Ex Parte Gann-Fetter et al

Patent Trial and Appeal Board

Jul 6, 2018

13928507 (P.T.A.B. Jul. 6, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/928,507 06/27/2013
27752 7590 07110/2018
THE PROCTER & GAMBLE COMPANY
Global IP Services
Central Building, C9
One Procter and Gamble Plaza
CINCINNATI, OH 45202
FIRST NAMED INVENTOR
Mildred Frances Gann-Fetter
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.
12981 9147
EXAMINER
HALPERN, MARK
ART UNIT PAPER NUMBER
1741
NOTIFICATION DATE DELIVERY MODE
07/10/2018 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 MILDRED FRANCES GANN-FETTER, PAMELA MARIE SNYDER,
and MARIO M. CASTILLO
Appeal 2016-005 825
Application 13/928,507
Technology Center 1700
Before LINDA M. GAUDETTE, GEORGE C. BEST, and
AVEL YN M. ROSS, Administrative Patent Judges.
GAUDETTE, Administrative Patent Judge.
DECISION ON APPEAL 1
Appellant2 appeals under 35 U.S.C. § 134(a) from the Examiner's decision
finally rejecting claims 1-21under35 U.S.C. § 103 as unpatentable over Baggot
(U.S. 2008/0264280 Al, published Oct. 30, 2008), alone, or in combination with
1 This Decision includes citations to the following documents: Specification filed
June 27, 2013 ("Spec."); Final Office Action dated May 11, 2015 ("Final");
Appeal Brief filed Oct. 12, 2015 ("Appeal Br."); and Examiner's Answer dated
Mar. 16, 2016 ("Ans.").
2 Appellant is the Applicant and real party in interest, The Procter & Gamble
Company. See Appeal Br. 1.
Appeal 2016-005825
Application 13/928,507
Nickel (U.S. 2007/0137813 Al, published June 21, 2007). Appeal Br. 3; see Final
2--4. We have jurisdiction under 35 U.S.C. § 6(b ).
We AFFIRM.
The invention relates to consumable household and personal cleaning
products in the form of sheets. Spec. 1 :5---6. "Such sheet products may be formed
of web materials, typically nonwoven web materials, such as webs formed of
natural or synthetic fibers." Id. at 1:22-23. According to the Specification, at the
time of the invention, it was known in the art to impart decorative designs to
consumable cleaning products, for example, by imprinting, embossing, or molding,
"[t]o make [the products] more attractive to the consumer market." Id. at 1:25-27.
The Specification discloses that "[ w ]hile a variety of printed, embossed and/ or
molded designs have been imparted to sheet products, there is always room for
improvement in techniques for imparting visual and aesthetic appeal to such
products." Id. at 2:5-7.
Claim 1, the sole independent claim on appeal, is representative of the
invention and is reproduced below.
1. A supply of sheets comprising a plurality of at least partially
separated consecutively presented, associated sheets, having a
machine direction and a cross direction, in which at least first and
second sheets in immediately preceding and succeeding relationship
respectively bear first and second arrangements of one or more design
features, the first and second arrangements differing from one another
in one or more respects such that the second arrangement is not a
substantial replicate of the first arrangement, wherein the sheets have
an average length SL measured along the machine direction, an
average width SW measured along the cross direction and an average
sheet area SLxSW, and the design features form part of a design
pattern having a repeat length RLM measured along the machine
direction and a repeat length RLC measured along the cross direction,
wherein RLM is greater than SL and/or RLC is greater than SW, and
the design pattern has one or more of the following attributes:
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Appeal 2016-005825
Application 13/928,507
the design pattern has no linear, continuous unadorned
pathway along the machine direction that has a pathway width
greater than 7 percent of SW;
the design pattern has no linear, continuous unadorned
pathway along the cross direction that has a pathway width
greater than 7 percent of SL;
the design pattern includes series of similarly-shaped design
elements along lines that are neither perpendicular nor parallel
with the machine direction; and
any image in the design pattern of all or a portion of a person,
animal, anthropomorphic character or cartoon character
including at least a head and/or face of the same, has an
Occupied Rectangular Area of no more than 10 percent of the
average sheet area.
Appeal Br. A-1 (emphasis added).
