Ex Parte Lais

Board of Patent Appeals and Interferences

Jun 18, 2012

11449100 (B.P.A.I. Jun. 18, 2012)

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.
11/449,100 06/08/2006 Brooke Elizabeth Lais 10245 6014
27752 7590 06/18/2012
THE PROCTER & GAMBLE COMPANY
Global Legal Department - IP
Sycamore Building - 4th Floor
299 East Sixth Street
CINCINNATI, OH 45202
EXAMINER
STEPHENS, JACQUELINE F
ART UNIT PAPER NUMBER
3761
MAIL DATE DELIVERY MODE
06/18/2012 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte BROOKE ELIZABETH LAIS
__________

Appeal 2011-001410
Application 11/449,100
Technology Center 3700
__________

Before LORA M. GREEN, FRANCISCO C. PRATS, and
JACQUELINE WRIGHT BONILLA, Administrative Patent Judges.

BONILLA, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims directed to a
package for storing and dispensing an absorbent article and a wipe article.
The Examiner has rejected the claims as obvious. We have jurisdiction
under 35 U.S.C. § 6(b). We affirm.

Appeal 2011-001410
Application 11/449,100

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STATEMENT OF THE CASE
Claims 1-8 and 15-17 are on appeal. Claim 1 is the only independent
claim and is representative (emphasis added):
1. A package for storing and dispensing absorbent articles and wipe
articles, the package having one or more walls defining an interior
storage space and a means for accessing the interior storage space, the
package comprising:
a. an absorbent article disposed in the interior storage space;
b. a wipe article having indicia thereon, the wipe article disposed
in the interior storage space, wherein the wipe article comprises an
enclosed pouch having a wipe disposed therein, and wherein the
wipe article is joined to the absorbent article;
c. indicia on the package that relate to the indicia on the wipe
article; and
d. indicia on the package that relate to the wipe article.
The claims stand rejected under 35 under 35 U.S.C. § 103(a) as
obvious over Price et al. (U.S. Pat. Appl. Publ. No. 2006/0089612 A1,
published Apr. 27, 2006). Appellant does not argue claims separately, and
therefore all pending claims stand or fall together. 37 C.F.R.
§ 41.37(c)(1)(vii). We focus on independent claim 1 for the purpose of this
appeal.
Issues
Does the Examiner establish that “indicia” recited in claim 1
corresponds to printed matter having no patentable weight, and that claim 1
is obvious over Price?
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Principles of Law
Patent applicants cannot rely on printed matter to distinguish a claim
unless “there exists [a] new and unobvious functional relationship between
the printed matter and the substrate.” In re Gulack, 703 F.2d 1381, 1386
(Fed. Cir. 1983). For example, if “[a]ll that the printed matter does is teach a
new use for an existing product,” such as in instructions for a kit, the printed
matter does not add patentable weight. AstraZeneca LP v. Apotex, Inc., 633
F.3d 1042, 1064-65 (Fed. Cir. 2010) (quoting In re Ngai, 367 F.3d 1336,
1339 (Fed. Cir. 2004)).
Analysis
Independent claim 1 recites a package comprising “indicia on the
package that relate to the indicia on the wipe article” and “indicia on the
package that relate to the wipe article.” In other words, the package itself
has an “indicia” that “relates” to the wipe article “indicia” and the wipe
article itself inside the package. The Examiner finds that these “indicia”
elements are directed to printed matter with no mechanical function, and
therefore Appellant cannot rely on these elements to distinguish over the
prior art. (Ans. 5; see also Final Office Action 2.) We agree.
The Specification refers to “indicia” broadly. For example, the
Specification states that indicia may be a dashed line, shown as “indicia 14”
in Figure 3. (Spec. 10, Figure 3). Alternatively, indicia may be “a single
color, combinations of colors, raised portions, object(s), partial objects, or
any combination(s) of objects, partial objects, … [and] may or may not form
a readily discernible picture or pattern.” (Id. at 11.) In certain embodiments,
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Application 11/449,100

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as shown in Figure 6, embodiments may include “indicia depicting water
droplets 14a, a flower 14b and a dashed line 14c.” (Id. at 12.)
Regarding how a package indicia may “relate to” a wipe article
indicia or the wipe article itself, the Specification defines “relate” broadly.
The Specification states that “the term „related‟ means to have
characteristics that can logically show or establish a connection between two
or more elements.” (Spec. 8.) For instance, the Specification states that
indicia can “relate to” the wipe article where:
the depiction of a water droplet 14a can communicate to a user
that the wipe article 4 contained within the enclosed pouch 3 is
a wet wipe, and the depiction of a flower 14b can communicate
to a user that the wipe article 4 includes the scent of a flower.
The dashed line 14c can define the portions of the enclosed
pouch 3 defining the first and second grasping portions 13a,
13b.
(Id. at 12.) In addition, indicia “can communicate to the consumer the kind
of goods” contained in the package or “that the goods being marketed
together in a common package are the same goods the consumer would
purchase individually.” (Id. at 14.)
In other words, the recited indicia communicate information, such as
something about the products inside the package, or instructions for how to
use the package (e.g., where to grasp parts when opening). That said,
nothing in the Specification or elsewhere in the record suggests a “new and
unobvious functional relationship between the printed matter and the
substrate.” In re Gulack, 703 F.2d at 1386. The package and articles
function exactly the same way, regardless of whether indicia are present.
For example, the package still stores and dispenses absorbent articles and
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Application 11/449,100

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wipe articles, the absorbent article still absorbs, and the wipe article still
functions to wipe. The presence or absence of indicia has no impact on
these functions.
Appellant does not argue that any new and unobvious functional
relationship exists between the recited indicia and package/wipe article.
Rather, Appellant asserts that “the package, or „assembly mechanism‟ (see
paragraphs 0083-0084), of Price et al. does not appear to contain any indicia
of any kind.” (App. Br. 3.) Even assuming Price fails to disclose indicia
(and Figure 1 in Price indicates otherwise, see flowers on undergarment 20
and assembly mechanism 82), that failure is irrelevant. “Where the printed
matter is not functionally related to the substrate, the printed matter will not
distinguish the invention from the prior art in terms of patentability.” In re
Gulack, 703 F.2d at 1385. Appellant does not dispute that Price discloses all
other structural elements of the package recited in claim 1.
Conclusion of Law
We conclude that the Examiner establishes that “indicia” recited in
claim 1 corresponds to printed matter having no patentable weight, and
therefore that claim 1 is obvious over Price.
SUMMARY
We affirm the rejection of claims 1-8 and 15-17 under 35 U.S.C.
§ 103(a) as obvious over Price.

Appeal 2011-001410
Application 11/449,100

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TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED

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