Ex Parte Bouzas et al

Board of Patent Appeals and Interferences

Mar 11, 2012

11077721 (B.P.A.I. Mar. 11, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte CAMILO BOUZAS and TODD VAN GORDON
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Appeal 2010-003234
Application 11/077,721
Technology Center 3700
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Before: LINDA E. HORNER, WILLIAM V. SAINDON, and
MICHAEL L. HOELTER, Administrative Patent Judges.

SAINDON, Administrative Patent Judge.

DECISION ON APPEAL
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STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134 from the Examiner’s
decision rejecting claims 1-3, 10-12, 15, and 41-52. We have jurisdiction
under 35 U.S.C. § 6(b). Claim 1, reproduced below with added emphasis, is
illustrative of the claimed subject matter.
1. A method of packaging a soap bar to provide fragrance
transmission from the package comprising the in-line steps of
providing a supply source of a film material having a botanical
plant decoration printed thereon; continually removing said film
material from said supply source and forming a plurality of
apertures in said film material within the botanical plant
decoration; continually conveying said film material with
apertures into contact with a fragrance containing soap bar and
wrapping said film material with apertures laterally around the
soap bar, and sealing overlapping edges of said film material
wrapped around the soap bar to form a packaged soap bar with
transmission of said fragrance from the package, the fragrance
of said soap bar being substantially the same as that emitted
by a botanical plant represented by said botanical plant
decoration.
References
The Examiner relies upon the following prior art references:
Kirk
Spector
US 549,371
US 4,696,844
Nov. 5, 1895
Sep. 29, 1987
Prater US 2004/0050741 A1 Mar. 18, 2004
Rejections
I. Claims 1-3 and 10-12 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Prater, Kirk, and Appellants’ Admitted Prior Art
(AAPA)1 or Spector.

1 References to “AAPA or Spector” are made with respect to the knowledge
of coordinating a decorative image of an object with the fragrance released
from such an object being old and well known. See Ans. 5. The Examiner
provides Spector as alternatively evidencing this fact. Id.
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II. Claim 15 is rejected under § 103(a) as unpatentable over Prater, Kirk,
AAPA or Spector, and AAPA2.
III. Claims 41-52 are rejected under § 103(a) as unpatentable over Prater,
Kirk, AAPA or Spector, and AAPA3.

SUMMARY OF DECISION
We AFFIRM-IN-PART.

OPINION
Rejection I
The Examiner found that Prater describes the claimed in-line process
of wrapping a scented product in packaging/wrapping having apertures,
except for the product being soap, the fragrance matching the image printed
on the wrapper, and the location of the apertures in the wrapping. Ans. 3-5.
The Examiner found that Kirk teaches soap in a wrapping having
perforations located within the panels that included printed indicia. Ans. 4-
5. The Examiner found that Spector teaches a scented product having a
coordinated image and scent. Ans. 5.
The Examiner concluded that it would have been obvious to modify
the process of Prater to wrap soap (as shown in Kirk), in order to similarly
allow a consumer to sample the scent of the soap. Ans. 4; see also Ans. 3
(finding the apertures permit a consumer to detect the fragrance of the
object); Prater, paras. [0006], [0028] (explaining the benefits and process of

2 This AAPA is in reference to the Official Notice taken in the office action
mailed Oct. 24, 2007, indicating that the use of fragrance coatings, fragrance
inserts, and fragrance sprays are well known. The Examiner additionally
cites to Prater para. [0005] (discussing a “scratch and sniff”) as evidence.
Ans. 7, 8.
3 See n.2.
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providing apertures in the packaging of scented products). The Examiner
concluded that it would have been obvious to modify the process of Prater to
include an image on the wrapper matching the scent, as taught in Spector, to
create an advertising link and to attract a purchaser’s senses. Ans. 5; see
also Spector, Abstract (the “emitted fragrance is thematically related to the
artwork … should the artwork be a Xmas tree, the fragrance will be …
pine”). The Examiner concluded that it would have been obvious to modify
the process of Prater to include the apertures at the locations of the image as
a matter of design choice because the apertures perform equally well in any
location. Ans. 5.
Appellants argue claims 1-3 and 10-12 as a group; we select claim 1
as representative. App. Br. 12-14. Appellants first argue that Prater’s
process is directed to a shrink-sleeve process in contrast to the in-line film
packaging process of claim 1. App. Br. 12. Appellants argue that Prater’s
process is different, but fail to cogently explain how the Prater process fails
to satisfy any particular claim limitation. As explained in the Specification,
“in-line” is “when the rolls of film material have been formed and are to be
used to package soap bars.” Spec. 3:10-15. When “in-line,” “the film
material has been printed with a decoration and product information in a
prior operation.” Id. A particular “in-line” embodiment further explains that
the “apertures are formed in the film material … and … fed onto a soap bar
in the wrapping machine.” Spec. 6:12-13. Consequently, the term “in-line,”
read in light of the Specification, reads on a process of forming apertures in
the packaging material and then feeding the packaged object into the
packaging material.
Prater describes a similar “in-line” process, wherein the film is printed
with a label and then formed into a flat tube. Prater, para. [0026]. The tubes
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are then sent to a perforator. Id. at [0027]-[0028]. “Upon exiting the
perforator” the sleeve is opened to a cylinder, cut to length and placed over
the product. Id. at [0029]. Accordingly, we agree with the Examiner’s
finding that Prater describes an in-line process, as the perforation formation
occurs immediately before receiving the product. See Ans. 3 (the Examiner
finds the film of Prater is pre-printed and the apertures are formed prior to
feeding the product).
Appellants additionally argue that Prater does not describe a botanical
decoration wherein the soap has the same fragrance as the botanical depicted
in the decoration. Reply Br. 1. However, the Examiner’s rejection relies on
a combination of references, not just Prater, to teach these elements. See
Ans. 5 (discussing Spector). Appellants also argue, “Prater does not disclose
the continuous sequence of steps claimed.” Reply Br. 1. To the extent
Appellants are arguing that Prater contains additional steps, we note that the
claim does not preclude additional, unclaimed steps. See claim 1 (noting
open-ended “comprising” language). As addressed above, the Examiner’s
conclusion that the Prater process, as modified by the teachings of Kirk and
Spector, renders obvious an “in-line” process is reasonable.
Appellants next set forth arguments with respect to Kirk and Spector
(App. Br. 13) but the arguments are not directed towards the Examiner’s
actual rejection and instead argue the references individually.4 Accordingly,
Appellants’ arguments with respect to Kirk and Spector are unpersuasive of
non-obviousness.

