Ex Parte Weaver et al

Patent Trial and Appeal Board

Oct 20, 2014

12138797 (P.T.A.B. Oct. 20, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte GREGG THOMAS WEAVER and
MARK CASEY FOX
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Appeal 2012-008425
Application 12/138,797
Technology Center 3700
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Before NEAL E. ABRAMS, MICHAEL L. HOELTER,
and LEE L. STEPINA, Administrative Patent Judges.

STEPINA, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE

Gregg Thomas Weaver and Mark Casey Fox (Appellants) seek our
review under 35 U.S.C. § 134 from the Examiner’s decision rejecting claims
1–13 as obvious over Gillespie and Cabell. We have jurisdiction over the
appeal under 35 U.S.C. § 6(b).
We AFFIRM
THE CLAIMED SUBJECT MATTER
The claimed invention is directed to a method for visually
demonstrating to a consumer wet pilling property differences between two
toilet tissue products. Claim 1 is the only claim specifically argued on
appeal and is reproduced below:
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1. A method for visually demonstrating to a consumer wet
pilling property differences between two toilet tissue products,
the method comprising the steps of:
a. comparatively subjecting a first toilet tissue product
and a second, different, toilet tissue product to a wet pilling test
method, which produces side-by-side results that visually
demonstrate to a consumer the wet pilling property differences
between the first and the second, different, toilet tissue
products; and
b. presenting the results to the consumer.

REFERENCES RELIED ON BY THE EXAMINER

Gillespie US 7,665,659 B2 Feb. 23, 2010
Cabell US 6,977,116 B2 Dec. 20, 2005

THE REJECTIONS ON APPEAL
Claims 1–13 are rejected under 35 U.S.C. § 103(a) as obvious over
Gillespie and Cabell.
ANALYSIS
The Examiner asserts that Gillespie discloses a method for displaying
to a customer the property differences of at least two different toilet tissue
products. Ans. 7. The Examiner cites Cabell for subjecting a first toilet
tissue product to a wet pilling test. Id. The Examiner took Official Notice
that the side-by-side comparison of different products is a well-known
technique of advertising a product. Id.
Appellants first argue:
Regardless of whether a different wet pilling test is generally
known, neither Gillespie nor Cabell, either alone or in
combination, discloses or suggests comparatively performing a
wet pilling test method using two different toilet tissue products
in a side-by-side comparison to visually demonstrate to a
consumer the wet pilling property differences between the
different toilet tissue products. This is simply not disclosed or
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suggested in either reference or remedied by the Examiner's
taking of Official Notice.
App. Br. 5.
Appellants further argue that there is no apparent reason to modify
Gillespie in view of Cabell as is done in the rejection of claim 1, and that the
Examiner is relying on impermissible hindsight to make this modification.
Ans. 6. Appellants also state, “[o]ne main purpose of Gillespie is to allow
consumers to sample products before purchasing them. How is this the same
as comparatively performing a wet pilling test with two different toilet tissue
products and then visually displaying those side-by-side results to a
consumer?” App. Br. 6.
DECISION
Regarding Appellants’ first argument, that “neither Gillespie nor
Cabell, either alone or in combination, discloses or suggests [the features
recited in paragraph (a) of claim 1],” we are not persuaded that the
combination of references, in view of the Official Notice taken by the
Examiner, would not include these features as asserted by the Examiner. In
this regard, Appellants do not point to any specific feature not disclosed by
the cited references, including the Examiner’s Official Notice.
Although Appellants describe what may be “one main purpose” of
Gillespie, Appellants do not dispute the Examiner’s assertion that Gillespie
discloses “a device and method for displaying to a customer the property
differences of at least two different toilet tissue products.” Ans. 7.
Regarding Cabell, Appellants do not dispute the Examiner’s assertion
that Cabell discloses performing a wet pilling test on toilet tissues and then
presenting the results of the tests. Our review of the portions of Cabell cited
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by the Examiner confirms that Cabell does disclose wet pill testing as
asserted by the Examiner. See Ans. 7.
Appellants do not dispute the Examiner’s taking of Official Notice
that side-by-side comparison of the characteristics of different products are a
well-known in the art. In the absence of anything in the record to contradict
the Examiner's assertion, and in the absence of any demand by Appellants
for the Examiner to produce additional authority for this assertion, we do not
find the Examiner’s position to be in error.
The Examiner asserts that the above-noted prior art and Official
Notice, taken together, include all the elements of claim 1. Appellants have
not shown Examiner error on this issue.
As for whether the Examiner’s proposed combination of the elements
disclosed in the prior art is improper, e.g., requires impermissible hindsight,
as asserted by Appellants, we discern no error in the Examiner’s position.
We agree with Appellants’ assertion on page 6 of the Appeal Brief that
Gillespie’s disclosure is quite different from the method recited in claim 1.
However, the pertinent issue is whether, in light of Gillespie, Cabell, and the
facts for which the Examiner takes Official Notice, the method recited in
claim 1 would have been obvious to one of ordinary skill in the art at the
time the claimed invention was made. The Examiner’s rationale for
combining Gillespie and Cabell and displaying them in the form described in
the Official Notice is “to create a more comprehensive display with
additional information.” Ans. 8–9. Although Appellants note the
differences between Gillespie and the method recited in claim 1 and assert
that the Examiner’s asserted combination is based solely on impermissible
hindsight, Appellants do not specifically identify any error in the Examiner’s
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asserted rationale for combining Gillespie and Cabell. Accordingly, we are
not persuaded that the combination asserted by the Examiner in the rejection
of claim 1 is improper.
Although we have carefully considered all of Appellant’s arguments,
we are not persuaded that the positions taken by the Examiner with respect
to the obviousness of claims 1–13 are in error. This being the case, the
Examiner’s rejection of claims 1–13 as obvious over Gillespie and Cabell 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).

AFFIRMED

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