11197039 (B.P.A.I. Sep. 19, 2007)

Ex Parte Edelman et al

Board of Patent Appeals and InterferencesSep 19, 2007

11197039 (B.P.A.I. Sep. 19, 2007)

The opinion in support of the decision being entered today is not binding precedent of the Board. UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES ____________ Ex parte ELISE TOMSIK EDELMAN, MARY ELLEN RALEIGH, SUSAN TYLER EDE, MARTY ALLEN VANDERSTELT, THOMAS JACKSON KIRK, and GAYLE MARIE FRANKENBACH ____________ Appeal 2007-3545 Application 11/197,039 Technology Center 1700 ____________ Decided: September 19, 2007 ____________ Before BRADLEY R. GARRIS, THOMAS A. WALTZ, and CATHERINE Q. TIMM, Administrative Patent Judges. GARRIS, Administrative Patent Judge. DECISION ON APPEAL Appellants appeal under 35 U.S.C. § 134 the final rejection of claims 1-18. We have jurisdiction over the appeal pursuant to 35 U.S.C. § 6(b). We AFFIRM. Appeal 2007-3545 Application 11/197,039 INTRODUCTION Appellants claim an article comprising, in relevant part, a laundry cleaning composition comprising a perfume, a container releasably containing the composition, a label attached to the container, and “one or two natural scent identifiers located on the label” (claim 1). Appellants indicate that the advantage of having the scent identifiers on the label is to provide consumers with a scent experience without requiring the consumer to open the laundry cleaning composition (Specification 1-2). Claim 1 is illustrative: 1. An article comprising: a) a laundry cleaning composition comprising a perfume; b) a container releasably containing the composition, wherein at least 20% of the total surface area of the container is clear or translucent; c) at least one label attached to the container; d) one or two natural scent identifiers located on the label. The Examiner relies on the following prior art references as evidence of unpatentability: Bacon US 5,652,206 Jul. 29, 1997 Wang US 2002/0083534 A1 Jul. 4, 2002 Cooper US 6,492,322 B1 Dec. 10, 2002 2 Appeal 2007-3545 Application 11/197,039 The rejections as presented by the Examiner are as follows:1 1. Claims 1-10 and 17-18 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Wang. 2. Claims 11 and 12 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Wang in view of Cooper. 3. Claims 13-16 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Wang in view of Cooper and Bacon. The Examiner contends that the printed matter, “one or two natural scent identifiers located on the label,” is not functionally related to the substrate and, therefore, is not entitled to patentable weight in assessing whether the claimed article is patentable over the prior art (Answer 4). Appellants argue claim 1 only. Accordingly, dependent claims 2-18 stand or fall with claim 1. OPINION 35 U.S.C. § 103(a) REJECTION OVER WANG Appellants argue that the written content (i.e., printed matter) of the label is entitled to patentable weight because the printed matter is functionally related to the substrate (Br. 4). Appellants argue that a new and unobvious functional relationship exists between the written content (i.e., printed matter) of the label and the substrate article because such written content (i.e., printed matter) performs an educational function of providing the consumer a positive scent experience (Br. 5-6). Appellants further argue that the claim feature “one or two natural scent identifiers located on the 1 The Examiner rejected claims 1-18 under the judicially created doctrine of obviousness-type double patenting over copending application 11/059,099. Appellants have not contested this rejection and it is not on appeal (Br. 3). 