Ex Parte Cataudella et al

Patent Trial and Appeal Board

Sep 13, 2018

14660973 (P.T.A.B. Sep. 13, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/660,973 03/18/2015
27752 7590 09/17/2018
THE PROCTER & GAMBLE COMPANY
Global IP Services
Central Building, C9
One Procter and Gamble Plaza
CINCINNATI, OH 45202
FIRST NAMED INVENTOR
Matthew Corey Cataudella
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.
13751 8933
EXAMINER
GRANO, ERNESTO ARTURIO
ART UNIT PAPER NUMBER
3788
NOTIFICATION DATE DELIVERY MODE
09/17/2018 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 MATTHEW COREY CATAUDELLA and
JEFFREY ALLEN GREENE
Appeal2018-000171
Application 14/660,973
Technology Center 3700
Before CHARLES N. GREENHUT, MICHAEL L. HOELTER, and
WILLIAM A. CAPP, Administrative Patent Judges.
CAPP, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants 1 seek our review under 35 U.S.C. § 134(a) of the final
rejection of claims 1--4 and 7-13 under 35 U.S.C. § 103(a) as unpatentable
over Young (US 1,921,015, iss. Aug. 8, 1933) and Mussi (US 5,470,743, iss.
Nov. 28, 1995), and claims 5 and 6 over Young, Mussi, and Peters (US
5,165,538, iss. Nov. 24, 1992). We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 The Gillette Company LLC is the Applicant and real party in interest.
Br. 1.
Appeal2018-000171
Application 14/660,973
THE INVENTION
Appellants' invention relates to display packages. Spec. 1. Claim 1,
reproduced below, is illustrative of the subject matter on appeal.
1. A package comprising:
a. a front member, the front member comprising a first
surface and an opposing second surface, a front sealing surface
surrounding the second surface and a front flange extending
from the front sealing surface, the front flange comprising an
inward facing surface and an outward facing surface;
b. a back member, the back member comprising a first
surface and an opposing second surface, a back sealing surface
surrounding the second surf ace and a back flange extending
from the back sealing surf ace, the back flange comprising an
inward facing surface and an outward facing surface;
c. a joint securing the front sealing surface to the back
sealing surface;
d. a cavity between the second surface of the front member
and the second surface of the back member; and
e. a ring member positioned adjacent the outward facing
surface of the front flange and the outward facing surface of the
back flange to cover the joint.
OPINION
Unpatentability of Claims 1--4 and 7-13
over Young and Mussi
Appellants argue for the patentability of claim 1, but do not separately
argue for the patentability of claims 2--4 and 7-13 apart from their
dependency from claim 1. Br. 3. We select claim 1 as representative. See
37 C.F.R. § 4I.37(c)(l)(iv).
The Examiner finds that Young discloses the invention substantially
as claimed, except for using a double sided adhesive for securing two
surfaces together by a joint, for which the Examiner relies on Mussi. Final
Action 4. The Examiner concludes that it would have been obvious to a
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person of ordinary skill in the art at the time the invention was made to
modify the gasket of Young with adhesive. Final Action 4. According to
the Examiner, a person of ordinary skill in the art would have done this to
facilitate assembly of the package and further provide a seal. Id.
Appellants argue that a person of ordinary skill in the art would not
modify Young by Mussi because Young does not acknowledge a problem
with assembling the package around a tennis ball. Br. 3. Appellants also
argue that a person of ordinary skill in the art would not use adhesive on the
package seal/joint of Young because the adhesive might damage the ball.
Id. Appellants argue that the Examiner relies on impermissible hindsight in
making the proposed combination. Id.
In response to the assembly argument, the Examiner disagrees with
Appellants and explains that:
Young discloses that a gasket material 18 may be placed upon
one or more of the flanges 15 to insure hermetic sealing ( col.2,
11. 96-98 of Young). The flanges 15, as disclosed by Young,
are of a rolled form design (Fig.4 of Young) which, with the
gasket material, form the seal of the container. Normal
fabrication of rolled flange type containers have variability in
them and providing a gasket with adhesive, as taught by Mussi
et al., to the rolled flange, can insure the gasket does not move
during assembly and would allow the container to maintain the
required hermetic seal.
Ans. 6. The Examiner's reasoning on this point is persuasive. Furthermore,
and contrary to the position espoused by Appellants, we are not persuaded
that a person of ordinary skill in the art would have required Young to
expressly recognize an assembly problem in order to pursue an improvement
thereof. A reason to modify a prior art reference may be found explicitly or
implicitly in market forces; design incentives; the "interrelated teachings of
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Application 14/660,973
multiple patents"; "any need or problem known in the field of endeavor at
