Ex Parte Crabtree et al

Patent Trial and Appeal Board

Mar 8, 2016

11582085 (P.T.A.B. Mar. 8, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
111582,085 10/17/2006
27752 7590 03/10/2016
THE PROCTER & GAMBLE COMPANY
Global Patent Services - Legal IP
Central Building, CS
One Procter and Gamble Plaza
CINCINNATI, OH 45202
FIRST NAMED INVENTOR
Paul Jerome Crabtree
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.
10174 8822
EXAMINER
POON, ROBERT
ART UNIT PAPER NUMBER
3788
NOTIFICATION DATE DELIVERY MODE
03/10/2016 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 PAUL JEROME CRABTREE, NATHAN HENDRICKS, and
MICHAEL EDWARD JUTT
Appeal2014-002144
Application 11/582,085 1
Technology Center 3700
Before STEFAN STAICOVICI, GEORGE R. HOSKINS, and
LEE L. STEPINA, Administrative Patent Judges.
ST AI CO VICI, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Paul Jerome Crabtree et al. (Appellants) appeal under 35 U.S.C. §
134(a) from the Examiner's final decision rejecting claims 1-10 and 12-24.2
We have jurisdiction over this appeal under 35 U.S.C. § 6(b).
SUMMARY OF DECISION
We AFFIRM.
According to Appellants, the real party in interest is The Procter &
Gamble Company. Br. 1 (filed Apr. 22, 2013).
2 Claim 11 has been canceled. Id. at 2.
Appeal2014-002144
Application 11/582,085
INVENTION
Appellants' invention relates to "a transparent or translucent, tinted
container of a first color filled with a tinted liquid of a second color." Spec.
1, 11. 8-9.
Claim 1, the sole independent claim on appeal, is representative of the
claimed invention and reads as follows:
1. A filled package comprising:
(a) a transparent or translucent container exhibiting
the tint of a first color and being adapted to house a
liquid; and
(b) a liquid exhibiting the tint of a second color
which is different than the first color and being housed in
said container, the tint of the first color of the container
and the tint of the second color of said liquid cooperating
such that the tinted container when filled with the tinted
liquid exhibits an appearance having the tint of a third
color wherein the filled package comprises a back label
adhered to an outer periphery of the container comprising
a graphic on an inside surface of the back label facing the
outer periphery of the container viewed through the
bottle wherein the graphic is the same color as the tint of
the second color of the liquid.
REJECTIONS
The following rejections are before us for review:
I. The Examiner rejected claims 1-10, 12-16, 19, and 20 under 35
U.S.C. § 103(a) as being unpatentable over Verdier (US
3,812,042, iss. May 21, 1974), Haugk (US 5,937,554, iss. Aug.
17, 1999), and Yudin (US 5,758,440, iss. June 2, 1998).
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II. The Examiner rejected claims 17 and 18 under 35 U.S.C. §
103(a) as being unpatentable over Verdier, Haugk, Yudin, and
Boyd (US 2005/0106112, pub. May 19, 2005).
III. The Examiner rejected claims 21-24 under 35 U.S.C. § 103(a)
as being unpatentable over Verdier, Haugk, Yudin, and Bouix
(US 2002/0175136 Al, pub. Nov. 28, 2002).
ANALYSIS
Rejection I
Appellants have not presented arguments for the patentability of
claims 2-10, 12-16, 19, and 20 apart from claim 1. See Br. 5-10.
Therefore, in accordance with 37 C.F.R. § 41.37(c)(l)(iv) (2015), we select
independent claim 1 as the representative claim to decide the appeal of the
rejection of these claims, with claims 2-10, 12-16, 19, and 20 standing or
falling with claim 1.