3 Appeal 2007-3545 Application 11/197,039 label” is not disclosed by Wang (Br. 7). Appellants argue that the Examiner’s failure to give “patentable weight” to the “scent identifiers” on label indicates that the Examiner did not read the claim as a whole (Br. 9). We have considered all of Appellant’s arguments and find them unpersuasive for the reasons below. Generally, where the printed matter is not functionally related to the substrate, the printed matter will not distinguish the invention from the prior art in terms of patentability. In re Ngai, 367 F.3d 1336, 1339, 70 USPQ2d 1862, 1864 (Fed. Cir. 2004) citing In re Gulack, 703 F.2d 1381, 1385, 217 USPQ 401, 404 (Fed. Cir. 1983). The dispositive issue presented in this appeal is whether the printed matter of the label (i.e., one or two natural scent identifiers) is functionally related to the substrate. As the Examiner indicated in the Answer, Appellants’ position is that the substrate is composed of the cleaning composition and the container to which the label is affixed (Answer 5). Appellants contend that since the “natural scent identifiers” on the label are indicative of the scent of the composition, a functional relationship exists between the composition and the written content (i.e., printed matter) of the label. Appellants have not provided any authoritative support for the theory that, when a functional relationship exists between printed matter (i.e., scent identifiers) and a composition, the printed matter will distinguish the invention from the prior art in terms of patentability. The authorities cited by Appellants all relate to a functional relationship between the printed matter and the substrate on which the printed matter is present (i.e., the label or container) (Br. 4-5). See, Ngai, 367 F.3d at 1338-39, 70 USPQ2d at 1863- 4 Appeal 2007-3545 Application 11/197,039 64; Gulack, 703 F.2d at 1386, 217 USPQ at 405. See also, In re Miller, 418 F.2d 1392, 1395-96, 164 USPQ 46, 48-49 (CCPA 1969). Furthermore, it is unclear whether any relationship between the claimed printed matter and the composition is a functional relationship. Accordingly, we determine that there is no functional relationship between the printed matter (i.e., “one or two natural scent identifiers located on the label”) and the label or the container (i.e., substrate). Because no functional relationship exists between the printed matter (i.e., “one or two natural scent identifiers”) and the label or container (i.e., substrate), the claim recitation “one or two natural scent identifiers located on the label” will not distinguish the claimed invention from the prior art in terms of patentability. Ngai, 367 F.3d at 1339, 70 USPQ2d at 1864; Gulack, 703 F.2d at 1385, 217 USPQ at 404. Because no functional relationship exists between the printed matter (i.e. “scent identifiers) and the substrate, all of Appellants’ arguments directed thereto must fail.2 Regarding Appellants’ argument that the “scent identifier” claim feature is not disclosed by Wang, such is not relevant to patentability because the “scent identifier” printed matter will not impart patentability to the claims. Id. Therefore, we affirm the Examiner’s § 103(a) rejection of claims 1- 10, 17 and 18 over Wang. 2 Claims 17 and 18 recite a kit and a method of cleaning fabric, respectively, which include the “composition of claim 1.” Accordingly, Appellants’ arguments regarding the argued functional relationship between the printed matter (i.e., “the one or two natural scent identifiers”) and the substrate (i.e., label or container) have no relevancy to claims 17 and 18, which do not require the label or the printed matter. 5 Appeal 2007-3545 Application 11/197,039 THE REMAINING § 103(a) REJECTIONS Regarding the § 103(a) rejection of claims 11 and 12 over Wang in view of Cooper and the § 103(a) rejection of claims 13-16 over Wang in view of Cooper and Bacon, Appellants contend that the “scent identifier” claim feature is not disclosed by Wang, Cooper or Bacon (Br. 9-10). However, as we noted above, the printed matter “scent identifier” claim feature is not functionally related to the label or the container (i.e., the substrate) and so will not distinguish the claimed invention from the prior art in terms of patentability. Ngai, 367 F.3d at 1339, 70 USPQ2d at 1864; Gulack, 703 F.2d 1385, 217 USPQ at 404. Accordingly, we affirm the Examiner’s § 103(a) rejection of claims 11 and 12 over Wang in view of Cooper or the § 103(a) rejection of claims 13-16 over Wang in view of Cooper and Bacon. DECISION The Examiner’s decision 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)(iv). AFFIRMED tc/ls The Procter & Gamble Company Intellectual Property Division- West Bldg. Winton Hill Business Center- Box 412 6250 Center Hill Avenue Cincinnati, OH 45224 6