Ex Parte Ishikawa et alDownload PDFPatent Trial and Appeal BoardAug 31, 201611609448 (P.T.A.B. Aug. 31, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 11/609,448 12/12/2006 78964 7590 09/02/2016 Derick E Allen (28850) ARMSTRONG TEASDALE LLP 7700 Forsyth Boulevard Suite 1800 St. Louis, MO 63105 FIRST NAMED INVENTOR Y oichiro Ishikawa 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. BAMMANOl (28850-242) 1132 EXAMINER LONG, LUANA ZHANG ART UNIT PAPER NUMBER 1792 NOTIFICATION DATE DELIVERY MODE 09/02/2016 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): US Patents@armstrongteasdale.com W rigleyPatents@Wrigley.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PA TENT TRIAL AND APPEAL BOARD Ex parte YOICHIRO ISHIKAWA, 1 James W. Wolff, and Heather L. Fluegel Appeal2014-0071852 Application 11/609,448 Technology Center 1700 Before ADRIENE LEPIANE HANLON, MARK NAGUMO, and BRIAND. RANGE, Administrative Patent Judges. NAGUMO, Administrative Patent Judge. DECISION ON APPEAL Yoichiro Ishikawa, James W. Wolff, and Heather L. Fluegel ("Wrigley") timely appeal under 35 U.S.C. § 134(a) from the Final Rejection3 of claims 1-3, 5, 7, 8, 10-14, 17, 19, and 20, which are all of the pending claims. We have jurisdiction. 35 U.S.C. § 6. We affirm-in-part. 1 The real party in interest is identified as Wm. Wrigley Jr. Company ("Wrigley"). (Appeal Brief, filed 11 February 2014 ("Br."), 2.) 2 Heard 25 August 2016. The Official Transcript, which was not available when this Opinion was entered, will be made of record. 3 Office action mailed 10 October 2013 ("Final Rejection"; cited as "FR"). Appeal2014-007185 Application 11/609,448 A. Introduction4 OPINION The subject matter on appeal relates to a dispensing package and a method of packaging comestible items, such as sticks of chewing gum, referred to more generally as "confectionary products." Claim 1 is representative of the dispositive issues and reads: A package for confectionery products, the package compnsmg: an opaque package defining an interior; a plurality of individually wrapped confectionery products arranged in a stack that is at least one confectionery product wide and at least two confectionery products deep, the stack wrapped in an insertable sheet, and the interior of the package comprising at least three wrapped stacks, wherein at least one of the wrapped stacks is attached to the package by an adhesive bet\veen the sheet and the interior of the package, wherein the individually wrapped confectionery products arranged in the stack are not adhesively attached to the interior of the opaque package. (Claims App., Br. 21; some indentation, paragraphing, and emphasis added.) The '448 Specification describes, in Figure 56, "an expanded view of three bundles [of wrapped gum sticks] as they may be arranged within the 4 Application 11/609,448, Comestible product dispensers and methods of making and using same, filed 12 December 2006, as a continuation-in-part of 11/301,964, filed 12 December 2005, now abandoned, which was filed as a continuation-in-part of 10/935,044, filed 7 September 2004, now U.S. Patent No. 7,527, 189, which claims the benefit of 60/560,306, filed 6 April 2004. We refer to the '"448 Specification," which we cite as "Spec." 2 Appeal2014-007185 Application 11/609,448 package of Fig. 55." (Spec. 34 [213].) Figure 46, reproduced below, shows the critical features of the stacks in somewhat more detail. {Fig. 46 is shown below} {Fig. 46 shows a wrapped stack of individually wrapped gum sticks} The Specification describes Fig. 46 (and Fig. 41, not reproduced here) in the following words: [comestible] products 365 are individually provided in a foil wrapper. Each foil strip 366 is then placed inside an intermediate single stick wrapper 250 . ... The single strip wrappers 250 are belly-banded together by a band 252. Band 252 is then adhered via adhesive 34 to a desirable location on bottom wall of tray 234. (Spec. 28 [190].)7 5 Throughout this Opinion, for clarity, labels to elements are presented in bold font, regardless of their presentation in the original document. 6 We understand the use of the label for the wrapper as a label for the wrapped item to be a convenient shorthand that saves the writer and reader from an endless sea of literalness, and we adopt this metonymic convention ourselves, infra. 7 Claim 1 does not necessarily read on this description because a "tray," which is ordinarily open on top, is not necessarily a "package," which ordinarily entirely encloses its contents. 