Ex Parte Gehring

Patent Trial and Appeal Board

Jun 10, 2016

12485073 (P.T.A.B. Jun. 10, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/485,073 06/16/2009
27752 7590 06/14/2016
THE PROCTER & GAMBLE COMPANY
Global Patent Services - Legal IP
Central Building, CS
One Procter and Gamble Plaza
CINCINNATI, OH 45202
FIRST NAMED INVENTOR
Debra Gay Gehring
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.
11089M 2540
EXAMINER
NEWAY,BLAINE GIRMA
ART UNIT PAPER NUMBER
3788
NOTIFICATION DATE DELIVERY MODE
06/14/2016 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 DEBRA GAY GEHRING
Appeal2014-004556
Application 12/485,073 1
Technology Center 3700
Before JENNIFERD. BAHR, STEFAN STAICOVICI, and
FREDERICK C. LANEY, Administrative Patent Judges.
ST AI CO VICI, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Debra Gay Gehring (Appellant) appeal under 35 U.S.C. § 134(a) from
the Examiner's Final decision rejecting claims 1-5, 7, and 10-19. 2 We have
jurisdiction over this appeal under 35 U.S.C. § 6(b ).
SUMMARY OF DECISION
We REVERSE and ENTER NEW GROUNDS OF REJECTION
PURSUANT TO OUR AUTHORITY UNDER 37 C.F.R. § 4 l.50(b ).
According to Appellant, the real party in interest is The Procter &
Gamble Company. Br. 1 (filed Nov. 25, 2013).
2 Claims 6, 8, 9, and 20 have been cancelled. Id.
Appeal2014-004556
Application 12/485,073
fNVENTION
Appellant's invention relates to "a reusable wipes container." Spec. 1,
1. 6.
Claims 1 and 16 are independent. Claim 1 is illustrative of the
claimed invention and reads as follows:
1. A reusable container for storing and dispensing wipes, the
wipes container comprising:
a. an upper container shell hingedly joined to a lower
container shell such that the upper and lower shells can be
configured in an open position and a closed position, wherein
an interior storage space is defined by the upper and lower
shells when the shells are in the closed position, the upper and
lower shells being at least partially separable from one another
to enable a user to replenish a depleted wipes supply in the
container;
b. an opening in the upper shell that enables a user to
access at least one wipe stored in the interior storage space, and
a lid connected to the upper shell and disposed over the
opening; wherein
the upper and lower shells are formed of a molded synthetic
polymeric foam material wherein the synthetic polymeric foam
has an Effusivity value at 23° C and 32° C of from 200-300,
according to the Sensory Warm Test, and the lid is formed of a
different polymeric material than the shells.
REJECTIONS
The following rejections are before us for review:
I. The Examiner rejected claims 1-3, 5, 10-12, and 15-18 under 3 5
U.S.C. § 103(a) as unpatentable over Reinke (US 6,910,579 B2, iss.
June 28, 2005), Miller (US 2007/0084742 Al, pub. Apr. 19, 2007),
and Ishikawa (US 5,699,912, iss. Dec. 23, 1997).
II. The Examiner rejected claims 4 and 7 under 3 5 U.S. C. § 1 0 3 (a) as
unpatentable over Reinke, Miller, Ishikawa, and Kolb (US 3,471,356,
iss. Oct. 7, 1969).
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Application 12/485,073
III. The Examiner rejected claim 13, 14, and 19 under 35 U.S.C. § 103(a)
as unpatentable over Reinke, Miller, Ishikawa, and Richardson (US
5,165,567, iss. Nov. 24, 1992).
Rejection I
The Examiner finds that although the combined teachings of Reinke,
Miller, and Ishikawa disclose most of the limitations of independent claims
1 and 16, they fail to disclose the claimed effusivity value range of the
molded polymeric foam material. See Final Act. 3, 7 (transmitted June 24,
2013). Nonetheless, the Examiner finds that "the EVA of Miller would
inherently have the claimed effusivity value" range. See id. at 4 (emphasis
added).
In response, Appellant argues that the Examiner "has not shown that
the EV A foam mentioned by Miller et al. would necessarily have only a
particular range of effusivity (falling within the range of [Appellant's]
claims), or that this would be recognized by a person of ordinary skill in the
art." Br. 7 (emphasis added).
