Ex Parte Ruman et al

Patent Trial and Appeal Board

Dec 19, 2014

11983840 (P.T.A.B. Dec. 19, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
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.
11/983,840 11/13/2007 Marcille Faye Ruman 64345935US01 6131
23556 7590 12/22/2014
KIMBERLY-CLARK WORLDWIDE, INC.
Patent Docketing
2300 Winchester Rd.
NEENAH, WI 54956
EXAMINER
CHU, KING M
ART UNIT PAPER NUMBER
3788
MAIL DATE DELIVERY MODE
12/22/2014 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 PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte MARCILLE FAYE RUMAN,
HEIDI ELLEN VANDEN BOOM, PAULA SOSALLA,
HEIDI BAUERLEIN HOPKINS, KARISSA BRUMMOND,
ABAYOMI MICHAEL SHONOIKI, and
MARGARET MARY POSORSKE
____________________

Appeal 2012-010464
Application 11/983,840
Technology Center 3700
____________________

Before: EDWARD A. BROWN, CHARLES N. GREENHUT, and
MICHAEL L. HOELTER, Administrative Patent Judges.

GREENHUT, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134 from a rejection of claims
122. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm-in-part and enter a new ground of rejection under 37 C.F.R.
§ 41.50(b).

Appeal 2012-010464
Application 11/983,840
2
The claims are directed to packages in personal care product retailing.
Claim 1, reproduced below, is illustrative of the claimed subject matter on
appeal:
1. An array of packages adapted for transporting and
selling personal care products, the array comprising:
a first package including first removable product-
identifying graphics and a plurality of first personal care
products disposed within a first storage bin, the first storage bin
including a first design and being substantially free of product-
identifying graphics; and
a second package including second removable product-
identifying graphics and a plurality of second personal care
products disposed within a second storage bin, the second
storage bin including a second design and being substantially
free of product-identifying graphics, wherein the second design
is different from and complementary to the first design.

REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Kuske
Morita
Suh
US 2002/0125171 A1
US 2003/0234199 A1
US 2006/0032782 A1
Sept. 12, 2002
Dec. 25, 2003
Feb. 16, 2006

REJECTIONS1
Claims 118 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Suh and Morita. Ans. 513.
Claims 1922 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Suh, Morita, and Kuske. Ans. 1317.

1 Appellants do not argue, and we do not reach, the provisional double
patenting rejection of claim 122. See Ex parte Moncla, 95 U.S.P.Q. 2d
1884 (Bd. Pat. App. & Int. 2010), 2010 WL 2543659.
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Application 11/983,840
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OPINION
Claim 1 is directed to an array of packages. The first and second
packages of that array must each be “disposed within” a respective first and
second storage bin in order to meet the claim. The fact that the packages
must be disposed within the storage bins makes it clear that, in the context of
claim 1, the packages are distinct structures from the storage bins. Thus, it is
unreasonable for the Examiner to construe Suh’s graphic 26 as both the
“product-identifying graphics” of the recited “package” and the “design” of
the second package which is “substantially free of product-identifying
graphics.” Ans. 5; App. Br. 67. Accordingly, we do not sustain the
rejection of claims 112, being based on an unreasonable claim
construction.
Claims 13 and 17 define the recited “package[s]” differently from
claim 1, in that the packages of claims 13 and 17 include personal care
products and a storage bin having non-product identifying graphics. The
Specification refers to an “inner package 160” and a “packaging system
100.” Spec., 7, 8. Neither of these more-specific terms that are used in the
Specification is used to define the claimed subject matter. Thus, based on
the context of the recitation of “package” in the claims, it is reasonable to
interpret the “package” of claim 1 as similar to the inner package described
in the Specification and the “package” of claims 13 and 17 as similar to the
packaging system. Thus, the Examiner’s interpretation of Suh’s personal
care products, storage case 12 and graphic 26, combining to form the
package of claims 13 and 17, as discussed above, is reasonable considering
the language of claims 13 and 17.
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The Examiner’s comment in rejecting claim 6, regarding the identity
of the packages resulting from the combination of Suh and Morita, and
containing the product identifying graphics—a feature of the inner packages
according to claim 1—is clearly not directed to the graphics on Morita’s
outer packages 21, 22, and 23, which clearly contains different and
complimentary designs 4, 6. Morita fig. 1A, contra App. Br. 9.
Although Suh promotes distinguishing products in paragraph [0004],
Suh does not criticize with any specificity a substantial absence of product-
identifying graphics on an outer package specifically or state that such a
substantial absence would, in fact, fail to distinguish a manufacturer’s
product. Non-product identifying graphics and/or the absence of product
identifying graphics on an outer package may likewise achieve Suh’s stated
goal of ultimately distinguishing a manufacturer’s products. Thus, we do
not agree with Appellants’ teaching-away argument. See App. Br. 9.
In rejecting claims 13 and 17, the Examiner included general
statements summarizing the principles of the so-called printed-matter
doctrine. Ans. 9, 12. However, the Examiner did not provide any analysis
as to how the principles of law concerning printed matter are applicable to
claims 13 and 17.2 As the Examiner has, however, identified in the prior art
all the recited features of claims 13 and 17, including the printed matter, and
has articulated reasons why one skilled in the art would have found it
obvious to combine the teachings of Suh and Morita so as to arrive at the

