler. We adopt the Examiner’s
reasons for combining the teachings of the cited references. (Ans. 4.)
Appellant argues that there is no disclosure in Greenland or any other
cited art of the specific structure set forth in claim 1: “a bottom ply, a top
ply, a wall extending down from the top ply, a wall extending up from the
bottom ply, and then both of these walls having a flat end surface that are in
alignment when the plies are brought into closure, with the walls forming a
seal between the walls, and the upper and lower plies, during usage of
applicant’s sampler.” (Appeal Br. 12.)
This argument is not persuasive. Greenland discloses a sampler
comprising two plies that, by virtue of their relative position vis-à-vis each
other, read on the “top ply” and “bottom ply” of claim 1. (FF3.) Greenland
also teaches that the thermoplastic wall material may be deposited on either
ply (i.e., either the top ply or the bottom ply) during the manufacture of its
sampler. (FF4.) Thus, Greenland suggests a wall extending up from the
bottom ply as well as a wall extending down from the top ply. It would be
obvious to a skilled artisan to combine these two walls and to seal the top
and bottom plies by aligning and joining them. KSR Int’l Co. v. Teleflex
Inc., 550 U.S. 398, 416 (“The combination of familiar elements according to
known methods is likely to be obvious when it does no more than yield
predictable results.”).
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Likewise, with respect to the “end flat surface” of the walls extending
from the plies, Greenland discloses that the configuration of the wall of its
sampler may be varied (FF4), while Seidler discloses wells for holding
cosmetic samples that are defined by walls with flat upper surfaces (FF9;
Ans. 9). Finally, we agree with the Examiner that both Greenland and
Seidler teach the sealing limitations of claim 1. (FF3; FF8; Ans. 8–9.)
We also note but are not persuaded by Appellant’s argument that
Seidler is “a cosmetic sampler applicator, of its own structure, and is not a
type of fragrance sampler insert, that can be added into a magazine, or
mailer, for mass mailing, in the first instance.” (Appeal Br. 12.)
“[R]ecitation 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).
In sum, we find that a preponderance of the evidence of record
supports the Examiner’s conclusion that the combination of Greenland and
Seidler renders claim 1 obvious. According, we affirm the rejection as to
claim 1.
Claims 2–4
Claim 2 depends from claim 1 and further requires that the top and
bottom ply walls be “double walls” having a height and “crenellated form.”
(Appeal Br. 16.) Claim 3 also depends from claim 1 and further requires
that the sampler includes “integral second wall[s]” located outwardly of the
first walls on the top and bottom plies, where the second walls “surround[]
the first walls,” “align[] with each other” and have “approximately the same
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height as [the] first walls.” (Id.) We find that the Examiner has not made a
prima facie case as to the obviousness of these claims.
The Examiner finds that both the “double walls” limitation of claim 2
and the first and second walls limitations of claim 3 are disclosed in the
sampler applicators depicted in Seidler’s Figures 18–21 and 27–30. (Ans.
4–5.) We reproduce Seidler’s Figures 28 and 30 below for illustration in our
discussion:5

Figures 28 and 30 depict sectional views of an embodiment of Seidler’s
cosmetic sampler applicator where the cover is, respectively, closed and
open. (Seidler 3:28–37.) According to the Examiner, walls 410 and 430
together read on the “double walls” of claim 2 as well as the first and second
walls of claim 3. (Ans. 4-5.)
As to claim 2, we find the Examiner’s apparent construction of
“double wall” to be unreasonably broad in light of the Specification. While

5 Although Seidler’s Figures 18–21 show a different embodiment, our
discussion below applies equally to the Examiner’s findings with respect to
that embodiment.
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the Specification does not define the term “double wall,” it describes the
samplers in its Figures 8A and 8B as including double walls in contrast with
the samplers with single walls depicted in Figures 7A–7C. (Spec. 14:25–27;
13:28; 14:10, 17.) Figures 7B and 8B of the Specification are representative
and reproduced below:

Figures 7B and 8B show constructions of fragrance samplers that
respectively include single and double walls. (Spec. 7:19–22.) The
Examiner does not provide any explanation how walls 410 and 430 in
Seidler’s Figures 28 and 30, which are not crenellated and have an
appearance much closer to the single walls of Figure 7B of the Specification,
read on the “double walls” of claim 2, particularly since claim 2 requires
both the top and bottom ply walls to be double walls.
Likewise, claim 3 requires “integral second wall[s]” located
outwardly of the first walls on both the top and bottom plies. As shown
most clearly in Seidler’s Figure 30, however, walls 410 and 430, which the
Examiner finds to be the first and second walls respectively, are located on
different “plies” 402 and 404 of the sampler applicator. In other words,
Seidler’s Figure 30 may show a first wall on each of the top and bottom
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plies, but it does not appear to show a second wall on either the top or
bottom ply. Thus, the Examiner also has not shown that Seidler discloses
the second walls required by claim 3.
For the reasons discussed above, we reverse the Examiner’s
obviousness rejections as to claims 2 and 3. Because claim 4 depends from
claim 3 and includes additional limitations, we also reverse the Examiner’s
obviousness rejection as to claim 4. Cf. Hartness Intern. Inc. v. Simplimatic
Engineering Co., 819 F.2d 1100, 1108 (Fed. Cir. 1987) (holding dependent
claim to be a fortiori nonobvious where independent claim was nonobvious).
II.
Issue
The Examiner has rejected claim 5 under 35 U.S.C. § 103(a) as being
unpatentable over Greenland and Cloud. The Examiner finds that Greenland
does not teach the concave well of claim 5. However, the Examiner finds
that Cloud teaches a compact and cosmetic applicator where the compact
comprises
a first recess and a second recess, both of which are curved and
concave. The recesses house a quantity of cosmetic . . . . The
recesses are complementary to an upper outwardly extending ridge
which also comprises a first recess and a second recess, such that the
upper and lower compact members snap-fit closed.

