Ex Parte Sarbo et alDownload PDFBoard of Patent Appeals and InterferencesJul 7, 200911251269 (B.P.A.I. Jul. 7, 2009) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES ____________ Ex parte BENJAMIN CHARLES SARBO, BART JOHN RABAS, and HEATHER ANNE SOREBO ____________ Appeal 2009-002924 Application 11/251,2691 Technology Center 3600 ____________ Decided:2 July 07, 2009 ____________ Before WILLIAM F. PATE, III, SCOTT R. BOALICK, and FRED A. SILVERBERG, Administrative Patent Judges. BOALICK, Administrative Patent Judge. 1 Application filed Oct. 13, 2005. The real party in interest is Kimberly- Clark Worldwide, Inc. 2 The two-month time period for filing an appeal or commencing a civil action, as recited in 37 C.F.R. § 1.304, begins to run from the decided date shown on this page of the decision. The time period does not run from the Mail Date (paper delivery) or Notification Date (electronic delivery). Appeal 2009-002924 Application 11/251,269 2 DECISION ON APPEAL This is an appeal under 35 U.S.C. § 134(a) from the final rejection of claims 1-19, all the claims pending in the application. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. STATEMENT OF THE CASE Appellants’ invention relates to toilet paper with a repeating graphic pattern containing a series of relatively small clue-like objects which extend over several sheets and lead to a relatively large target object to indicate where the toilet paper is to be torn. (Spec. Abstract.) Claim 1 is exemplary: 1. A roll of toilet paper comprising a wound length of paper having multiple spaced-apart perforation lines, wherein said wound length of paper contains a repeating graphic pattern containing a series of relatively small clue-like objects which lead to a relatively large target object as the roll is unwound. The prior art relied upon by the Examiner in rejecting the claims on appeal is: Penn US 6,926,308 B2 Aug. 9, 2005 (filed Apr. 15, 2003) Claims 1-19 stand rejected under 35 U.S.C. § 103(a) as being obvious over Penn. Appeal 2009-002924 Application 11/251,269 3 Rather than repeat the arguments of Appellants or the Examiner, we refer to the Brief and the Answer for their respective details. Only those arguments actually made by Appellants have been considered in this decision. Arguments that Appellants did not make in the Brief have not been considered and are deemed to be waived. See 37 C.F.R. § 41.37(c)(1)(vii). ISSUE Appellants argue that “it is clear that printed matter can patentably distinguish an invention from the prior art when there is a new and unobvious functional relationship between the printed matter and the substrate” and that the “claimed graphic pattern is not merely decorative, but functional in that it teaches childrren [sic] how much toilet paper to use.” (Br. 2.) Appellants also argue that “[t]he concept of providing clue-like objects . . . leading to the target object . . . is not suggested by the teachings of Penn.” (Br. 2.) Appellants’ arguments present the following issue: Have Appellants shown that the Examiner erred in rejecting claims 1-19 under 35 U.S.C. § 103(a)? The resolution of this issue turns on the following subsidiary issues: 1. Have Appellants shown that the Examiner erred in finding that the claimed graphic pattern does not provide a new and nonobvious functional relationship with the substrate? Appeal 2009-002924 Application 11/251,269 4 2. Have Appellants shown that the Examiner erred in finding that Penn teaches “a repeating graphic pattern containing a series of relatively small clue-like objects which lead to a relatively large target object,” as recited in claim 1? FINDINGS OF FACT The record supports the following findings of fact (FF) by a preponderance of the evidence. Penn 1. Penn relates to printing or embossing information on toilet paper, paper towels and/or facial tissues. (Col. 1, ll. 49-54.) In one embodiment, Penn describes that “toilet paper may be patterned such that a plurality of sheets describe or pictorially illustrate a story to help enable a child to properly be potty trained.” (Col. 4, ll. 44-49; fig. 6.) Penn further describes that the story set may be repeated. (Col. 4, ll. 56-57.) Penn does not provide any specific disclosure regarding the relative size of the patterns for sheets 40 to 48. 