Ex Parte SARTINI et al

Patent Trials and Appeals Board

May 20, 2019

14084703 - (D) (P.T.A.B. May. 20, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/084,703 11/20/2013
27752 7590 05/22/2019
THE PROCTER & GAMBLE COMPANY
Global IP Services
Central Building, C9
One Procter and Gamble Plaza
CINCINNATI, OH 45202
FIRST NAMED INVENTOR
Emma Lynn SARTIN!
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
12666 1039
EXAMINER
HALPERN, MARK
ART UNIT PAPER NUMBER
1748
NOTIFICATION DATE DELIVERY MODE
05/22/2019 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
centraldocket.im @pg.com
pair_pg@firsttofile.com
mayer.jk@pg.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte EMMA LYNN SAR TINI and ANDRE MELLIN1
Appeal2017-009121
Application 14/084,703
Technology Center 1700
Before MICHAEL P. COLAIANNI, CHRISTOPHER C. KENNEDY, and
MICHAEL G. McMANUS, Administrative Patent Judges.
KENNEDY, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) from the Examiner's
decision rejecting claims 1-8 and 10-20. We have jurisdiction under
35 U.S.C. § 6(b ).
We AFFIRM.
BACKGROUND
The subject matter on appeal relates to "a sanitary tissue product
comprising a surface pattern that communicates a woven product to a
consumer of the sanitary tissue product." E.g., Spec. 2:18-20; Claim 1.
1 The Appellant is the Applicant, The Procter & Gamble Company, which is
also identified as the real party in interest. Br. 1.
Appeal2017-009121
Application 14/084,703
Claim 1 is reproduced below from page 6 ( Claims Appendix) of the Appeal
Brief (paragraph breaks and indentation added):
1. A sanitary tissue product comprising
a surface pattern comprising
a plurality of repeating design elements connected together by
a plurality of embossed line elements that create densified
regions compared to other regions of the sanitary tissue
product such that a scrubby texture is formed,
wherein at least one of the repeating design elements
contains two opposing open termini and two opposing
closed termini and
wherein two or more of the repeating design elements are
connected to one another by their respective line elements
through respective opposing open termini,
wherein the respective connected opposing termini are
sandwiched between opposing closed termini of two or
more other repeating design elements to provide a
woven appearance,
wherein the surface pattern communicates a woven product
better than sanitary tissue products without the surface
pattern.
REJECTIONS ON APPEAL
The claims stand rejected as follows:
1. Claims 1-3 and 11-20 under 35 U.S.C. § 103(a) as unpatentable
over Spitzer (US 2009/0297775 Al, published Dec. 3, 2009) optionally in
view ofNickel (US 2007/0137813 Al, published June 21, 2007);
2. Claims 4-8 and 10 under 35 U.S.C. § 103(a) as unpatentable over
Spitzer and Applicant Admitted Prior Art.
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Appeal2017-009121
Application 14/084,703
3. Claims 1-8 and 10-20 for nonstatutory double patenting
(provisional) over claims 1-20 of co-pending U.S. Patent Application No.
14/084,717.
ANALYSIS
Re} ections 1 and 2
The Appellant argues the claims as a group. We select claim 1 as
representative. The remaining claims will stand or fall with claim 1.
After review of the cited evidence in the appeal record and the
opposing positions of the Appellant and the Examiner, we determine that the
Appellant has not identified reversible error in the Examiner's rejections.
Accordingly, we affirm the rejections for the reasons set forth below, in the
Final Action, and in the Examiner's Answer. See generally Final Act. 2-9;
Ans. 2-7.
The Examiner finds that Spitzer teaches a tissue paper having a
repeating design element comprising two opposing open termini and two
opposing closed termini. Ans. 2. The Examiner acknowledges that Spitzer
does not disclose the specific design pattern described by claim 1. Id.
However, the Examiner finds that the specific pattern "is decorative" and
that "aesthetically pleasing considerations ... do[] not structurally
differentiate the tissue product over the cited prior art." Id. at 2-3. Citing In
re Seid, 161 F.2d 229 (CCPA 1947), the Examiner determines that
"[f]eatures relating only to ornamentation which have no mechanical
function cannot be relied upon to patentability distinguish the claimed
invention from the prior art." Id. at 3.
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Appeal2017-009121
Application 14/084,703
The Appellant first argues that Seid "is not applicable ... because
Claim 1 includes features that do not only relate to ornamentation and have
no mechanical function." Br. 3.
That argument is not persuasive because the claims at issue in Seid
also included features that were not purely ornamental ( e.g., "a bottle having
a narrow neck at one end portion and a relatively enlarged body joined to
said neck .... "), but the CCPA held that the purely ornamental aspects of
the claims could not be used to distinguish the prior art. See Seid, 161 F .3d
at 231 ("[M]atters ... [that] relate to ornamentation only and have no
mechanical function whatsoever" cannot "properly be relied on ... as the
appealed claims are not directed to a design but are structural claims.").
The Appellant also argues that the recited pattern has mechanical
function in that it, e.g., provides "a scrubby texture on the sanitary tissue
product." Br. 3-4.
That argument is not persuasive. The "embossed line elements"
appear to be the structural claim elements that create the scrubby texture, see
id. at 3 ("Appellant submits that the embossed line elements of the surface
pattern ... exhibit a mechanical function and are thus not only related to
ornamentation."), and there is no meaningful dispute that Spitzer' s tissue has
embossed line elements that create densified regions compared to other
regions. The Appellant does not persuasively identify any structural
component of claim 1 that is different from ( other than the specific
ornamental design aspects) or would yield any different mechanical function
from the sanitary tissue of Spitzer.
In that regard, we observe that the Appellant's Specification itself
emphasizes aesthetic rather than functional aspects of its design. For
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Application 14/084,703
instance, the problem identified by the Specification is that "known surface
patterns" do not "adequately convey a woven appearance." Spec. 2:6-7
( emphasis added). That appears to be an aesthetic or decorative concern.
The Specification goes on to identify a need for tissue that communicates a
particular appearance. Id. at 2: 11-20. The disputed elements of claim 1
concern that appearance. The Appellant does not persuasively identify an
aspect of the claim or the Specification that indicates that the specific
ornamental design described by claim 1 imparts a mechanical function to the
claimed subject matter beyond the mechanical function of the prior art tissue
paper, which apart from ornamental design, appears to be structurally the
same as that of claim 1. E.g., Spitzer at Abstract, Fig. 5C; see also Seid, 161
F.3d at 231; cf In re Distefano, 808 F.3d 845, 848-51 (Fed. Cir. 2015)
(reaffirming the principle that no patentable weight is to be given to
information recorded in any substrate if that printed matter is for
informational content only and not functionally or structurally related to the
substrate).
On this record, we are not persuaded of reversible error in the
Examiner's rejections. In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011)
("[I]t has long been the Board's practice to require an applicant to identify
the alleged error in the examiner's rejections .... ").
Rejection 3
As to the provisional obviousness-type double patenting rejection, the
Appellant states only that "when and if this rejection ripens, Appellant will
submit a Terminal Disclaimer to overcome such rejection." Br. 5.
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Application 14/084,703
Because the Appellant does assert any error as to the rejection, we
summarily affirm it.
CONCLUSION
We AFFIRM the Examiner's rejections of claims 1-8 and 10-20.
No time period for taking any subsequent action in connection with
this appeal may be extended under 3 7 C.F .R. § 1.13 6( a).
AFFIRMED
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