Ex Parte Gann-Fetter et al

Patent Trial and Appeal Board

Dec 1, 2016

13928533 (P.T.A.B. Dec. 1, 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.
13/928,533 06/27/2013 Mildred Frances Gann-Fetter 12982 9690
27752 7590 12/05/2016
THE PROCTER & GAMBLE COMPANY
Global IP Services
Central Building, C9
One Procter and Gamble Plaza
CINCINNATI, OH 45202
EXAMINER
HALPERN, MARK
ART UNIT PAPER NUMBER
1741
NOTIFICATION DATE DELIVERY MODE
12/05/2016 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 THE PROCTER & GAMBLE COMPANY
Appeal 2015-006428
Application 13/928,533
Technology Center 1700
Before LINDA M. GAUDETTE, GEORGE C. BEST, and AVELYN M. ROSS,
Administrative Patent Judges.
GAUDETTE, Administrative Patent Judge.
DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s decision2
finally rejecting claims 1—16 under 35 U.S.C. § 103(a) as unpatentable over Baggot
et al. (US 2008/0264280 Al, pub. Oct. 30, 2008 (“Baggot”)) alone, or in
combination with Nickel et al. (US 2007/0137813 Al, pub. June 21, 2007
(“Nickel”)). We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 Appellant is also the real party in interest. Appeal Brief filed Jan. 20, 2015
(“App. Br.”), 1.
2 Final Office Action mailed Aug. 21, 2014 (“Final Act.”).
Appeal 2015-006428
Application 13/928,533
The invention relates to an improved technique for imparting printed designs
to sheet products formed from web materials. See Specification filed June 27,
2013 (“Spec.”), 2:5—7. Claim 1 is representative of the invention and is
reproduced below:
1. A system for manufacturing pluralities of consecutive sheets
bearing successively varying arrangements of design features,
comprising:
a pattern imparting roller having a radius r, a rotation axis, an
outer circumference 27tr, and a substantially cylindrical acting surface
reflecting features of a design pattern thereon, a machine direction
tangent to the acting surface and perpendicular to the rotation axis,
and a cross direction parallel to the rotation axis, the acting surface
having an axial acting surface length AL measured along the cross
direction, the design pattern having a machine direction repeat length
RLM; and
a separating mechanism disposed downstream of the pattern
imparting roller, configured to effect repeated and spaced complete
cutting, or repeated and spaced partial cutting, perforating or scoring
along separation lines, between portions of a material web, the
separation lines being spaced apart on the web by sheet length SL
measured along the machine direction,
wherein SL is less than RLM; and
wherein the design pattern has the following attributes:
the design pattern has no linear, continuous unadorned
pathway along the cross direction that has a pathway
width greater than 7 percent of SL;
the design pattern includes series of similarly-shaped
design elements along lines that are neither perpendicular
nor parallel with the machine and cross directions; and
any image in the design pattern of all or a portion of a
person, animal, anthropomorphic character or cartoon
character including at least a head and/or face of the
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Application 13/928,533
same, has an Occupied Rectangular Area of no more
than 10 percent of the average sheet area.
App. Br., Claims App’x, A-l—A-2 (emphasis added). Claim 9, the only other
independent claim on appeal, differs from claim 1 primarily in that where one
claim recites the “cross direction” the other claim may recite the “machine
direction,” and vice versa. Compare id. (claim 1) with id. at A-2—A-3 (claim 9);
see App. Br. 6—7.
Appellant does not dispute the Examiner’s finding (see Final Act. 2—3) that
Baggot discloses the invention as claimed in claims 1 and 9 with the exception of a
design pattern on the pattern imparting roller that has the attributes of (1) “no
linear, continuous unadorned pathway along the cross direction [(claim 1) or the
machine direction (claim 9)] that has a pathway width greater than 7 percent of
[sheet length] SL” and (2) “any image in the design pattern of all or a portion of a
person, animal, anthropomorphic character or cartoon character including at least a
head and/or face of the same, has an Occupied Rectangular Area of no more than
10 percent of the average sheet area” (claims 1 and 9). See generally, App. Br. 6—
9. Appellant argues, however, that the facts and reasons relied on by the Examiner
are insufficient to support a finding that one of ordinary skill in the art would have
modified Baggot’s pattern imparting roller to include a design pattern having these
attributes. See id. at 7—9.
Rejection of claims 1—16 as unpatentable over Baggot
The Examiner determines the argued claim language does not recite
structural limitations, and that Baggot’s pattern imparting roller and separating
mechanism would be capable of imparting to a sheet a design pattern having the
attributes recited in claims 1 and 9. Final Act. 3; see also Ans. 4—5. In response to
Appellant’s assertion that the Examiner dismissed the argued claim language as
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Application 13/928,533
unnecessary to the patentability analysis, the Examiner, in the Answer, explains
that “[features relating only to ornamentation which have no mechanical function
cannot be relied upon to patentably distinguish the claimed invention from the
prior art” (Ans. 5 (citing In re Seid, 161 F.2d 229 (CCPA 1947)), and directs us to
page 1, lines 25—27, of the Specification as support for the Examiner’s
determination that the argued claim language relates to decorative, rather than
structural features (id.).
In the Reply Brief, Appellant directs us to page 11, line 3, through page 14,
line 11, of the Specification in support of its contention that the argued claim
language recites structural limitations. Reply Brief filed June 18, 2015 (“Reply
Br.”), 3^4. With respect to the recitation in claims 1 and 9 that “the design pattern
has no linear, continuous unadorned pathway along the cross direction [(claim 1)