3 Appeal2014-007185 Application 11/609,448 Band 252 corresponds to the "insertable sheet" recited in the claims. An opaque package meeting the requirements of claim 1 contains one such wrapped stack adhered by adhesive patch 34 to the interior of the package, and at least two other wrapped stacks (with or without adhesive patches), with the proviso that individually wrapped products 36 are not adhesively attached to the interior of the opaque package. Remaining independent claims 8 and 14 are drawn to methods of packaging confectionary products similar to the product recited in claim 1. The Examiner maintains the following grounds of rejection8' 9: A. Claims 1-3, 5, and 7 stand rejected under 35 U.S.C. § 103(a) in view of the combined teachings of Mastella, 10 Zurawski, 11 Ranney, 12 and Aldridge. 13 B. Claims 1-3, 5, 7, 8, and 10-13 stand rejected under 35 U.S.C. § 103(a) in view of the combined teachings of Ranney, Mastella, Zurawski, and Aldridge. C. Claim 1 stands rejected under 35 U.S.C. § 103(a) in view of Zurawski. 8 Examiner's Answer mailed 10 April 2014 ("Ans."). 9 The order of rejections has been altered for more orderly presentation. 10 Louis Mastella, Wrapped package, U.S. Patent No. 3,201,258 (1963) (assigned to Wm. Wrigley Jr. Company). 11 Joseph G. Zurawski and William T. Boyd, Multiflavor gum packaging system using a volatile-flavor adsorber, U.S. Patent No. 5,885,630 (1999) (assigned to Wm. Wrigley Jr. Company). 12 Willet B. Ranney, Gum package, U.S. Patent No. 2,380,367 (1945) (assigned to Wm. Wrigley Jr. Company). 13 Allen Sydney Aldridge, Package for dispensing and retaining gum slabs with adhesive securement, U.S. Patent Application Publication 2005/0255199 Al (17 November 2005), based on an application filed 9 May 2005. 4 Appeal2014-007185 Application 11/609,448 D. Claims 14 and 17 stand rejected under 35 U.S.C. § 103(a) in view of the combined teachings of Ranney and Aldridge. Dl. Claim 19 stands rejected under 35 U.S.C. § 103(a) in view of the combined teachings of Ranney, Aldridge, and Gero. 14 D2. Claim 20 stands rejected under 35 U.S.C. § 103(a) in view of the combined teachings of Ranney, Aldridge, and Provost. 15 B. Discussion Findings of fact throughout this Opinion are supported by a preponderance of the evidence of record. Wrigley directs all arguments for patentability to the independent claims. The dependent claims therefore stand or fall with the corresponding independent claims. Rejections A (claim 1) and B (claims 1 and 8) Wrigley addresses these two rejections together, with separate remarks concerning distinct limitations recited in claim 8. Wrigley objects first that these references, alone or in combination, do not suggest at least three wrapped stacks of individually wrapped confectionary products, each stack at least one product wide and two products deep, as required by claim 1 (Br. 8, 11. 19-21) and by claim 8 (id. at 12, 11. 9-28). 14 Gabriel Gero, Multiple purpose dispensing package and blank, U.S. Patent No. 5,174,492 (1992). 15 Jean-Jacques Provost, Package for products of elongate shape, and the method of producing it, U.S. Patent No. 5,632,378 (1997). 5 Appeal2014-007185 Application 11/609,448 As the Examiner finds, however, Mastella describes expressly a gum- stick dispensing package having two such stacks side by side, as illustrated in a top view in Fig. 3, reproduced below. {Mastella Fig. 3 shows a package of stacks of wrapped gum sticks} The Examiner also finds (FR 3, 11. 15-16) that Mastella teaches packages for enclosing a plurality of stacks (Mastella col. 1, 11. 29-32) "with a barrier between the stacked items to prevent shifting or shuffling of the items from one stack to another ... "(id. at col. 3, 11. 18-22). Zurawski, Fig. 2 (not reproduced here), also shows a package containing plural stacks of wrapped gum sticks. As illustrated in Ranney, Figs. 5-8 (not shown here), individually wrapped gum sticks 17 (gum sticks 23 wrapped in inner wrapper 22) are fitted into an outer wrapper sleeve 18. (Ranney 2, col. 2.) A plurality of the sleeved sticks 18 may be stacked and provided with band 32. Ranney describes such an assembly in Fig. 13 (reproduced on the following page), which in tum is provided in a package 16, shown in Fig. 3 (also reproduced on the following page). 