Ex Parte Knobloch et al

Patent Trial and Appeal Board

Dec 17, 2012

11897777 (P.T.A.B. Dec. 17, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte THORSTON KNOBLOCH, JENNIFER LORI
STEEVES-KISS, MICHAEL RICARDO BURNS, MARY
WINDES BURNS, ILLYA TORRANCE THOMAS, JOHN
PAUL BRASE, DENNIS XAVIER LEGAULT, and DEAN
LARRY DU VAL
____________________

Appeal 2010-011670
Application 11/897,777
Technology Center 3700
____________________

Before: STEFAN STAICOVICI, BRETT C. MARTIN, and
PATRICK R. SCANLON, Administrative Patent Judges.

MARTIN, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF CASE
Thorston Knobloch et al. (Appellants) appeal under 35 U.S.C. § 134
from the Examiner’s rejection of claims 1-19. Appellants’ representative
presented oral argument on December 4, 2012. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.

THE INVENTION
Appellants’ invention is directed generally to “an array of sanitary
tissue products, especially toilet tissue products, associated with non-textual
indicia that are psychologically matched to intensive properties of the
sanitary tissue products.” Spec. 1, ll. 6-8. Claim 1, reproduced below, is
illustrative of the claimed subject matter:
1. An array of toilet tissue products comprising a first toilet
tissue product housed within a first toilet tissue product package
and a second toilet tissue product housed within a second toilet
tissue product package, wherein the first and second toilet
tissue products exhibit a different value of total dry tensile
strength; and wherein the relative value of the dry tensile
strength of the first toilet tissue product compared to the second
toilet tissue product is intuitively communicated to a consumer
of toilet tissue products by psychologically matched non-textual
indicia on the first and second packages and wherein the first
and second packages comprise a common brand name.

REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Molina
Ronn
Hanson
US 6,601,705 B2
US 6,648,864 B2
US 7,172,073 B2
Aug. 5, 2003
Nov. 18, 2003
Feb. 6, 2007
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THE APPEALED REJECTIONS
Claims 1-4, 13-16, 18, and 19 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over Ronn and Hanson. Ans. 5.
Claims 4-12 and 17 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Ronn, Hanson, and Molina. Ans. 6.

ANALYSIS
Rejection of Claims 1-4, 13-16, 18, and 19 as Obvious over
Ronn and Hanson
Claims 1, 13, and 14
Appellants group claims 1, 13, and 14 together. App. Br. 6. We
select claim 1 as representative and decide the appeal with respect to claims
1, 13, and 14 on the basis of claim 1 alone. See 37 C.F.R.
§ 41.37(c)(1)(vii) (2011).
The Examiner finds that Ronn discloses “an array of absorbent paper
products … having differing characteristics wherein the differing
characteristics are intuitively communicated to a consumer via pictorial
representation indicia.” Ans. 5. The Examiner acknowledges that because
Ronn’s packaging and indicia relate to diapers, that it does not disclose the
specifically claimed subject matter of toilet tissue. Id. The Examiner then
goes on to conclude that employing
an array of toilet tissue having different characteristics and
differentiated via non-textual indicia that will psychologically
match with a consumer to enable the consumer to select the
desired toilet tissue would have been obvious given the array-
indicia teaching of Ronn et al. and the indicia-property teaching
of Hanson in conjunction.
Id.
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In response, Appellants argue that the combination fails to teach each
and every element of claim 1, but then proceeds to attack the references
individually. App. Br. 6-7. For instance, Appellants state “that Ronn
teaches an array of diapers which are arranged according to their
configuration and sizes” and that “[n]othing in Ronn teaches a common
intensive property of the diapers.” Id. at 7. The Examiner, however, utilizes
Ronn not for the claimed property, but for teaching an array of paper
products with a non-textual indicia that communicates some property to the
consumer. Accordingly, Appellants’ attack on Ronn appears to be directed
at an aspect for which the Examiner does not use Ronn. Nonobviousness
cannot be established by attacking the references individually when the
rejection is predicated upon a combination of prior art disclosures. See In re
Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986).
Appellants go on to assert that “[n]othing [in] Hanson teaches
communicating a common intensive property of its product to a consumer by
a psychologically matched non-textual indicia on the package.” App. Br. 7.
Appellants assert as much because Hanson uses “a sample of the product
within the package on the exterior of the package so that a consumer can
touch and feel the sample to get an idea about the product within the
package.” Id. Appellants then argue that “[j]ust because a consumer can
touch and feel a sample of Hanson’s product without opening the package
does not mean that the consumer recognizes that one of Hanson’s products
may exhibit a different common intensive property, such as dry tensile
strength, than another of Hanson’s products.” Id. Appellants appear to
suggest that a swatch that a consumer may touch is not properly considered a
non-textual indicia. Appellants’ disclosure, however, specifically states that
“a non-textual indicia may communicate, even intuitively communicate, to a
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consumer … through touch (texture indicia).” Spec. 9, ll. 30-32.
Accordingly, we agree with the Examiner that Hanson’s swatch teaches a
non-textual indicia within the specific definition provided in Appellants’
Specification, and do not find Appellants’ arguments on this point
persuasive.
Appellants further appear to take issue with the type of indicia used by
both Ronn and Hanson as not teaching the claimed properties. With respect
to Ronn this is alleged because Ronn’s packaging is only for diapers and
does not relate to the claimed dry tensile strength, but to the size and
configuration of the diaper. Reply Br. 3. As noted above, the Examiner
does not use Ronn for dry tensile strength or for teaching toilet paper
packaging. As the Examiner points out, Hanson specifically teaches that the
swatch indicia may be applicable to a variety of products, which includes
both diapers (Hanson 1:13) and bathroom tissue (Hanson 1:16). The
Examiner utilizes this link to then apply the teaching of the array aspects of
Ronn in the context of diaper packaging to the specifically taught toilet
paper and dry tensile strength aspects of Hanson. We find this to be a
reasonable application of Ronn to Hanson.
Appellants continue their argument with respect to Ronn in the Reply
Brief and assert that Ronn is inapplicable because the size or configuration
of a diaper is different from dry tensile strength, which is “not visibly
recognizable.” Reply Br. 4. First, as noted above, Ronn is not being used
by the Examiner for teaching an intensive property of dry tensile strength.
Second, Appellants’ claims do not include any reference to the specific
property as “not visibly recognizable,” so such an argument is beyond the
scope of the claims.
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As we understand the proposed combination, the Examiner has found
a reference in Ronn that teaches an array of absorbent paper products –
diapers – in packaging that includes various non-textual indicia – “pictorial
representations of different age children” (Ans. 10) – that communicate
something about the contents of the products within the various packages.
The Examiner acknowledges that this does not teach the dry tensile strength
and toilet paper recited in claim 1, but concludes that the selection of dry
tensile strength, “an inherent property of all tissue products” as the specific
characteristic would be “considered within the level of ordinary skill in the
art.” Ans. 9. Appellants do not persuasively challenge this and given
Hanson’s disclosure of “durability” as one of many characteristics that could
be communicated by the swatch (Hanson 4:34), we accept the Examiner’s
conclusion on this point. It is, therefore, this combination of Ronn and
Hanson that teaches to one of skill in the art each of the aspects of claim 1 as
suggested by the Examiner. We do not find Appellants’ arguments
persuasive with respect to the Examiner’s combination of these references
and generally agree with the Examiner that “Appellants’ arguments are
directed to the fact that neither Ronn et al. nor Hanson individually
disclose[s] the entire claimed invention” as opposed to the overall
combination. Ans. 8.
Because we do not find Appellants’ arguments persuasive as to claim
1, we sustain the Examiner’s rejection of claims 1, 13, and 14.

