Ex Parte Ruman et al

Patent Trial and Appeal Board

Oct 28, 2013

11983839 (P.T.A.B. Oct. 28, 2013)

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.
11/983,839 11/13/2007 Marcille Faye Ruman 64346041US01 6096
23556 7590 10/28/2013
KIMBERLY-CLARK WORLDWIDE, INC.
Tammi Langin
2300 Winchester Rd.
NEENAH, WI 54956
EXAMINER
REYNOLDS, STEVEN ALAN
ART UNIT PAPER NUMBER
3788
MAIL DATE DELIVERY MODE
10/28/2013 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________
Ex parte MARCILLE FAYE RUMAN,
HEIDI ELLEN VANDEN BOOM,
MARGARET MARY POSORSKE,
ABAYOMI MICHAEL SHONOIKI,
LOUISE CYNTHIA ELLIS COE, HEIDI LYNN CAREY,
JASON ROBERT BOON, HEIDI BAUERLEIN HOPKINS,
JASON DANIEL ROTTIER,
CHRISTIAN MATTHEW HIRTHE,
JANE LOUISE CLOUGH, and CERITA DIANE BETHEA
____________________

Appeal 2011-012837
Application 11/983,839
Technology Center 3700
____________________

Before: MICHAEL C. ASTORINO, JOHN W. MORRISON, and
MICHELLE R. OSINSKI, Administrative Patent Judges.

MORRISON, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2011-012837
Application 11/983,839
2
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134 from a rejection of claims 1
and 3-21. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

CLAIMED INVENTION
Claim 1, reproduced below, is illustrative of the claimed subject
matter:
1. Packaging in which to supply personal care
products to a consumer, wherein at least a portion of the
packaging is adapted to be reused by the consumer, the
packaging comprising:
a storage bin having a storage bin bottom and a
removable, reclosable cover; and
a removable sleeve adapted to encircle a portion of the
storage bin and to be removable from the storage bin by the
consumer, the sleeve arranged to be in direct contact with the
storage bin bottom and the cover to hold the cover on the
storage bin bottom, wherein the sleeve includes product-
identifying graphics, wherein the storage bin includes non-
product-identifying graphics and is substantially free of
product-identifying graphics, and further comprising an
overwrap enclosing the storage bin and the sleeve.

REFERENCES
Reynolds
Densen
Spielman
US 3,387,702
US 4,953,779
US 6,669,021 B1
Jun. 11, 1968
Sep. 4, 1990
Dec. 30, 2003
Suh
Velazquez
US 2006/0032782 A1
US 2006/0071061 A1
Feb. 16, 2006
Apr. 6, 2006

Appeal 2011-012837
Application 11/983,839
3
REJECTIONS
Claims 1 and 4-20 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Densen and Spielman.
Claims 3 and 21 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Densen, Spielman, and Velazquez.
Claims 1, 3-6, and 8-21 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Suh, Spielman, and Reynolds.
Claim 7 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Suh, Spielman, Reynolds, and Velazquez.
Claims 1 and 3-21 stand provisionally rejected on the ground of
nonstatutory obviousness-type double patenting as being unpatentable over
claims 1-3, 13, 15, 20, 21, 23, and 24 of co-pending Application No.
11/983,853 and Densen.1

ANALYSIS
Obviousness over Densen and Spielman
Addressing claims 1 and 9, the Examiner finds that Densen discloses
substantially all of the recited claim elements “except for the removable bin
enclosure and the overwrap.” Ans. 5. The Examiner then finds that
Spielman teaches
a removable sleeve (sleeve 16) having product information
thereon (indicia 20 - See column 2, lines 4-10), wherein the
sleeve encircles a portion of the storage bin bottom and the
cover (See Fig. 3), and an overwrap (outer protective layer 18)
enclosing the storage bin and the sleeve for the purpose of

