Ex Parte SARTINI et alDownload PDFPatent Trials and Appeals BoardJun 11, 201914084717 - (D) (P.T.A.B. Jun. 11, 2019) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 14/084,717 11/20/2013 27752 7590 06/13/2019 THE PROCTER & GAMBLE COMPANY Global IP Services Central Building, C9 One Procter and Gamble Plaza CINCINNATI, OH 45202 FIRST NAMED INVENTOR Emma Lynn SARTIN! 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. 12667 4011 EXAMINER JOHNSON, NANCY ROSENBERG ART UNIT PAPER NUMBER 1783 NOTIFICATION DATE DELIVERY MODE 06/13/2019 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 EMMALYNN SARTIN! and ANDRE MELLIN 1 Appeal2017-009122 Application 14/084, 717 Technology Center 1700 Before MICHAEL P. COLAIANNI, CHRISTOPHER C. KENNEDY, and MICHAEL G. McMANUS, Administrative Patent Judges. KENNEDY, Administrative Patent Judge. DECISION ON APPEAL This is an appeal under 35 U.S.C. § 134(a) from the Examiner's decision rejecting claims 1-18. We have jurisdiction under 35 U.S.C. § 6(b ). We AFFIRM. BACKGROUND The subject matter on appeal relates to "a sanitary tissue product comprising a surface pattern that communicates a woven product to a consumer of the sanitary tissue product." E.g., Spec. 2; Claim 1. Claim 1 is 1 The Appellant is the Applicant, The Procter & Gamble Company, which is also identified as the real party in interest. Br. 1. Appeal2017-009122 Application 14/084, 717 reproduced below from page 8 (Claims Appendix) of the Appeal Brief (paragraph breaks and indentation added): 1. A sanitary tissue product comprising a surface pattern comprising a plurality of repeating design elements, wherein each repeating design element is connected to at least one other repeating design element by at least one embossed line element, wherein the repeating design element comprises a first design element component having two adjacent open termini and two adjacent closed termini and a second design element component, which is generated by rotating the first design element component 180°, and wherein the first design element component of a first repeating design element is connected to the second design element component of a second repeating design element through respective opposing open termini by at least one embossed line element that creates densified regions compared to other regions of the sanitary tissue product such that a scrubby texture is formed. REJECTIONS ON APPEAL The claims stand rejected as follows: 1. Claims 1-15, 17, and 18 under 35 U.S.C. § I03(a) as unpatentable over Mellin (US 2010/0297378 Al, published Nov. 25, 2010); 2. Claims 1-15, 17, and 18 under 35 U.S.C. § I03(a) as unpatentable over Hupp '058 (US 2010/0314058 Al, published Dec. 16, 2010); 3. Claim 16 under 35 U.S.C. § I03(a) as unpatentable over Mellin or Hupp '058, further in view of Hupp '612 (US 2010/0326612 Al, published Dec. 30, 201 O); 2 Appeal2017-009122 Application 14/084, 717 4. Claims 1-18 for nonstatutory double patenting (provisional) over claims 1-7 and 10-18 of co-pending U.S. Patent Application No. 14/084,703. ANALYSIS After review of the cited evidence in the appeal record and the opposing positions of the Appellant and the Examiner, we determine that the Appellant has not identified reversible error in the Examiner's rejections. Accordingly, we affirm the rejections for reasons set forth below, in the Final Action, and in the Examiner's Answer. See generally Final Act. 2-10; Ans. 2--4. Rejection 1 The Examiner finds that Mellin discloses a sanitary tissue product with repeating patterned fibrous structures that may comprise embossed line elements. Final Act. 2. The Examiner finds that "embossed regions are considered denser than non-embossed regions," and that "a tissue with an embossed pattern is considered to have a texture (scrubby texture)." Id. The Examiner acknowledges that Mellin does not disclose the specific design pattern described by claim 1. Id. at 3. However, the Examiner finds that the specific pattern is "related to ornamentation only and does not structurally differentiate the product over the product in the cited prior art." Id. Quoting In re Seid, 161 F.2d 229 (CCPA 1947), the Examiner determines that "matters relating to ornamentation only which have no mechanical function cannot be relied upon to patentability distinguish the claimed invention from the prior art." Id. at 3. 3 Appeal2017-009122 Application 14/084, 717 The Appellant argues that Seid "is not applicable ... because Claim 1 includes features that do not only relate to ornamentation and have no mechanical function." Br. 3. That argument is not persuasive because the claims at issue in Seid also included features that were not purely ornamental ( e.g., "a bottle having a narrow neck at one end portion and a relatively enlarged body joined to said neck .... "), but the CCP A held that the purely ornamental aspects of the claims could not be used to distinguish the prior art. See Seid, 161 F.3d at 231 ("[M]atters ... [that] relate to ornamentation only and have no mechanical function whatsoever" cannot "properly be relied on ... as the appealed claims are not directed to a design but are structural claims."). The Appellant also argues that the recited pattern has mechanical function in that it provides "a scrubby texture" and "densified regions ... having different properties compared to Mellin's fibrous structure." Br. 3--4. That argument