Ex Parte Sonnenberg

Patent Trial and Appeal Board

Mar 27, 2017

12637843 (P.T.A.B. Mar. 27, 2017)

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.
12/637,843 12/15/2009 Neville Sonnenberg Z-4857 4058
27752 7590 03/29/2017
THE PROCTER & GAMBLE COMPANY
Global IP Services
Central Building, C9
One Procter and Gamble Plaza
CINCINNATI, OH 45202
EXAMINER
ORTIZ, RAFAEL ALFREDO
ART UNIT PAPER NUMBER
3728
NOTIFICATION DATE DELIVERY MODE
03/29/2017 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 NEVILLE SONNENBERG
Appeal 2014-000148
Application 12/637,843
Technology Center 3700
Before JOHN C. KERINS, JILL D. HILL, and LEE L. STEPINA,
Administrative Patent Judges.
STEPINA, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant appeals under 35U.S.C. § 134 from the Examiner’s
decision to reject claims 1, 2, 4—12, and 14—25. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM-IN-PART and designate portions of our affirmance as
NEW GROUNDS OF REJECTION under 37 C.F.R. § 41.50(b).
Appeal 2014-000148
Application 12/637,843
CLAIMED SUBJECT MATTER
The claims are directed to a package with internal sensory elements.
Claim 1, reproduced below, is illustrative of the claimed subject matter:
1. A razor cartridge package comprising a plurality of razor
cartridges, each cartridge stored in a separate container of said
package;
a plurality of covers, each one of said plurality of covers
removably attached to each one of said separate containers;
at least one sensory element incorporated into at least one
interior surface of said separate containers or said covers;
wherein said sensory element communicates one or more
characteristics of each razor cartridge in said container to a user.
Br. 20.
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Dunlap US 2004/0182733 A1 Sept. 23, 2004
McRobbie US 2005/0035011 A1 Feb. 17, 2005
Petricca US 2005/0183971 A1 Aug. 25, 2005
Fischer US 2006/0219584 A1 Oct. 5, 2006
Uitenbroek US 2006/0252327 A1 Nov. 9, 2006
Thielman US 2007/0119742 A1 May 31, 2007
REJECTIONS
(I) Claims 1, 2, 4—10, 12—17, and 19—22 are rejected under 35
U.S.C. § 103 (a) as unpatentable over (i) Petricca, Thielman, and Fischer
and/or (ii)1 Thielman, Petricca, and Fischer.
1 This alternative is presented in the body of the rejection, but not in the
heading. See Final Act. 2-4.
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(II) Claim 11 is rejected under 35 U.S.C. § 103(a) as unpatentable
over Petricca, Thielman, Fischer, and McRobbie.
(III) Claim 18 is rejected under 35 U.S.C. § 103(a) as unpatentable
over Petricca, Thielman, Fischer, and Uitenbroek.
(IV) Claims 23—25 are rejected under 35 U.S.C. § 103(a) as
unpatentable over (i) Petricca, Thielman, and Dunlap and/or (ii) Thielman,
Petricca and Dunlap.
OPINION
Rejection (I)
The Examiner finds that Petricca discloses many of the features
recited in claim 1, but the Examiner relies on Thielman to teach a package
comprising a cover with a sensory element on its interior and relies on
Fischer to teach a package including a plurality of compartments, each of
which stores a razor. Final Act. 2—3.
The Examiner reasons that it would have been obvious to modify the
package taught by Petricca to have multiple containers together, in light of
the teachings of Fischer, for multiple users. Final Act. 3. The Examiner
further reasons that it would have been obvious to modify the package of
Petricca to have a sensory element inside its cover, in light of the teachings
of Thielman, “for communicating a characteristic of the package to the
consumer.” As another proposal, the Examiner reasons that it would have
been obvious to modify the package of Thielman to hold razor blades “as an
alternative content inside of the package.” Final Act. 3.
Appellant contends that Petricca teaches away from the combination
with Thielman proposed by the Examiner because Petricca discloses
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instructions for opening a package, and therefore, such instructions must be
placed on an exterior surface in Petricca. Br. 6—7.
