Ex Parte Fox et al

Patent Trial and Appeal Board

Aug 24, 2017

13886883 (P.T.A.B. Aug. 24, 2017)

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.
13/886,883 05/03/2013 Michael Robert FOX 12867 7220
27752 7590 08/28/2017
THE PROCTER & GAMBLE COMPANY
Global IP Services
Central Building, C9
One Procter and Gamble Plaza
CINCINNATI, OH 45202
EXAMINER
IMPINK, MOLLIE LLEWELLYN
ART UNIT PAPER NUMBER
3788
NOTIFICATION DATE DELIVERY MODE
08/28/2017 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 MICHAEL ROBERT FOX,
MICHAEL DAVID SANDERS, and
JOHN JOSEPH SCHWARTZ
Appeal 2016-005706
Application 13/886,883
Technology Center 3700
Before JILL D. HILL, LEE L. STEPINA, and
ARTHUR M. PESLAK, Administrative Patent Judges.
STEPINA, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Michael Robert Fox et al. (Appellants) appeal under 35U.S.C. § 134
from a rejection of claims 1—6, 8—17, 19, and 20. We have jurisdiction
under 35 U.S.C. § 6(b).
We AFFIRM and enter NEW GROUNDS OF REJECTION under 37
C.F.R. §41.50(b).
Appeal 2016-005706
Application 13/886,883
CLAIMED SUBJECT MATTER
The claims are directed to a package for a liquid laundry detergent.
Claim 1, reproduced below, is representative of the claimed subject matter:
1. A package for a liquid laundry detergent composition
comprising
a container;
a liquid laundry detergent composition contained in said
container; and
a cap removably attached to said container, wherein said
cap comprises:
a base having a base interior and a base exterior
opposing said base interior, said base interior having a periphery;
a vessel wall having an interior surface and an
exterior surface opposing said interior surface, said vessel wall
extending from said periphery to a rim, said interior surface and
said base interior defining a pour volume, said base interior
forming a closed end of said pour volume; and
an in-mold label affixed to at least a portion of said
exterior surface; wherein said in-mold label is textured by a
plurality of high and low regions differing in elevation by more
than about 10 pm.
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Stoesser US 4,906,395
Simone US 2005/0145593 A1
Cushing US 2008/0134092 A1
Chawla US 2011/0311296 A1
REJECTIONS
(I) Claims 1—6, 8—11, 13—17, 19, and 20 are rejected under 35
U.S.C. § 103 as unpatentable over Chawla, Simone, and Cushing.
Mar. 6, 1990
July 7, 2005
June 5, 2008
Dec. 22,2011
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Application 13/886,883
(II) Claim 12 is rejected under 35 U.S.C. § 103 as unpatentable
over Chawla, Simone, Cushing, and Stoesser.
OPINION
Rejection I
The Examiner finds that Chawla discloses most of the limitations of
claim 1, including a container and a cap removably attached to the container,
and that the cap has a vessel wall having an exterior surface. Final Act. 3.
However, the Examiner finds that the exterior surface of Chawla does not
have an in-mold label affixed thereto, and that the in-mold label does not
have a textured surface having a height greater than 10 pm. Id. at 3^4.
Addressing this lack of disclosure in Chawla, the Examiner finds that
Simone discloses an in-mold label, and that Cushing discloses a label with a
textured surface. Id. The Examiner concludes that it would have been
obvious “to modify the cap of Chawla to include an in-mold label covering
as taught by Simone in order to provide a gripping area that has a soft feel
material,” and to provide textured information in the form of braille having a
height that is greater than 10 pm, as taught by Cushing, “in order to allow a
visually impaired person to gather information about the packaging.” Id.
Appellants argue that the rejection is based on “impermissible
hindsight” because the Examiner “fails to identify in Chawla et al. or
Simone et al. any teaching of providing information in any form on the cap.”
Br. 2. According to Appellants, based on the disclosures of Chawla and
Simone, there is no rationale “to reach to Cushing et al.’s label in Braille for
the texture as claimed.” Id. Appellants contend that their Specification
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Application 13/886,883
provides reasoning regarding labeling a cap, and the Examiner’s rejection of
claim 1 impermissibly relies on this information. Id. at 3.
