Ex Parte Sarbo et al

Board of Patent Appeals and Interferences

Jul 7, 2009

11251269 (B.P.A.I. Jul. 7, 2009)

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).
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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.

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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?
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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
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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
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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.
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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).
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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
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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.

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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).

AFFIRMED

MAT

Kimberly-Clark Worldwide, Inc.
Catherine E. Wolf
401 North Lake Street
Neenah, WI 54956