Rejection of claims 1-21under35 USC§ 103 as unpatentable over Baggot
The Examiner finds Baggot discloses a supply of sheets as recited in the first
paragraph of claim 1. See Final 2. Appellant does not dispute this finding. See
generally, Appeal Br. 5-8. The Examiner and Appellant also agree that Baggot's
sheets include a design pattern that has the attribute of a "series of similarly-shaped
design elements along lines that are neither perpendicular nor parallel with the
machine direction" (claim 1 ). See Final 2; Appeal Br. 6; Baggot Fig. 1. The
Examiner concedes Baggot does not disclose "a design pattern having no linear,
continuous unadorned pathway along the machine and along the cross direction
that has a pathway width greater than 7 percent of sheet length, and ... a design
pattern having an Occupied Rectangular Area of no more than 10 percent of the
average sheet area." Final 2; see italicized language in claim 1, above. The
Examiner determines, however, that these design pattern attributes are decorative
and aesthetically pleasing considerations and do not structurally differentiate the
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Appeal 2016-005825
Application 13/928,507
claimed invention over Baggot's product. Final 3. Appellant disagrees, arguing
the recited design pattern attributes are not merely ornamental, but are structural
features that perform a function. Appeal Br. 6-7.
When multiple claims subject to the same ground of rejection are
argued as a group by appellant, the Board may select a single claim
from the group of claims that are argued together to decide the appeal
with respect to the group of claims as to the ground of rejection on the
basis of the selected claim alone. Notwithstanding any other
provision of this paragraph, the failure of appellant to separately argue
claims which appellant has grouped together shall constitute a waiver
of any argument that the Board must consider the patentability of any
grouped claim separately.
37 C.F.R. § 41.67(c)(l)(vii) (2015).
Appellant does not present arguments in support of patentability of any
particular claim, but argues the rejected claims as a group. Therefore, consistent
with 37 C.F.R. § 41.67(c)(l)(vii), we select claim 1 and decide the appeal as to the
rejection of claims 1-21 over Baggot on the basis of claim 1 alone.
As an initial matter, we note that claim 1 recites "the design pattern has one
or more" of four, listed attributes. Claim 1 (emphasis added); see bolded language
in claim 1, above. Thus, we determine claim 1 reads on a supply of sheets that
includes only one of the listed attributes. Because Appellant does not dispute that
Baggot discloses a supply of sheets as recited in the first paragraph of claim 1 and
a design pattern that has one of the four, listed attributes, i.e., a "series of similarly-
shaped design elements along lines that are neither perpendicular nor parallel with
the machine direction," Appellant has not shown error in the Examiner's
conclusion of obviousness as to claim 1. Therefore, we sustain the rejection of
claims 1-21under35 U.S.C. § 103 over Baggot.
We are mindful that the record on appeal does not appear to include a
discussion of the scope of claim 1, the Examiner's conclusion of obviousness is
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Appeal 2016-005825
Application 13/928,507
based on a finding that the additional, three attributes listed in claim 1 are not
structural features, and various dependent claims specify that the sheets include
one of these additional, three attributes (see, e.g., claims 2, 3, and 5). Therefore,
although we have not relied on new facts in our affirmance of the Examiner's
rejection, 3 out of an abundance of caution and to advance any further prosecution
of this application, we also consider whether Appellant has identified error in the
Examiner's determination that the recited features of "a design pattern having no
linear, continuous unadorned pathway along the machine and along the cross
direction that has a pathway width greater than 7 percent of sheet length, and ... a
design pattern having an Occupied Rectangular Area of no more than 10 percent of
the average sheet area" are merely ornamental and do not structurally differentiate
over Baggot (Final 2).
Appellant directs us to disclosure in pages 11 to 14 of the Specification in
support of its contention that the claimed design pattern attributes are physical,
structural limitations and have a mechanical function. Appeal Br. 6-7. Appellant
argues, more specifically, that
the recited absence of a linear, continuous unadorned pathway along
the cross direction of a width larger than the specified size can help
reduce or eliminate periodic, abrupt changes in the forces imposed on
the surface of the roller (used to impart the pattern to the sheets) and
transferred through the roller to its axle and/or bearing mechanism,
thereby reducing equipment wear and/or the need for shock-absorbing
equipment.
Id. (citing Spec. 12:19-22).
3 See In re Stepan Co., 660 F.3d 1341, 1346 (Fed. Cir. 2011) ("Mere reliance by
the Board on the same type of rejection or the same prior art references relied upon
by the examiner, alone, is insufficient to avoid a new ground of rejection where it
propounds new facts and rationales to advance a rejection--none of which were
previously raised by the examiner.").
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Appeal 2016-005825
Application 13/928,507
The cited disclosure relates to an alleged advantage that may occur "where a
design pattern is imparted to a web by use of an embossing or bonding roller."
