Medline Industries, Inc

Patent Trials and Appeals Board

Mar 30, 2021

2020002349 (P.T.A.B. Mar. 30, 2021)

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.
15/194,252 06/27/2016 Megan Henken BPMDL0114MH.P1
11399U CIP
2661
27939 7590 03/30/2021
Philip H. Burrus, IV
Burrus Intellectual Property Law Group LLC
222 12th Street NE
Suite 1803
Atlanta, GA 30309
EXAMINER
FERNSTROM, KURT
ART UNIT PAPER NUMBER
3715
NOTIFICATION DATE DELIVERY MODE
03/30/2021 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):
kberry@burrusiplaw.com
pburrus@burrusiplaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MEGAN HENKEN and STEVE MCNABB
Appeal 2020-002349
Application 15/194,252
Technology Center 3700
Before DANIEL S. SONG, EDWARD A. BROWN, and
CARL M. DEFRANCO, Administrative Patent Judges.
SONG, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), the Appellant1 appeals from the
Examiner’s decision to reject claims 1–20. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM IN PART.

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42(a). The Appellant identifies the real party in interest as
Medline Industries, Inc. Appeal Br. 2.
Appeal 2020-002349
Application 15/194,252

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CLAIMED SUBJECT MATTER
The claims are directed to a cleaning system and a cleaning package
assembly. Claim 1, reproduced below, is illustrative of the claimed subject
matter:
1. An apparatus, comprising:
a teaching insert, comprising:
a legend portion defining a plurality of portions of
a predefined area; and
a predefined area portion pictorially illustrating the
plurality of portions of the predefined area;
the legend portion defining a plurality of
sequential numerical indicia indicating a
predefined order in which the plurality of
portions of the predefined area should be
cleaned; and
an instructional portion demonstrating how to use
one or more microfiber booklets, each
booklet comprising a plurality of microfiber
sheets coupled together at a spine;
the predefined area portion comprising a plurality
of visual indicators assigned to the plurality
of portions of the predefined area on a one-
to-one basis, each visual indicator
comprising one of the plurality of sequential
numerical indicia; and
the one or more microfiber booklets, packaged in a
cleaning package assembly with the
teaching insert, with sheets of the one or
more microfiber booklets each comprising:
one indicium of the plurality of sequential
numerical indicia indicating an order of
using each microfiber sheet to clean the
plurality of portions in accordance with a
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chronology defined by the plurality of
sequential numerical indicia; and
other indicia identifying a portion of the
predefined area, the portion selected from
the plurality of portions.
Appeal Br. 34–35 (Claims App.).
REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Wood US 4,802,855 Feb. 7, 1989
Alsheimer US 5,851,117 Dec. 22, 1998
Isenberg US 2003/0121117 A1 July 3, 2003
Roth US 2008/0128492 A1 June 5, 2008
Williams US 2014/0020710 A1 Jan. 23, 2014
REJECTIONS
1. Claim 9 is rejected under 35 U.S.C. 112(b) as being indefinite.
Final Act. 2.
2. Claims 1–11 are rejected under 35 U.S.C. § 103 as being
unpatentable over Williams in view of Alsheimer. Final Act. 3.
3. Claims 12–16, 19, and 20 are rejected under 35 U.S.C. § 103 as
being unpatentable over Williams in view of Alsheimer, Wood, and
Isenberg. Final Act. 4.
4. Claims 17 and 18 are rejected under 35 U.S.C. § 103 as being
unpatentable over Williams in view of Alsheimer, Wood, Isenberg, and
Roth. Final Act. 5.
Appeal 2020-002349
Application 15/194,252

