Ex Parte Christoffel et al

Patent Trial and Appeal Board

Nov 28, 2017

13538356 (P.T.A.B. Nov. 28, 2017)

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.
64807119US01 6144
EXAMINER
CHEUNG, CHUN HOI
ART UNIT PAPER NUMBER
3728
MAIL DATE DELIVERY MODE
13/538,356 06/29/2012
23556 7590 11/28/2017
KIMBERLY-CLARK WORLDWIDE, INC.
Patent Docketing
2300 Winchester Rd.
NEENAH, WI54956
Paul W. Christoffel
11/28/2017 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 PAUL W. CHRISTOFFEL, LISA L. BUSHMAN,
LAWRENCE J. ROMANO, III, and ZACHARY J. LEE
Appeal 2016-006076
Application 13/538,356
Technology Center 3700
Before: EDWARD A. BROWN, WILLIAM A. CAPP, and
LEE L. STEPINA, Administrative Patent Judges.
STEPINA, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134 from the Examiner’s
decision to reject claims 4, 11—15, 18, and 19.1 We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.
1 Claims 1—3, 5—10, 16, 17, and 20 were cancelled in the Amendment-After-
Final filed on September 8, 2015. See Adv. Act. 2 (dated March 11, 2016).
Appeal 2016-006076
Application 13/538,356
CLAIMED SUBJECT MATTER
The claims are directed to a storing and dispensing container for a
product, such as wipe type products. Spec. 1:1—5. Claim 4, reproduced
below with emphasis added, is illustrative of the claimed subject matter:
4. A storing and dispensing container for product, the
container comprising:
a flexible pouch for storing product, the pouch comprising
a bottom portion with side portions adjoined to the bottom
portion and each side portion adjoined to an adjacent side portion
and the side portions extending away from the bottom portion,
the side portions also adjoined to a top portion with the top
portion overlying the bottom portion and being generally parallel
to the bottom portion, and the top portion including a removable
portion which seals the product within the pouch in a first
condition and which allows access to the product within the
pouch in a second condition, the removable portion defining a
perimeter and having a removable portion area; and
a rigid flip top comprising a lid connected to a flange by a
hinge, the flange being affixed to an outer surface of the pouch
at the top portion of the pouch such that the rigid flip top overlies
the removable portion of the pouch and the removable portion is
surrounded by the flange at the outer surface of the pouch,
the flange defining an interior region through which the
product can be dispensed when the lid is opened and the lid being
removably positionable to be closed to engage the flange and
thereby seal the pouch at the outer surface where the removable
portion is surrounded by the flange, the interior region having an
interior region length, an interior region width that extends from
a hinge-side of the flange to a side of the flange opposite the
hinge, and an interior region area, the interior region containing
the removable portion and a non-removable portion,
wherein the removable portion area is no greater than 80%
of the interior region area, and wherein the removable portion
abuts the flange at a tear apex, and
wherein at least 60% of the removable portion area is
located on one side of a bisecting line that extends parallel to the
interior region width at a midpoint of the interior region length.
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Appeal 2016-006076
Application 13/538,356
Br. 10 (Claims App.).
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Castelli US 3,002,668 Oct. 3, 1961
Raming US 6,616,189 B2 Sept. 9, 2003
Martins US 7,997,444 B2 Aug. 16, 2011
Buck US 2005/0011906 A1 Jan. 20, 2005
REJECTIONS
(I) Claims 4 and 18 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Buck, Martins, and Castelli.
(II) Claims 11—15 and 19 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Buck, Martins, and Raming.
OPINION
Rejection (I); Claims 4 and 18
Appellants make arguments for the patentability of claims 4 and 18 as
a group. See Br. 7. We select claim 4 as representative.
The Examiner finds that Buck discloses many of the elements recited
in claim 4, but the Examiner relies on Martin to disclose features related to
the percentage of the interior region area comprised by the removable
portion area. Final Act. 2-4. Additionally, the Examiner relies on Castelli
to disclose a removable portion on a tissue dispenser where at least 60% of
the removable portion area is located on one side of a bisecting line that
extends parallel to the interior region width at a midpoint of the interior
region length. Id. at 5. The Examiner determines that modifying Buck to
include this feature of Castelli would have been obvious because it would
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Application 13/538,356
“provide a different pull[-]away direction for the free end of the following
tissue to be easier to grab by the end user.” Id. As a second rationale, the
Examiner determines that such a modification would have been an obvious
rearrangement of parts. Id. (citing In reJapikse, 181 F.2d 1019 (CCPA
1950)).
Appellants quote the Examiner’s first stated rationale and contend that
“dispensing opening 19 of Castelli is offset to one side to facilitate the
unique manner in which the continuous strip supply of fibrous material of
Castelli must be extracted and tom off.” Br. 7. Appellants assert that Buck
uses a type of dispensing different from that disclosed by Castelli, and,
therefore, “the operative mechanism of the Castelli dispenser that led
Castelli to offset the opening (for tear-off functionality) is not present in
Buck/Martins, and the skilled artisan, beginning with a hypothetical
Buck/Martins combination, would not be motivated to adopt the stmctural
features of Castelli.” Br. 7.
Appellants’ arguments do not address the Examiner’s second
rationale, namely, that the modification to provide the removable portion
area in the location claimed would have been an obvious rearrangement of
parts. See Final Act. 5. As such, the Appellants have waived any argument
that the Examiner’s reliance on this rationale is improper, and, even