It is well settled that a certain characteristic may in fact occur or be
present in the prior art is not sufficient to establish the inherency of that
result or characteristic. See In re Rijckaert, 9 F.3d 1531, 1534 (Fed. Cir.
1993). "Inherency []may not be established by probabilities or possibilities.
The mere fact that a certain thing may result from a given set of
circumstances is not sufficient." In re Robertson, 169 F.3d 743, 745 (Fed.
Cir. 1999). In this case, Appellant presents persuasive evidence that
"compression molded EV A foam as taught by Miller et al. may have an
[ e ]ffusivity [ v ]alue outside of the recited range." Br. 7. More specifically,
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Application 12/485,073
Appellant correctly points to the Specification and notes that samples 8C,
9C, and 1 lC are compression molded EVA foam, which are like Miller's
material (see Miller, para. 55), and have an effusivity value at 23° C and
32° C outside the claimed range of 200-300. See id. (citing Spec. 16, 11. 3-
4 and Table I). Although we appreciate the Examiner's position that
sample 12C shown in Table I of Appellant's Specification has an effusivity
value overlapping the claimed range (see Ans. 3--4 (transmitted Dec. 24,
2013)), because sample 12C is part of Appellant's Specification, it does not
constitute prior art against the claimed effusivity range subject matter. In re
Pleuddemann, 910 F.2d 823 (Fed. Cir. 1990).
As such, although Miller discloses compression molded EVA foam
material, this does not mean that Miller's molded foam material necessarily
has an effusivity value at 23° C and 32°Cof200-300, as called for by each
of independent claims 1 and 16. Accordingly, the combined teachings of
Reinke, Miller, and Ishikawa fail to disclose explicitly or inherently the
claimed effusivity value range.
The Examiner further attempts to present an alternative position
stating that, "it has been held to be within the general skill of a worker in the
art to select a known material on the basis of its suitability for the intended
use as a matter of obvious design choice." Final Act. 4, 7 (citing In re
Leshin, 277 F.2d 197 CCPA (1960)); see also Ans. 3. However, the
Examiner's mere reliance on In re Leshin amounts to a per se rule that
eliminates the need for fact-specific analysis of claims and prior art and is
legally incorrect. Our precedents do not establish any rules of obviousness,
just as those precedents themselves expressly declined to create such rules.
In re Ochiai, 71F.3d1565, 1572 (Fed. Cir. 1995).
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Application 12/485,073
In conclusion, for the foregoing reasons, we do not sustain the
rejection under 35 U.S.C. § 103(a) of claims 1-3, 5, 10-12, and 15-18
as unpatentable over Reinke, Miller, and Ishikawa.
Re} ections II and III
The Examiner's use of the Kolb and Richardson disclosures
does not remedy the deficiencies of the combined teachings of
Reinke, Miller, and Ishikawa, as discussed supra. See Final Act. 9-
10. Accordingly, for the same reasons as discussed above, we also do
not sustain the rejections under 35 U.S.C. § 103(a) of claims 4 and 7
as unpatentable over Reinke, Miller, Ishikawa, and Kolb and of claims
13, 14, and 19 as unpatentable over Reinke, Miller, Ishikawa, and
Richardson.
NEW GROUND OF REJECTION
We make the following new ground of rejection pursuant to 37 C.F.R.
§ 41.50(b).
Claims 1and16 are rejected under 35 U.S.C. § 103(a) as unpatentable
over Reinke and Ishikawa.
Reinke discloses a reusable wipes container 10 made from injection
molded polypropylene including, an upper shell 14 hingedly connected to a
lower shell 12, together forming an interior storage space 18, wherein the
upper and lower shells are configured in open and closed positions and
partially separable to enable a user to replenish a depleted wipes supply. See
Reinke, col. 2, 1. 57---col. 3, 1. 2; col. 4, 11. 39-40; and Fig. 1. Reinke further
discloses an opening 20 in upper shell 14 that enables a user access to
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Application 12/485,073
storage space 18 and a lid 21 connected to upper shell 14. See id., at co 1. 3,
11. 10-15.