(Ans. 7 (citations omitted).) The Examiner concludes that a skilled artisan
would have been motivated to make the sampler of claim 5 because
Greenland teaches that the wall between the plies of its sampler serves to
maintain a separation between the plies when the sampler is subject to
compressive forces. (Id.)
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Appellant first contends that Greenland and Cloud do not render
claim 5 obvious because Cloud’s compact has two recesses, the second of
which “has a squared edge, or step-down, upon its perimeter that provides a
flat bottom.” (Appeal Br. 13.) Appellant contrasts this structure with the
concave well of claim 5 and further contends that “Cloud with its step-down
recess does not provide an incentive for a smooth transition along the entire
perimeter of a well.” (Id.) Appellant also contends that Cloud is a cosmetic
applicator rather than a sampler and that neither Cloud nor Greenland
disclose using samplers and/or applicators in a mass mailing. (Id. at 14.)
The issue with respect to this rejection is whether a preponderance of
the evidence of record supports the Examiner’s conclusion that claim 5 is
obvious in light of Greenland and Cloud.
Findings of Fact
FF10. Cloud teaches a “cosmetic apparatus for containing and
applying a cosmetic, such as for example, lipstick, blushes, eye liner and eye
shadow, treatment lotions such as moisturizer, and foundation. . . . . [The
apparatus] can function, if desired, as a cosmetic sampler or . . . as a single-
sample cosmetic dispenser.” (Cloud 1:5–15.)
FF11. Cloud teaches a cosmetic apparatus as depicted in Figures 1, 4
and 5, which are reproduced below:
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Cloud’s Figures 1, 4 and 5 respectively depict a perspective view, a top view
and a side view of a cosmetic apparatus in accordance with its teaching. (Id.
at 1:58–60; 2:3–7.) Referring to Figure 1, Cloud discloses:
The clamshell compact members 16 and 17 are provided with a pair of
recesses . . . which are placed in opposition to each other when the
compact member 16, for example, is pivoted or bent or folded towards
and placed into engagement with the compact member 17. More
particularly, . . . member 17 is provided with a first recess . . . 23 [in
which the cosmetic product resides] and a second recess . . . 24. To
interconnect the clamshell compact members 16 and 17 together . . .
member 16 is provided with an outwardly extending ridge 26
surrounding the recesses 21 and 22 and the clamshell compact
member 17 is provided with an inwardly extending recess 27
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surrounding the recesses 23 and 24 and which recess 27 is defined by
an inwardly extending recess wall 28. [T]he ridge 26 and recess wall
28 are . . . designed to . . . provide a temporary snap-fit between the
. . . compact members 16 and 17 . . . .

(Id. at 2:25–48; see also 3:54–55; 3:63–4:4.)
Analysis
Cloud discloses a cosmetic sampler comprising two halves 16 and 17
(FF10, FF11), where the bottom half 17 includes a recess 23 for holding the
cosmetic sample (FF11). Cloud further discloses that the top half 16 has an
“outwardly extending ridge 26,” which abuts bottom half 17 and surrounds
recesses 23 and 24 when the sampler is closed, so as to provide a snap-fit
between the two halves of the sampler. (FF11) Thus, we agree with the
Examiner’s reasoning (Ans. 7) that it would have been obvious to include a
well, as disclosed by Cloud, in Greenland’s cosmetic sampler, in order to
maintain separation between the plies under compressive forces. We find
the Examiner has established a prima facie case of obviousness as to claim
5.
We note but do not find persuasive Appellant’s argument that Cloud
discloses a second recess 24 having a squared edge and a flat bottom and
thus does not disclose a “concave well.” (Appeal Br. 13.) As shown most
clearly in Cloud’s Figure 5, Cloud also discloses recess 23, which is concave
and adapted to hold the cosmetic sample. (FF11.) Similarly, we find
unconvincing Appellant’s argument that “Cloud with its step-down recess
[24] does not provide an incentive for a smooth transition along the entire
perimeter of a well.” (Appeal Br. 13.) As the Examiner points out, the
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Appellant has not pointed to any limitation in claim 5 requiring such a
smooth transition. (Ans. 13–14.)
We likewise note but find unpersuasive Appellant’s additional
arguments that Cloud discloses an applicator rather than a sampler and that
neither Greenland nor Cloud discloses using samplers and/or applicators in
mass mailing. (Appeal Br. 14.) First, Cloud discloses that its apparatus may
function as a “cosmetic sampler or . . . as a single-sample cosmetic
dispenser.” (FF10.) Second, as discussed above, “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 at 1477. Indeed, as the Examiner
points out, mass mailing is at most an example of articles into which the
claimed sampler may be inserted and thus not required in any event
(Ans. 10), and Greenland suggests inserting its samplers into magazines
(FF5).
The evidence of record supports the Examiner’s conclusion that the
combination of Greenland and Cloud renders claim 5 obvious. Accordingly,
we affirm the rejection of claim 5 under 35 U.S.C. § 103(a).
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SUMMARY
We affirm the rejection of claim 1 under 35 U.S.C. § 103(a) as
obvious over the combination of Greenland and Seidler.
We reverse the rejection of claims 2–4 under 35 U.S.C. § 103(a) as
obvious over the combination of Greenland and Seidler.
We affirm the rejection of claim 5 under 35 U.S.C. § 103(a) as
obvious over the combination of Greenland and Cloud.
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).

AFFIRMED-IN-PART

TC