Ex Parte Minifie et al

Board of Patent Appeals and Interferences

Jul 18, 2011

11352895 (B.P.A.I. Jul. 18, 2011)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
11/352,895 02/13/2006 Charles David Minifie 10189M 6027
27752 7590 07/18/2011
THE PROCTER & GAMBLE COMPANY
Global Legal Department - IP
Sycamore Building - 4th Floor
299 East Sixth Street
CINCINNATI, OH 45202
EXAMINER
BOVEJA, NAMRATA
ART UNIT PAPER NUMBER
3682
MAIL DATE DELIVERY MODE
07/18/2011 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte CHARLES DAVID MINIFIE and JOHN THOMAS COOPER
____________

Appeal 2010-004992
Application 11/352,895
Technology Center 3600
____________

Before HUBERT C. LORIN, BIBHU R. MOHANTY, and
MEREDITH C. PETRAVICK, Administrative Patent Judges.

LORIN, Administrative Patent Judge.

DECISION ON APPEAL
An oral hearing was held on Jul. 12, 2011.

Appeal 2010-004992
Application 11/352,895

STATEMENT OF THE CASE
Minifie, et al. (Appellants) seek our review under 35 U.S.C. § 134 of
the final rejection of claims 5-10 and 21-24. We have jurisdiction under 35
U.S.C. § 6(b) (2002

SUMMARY OF DECISION
We AFFIRM.1

THE INVENTION
Claim 21, reproduced below, is illustrative of the subject matter on
appeal.
21. A kit comprising:
a first occasion-based product identified by a consumer
need/habit/practice for an occasion;
a second occasion-based product identified by said consumer
need/habit/practice for said occasion;
wherein said first occasion-based product and said second
occasion-based product are co-packaged into a package; and,
wherein said first occasion-based product and said second
occasion-based product are not commonly linked in everyday use.
THE REJECTIONS
The Examiner relies upon the following as evidence of
unpatentability:

1 Our decision will make reference to the Appellants’ Appeal Brief (“Br.,”
filed Oct. 12, 2009) and the Examiner’s Answer (“Answer,” mailed Nov. 25,
2009).

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Masting US 2004/0120988 A1 Jun. 24, 2004

The following rejections before us for review:
1. Claims 5-10 and 21-24 are rejected under 35 U.S.C. §112, first
paragraph, as failing to comply with the written description
requirement.
2. Claims 21, 23, and 24 are rejected under 35 U.S.C. §102(b) as being
anticipated by Masting.
3. Claims 5-10 and 22 are rejected under 35 U.S.C. §103(a) as being
unpatentable over Masting and Official Notice.

ISSUES
Do claims 5-10 and 21-24 fail to comply with the written description
requirement of the first paragraph of 35 USC §112, for reciting a “kit”?
Does the claimed subject matter read on Masting’s description of a
package with two substrates?

ANALYSIS
The rejection of claims 5-10 and 21-24 under 35 U.S.C. §112, first
paragraph, as failing to comply with the written description requirement.
The Appellants argued claims 5-10 and 21-24 as a group (Br. 6). We
select claim 21 as the representative claim for this group, and the remaining
claims 5-10 and 22-24 stand or fall with claim 21. 37 C.F.R.
§ 41.37(c)(1)(vii) (2007).
There is no dispute that the term “kit” appears nowhere in the original
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Specification. There is no dispute that the original Specification describes a
co-package.
The Appellants take the position that the disclosure of a co-package in
the Specification reasonably conveys to one of ordinary skill in the art the
Appellants possessed at the time of filing a “kit” as claimed. To buttress
their position, the Appellants provide a dictionary definition of “kit” as
being a collection of parts.
We find that the original disclosure to a co-package does not
reasonable convey to one of ordinary skill in the art that the Appellants
possessed the claimed “kit” at the time of the filing date.
Kits are a species of co-packages wherein the elements are related
parts. The definition the Appellants provided for “kit” (see Exhibit 1)
support that. Co-packages cover elements even when they are unrelated.
Accordingly, the broad disclosure of a co-package does not necessarily
convey possession of a “kit” species.
“What is claimed by the patent application must be the same as what
is disclosed in the specification; otherwise the patent should not issue.”
Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., 535 U.S. 722, 736
(2002). Here the claimed “kit” is not the same as the co-package disclosed in
the specification. At best, the disclosed co-package renders the “kit”
obvious. But “[o]ne shows that one is “in possession” of the invention by
describing the invention, with all its claimed limitations, not that which
makes it obvious.” Lockwood v. Am. Airlines, Inc., 107 F.3d 1565, 1572
(Fed. Cir. 1997). (Emphasis original).