The Examiner responds that the cap label of Simone includes indicia,
and that the given reasoning for modifying Chawla “is taken from Simone:
to provide a cap with a soft fed.” Ans. 2—3 (citing Simone 132) (emphasis
added). The Examiner states that “Cushing teaches a three-dimensional
effect for a label such as Braille,” and that the given reasoning “further
modifying Chawla was taken directly from Cushing: to provide information
for visually impaired persons.” Id. at 3. Hence, according to the Examiner,
the combined teachings of the references “has taken into account only
knowledge which was within the level of ordinary skill at the time the
claimed invention was made, and does not include knowledge gleaned only
from the appellant’s disclosure.” Id.
The Examiner’s reasoning for the proposed modification does not rely
on impermissible hindsight; rather, it is supported by rational underpinnings
found in the prior art. Appellants do not contest that the Examiner’s
proposed modification to Chawla (adding an in-mold label as taught by
Simone, paragraphs 1,21, 25) would provide a soft feel to a gripping surface
of a cap. See Ans. 2. Additionally, Simone teaches that “at least a portion
of the label covering the gripping area will include indicia such as product
information.” Simone 132; see also Ans. 2. The Examiner’s reasoning for
further modifying the combination of Chawla and Simone such that the
indicia is provided in the form of braille, “to allow a visually impaired
person to gather information about the packaging” (Final Act. 4) is
supported by rational underpinnings (see Cushing 172).
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Application 13/886,883
The Examiner’s rejection of claim 1 is affirmed. Appellants make no
separate arguments for dependent claims 2—6, 8—11, 13—17, 19, and 20. Br.
3. Accordingly, these claims fall with claim 1.
Rejection II
Claim 12 recites, in part, that the in-mold label comprises instructions
for using said cap to pretreat a garment. Br. 6 (Claims App.).
The Examiner finds that Stoesser discloses this limitation and
concludes that it would have been obvious to modify the label of Chawla “to
include instructions on how to use the cap [as intended by Chawla which is
to pretreat a stains [sic] on a garment [0022] of Chawla] in order to guide a
user on how to use the cap.” Final Act. 7 (citing Stoesser, col. 2,11. 10-20).
Appellants argue the rejection is based on “impermissible hindsight”
because “Stoesser et al. only discloses providing instructions on the
container that are instructions for using the cap.” Br. 3. According to
Appellants, because the Examiner “fails to identify . . . any teaching of
providing on the in-mold label of the cap instructions for use of the cap . . .
there is no rationale for one skilled in the art considering Chawla et al.,
Simone et al., and Cushing et al. to reach to Stoesser.” Id.
The Examiner responds that the cap label of Chawla as modified by
Simone includes indicia, and that the given reasoning for further modifying
Chawla is “taken directly from Stoesser: to include instructions on how to
use the packaging.” Ans. 3. The Examiner states that the combined
teachings of the references “has taken into account only knowledge which
was within the level of ordinary skill at the time the claimed invention was
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Application 13/886,883
made, and does not include knowledge gleaned only from the appellants’
disclosure.” Ans. 4.
Although we appreciate that the instructions of Stoesser are on the
container and not the cap, Chawla as modified by Simone already includes
indicia on the cap label, and the Examiner is relying on Stoesser for what
information provided by the indicia, namely, instructions on how to use the
packaging. See Ans. 3. Simone discloses that the label includes “indicia
such as product information” (Simone 132; see Ans. 3), and Stoesser
discloses that the information “is indicative of the amount of detergent
necessary to effectively launder clothes” (Stoesser, col. 2,11. 10—12). The
Examiner’s reasoning is adequate inasmuch as it makes sense that a user
would want to know how to use the product in the same way a user would
want to know what the product is, which is information Simone already
provides. Accordingly, we affirm the Examiner’s rejection of claim 12 as
unpatentable over Chawla, Simone, Cushing, and Stoesser.
New Ground of Rejection
Printed Matter
We further note that Appellants’ arguments for claim 12 attempt to
distinguish over the references based on what is written on the recited label,
i.e., the information conveyed by the label. See Br. 3^4.
Our reviewing court has held that non-functional descriptive material
cannot lend patentability to an invention that would have otherwise been
anticipated by the prior art. See In re Ngai, 367 F.3d 1336, 1339 (Fed. Cir.
