Ex Parte Stephens et al

Patent Trial and Appeal Board

May 17, 2018

14606177 (P.T.A.B. May. 17, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/606,177 01/27/2015
27752 7590 05/21/2018
THE PROCTER & GAMBLE COMPANY
Global IP Services
Central Building, C9
One Procter and Gamble Plaza
CINCINNATI, OH 45202
FIRST NAMED INVENTOR
Jerry Ray Stephens
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.
13204M 2987
EXAMINER
GEHMAN, BRYON P
ART UNIT PAPER NUMBER
3728
NOTIFICATION DATE DELIVERY MODE
05/21/2018 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 JERRY RAY STEPHENS, STEPHANIE MOY PIANFETTI,
and PAUL JOSEPH COFF ARO
Appeal2017-006280
Application 14/606, 177
Technology Center 3700
Before STEFAN STAICOVICI, WILLIAM A. CAPP, and
ARTHUR M. PESLAK, Administrative Patent Judges.
CAPP, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants 1 seek our review under 35 U.S.C. § 134(a) of the final
rejection of claims 1, 3-6, and 8. We have jurisdiction under 35 U.S.C.
§ 6(b ).
We AFFIRM.
1 Appellants identify the Proctor & Gamble Company as the real-party-in-
interest. Appeal Br. 1.
Appeal2017-006280
Application 14/ 606, 177
THE INVENTION
Appellants' invention relates to packaging for tissue products.
Spec. 1. Claim 1, reproduced below, is illustrative of the subject matter on
appeal.
1. A dispensing system comprising:
a soft-sided package comprising:
an outer wrap comprising a 1 % MD secant modulus to
caliper ratio of about 5 MPa/µm or less,
a plurality of sanitary tissue products disposed within
the outer wrap,
a first height, H1, and a first perimeter;
a rigid sleeve substantially surrounding the first perimeter,
wherein the rigid sleeve comprises:
a material that has a rigidity greater than the rigidity of
the outer wrap,
a second height, H2, wherein the second height, H2. is
less than the first height, H1, and
indicia in a reading orientation;
a substantially horizontal shelf, wherein the soft-sided
package and the sleeve are oriented on the shelf such that the
first height, H1 and the second height, H2, each have a vertical
orientation and at least a portion of the sleeve is in contacting
relationship with the shelf; and,
a plurality of stacked and interleaved individual facial tissue
products disposed within the outer wrap, the sanitary tissue
products comprising wetformed textural elements.
THE REJECTIONS
The Examiner relies upon the following as evidence in support of the
rejections:
Trokhan
Bando
Conde
Roetker
Motsch
Norcom
us 4,528,239
US 6,641,894 B2
US 2004/0251163 Al
US 2009/0057171 Al
US 7,794,439 B2
US 8,220,651 B2
2
July 9, 1985
Nov. 4, 2003
Dec. 16, 2004
Mar. 5, 2009
Sept. 14, 2010
July 17, 2012
Appeal2017-006280
Application 14/ 606, 177
The following rejections are before us for review:
1. Claims 1, 3---6 and 8 are rejected under 35 U.S.C. § 112(b) as being
indefinite for failing to particularly point out and distinctly claim the subject
matter which the inventor or a joint inventor regards as the invention.
2. Claims 1, 3---6, and 8 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Conde, Norcom, Motsch, Roetker, Bando, and
Trokhan.
OPINION
Indefiniteness
The Examiner considers that the term "the facial products" is
indefinite in relation to the previously defined "sanitary tissue products."
Final Action 2. Apparently, it is unclear whether these 2 terms relate to the
same, or different, structures. Id. Appellants do not contest the Examiner's
rejection, which is hereby summarily sustained. Appeal Br. 3.
Unpatentability of Claims 1, 3-6 and 8
Claim 1
The Examiner finds that Conde discloses a soft-sided package with
tissue products within an outer wrap. Final Action 3. The Examiner relies
on Norcom as disclosing soft-sided packaging with a rigid sleeve
substantially surrounding a first perimeter of the soft-sided package. Id.
The Examiner concludes that it would have been obvious to a person of
ordinary skill in the art at the time of the invention to provide Conde with a
rigid outer wrap. Id. According to the Examiner, a person of ordinary skill
in the art would have done this to allow the package to be freestanding. Id.
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Appeal2017-006280
Application 14/ 606, 177
The Examiner relies on Motsch as disclosing a freestanding element
with indicia in a reading orientation. Id. at 3--4. The Examiner concludes
that it would have been obvious to a person of ordinary skill in the art at the
time the invention was made to provide the rigid sleeve of Conde/N orcom
with indicia as in Motsch. Id. at 4. According to the Examiner, a person of
ordinary skill in the art would have done this to provide readable
information relating to the content of the packaging. Id.
The Examiner relies on Roetker as disclosing freestanding tissue
packages on a horizontal shelf. Id. The Examiner concludes that it would
have been obvious to a person of ordinary skill in the art at the time the
invention was made to dispose a freestanding package/sleeve on a shelf. Id.
According to the Examiner, a person of ordinary skill in the art would have
done this to display the packaging in a store. Id.
The Examiner relies on Bando and Trokhan as disclosing stacked and
interleaved wet tissues in an outer wrap. Id. The Examiner concludes that it
would have been obvious to a person of ordinary skill in the art at the time
the invention was made to package stacked and interleaved wet tissues in
accordance with Conde/Norcom/Motsch/Roetker. Id.
Appellants traverse the Examiner's rejection by first arguing that
Conde discloses a stack of "cleansing articles" which are allegedly
distinguishable from the claimed tissue products. Appeal Br. 4. In response,
the Examiner states that, to the extent that Appellants' tissue products are
structurally distinct from Conde' s cleansing articles, such deficiency is cured
by the Bando and Trokhan references. Ans. 5. In reply, Appellants reiterate