2 We additionally note that these general principles of law are not, without
more, generally considered a sufficient reason for concluding that claimed
subject matter would have been obvious, as the Examiner appeared to do
concerning claim 19. Ans. 15.
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Application 11/983,840
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claimed invention, we do not view the Examiner’s rejection of these claims
as relying on any principles of law regarding printed-matter.
Accordingly, we sustain the rejection of claims 13 and 17 and of those
claims depending therefrom as not being separately argued.
Claim 19, although seemingly being directed to a machine or, more
probably, a manufacture, is rendered indefinite by requiring particular
process steps to be performed. 35 U.S.C. § 101 does not sanction individual
claims directed to more than one statutory class. Further, it is unclear
whether claim 19 is infringed when the array of packages is assembled, or
when that array is assembled and the recited first and second packages are
“provided to [respective first and second] retailer[s].” The mixed statutory
classes of invention make it so that “a manufacturer or seller of the claimed
apparatus would not know from the claim whether it might also be liable for
contributory infringement because a buyer or user of the apparatus later
performs the claimed method of using the apparatus.” IPXL Holdings,
L.L.C. v Amazon.com, Inc., 430 F.3d 1377, 1384 (Fed. Cir. 2005)(citing Ex
parte Lyell, 17 U.S.P.Q. 2d 1548 (1990) and MPEP § 2173.05(p)(II)
(1999)). Accordingly, we reject claim 19 and claims 2022 depending
therefrom, as unpatentable under 35 U.S.C. §§ 101 and 112, second
paragraph. We reverse the Examiner’s prior art rejection of claims 1922
without reaching the merits thereof. See In re Steele, 305 F.2d 859, 862
(CCPA 1962) (A prior art rejection cannot be sustained if the hypothetical
person of ordinary skill in the art would have to make speculative
assumptions concerning the meaning of claim language.); see also In re
Wilson, 424 F.2d 1382, 1385 (CCPA 1970) (“If no reasonably definite
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Application 11/983,840
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meaning can be ascribed to certain terms in the claim, the subject matter
does not become obviousthe claim becomes indefinite.”).

DECISION
The Examiner’s rejection of claims 112 is reversed.
The Examiner’s rejection of claims 1318 is affirmed.
The Examiner’s rejection of claims 1922 is reversed.
We enter new grounds for rejecting claims 1922 under 35 U.S.C. §§
101 and 112, second paragraph.

FINALITY OF DECISION
Regarding the affirmed rejection(s), 37 C.F.R. § 41.52(a)(1) provides
“Appellant may file a single request for rehearing within two months from
the date of the original decision of the Board.”
In addition to affirming the Examiner’s rejections of one or more
claims, this decision contains new grounds of rejection pursuant to 37 C.F.R.
§ 41.50(b). 37 C.F.R. § 41.50(b) provides “[a] new ground of rejection
pursuant to this paragraph shall not be considered final for judicial review.”
37 C.F.R. § 41.50(b) also provides that Appellants, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION:
must exercise one of the following two options with respect to
the new ground of rejection to avoid termination of the appeal
as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new evidence relating
to the claims so rejected, or both, and have the matter
reconsidered by the Examiner, in which event the proceeding
will be remanded to the Examiner. . . .
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(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same record. . . .
Should Appellants elect to prosecute further before the Examiner
pursuant to 37 C.F.R. § 41.50(b)(1), in order to preserve the right to seek
review under 35 U.S.C. §§ 141 or 145 with respect to the affirmed rejection,
the effective date of the affirmance is deferred until conclusion of the
prosecution before the Examiner unless, as a mere incident to the limited
prosecution, the affirmed rejection is overcome.
If Appellants elect prosecution before the Examiner and this does not
result in allowance of the application, abandonment or a second appeal, this
case should be returned to the Patent Trial and Appeal Board for final action
on the affirmed rejection, including any timely request for rehearing thereof.

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).

AFFIRMED-IN-PART; 37 C.F.R. § 41.50(b)
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