Ex Parte Wilkman

Board of Patent Appeals and Interferences

Sep 26, 2008

09956505 (B.P.A.I. Sep. 26, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte MICHAEL A. WILKMAN
__________

Appeal 2008-4368
Application 09/956,505
Technology Center3700
__________

Decided: September 26, 2008
__________

Before TONI R. SCHEINER, DONALD E. ADAMS, and ERIC GRIMES,
Administrative Patent Judges.

GRIMES, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims to a wipe
package. The Examiner has rejected the claims as obvious. We have
jurisdiction under 35 U.S.C. § 6(b). We affirm.
BACKGROUND
“Various types of impregnated wipes are known in the prior art.”
(Spec. 1). “Most wipes are sold in foil or plastic packages having two sides.
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… Unfortunately, the cost of such packaging is significant in comparison to
the cost of making the wipes themselves” (id. at 2).
The Specification discloses that “a collection of wipes can be
provided or a collection of a particular type of wipe can be provided with
advertising or coupons as the packaging material” so that “[m]ore revenue to
the manufacturer or a decrease in the cost to customers can be realized” (id.
at 2).
DISCUSSION
1. CLAIMS
Claims 1, 3, 5, 29, 33-37, 39-44, 46, and 48-50 are on appeal. Claims
2 and 4 are also pending but stand objected to (App. Br. 2). Claims 1, 3 and
29 are representative and read as follows:
Claim 1: A wipe package comprising:
a front sheet;
a wipe secured to said front sheet; and
a rear sheet comprising a coupon,
wherein said front sheet and said rear sheet are sealed together to
enclose said wipe between them,
and wherein said rear sheet is adapted to be peeled off of said front
sheet to expose the wipe secured to said front sheet.

Claim 3: A package according to Claim 1, wherein said front sheet
has a substantially curvilinear shape.

Claim 29: A wipe comprising:
a first barrier layer to which a wipe material is secured, the first
barrier layer forming an outer sheet of a package for the wipe, and providing
a barrier between the wipe material and a human hand during use of the
wipe, wherein the barrier layer together with the wipe material is configured
such that during use, it is in substantial alignment with, and fits in, at least a
portion of the hand; and
and enclosure layer comprising a coupon,
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wherein the first barrier layer and the enclosure layer are sealed
together to enclose the wipe material between them, and
wherein the enclosure layer is adapted to be peeled off of said front
sheet to expose the wipe material.

2. INDEFINITENESS
Claims 29, 33-37 and 39-43 stand rejected under 35 U.S.C. § 112,
second paragraph, as indefinite.
The Examiner concludes that in claim 29, “the phrase ‘said front
sheet’ lacks proper antecedent basis,” that in claim 36, “the phrase ‘having
the a wipe’ is inaccurate and indefinite,” and that “[c]laim 39 is depended
from the canceled claim 38” (Ans. 3).
With regard to this rejection, Appellant states that he is prepared to
make any necessary amendments to claims 29, 33-37, and 39-43, after the 35
U.S.C. § 103 rejections are withdrawn (App. Br. 14).
Given that Appellant has not disputed the merits of the rejections, the
Examiner’s rejection of claims 29, 33-37 and 39-43 under 35 U.S.C. § 112,
second paragraph, is affirmed.
3. OBVIOUSNESS I
Claims 1, 5, 29, 33-36, 39-44, 46 and 48-50 stand rejected under 35
U.S.C. § 103 as obvious in view of Anderson1 and either of Faltynek2 or
MacGregor.3 Because we conclude that Anderson and Faltynek support a
prima facie case of obviousness, we will not further discuss MacGregor.

