Ex Parte Knobloch et al

Patent Trial and Appeal Board

Oct 28, 2016

11897768 (P.T.A.B. Oct. 28, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
111897,768 08/31/2007
27752 7590 11/01/2016
THE PROCTER & GAMBLE COMPANY
Global IP Services
Central Building, C9
One Procter and Gamble Plaza
CINCINNATI, OH 45202
FIRST NAMED INVENTOR
Thorsten Knobloch
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.
10718Q 6952
EXAMINER
DICUS, TAMRA
ART UNIT PAPER NUMBER
1791
NOTIFICATION DATE DELIVERY MODE
11/01/2016 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 PA TENT TRIAL AND APPEAL BOARD
Ex parte THORSTEN KNOBLOCH, 1
Jennifer Lori Steeves-Kiss, Michael Ricardo Bums,2
Ill ya Torrance Thomas, John Paul Brase,
Dennis Xavier Legault, and Dean Larry Du Val
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Technology Center 1700
Before JEFFREY T. SMITH, MARK NAGUMO, and MONTE T. SQUIRE,
Administrative Patent Judges.
NAGUMO, Administrative Patent Judge.
DECISION ON APPEAL
Thorsten Knobloch, Jennifer Lori Steeves-Kiss, Michael Ricardo
Bums,2 Illya Torrance Thomas, John Paul Brase, Dennis Xavier Legault,
and Dean Larry Du Val ("P&G") timely appeal under 35 U.S.C. § 134(a)
1 The real party in interest is identified as The Procter & Gamble Company
("P&G"). (Appeal Brief, filed 20 May 2014 ("Br.").)
2 Deceased; Mary Windes Bums, Legal Representative.
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from the Final Rejection3 of claims 1, 2, and 4-16, which are all of the
pending claims. We have jurisdiction. 35 U.S.C. § 6. We affirm.
OPINION
A. Introduction4
The subject matter on appeal relates to sale-displays of toilet paper.
The '768 Specification refers to toilet paper as "sanitary tissue product," or
"toilet tissue product," which it defines as "a wiping implement for post-
urinary and/or post-bowel movement cleaning." (Spec. 4, 11. 23 5-24.) The
Specification teaches that different consumers of sanitary toilet tissue
products desire "different common intensive property values" in those
products (id. at 1, 11. 25-27), and that there is a need for indicia that would
enable the consumer to identify quickly, while shopping amongst plural
similar products, a particular product having the particular desired intensive
property values (id. at 2, 11. 3-17.) The Specification reveals that "non-
textual indicia," in particular, "pattern[ s ],"that are "psychologically
matched" to an "intensive property" such as strength provide an effective
means to identify and distinguish products having distinct "intensive
properties" or distinct "values of intensive properties." (Id. at 11. 13-22.)
3 Office action mailed 7 December 2012 ("Final Rejection"; cited as "FR").
4 Application 11/897,768, Array of sanitary tissue products,
filed 31 August 2007, claiming the benefit of a provisional application
filed 23 February 2007. We refer to the '"768 Specification," which we cite
as "Spec."
5 Line-numbers of the Specification reported throughout this Opinion are
based on the marginal line number nearest the first-cited line. Inspection of
Specification pages 1-2 indicates that the algorithm used to generate the
filed copy of the Specification has an anomalous line-counting scheme.
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As hinted by the numerous quote marks, numerous terms are defined
expressly by the Specification. The most important terms for understanding
this appeal are listed below.
The term "array of toilet tissue products" means "a group of sanitary
[toilet] tissue products that provide a similar benefit to a consumer."
(Spec. 6, 11. 7-8.) Speaking plainly, such an array is all toilet paper, not a
mix of, e.g., toilet paper and paper towels or facial tissues or other items.
The term "intensive property" means "a property of a ... sanitary
[toilet] tissue product ... selected from the group consisting of: lint,
softness, basis weight, texture, tensile strength, especially total dry tensile
strength, absorbency and mixtures thereof." (Id. at 11. 27-30.) Definitions of
each member of this group are provided. (Id. at 9, 1. 20, through 10, 1. 18.)
The term "value" of an intensive property is a "measured value" of
that property. (Id. at 7, 11. 1-3.)
The term "pattern" means "an emboss pattern and/or a through-air-
dried pattern." (Id. at 8, 11. 28-29.)