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Claims 2-4, 15, 16, 18, and 19
Although Appellants purport to argue each of these claims
individually, Appellants’ arguments amount to merely reciting claim
language and then asserting that such recitations are “not rendered obvious
over Ronn in view of Hanson.” See App. Br. 7-9. Appellants do not
meaningfully explain why the variously recited elements are not met by the
Examiner’s combination. Merely reciting the language of the claims and
asserting that the prior art reference or combination does not disclose or
teach each claim limitation is insufficient. See 37 C.F.R. § 41.37(c)(vii) (“A
statement which merely points out what a claim recites will not be
considered an argument for separate patentability of the claim.”); see also In
re Lovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011) (“[W]e hold that the Board
reasonably interpreted Rule 41.37 to require more substantive arguments in
an appeal brief than a mere recitation of the claim elements and a naked
assertion that the corresponding elements were not found in the prior art.”).
Accordingly, we sustain the Examiner’s rejection of each of claims 2-
4, 15, 16, 18, and 19 for the same reasons as expressed above with respect to
the rejection of claim 1.
Rejection of Claims 4-12 and 17 as Obvious over
Ronn, Hanson, and Molina
Although Appellants provide fairly brief arguments with respect to
claim 4, we understand Appellants as taking issue with the Examiner’s use
of Molina for specifically teaching the use of color as the claimed non-
textual indicia in combination with Ronn and Hanson, the combination of
which we sustain above. See App. Br. 10. The Examiner concludes that
modification of “the previous non-textual indicia of the combination to
comprise color would have been obvious in view of Molina et al.” Ans. 12.
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In the portion cited by the Examiner, Molina specifically states that “[w]hen
the signal color 7 is used on the wrapper 9 of the article 6, the signal color
provides a method for selecting the proper absorbent articles 6.” Molina
5:12-14. Molina even specifically refers to this method as “intuitive.”
Molina 5:9 and 5:21. Molina further explains how absorbency is one of
many characteristics that can be communicated via color. Molina 4:30-67.
Given that Molina describes use of color to intuitively communicate to a
consumer the absorbency of a paper product and that Appellants’
Specification specifically describes absorbency1 as one of the various
“intensive properties” that may be intuitively communicated via the claimed
non-textual indicia, we do not find Appellants’ arguments as to the
inapplicability of Molina to the combination of Ronn and Hanson
persuasive. Accordingly, we sustain the rejection of claim 4.
Appellants’ arguments with respect to claims 5-12 and 17 also amount
to a mere recitation of claim elements and a naked assertion that the
corresponding elements were not found in the prior art cited by the
Examiner, similar to that described above. As such, we do not consider
these to be separate arguments and sustain the rejection of claims 5-12 and
17 on the same basis as we sustain the rejections above.

DECISION
For the above reasons, we AFFIRM the Examiner’s decision to reject
claims 1-19.
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) (2009).

1 See Spec. 8, ll. 7-10.
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AFFIRMED

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