Ex Parte SonnenbergDownload PDFPatent Trial and Appeal BoardMar 27, 201712637843 (P.T.A.B. Mar. 27, 2017) Copy Citation 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. 2 Appeal 2014-000148 Application 12/637,843 (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 3 Appeal 2014-000148 Application 12/637,843 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 4 Appeal 2014-000148 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 5 Appeal 2014-000148 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. 6 Appeal 2014-000148 Application 12/637,843 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. 7 Appeal 2014-000148 Application 12/637,843 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. 8 Appeal 2014-000148 Application 12/637,843 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. 9 Appeal 2014-000148 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 10 Appeal 2014-000148 Application 12/637,843 (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. 11 Appeal 2014-000148 Application 12/637,843 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 12 Appeal 2014-000148 Application 12/637,843 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. 13 Appeal 2014-000148 Application 12/637,843 (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. 14 Appeal 2014-000148 Application 12/637,843 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 15 Copy with citationCopy as parenthetical citation