The term "psychologically matched" means "that a non-textual indicia
on a package housing a sanitary tissue product of the present invention
and/or on the sanitary tissue product, itself, denotes (i.e., serves as a symbol
for; signifies; represents something) an intensive property of the sanitary
tissue product." (Id. at 8, 11. 30, to 9, 1. 1.)
The term "non-textual indicia" means "non-text indicia that
communicates to a consumer through a consumer's senses." (Id. at 11. 21-
22.) The senses of sight (for visual indicia) and touch (for texture indicia)
(id. at 11. 23-24) appear to be relevant for "patterns" used to "convey[]
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information to a consumer about a product housed within the package"
(id. at 7, 11. 30-31 ).
Sole independent claim 1 is representative and reads6 :
An array of toilet tissue products comprising
a first toilet tissue product comprising a first pattern and
a second toilet tissue product comprising a second pattern
different from the first,
wherein
the first pattern communicates to a consumer a first
intensive property of toilet tissue products and
the second pattern communicates to a consumer an
intensive property of toilet tissue products different
from the first intensive property,
wherein
the first toilet tissue product is housed within a first
toilet tissue product package and
the second toilet tissue product is housed within a
second toilet tissue product package and
wherein
the first and second toilet tissue product packages are
separate from each other [and are not contained
together in an obtter package]
such that the first toilet tissue product package is
displayed on a store shelf separate from the second
toilet tissue product package
in a way that the first and second toilet tissue product
packages are visible to a consumer during the
6 The version in the Claims Appendix differs from claim 1 as filed in the
amendment dated 13 August 2012, which is the last amendment of record.
In that amendment, the first bracketed phrase is deleted, and the second
bracketed phrase is added. In the event of further examination, the record
should be clarified as to the proper language of the claims.
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consumer's purchasing decision process [and are not in
contact with each other].
(Claims App., Br. 7; indentation, paragraphing,7 emphasis, brackets, strike-
through, and underscore added.)
The Examiner maintains the following grounds of rejection8:
A. Claims 1, 2, and 4-16 stand rejected under
35 U.S.C. § 112(1) for lack of written description.
B. Claims 1, 2, 4-8, 15, and 16 stand rejected9 under
35 U.S.C. § 103(a) in view of the combined teachings of
7 In compliance with 37 C.F.R. § l.75(i) (2013): "Where a claim sets forth
a plurality of elements or steps, each element or step of the claim should be
separated by a line indentation."
8 Examiner's Answer mailed 23 October 2014 ("Ans.").
9 Claim 3 was canceled in the amendments filed 13 August 2012; the
inclusions of claim 3 in the rejection (Ans. 3, 1. 13; 7, 11. 10-12) are harmless
oversights.
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Boudrie, 10 Admitted Prior Art, 11 Gonzalez, 12 Knobloch, 13 and
Meyer. 14
Bl. Claim 2 stands rejected under 35 U.S.C. § 103(a) in view of
the combined teachings of Boudrie, Admitted Prior Art,
Gonzalez, Knobloch, Meyer, and Cashmere. 15
B2. Claim 8 stands rejected under 35 U.S.C. § 103(a) in view of
the combined teachings of Boudrie, Admitted Prior Art,
Gonzalez, Knobloch, Meyer, and Kimberley-Clark. 16
B3. Claims 9-11 stand rejected under 35 U.S.C. § 103(a) in view
of the combined teachings of Boudrie, Admitted Prior Art,
Gonzalez, Knobloch, Meyer, and Vinson '352. 17
10 Laura L. Boudrie, Packaging configurations for consumable products,
U.S. Patent No. 7,621,397 B2 (24 November 2009), based on an application
filed 15 December 2005.
11 Admitted Prior Art is identified as the disclosures in
the '768 Specification at 1, line 5, to 8, line 29. (Ans. 4, 1. 11.)
12 Luz M. Gonzalez, The impact of ad background color on brand
personality and brand preferences, College of Business Administration,
Undergraduate Thesis. California State University, Long Beach,
California (2005).
13 Thorstep [sic: Thorsten] Knobloch et al., Patternedfibrous structures,
U.S. Patent Application Publication 2006/0113049 Al (1 June 2006), based
on an application filed 28 February 2005, now U.S. Patent No. 8,034,215
(11October2011), assigned to The Proctor and Gamble Co., the real party
in interest in this Appeal.
14 Alvin H. Meyer, Snap-on adjustable sliding clip for shelf partitions, U.S.
Patent No. 3,815,519 (1974).
