Ex Parte Steeves-Kiss et al

Patent Trial and Appeal Board

Apr 26, 2016

11344331 (P.T.A.B. Apr. 26, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
111344,331 0113112006
27752 7590 04/28/2016
THE PROCTER & GAMBLE COMPANY
Global Patent Services - Legal IP
Central Building, CS
One Procter and Gamble Plaza
CINCINNATI, OH 45202
FIRST NAMED INVENTOR
Jennifer Lori Steeves-Kiss
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.
9898MQ 7644
EXAMINER
ANDERSON, CATHARINE L
ART UNIT PAPER NUMBER
3778
NOTIFICATION DATE DELIVERY MODE
04/28/2016 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 JENNIFER LORI STEEVES-KISS, ILLY A
TORRANCE THOMAS, THORSTEN KNOBLOCH, and
MICHAEL RICARDO BURNS 1
Appeal2013-009079
Application 11/344,331
Technology Center 3700
Before DONALD E. ADAMS, JEFFREY N. FREDMAN, and
JACQUELINE T. HARLOW, Administrative Patent Judges.
PER CURIAM
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) involving claims to an
array of sanitary tissue products. The claims are rejected as failing to
comply with the written description requirement and obvious. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 According to Appellants, the Real Party in Interest is The Procter &
Gamble Company of Cincinnati, Ohio (App. Br. 1 ).
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Application 11/344,331
STATEMENT OF THE CASE
"The present invention relates to an array of articles of manufacture,
more particularly, to an array of sanitary tissue products each of which
comprises a different common intensive property value different from the
others" (Spec. 1:8-10). Claims 1-5, 7-11, and 13-17 are on appeal. Claim
1 is illustrative and reads as follows:
1. An array of toilet tissue products comprising two or more
multi-ply toilet tissue products each of which exhibits a softness
that is different from the others by about 0.2 PSU or greater,
wherein each of the two or more multi-ply toilet tissue products
are packaged in separate packages from the others such that each
package is displayed on a shelf in a retail store separate from the
others and wherein each package comprises a common single
source identifier and wherein the two or more toilet tissue
products are marketed by one company.
The claims stand rejected as follows:
I. Claims 1-5, 7-11, and 13-17 stand rejected under 35 U.S.C
§ l 12(a) as failing to comply with the written description requirement.
II. Claims 1, 7-11, and 13-17 stand rejected under 35 U.S.C
§ 103(a) as being obvious based on Vinson2 and Cole. 3
III. Claims 2-5 stand rejected under 35 U.S.C § 103(a) as being
obvious based on Vinson, Cole, and Weisman. 4
I.
The Examiner has rejected claims 1-5, 7-11, and 13-17 under
35 U.S.C § l 12(a) as failing to comply with the written description
requirement. The Examiner finds that while the Specification discloses a
2 Vinson et al., US 6,579,416 Bl, issued June 17, 2003.
3 Cole et al., US 2005/0065492 Al, published Mar. 24, 2005.
4 Weisman et al., US 6,551,453 B2, issued Apr. 22, 2003.
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Application 11/344,331
softness difference between each of two or more tissue products of about
0.2 PSU, the Specification does not disclose a difference of greater than
about 0.2 PSU (Ans. 3--4).
Appellants refer to page 8, lines 3-30 and page 6, lines 1-12 of the
Specification and contend that "about 0.2 PSU represents a significant
difference in subjectively perceived softness and, thus, one of ordinary skill
in the art would understand that a difference in softness of greater than
0.2 PSU would have an even greater difference in subjectively perceived
softness" (Reply Br. 2). Appellants then assert that "one of ordinary skill in
the art would interpret the specification to mean that a difference of at least
0.2 PSU must be present for there to be a meaningful difference in softness"
(id.). Appellants contend that because the Specification "describes that the
two or more toilet tissue products each exhibit a softness that is different
from the others," "one of ordinary skill in the art would understand the
words 'different from' to mean greater than or less than, but not the same"
(id.).
We agree with Appellants that the Examiner has not pointed to
evidence or provided sound reasoning to show that the Specification fails to
satisfy the written description requirement for the "softness that is different
from the others by about 0.2 PSU or greater" aspect of claim 1.
