12725734 (P.T.A.B. Dec. 27, 2016)

Ex Parte Woulms et al

Patent Trial and Appeal BoardDec 27, 2016

12725734 (P.T.A.B. Dec. 27, 2016)

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. 12/725,734 03/17/2010 Ann Marie WOULMS 11268M 9825 27752 7590 12/29/2016 THE PROCTER & GAMBLE COMPANY Global IP Services Central Building, C9 One Procter and Gamble Plaza CINCINNATI, OH 45202 EXAMINER COLLINS, DOLORES R ART UNIT PAPER NUMBER 3711 NOTIFICATION DATE DELIVERY MODE 12/29/2016 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 ANN MARIE WOULMS and KEVIN MITCHELL WIWI Appeal 2015-001597 Application 12/725,734 Technology Center 3700 Before CHARLES N. GREENHUT, MICHELLE R. OSINSKI, and BRENT M. DOUGAL, Administrative Patent Judges. GREENHUT, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellants appeal under 35 U.S.C. § 134 from a rejection of claims 1— 13, 16—21,1 and 23. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. 1 Claim 17 was included as rejected on the Final Action summary sheet but not included or discussed in the rejection. Its status is unclear. Appeal 2015-001597 Application 12/725,734 CLAIMED SUBJECT MATTER The claims are directed to demonstrative methods for paper towel products. Claim 1, reproduced below, is illustrative of the claimed subject matter: Claim 1 A method for demonstrating the surface cleaning performance of a tissue towel paper product comprising the steps of: selecting at least one test substrate comprising at least one tissue towel paper product; selecting at least one demonstration implement for the at least one test substrate wherein the at least one demonstration implement comprises a white glove; selecting a testing surface; preparing at least one spill specimen for the at least one test substrate; applying the at least one spill specimen to the testing surface; wiping the at least one spill specimen on the testing surface with the at least one test substrate wherein at least some of the spill specimen adheres to the test substrate, and thereafter, wiping a residual spill specimen, if any, left on the testing surface with the white glove wherein at least some of the residual spill specimen adheres to the white glove; demonstrating the surface cleaning performance of the at least one test substrate by using the white glove to visually demonstrate the amount of the residual spill specimen adhering to the white glove. REJECTION Claims 1—13, 16, 18—21, and 23 are rejected under 35 U.S.C. § 103(a) as being unpatentable over The 1972 Bounty® Paper Towel commercial2 (hereinafter, “Bounty commercial”) in view of Recommended Work 2http ://www.youtube. com/ watch? v=M4Mj Fb 6r 1 BE&feature=player_detailp age (lasted visited Oct. 5, 2012). 2 Appeal 2015-001597 Application 12/725,734 Practices3 (hereinafter “Spill Cleanup Procedures”) and Jackson (US 6,098,234, iss. Aug. 8, 2000). OPINION Arguing the claims as group (see 37 C.F.R. § 41.37(c)(l)(iv)), Appellants raise two issues with the Examiner’s rejection. The first involves the Examiner’s treatment of the white color of the glove of claim 1 as printed matter. There does not appear to be any dispute as to the general laws concerning printed matter in that where it is not related to the substrate in a new and nonobvious way it will not distinguish the claimed invention from the prior art. See Ans. 3 (citing In re Gulack, 703 F.2d 1381 (Fed. Cir. 1983)). Appellants initially assert that the white color is not printed matter (Br. 3), but do not further support or explain this assertion in any way. Appellants instead argue the existence of a functional relationship between the white color and the substrate—facilitating demonstrating residual spillage (Br. 3—4). The Examiner concedes that the white color may be functionally related to the substrate, but correctly finds that white’s ability to visually demonstrate the amount of spillage picked up due to white’s ability to sully or soil was already demonstrated in the prior art Bounty commercial. Ans. 3. The Examiner’s position in this regard is uncontroverted. Appellants pointing out the fact that no single reference teaches a white glove (Br. 3 4) is an attack on the references individually where the rejection is predicated on their combined teachings. There is no requirement that a single reference 3http://oregonstate.edu/ehs/book/export/html/347 (last visited Sept. 28, 2012). 3 Appeal 2015-001597 Application 12/725,734 disclose a particular combination or subcombination in order to support a rejection under § 103. Appellants next argue the absence of any suggestion or motivation to combine the references. Br. 4—5. However, Appellants’ argument is premised on the lack of their particular motivation, i.e., demonstration, in the cited secondary references. As the Examiner correctly points out, demonstration was already undisputedly depicted in the Bounty commercial. Ans. 3. Further, it is not necessary for the prior art to serve the same purpose as that disclosed in Appellants’ Specification in order to support the conclusion that the claimed subject matter would have been obvious. In re Lintner, 458 F.2d 1013, 1016 (CCPA 1972); see also KSRInt’l. Co. v. Teleflex Inc., 550 U.S. 398, 419 (2007) (“[N]either the particular motivation nor the avowed purpose of the [Appellants] controls” in an obviousness analysis.). The desirability of efficient spill cleanup (Final Act. 3) reasonably justifies the combination and stands uncontroverted. Demonstration results from the presence of an observer—a feature already present in the primary reference, the Bounty commercial. We also cannot agree that, in order to see the references’ teachings regarding gloves and paper towels as relevant to one another, there must be a common “biohazard” theme in the spill intended to be cleaned because the recommended Spill Cleanup Procedures (4) are concerned with spills in a biological lab environment. See Br. 4—5. Familiar items, such as gloves and paper towels, have obvious uses beyond the particular environment in which a reference describes them. See KSR Int’l Co., 550 U.S. at 420-21. 4 Appeal 2015-001597 Application 12/725,734 DECISION The Examiner’s rejection is affirmed.4 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 4 Claims 18 and 20 appear to be directed to subject matter Appellants seek to distinguish from the prior art based on printed matter per se. The Examiner may wish to consider, in any further prosecution, whether there are separate grounds for unpatentability of these claims under § 101 (see MPEP § 2106), the printed-matter doctrine (see MPEP §§ 2111.05, 2112.01(111)), or § 112, fourth paragraph (see MPEP § 608.0l(n)(II)). 5