that Conde's cleansing articles are distinguishable from the claimed tissue
products. Reply Br. 1. However, Appellants do not challenge the
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Appeal2017-006280
Application 14/ 606, 177
Examiner's finding that this deficiency (if any) is cured by Bando and
Trokhan. See generally Reply Br.
Conde is directed to a package that protects a plurality of dry
cleansing articles. Conte ,r,r 8-11, 59. The cleansing articles are sheet
substrates that contain a cleansing composition such as various surfactants.
Id. ,r,r 60, 61. Appellants do not explain, with any degree of specificity, how
the composition of the claimed tissue products results in a difference
between the prior art and the claimed invention that is non-obvious. See 35
U.S.C. § 103(a). Bando relates to a stack of folded sheets of wet tissues that
are vertically arranged to facilitate dispensing the sheets one at a time.
Bando, col. 1, 11. 6-10; col. 4, 11. 33--49. We agree with the Examiner that,
to the extent that Appellants' tissue products are distinguishable from
Conde's cleansing articles, such deficiency is cured by Bando.
Appellants next argue that the Examiner provides an insufficient
reason to combine the prior art in the manner claimed. Appeal Br. 4--5. In
particular, Appellants argue that: "a mere statement that modifications of
the prior art would have been within the ordinary skill of the art is not
sufficient to establish a prima facie case of obviousness without some
objective reason to combine the teaching of the references." Id. at 5. In
response, the Examiner explains that the reason for combining Conde and
Norcom is to obtain the expected freestanding feature of the combination.
Ans. 6. We deem the Examiner's stated reason as sufficient to support the
rejection. See In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)(requiring an
obviousness conclusion to be based on explicit articulated reasoning with
rational underpinning) cited with approval in KSR Int 'l Co. v. Teleflex Inc.,
550 U.S. 398,418 (2007).
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Appeal2017-006280
Application 14/ 606, 177
Next, Appellants argue that Conde would not have been combined
with Norcom because Conde is intended to be used in wet environments like
a shower. Appeal Br. 5. Appellants argue that, because Conde is designed
to be hung in use, it "does not envision the need for, or even the desirability
of, a shelf-standing package." Id. In response, the Examiner concedes that,
in use, Conde is suspended via a hanging or mounting feature. Ans. 6.
Nevertheless, the Examiner points out that Conde would benefit from a
freestanding feature when displayed for sale in a store or when stored at
home on a shelf prior to actual use and, therefore, the application of
Norcom's teaching to Conde is not precluded. Id. Having fully considered
the competing positions of Appellants and the Examiner, we find the
Examiner's position to be more persuasive. Providing Conde with a rigid
sleeve would facilitate marketing and shelf display in a sales environment
prior to use, even though the sleeve might be discarded before being hung in
a wet environment, like a shower. See In re Kahn, 441 F.3d at 990 (skilled
artisan need not be motivated to combine the prior art for the reason
contemplated by an inventor).
Finally, Appellants accuse the Examiner of engaging in impermissible
hindsight to reconstruct the invention. Appeal Br. 5. This argument is not
persuasive. The Examiner has stated cogent reasons as to why a person of
ordinary skill in the art would have combined the references to achieve the
claimed invention. Final Action 3--4. A hindsight argument is of no
moment where, as here, the Examiner provides a sufficient, non-hindsight
reason to combine the references. See In re Cree, 818 F.3d 694, 702, n.3
(Fed. Cir. 2016).
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Appeal2017-006280
Application 14/ 606, 177
In view of the foregoing discussion, we determine the Examiner's
findings of fact are supported by a preponderance of the evidence and that
the Examiner's legal conclusion of unpatentability is well-founded.
Accordingly, we sustain the Examiner's unpatentability rejection of claim 1.
Claims 3, 5, 6, and 8
Claim 3, 5, 6, and 8 depend from claim 1. Claims App. Appellants
do not argue for the separate patentability of these claims apart from
arguments presented with respect to claim 1, which we have previously
considered. Consequently, we sustain the Examiner's rejection of claims 3,
5, 6, and 8. See 37 C.F.R. § 4I.37(c)(iv) (failure to separately argue claims).
Claim 4
Claim 4 depends from claim 3 and indirectly from claim 1 and adds
the limitation: "wherein the sleeve comprises paperboard." Claims App.
The Examiner finds that Norcom's rigid sleeve materials may comprise
carded fibrous materials, which would include paper and paperboard. Final
Action 5.
Appellants represent that they are not aware of any carded fibrous
materials that are considered to be paper or paperboard. Appeal Br. 7. In
response, the Examiner finds that, when N orcom describes carded fibrous
materials, a person of ordinary skill in the art would understand such to
mean paper or paperboard. Ans. 7.
Appellants' cursory statement, without supporting evidence, regarding
their level of awareness ( or lack thereof) regarding whether paperboard is a
carded fibrous material fails to apprise us of error in the Examiner's
findings. We sustain the unpatentability rejection of claim 4.
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Appeal2017-006280
Application 14/ 606, 177
DECISION
The decision of the Examiner to reject claims 1, 3---6, and 8 as
indefinite under 35 U.S.C. § 112(b) is affirmed.
The decision of the Examiner to reject claims 1, 3---6, and 8 as
unpatentable under 35 U.S.C. § 103(a) is affirmed.
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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