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OPINION
Rejection 1: Claim 9
Claim 9 recites “[t]he apparatus of claim 1, the portion comprising a
door knob.” Appeal Br. 36, Claims App. The Examiner rejects claim 9 as
being indefinite, determining that it is unclear whether the claim term “the
portion” refers to: the legend portion, the predefined portion, the
instructional portion, or the portion of the predefined area, each of which is
recited in claim 1. Final Act. 2. The Examiner further determines that “[i]t
is also not clear how a portion of a portion of a printed substrate such as a
teaching insert or a microfiber booklet can comprise a physical article such
as a doorknob.” Final Act 2.
The Appellant disagrees and asserts that “[a] claim is indefinite only
when it is not amenable to construction or insolubly ambiguous.” Appeal
Br. 13 (citing Biosig Instruments, Inc. v. Nautilus, Inc., 715 F.3d 891, 898
(Fed. Cir. 2013)). Based thereon, the Appellant argues that claim 9 is
definite because “[i]n only one instance does ‘portion’ appear without an
adjective modifier in this claim. To wit, claim 1 recites inter alia ‘other
indicia identifying a portion of the predefined area, the portion selected
from the plurality of portions.’” Appeal Br. 14.
The Appellant’s arguments are unpersuasive. Although the Appellant
relies on the “insolubly ambiguous” standard for indefiniteness as applied in
infringement proceedings in which presumption of patent validity applies,
the present appeal pertains to a patent application.
[I]f a claim is amenable to two or more plausible claim
constructions, the USPTO is justified in requiring the applicant
to more precisely define the metes and bounds of the claimed
invention by holding the claim unpatentable under 35 U.S.C.
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§112, second paragraph, as indefinite. . . . the applicant has an
opportunity and a duty to amend the claims during prosecution
to more clearly and precisely define the metes and bounds of
the claimed invention and to more clearly and precisely put the
public on notice of the scope of the patent.
Ex Parte Miyazaki, 89 USPQ2d 1207, 1211–12 (BPAI 2008) (precedential).
As the Examiner finds, claim 1 recites “a legend portion,” “a
predefined area portion,” and “an instructional portion,” as well as “a portion
of the predefined area.” Appeal Br. 34–35 (Claims App.). Accordingly, we
agree with the Examiner that the mere recitation of “the portion” in claim 9
is amenable to multiple claim constructions as to which portion is being
referred to, and should be clarified during prosecution. Thus, we affirm this
rejection of claim 9.

Rejection 2: Claims 1–11
The Examiner rejects claims 1–11 as being unpatentable over
Williams in view of Alsheimer. Final Act. 3. As to independent claim 1, the
Examiner finds that Williams discloses the apparatus substantially as
claimed, but fails to disclose “written instructions for use with the booklet.”
Final Act. 3. The Examiner finds that “this feature is known in the art, as
taught for example by Alsheimer,” and concludes that provision of such
instructions “would have been obvious to one of ordinary skill in the art for
the purpose of providing guidance to a user in proper cleaning procedures.”
Final Act. 3. As to the claim language regarding the legend portion,
predefined area portion, and other indicia, the Examiner determines that “the
content of printed matter or other nonfunctional descriptive material will not
overcome the prior art where there is no new and nonobvious functional
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relationship between the printed matter and the underlying substrate.” Final
Act. 3 (emphasis added).
The Appellant initially argues that the printed matter is functionally
related to its substrate. Appeal Br. 15. The Appellant notes that “[c]laim 1
recites two types of indicia disposed upon two different substrates,” the first
being indicia on the teaching insert, and the second being the indicia on the
microfiber sheets that indicate predefined order and identifying the portions
of the predefined area to be cleaned with each microfiber sheet. Appeal Br.
21. As to the first type of indicia on the teaching insert, we agree with the
Examiner there lacks a functional relationship between the printed matter
and the substrate. Final Act. 4 (“[I]n a kit comprising an apparatus and a
printed set of instructions for using the apparatus, the instructions are not
functionally related to the apparatus.”); Ans. 6 (“In re Ngai held that an
inventor is not entitled to a new set of instructions for a known kit” and “any
set of instructions for a product will necessarily include indicia representing
the product itself” (citing In re Ngai, 367 F.3d 1336, 1339, (Fed. Cir.
2004))). Indeed, the Appellant concedes that “there is arguably evidence
against a functional relationship with reference to these indicia under MPEP
§2111.05(I)(B).” Appeal Br. 21.
The Appellant proceeds to argue that the second type of indicia “are
indeed functionally related to their respective substrates. This is true
because these indicia necessarily guide the user regarding how to use each
microfiber sheet,” such as “indicating in what order each side of each
microfiber sheet of each microfiber booklet should be used” and “indicating
which object should be specifically cleaned with each side of each
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microfiber sheet of each microfiber booklet to reduce the infection
transmission rate.” Appeal Br. 23.
However, as later acknowledged by the Appellant in its Reply Brief,
the Examiner’s rejection is not based on finding lack of a functional
relationship. Ans. 4 (“The indicia on the claimed microfiber booklets has
the same functional relationship with the substrate as that of Williams,
namely, the indicia serves as instructions for how to use the sheets in each
booklet.”); Reply Br. 10 (“At page four of the Examiner’s Answer, the
Examiner agrees, stating that the printed matter does indeed have a
functional relationship to the substrate.”). Instead, it is reasonably clear that
the Examiner’s rejection is based on the lack of a “new and nonobvious
functional relationship” as to the indicia on the microfiber booklets. Final
Act. 4. Accordingly, the Appellant’s arguments seeking to establish
functional relationship of the printed matter as to the microfiber booklets are
moot. See Appeal Br. 18, 23.
In the above regard, as to the text indicia on the microfiber sheets of
the booklets, the Appellant argues that “[w]hile Williams teaches numbers
on sheets, Williams fails to teach or suggest the additional indicia set forth in
claim 1. . . . Williams fails to provide any indicia indicating which object
should be specifically cleaned with each side of each microfiber sheet.”
Appeal Br. 25. The Appellant argues that “claim 1 recites inter alia the
indicia ‘identifying a portion of the predefined area.’ How would one
identify a portion of a room using only a number in the combination of
Williams and Alsheimer? The Examiner provides absolutely no
explanation.” Reply Br. 11.
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That is incorrect. As the Examiner clearly explains, “[t]he
[E]xaminer’s position is that the claimed sequential numerical indicia are
taught by Williams, and that the other indicia identifying an area to be
cleaned are suggested by the disclosure in Williams of indicia relating to
‘task or purpose of use.’” Ans. 4 (quoting Williams ¶ 33). Indeed, Williams
explicitly discloses that the multiple bound cloth panels “may be numbered,
color coded or otherwise marked to indicate the order in which they are to
be used or the task or purpose of use.” Williams ¶ 33 (emphasis added); see
also Williams ¶ 48 (“Each of the panels can be visually discriminated from
the others by a plurality of indicia, consisting of numbers . . . colors, letters
. . . further being in a recognizable sequence by the user or to indicate
purpose or task orientation.”).
Therefore, in view of Williams’s disclosure that the indicia on the
cloth panels indicate task or purpose of use of the panel, we agree with the
Examiner’s conclusion that it would have been obvious to one of ordinary
skill in the art to provide “indicia identifying a portion of the predefined
area” as recited in claim 1, and that such indicia does not establish a “new
and nonobvious functional relationship between the printed matter and the
underlying substrate.” Final Act. 3 (emphasis added); see also Ans. 4
(“There is not a new or nonobvious functional relationship to impart
patentability to the contents of the indicia disposed on the sheets
themselves.”). Ans. 4.
Therefore, in view of the above considerations, we affirm the
Examiner’s rejection of claim 1 and of dependent claims 2–8, which are not
argued separately.