15 Cashmere premium quality bathroom tissue, Kimberley-Clark website:
http://web.archive.org/web/2006 l 027025443/cashmere.ca/index.php
(accessed 1 July 2009).
16 Kimberley-Clark website, accessed 8 November 2010,
http://www.kimberly-clark.com/ ourbrands/ consumer_ brands. aspx
17 Kenneth Douglas Vinson et al., U.S. Patent No. 5,851,352 (1998).
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B4. Claim 12 stands rejected under 35 U.S.C. § 103(a) in view of
the combined teachings of Boudrie, Admitted Prior Art,
Gonzalez, Knobloch, Meyer, and Vinson '329. 18
B5. Claims 13 and 14 stand rejected under 35 U.S.C. § 103(a) in
view of the combined teachings of Boudrie, Admitted Prior
Art, Gonzalez, Knobloch, Meyer, Vinson '352, and
Vinson '329.
B6. Claim 16 stands rejected under 35 U.S.C. § 103(a) in view of
the combined teachings of Boudrie, Admitted Prior Art,
Gonzalez, Knobloch, Meyer, and Callahan. 19
B. Discussion
Findings of fact throughout this Opinion are supported by a
preponderance of the evidence of record.
Initially, we find that P&G presents substantive arguments for
patentability based only on limitations recited in claim 1. (Br. 2--4.) The
"separate" arguments for separately rejected claims 2 (B 1 ), 8 (B2), 9-
14 (B3-B5), and 16 (B6) (Br. 4-6) amount to no more than assertions that
the additional references do not cure the defects of the rejection of
independent claim 1. 20 Such assertions do not amount to the separate
argument required under the Rules governing appeals to this Board.
37 C.F.R. § 41.37(c)(iv) (2013); cf In re Lovin, 652 F.3d 1349, 1357 (Fed.
Cir. 2011) ("[W]e hold that the Board reasonably interpreted Rule 41.37 to
require more substantive arguments in an appeal brief than a mere recitation
of the claim elements and a naked assertion that the corresponding elements
18 Kenneth Douglas Vinson et al., U.S. Patent No. 6,162,329 (2000).
19 Joseph W. Callahan and John G. Trumbull, U.S. Patent No. 4, 135,024
(1979).
20 No Reply Brief was filed.
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were not found in the prior art. Because Lovin did not provide such
arguments, the Board did not err in refusing to separately address claims 2-
15, 17-24, and 31-34.") Accordingly, all claims stand or fall with claim 1.21
Written Description
The Examiner finds inadequate written description in the
Specification as filed for the limitations, "displayed separate from one
another on a store shelf," and "not in contact with each other." (FR 2, last
para.)
The Examiner finds that the passage cited by Knobloch, "[a]s shown
in Fig. 4, in one example, an array of sanitary tissue products 2422 (displayed
on a store shelf 25 for example) housed within different packages 26, 28,
30" (Spec. 11, 11. 31-32; cited at Br. 2, last para.) does not have the same
meaning as "'displayed separate from one another ... not in contact with
one another."' (FR 3, 11. 2--4.)
The inquiry into the adequacy of the written description afforded by
the originally filed specification is factual. Ariad Pharmaceuticals, Inc. v.
Eli Lilly and Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010)(en bane) ("This
21 P&G attempts to incorporate by reference arguments for patentability
made in a response to a non-final Office Action. (Br. 3, 11. 13-16.) Such
incorporation by reference contravenes 37 C.F.R. § 41.37(c)(l)(iv) (2013),
the third sentence of which reads (emphasis added), "Except as provided for
in§§ 41.41 [Reply Brief], 41.47 [Oral hearing] and 41.52 [Rehearing], any
arguments or authorities not included in the appeal brief will be refused
consideration by the Board for purposes of the present appeal." None of the
exceptions are relevant to this appeal.
22 Throughout this Opinion, for clarity, labels to elements are presented in
bold font, regardless of their presentation in the original document.
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inquiry, as we have long held, is a question of fact."). The Examiner does
not explain what distinct meaning the claim language conveys compared to
the language cited in the Specification; nor is a distinction apparent to us
from the plain language of the claims in light of the disclosure in the
Specification.
We therefore reverse the rejection for lack of written description of
these limitations.