2. In another embodiment, Penn describes “a plurality of sheets 60 having a series of indicia 62 thereon every given number of sheets 60.” (Col. 5, ll. 38-40; fig. 9.) Penn further describes that “[a] parent may then teach a child to pull the toilet paper every time the indicia 62 appears in order to utilize the proper amount of toilet paper per given wiping.” (Col. 5, ll. 40-43.) “The indicia may further be any design Appeal 2009-002924 Application 11/251,269 5 such as a geometric figure . . . , a cartoon character, or any other figure or design of interest to children.” (Col. 5, ll. 46-48.) Specification 3. In the “Background of the Invention,” Appellants describe that toilet paper is used by children to “cleanse themselves” after bathroom use. (Spec. 1:4-9.) PRINCIPLES OF LAW On appeal, all timely filed evidence and properly presented arguments are considered by the Board. See In re Piasecki, 745 F.2d 1468, 1472 (Fed. Cir. 1984). In the examination of a patent application, the Examiner bears the initial burden of showing a prima facie case of unpatentability. Id. When that burden is met, the burden then shifts to the Applicant to rebut. Id.; see also In re Harris, 409 F.3d 1339, 1343-44 (Fed. Cir. 2005) (finding rebuttal evidence unpersuasive). If the Applicant produces rebuttal evidence of adequate weight, the prima facie case of unpatentability is dissipated. See Piasecki, 745 F.2d at 1472. Thereafter, patentability is determined in view of the entire record. Id. However, on appeal to the Board it is the Appellants’ burden to establish that the Examiner did not sustain the necessary burden and to show that the Examiner erred. See In re Kahn, 441 F.3d 977, 985-86 (Fed. Cir. 2006). “Section 103 forbids issuance of a patent when ‘the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the Appeal 2009-002924 Application 11/251,269 6 invention was made to a person having ordinary skill in the art to which said subject matter pertains.’” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). In KSR, the Supreme Court emphasized “the need for caution in granting a patent based on the combination of elements found in the prior art,” id. at 415, and discussed circumstances in which a patent might be determined to be obvious. In particular, the Supreme Court emphasized that “[t]he combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results.” Id. at 416. The Court explained: When a work is available in one field of endeavor, design incentives and other market forces can prompt variations of it, either in the same field or a different one. If a person of ordinary skill can implement a predictable variation, § 103 likely bars its patentability. For the same reason, if a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious unless its actual application is beyond his or her skill. Id. at 417. The Court also noted that “[c]ommon sense teaches . . . that familiar items may have obvious uses beyond their primary purposes, and in many cases a person of ordinary skill will be able to fit the teachings of multiple patents together like pieces of a puzzle.” Id. at 420. “Differences between an invention and the prior art cited against it cannot be ignored merely because those differences reside in the content of the printed matter.” In re Gulack, 703 F.2d 1381, 1385 (Fed. Cir. 1983). To determine if the printed matter is considered a patentable limitation, “the critical question is whether there exists any new and unobvious functional relationship between the printed matter and the substrate.” Id. at 1386. Appeal 2009-002924 Application 11/251,269 7 However, “[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. at 1385; see also In re Ngai, 367 F.3d 1336, 1339 (Fed. Cir. 1994) (upholding obviousness rejection where a new set of instructions was not functionally related to the known kit with which it was associated). ANALYSIS We do not find Appellants’ arguments that the Examiner erred in rejecting representative claim 13 under 35 U.S.C. § 103(a) over Penn to be meritorious. Appellants’ argument that the claimed graphic pattern is functional because it teaches children how much toilet paper to use is not persuasive. In particular, Appellants argue that the “graphic pattern [which] teaches children how much toilet paper to use is new and unobvious in that it piques a