Reinke fails to disclose that the material of lid 21 is different from the
material of shells 12, 14. Ishikawa discloses a wipes container having a
stationary lid member 21 made from soft polypropylene and a movable lid
member 23 made from hard polypropylene. See Ishikawa, col. 1, 11. 39-40
and 66----67; col. 5, 11. 4--11; and Fig. 1. Therefore, it would have been
obvious for a person of ordinary skill in the art to make lid 21 ofReinke's
container from a harder, different plastic than the material of shells 12, 14,
as taught by Ishikawa, in order to provide a rigid lid for easy opening and
closing.
Reineke, as modified by Ishikawa, fails to disclose that the material of
the shells has an effusivity value at 23° C and 32° C in the range of200-300
and a thermal conductivity at 23° C and 32° C in the range of0.04--0.190
W/mK, according to the Sensory Warm Test.
However, the selection of a suitable material is a matter of obvious
design choice. In re Lesh in, 277 F .2d 197 CCP A (1960). In the context of a
rejection based on design choice, the relevant issue is whether the alleged
differences between the claimed invention and the prior art "result in a
difference in function or give unexpected results." See ln re Rice, 341 F.2d
309, 314 (CCPA 1965). Here, the materials described in Appellant's Table I
are commercially available and the material properties of effusivity3 and
3 "One such characteristic may be the commonly known property of
effusivity, sometimes referred to as thermal inertia." Spec. 1, 11. 24--25
(emphasis added).
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Application 12/485,073
thermal conductivity4 are well known. See Spec. 15, 11. 17-25 and 16, 11. 3-
4. Furthermore, Appellant's Specification describes, "[ s ]uitable effusivity
values for the presently disclosed wipes containers may include an
[ e ]ffusivity value at 25° C and 32 ° C of less than 500, for example, from 100
to 400, 200 to 300, or any value within these ranges, when measured
according to the Sensory Warmth Test." Spec. 11, 11. 30-33. As for the
claimed then11al conductivity range, Appellant's Specification states that in
addition to materials having a thermal conductivity value within the claimed
range of 0.04----0.190 W/mK, materials having a thermal conductivity of 0.01
and 0.03 \V/mK, which are outside the claimed range, can equally be used.
s~ee id. at 14, 11. 11-13.
As such, whether the effusivity value of the material used for making
the claimed containers, is within the claimed range of 200-300, or outside
this range (but below 500), the resulting reusable wipe containers are
suitable for holding wipes. In a similar vein, whether the thermal
conductivity value of the material used for making the claimed containers is
within the claimed range of0.04-0.190 W/mK, or outside this range, i.e., 0.1
or 0.3 W /mK, the resulting reusable wipe containers are suitable for holding
wipes. In other words, there is no evidence of record to express the
criticality of the claimed ranges and, thus, the claimed effusivity range of
200----300 and the claimed thermal conductivity range of 0.04----0.190 \V /mK
do not '"result in a difference in function or give unexpected results." Rice,
341 F .2d at 314. Accordingly, the mere selection of a known plastic
4 An artisan must be presumed to know something about the art apart
from what the references disclose. See In re Jacoby, 309 F .2d 513, 516
(CCPA 1962).
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Application 12/485,073
material having the claimed ranges for effusivity and thermal conductivity to
make Reinke's plastic container, as modified by Ishikawa, would have been
an obvious design choice for a person skilled in the art.
With respect to claims 2-5, 7, 10-15, and 17-19, although we decline
to reject every claim under our discretionary authority under 37 C.F.R.
§ 41. 50(b ), we emphasize that our decision does not mean the remaining
claims are patentable. Rather, we merely leave the patentability
determination of these claims to the Examiner. See MPEP § 1213.02.
SUMMARY
The Examiner's decision to reject claims 1-5, 7, and 10-19 is
reversed.
We enter a new ground of rejection of claims 1 and 16 under 35
U.S.C. § 103(a) as unpatentable over Reinke and Ishikawa.
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
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, the appellant,
within two months from the date of the decision, must exercise
one of the following two options with respect to the new ground
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 Examiner, in which event the prosecution will be
remanded to the Examiner. The new ground of rejection is
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Application 12/485,073
binding upon the examiner unless an amendment or new
Evidence not previously of Record is made which, in the opinion
of the examiner, overcomes the new ground of rejection
designated in the 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.
REVERSED; 37 C.F.R. § 41.50(b)
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