Ex Parte MossDownload PDFBoard of Patent Appeals and InterferencesMar 29, 200710320295 (B.P.A.I. Mar. 29, 2007) Copy Citation The opinion in support of the decision being entered today was not written 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 29 30 31 32 33 34 for publication and is not binding precedent of the Board UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES ____________________ Ex parte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 MOSS ____________________ Appeal 2006-3167 Application 10/320,2951 Technology Center 3700 ____________________ Decided: March 29, 2007 ____________________ Before: MURRIEL C. CRAWFORD, STUART S. LEVY, and ROBERT E. NAPPI, Administrative Patent Judges. LEVY, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF CASE Appellant appeals under 35 U.S.C. § 134 (2002) from a final rejection of claims 23-32. We have jurisdiction under 35 U.S.C. § 6(b) (2002). Appellant invented a package for a bar of soap. (Specification 1). 1 Application filed December 16, 2002. The real party in interest is Unilever Home & Personal Care USA, Division of Conopco, Inc. Appeal 2007-3167 Application 10/320,295 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 The Examiner rejected claims 28-32 under 35 U.S.C. § 103(a) under 35 U.S.C. § 103(a) (2004) in view of Nakamura in view of Will. The Examiner additionally rejected claims 23-27 under 35 U.S.C. § 103(a) as being unpatentable over Kiyoshi in view of Nakamura and Will. The prior art relied upon by the Examiner in rejecting the claims on appeal is: Nakamura2 JP 57-85482 May 26, 1982 Will 5,098,012 Mar. 24, 1992 Kiyoshi JP 10-152179 Jun. 9, 1998 With respect to the rejection of claims 28-32 Appellant contends (Br. 6) that Nakamura's process of fabricating an angular tube which is glued together with a glue flap is different from the process of wrapping an object with a plastic sheet, and that wrapping a soap bar with a sheet is not the same as filling a fabricated tube with a confectionary. Appellant further contends that Will’s process of wrapping a soap bar with a stiffener made from economical paper teaches away from plastic, and that there is no disclosure or suggestion that Will be combined with Nakamura. The Examiner contends (Answer, 3) that Nakamura discloses the limitations of the claims except for the object being a bar of soap. To make up for this deficiency of Nakamura, the Examiner turns to Will for a teaching of a package comprising a bar of soap having a stiffener member around the longitudinal extent of the bar, but not surrounding the ends of the bar. 2 We rely upon the English language translations of Nakamura and Kiyoshi that are of record. 2 Appeal 2007-3167 Application 10/320,295 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 With respect to the rejection of claims 23-27 Appellant contends (Br. 7) that "[c]laims 23 and 283 distinguish over Kyoshi by further limiting the stiff sheet material to that made entirely of a plastics material," and that in Kiyoshi, the stiffener is a laminated board of paper, without transparency except for an opening through which tissues may be dispensed. The Examiner contends (Answer 4) that Kiyoshi discloses the claim limitations except for the stiffening member being formed entirely of a plastics material and the pile of wet tissue being a bar of soap. The Examiner relies upon Will for a teaching of the object being a bar of soap, and relies upon Nakamura for a teaching of the stiffener being made entirely of plastics. We affirm. ISSUE With regard to the rejection of claims 28-32, the issue is whether Appellant has shown that the Examiner erred in holding that the teachings and suggestions of Nakamura and Will would have suggested to an artisan the invention of claims 28-32. The issue turns on whether the prior art would have suggested replacing the confectionary of Nakamura with a bar of soap as disclosed by Will. With respect to claims 23-27 the issue is whether Appellant has shown that the Examiner erred in holding that the combined teachings of Kiyoshi, Nakamura, and will would have suggested the language of claims 23-27. 3 Appellant's reference to Kiyoshi is unclear as Kiyoshi has not been applied to claim 28. 3 Appeal 2007-3167 Application 10/320,295 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 FINDINGS OF FACT Based upon a preponderance of the evidence, we make the following findings of fact: 1. Appellant invented a soap wrapper, and in particular, a bar of soap wrapped at least by a stiffening member. A package comprises the bar of soap, the stiffening member, and a wrapper surrounding both the bar of soap and the stiffening member. (Specification 1). 