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The rejection of claims 21, 23, and 24 under 35 U.S.C. §102(b) as being
anticipated by Masting.
The Appellants argued claims 21, 23, and 24 as a group (Br. 8). We
select claim 21 as the representative claim for this group, and the remaining
claims 23 and 24 stand or fall with claim 21. 37 C.F.R. § 41.37(c)(1)(vii)
(2007).
Masting teaches a co-package of two articles. In one example, the co-
package consists of a paper towel roll and, within its core, a wet wipes
container. [0002].
Claim 21 is directed to a co-package of two “occasion-based
product[s] identified by [ ] consumer need/habit/practice for said occasion”,
wherein the two products “are not commonly linked in everyday use.” One
of the embodiments disclosed in the Specification is a co-package of “facial
tissue with a digital video disk (DVD).” P. 10, l. 1.
We agree with the Examiner. We find that the claimed co-package
reads on Masting.
The Appellants argue that the co-packaged products as claimed are
“occasion based ... identified by said consumer need/habit/practice for said
occasion” rather than “task based” as the Appellants characterize Masting’s
co-packaged products to be. Br. 3. We do not see the difference. The
Appellants point to the Specification (p. 4) for support that there is a
distinction. Br. 9. But the distinction is not as clear-cut as the Appellants
suggest. The Specification states that an occasion-based product “may or
may not include one or more tasked-based efforts.” P. 4, ll. 22-23. Also,
given that the claim is directed to a product, a structural difference would
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have to be shown rather than a difference based on intended use. In that
regard, we fail to see the structural difference between an “occasion-based”
product and a “task-based” product. Point in fact, both Masting ([0002]) and
the Specification (p. 9, l. 5) describe a paper towel as a possibility for one of
the co-packaged products. It would appear that the same items Masting uses
to form its co-package can be used to form the claimed co-package.
Accordingly, we are not persuaded that the claimed combination is not
identical to that of Masting on the ground that the products are “occasion-
based product identified by a consumer need/habit/practice for an occasion.”
The Appellants also argue that the claim requires the two occasion-
based products to “not [be] commonly linked in everyday use” (Br. 10), the
argument being that Masting co-packages products that are commonly
linked in everyday use. The difficulty with this argument is that the
Appellants have not provided a definition in the Specification for what
Appellants mean by claiming a co-package of products are not commonly
linked for everyday use. The Appellants have directed us to p. 5 of the
Specification (Br. 9) but we do not see there any definition. Also, there is no
evidence on record establishing what one of ordinary skill in the art would
understand a co-package of products not commonly linked for everyday use
to mean. (Attorney arguments in a brief cannot take the place of evidence in
the record. In re Pearson, 494 F.2d 1399, 1405 (CCPA 1974).)
Accordingly, the claim phrase “not commonly linked in everyday use”
reasonably broadly covers products that are not commonly used together
every day. Setting aside the debate as to whether Masting’s paper towel/wet
wipes co-package is for everyday usage, Masting nevertheless discloses a
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product combinations that are not commonly linked in everyday use. At
[0015] Masting discloses non-limiting examples of the types of products
which can constitute either of the first or second “substrates” of the co-
package. These include toilet paper and plastic for wrapping food. Masting
also discloses the combination of metal foil and plastic film. [0020]. These
products that are not commonly used together every day. Accordingly, we
are not persuaded that the claimed combination is not identical to that of
Masting on the ground that the products are “not commonly linked in
everyday use.”
We have reviewed the Appellants’ arguments but do not find them
persuasive as to error in the rejection.

The rejection of claims 5-10 and 22 under 35 U.S.C. §103(a) as being
unpatentable over Masting and Official Notice.
The Appellants did not address the rejection of claims 5-10 and 22
under §103. These claims depend from claim 21 and the rejection of claim
21 has been sustained. Accordingly, we sustain the rejection of claims 5-10
and 22 for the reasons stated.

DECISION
The decision of the Examiner to reject claims 5-10 and 21-24 under
35 U.S.C. §112, first paragraph, as failing to comply with the written
description requirement; claims 21, 23, and 24 under 35 U.S.C. §102(b) as
being anticipated by Masting; and, claims 5-10 and 22 under 35 U.S.C.
§103(a) as being unpatentable over Masting and Official Notice, is affirmed.
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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).

AFFIRMED

MP