child’s interest and curiosity by enticing them to follow the small clue-like indicia . . . to the large target indicia . . . where they tear the paper.” (Br. 2.) Appellants’ Specification describes that the function of toilet paper is for children to “cleanse themselves” after bathroom use. (FF 3.) However, the printed matter (i.e., the claimed graphic pattern) does not alter the function of the substrate (i.e., the toilet paper) because the graphic pattern does not alter the cleansing properties of the toilet paper, such as, for example, absorption capacity, texture or strength. Thus, Appellants have not shown any new and unobvious functional relationship between the printed 3 Appellants argue claims 1-19 together as a group. (Br. 2-3.) Accordingly, we select claim 1 as representative. See 37 C.F.R. § 41.37(c)(1)(vii). Appeal 2009-002924 Application 11/251,269 8 matter and the substrate. See Gulack, 703 F.2d at 1386. We conclude that the claimed “repeating graphic pattern containing a series of relatively small clue-like objects which lead to a relatively large target object,” as recited in claim 1, does not distinguish the invention from the prior art of Penn in terms of patentability. Furthermore, Appellants’ argument that Penn does not teach or suggest the limitation “a repeating graphic pattern containing a series of relatively small clue-like objects which lead to a relatively large target object,” as recited in claim 1, is not persuasive. Penn teaches that, in one embodiment (i.e., Figure 6), “toilet paper may be patterned such that a plurality of sheets describe or pictorially illustrate a story to help enable a child to properly be potty trained.” (FF 1.) In another embodiment (i.e., Figure 9), Penn teaches “a plurality of sheets 60 having a series of indicia 62 thereon every given number of sheets 60.” (FF 2.) Penn discloses that the indicia 62 “may further be any design such as a geometric figure . . . , a cartoon character, or any other figure or design of interest to children.” (FF 2.) Penn teaches that “[a] parent may then teach a child to pull the toilet paper every time the indicia 62 appears in order to utilize the proper amount of toilet paper per given wiping.” (FF 2.) In other words, Penn teaches that the purpose of the indicia 62 is to identify and distinguish a specific sheet for the child to tear. (See FF 2.) One of ordinary skill in the art would have modified the embodiment of Figure 6 (i.e., sheets 40 to 48 (see FF 1)) with the embodiment of Figure 9 to include the indicia 62 with a “design of interest to children” (FF 2) for the purpose of “[utilizing] the proper amount of toilet paper per given wiping” (FF 2). Thus, one of ordinary skill in the art would have modified sheet 48 Appeal 2009-002924 Application 11/251,269 9 of Penn with the relatively larger sized indicia 62 to aid the child in identifying and distinguishing a specific sheet to tear. Combining the indicia 62 of the Figure 9 embodiment with the Figure 6 embodiment of Penn (i.e., sheets 40 to 48) is no more than the simple substitution of one known element for another, with no unexpected results. See KSR, 550 U.S. at 417. And it is no more than an exercise of common sense to increase the relative size of the indicia 62 in order to aid the child in identifying and distinguishing a specific sheet to tear. See id. at 420. Therefore, Appellants have not shown that the Examiner erred in finding that Penn teaches or suggests “a repeating graphic pattern containing a series of relatively small clue-like objects which lead to a relatively large target object,” as recited in claim 1. We conclude that Appellants have not shown that the Examiner erred in rejecting claim 1 under 35 U.S.C. § 103(a). Claims 2-19 were not argued separately, and fall together with claim 1. CONCLUSION Based on the findings of facts and analysis above, we conclude that Appellants have not shown that the Examiner erred in rejecting claims 1-19 under 35 U.S.C. § 103(a). DECISION The rejection of claims 1-19 under 35 U.S.C. § 103(a) is affirmed. Appeal 2009-002924 Application 11/251,269 10 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). AFFIRMED MAT Kimberly-Clark Worldwide, Inc. Catherine E. Wolf 401 North Lake Street Neenah, WI 54956 Copy with citationCopy as parenthetical citation