The Examiner finds that Verdier discloses most of the limitations of
independent claim 1, but fails to disclose a back label, as called for by claim
1. See Final Act. 2-3. Nonetheless, the Examiner finds that Haugk
discloses placing a back label 68 with graphics on the exterior surface of a
container and Yudin discloses positioning a back label 23 onto the exterior
surface of a container 11 such that graphics 24 are located on the inside
surface of back label 23 and facing container 11. See id. at 3 (citing Haugk,
col. 11, 11. 26-28; col. 5, 11. 25-33; col. 7, 11. 7-9 and Yudin, col. 4, 11. 5-10;
Figs. 1-3). The Examiner concludes that it would have been obvious for a
person of ordinary skill in the art to provide a back label with graphics, as
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taught by Haugk, to Verdier's container, "in order to give a deep three
dimensional effect." See id. (citing Haugk, col. 5, 11. 25-35). The Examiner
further determines that it would have been obvious for a person of ordinary
skill in the art to provide graphics on the inside surface of a back label, as
taught by Yudin, to the back label on the container of Verdier, as modified
by Haugk, "in order to create a unique 3D effect when viewed with the
graphics on the front label." See id. at 3--4 (citing Yudin, col. 4, 11. 5-10).
The Examiner then takes an alternate position in that the "specific
arrangement and/ or content of indicia (printed matter) [as] set forth in the
claim(s) ... only depend[s] on the intended use of the assembly and the
desired information to be displayed" and therefore, would have been obvious
to a person of ordinary skill in the art. Id. at 4. According to the Examiner,
as Verdier discloses that any tint can be used for coloring the container and
the liquid, and Haugk discloses tinted back labels, the combined teachings of
Verdier, Haugk, and Yudin discloses a colored package adapted to house a
colored liquid and having a colored back label the same color as the liquid.
Id. at 8.
Appellants argue that the Examiner "points to no suggestion or
motivation to combine the particular selected portions of the cited
references." Br. 7. According to Appellants, the "analysis is conclusory"
and thus, the Examiner's rejection is "a hindsight reconstruction of the prior
art." Id. More specifically, Appellants contend that "Verdier makes no
reference of a graphic back label as taught by Haugk and Yudin." Id.
Appellants' arguments appear to be holding the Examiner to the old
teaching, suggestion, or motivation ("TSM") standard where there must be
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some suggestion or motivation, either in the references themselves or in the
knowledge generally available to one of ordinary skill in the art, to modify
the reference or to combine reference teachings; such a standard is not
required. KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398, 415 (2007) ("We
begin by rejecting the rigid [application and requirement of a TSM to
combine known elements in order to show obviousness]"). The proper
inquiry is whether the Examiner has articulated adequate reasoning based on
a rational underpinning to explain why a person of ordinary skill in the art
would have been led to combine the teachings of Verdier, Haugk, and
Yudin. See id. at 418 (stating that "rejections on obviousness grounds
cannot be sustained by mere conclusory statements; instead, there must be
some articulated reasoning with some rational underpinning to support the
legal conclusion of obviousness"). In this case, the Examiner has provided
reasoning with rational underpinning to modify the container of Verdier,
according to Haugk and Yudin, namely, to provide a three-dimensional
effect and hence, "improve aesthetic appeal." See Ans. 8; In re Kahn, 441
F.3d 977, 988 (Fed. Cir. 2006) ("[R]ejections on obviousness grounds
[require] some articulated reasoning with some rational underpinning to
support the legal conclusion of obviousness") (cited with approval in KSR,
550 U.S. at 418). Appellants have not persuasively shown error in the
Examiner's reasoning.
Appellants further argue that because neither Haugk nor Yudin
disclose that the color of the back label is the same color as the tint of the
second color of the liquid, the combined teachings of Verdier, Haugk, and
Yudin fail to disclose "the graphic is the same color as the tint of the second
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color of the liquid." Br. 6. According to Appellants, although tinted graphic
labels may be "known in the art as evidenced by Haugk[, that] does not lead
one of skill in the art to require the color of the back label to be the same
color as the tint of the second color of the liquid." Id. at 7-8. Thus,
Appellants take the position that, "wherein the graphic [of the back label] is
the same color as the tint of the second color of the liquid" is a result-
effective variable, "i.e., [a] variable which achieves a recognized result." Id.
at 9 (emphasis omitted).