We do not agree with Appellant’s argument on this point because,
even assuming, arguendo, that Petricca requires instructions on an exterior
of its package, such a requirement would not lead a person of skill in the art
in a direction divergent from the path that was taken by Appellant. See In re
Gurley, 27 F.3d 551, 53 (Fed. Cir. 1994). Specifically, that Petricca may
require additional information on the exterior of its package does not teach
away from providing at least one sensory element on at least one interior
surface of the separate containers or covers as proposed by the Examiner. In
this regard, Appellant provides no persuasive explanation as to why
instructions on the exterior of a package would affect or bear any relation to
(much less teach away from) also providing a sensory element on the
interior of the package.
Appellant next argues that Thielman does not disclose or suggest
packaging a plurality of razors rather than absorbent articles. Br. 7.
The Examiner’s first rejection of claim 1 relies on Thielman to teach a
sensory element disposed on the interior of a cover. This rejection of claim
1 does not require the modification to Thielman discussed by Appellant.
Accordingly, Appellant’s argument on this point is unavailing with respect
to the Examiner’s proposed modification of Petricca.
With respect to the Examiner’s second proposed combination of
references, based on providing “an alternative content inside the package” of
Thielman (Final Act. 3), we are not apprised of Examiner error. Appellant
does not explain why the Examiner’s rationale is inadequate, and the
Examiner’s reasoning relies on the simple substitution of one known
element for another to obtain predictable results. We see no reason why a
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Application 12/637,843
person of ordinary skill in the art could not have substituted the razor
cartridges taught by Petricca in the package taught by Thielman or why the
results would not have been predictable.
Appellant also argues that the Examiner’s rejection of claim 1 relies
on a teaching in Fischer of the use of Fischer’s device by multiple users and
that this teaching is absent in Fischer. See Br. 7.
We do not agree with Appellant’s argument because the Examiner
mentions “multiple users” as part of the articulation of a rationale for
modifying Petricca, not as a finding that Fischer discloses multiple users.
Specifically, the Examiner states, “it would have been obvious to one of
ordinary skill in the art at the time the invention was made to have modified
‘the package of Petricca having two or more containers together as
suggested by Fischer for multiple users’.” Br. 7. We understand this
statement to mean that the modification the Examiner proposes would have
provided containers usable by more than one user, which is a reasonable
determination by the Examiner.
Appellant asserts that a person of ordinary skill in the art “would not
readily turn to Fischer's unsealed multiple item type package for any kind of
guidance as Petricca’s primary intent is to provide an individual sealed
package.” Br. 7.
Appellant does not explain persuasively why a person of skill in the
art “would not readily turn to” the teachings of Fischer. Fischer is within the
field of endeavor of Appellant’s claimed invention, as is Petricca—indeed,
both of these references also appear to be within a specific sub-section of
Appellant’s field of endeavor inasmuch as both Petricca and Fischer relate to
the packaging of shaving cartridges. Appellant does not provide any
persuasive explanation as to why the sealed or unsealed structure of the
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Application 12/637,843
references is relevant to whether a person of skill in the art would consider
these references to be analogous art and that such a person “would not look
to” Fischer as proposed by the Examiner.
Appellant argues, “There is clearly [no] teaching or suggestion found
in Petricca to provide a plurality of razor cartridges or to compile multiple
containers together as was done in Fischer, and it follows that there is no
teaching or suggestion of how that could or why that should be
accomplished.” Br. 7—8.
Appellant’s argument applies a rigid requirement for a teaching,
suggestion, or motivation (TSM) within the references cited. This is not the
standard for determining whether claimed subject matter would have been
obvious. See KSRInt’l Co. v. Teleflex Inc., 550 U.S. 398, 415 (2007)
(stating “We begin by rejecting the rigid approach of the Court of Appeals.
Throughout this Court's engagement with the question of obviousness, our
cases have set forth an expansive and flexible approach inconsistent with the
way the Court of Appeals applied its TSM test here.”). We are satisfied that
the Examiner’s proposed modification (providing multiple containers in
Petricca) is adequately connected to the rationale (to allow use by multiple
users) set forth by the Examiner. See Final Act. 3. Furthermore, the
Examiner’s proposed modification based on Fischer appears to merely
duplicate structure already existing in Petricca.
Appellant contends that Thielman is non-analogous art. See Br. 8—9.
Appellant argues that Thielman relates to providing visual images to assist a
consumer when purchasing packages containing disposable absorbent
articles, whereas Appellant’s invention is intended to assist a consumer after
the purchase of the product because the sensory element is incorporated on
an interior surface of the package. Id.
