Ex Parte Mongeon et al

Patent Trial and Appeal Board

Aug 30, 2016

11591115 (P.T.A.B. Aug. 30, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
111591,115 11/01/2006
27752 7590 09/01/2016
THE PROCTER & GAMBLE COMPANY
Global IP Services
Central Building, C9
One Procter and Gamble Plaza
CINCINNATI, OH 45202
FIRST NAMED INVENTOR
Murphy Greene Mongeon
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.
10198 7767
EXAMINER
ALLEN, JEFFREY R
ART UNIT PAPER NUMBER
3781
NOTIFICATION DATE DELIVERY MODE
09/01/2016 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 PATENT TRIAL AND APPEAL BOARD
Ex parte MURPHY GREENE MONGEON,
DONALD WILFRED ROBERT WILLIAMS, AMY BRIDGMAN,
GEORGE SCOTT KERR, DAPHNE GRACE HINE, and
GREGORY CHRISTOPHER PEISCHL
Appeal2014-006579
Application 11/591, 115 1
Technology Center 3700
Before NINA L. MEDLOCK, PHILIP J. HOFFMAN, and
CYNTHIA L. MURPHY, Administrative Patent Judges.
MURPHY, Administrative Patent Judge.
DECISION ON APPEAL
The Appellants appeal under 35 U.S.C. § 134 from the Examiner's
rejections of claims 1, 3---6, 9-11, 13-21, 24, and25. We have jurisdiction
over this appeal under 35 U.S.C. § 6(b).
We AFFIRM.
1 "The real party in interest is The Procter & Gamble Company." (Appeal
Br. 1.)
Appeal2014-006579
Application 11/591, 115
STATEMENT OF THE CASE
The Appellants' invention "relates to a system comprising two or
more products comprising complimentary outer surface contours which are
mutually engagable in intimate contact." (Spec. 1, lines 9-13.)
Illustrative Claim2
1. A system comprising two or more products wherein each
product comprises complimentary outer surface contours which
are mutually engagable in intimate contact to the other product
and wherein each product comprises an indicia that extends
across each product and communicates that the products are a
system wherein the indicia is a complimentary label wherein the
indicia follows the shape of the complimentary outer surface
contours and further wherein the efficacy of the system of two or
more products is increased when the products are used together
and wherein the efficacy is antidandruff efficacy.
References
Douglas us 5,316, 159 May 31, 1994
~r"'.lnt TN h. 1 Q') Li.Li.(\ ~ 1 l\,fou '7 ') (\(\')
_l._.l_l._l,..l,_l__l_L \......./U v,-''-'"'-',-.-.v _J,_,1_1_ _l_Y_.LUJ I' ,L.,,VV,L.,,
Schenck US 2004/0058296 Al Mar. 25, 2004
Florino US 6, 772, 898 B 1 Aug. 10, 2004
Rejections
The Examiner rejects claims 1, 3-6, 9-11, 13-21, and 24 under
35 U.S.C. § 103(a) as unpatentable over Douglas, Schenck, and Brant.
(Final Action 2.)
The Examiner rejects claim 25 under 35 U.S.C. § 103(a) as
unpatentable over Douglas, Schenck, Brant, and Florino. (Id. at 4.)
2 This illustrative claim is quoted from the Claims Appendix ("Claims
App.") set forth on pages 10-12 of the Appeal Brief.
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Appeal2014-006579
Application 11/591, 115
ANALYSIS
Independent Claim 1
Independent claim 1 is directed to "[a] system comprising two or
more products" with "complimentary outer surface contours." (Claims App.)
The Examiner finds that Douglas discloses a system comprising two
products (bottles 3 and 5) with circular complimentary outer surface
contours. (See Final Action 2; see also Douglas Figs. 1-3.)
Independent claim 1 requires "an indicia" to "extend[] across each
product" and to "follow[] the shape of the complimentary outer surface
contours." (Claims App.) The Examiner finds that Douglas discloses an
indicia (label 21) that extends across bottles 3 and 5. (See Final Action 2;
see also Douglas Fig. 1.) And the Examiner finds that Brant teaches that it
was known in the art to manufacture indicia on a body "that follows the
contours of that body." (Id. at 3; see also Brant Fig. 5.)
The Examiner determines that it would have been obvious, in view of
Brant, to manufacture Douglas's indicia 21 "to follow the shape and curve of
the complimentary outer surface contours [of its bottles 3 and 5]." (Final
Action 4.) The Examiner explains that this would have been done "as a
matter of aesthetic design choice." (Id.) According to the Examiner, both
Douglas and Brant "are drawn to placing indicia on an outer surface," and so
"[ w ]hen one of ordinary skill in the art was placing indicia on a component
they would look to both references for teachings on how to apply indicia to
shaped surfaces." (Id. at 5.)
The Appellants argue that one of ordinary skill in the art "would have
not have looked to Brant [] to manufacture such a display element for a
modified system of Douglas." (Appeal Br. 5.) We are not persuaded by this
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Appeal2014-006579
Application 11/591, 115
argument because the Appellants do not adequately address why Brant is not
analogous to the claimed invention. The Appellants do not, for example,
assert that placing indicia on an outer surface was not a problem with which
they were concerned, and/or that Brant is not reasonably pertinent to this
problem. A reference is analogous prior art if it "is reasonably pertinent to
the particular problem with which the inventor is involved." In re Bigio 381