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Claim 9
As to dependent claim 9, the Appellant argues that neither Williams
nor Alsheimer discloses a “door knob” as recited. Appeal Br. 26. The
Examiner responds that the Appellant’s argument directed to content of the
indicia on the microfiber sheets is not entitled to patentable weight. Ans. 7.
We agree with the Examiner. It is not patentably significant that the indicia
identifies a door knob instead of some other object to be cleaned, such as a
toilet or a sink. Thus, we affirm the Examiner’s rejection of claim 9.

Claim 10
As to dependent claim 10, the Appellant argues that neither Williams
nor Alsheimer teaches or suggests a first microfiber booklet and a second
microfiber booklet as required by claim 10. Appeal Br. 26. However, we
agree with the Examiner that “[t]he inclusion of a second booklet is an
obvious duplication of parts under MPEP 2144.04(VI)(B).” Ans. 7. Such
duplication is not patentably significant.

Claim 11
Dependent claim 11 recites that the first microfiber booklet is of a
different color than the second microfiber booklet. Appeal Br. 36 (Claims
App.). The Appellant argues that the Examiner has not provided a reason
with rational underpinnings why this would have been obvious to one of
ordinary skill in the art, when Williams merely discloses color-coding
portions of a single bound booklet. Appeal Br. 27–29.
We do not find the Appellant’s argument persuasive and agree with
the Examiner that “[o]ne of ordinary skill in the art would have understood
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10
that separate booklets could also be color-coded, given the teachings of
Williams.” Ans. 7–8; see also Williams ¶ 33 (“The cleaning and polishing
cloth consists of multiple bound cloth panels that may be numbered, color
coded or otherwise marked to indicate the order in which they are to be used
or the task or purpose of use” (emphasis added)). Color-coding of the cloth
is taught by Williams for indicating the object a cloth is to be used for such
that for different objects, the color of the cloth differs. Accordingly, by
extension, when applied to a second microfiber booklet, it would have been
obvious to utilize colors that are different than that of the first microfiber
booklet. In essence, the Appellant views a person of ordinary skill as an
automaton relegated to explicit teachings of a reference rather than a person
of ordinary “skill” and creativity. KSR Int’l v. Teleflex, Inc., 550 U.S. 398,
418 (2007) (“A person of ordinary skill is also a person of ordinary
creativity, not an automaton.”). Therefore, we also affirm the Examiner’s
rejection of claim 11.