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In response, the Examiner finds that Petricca, Thielman, and Fischer
are all within the packaging art and are all related to personal care products.
Ans. 11—12. We agree with the Examiner’s finding in this regard. We also
note that Appellant’s claimed invention is also in the field of packaging, and
more specifically, within the category of packaging for personal care
products. Accordingly, we disagree with Appellant’s argument that
Thielman is non-analogous art.
Appellant also asserts:
Since Fischer discloses a cover that is partially open to the
atmosphere (e.g., see Fischer Fig. 2), Thielman’s problem,
regarding the drying out of the absorbent articles in a package
after opening, and Petricca's desire to have a sealed package,
would not be workable with Fischer rendering Fischer unlikely
to be utilized together with either Thielman or Petricca.
Br. 9.
We disagree with Appellant’s argument because it relies on the bodily
incorporation of particular embodiments of the devices taught by Petricca,
Thielman, and Fischer and does not address the way the Examiner applies
these references in the rejection of claim 1. As discussed above, these
references are analogous art to Appellant’s invention. Appellant provides no
persuasive explanation as to why the structural differences in Petricca,
Thielman, and Fischer mentioned by Appellant support a conclusion that the
Examiner’s proposed use of the teachings of Thielman and Fischer with
Petricca “would not be workable.” As further discussed above, the
Examiner provides an adequate rationale for the proposed modification
based on Fischer. Thus, Appellant’s contention that Fischer would be
unlikely to be used with either of Petricca or Thielman is without merit.
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We have considered all of Appellant’s arguments for the patentability
of claim 1, but are not apprised of any deficiency in the Examiner’s
rejection. Accordingly, we affirm the Examiner’s rejection of claim 1 as
unpatentable over Petricca, Thielman, and Fischer. Appellant relies on the
same arguments for the patentability of claims 19 and 21 (see Br. 10-11),
and we likewise affirm the Examiner’s rejection of claims 19 and 21.
Appellant asserts that claims 2, 4—10, 12—17, 20, and 22 are patentable based
on their dependencies from one of the above-noted claims (see Br. 11), and,
accordingly, these claims fall with claims 1,19, and 21.
Rejection (II)
Claim 11 recites, “The package of claim 2 wherein said taste sensory
element is selected from the group consisting of pieces of food, candy, mint,
gum, liquid, and combinations thereof.”2 Br. 21. Claim 2 recites, “The
package of claim 1 wherein said sensory element provides a stimulus to one
or more senses selected from the group consisting of visual, olfactory, touch,
auditory, taste, and combinations thereof.” Br. 20 (emphasis added).
The Examiner acknowledges that the proposed combination of
Petricca, Thielman, and Fischer does not include the features further
required by claim 11. Br. 11. Nonetheless, McRobbie is relied on to
remedy this deficiency, with a finding that “McRobbie discloses a container
(100) having a mint, candy or gum (580) attached to the container lid (510)
(see [0036] and figure 5).” Br. 12.
Appellant argues, among other things, that McRobbie’s mint 580 is on
the outside of the package in McRobbie, it is a consumable item, and
McRobbie is non-analogous art. See Br. 12—13.
2 Appellant misstates the features recited in claim 11, apparently based on
confusing claim 11 with claim 12. Br. 11.
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In response, the Examiner determines that claim 11 does not require a
taste sensory element, and instead merely further defines an element listed in
the Markush group recited in claim 2. Ans. 12—13.
We agree with the Examiner on this point. Claim 2 lists a taste
sensory element as one type of a plurality of different possible types of
sensory elements. Claim 2 does not require the taste sensory element. In the
event that the sensory element is a taste sensory element, claim 11 further
limits the taste sensory element to be food, candy, mint, gum, liquid, and
combinations thereof. However, claim 11 does not require the taste element
any more than does claim 2. In other words, the sensory element recited in
claim 2 may be something other than a taste sensory element (i.e., only
visual, olfactory, touch, or auditory), which would not implicate the
limitations recited in claim 11. Accordingly, Appellant’s arguments
attacking the Examiner’s use of McRobbie are unavailing. In this regard,
although the Examiner went to the trouble of finding a reference teaching a
taste sensory element (McRobbie), it was not necessary to do so because this
feature is not required by claim 11.