assuming arguendo that Appellants’ arguments regarding the first rationale
are correct, the Examiner’s second rationale is uncontested. Accordingly,
we sustain the Examiner’s rejection of claims 4 and 18.
Rejection (II); claims 11—15 and 19
Appellants make no arguments for the patentability of claims 11
and 19. See Br. 7—8. Accordingly, any argument with respect to these
claims is waived for the purpose of this appeal.
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Application 13/538,356
Claim 12
The Examiner finds that a combination of Buck and Martin discloses
most of the limitations recited in claim 11, and claim 12 depending
therefrom, except for limitations related to the printed opening-instructional
graphics set forth in the last paragraph of claim 11 and the content of these
graphics as set forth in claim 12. Final Act. 6. However, the Examiner finds
that Raming teaches printed opening instructional indicia including
instructions of how to use an assembly by removing a removable portion.
Id. The Examiner reasons that it would have been obvious “to modify the
package of Bucks as modified with instructional indicia/graphic as taught by
Raming to provide instruction for an end user to remove the removable
portion in order [sic] instruct the end user to properly open the removable
portion.” Id. at 6—7. As for the informational content requirements set forth
in claim 12, the Examiner determines that providing particular instructions
as claimed would have been obvious based on the intended use of the
assembly. Id. at 7. The Examiner also reasons that the particular
informational content required by claim 12 is merely printed matter not
functionally related to the substrate and therefore does not patentably
distinguish over the prior art. Id. (citing In re Gulack, 703 F.2d 1381 (Fed.
Cir. 1983)).
Appellants concede that “Raming discloses printed indicia on and
around a shipping label placed upon a package,” and “[i]n Fig. 1, Raming
discloses printed instructions on what order to remove the various
labels/layers.” Br. 8. However, Appellants contend that the Examiner errs
in rejecting claim 12 because “the first opening step of Raming’s design is
disposed on a removable portion (tear strip 40).” Br. 8. Appellants also
argue “the printed indicia outlined in claims 12—15 do indeed possess a
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Application 13/538,356
functional relationship to the substrate upon which they are printed. The
instructions are not printed in a random location; they are printed in
structurally specific locations to direct the user how to remove the
removable portion.” Br. 8.
In response, the Examiner reiterates the finding that the particular
information conveyed by the indicia located on the removable and non­
removable portions does not patentably distinguish claim 12 over the prior
art because these indicia are not functionally related to the substrate on
which they are located. Ans. 4—5 (citing In re Ngai, 367 F.3d 1336 (Fed.
Cir. 2004); AstraZeneca LP v. Apotex, Inc., 633 F.3d 1042 (Fed. Cir. 2010)).
We agree with the Examiner on this point, the instructions on the
removable and non-removable portions recited in claim 12 are non­
functional descriptive material and do not patentably distinguish claim 12
over the Examiner’s proposed combination of Buck, Martin, and Raming.
Our reviewing court has held that non-functional descriptive material cannot
lend patentability to an invention that would have otherwise been anticipated
by the prior art. In re Ngai, 367 F.3d at 1339. Cf. In re Gulack, 703 F.2d at
1385 (noting that when descriptive material is not functionally related to the
substrate, the descriptive material will not distinguish the invention from the
prior art in terms of patentability). King Pharms., Inc. v. Eon Labs, Inc., 616
F.3d 1267, 1279 (Fed. Cir. 2010) (“[T]he relevant question is whether ‘there
exists any new and unobvious functional relationship between the printed
matter and the substrate.’”) (Internal citations omitted).
In Ngai, the Examiner allowed claim 1, which recited a method, and
rejected claim 19, which recited a kit with, among other things, instructions
describing the method of allowed claim 1. Id. at 1337—1338. Ngai argued
that the addition of new printed matter to a known product makes the
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Application 13/538,356
product patentable, and therefore, the rejection of claim 19 was improper.
Id. at 1338. Rejecting Ngai’s argument, the court said, “[i]f we were to
adopt Ngai’s position, anyone could continue patenting a product
indefinitely provided that they add a new instruction sheet to the product. . .
[Ngai is not] entitled to patent a known product by simply attaching a new
set of instructions to that product.” Id. at 1339.
Although claim 12 provides instructions on how to open the package
and not what to do with the contents of the package, we find the limitations
on the instructions recited claim 12 to be similar to the instructions printed
on the kit in Ngai. Indeed, in Ngai and in claim 12, the content of the indicia
is the same, instructions on how to use something, and the container recited
in claim 12 performs the same function, regardless of the instructions printed
on it, as did the kit at issue in Ngai. Accepting Appellants’ argument would
permit the patentability of containers based on the particular instructions
placed on them. Accordingly, we sustain the Examiner’s rejection of claim
12 as unpatentable over Buck, Martin, and Raming.
Appellants make similar arguments for the patentability of claims IS­
IS as those discussed above regarding claim 12 (Br. 8), and for the same
reasons, we sustain the Examiner’s rejection of claims 13—15 as
unpatentable over Buck, Martin, and Raming.
DECISION
The Examiner’s decision to reject claims 4, 11—15, 18, and 19 is
affirmed.
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Application 13/538,356
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)(l)(iv).
AFFIRMED
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