The Specification discloses that "[t]he number of panel tests
performed and averaged is such that about 0.2 PSU represents a significant
difference in subjectively perceived softness" (Spec. 9:11-12 (emphasis
added)). Because the Specification teaches that "a significant difference" in
softness is perceived in the context of panel tests that are performed and
averaged to be about 0.2 PSU, one of ordinary skill in the art would
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Application 11/344,331
understand that the Specification teaches that Appellants' products can
exhibit a softness that is different from each other by about 0.2 PSU or
greater. Therefore, we agree with Appellants that one of ordinary skill in the
art would recognize that the Specification describes the "softness that is
different from the others by about 0.2 PSU or greater" aspect of claim 1 in
sufficient detail to reasonably conclude that Appellants had possession of the
claimed invention at the time of filing.
Accordingly, we reverse the rejection of claim 1. As they depend
from claim 1, the rejection of claims 2-5, 7-11, and 13-17 is also reversed.
II.
The Examiner has rejected claims 1, 7-11, and 13-17 under 35 U.S.C
§ 103(a) as obvious based on Vinson and Cole. Because the claims are not
separately argued, we focus our discussion on independent claim 1, which is
representative.
Findings of Fact
We adopt the Examiner's findings concerning the scope and content
of the prior art, and repeat the following findings for emphasis.
FF 1. The Specification discloses that
"Array of Articles of Manufacture" as used herein means a group
of consumer products/ goods that provide a similar benefit to a
consumer. In other words, an array of articles of manufacture
includes a group of consumer products/goods within a category
such as sanitary tissue products. In one case, such a group of
consumer products/ goods includes those products/ goods residing
on the same shelf in a retail store and/ or in the same aisle in a
retail store. For example, sanitary tissue products are an array of
articles of manufacture.
(Spec. 3:31--4:5; see also Ans. 4.)
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FF 2. Vinson discloses in Examples 1 and 3 "two-ply" bath tissue
products (Vinson 21:4---6, 24:61---62), having different softness scores (id. at
27:5-15, Table 1; see also Final Act. 2).
FF 3. Vinson discloses that the PSU scores for the 2 ply bath products
described in Examples 1 and 3 are +0.84 and+ 1.1, respectively (Vinson
27:5-15, Table 1; see also Final Act. 2).
FF 4. Cole discloses
[a] product line that is tailored to the fit and absorbency needs of
users, and a visual identification device that identifies absorbent
products predicted to satisfy users' fit and absorbency
requirements. The identification device has product designations
that identify absorbent products, size designations that relate to
the sizes of the absorbent articles, and absorbency designations
that relate to the absorbent properties of the absorbent articles.
Each product designation is associated with a combination of one
size designation and one absorbency designation so that the size
and absorbency of each product is clearly identified. At least two
product designations are associated with one of the size
designations.
(Cole Abstract; see also Final Act. 2-3.)
FF 5. Cole discloses that "at least two of the absorbent products in the
product line are characterized by the same absorbency designation, and
different size designations" or "by the same size designation, and different
absorbency designations" and that "an absorbent product line may include a
plurality of packages, and a plurality of products having a similar
construction, wherein each product has a size designation and an absorbency
designation" (Cole i-fi-f 10-11; see also Final Act. 2-3).
FF 6. Cole discloses that "the absorbent product designations may be
a product name, product brand name, product line name, a product shape,
words, letters, numbers, boxes, partitions, color codes, symbols, graphical
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points, bars, lines, or a combination thereof' and that the product
designations may identify products "by direct description or a name (e.g., a
descriptive term or a trademarked product name or brand name)" (Cole
i-fi-f 14, 30; see also Final Act. 3).
FF 7. Cole discloses that "a user can evaluate a line of similar
products and select the one that best satisfies the user's needs based on the
associations between each product and its size and absorbency
characteristics," and that "[p]roducts sharing the same combination of size
and absorbency are contained within a package" (Cole i-fi-121, 27; see also
Final Act. 2-3).
FF 8. Cole discloses that
[e]ach product designation represents a product offering that is
part of a product line. The phrases "line of products" or "product
line" or "consumer product line" refer to, in general, a series of
absorbent products ("products" or "product offerings") having a
common marketing approach (e.g., brand name or category)
and/ or technical approach. . . . Within a product line, two or
more products may share one or more characteristics, for
instance, size or absorbency level or outer cover material,
however each product within a product line also differs from the
other products in at least one characteristic.
(Cole i-f 26; see also Final Act 3.)
FF 9. Cole discloses that its device "also may be used on or as part of
an in-store display where the displayed products are offered for sale, ... or
in other contexts in which information is presented regarding absorbent
products that are available as one of a series of products in a particular brand
or product line" (Cole i141; see also Final Act 3).
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Analysis
We have considered, but do not find persuasive Appellants'
arguments that the Examiner erred in concluding that the claimed array of
tissue products is obvious over Vinson and Cole.
