Ex Parte Koenig et al

Board of Patent Appeals and Interferences

Apr 7, 2006

10036862 (B.P.A.I. Apr. 7, 2006)

1
The opinion in support of the decision being entered today was not
written for publication and is not binding precedent of the Board.
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte DAVID WILLIAM KOEING, ANNASTACIA JANE KISTLER,
JOHN EUGENE PELUSO, MARGARET MURPHY WARD, DOUGLAS BRYAN COLE,
MARK KEVIN MELIUS and SHERRIE LYNN BENCIK
_____________
Appeal No. 2006-0609
Application No. 10/036,862
______________
ON BRIEF
_______________
Before GARRIS, PAK and TIMM, Administrative Patent Judges.
PAK, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on an appeal from the examiner’s final
rejection of claims 1 through 34, which are all of the claims
pending in the above-identified application. We have
jurisdiction under 35 U.S.C. § 134.
APPEALED SUBJECT MATTER
Pursuant to 37 CFR § 41.37(c)(1)(vii)(2004), the appellants
have provided subheadings identifying the groups of claims argued
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Application No. 10/036,862
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separately on appeal as follows (the Brief, pages 6, 12, 16, 17,
and 18):
Subheading A: Claims 1 and 5 through 11;
Subheading B: Claims 2 through 4;
Subheading C: Claims 12 through 22;
Subheading D: Claims 23 through 29; and
Subheading E: Claims 30 through 34.
Therefore, for purposes of this appeal, we select claims 1, 2,
12, 23 and 30 as representative of all of the claims on appeal
and determine the propriety of the examiner’s Section 103
rejection set forth below based on these claims alone consistent
with 37 CFR § 41.37(c)(1)(vii)(2004). Claims 1, 2, 12, 23 and 30
are reproduced below:
1. A method for cleaning soil from an animal body
surface, comprising:
instructing a user to wipe an animal body surface
with a fresh product at least three times;
wherein at least one fresh product is dry, and at
last [sic, least] one fresh product is wet.
2. The method of claim 1, where in the instructing
comprises directing the user to wipe the surface with a dry
product, followed by wiping the surface with a dry product,
followed by wiping the surface with a wet product.
12. A system for facilitating the cleaning of an
animal body surface, comprising:
a package comprising a first fresh product; and
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instructions to wipe an animal body surface at
least three times with a combination of the first fresh
product and a second fresh product;
wherein one of the first fresh product or the
second fresh product is wet.
23. A package for facilitating the cleaning of an
animal body surface comprising:
a dry product comprising a first number of
portions;
a wet product comprising a second number of
portions; and
instruction to wipe an animal body surface at
least three times with a combination of a fresh portion of
the dry product and a fresh portion of the wet product.
30. A method for facilitating the cleaning of an
animal body surface, comprising:
enclosing in a package a first fresh product
selected from the group consisting of a dry product and a
wet product; and
offering the package for sale;
wherein the package comprises instructions to wipe
the surface at least three times with a combination of the
first fresh product and a second fresh product; wherein one
of the first fresh product and the second fresh product is
wet.
THE PRIOR ART
The sole prior art reference relied upon by the examiner in
support of the Section 103 rejection before us is:
Marino 5,950,960 Sep. 14, 1999
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THE REJECTION
Claims 1 through 34 stand rejected under 35 U.S.C. § 103 as
unpatentable over the disclosure of Marino.
OPINION
We have carefully reviewed the claims, specification and
prior art, including all of the arguments advanced by both the
examiner and the appellants in support of their respective
positions. This review has led us to conclude that the
examiner’s Section 103 rejection is well founded. Accordingly,
we affirm the examiner’s decision rejecting claims 1 through
34 under Section 103. Our reasons for this determination follow.
The examiner has found, and the appellants have not
disputed, that Marino teaches “an apparatus capable of being sold
to the public and further comprising a first and second housing
so as to house [,e.g., enclose,] moist wipes (note col. 3, lines
1-35) and . . . a dry roll of tissue/toilet paper (note col. 1,
lines 30-60).” Compare the Answer, page 4, with the Brief and
the Reply Brief in their entirety, specifically the Brief, pages
18-19. The appellants have not argued that the claimed first and
second fresh products in a package do not correspond to the
toilet paper and moist wipes in the apparatus taught by Marino.