1 Anderson, US 4,896,768, Jan. 30, 1990
2 Faltynek, US 5,009,518, Apr. 23, 1991
3 MacGregor et al., US 4,846,504, July 11, 1989
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The Examiner relies on Anderson as disclosing a wipe package as
recited in claim 1 except that Anderson does not disclose that “the rear
sheet/enclosure layer comprises a coupon” (Ans. 4). The Examiner relies on
Faltynek as disclosing “a package (10) having a coupon (28, 50) removably
attached to an outer surface of the package” (id., citing Figs. 2 and 6 of
Faltynek).
The Examiner concludes that it “would have been obvious to one
having ordinary skill in the art … in view of Faltynek … to modify the wipe
package of Anderson so [that] the second layer comprises a coupon to
promote the sale of the package” (id.).
We conclude that the Examiner has set forth a prima facie case that
claim 1 would have been obvious to the ordinary artisan. Anderson
discloses a “[p]resaturated wipe product 10 [that] comprises first layer 12 of
packaging material, a second layer 16 of packaging material and a
presaturated pad 14 secured to second layer 16” (Anderson, col. 3, ll. 1-4).
Faltynek discloses that coupons attached to products can enhance
sales and that coupons may be an integral part of packaging or may be
secured to the product packaging (Faltynek, col. 1, ll. 20-26). Faltynek also
discloses a “window-type bag with a couponing system” such that “a coupon
is formed integral with the bag but removably secured to the bag at the
window-forming aperture by perforations” (Faltynek, col. 1, ll. 46-50).
We agree with the Examiner that it would have been prima facie
obvious to one of skill in the art to combine the teachings of Anderson and
Faltynek and thereby arrive at the invention of claim 1. Anderson discloses
the claimed wipe package with the exception of the rear sheet of the
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packaging comprising a coupon. Faltynek discloses that attaching coupons
to packages for product marketing is known in the art. One of skill in the art
would have motivated to apply the coupon of Faltynek to the wipe package
of Anderson because Faltynek teaches that coupons can enhance sales.
Appellant argues that neither Anderson nor Faltynek teach or suggest
the limitations of claim 1 that the “coupon forms a layer of the package that
seals a wipe” such that “[p]eeling the coupon away exposes the wipe secured
to the front sheet” (App. Br. at 7-8).
We are not persuaded by this argument. Claim 1 only requires that
the rear sheet comprises a coupon, not that the rear sheet entirely consists of
the coupon or that peeling away the coupon would expose the wipe secured
to the front sheet. “‘Comprising’ is a term of art used in claim language
which means that the named elements are essential, but other elements may
be added and still form a construct within the scope of the claim.”
Genentech, Inc. v. Chiron Corp., 112 F.3d 495, 501 (Fed. Cir. 1997). Thus,
the claim encompasses a wipes package wherein a coupon is attached to a
rear sheet as a separate component.
Appellant further argues that there is no motivation to combine the
disclosures of Anderson and Faltynek to arrive at the invention of claim 1
(id. at 8-9).
We are not persuaded by this argument. It is true that neither
Anderson or Faltynek expressly suggests a wipes package with a rear sheet
that comprises a coupon, but the prior art need not expressly suggest an
invention in order to have made it obvious. “[T]he ‘motivation-suggestion-
teaching’ test asks not merely what the references disclose, but whether a
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person of ordinary skill in the art, possessed with the understandings and
knowledge reflected in the prior art, and motivated by the general problem
facing the inventor, would have been led to make the combination recited in
the claims.” In re Kahn, 441 F. 3d 977, 988 (Fed. Cir. 2006). See also KSR
Int’l Co. v. Teleflex Inc., 127 S. Ct. 1727, 1741 (2007) (The obviousness
analysis “can take account of the inferences and creative steps that a person
of ordinary skill in the art would employ.”); DyStar Textilfarben GmbH &
Co. Deutschland KG v. C.H. Patrick Co., 464 F.3d 1356, 1367 (Fed. Cir.
2006) (The “suggestion test is in actuality quite flexible and not only
permits, but requires, consideration of common knowledge and common
sense.”).
As discussed above, Anderson discloses the claimed wipes package
with the exception of the limitation of rear sheet that comprises a coupon,
and Faltynek discloses that coupons on products can enhance sales. We
conclude that one of skill in the art would have considered the claimed
feature of a coupon on the rear sheet of the wipes package to be suggested
by the combination of references because one of skill in the art would have
understood that sales of the wipes package could be enhanced by attaching a
coupon to its surface, i.e. the front sheet or the rear sheet.
Appellant further argues that “Faltynek actually teaches away from
the invention of the present Claims by leaving the package intact when the
coupon is removed” (App. Br. 9).
We do not find this argument to persuasive. As discussed above, the
open “comprising” language of claim 1 encompasses wipes packages with a
coupon attached to the rear sheet. Claim 1 does not require that the coupon
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form an integral part of the wipes package such that removal of the coupon
would open the wipes package.
Appellant relies on the same limitations discussed above with respect
to claim 1 as the basis for distinguishing independent claims 29, 36, and 44
from the prior art (App. Br. 11-13). These arguments are not persuasive for
the reasons discussed above with respect to claim 1.
We affirm the rejection of claims 1, 29, 36, and 44 as obvious in view
of Anderson and Faltynek. Claims 5, 33-35, 39-43, 46 and 48-50 fall with
claims 1, 29, 36, and 44 because they were not argued separately. 37 C.F.R.
§ 41.37(c)(1)(vii).
3. OBVIOUSNESS II
Claims 3 and 37 stand rejected under 35 U.S.C. § 103 as obvious in
view of Anderson, either of Faltynek or MacGregor, and Laipply.4 The
claims have not been argued separately and therefore stand or fall together.
37 C.F.R. § 41.37(c)(1)(vii).
The Examiner relies on Anderson and Faltynek as discussed above.
The Examiner finds that Anderson “fails to show the front sheet/first layer
being substantially curvilinear [in] shape” (Ans. 4). The Examiner relies on
Laipply as showing “a package (12, 212) holding a pad (11, 211) comprising
a front sheet (16) having a substantially curvilinear shape” (id., citing
Laipply, Figs. 2-4 and 7). The Examiner concludes that it “would have been
obvious to one having ordinary skill in the art in view of Laipply to modify
the front sheet of Anderson so the front sheet comprises a substantially