the time of invention and addressed by the patent"; and the background
knowledge, creativity, and common sense of the person of ordinary skill.
Perfect Web Techs., Inc. v. Info USA, Inc., 587 F.3d 1324, 1328-29 (Fed. Cir.
2009) (quoting KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398, 418-21 (2007)).
An implicit motivation to combine exists when the improvement is
technology-independent and the combination of references results in a
product that is more desirable. DyStar Textilfarben GmbH & Co. v. C.H.
Patrick Co., 464 F.3d 1356, 1368 (Fed. Cir. 2006).
Id.
Because the desire to enhance commercial opportunities by
improving a product or process is universal-and even
common-sensical-we have held that there exists in these
situations a motivation to combine prior art references even
absent any hint of suggestion in the references themselves.
Young discloses a package for tennis balls and other gas containing
objects. Young, 11. 1-5. The package comprises a shell consisting of two
semi-spherical container parts. Id. at 11. 73-78. Each of such parts features
an outwardly extending flange. Id. at 11. 85-90. A ring or band 16 features a
curled edge that embraces corresponding curled edges on the flanges. Id. at
11. 90-96. A gasket material 18 is placed on one or more of the flanges to
insure hermetic sealing. Id. at 11. 97-99. Young holds the semi-spherical
halves "tightly together" to prevent the escape of pressurized gas from
within the tennis ball. Id. at 1, 1. 105-2, 1. 3. Mussi is directed to a cell
culture insert. Mussi, col. 2, 11. 43--49. Mussi includes an upper well
support section 16 which includes an annular skirt 28, which is supported
from a flat top surface 30 of upper well section 16. Id. at col. 2, 11. 50-52.
Depending from upper flat surface 30 is annular wall 18 that defines cell
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Application 14/660,973
culture compartment 44. Id. at col. 2, 11. 52-55. In Mussi, gasket 22, which
has double-sided adhesive, is used to join bottom surface 26 of flange 20
with the top surface of flange 24.
Given the respective disclosures of Young and Mussi, we are of the
opinion that the Examiner has stated a sufficient rationale for combining the
teachings of the two references. According to the Examiner, a person of
ordinary skill in the art would use a gasket with double sided adhesive to
facilitate assembly of Young's tennis ball package. Final Action 4.
Young also wants to insure that the flanges and gasket material
provide a hermetic seal ( col. 2, 11. 96-98). Allowing the gasket
to be adhered to a surface of the flange and preventing its
movement can insure a proper seal. This is important because
the product is a tennis ball which is sold in airtight containers to
preserve the pressure inside the ball for proper bounce.
Ans. 7. The foregoing constitutes sound articulated reasoning with rational
underpinning. See In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (requiring
an obviousness conclusion to be based on explicit articulated reasoning with
rational underpinning) cited with approval inKSR, 550 U.S. at 418.
The Examiner's sound reasoning also dispenses with Appellants'
hindsight argument. See In re Cree, Inc., 818 F.3d 694, 702 n.3 (Fed. Cir.
2016) (Explaining that a hindsight argument is of no moment where the
Examiner provides a sufficient, non-hindsight reason to combine the
references).
Finally, we are not persuaded that using adhesive on Young's gasket
poses a realistic threat of damage to Young's tennis ball as argued by
Appellants. Br. 3. Appellants' argument is not accompanied by any
evidence or persuasive technical reasoning. The amount of adhesive that is
required is merely enough to hold the gasket in place while the two semi-
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spherical halves are joined and the ring is then placed around the joint. We
are not persuaded that selecting an appropriate adhesive in an appropriate
amount to improve Young's gasket, but without damaging the tennis ball,
would have required more than ordinary skill.
In view of the foregoing discussion, we determine the Examiner's
findings of fact are supported by a preponderance of the evidence and that
the Examiner's legal conclusion of unpatentability is well-founded.
Accordingly, we sustain the Examiner's unpatentability rejection of
claims 1--4 and 7-12.
Unpatentability of Claims 5 and 6
over Young, Mussi, and Peters
Appellants do not argue for the separate patentability of claims 5
and 6 apart from arguments that we previously considered and found
unpersuasive with respect to claim 1. Br. 4. Although Appellants argue that
Peters fails to "solve the problems" of Young and Mussi, we have previously
determined that there are no such problems with Young and Mussi. Id.
Accordingly, we sustain the Examiner's rejection of claims 5 and 6.
DECISION
The decision of the Examiner to reject claims 1-13 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)(l)(iv).
AFFIRMED
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