Ex Parte Doherty et al

Patent Trial and Appeal Board

Jun 28, 2018

14625727 (P.T.A.B. Jun. 28, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/625,727 02/19/2015
27752 7590 07/02/2018
THE PROCTER & GAMBLE COMPANY
Global IP Services
Central Building, C9
One Procter and Gamble Plaza
CINCINNATI, OH 45202
FIRST NAMED INVENTOR
Robert Charles Doherty
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.
Z-8660D 1452
EXAMINER
PAGAN, JAVIER A
ART UNIT PAPER NUMBER
3788
NOTIFICATION DATE DELIVERY MODE
07/02/2018 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 ROBERT CHARLES DOHERTY,
RICHARD KEVIN SENNETT, and SHU CHEN 1
Appeal2017-009103
Application 14/625, 727
Technology Center 3700
Before STEFAN STAICOVICI, LEE L. STEPINA, and
ARTHUR M. PESLAK, Administrative Patent Judges.
STEPINA, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants seek our review under 35 U.S.C. § 134(a) from the
Examiner's decision to reject claims 1-10. We have jurisdiction under 35
U.S.C. § 6(b).
We REVERSE.
1 The Appeal Brief lists The Gillette Company LLC as the real party in
interest. Br. 1.
Appeal2017-009103
Application 14/625, 727
THE CLAIMED SUBJECT MATTER
The claimed invention is directed to a consumer product package.
Spec. 1 :4. Claim 1 is the sole independent claims and is reproduced below:
1. A plurality of tubs for holding a consumer product
compnsmg:
a first tub comprising a base and a perimeter wall defining
a cavity, the base comprising at least two projections extending
upward and away from the base within the cavity, the at least two
projections spaced apart from the perimeter wall, at least one of
the projections including a secondary projection disposed
adjacent the at least one projection and extending upward and
away from the base, the secondary projection having a height
different than a height of each of the at least two projections, the
secondary projection having a horizontal surface and
a second tub comprising a base and a perimeter wall
defining a cavity, the base comprising at least two projections
extending upward and away from the base within the cavity, the
at least two projections spaced apart from the perimeter wall, at
least one of the projections including a secondary projection
disposed adjacent the at least one projection and extending
upward and away from the base, the secondary projection having
a height different than a height of each of the at least two
projections, the secondary projection having a horizontal surface,
the horizontal surface of the secondary projection of the second
tub having a different configuration than the horizontal surface
of the secondary projection of the first tub such that when said
first tub is stacked on said second tub with the secondary
projections oriented in a same direction a portion of the
horizontal surface of the secondary projection of the second tub
is free from contact with the first tub.
REFERENCES RELIED ON BY THE EXAMINER
Coffin US 7,172,069 B2 Feb. 6, 2007
Marcinkowski US 8,083,058 B2 Dec. 27, 2011
Wilkinson US 2006/0282045 Al Dec. 14, 2006
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Appeal2017-009103
Application 14/625, 727
REJECTIONS
(I) Claims 1, 2, 5-7, and 9 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Wilkinson.
(II) Claims 3, 4, and 10 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Wilkinson and Marcinkowski.
(III) Claim 8 is rejected under 35 U.S.C. § 103(a) as unpatentable
over Wilkinson and Coffin.
OPINION
Rejection (I)
The Examiner finds that the limitation of independent claim 1 of
"secondary projections oriented in a same direction," includes projections
that extend outwardly from their respective base. Final Act. 3.
Appellants argue, inter alia, that for Wilkinson's nesting
configuration, the projections have "opposite orientation(s)." Br. 3 (citing
Wilkinson, Figs. 19 and 20).
The Examiner responds that claim 1 requires only the secondary
projection be oriented in a same direction, and that under the broadest
reasonable interpretation, Wilkinson's "secondary projections are oriented in
a same direction with respect to the base from which they extend." Ans. 7
( citing Wilkinson, Figs. 7 and 19). The Examiner finds that, moreover,
because Wilkinson's projections "extend in three directions (x, y and z) []
when stacked they extend in at least two of the same directions (x and y),
they would thereby meet this 'oriented in a same direction' limitation of the
claim." Id.
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Appeal2017-009103
Application 14/625, 727
Under the broadest reasonable interpretation, the Board's construction
"cannot be divorced from the specification and the record evidence," In re
NTP, Inc., 654 F.3d 1279, 1288 (Fed. Cir. 2011), and "must be consistent
with the one that those skilled in the art would reach," In re Cortright, 165
F.3d 1353, 1358 (Fed. Cir. 1999). All words in a claim must be considered
in judging the patentability of a claim against the prior art. In re Wilson, 424
F.2d 1382, 1385 (CCPA 1970).
Claim 1 includes at least two separate criteria for the secondary
projections, namely, 1) "extending upward and away from the base" and 2)
"oriented in a same direction," when the first and second tubs are stacked.
Br. 6 (Claims App.). Although we appreciate that the Wilkinson tubs are
stacked differently than those in the present invention, not all projections
that extend upward and away from a base are oriented in the same direction
when the first and second tubs are stacked. Here, Appellants' Figures 5, 6,
8A, and 8B show that for the recited "stacked" configuration secondary
projection 330 of first tub 322 and secondary projection 344 of second tub
342 both extend in the same direction, namely, vertically upward. By
contrast, we agree with Appellants' argument that Wilkinson's projections in
the disclosed stacked configuration extend in opposite directions, namely,
vertically upward and vertically downward. Specifically, Figures 7 and 19
of Wilkinson show projection 82 of first tub 12 extending vertically upward
whereas projection 82 of second tub 12a extends vertically downward in
Wilkinson's stacked configuration. In light of the Specification, we
determine that the Examiner's interpretation of claim 1 is unreasonably
broad with respect to the requirement for "the secondary projections oriented
in a same direction."
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Appeal2017-009103
Application 14/625, 727
The Examiner's alternate characterization of the projections in the
Answer is also unavailing because the x and y directions of Wilkinson's
projections do not extend upward and away from the base. That is, the x and
y directions in Wilkinson extend parallel to the base. Thus, in the
Examiner's second scenario, Wilkinson only meets one of the two criteria
noted above. On the record before us, the Examiner has not established
sufficiently that Wilkinson's secondary projections extend upward and away
from the base and are oriented in a same direction when the first and second
tubs are stacked. The Examiner's modification of Wilkinson does not
remedy the deficiency of Wilkinson based on construction of claim 1
discussed supra. See Final Act. 3--4.
Therefore, for the foregoing reasons, we do not sustain the Examiner's
rejection of claim 1 and claims 2, 5-7, and 9 depending therefrom, as
unpatentable over Wilkinson.
Rejections (11)-(111)
The Examiner does not rely on Marcinkowski or Coffin in any way
that remedies the deficiencies discussed above in the rejection of claim 1.
See Final Act. 5---6. Accordingly, we do not sustain Rejections (II-III).
DECISION
The Examiner's decision to reject claims 1-10 is reversed.
REVERSED
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