See the Brief and Reply Brief in their entirety. Nor have the
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Application No. 10/036,862
1 Understandably, consistent with Rule 56, the appellants do
not assert that providing an instructional material with devices
to be sold is not well known.
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appellants specifically challenged the examiner’s “Official
Notice as to the ‘well known implements of instructional data
associated with devices for sale.’”1 See the Reply Brief, pages
2-4. Rather, the appellants argue that the apparatus or package
taught by Marino does not include an instruction (e.g., a printed
instruction containing a direction) to wipe an animal body
surface at least three times with a combination of the first and
second fresh products as required by claims 12, 23 and 30. See,
e.g., the Brief, pages 16-19. In other words, it is the
appellants’ position that the printed content of the instruction
sheet would have rendered the claimed package patentably
different from the package or apparatus taught by Marino. See
the Reply Brief, page 3. In support of this position, the
appellants refer to In re Gulack, 703 F.2d 1381, 217 USPQ 401
(Fed. Cir. 1983). Id. We do not subscribe to the appellants’
position.
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As indicated by In re Ngai, 367 F.3d 1336, 1339, 70 USPQ2d
1862, 1864 (Fed. Cir. 2004):
This case, however, is dissimilar from Gulack. There
the printed matter and the circularity of the band were
interrelated, so as to produce a new product useful for
“educational and recreational mathematical” purposes.
Here, addition of a new set of instructions into a
known kit does not interrelate with the kit in the same
way as the numbers interrelated with the band. In
Gulack, the printed matter would not achieve its
educational purposes without the band, and the band
without the printed matter would similarly be unable to
produce the desired result. Here, the printed matter
in no way depends on the kit, and the kit does not
depend on the printed matter. All that the printed
matter does is teach a new use for an existing product.
As the Gulack court pointed out, “[w]here the printed
matter is not functionally related to the substrate,
the printed matter will not distinguish the invention
from the prior art in terms of patentability.” Id. 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. This was not
envisioned by Gulack.
The claimed printed instructional material, like the printed
instructional material in Ngai, is not functionally interrelated
to the claimed package. Thus, consistent with Ngai, we determine
that the claimed printed matter would not distinguish the claimed
package from the apparatus or package taught by Marino. In
other words, we concur with the examiner that Marino would
have rendered the subject matter defined by claims 12 through
34 obvious within the meaning of 35 U.S.C. § 103.
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The appellants argue that Marino would not have suggested a
step of “instructing a user to wipe an animal body surface with a
fresh product at least three times” in the method recited in
claims 1 and 2. See, e.g., the Brief, pages 6-11. We do not
agree.
As indicated supra, the appellants have not specifically
challenged the examiner’s “Official Notice as to the ‘well known
implements of instructional data associated with devices for
sale.’” One of ordinary skill in the art armed with such
knowledge would have employed an instructional material to inform
the general public, especially children and mentally handicapped
individuals, regarding the use of the apparatus or package of the
type discussed in Marino. Inasmuch as the number of wipes and
the type of wipes (wet and/or dry) are known to be a function of
the type and amount of bodily waste and/or soil to be removed
from a human body, we determine that the selection of optimum or
workable number of wet and/or dry wipes, such as those in the
instruction recited in claims 1 and 2, to obtain a desired degree
of cleanliness is well within the ambit of one of ordinary skill
in the art. See In re Boesch, 617 F.2d 272, 276, 205 USPQ 215,
219 (CCPA 1980)(“[D]iscovery of an optimum value of a result
effective variable in a known process is ordinarily within the
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skill of the art”); In re Aller, 220 F.2d 454, 456, 105 USPQ 233,
235 (CCPA 1955)(“[W]here the general conditions of a claim are
disclosed in the prior art, it is not inventive to discover the
optimum or workable ranges by routine experimentation”). This is
especially true in this situation since Marino at column 1, lines
59-60, in reference to a device for dispensing moist and dry
wipes, intimates that the preference for dry and/or moist tissues
is dependent on users.
The appellants appear to argue that the wet/dry wiping
recited in claims 2 through 4 imparts unexpected results, thereby
rebutting any inference of obviousness. See the Brief, pages 12-
15. In support of their argument, the appellants refer to Table
A at page 15 of the specification. See the Brief, page 14.