As our affirmance of the rejection of claim 11 relies on reasoning
different from that set forth in the Final Rejection and expands upon the
reasoning set forth in the Answer, we designate our affirmance a NEW
GROUND OF REJECTION.
Rejection (III)
Claim 18 recites, “The package of claim 17 wherein said at least one
sensory element is incorporated in said adhesive.” Br. 22.
The Examiner acknowledges that the proposed combination of
Petricca, Thielman, and Fischer would not include the features added by
claim 18 and relies on Uitenbroek to remedy this deficiency. Final Act. 9.
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Application 12/637,843
The Examiner reasons that it would have been obvious “to have modified
the package of Petricca and Thielman having a scent into the adhesive as
Uitenbroek because it would provide a scent to the package.” Final Act. 9.
Appellant asserts that the Examiner has merely found the various
elements recited in claim 18 (along with those recited in claim 1) and relied
on improper hindsight in rejecting claim 18 as unpatentable over Petricca,
Thielman, Fischer, and Uitenbroek.
We are persuaded by Appellant’s argument because the Examiner’s
proposed use of Uitenbroek does not address the limitation claim 18 imposes
on the package of claim 1, i.e., specifically locating the sensory element in
the adhesive. In this regard, the Examiner’s proposed combination of
Petricca, Thielman, and Fischer already provides a scent to the package, i.e.,
the Examiner’s reason for the proposed modification is addressed by the
references without resorting to Uitenbroek, and the Examiner does not
adequately explain why the additional use of the adhesive taught by
Uitenbroek would have been obvious. Accordingly, we reverse the
Examiner’s rejection of claim 18.
Rejection (IV)
Claim 23 recites, “An array of graphics disposed on an interior surface
of a razor cartridge package, the array comprising a sequence of designs
corresponding to stages of wear of a razor cartridge.” Br. 23.
The Examiner relies on Petricca to disclose a razor cartridge package
and relies on Thielman to disclose a package with a cover having a graphic
disposed on its interior side. Final Act. 9—10. The Examiner finds that
Dunlop disloses toothbrushes with time periods listed on them instructing
when to change the toothbrush. Final Act. 10. The Examiner reasons that it
would have been obvious to modify a combination of Petricca and Thielman
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(or Thielman and Petricca) to include indicia listing such time periods in
order to allow a user to know when to replace a cartridge. Final Act. 10.
Appellant argues that Dunlop is non-analogous art. Br. 17. We
disagree because Dunlop relates to packaging (see Dunlop, Title), and
specifically, the packaging of personal care items (e.g., toothbrushes), just
like Appellant’s claimed invention.
Appellant also argues that the indicia taught by Dunlop is located on
the toothbrush itself, not the packaging of the toothbrush. Appellant replies
that Dunlop is relied upon for the particular indicia, not for the location of
the indicia.
We do not agree with Appellant’s argument because, as the Examiner
notes (Ans. 13—14), Dunlop is not relied upon for the location of the indicia.
The Examiner finds that Thielman teaches sensory element 260 disposed on
the inside of the package, and Appellant does not traverse this finding. See
Final Act. 10; see also Br. 16—18. Therefore, Appellant’s argument amounts
to attacking the references individually rather than the Examiner’s proposed
combination.3
Printed Matter; claims 23—25
The Examiner also finds that “The types or contents of the indicia in
the instant case are deemed as the type of printed matter that is unpatentable,
as they are not functionally related to the substrate.” Ans. 14.
Thielman discloses a visual sensory element. See Thielman 147
(stating, “The first sensory element 260 may include an image of any
suitable object known in the art capable of communicating a characteristic of
3 Although not relied upon in the rejection, Dunlop discloses label 48 “at any
suitable location” with instructions for the user to use the toothbrushes for
the time periods listed on the toothbrushes. See, e.g., Dunlop 125.
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a package to a consumer.”). The Examiner relies on Dunlop for the specific
format and content of the indicia. Final Act. 10—11.
Our reviewing court has held that non-functional descriptive material
cannot lend patentability to an invention that would have otherwise been
anticipated by the prior art. In re Ngai, 367 F.3d 1336, 1339 (Fed. Cir.