2004); cf. In re Gulack, 703 F.2d 1381, 1385 (Fed. Cir. 1983) (noting that
when descriptive material is not functionally related to the substrate, the
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Application 13/886,883
descriptive material will not distinguish the invention from the prior art in
terms of patentability); King Pharms., Inc. v. Eon Labs, Inc., 616 F.3d 1267,
1279 (Fed. Cir. 2010) (“[T]he relevant question is whether ‘there exists any
new and unobvious functional relationship between the printed matter and
the substrate.”’ (quoting In re Gulack, 703 F.2d at 1386)).
In Ngai, the Examiner allowed claim 1, which recited a method, and
rejected claim 19, which recited a kit with, among other things, instructions
describing the method of allowed claim 1. Id. at 1337—38. Ngai argued that
the addition of new printed matter to a known product makes the product
patentable, and therefore, the rejection of claim 19 was improper. Id. at
1338. Rejecting Ngai’s argument, the court said, “If we were to adopt
Ngai’s position, anyone could continue patenting a product indefinitely
provided that they add a new instruction sheet to the product. . .. [Ngai is
not] entitled to patent a known product by simply attaching a [new] set of
instructions to that product.” Id. at 1339.
The information on the label recited in claim 12 is similar to the
instructions printed on the kit in Ngai. The particular message, even if
patentable as a method and directed to the use of the underlying substrate as
were the instructions in Ngai, does not necessarily functionally relate to the
substrate. The indicia regarding instructions in claim 12 does not
functionally relate to the substrate (label). Rather, the label performs its
intended function of conveying information regardless of the content of the
message written on the label. Accepting Appellants’ argument would permit
the patentability of labels based on the particular instructions provided on
the label. Accordingly, we construe claim 12 more broadly than did the
Examiner in that it was not necessary for the Examiner to find labels
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Application 13/886,883
including the particular information required in claim 12. In this case, the
particular information displayed on the label does not further patentably
distinguish the label. Rather, finding the structural features recited in claim
1, along with information printed on the recited label, as in Simone, would
have been sufficient.
The combined teachings of Chawla, Simone, and Cushing disclose
labels as recited in claim 1, which are attached to caps. The labels disclosed
by the combined teachings of Chawla, Simone, and Cushing and the labels
recited in claim 12 both convey information to persons using the liquid
laundry detergent package. Therefore, even assuming, for the purposes of
argument, that the information conveyed by the labels taught by the
combined teachings of Chawla, Simone, and Cushing is not the same
information as required by claim 12, claim 12 is still unpatentable over the
combined teachings of Chawla, Simone, and Cushing, and we enter a NEW
GROUND OF REJECTION of claim 12 as unpatentable over Chawla,
Simone, and Cushing on this basis.
DECISION
The Examiner’s rejection of claims 1—6, 8—11, 13—17, 19, and 20 is
affirmed.
The Examiner’s rejection of claim 12 is affirmed, and we also enter a
NEW GROUND OF REJECTION for claim 12.
FINALITY OF DECISION
This decision contains a new ground of rejection pursuant to 37
C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides “[a] new ground of
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Application 13/886,883
rejection pursuant to this paragraph shall not be considered final for judicial
review.”
37 C.F.R. § 41.50(b) also provides:
When the Board enters such a non-final decision, [Appellant],
within two months from the date of the decision, must exercise
one of the following two options with respect to the new
ground[s] of rejection to avoid termination of the appeal as to the
rejected claims:
(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new Evidence relating to
the claims so rejected, or both, and have the matter reconsidered
by the [Ejxaminer, in which event the prosecution will be
remanded to the [Ejxaminer. The new ground[s] of rejection
[are] binding upon the [Ejxaminer unless an amendment or new
Evidence not previously of Record is made which, in the opinion
of the [Ejxaminer, overcomes the new ground[s] of rejection
designated in [this] decision. Should the Examiner reject the
claims, [Appellant] may again appeal to the Board pursuant to
this subpart.
(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same Record. The
request for rehearing must address any new ground of rejection
and state with particularity the points believed to have been
misapprehended or overlooked in entering the new ground of
rejection and also state all other grounds upon which rehearing
is sought.
Further guidance on responding to a new ground of rejection can be
found in the Manual of Patent Examining Procedure § 1214.01.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(l)(iv).
AFFIRMED: 37 C.F.R, $ 41.50(b)
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