1 Appellant states “[t]he provisional double patenting rejections made by the
Examiner will be addressed when the claims in question become patented.”
Br. 3.
Appeal 2011-012837
Application 11/983,839
4
protecting the contents of the overwrap (See column 2, lines 18-
21).
Id. The Examiner then determines “it would have been obvious . . . to have
provided the bin of Densen with a sleeve and an overwrap enclosing the bin
and sleeve as taught by Spielman in order to provide product information
and to protect the bin and sleeve from damage.” Id.
First, Appellants argue
Densen does not disclose, teach, or suggest a sleeve that is in
direct contact with the storage bin bottom and the cover to hold
the cover on the storage bin bottom, nor does the Examiner
provide a rejection of the direct contact element, or even
mention this element. The addition of Spielman does not
correct this deficiency as Spielman also does not disclose,
teach, or suggest a sleeve that is in direct contact with the
storage bin bottom and the cover to hold the cover on the
storage bin bottom.
Br. 4. These arguments do not address the combination of Densen and
Spielman proposed by the Examiner, but rather attack the references
individually. The Examiner relies on Spielman, not Densen, for the teaching
of a sleeve and overwrap, and relies on Densen, not Spielman, for the
disclosure of the storage bin with a bottom and a cover. Nonobviousness
cannot be established by attacking the references individually when the
rejection is predicated upon a combination of prior art disclosures. See In re
Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986). Therefore, Appellants’
arguments are not persuasive.
Next, Appellants argue against the Examiner’s articulated reasoning
to combine the references. Appellants argue that “there is no motivation in
either of the references to look for any structure to hold a cover on a storage
bin.” Br. 5. The Appellants further argue “Densen does not provide boxes
with covers, only blanks of foldable material, so one would not be motivated
Appeal 2011-012837
Application 11/983,839
5
to seek a sleeve of any kind, much less one displaying product information.”
Id. Appellants yet further argue “there can be no reasonable expectation of
success in attempting to wrap Spielman's festive wrapping paper 14, sleeve
16, and overwrap 18 around Densen's blank of foldable material, and it is
unclear why anyone would attempt to try this.” Id. Each of Appellants’
arguments appears to be holding the Examiner to a teaching, suggestion, or
motivation (TSM) standard; such a standard is not required. KSR Int’l Co. v.
Teleflex, Inc., 550 U.S. 398, 415 (2007). 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 modify Densen with the sleeve and overwrap of Spielman. In
this case, the Examiner’s articulated reasoning is that modifying Densen
with the sleeve and overwrap of Spielman would “provide product
information and [] protect the bin and sleeve from damage.” Ans. 5.
Appellants’ arguments do not address the Examiner’s articulated reasoning
to combine the references. Thus, Appellants’ arguments are not persuasive
as they have not apprised us of any error in the Examiner’s articulated
reasoning to combine Densen and Spielman.
For the reasons above, we sustain the rejection of independent claims
1 and 9 and dependent claims 4-8, 10-15, and 17-20, which are not
separately argued, as unpatentable over Densen and Spielman.
Appellants argue claim 16 separately. Addressing claim 16, the
Examiner finds “Densen-Spielman discloses the claimed invention except
for specific shape of the bin. To modify the bin to have an arcuate portion
would entail a mere change in shape of the bin and yield only predictable
results.” Ans. 7-8. Appellants argue “modifying the blank of foldable
material to obtain a footprint with an arcuate portion is physically
Appeal 2011-012837
Application 11/983,839
6
impossible.” Br. 6. Appellants’ allegation amounts to unsupported attorney
argument and is therefore unpersuasive. In re Geisler, 116 F.3d 1465, 1470
(Fed. Cir. 1997). Furthermore, the Examiner determines
it was well known in the packaging art to form a blank in an
orientation that would allow for the blank to be assembled into
a container having various shapes. It was old and conventional
to provide the bottom wall of a blank with an arcuate portion in
order to form a container with an arcuate wall once erected.
Ans. 22. Appellants do not respond to this determination. Accordingly,
Appellants have not identified any error in the Examiner’s findings or
determinations. Therefore, we sustain the rejection of claim 16 as
unpatentable over Densen and Spielman.
Obviousness over Densen, Spielman, and Velazquez
Claims 3 and 21 depend from claims 1 and 19 respectively.
Appellants’ only argument is “Velazquez does not correct the deficiencies of
Densen and Spielman as described above with respect to claims 1 and 19.”
Br. 6. As there is no deficiency of Densen and Spielman to render claims 1
and 19 unpatentable, this argument is not persuasive. Accordingly, we
sustain the rejection of claims 3 and 21 as unpatentable over Densen,
Spielman, and Velazquez.