We are not persuaded by Appellants' arguments because they are not
commensurate with the Examiner's rejection. More specifically, the
Examiner's rejection "is not based upon an obvious motivation to optimize
tints in order to achieve the same color tint in the graphics and liquid." Final
Act. 8. As the Examiner correctly finds, Verdier discloses that the color of
the liquid and the container may be any color and Haugk discloses tinted
front and back labels. See id.; see also Verdier, col. 4, 11. 54--56 and 72-75;
Haugk, col. 4, 11. 2--4. We thus agree with the Examiner that, "when a tinted
back label with graphics is implemented to the Verdier container . . . the
combination teaches tints of the graphics and liquid to be the same simply by
the fact that the teaching in Verdier encompasses any known container color
or tint and any known content color or tint." See Final Act. 8. Furthermore,
because Appellants do not explain the problem solved by having the back
label color be the same as the liquid color, and present no unexpected
results, we agree with the Examiner that the modification of the colors
would have been obvious to a person of ordinary skill in the art. See Ans. 9;
see also In re Kuhle, 526 F.2d 553, 555 (CCPA 1975) (use of claimed
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feature solves no stated problem and presents no unexpected result and
"would be an obvious matter of design choice within the skill of the
art"( citing Graham v. John Deere Co., 383 U.S. 1 (1966) and In re Gazda,
219 F. 2d 449 (1955))). Moreover, matters relating to ornamentation only,
such as coloring, that have no mechanical function, cannot be relied upon to
patentably distinguish the claimed invention from the prior art. In re Seid,
161F.2d229, 231(CCPA1947).
We further agree with the Examiner that the color and content of the
graphics on the back label constitutes printed matter and thus, changing the
color of the graphics "would only depend on the intended use of the
assembly and the desired information to be displayed." See Ans. 9. It is
well settled that printed matter may patentably distinguish a claimed
invention from the prior art only when the critical question of whether there
is a new and unobvious functional relationship between the printed matter
and the substrate is answered in the affirmative. In re Ngai, 367 F.3d 1336,
1338 (Fed. Cir. 2004). To show a new and unobvious functional
relationship, it has to be shown that the printed matter would not achieve its
purpose without the substrate and the substrate without the printed matter
would similarly be unable to produce the desired result. Id. at 1339. Here,
Appellants have not persuasively shown that the color of the graphics on the
back label depends on the back label and the back label depends on its color.
Thus, changing the color of the graphics on the back label to match the
second color of the liquid does not structurally change the container of
Verdier, Haugk, and Yudin. As such, the color of the graphics on the back
label does not exploit, or interrelate with, the underlying structure of the
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back label. See In re Gulack, 703 F.2d 1381, 1385 (Fed. Cir. 1983). Hence,
we also agree with the Examiner that because the graphics on the back label
constitute printed matter, "changing the graphics (and its color) would have
been obvious to one of ordinary skill in the art." Ans. 11.
Lastly, Appellants argue that although Yudin requires a front label to
be used in conjunction with a back label, Appellants' claimed invention does
not require a front label and thus a person of ordinary skill in the art would
not look to Yudin "to cure the deficiency of Verdier or Haugk." Br. 8.
Although we appreciate that Yudin discloses both front and back labels, we
note that obviousness does not require that all of the features of the
secondary reference, such as the front label, be bodily incorporated into the
primary reference. See In re Keller, 642 F.2d 413, 425 (CCPA 1981). We
thus agree with the Examiner "that the claims do not recite an exclusion of
other labels or inserts, and incorporating other features, such as the front
label of Yudin, to the Verdier container in addition to the claimed back label
would not render the function and purpose of the Verdier container
obsolete." Ans. 11.
In conclusion, for the foregoing reasons, we sustain the rejection
under 35 U.S.C. § 103(a) of claim 1, with claims 2-10, 12-16, 19, and 20
falling with claim 1, as unpatentable over Verdier, Haugk, and Yudin.
Rejections II and III
Appellants rely on the same arguments presented supra with respect
to the rejection of independent claim 1. See Br. 10-11. Accordingly, for the
same reasons as discussed above we also sustain the rejections under 35
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U.S.C. § 103(a) of claims 17 and 18 as unpatentable over Verdier, Haugk,
Yudin, and Boyd and of claims 21-24 as unpatentable over Verdier, Haugk,
Yudin, and Bouix.
SUMMARY
The Examiner's decision to reject claims 1-10 and 12-24 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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