or the machine direction (claim 9)] that has a pathway width greater than 7 percent
of [sheet length] SL,” Appellant argues, more specifically, that this language is a
functional limitation because a pathway having “the specified size can ‘help reduce
or eliminate periodic, abrupt changes in the forces imposed on the roller surface
and transferred through the roller to its axle and/or bearing mechanism, thereby
reducing equipment wear and/or the need for shock-absorbing equipment.’” Reply
Br. 3 (quoting Spec. 12:19-22).
We have reviewed the argued claim language in light of the Specification
and agree with the Examiner that it does not recite structural limitations. The
disclosure in the Specification cited by Appellant as describing the function of a
continuous unadorned pathway having the specified width, pertains to design
patterns imparted to a web by an embossing roller. Spec. 12:19-22; see also id. at
13:9-11. Claims 1 and 9 do not include explicit language that limits the pattern
imparting roller to an embossing roller, nor do we find support in the Specification
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Application 13/928,533
for limiting claims 1 and 9 to require an embossing roller. See, e.g., Spec. 6:2—3
(“As it passes through the nip between rollers 100 and 101, the web material is
imparted with printed, molded or embossed features 11 of the decorative design.”).
Based on a review of the Specification, it is clear that the claim language
pertaining to the continuous unadorned pathway relates to ornamental features:
“effective for avoiding the appearance of a natural pathway for the location of a
separation line, i.e., a division between sequential sheets” (id. at 13:4—9 (emphasis
added)). With respect to the claim language in the last paragraph of each of claims
1 and 9, the Specification states:
It is believed that, where the image has an Occupied Rectangular Area
that is no more than 10 percent of the sheet area for any particular
such image present in the pattern, the likelihood that the sheet on
which it partially or entirely falls will be perceived as haphazardly cut
with respect to the pattern is greatly reduced.
Id. at 14:2—5 (emphasis added). This claim language, therefore, likewise relates to
ornamental features.
In sum, having considered the argued claim language in light of the
Specification, we agree with the Examiner that it is not a recitation of structural
limitations, and cannot be relied upon to patentably distinguish the claimed
invention from the prior art. Accordingly, we sustain the Examiner’s rejection of
claims 1—16 as unpatentable over Baggot.
Rejection of claims 1—16 as unpatentable over Baggot and Nickel
The Examiner determines that, even if the argued claim language is a
recitation of structural limitations, the invention as recited in claims 1 and 9 would
have been obvious based on the combined teachings of Baggot and Nickel. See
Final Act. 3^4. Specifically, the Examiner finds Nickel discloses a pattern
imparting roller having raised pattern elements that can “form any desired
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decorative pattern in [a] tissue web.” Id. at 3 (quoting Nickel 1142). The
Examiner further finds “[t]he pattern may include a combination of reticulated
pattern and discrete shapes . . . [and] covers between about 1 % and about 80% of
the surface area of the sheet.” Id. (citing Nickel 1142). The Examiner finds one
of ordinary skill in the art would have modified Baggof s pattern imparting roller
to include any of the patterns described in Nickel, including a pattern having the
attributes recited in claims 1 and 9, based on Nickel’s disclosure that a pattern
imparting roller can be used to apply a wide variety of patterns to a tissue web.
See id. at 3^4; Ans. 5—6.
Appellant argues “there is no particular teaching in Nickel. . . that would
have led one to select particular design pattern features to combine them with
and/or modify design features of Baggot. . ., so as to arrive at [the] claimed
inventions.” App. Br. 8.
Nickel discloses that the pattern applied to a tissue web can be any desired
decorative pattern. Nickel 1142. Nickel explicitly discloses that the pattern may
comprise a combination of a reticulated pattern and discrete shapes such as
flowers, symbols, and leaves {id.), and that the discrete shapes can be arranged in a
random fashion {id. 1143). Based on Nickel’s disclosure that such pattern may
cover as much as about 80% of the surface area of individual sheets (Nickel 1142),
we find the Examiner had a reasonable basis for concluding that Nickel suggests a
design pattern having the attributes recited in the final wherein clause of claims 1
and 9. We note that, to the extent the recitation in the final paragraph of each of
claims 1 and 9 is considered a structural limitation, it limits the scope of the claims
only when the design pattern is “a person, animal, anthropomorphic character or
cartoon character” (claims 1 and 9), i.e., it does not limit a pattern in which the
discrete shapes are flowers, symbols, or leaves.
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Baggot discloses that the pattern or design on its pattern imparting roller
may be any aesthetically pleasing design. See Baggot || 24—25. We further find,
therefore, that the Examiner had a reasonable basis for finding the ordinary artisan
would have used Nickel’s pattern comprising a reticulated pattern and randomly
arranged discrete shapes on Baggot’s pattern imparting roller, based on Nickel’s
disclosure that such pattern is aesthetically pleasing when applied to a tissue web
(see Nickel 1142). See Final Act. 3-A; Ans. 5—6.
In sum, we are not persuaded by Appellant’s argument, but find a
preponderance of the evidence on this appeal record supports the Examiner’s
conclusion of obviousness. Accordingly, we sustain the Examiner’s rejection of
claims 1—16 as unpatentable over Baggot and Nickel.
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
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