Appellants contend that Vinson fails to teach an array of toilet tissue
products because "Vinson teaches a composition for softening an absorbent
tissue and tissue structures, and discloses individual example embodiments
of the composition for softening an absorbent tissue" (App. Br. 6-7; see also
Reply Br. 3). Appellants then contend that
[ e] ach example illustrates preparation of tissue paper exhibiting
one embodiment of the invention of Vinson. Thus, the disclosure
of Vinson teaches that absorbent tissue can be made to be softer
by the disclosed composition than some control. Nothing in
Vinson teaches an array of sanitary tissue products that are
packaged in separated packages and displayed on a store shelf,
as provided in the Subject Application and Claim 1.
(App. Br. 7.)
We do not find this argument persuasive. As an initial matter, we
observe that Appellants' Specification defines "Array of Articles of
Manufacture" as "a group of consumer products/ goods that provide a similar
benefit to a consumer" (Ans. 4; FF 1 ). This definition does not require that
the consumer products/goods be separately packaged and displayed on a
store shelf. Therefore, we further agree with the Examiner that because
"Vinson discloses different products that provide a similar benefit to a
consumer," as exemplified in Vinson's Examples 1 and 3, Vinson discloses
an "array of toilet products" (Ans. 4--5; FF 2-3).
Appellants contend that "[t]he entire disclosure of Cole relates to fit
and absorbency, and the association of fit and absorbency to a certain
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Application 11/344,331
product in a product line," that "Cole fails to mention softness or any other
characteristics of the product line," and therefore, the claims are nonobvious
over Vinson and Cole (App. Br. 7; see also Reply Br. 3).
We are not persuaded. This contention is unavailing because, as the
Examiner explains, "Cole is relied upon for the general teaching of
providing similar sanitary articles in separate packages displayed on a retail
store shelf' (Ans. 5; see also FF 5, 9).
Appellants next contend that the Examiner has "not sufficiently stated
why it would be appropriate to combine Vinson and Cole to achieve
[Appellants'] invention" and that "[t]here is simply no reasonable
expectation of predictably achieving success by simply reading the
combination of references" (App Br. 8; see also Reply Br. 3).
We agree with the Examiner's finding that "Cole discloses an array of
sanitary articles that differ from one another by a specific property, and
teaches providing these articles in separate packages that are labeled to
indicate the different properties" (Ans. 5; FF 6-8). We further agree with
the Examiner that "Cole teaches packaging articles separately based on the
properties of the articles, and therefore one of ordinary skill in the art would
be motivated by this teaching of Cole to separately package the different
tissue products of Vinson to provide a consumer with a choice of products"
(Ans. 5; see FF 4 ("tailored to the ... needs of users"), FF 7 ("a user can
evaluate a line of similar products and select the one that best satisfies the
user's needs"), FF 9). We therefore find that a skilled artisan would have
been motivated, with a reasonable expectation of success to combine the
separate packages of Cole with the array of toilet tissue products of Vinson,
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by tailoring the needs and requirements of the users or providing a consumer
with a choice of products.
We note the Examiner's assertion that " [ w] ith respect to the identifier
and the information it conveys, where the printed matter lacks a new and
nonobvious relationship to the substrate, the printed matter will not
distinguish the claimed invention over the prior art" (Final Act. 3). While
we agree that the recited "source identifier" is printed matter, this claim
limitation is also taught by Cole and there is no need to rely on the printed
matter doctrine (FF 6).
Conclusion of Law
A preponderance of the evidence of record supports the Examiner's
conclusion that Vinson and Cole render claim 1 obvious. Claims 7-11 and
13-1 7 have not been argued separately and therefore fall with claim 1.
III.
The Examiner has rejected claims 2-5 under 35 U.S.C § 103(a) as
obvious based on Vinson, Cole, and Weisman. Appellants present no
additional argument based on the teachings of Weisman, and rely on the
same arguments addressed above with regard to Vinson and Cole (see App.
Br. 10). For the reasons discussed above, therefore, we affirm the rejection
of claims 2-5.
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SUMMARY
We reverse the rejection of claims 1-5, 7-11, and 13-17 under 35
U.S.C. § 112(a) as failing to comply with the written description
requirement.
We affirm the rejection of claim 1 under 35 U.S.C. § 103(a) based on
Vinson and Cole. Claims 7-11, and 13-17 fall with claim 1.
We affirm the rejection of claims 2-5 under 35 U.S.C. § 103(a) based
on Vinson, Cole, and Weisman.
TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED
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