6 Appeal2014-007185 Application 11/609,448 {Ranney Fig. 13 (left): wrapped gum sticks 17 in sleeves 18 with band 32} {Ranney Fig. 3 (right): assembly in package 16} We have no difficulty determining that an arrangement such as the one shown in Mastella Fig. 2, but with three or more stacks, each stack wrapped as illustrated in Ranney Fig. 13, would have suggested itself to the ordinary designer of gum stick packages. The designer would have expected that as the wrapped sticks 17 are removed individually, sleeves 18 would remain in place and keep remaining sticks upright. Wrigley argues further that the references do not suggest attaching a wrapped stack to the interior of the package with adhesive between the wrapping sheet and the interior of the package, but not between the individually wrapped products and the interior of the package, as required by the claims. (Br. 8, 11. 22-28.) Ranney discloses that "[t]he assembly shown in Fig. 13 may ... be secured adhesively within the outer wrapper 16." (Ranney 3, col. 2, 11. 19- 7 Appeal2014-007185 Application 11/609,448 20.) Ranney does disclose that, "[i]n general, l prefer to apply adhesive between the outer wrapper and the sleeves 18 because such adhesive may be readily applied during the wrapping operation and some advantage is obtained by its use." (Id. at 11. 26-30.) The Examiner makes seemingly contradictory findings regarding the teachings of Ranney in this regard. On the one hand, the Examiner finds that "Ranney also contemplates applying adhesive between the insertable sheet (band 32) and the outer package (16) for the purpose of holding the wrapped stack in position (page 3, col 2, lines 19-26)." (FR 4, 11. 17-19; Ans. 5, 11. 1-3.) On the other hand, the Examiner finds that "Ranney is silent with respect to the package comprising at least three wrapped stacks and applying adhesive between the insertable sheet (band 32) and the outer package." (FR 8, 11. 3-5; Ans. 8, 11. 8-10.) While the second finding is more precise and accurate, the first is not an inordinate extension of even the most conservative interpretation of Ranney' s teachings. Ranney does teach that the assembly is to be secured adhesively within outer wrapper 16, and Ranney does not exclude any region of the assembly from being adhered to the wrapper. Moreover, we find that adhesive between the sleeves 18 and the outer wrapper 16 leaves wrapped sticks 17 unattached to the inside of package 16, as required by the claims. Thus, wrapped sticks 17 may be removed from the sleeves in package 16 without breaking an adhesive bond. 8 Appeal2014-007185 Application 11/609,448 In any event, the Examiner finds (FR, para. bridging 4-5), that Aldridge discloses, in Figs. 3 and 4, shown right, band 131 surrounding array 112 of gum slabs 114, where "[t]he adhesive location may be in engagement with the band for adhesively package housing." that "adhesive wall strip 125a may be positioned and be of sufficient width to engage both the gum slabs 114 and the band 131 "The use of the adhesive strips 125 and 127 independently result in holding within package housing 116 and permit individual removal therefrom." (Id. at [0029].) FIG. 4 {Aldridge Fig. 3 shows adhesive strips on the package interior} {Fig. 4 shows band 131 and gum slab array 112 adhered to the package} 9 Appeal2014-007185 Application 11/609,448 Wrigley urges that because adhesive strip 125 [and 127] engage array 112 of gum slabs 114, "Aldridge teaches away from the individually wrapped confectionary products arranged in the attached stack not being adhesively attached to the package according to the present claims." (Br. 12, 11. 1--4.) This argument is not persuasive of harmful error. The Examiner has proposed applying the teachings of Aldridge to the assembly taught by Ranney to provide a teaching for adhering Ranney band 32 to the interior of package 16. As explained supra, adhesive between sleeves 18 and the interior of package 16 would not be in conflict with the final limitation of claim 1 because inner wrapper 17 is not adhered to the interior of package 16. Ranney teaches that this arrangement allows wrapped gum sticks 17 to be removed, leaving sleeves 18 in the wrapped stack so the remaining sticks are held in an upright position, and the package as a whole is prevented from collapsing. (Ranney 2, col. 1, 11. 1-9.) In other words, as required by claim 1, "the individually wrapped confectionery products arranged in the stack are not adhesively attached to the interior of the opaque package." Independent claim 8 is drawn to a method of packaging confectionary products that results in a package similar to that recited in claim 1, with the further limitation of "wrapping the stack in a sheet that contacts the stack on five sides." (Claims. App. Br. 21, last line.) As the Examiner finds (FR 11, 11. 