Ex Parte Moss

Board of Patent Appeals and Interferences

Mar 29, 2007

10320295 (B.P.A.I. Mar. 29, 2007)

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for publication and is not binding precedent of the Board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.
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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.
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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.
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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).
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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
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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
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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
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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).
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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) .

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ORDER
The Examiner's rejection of claims 23-32 under 35 U.S.C. § 103(a) is
Affirmed.

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AFFIRMED

JRG
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UNILEVER INTELLECTUAL PROPERTY GROUP
700 SYLVAN AVENUE,
BLDG C2 SOUTH
ENGLEWOOD CLIFFS, NJ 07632-3100

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