4 Laipply, US 4,696,393, Sep. 29, 1987
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curvilinear shape for accommodating a substantially similar shape of the
wipe” (id. at 4-5).
We conclude that the Examiner has set forth a prima facie case that
claim 3 would have been obvious to the ordinary artisan. Anderson and
Faltynek are discussed above. Laipply discloses “an integral fluid applying
device” that includes a circular pad and an oval-shaped package (Laipply,
col. 6, ll. 10-27). Laipply also discloses that the “oval shape or other curved
shape, such as the circular form … is very advantageous relative to a
triangular/diamond shape … or rectangular shape … because there are no
sharp corners protruding that possibly could cause an injury or discomfort to
a user” (id. at col., 8, ll. 6-14).
We agree with the Examiner that it would have been prima facie
obvious to one of skill in the art to make the wipes package suggested by
Anderson and Faltynek oval-shaped (i.e., curvilinear) because Laipply
discloses that an oval-shaped wipes package is safer for users.
Appellant argues that, in Laipply’s product, the backing with the
attached pad is folded in half and sealed, “eliminating the need for having
two or more sheets in the package” (App. Br. 14). Appellant argues that
“[t]hat is different from the invention of the present Claims in which a front
sheet and a rear sheet is used” (id.) and concludes that “Laipply’s curvilinear
shaped pad does not add the missing elements” (id.).
We are not persuaded by this argument. The Examiner’s rejection
relies on Laipply only for suggesting an oval-shaped package, not a method
of making the device suggested by Anderson and Faltynek. As discussed
above, the advantages suggested by Laipply for an oval-shaped package
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would also apply to wipes package having separate front and back layers,
and thus, would have suggested modifying the package suggested by
Anderson and Faltynek to have an oval shape.
SUMMARY
The Examiner’s rejections are supported by the preponderance of the
evidence of record. We therefore, affirm the rejection of claims 1, 3, 5, 29,
33-37, 39-44, 46, and 48-50 under 35 U.S.C. § 103.
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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