Ex Parte Yamada et al

Patent Trial and Appeal Board

Mar 29, 2017

13189825 (P.T.A.B. Mar. 29, 2017)

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.
13/189,825 07/25/2011 Kosaku Yamada AA806M 1001
143559 7590 03/31/2017
Schwegman Lundberg & Woessner / Coty
P.O. Box 2938
Minneapolis, MN 55402
EXAMINER
KELLY, TIMOTHY PATRICK
ART UNIT PAPER NUMBER
3754
NOTIFICATION DATE DELIVERY MODE
03/31/2017 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):
uspto@slwip.com
slw@blackhillsip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte KOSAKU YAMADA, TOSHIYA TANIGUCHI,
TAKASHI YOSHIDA, and KAZUNORI OGAMI
Appeal 2015-006417
Application 13/189,825
Technology Center 3700
Before LINDA E. HORNER, THOMAS F. SMEGAL, and LISA M. GUIJT,
Administrative Patent Judges.
HORNER, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Kosaku Yamada et al. (Appellants)1 seek our review under 35 U.S.C.
§ 134 of the Examiner’s decision rejecting claims 1—4 and 6-9 under
35 U.S.C. § 103(a) as unpatentable over Taniguchi (US 2007/0060666 Al,
1 Appellants identify The Procter & Gamble Company as the real party in
interest. Appeal Br. 1. Subsequent to the filing of the Appeal Brief, The
Procter & Gamble Company assigned its interest in the application to
Galleria Co., who subsequently assigned its interest to Noxell Corporation.
Assignment documents recorded in USPTO on October 20, 2016.
Appeal 2015-006417
Application 13/189,825
published March 15, 2007) and Swertvaegher (WO 2010/043497 A2,
published April 22, 2010).2 We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
CLAIMED SUBJECT MATTER
Appellants’ claimed subject matter relates to “a method of making
personal care compositions comprising multiple layers.” Spec. 1,11. 8-9.
Claim 1 is the sole independent claim on appeal and is reproduced below.
1. A method of making a personal care composition
comprising the steps of:
(a) providing a first layer and a second layer which each
are fluid at elevated temperature; solid at ambient temperature;
and visually distinctive from each other;
(b) providing the first and second layers in fluid state at an
elevated temperature in isolated vessels;
(c) separately dispensing the first layer by a first nozzle
and the second layer by a second nozzle, while maintaining the
elevated temperature, into a same package having a circle plan
view shape;
(d) wherein the first nozzle is a first distance from a Z-axis
running vertically through the center of the package, the second
nozzle is a second distance from the Z-axis, the first and second
distances are not equal, and the first and second nozzle do not
coincide with the Z-axis; and
(e) cooling the dispensed composition for solidifying in
the package.
2 Claim 5 is canceled, and claims 10-19 are withdrawn from consideration.
See Final Action 1, dated July 17, 2014 (“Final Act.”) (listing claims 10-19
as withdrawn) and Amendment under 37 C.F.R. § 1.111, dated March 10,
2014 (canceling claim 5).
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Application 13/189,825
ANALYSIS
Appellants argue claims 1—4 and 6-9 as a group. Appeal Br. 2^1. We
select claim 1 as representative, and dependent claims 2-4 and 6-9 stand or
fall with claim 1. 37 C.F.R. § 41.37(c)(l)(iv).
The Examiner finds that Taniguchi discloses steps (a), (b), (c), and (e)
of claim 1. Final Act. 3—4. The Examiner also finds that Taniguchi
discloses part of step (d). Id. at 4 (finding that Taniguchi discloses “wherein
the first nozzle is a first distance from the z-axis through the center of the
container, and the second nozzle is a second distance from the z-axis ([F]ig.
3d)”). The Examiner further clarifies in the Advisory Action that “the first
and second distances are not equal. . . because the second distance is zero,
since the second nozzle coincides with the Z[-]axis” and “the first distance is
not zero as the first nozzle is to the left of the Z[-]axis.” Advisory Action 2,
dated November 4, 2014 (“Adv. Act.”). The Examiner finds that “Taniguchi
fails to show the first and second nozzle[s] do not coincide with the z-axis.”