Spec. 12: 17-22 (emphasis added); see also id. at 13 :9-11 ("Where the design is
imparted to the web by use of an embossing roller, limiting the width of a cross-
direction unadorned pathway may also serve to minimize equipment wear from
periodic abrupt changes in embossing pressure .... ") (emphasis added). Claim 1
recites "[a] supply of sheets" and is not limited by a particular method of forming
the design pattern in those sheets. Cf Spec. 1 :27 ("The features may be imprinted,
embossed, molded or imparted by any other means."); id. at 5: 14--15 ("Typically,
the design features are imparted by use of a roller or cylinder, e.g., a printing roller,
an embossing roller."). In other words, even if the recited design attributes provide
some advantage to the process of manufacturing the sheets, the Specification does
not disclose that these attributes serve a structural or functional purpose in the
resultant, claimed product. In this regard, we note the Specification explicitly
discloses that the use of unadorned pathways may be for "aesthetic design ...
purposes." Spec. 12:27-29. Accordingly, we do not find Appellant's argument
persuasive.
Appellant further argues that the design pattern attributes
are an integral part of a larger whole, embodying a technique in which
consecutive sheets in a supply are imparted with successively varying
arrangements of design features - a function that is utilitarian, physical
and mechanical in nature - in a way in which a perception by
consumers, that the sheets have been haphazardly cut relative [to] the
imparted design features, may be reduced or avoided - a function that
is utilitarian in that [it] can eliminate the need for, and complexity and
cost of, a registration system to maintain sheet cutting alignment
relative [to] the design pattern.
Appeal Br. 7 (citing Spec. 11:3-14: 11 ).
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Appeal 2016-005825
Application 13/928,507
This argument likewise is directed to features that might be advantageous to
the process of manufacturing the sheets, but does not persuade us that the design
attributes serve a structural or functional purpose in the resultant, claimed product.
See Spec. 11 :7-12 ("It may be appreciated that a web bearing such a pattern may,
most preferably, be cut into sheets along separation lines located in these
unadorned pathways as suggested in Fig. 5, to cause discrete design elements to be
approximately centered and appear balanced and/or symmetrical on the sheets,
and/or to avoid dividing the discrete design elements, compromising their aesthetic
appeal and/or creating a haphazard appearance in the separated sheet products.")
(emphasis added); id. at 11: 12-15 ("In order to maintain the centered, symmetrical
and/or balanced locations of the discrete design elements relative the separation
lines, it may be necessary to implement ... a registration system."); id. at 12:3
(acknowledging that, with respect to whether separated sheets have a haphazard
appearance, "individual perceptions may be subjective"). Accordingly, we do not
find Appellant's argument persuasive.
In sum, Appellant has not persuaded us of error in the Examiner's findings
that the claimed sheets do not function differently than Baggot's sheets and that the
design pattern attributes would have been a matter of design choice. Compare In
re Kuhle, 526 F.2d 553, 555 (CCPA 1975) (finding the particular placement of an
electrical contact provided no novel or unexpected result, but would have been an
obvious matter of design choice within the skill of the art), with In re Gal, 980 F.2d
717 (finding of "obvious design choice" is precluded where the claimed structure
and the function it performs are different from the prior art). The Examiner's
rejection of claims 1-21under35 U.S.C. § 103 over Baggot is affirmed.
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Appeal 2016-005825
Application 13/928,507
Rejection of claims 1-21under35 USC§ 103
as unpatentable over Baggot and Nickel
The Examiner finds Nickel discloses a tissue product that includes design
pattern attributes as recited in appealed claim 1. Final 3--4. The Examiner
determines
[i]t would have been obvious to one skilled in the art at the time the
invention was filed to combine the teachings of Baggot and Nickel
because such a combination would expand the application of the
Baggot sheet to sheets of a design pattern that includes the claimed
design pattern having no linear, continuous unadorned pathway along
the machine and along the cross direction that has a pathway width
greater than 7 percent of sheet length, and a design pattern having an
Occupied Rectangular Area of no more than 10 percent of the average
sheet area.
Id. at 4.
Appellant argues the Examiner has failed to sufficiently explain the reasons
why one of ordinary skill in the art would have applied the design patterns
disclosed in Nickel to Baggot's sheets. Appeal Br. 8. We agree with Appellant
that the Examiner's articulated motivation to combine appears to be based on
improper hindsight reasoning. In particular, the Examiner's statement, "because
such a combination would expand the application of the Baggot sheet to ...
include[] the claimed design pattern," is conclusory and fails to discuss the
evidence or reasoning to support such conclusion.
Accordingly, we reverse the Examiner's rejection of claims 1-21under35
U.S.C. § 103 over Baggot and Nickel.
In conclusion, the Examiner's decision to reject claims 1-21 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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