is not persuasive. Claim 1 states that the "embossed line element," not the specific ornamental pattern recited by the claim, is what "creates densified regions compared to other regions of the sanitary tissue product such that a scrubby texture is formed." See id. at 8; see also id. at 3 ("Appellant submits that the embossed line elements of the surface pattern of the claimed invention as claimed in Claim 1 exhibit a mechanical function and are thus not only related to ornamentation."). There is no meaningful dispute that Mellin' s tissue has embossed line elements, and the Appellant does not persuasively explain why Mellin's embossed line elements would not create densified regions and a scrubby texture. See Final Act. 2-3. The Appellant does not persuasively identify any structural component of claim 1 that is different from ( other than the specific 4 Appeal2017-009122 Application 14/084, 717 ornamental design aspects) or would yield any different mechanical function from the sanitary tissue of Mellin. In the Answer, the Examiner elaborates on the rejection and reiterates that the claimed pattern "is considered merely an ornamental design choice with no mechanical function." Ans. 3; see also id. ("A different bending structure or densified region design is not considered a different utility since there is no evidence that the way the claimed tissue bends provides any different or additional function than the tissues in the prior art. Therefore, the differences are considered an obvious consequence of an ornamental design choice."). Citing the Appellant's Specification, the Examiner finds that "[t]he sole purpose of the design claimed is for the purpose of giving the tissue a certain appearance." Id. The Appellant's do not file a Reply Brief to contest that finding. In that regard, we observe that the Appellant's Specification emphasizes aesthetic rather than functional aspects of its design. For instance, the problem identified by the Specification is that "known surface patterns" do not "adequately convey a woven appearance." Spec. 2 ( emphasis added). That appears to be an aesthetic or decorative concern. The Specification goes on to identify a need for tissue that communicates a particular appearance. Id. The disputed elements of claim 1 concern that appearance. The Appellant does not persuasively identify an aspect of the claim or the Specification that indicates that the specific ornamental design described by claim 1 imparts a mechanical function to the claimed subject matter beyond the mechanical function of the prior art tissue paper, which apart from ornamental design, appears to be structurally the same as that of claim 1. See Seid, 161 F.3d at 231; cf In re Distefano, 808 F.3d 845, 848- 5 Appeal2017-009122 Application 14/084, 717 51 (Fed. Cir. 2015) (reaffirming the principle that no patentable weight is to be given to information recorded in any substrate if that printed matter is for informational content only and not functionally or structurally related to the substrate). On this record, we are not persuaded of reversible error in the Examiner's rejection. In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011) ("[I]t has long been the Board's practice to require an applicant to identify the alleged error in the examiner's rejections .... "). Rejection 2 The Examiner finds that Hupp '058 discloses sanitary tissue products having design elements that provide weave patterns. Final Act. 4. The Examiner finds that Hupp' s design elements may comprise an embossed line, that "embossed regions are considered denser than non-embossed regions," and that "an embossed pattern is considered to have a texture (scrubby texture)." Id. The Examiner acknowledges that Hupp '058 does not disclose the specific design pattern described by claim 1. Id. at 4--5. However, the Examiner finds that the specific pattern is "related to ornamentation only and does not structurally differentiate the product over the product in the cited prior art." Id. (quoting Seid, 161 F.2d at 229). The Appellant repeats the arguments described above with respect to Rejection 1. See Br. 4--6. Those arguments are not persuasive for the reasons stated above. As above, the Appellant does not dispute that the prior art includes embossed line elements, or that embossed line elements provide densified regions and a scrubby texture as recited by claim 1. On this record, we are not persuaded of reversible error in the Examiner's rejection. Jung, 637 F.3d at 1365. 6 Appeal2017-009122 Application 14/084, 717 Rejection 3 The Appellant argues that the rejection of claim 16 should be reversed "for the same reasons that Claim 1 is not rendered obvious over either Mellin or Hupp." Br. 6. Because we affirm the Examiner's rejection of claim 1, and the Appellant raises no separate arguments as to claim 16, we likewise affirm the Examiner's rejection of claim 16. Rejection 4 As to the provisional obviousness-type double patenting rejection, the Appellant states only that "when and if this rejection ripens, Appellant will submit[] a Terminal Disclaimer to overcome such rejection." Br. 7. Because the Appellant does assert any error as to the rejection, we summarily affirm it. CONCLUSION We AFFIRM the Examiner's rejections of claims 1-18. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). AFFIRMED 7 Copy with citationCopy as parenthetical citation