Final Act. 4.
The Examiner finds that “Swertvaegher teaches a method ([F]ig[s]. 5-
6) of filling a container with multiple layers wherein the first (81) and
second nozzle (82) do not coincide with the z-axis (C).” Final Act. 4. The
Examiner determined that “[i]t would have been obvious to one of ordinary
skill in the art to modify Taniguchi with the nozzle arrangement of
Swertvaegher, since Swertvaegher teaches that the arrangement provides a
visually pleasing arrangement of layers thereby increasing sales of the
product.” Id.
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Application 13/189,825
In the Appeal Brief, Appellants contend that the rejection should not
be sustained because “the Office Action has not shown that Taniguchi or
Swertvaegher[] teach or suggest that the first and second distances are not
equal and the first and second nozzle[s] do not coincide with the Z-axis.”
Appeal Br. 2-3. Specifically, Appellants contend that because the Examiner
admits in the Advisory Action that one of Taniguchi’s nozzles is coincident
with the Z-axis, the Examiner has admitted that the Office Action has not
shown a suggestion of every element recited in claim 1. Id. at 3.
The Examiner responds that: (1) “Figure 3d [of Taniguchi] clearly
shows the first and second distances are not equal”; and (2) “Nevertheless,
Swertvaegher teaches both the distances are not equal and both the first and
second nozzle do not coincide with the Z-axis.” Ans. 6-7.
The wherein clause of part (d) of claim 1 is recited in two parts. In
the first part, the clause recites “the first nozzle is a first distance from a Z-
axis running vertically through the center of the package, the second nozzle
is a second distance from the Z-axis, the first and second distances are not
equal.” In the second part, the clause recites “the first and second nozzle do
not coincide with the Z-axis.” Appellants’ argument seems to imply that we
should read the limitations in the first part that “the first nozzle is a first
distance from the Z-axis” and “the second nozzle is a second distance from
the Z-axis” to not encompass a scenario in which one of the nozzles is
coincident with the Z-axis. Although the recitation that an object is “a
distance from” an axis might in some instances imply that the nozzle must
be some finite distance from the axis, i.e., the “distance” cannot be zero, we
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Application 13/189,825
are not inclined to infer such a meaning in the context of claim 1, in which
the claim further recites in the second part that “the first and second nozzle
do not coincide with the Z-axis.” The clear implication of this second part
of the clause is that the “distance” referenced in the first part of the clause
can be zero. Any other understanding would render the second part of this
clause meaningless.
Based on the claim interpretation discussed above, we agree with the
Examiner’s finding that Taniguchi discloses the first part of the wherein
clause of part (d) because Taniguchi’s first nozzle (as identified by the
Examiner in the annotated Figure 3 of Taniguchi on page 6 of the Answer) is
a first distance from the Z-axis and Taniguchi’s second nozzle (as identified
in annotated Figure 3) is a second distance from the Z-axis, wherein the
distance is zero. The first and second distances are not equal because the
first distance is greater than zero.
We further agree with the Examiner’s finding that Swertvaegher
discloses first and second nozzles that are at first and second distances from
the Z-axis, respectively, where the first and second distances are not equal
and where the first and second nozzle do not coincide with the Z-axis.
Ans. 7 (depicting in annotated Figure 5 that nozzle 81 is closer to the Z-axis
(C) and second nozzle (82 or 83) is further away from the Z-axis, and none
of the nozzles coincide with the Z-axis). The method of Taniguchi, when
modified as proposed by the Examiner to use the arrangement of nozzles
shown in Figures 5 and 6 of Swertvaegher, would result in the limitation of
claim 1 as recited in the wherein clause in part (d). In other words, because
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the arrangement of nozzles in Swertvaegher teaches both parts of the
wherein clause of part (d), the method of Taniguchi as modified with the
arrangement of Swertvaegher would possess both characteristics as recited
in the claim.