2. Nakamura is directed to "a package for containing a confectionary or the like prepared by forming a transparent rigid film sheet into an angular tube to which the confectionary or the like is contained and then inserting and sealing the annular tube in a transparent plastic bag.” (Translation 1). 3. Nakamura discloses that the transparent rigid film sheet 1 is made from a rigid vinyl chloride sheet. (Translation 2). 4. Nakamura describes the confectionaries or the like as being "the bulky product." (id.). 5. The Examiner found (Answer 3) that the angular tube/stiffening member 1, 2 of Nakamura is disposed around at least the longitudinal extent of the object, with the longitudinal ends of the object not surrounded by the stiffening member. 6. Will discloses that articles such as bars of soap require some protection but that expensive and elaborate packaging is not justified. (col. 1, ll. 8-11). 4 Appeal 2007-3167 Application 10/320,295 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 7. Will discloses that as shown in fig. 1, oblong bar of soap S with convex faces has a paper sheet wrapped around it to form a tubular liner 2, open at the ends. (col. 2, ll. 36-38). 8. At the end of the bar, the liner is folded over to provide a double thickness margin 6. (col. 2, ll. 39-40). In packaging, the liner is wrapped around the soap. (col. 2, ll. 44-45). 9. The soap S and liner 6 is then placed together with a conventional outer wrapper 8, of thinner, preferably moisture- resistant paper 8. (col. 2, ll. 46-48). 10. Kiyoshi discloses a wrapping means 1 that has an outer wrapping member 2 of resilient material and an inner reinforcement member 9 of paper laminated with synthetic resin. (Translation 2). 11. Reinforcing member 9 has an opening 15 for insertion of the tissues. (id.). 12. As shown in figure 4, reinforcing member 9 can have a bottom portion 16 so that the pile of wet tissues is surrounded in its longitudinal direction, while leaving the ends free of the reinforcing member 9. (id.). PRINCIPLES OF LAW On appeal, Appellant bears the burden of showing that the Examiner has not established a legally sufficient basis for combining the teachings of the prior art. Appellant may sustain this burden by showing that, where the Examiner relies on a combination of disclosures, the Examiner failed to 5 Appeal 2007-3167 Application 10/320,295 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 provide sufficient evidence to show that one having ordinary skill in the art would have done what Appellant did. United States v. Adams, 383 U.S. 39 (1966); In re Kahn, 441 F.3d 977, 987-988, 78 USPQ2d 1329, 1336 (Fed. Cir. 2006); DyStar Textilfarben GmbH & Co. Deutschland KG v. C.H. Patrick, Co., 464 F.3d 1356, 1360-1361, 80 USPQ2d 1641, 1645 (Fed. Cir. 2006). The mere fact that all the claimed elements or steps appear in the prior art is not per se sufficient to establish that it would have been obvious to combine those elements. United States v. Adams, id; Smith Industries Medical Systems, Inc. v. Vital Signs, Inc., 183 F.3d 1347, 1356, 51 USPQ2d 1415, 1420 (Fed. Cir. 1999). ANALYSIS We begin with the rejection of claims 23-27 under 35 U.S.C. § 103(a) as being unpatentable over Nakamura in view of Will. We note at the outset that the process of claim 23 does not include the wrapper, but only the bar of soap and the stiffening member. From facts 5-8 we find that Will wraps the bar of soap with the liner 2, but does not wrap the stiffening member around the ends of the bar of soap (Fig. 1). Thus, Will describes the claimed invention with the exception that the liner of Will is made of paper. In Nakamura, the stiffening member 1, 2 is wrapped around the bulky material (facts 2-4). We find that as broadly recited in claim 23, the language does not preclude the stiffening sheet from being folded before the bulky material is added. For example, if the stiffening member 1, 2 of Nakamura is folded into a tube shape and the bulky material is slid in from an open edge of the stiffening material, this meets the claimed "wrapping the bar of soap (bulky product) with the stiffening material." Note that claim 23 does not require 6 Appeal 2007-3167 Application 10/320,295 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 that an edge of the flat stiffening material is placed against a longitudinal portion of the bar of soap and the stiffening material is then wrapped around the circumference of the bar of soap. Thus, we find that Nakamura meets the claimed invention with the exception that the bulky product of Nakamura is not described as being soap. From the description in Will of having a bar of soap wrapped by a stiffening member, we find that an artisan would have been motivated to replace the bulky material of Nakamura with a bulky material in the form of a bar of soap. In addition, from the description in Nakamura that the stiffening material (transparent rigid