13-18), Aldrich describes that "the band 131 is formed into a pouch or U-shaped configuration having opposed front and back walls, side walls, and a bottom wall" (Aldrich 2 [0025]). The 10 Appeal2014-007185 Application 11/609,448 Examiner finds further that the band 131 described by Aldridge and the band 32 described by Ranney serve the same purpose of holding slabs of gum together while permitting removal of individual slabs. (FR 12, 11. 4-5.) On this basis, the Examiner reasons that it would have been obvious to use the band described by Aldridge in place of the band described by Ranney to hold the wrapped slabs in "removable frictional retention." (FR 12, 11. 4-8.) Wrigley urges that Aldridge does not disclose a plurality of stacks wrapped in band 131, but only describes a single layer of product arranged side-by-side. (Br. 14, 11. 5-8.) Moreover, Wrigley argues, Aldridge does not provide any detail regarding the wrapping, or about wrapping at least three wrapped stacks. (Id. at 11. 10-12.) At oral argument, Wrigley urged further that the purpose of band 32 in Ranney is to keep the stack of wrapped gum sticks square (see, e.g., Ranney 3, col. 1, 11. 57-62), which would not have provided any reason to look to Aldridge, which solves the problem of keeping the sticks of gum from tilting or falling out of the package in a different way. These arguments are not persuasive of harmful error in the rejection because they do not address the teachings of Ranney, Aldridge, as well as those of Mastella and Zurawski, as combined by the Examiner. Rejection C (Claim 1 in view of Zurawski) The Examiner finds that the teaching that a flavor adsorbent layer may be glued to the container (see Fig. 4 (not reproduced here), showing element 30 glued to the bottom 32 of paperboard tray 22) would have suggested adhering individual gum packages to the interior of tray 10 "in 11 Appeal2014-007185 Application 11/609,448 order to further prevent any cross-contamination of each gum flavor in the package." (FR 7, 11. 5-8.) The Examiner has not explained in a plausible way why the adhered flavor adsorbent would have suggested that a wrapper surrounding three stacks of wrapped gum sticks be adhered to the inside of the package. We therefore reverse Rejection C. Rejection D (Claim 14 in view of Ranney and Aldridge) Claim 14 is drawn to a process of packaging that results in a package similar to that recited in claim 1. The Examiner holds that the teachings of Ranney and Aldridge suffice to render obvious the claimed method of packaging. More particularly, the Examiner holds that the artisan would have recognized that in order to make multiple packages of Ranney' s invention, it would have been obvious to arrange the plurality of gum sticks in multiple stacks, and to fold band 32 around each of the multiple stacks. (Ans. 14, 11. 10-14.) Wrigley urges, inter alia, that the absence of teachings in the applied prior art regarding the number of stacks to be packaged requires reversal. (Br.16,11.3-12.) Section 103 requires that a rejection for obviousness account for all differences between the prior art and the claimed invention. Ranney and Aldridge do not provide a basis for wrapping three stacks of comestibles as recited. The Examiner has not placed before us a rejection of these claims in which such a teaching is provided by the prior art. In particular, the Examiner does not make findings regarding the teachings of Gero or Provost 12 Appeal2014-007185 Application 11/609,448 that cure the deficiencies of Ranney and Aldridge with respect to the limitations of independent claim 14. We therefore reverse Rejections D, Dl, and D2. Commercial Success Wrigley urges further that the Affidavit submitted by Katherine Waller16 establishes commercial success of the claimed package structure and methods of packaging that rebuts any prima facie case of obviousness. (Br. 18-19.) As our reviewing court has explained, all evidence submitted in support of commercial success, including the level of experience in the market, the degree of market power, evidence of industry acceptance and copying by others, and any affidavits, must be considered and weighed by the finder of fact. Pro-Mold & Tool Co. v. Great Lakes Plastics, Inc., 75 F.3d 1568, 1574 (Fed. Cir. 1996). It is also critical that the applicant for patent establish a prima facie case of nexus between the thing (product or method) that is commercially successful and the invention disclosed and claimed in the patent. Demaco Corp. v. F. Von Langsdorff Licensing Ltd., 851F.2d1387, 1392 (Fed. Cir. 1988). (The Federal Circuit has held that the rule announced in Demaco, that the burden shifts to the challenger upon a prima showing of nexus, does not apply to ex parte proceedings before the PTO, due to the inability of the examiner to adduce evidence to show that 16 Affidavit under 37 C.F.R. § 1.132 by Katherine Waller, signed 4 September 2013, filed 30 September 2013 ("Waller"). 