2004). Cf. In re Gulack, 703 F.2d 1381, 1385 (Fed. Cir. 1983) (noting that
when descriptive material is not functionally related to the substrate, the
descriptive material will not distinguish the invention from the prior art in
terms of patentability). King Pharms., Inc. v. Eon Labs, Inc., 616 F.3d 1267,
1279 (Fed. Cir. 2010) (“[T]he relevant question is whether ‘there exists any
new and unobvious functional relationship between the printed matter and
the substrate.’”) (Internal citations omitted).
In Ngai, the Examiner allowed claim 1, which recited a method, and
rejected claim 19, which recited a kit with, among other things, instructions
describing the method of allowed claim 1. In re Ngai, 367 F.3d at 1337—
1338. Ngai argued that the addition of new printed matter to a known
product makes the product patentable, and therefore, the rejection of claim
19 was improper. Id. at 1338. Rejecting Ngai’s argument, the court said,
“[i]f we were to adopt Ngai’s position, anyone could continue patenting a
product indefinitely provided that they add a new instruction sheet to the
product. . . [Ngai is not] entitled to patent a known product by simply
attaching a new set of instructions to that product.” Id. at 1339.
The information depicted in the array recited in rejected claims 23—24
is similar to the instructions printed on the kit in Ngai. The particular
message of when to switch to a new razor cartridge, even if potentially
patentable as a method and directed to the use of the underlying substrate as
were the instructions in Ngai, does not necessarily functionally relate to the
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substrate. The indicia on the package performs its intended function of
conveying information (a kind of instructions as to the time period for using
the razor cartridge) regardless of the content of the form of the message
presented in the indicia. Accepting Appellant’s argument that such a feature
patentably distinguishes claims 23—25 would permit the patentability, per se,
of indicia on packages based on the particular instructions provided by the
indicia. Accordingly, we construe claims 23—25 more broadly than did the
Examiner in the Final Action in that it was not necessary for the Examiner to
find a reference with an array of graphics, much less one with a particular
sequence of designs corresponding to various stages of wear as required in
claims 23—25 because, in this case, the particular instructions and format of
the information presented (e.g., “an array,” “a happy face,” and “a check
mark”) do not further patentably distinguish the package. Rather, finding
the structural features recited in claims 23—25, along with indicia on the
package, as disclosed by Thielman, would have been sufficient.
As our affirmance of the rejection of claims 23—25 expands upon the
reasoning set forth in the Answer, we designate our affirmance a NEW
GROUND OF REJECTION.
DECISION
(I) The Examiner’s rejection of claims 1, 2, 4—10, 12—17, and 19-
22 as unpatentable over Petricca, Thielman, and Fischer is affirmed
(II) The Examiner’s rejection of claim 11 as unpatentable over
Petricca, Thielman, Fischer, and McRobbie is affirmed. We designate our
affirmance a NEW GROUND OF REJECTION.
(III) The Examiner’s rejection of claim 18 as unpatentable over
Petricca, Thielman, Fischer, and Uitenbroek is reversed.
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(IV) The Examiner’s rejection of claims 23—25 as unpatentable over
(i) Petricca, Thielman, and Dunlap and/or (ii) Thielman, Petricca and Dunlap
is affirmed. We designate our affirmance a NEW GROUND OF
REJECTION.
This decision contains new grounds of rejection pursuant to 37 C.F.R.
§ 41.50(b). Section 41.50(b) provides “[a] new ground of rejection pursuant
to this paragraph shall not be considered final for judicial review.” Section
41.50(b) also provides:
When the Board enters such a non-final decision, the appellant,
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 prosecution will be
remanded to the examiner. The new ground of rejection is
binding upon the examiner unless an amendment or new
Evidence not previously of Record is made which, in the opinion
of the examiner, overcomes the new ground of rejection
designated in the decision. Should the examiner reject the claims,
appellant may again appeal to the Board pursuant to this subpart.
(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same Record. The
request for rehearing must address any new ground of rejection
and state with particularity the points believed to have been
misapprehended or overlooked in entering the new ground of
rejection and also state all other grounds upon which rehearing
is sought.
Further guidance on responding to a new ground of rejection can be
found in the Manual of Patent Examining Procedure § 1214.01.
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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). See 37 C.F.R. §
1.136(a)(l)(iv).
AFFIRMED-IN-PART
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