film sheet) is made from vinyl chloride, a plastic, (fact 3) we find that an artisan would have been motivated to make the liner of Will transparent plastic instead of paper, so that a customer can view of product while making a decision of whether or not to purchase the product. Accordingly, for both of these reasons, we hold that an artisan would have arrived at the claimed process from the combined teachings and suggestions of Nakamura and Will. We are not persuaded by Appellant's assertion (Br. 6) that the process of wrapping a soap bar with a sheet is not the same as filling a tube with a confectionary. As we found, supra, nothing in claim 23 provides any details of the process of how the bar of soap is actually wrapped. Nor are we persuaded by Appellant's assertion (id.) that Will's process of using a paper stiffener to wrap a bar of soap teaches away from wrapping the bar of with plastic. From Will's description of wrapping the soap bar with a paper liner, we find that the reference does not recite that the liner is made of plastic. However, the fact that the reference does not describe using a plastic liner is 7 Appeal 2007-3167 Application 10/320,295 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 not a teaching away from using a plastic liner, since the disclosure of a paper liner would not lead an artisan away from using a plastic material for the liner. In addition, we note that Nakamura is not limited to the use of a confectionary as the object to be packaged. From the description of "confectionary or the like" and referral to the packaged material as a bulky product (facts 2 and 4) we find that any suitable bulky material can be placed in the package, such as the soap bar packaged with a liner as taught by Will (facts 6-7). Nor are we persuaded by Appellant's assertion (Reply Br. 2) that the angular tube of Nakamura doesn't meet the claimed "stiff sheet material." From the description in Nakamura that the bulky product to be packaged is surrounded by a transparent rigid film sheet 1, we disagree with Appellant that the transparent rigid film sheet material is not a stiff sheet material. Nor are we persuaded by Appellant's assertion (id.) that the angular tube of Nakamura is not stiff sheet material due to the presence of its right angle bends. The transparent rigid film sheet of Nakamura is a sheet before it is bent into the tube shape to receive the bulky product, and there is nothing in the language of the process of claim 23 that would preclude the sheet being wrapped around in a manner that results in creases or right angles. In prosecution before the Patent & Trademark Office, there is no reason why Appellant cannot amend the claims to distinguish over the prior art. We decline to read into the claims limitations not found therein. From all of the above, we hold that Appellant has not met the burden of showing error on the part of the Examiner in rejecting claims 23-27 under 35 U.S.C. § 103(a). 8 Appeal 2007-3167 Application 10/320,295 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 We turn next to the rejection of claims 28-32 under 35 U.S.C. § 103(a) as being unpatentable over Kiyoshi in view of Nakamura and Will. At the outset, we note that Appellant is correct (Reply Br. 3) that opening 15 of Kiyoshi is not a transparent portion. A transparent portion is a solid portion of an element that is transparent to light. An opening in a surface is not transparent, as asserted by the Examiner (Answer, 4). In addition, we note that claim 28 is a product by process claim. Such a claim is drawn to the product, not the process. The weight given to the recited elements in the claims is for the structure that results from the process, as well as any structure "gleaned" from the process steps. However, from our findings, supra, that Nakamura describes the plastic stiffening member being of rigid transparent plastic material (fact 3), we find that the combined teachings and suggestions of Nakamura and will would have suggested to an artisan the language of claim 28 for the same reasons as we sustained the rejection of claims 23-27. Accordingly, we find that the combined teachings and suggestions of Nakamura and Will would have suggested the language of claim 28, and consider Kiyoshi to be surplusage. CONCLUSION OF LAW On the record before us, Appellant has failed to show error on the part of the Examiner in rejecting claims 23-32 under 35 U.S.C. § 103(a) . 9 Appeal 2007-3167 Application 10/320,295 1 2 3 4 ORDER The Examiner's rejection of claims 23-32 under 35 U.S.C. § 103(a) is Affirmed. 5 6 7 AFFIRMED JRG 10 Appeal 2007-3167 Application 10/320,295 1 2 3 4 5 6 UNILEVER INTELLECTUAL PROPERTY GROUP 700 SYLVAN AVENUE, BLDG C2 SOUTH ENGLEWOOD CLIFFS, NJ 07632-3100 11 Copy with citationCopy as parenthetical citation