13 Appeal2014-007185 Application 11/609,448 the commercial success was due to extraneous factors. Jn re Huang, 100 F.3d 135, 140 (Fed. Cir. 1996).) Ms. Waller testifies that she is a Sr. Brand Manager, Marketing COEs for Wrigley, the real party in interest. She testifies that sales increased drastically when Wrigley began an advertising campaign that emphasized the "sleek black packaging that was viewed as innovative, modem, and slightly mysterious." (Waller 3, ,-i 12.) Waller also testifies that at month five from launch, volume compared to the nearest competitor was+ 170%, and dollar sales were +232%. (Id. at ,-i 10.) Moreover, Waller testifies that the advertising campaign was recognized by the Advertising Research Foundation "for advertising that celebrates the extraordinary and/or creative use of researching in the advertising development process." (Id. at 4, ,-i 13.) There are several difficulties with this evidence. First, it does not shed light on particular reasons why individual purchasers bought the ..... "' "' • rri"1 "' "' • • • "' ".... ,..rm ~ comesno1e proauct. ine recora aoes not contam examp1es or me)= uum product in its packaging, nor are there copies of the advertising materials or direct reports of responses by consumers to the advertising. We are left, therefore, to assume, for example, that the purchases were made because the package contained at least three stacks of individually packaged sticks of gum, and because the wrapper was glued to the inside of the package. As the Examiner indicated, there are numerous other reasons why the purchases might have been made that do not depend on the limitations recited in the appealed claims. For example, purchasers may have been attracted to the gum itself, or the "innovative, modem, slightly mysterious character" attributed to the packaging and associated graphics, or to the potential for re- purposed use of the package as an iPod® holder-a use that would not seem 14 Appeal2014-007185 Application 11/609,448 to be advantaged by the presence of an internally adhered wrapper. Nor have we been placed in a position to evaluate the significance of the comparisons to the "Nearest Competitor," as we have not been advised of any characteristics of that competitor's packaging or the similarity of the competitor's packaged product to the 5® Gum. Wrigley also urges (Br. 19, 11. 10-19; Reply17 9, 11. 1-2), that there was a long-felt need in the marketplace, citing the 1963 issuance date of Mastella. "In 50 years," Wrigley argues, "no one had provided a packaging solution that addressed the needs of the consumer in such a successful manner until the present application." (Id. at 11. 18-19.) The mere length of time between a publication of a prior art or the issuance of a patent does not, however, indicate that the relevant public perceived a need for the claimed subject matter of a later-submitted application for patent. We conclude that the proffered evidence of commercial success is not sufficient to overcome the prima facie cases of obviousness affirmed supra. C. Order It is ORDERED that the rejection of claims 1-3, 5, and 7 under 35 U.S.C. § 103(a) in view of the combined teachings of Mastella, Zurawski, Ranney, and Aldridge is affirmed; it is FURTHER ORDERED that the rejection of claims 1-3, 5, 7, 8, and 10-13 under 35 U.S.C. § 103(a) in view of the combined teachings of Ranney, Mastella, Zurawski, and Aldridge is affirmed; 17 Reply Brief, filed 10 June 2014 ("Reply"). 15 Appeal2014-007185 Application 11/609,448 it is FURTHER ORDERED that the rejection of claim 1 under 35 U.S.C. § 103(a) in view of Zurawski is reversed; it is FURTHER ORDERED that the rejection of claims 14 and 17 under 35 U.S.C. § 103(a) in view of the combined teachings of Ranney and Aldridge is reversed; it is FURTHER ORDERED that the rejection of claim 19 under 35 U.S.C. § 103(a) in view of the combined teachings of Ranney, Aldridge, and Gero is reversed; it is FURTHER ORDERED that the rejection of claim 20 under 35 U.S.C. § 103(a) in view of the combined teachings of Ranney, Aldridge, and Provost is reversed. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § l.136(a). AFFIRMED-IN-PART 16 Copy with citationCopy as parenthetical citation