Rejections 3 and 4: Claims 12–20
The Examiner rejects claims 12–16, 19, and 20 as being unpatentable
over Williams in view of Alsheimer, Wood, and Isenberg, and rejects claims
17 and 18 further in view of Roth. Final Act. 4–5. Independent claim 12
substantively differs from claim 1 in that claim 12 recites “a first plurality of
markers and a second plurality of markers, each marker of the first plurality
of markers and the second plurality of markers comprising the one of the
plurality of sequential numerical indicia.” Appeal Br. 36–37 (Claim App.).
Claims 13–20 depend from claim 12.
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As to claim 12, the Examiner finds that the combination of Williams
and Alsheimer discloses the invention substantially as claimed except for the
recited markers and the package. Final Act. 4–5. The Examiner relies on
Wood and Isenberg for disclosing such features, respectively. Final Act. 5.
In particular, the Examiner finds that Wood discloses “a plurality of
markers 5 having indicia corresponding to the indicia in the book,” and
concludes that:
It would have been obvious to one of ordinary skill in the art to
modify the teachings of Williams as viewed with Alsheimer by
providing a plurality of markers for the purpose of allowing a
user to place the markers on various objects and then associate
the indicia on the markers with corresponding supplementary
indicia provided.
Final Act. 5.
The Appellant initially argues that “Wood teaches a book having
English words presented by stickers with foreign words on them. There is
no functional relationship between the indicia presented on the stickers and
any other object.” Appeal Br. 29. However, that is not entirely correct in
that Wood discloses that the stickers are to be “adhere[d] to the object to
which they refer.” Wood, col. 2, ll. 3–8. Accordingly, as the Examiner
finds, the stickers of Wood with their printed matter are analogous to the
claimed markers.
The Appellant further argues that “[i]t is not clear . . . how combining
stickers with foreign words on them with the combination of Williams,
Alsheimer, and Isenberg would be beneficial” or provide “any functional
relationship between the stickers of Wood[] and any other item in the
combination,” considering that “Woods teaches that the relationship between
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the words on the stickers is only related to words on the substrate from
which the stickers were taken.” Appeal Br. 30.
The Examiner responds that:
the Examiner’s position is that Wood discloses a kit comprising
a plurality of markers 5, where the markers have indicia thereon
and are configured to be placed on objects in a room for the
purpose of identifying the corresponding objects. The indicia
on the markers of Wood correlates to the indicia 4 on an
instructional book. While Wood is not directed to a method of
cleaning a room, as discussed above the claims at issue are
apparatus claims rather than method claims.
Ans. 8.
We ultimately agree with the Appellant. Claim 12 specifically
requires each marker comprises “the one of the plurality of sequential
numerical indicia,” which is previously recited to be also provided in the
“instructional insert,” as well as on “each sheet of the plurality of sheets” of
each microfiber booklet. The Examiner’s response does not sufficiently
address the issue of why one of ordinary skill would have combined Woods,
having stickers with words in a foreign language, together with the other art,
and it is unclear how such a combination results in a marker having the
recited sequential numerical indicia the same as those on the microfiber
sheets and the instruction insert as claimed. The Examiner has not
articulated a reason with rational underpinnings sufficient to sustain the
rejection. Therefore, in view of the above considerations, we reverse the
Examiner’s rejection of independent claim 12, and of dependent claims 13–
20 depending therefrom. The Appellant’s separate arguments directed to
dependent claims 16, 18, and 20 are moot. Appeal Br. 31–32.
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Application 15/194,252

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CONCLUSION
The Examiner’s rejections are affirmed in part. More specifically,
1. Rejection of claim 9 under 35 U.S.C. 112(b) as being indefinite
is affirmed.
2. Rejection of claims 1–11 under 35 U.S.C. § 103 as being
unpatentable over Williams in view of Alsheimer is affirmed.
3. Rejection of claims 12–16, 19, and 20 under 35 U.S.C. § 103 as
being unpatentable over Williams in view of Alsheimer, Wood, and Isenberg
is reversed.
4. Rejection of claims 17 and 18 under 35 U.S.C. § 103 as being
unpatentable over Williams in view of Alsheimer, Wood, Isenberg, and Roth
is reversed.
DECISION SUMMARY
In summary:
Claim(s)
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
9 112(b) Indefinite 9
1–11 103 Williams,
Alsheimer
1–11
12–16, 19,
20
103 Williams,
Alsheimer, Wood,
Isenberg
12–16, 19,
20
17, 18 103 Williams,
Alsheimer, Wood,
Isenberg, Roth
17, 18
Overall
Outcome
1–11 12–20

Appeal 2020-002349
Application 15/194,252

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TIME PERIOD FOR RESPONSE
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)(1)(iv).
AFFIRMED IN PART