The appellants have the burden of showing that the claimed
subject matter imparts unexpected results. In re Klosak, 455
F.2d 1077, 1080, 173 USPQ 14, 16 (CCPA 1972); see also In re
Heyna, 360 F.2d 222, 228, 149 USPQ 692, 697 (CCPA 1966)(“It [is].
incumbent upon appellants to submit clear and convincing evidence
to support their allegation of unexpected property”). However,
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on this record, we are not persuaded that the appellants have
demonstrated that the claimed subject matter as a whole imparts
unexpected results.
First, it is not enough for the appellants to show that the
wet/dry wiping recited in claims 2 through 4 imparts an
improvement in the bead (soil) removal relative to a single
wiping or dry wiping. The appellants must demonstrate that this
improvement is unexpected. In re Freeman, 474 F.2d 1318, 1324,
177 USPQ 139, 143 (CCPA 1973); Klosak, 455 F.2d at 1080, 173 USPQ
at 16. Nevertheless, the appellants have not explained why one
of ordinary skill in the art would not reasonably expect to
increase the removal of soil or body waste on a body surface by
increasing the number of wipings. Additionally, the reason why
people wipe as many times as necessary is because it is common
knowledge that additional wipes can remove more soil or body
waste that are remaining on the body surface after the first
wipe. See In re Bozek, 416 F.2d 1385, 1390, 163 USPQ 545, 549
(CCPA 1969)(The conclusion of obviousness may be made from
“common knowledge and common sense” of the person of ordinary
skill in the art); In re Sovish, 769 F.2d 738, 743, 226 USPQ 771,
774 (Fed. Cir. 1985)(Skill is presumed on the part of those
practicing in the art). Moreover, the appellants have not
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Application No. 10/036,862
2Any subsequent dry wipe is reasonably expected by one of
ordinary skill in the art to absorb moisture and remove any
remaining loosened soil.
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explained why the employment of at least one wet wipe is not
reasonably expected by one of ordinary skill in the art to
improve the removal of soil or body waste on a body surface. At
least one wet wipe, unlike dry wiping2, would have been expected
by one of ordinary skill in the art to loosen and remove soil or
body waste on a body surface due to the moisture or water therein
just as a wet mop, due to its wetness, is known to loosen and
remove soil on a floor surface better than a dry mop. Bozek, 416
F.2d at 1390, 163 USPQ at 549; Sovish, 769 F.2d at 743, 226 USPQ
at 774.
Second, the appellants have not demonstrated that the
evidence relied upon is commensurate in scope with claims 2
through 4 on appeal. In re Grasselli, 713 F.2d 731, 743, 218
USPQ 769, 778 (Fed. Cir. 1983); In re Clemens, 622 F.2d 1029,
1035, 206 USPQ 289, 296 (CCPA 1980). While the evidence relied
upon is limited to employing the so-called “KIMWIPES® EX-L-
Wipers” having specific composition, structure and moisture
content (not identified), claims 2 through 4 are not so limited.
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The fresh wet and dry products recited in claims 2 through
4 encompass a myriad of wiping materials having compositions,
structures and moisture contents patentably and materially
different from those of KIMWIPES® EX-L-Wipers. The appellants
have not provided any objective evidence to show that the
multifarious wet and dry products encompassed by claims 2 through
4 would behave in the same manner as the KIMWIPES® EX-L-Wipers.
Thus, based on the totality of record, including due
consideration of the appellants’ arguments and evidence, we
determine that the preponderance of evidence weighs most heavily
in favor of obviousness within the meaning of 35 U.S.C. § 103.
Hence, we concur with the examiner that Marino would have also
rendered the subject matter defined by claims 1 through 11
obvious within the meaning of 35 U.S.C. § 103.
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CONCLUSION
In view of the foregoing, we affirm the examiner’s decision
rejecting all the claims on appeal under 35 U.S.C. § 103.
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
AFFIRMED
BRADLEY R. GARRIS )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
CHUNG K. PAK ) APPEALS AND
Administrative Patent Judge ) INTERFERENCES
)
)
)
CATHERINE TIMM )
Administrative Patent Judge )
Appeal No. 2006-0609
Application No. 10/036,862
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GLEN P. BELVIS
BRINKS HOFFER GILSON & LIONE
P.O. BOX 10395
CHICAGO, IL 60610
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