Obviousness
P&G urges that the Examiner's reliance on Gonzalez, "that
purportedly teaches colors 'from yellow to blue, green, and red that affect
physiological and psychological emotions, attitudes ... "' (Br. 3, last para.),
constitutes harmful error because "the claimed invention is not directed to
colors, patterns, etc. on a package. The invention is directed to first and
second patterns on 'toilet tissue products' each of which are housed in their
respective packages, as claimed." (Id.) "Accordingly," P&G concludes,
"regardless of what Knobloch et al. or Meyer teaches in addition to the first
three cited references, the Appellants respectfully submit that the
Examiner's reasoning for finding obviousness is wholly insufficient and in
error in its fundamental misunderstanding of the invention." (Id. at 4, 11. 1-
4; emphasis added.)
P&G appears to have misapprehended the Examiner's analysis.
We begin by noting that the plain language of claim 1 (and the
dependent claims) supports P&G's characterization of the claim. In
particular, we note that the claims do not require that the patterns embossed
on the first and second tissue products be visible through the packaging.
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Nor do the claims require that the first and second toilet tissue product
packages allow the patterns on the tissue products to be seen, 23 or that the
packages bear representations of those patterns. 24 We will not read
limitations from examples in the Specification into the claims. In re Am.
Acad. Sci. Tech. Ctr., 367 F.3d 1359, 1369 (Fed. Cir. 2004) (it is improper to
read limitations from preferred embodiments in the specification into the
claims.).
The Examiner finds-and P &G does not dispute-that Boudrie
describes products having different patterns, but doesn't teach first and
second emboss patterns that communicate distinct first and second intensive
properties of the respective toilet tissue products. (FR 3, 1. 18, through 4,
1. 4.) The Examiner finds that communicating intensive properties by colors
is known in the prior art, as shown by the descriptions of prior art in the
Specification ("Admitted Prior Art," "APA") (id. at 4, 11. 5-12), and that it is
known to use packaging to communicate intensive properties of the
packaged items to consumers (id. at 5, 11. 3-8). The Examiner finds further
that Gonzalez provides "consistent" teachings that colors are useful because
they "affect physiological and psychological emotions, attitudes, and for
23 Contrast with Fig. 3 (not reproduced here), and the associated text, which
describes Fig. 3 as showing "a package 10 for housing a sanitary tissue
product 20 [which] may be made such that a surface 22 of the sanitary tissue
product 20 housed within the package 10 is visible to a consumer at the
point of sale and/or in advertising." (Spec. 11, 11. 23-25.)
24 Contrast with the description in the Specification (Spec. 11, 1. 31,
through 12, 1. 21) of Fig. 4 (not reproduced here) as showing packages 26,
28, 30, that bear "non-textual indicia" 32, 34, 36, respectively, that may be
"psychologically matched to a ... intensive property present in the ...
sanitary tissue product" (id. at 12, 11. 7-8).
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brand personalities to aid in advertising." (Id. at 4, 11. 13-16.) The
Examiner finds that Knobloch teaches embossed patterns that convey
softness or strength on sanitary tissue products (id. at 6, 11. 1-2), and that
Meyer teaches the display of various products on shelves in a grocery store
separate from the other in a way that the first and second products are visible
to a consumer during the purchasing decision (id. at 11. 18-22). The
Examiner reasons, step by step, that it would have been obvious to emboss
the toilet tissue products having different intensive properties, such as
strength and softness, with corresponding patterns, and to package and
display the products separately, on a shelf, both types of products being
visible to the consumer at the same time, to convey the intensive properties
to the consumer while the purchasing decision is being made. In particular,
the Examiner explains that
[i]t would have been obvious ... to have modified Boudrie to
include at least two packages separated on shelves as claimed
because Boudrie can place Fig. 1 t\vice on the shelf of l\1eyer
or the Fig. 1 can be placed singly on one shelf, separate as
taught by Meyer for better organization, aiding the shopper in
determining the cost and able to view what he wants and the
quantity desired, and as a means of displaying or identifying
smgs.
(FR 7, ll. 1-5.)
Given the failure of P &G to challenge the Examiner's findings
regarding Knobloch and Meyer, the consequent failure of P&G to challenge
the Examiner's complete reasoned explanation of obviousness, and the
breadth of the claims indicated supra, we are not persuaded that the
occasionally broad statements amount to harmful error.
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C. Order
It is ORDERED that the rejection of claims 1, 2, and 4-16
under 35 U.S.C. § 112(1) for lack of written description is reversed.
It is ORDERED that the rejections of claims 1, 2, and 4-16 under
35 U.S.C. § 103(a) are affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § l.136(a).
AFFIRMED
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