The Examiner added in the Answer that Taniguchi “explicitly recites
that the nozzle orientations are not limited to those shown in the figures and
that the nozzle termination points can be moved or rotated.” Ans. 6 (citing
Taniguchi, para. 132). The Examiner asserts that this disclosure “further
supports the obviousness rejection of the claims and essentially encourages
the combination of Taniguchi with Swertvaegher.” Id.
Appellants contend that this reasoning set forth in the Answer3 is an
inadequate basis for a determination of obviousness because it “amount[s] to
no more than an invitation to selectively pick and choose this key element of
Appellants’ invention.” Reply Br. 3. Appellants, however, fail to identify
the “key element” referenced in this argument. To the extent Appellants
aver that the arrangement of the nozzles as recited in the wherein clause in
part (d) of claim 1 is the “key element” of Appellants’ invention, Appellants’
Specification fails to provide support for such an assertion. Rather,
Appellants’ Specification describes various arrangements of nozzles of the
invention, some of which include at least one nozzle coincident with the
3 In the Appeal Brief, Appellants did not challenge the Examiner’s
articulated reason for the modification of Taniguchi with the arrangement of
Swertvaegher, to “provide^ a visually pleasing arrangement of layers
thereby increasing sales of the product” as set forth in the Final Action.
Final Act. 4.
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Z-axis and other arrangements in which none of the nozzles are coincident
with the Z-axis. Compare Spec., Figs. 3(a), 3(d), 3(e), with Spec., Figs.
3(b), 3(c), and 3(f). Appellants’ Specification also describes arrangements
of nozzles which include first and second nozzles at equal distances from the
Z-axis, and other arrangements in which the nozzles are not at equal
distances from the Z-axis. Compare Spec., Fig. 3(b), with Spec., Fig. 3(c).
The Specification does not attribute any criticality or significance to the
particular arrangement set forth in the wherein clause in part (d) of claim 1.
See, e.g., Spec. 7,11. 22-24 (describing a three-nozzle arrangement in which
“the position of the first nozzle either coincides or does not coincide with the
Z[-]axis running vertically through the center of the package”).
Appellants further contend that the Examiner improperly draws an
inference from paragraph 132 of Taniguchi “unsupported by the fact-based
analysis required by KSR and its progeny.” Reply Br. 4. We agree with the
Examiner’s finding that paragraph 132 suggests distinct product designs can
be achieved by moving or rotating the table (i.e., the container), moving or
rotating the outlet of the nozzles, or combinations of such movements of
containers and nozzles. Taniguchi discloses “it is advantageous to have the
first and second layer compositions visibly distinct, such that the design is
clear and distinct.” Taniguchi, para. 132. This teaching in Taniguchi would
have provided adequate reason for one having ordinary skill in the art to
have looked to other known arrangements of nozzles and movements of
nozzles and containers to achieve desired patterns. Swertvaegher discloses
one such known arrangement of nozzles to achieve a distinct swirl product
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design. Swertvaegher, Figs. 5, 6; see also id. at 16,1. 31 - 17,1. 4
(describing generally that the product design is achieved by relative
movement between the nozzle and the container). The Examiner’s proposed
modification of the known method of Taniguchi with the known nozzle
arrangement of Swertvaegher is a predictable variation of the
container/nozzle arrangement according to their established functions as set
forth in Swertvaegher. KSRInt’l Co. v. Teleflex Inc., 550 U.S. 398, 417
(2007) (a fact finder “must ask whether the improvement is more than the
predictable use of prior art elements according to their established
functions”).
Considering the evidence and reasoning presented by the Examiner
and the arguments in rebuttal presented by Appellants, for the reasons
provided above, we agree with the Examiner’s determination of obviousness
of the subject matter of claim 1 under 35 U.S.C. § 103(a) as unpatentable
over Taniguchi and Swertvaegher. Accordingly, we sustain the rejection of
claim 1, and dependent claims 2-4 and 6-9 which fall with claim 1, under
35 U.S.C. § 103(a).
DECISION
The decision of the Examiner to reject claims 1-4 and 6-9 is affirmed.
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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
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