4 See In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986) (“Non-
obviousness cannot be established by attacking references individually
where the rejection is based upon the teachings of a combination of
references”).
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Appellants lastly argue “the issue of admitted prior art.” App. Br. 13-
14. Given the Examiner’s rejection relies on Spector in the alternative to
admitted prior art, the admitted prior art is not determinative with respect to
claim 1.
In light of the above, we are not apprised of error in the Examiner’s
rejection of claim 1. Claims 2, 3, and 10-12 fall with claim 1.

Rejections II & III
Independent claim 41 is similar to claim 1 but requires a step of
“coating said film material … with a coating of the fragrance.” Independent
claim 47 and claim 15, which depends from claim 1, recite similar
limitations.5 Appellants argue that the coating with fragrance step(s) is “not
shown in the references.” App. Br. 16; see also id. at 15, 17. Looking to the
Examiner’s rejections with respect to these limitations, the Examiner finds
that fragrance sprays are known and that including a step of coating the film
with fragrance provides a “self-evident benefit to the process,” for example,
to “enhance the product[’]s desirability.” Ans. 7, 8 (rejecting claims 15 and
41-52 using this reasoning).
We disagree with Appellants’ interpretation of KSR requiring a
teaching, suggestion, or motivation in the prior art.6 Nevertheless, the

5 Claim 15 requires the soap bar to be sprayed with fragrance and claim 47
requires an inner stiffener material to be coated with fragrance.
6 Compare App. Br. 17 (arguing the Examiner proposed combination must
“satisfy the TSM test of KSR”) with KSR Int’l Co. v. Teleflex, Inc., 550 U.S.
398, 419 (2007) (“[rigid application of] the TSM test is incompatible with
our precedents. The obviousness analysis cannot be confined by a
formalistic conception of the words teaching, suggestion, and motivation, or
by overemphasis on the importance of published articles and the explicit
content of issued patents.”).
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Examiner’s obviousness rejection requires a reason supported by rational
underpinning.7 In this case, the Examiner has not provided a reason having
rational underpinning because even if fragrance sprays (or coatings) are well
known, the Examiner has not identified a reason why one of ordinary skill in
the art would modify the process of Prater to use the fragrance sprays in the
manner claimed, i.e., spraying the wrap (or soap or stiffener) with fragrance.
The Examiner’s proposed reason (enhanced desirability) merely suggests a
possible result of spraying the wrap, stiffener, or soap, but does not explain
why one of ordinary skill would have sprayed or coated the wrap, stiffener,
or soap in the first place (especially given that the soap itself is already
scented and thus presumably already desirable). Because the Examiner has
not shown why it would have been obvious to spray or coat a material (wrap,
stiffener, or scented soap) with a coating of fragrance in the manner required
by claims 15, 41, or 47, we cannot sustain the Examiner’s rejections of
claims 15 or 41-52, all of which rely on this reasoning lacking a rational
underpinning.

DECISION
We affirm the Examiner’s decision regarding claims 1-3 and 10-12.
We reverse the Examiner’s decision regarding claims 15 and 41-52.

7 In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (requiring “some
articulated reasoning with some rational underpinning to support the legal
conclusion of obviousness”) (cited with approval in KSR, 550 U.S. at 418).
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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-IN-PART

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