Ex Parte Ruman et alDownload PDFPatent Trial and Appeal BoardOct 28, 201311983839 (P.T.A.B. Oct. 28, 2013) Copy Citation 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 Copy with citationCopy as parenthetical citation