Obviousness over Suh, Spielman, and Reynolds
Appellants argue claims 1, 3-6, and 8-21 as a group. Br. 6-8. We
select claim 1 as the representative claim, and claims 3-6 and 8-21 will stand
or fall with claim 1. 37 C.F.R. § 41.37(c)(1)(iv).
The Examiner finds that Suh discloses substantially all of the recited
limitations of claims 1, “except for the sleeve including product-identifying
Appeal 2011-012837
Application 11/983,839
7
graphics and an overwrap enclosing the storage bin and the sleeve.” Ans.
10. The Examiner finds that Spielman teaches
a removable sleeve (16) having product information thereon
(indicia 20 - See column 2, lines 4-10), wherein the sleeve
encircles a portion of the storage bin bottom and the cover (See
Fig. 3), and an overwrap (18) enclosing the storage bin and the
sleeve for the purpose of protecting the contents of the
overwrap (See column 2, lines 18-21).
Id. at 11 (emphasis added). The Examiner then determines that “it would
have been obvious to . . . have provided the device of Suh with product
information on the sleeve and an overwrap enclosing the bin and sleeve as
taught by Spielman in order to provide product information and to protect
the bin and sleeve from damage.” Id. The Examiner makes further findings
with respect to Reynolds which are not related to the claimed subject matter.
Appellants first argue that “Suh does not disclose product-identifying
graphics on its handle.” Br. 7. This argument attacks Suh individually, not
the combination of Suh, and Spielman. The Examiner relies on Spielman,
not Suh, for the teaching of product-identifying graphics on the sleeve
(handle). Nonobviousness cannot be established by attacking the references
individually when the rejection is predicated upon a combination of prior art
disclosures. See In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986).
Accordingly, Appellants’ argument is not persuasive.
Next, Appellants argue against the Examiner’s articulated reasoning
to combine Suh and Spielman. Appellants argue that “[t]he Examiner has
shown no 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.” Br. 7. Appellants further argue “[t]here is no
motivation in Suh to add product-identifying graphics to its handle as having
Appeal 2011-012837
Application 11/983,839
8
removable product-identifying graphics would defeat its purpose of
encouraging brand loyalty and continued use of its particular products.” Id.
at 7-8. Appellants further argue that removing the product-identifying
graphics for the purpose of “encouraging beauty and therefore reuse is not
contemplated by Suh and in fact would defeat the stated purpose of Suh.”
Id. at 8. Each of Appellants’ arguments appears to be holding the Examiner
to a teaching, suggestion, or motivation (TSM) standard; such a standard is
not required. KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 415 (2007). 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 modify Suh by placing product-identifying
information on the sleeve and adding the overwrap taught by Spielman. In
this case, the Examiner’s articulated reasoning is that modifying Suh with
the product-identifying graphics on the sleeve and overwrap of Spielman
would “provide product information and [] protect the bin and sleeve from
damage.” Ans. 11. Appellants’ arguments do not address the Examiner’s
articulated reasoning to combine the references. Thus, Appellants’
arguments are not persuasive as they have not apprised us of any error in the
Examiner’s articulated reasoning to combine Suh and Spielman.
Next, Appellants argue that Suh teaches away from the use of
product-identifying information on the sleeve because there is “no need for
product-identifying graphics such as size, count, amount, or volume of
personal care products disposed in the baby kit as its baby kit is not intended
to be sold commercially.” Br. 7. Prior art does not teach away from claimed
subject matter merely by disclosing a different solution to a similar problem
unless the prior art also criticizes, discredits or otherwise discourages the
solution claimed. See In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004).
Appeal 2011-012837
Application 11/983,839
9
In this case, Appellants have not identified any portion of Suh that
discourages or discredits the placement of product-identifying graphics on
the sleeve. Therefore, Appellants’ argument that Suh teaches away from
placing product-identifying graphics on the sleeve is not persuasive.
For the above reasons, we sustain the rejection of claim 1, and claims
3-6 and 8-21 that stand or fall therewith, as unpatentable over Suh,
Spielman, and Reynolds.

Obviousness over Suh, Spielman, Reynolds, and Velazquez
Claim 7 depends from claim 1. Appellants’ only argument is that
“Velazquez does not correct the deficiencies of Suh, Spielman, and
Reynolds as described above with respect to claim 1.” Br. 8. As there is no
deficiency in the combination of Suh, Spielman, and Reynolds to render
claim 1 unpatentable, this argument is not persuasive. As such, we sustain
the rejection of claim 7 as unpatentable over Suh, Spielman, Reynolds, and
Velazquez.

Non-Statutory Obviousness Type Double Patenting
Appellants do not contest this rejection, but state “[t]he provisional
double patenting rejections made by the Examiner will be addressed when
the claims in question become patented.” Br. 3. As of October 24, 2013, the
co-pending application was abandoned for failure to pay the issue fee. In
light of this Board’s decision in Ex parte Moncla, 95 USPQ2d 1884 (BPAI
2010) (precedential), we do not reach the merits of the Examiner’s
provisional double patenting rejection at this time, because it would be
premature to do so.

Appeal 2011-012837
Application 11/983,839
10
DECISION
For the above reasons, the Examiner’s decision to reject claims 1 and
3-21 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)(1)(iv).

AFFIRMED

mls