F.3d 1320, 1325 (Fed. Cir. 2004). And "[a] reference qualifies as prior art
for an obviousness determination" \vhen "it is analogous to the claimed
invention." In re Klein 647 F.3d 1343, 1348 (Fed. Cir. 2011}
The Appellants also argue that the Examiner "has failed to point to
disclosure in either reference [i.e., Douglas or Brant]" which would suggest
using "two or more products wherein each product comprises complimentary
outer surface contours and wherein the indiciafollows the shape of the
complimentary outer surface contours. " (Appeal Br. 5---6.) We are not
persuaded by this argument because the Examiner's rejection is based upon
the combined, not individual, teachings of Douglas and Brant. Specifically,
as discussed above, the Examiner's rejection is based on Douglas's disclosure
of two products with complimentary outer surface contours and Brant's
teaching that indicia can follow the contours of a body (i.e., product) on
which it is manufactured. (See Final Action 3--4; see also Answer 6.) The
Examiner "need not seek out precise teachings directed to the specific subject
matter of the challenged claim" as "the inferences and creative steps that a
person of ordinary skill in the art would employ" can be taken into account."
KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398, 419 (2007). Here, the Examiner
takes into account that "modifying a device to improve its aesthetic value is
well known to those of ordinary skill in the art." (Final Action 6.)
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Appeal2014-006579
Application 11/591, 115
Independent claim 1 also recites that "the etlicacy of the system" is
"increased when the products are used together." (Claims App.) The
Examiner finds that, in Douglas, "[t]he efficacy of the products can be
increased when the products are used together as opposed to being used
separately." (Final Action 3.)
The Appellants argue that Douglas has "nothing to do with the
increased efficacy that results from using a system of two or more products
wherein the efficacy of the system is increased when the products are used
together." (Appeal Br. 6.) We are not persuaded by this argument because
the dictionary definition of the word "efficacy" is the "capacity for
producing a desired result or effect; effectiveness,"3 and this definition is
consistent with the Specification (see, e.g., Spec. 10-11). Douglas
specifically states that "shampoo and hair conditioner" are products that "are
used together," and that it is "desirable to be able to store these related
products together so that both may be readily available at the same time."
(Douglas col. 2, lines 14--23.) One of ordinary skill in the art would glean
from the teachings of Douglas that the capacity to produce a desired haircare
result would be increased when the products (i.e., shampoo and conditioner)
are used together.
Independent claim 1 further recites that "the efficacy is antidandruff
efficacy." (Claims App.) The Examiner finds that Douglas's shampoo and
conditioner can be "antidandruff' products. (See Final Action 3). The
Appellants do not challenge this finding by the Examiner, and so the desired
haircare result discussed above would be related to dandruff. Thus, the
3 http://www.dictionary.com/browse/efficacy (last visited August 2016).
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Appeal2014-006579
Application 11/591, 115
Examiner adequately establishes that the prior art would lead one of ordinary
skill in the art "to improved efficacy that results in antidandruff efficacy."
(Appeal Br. 6.)
Thus, we sustain the Examiner's rejection of independent claim 1 under
35 U.S.C. § 103(a) as unpatentable over Douglas, Schenck, and Brant.
Dependent Claims 3-6, 9-11, 13-21, and 24
The Appellants do not argue these dependent claims separately or
further, so they fall with independent claim 1. 4 Thus, we sustain the
Examiner's rejection of dependent claims 3---6, 9-11, 13-21, and 24 under
35 U.S.C. § 103(a) as unpatentable over Douglas, Schenck, and Brant.
Dependent Claim 25
Claim 25 depends from independent claim 1 and recites that "the
outer surface contours of the products are complimentary when one of the
products is inverted." (Claims App.) The Examiner finds that Florino
teaches that it is known to manufacture a system of engagable containers
wherein one of the products is inverted. (See Final Action 5.)
The Examiner determines that it would have been obvious, in view of
Florino, for Douglas's system to have one of its products inverted. (See
Final Action 5.) The Examiner explains that this would be done "to improve
the aesthetic value of the system" and that "rearranging parts" involves only
routine skill in the art. (Id.) According to the Examiner, "[b ]oth Douglas
and Florino are drawn to container systems made up of two containers
assembled together." (Answer 8.)
4 Although the Appellants direct our attention to the Examiner's findings
with respect to dependent claims 4---6 and 21 (see Appeal Br. 4--5), they do
not present arguments relating to these findings.
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The Appellants argue that "one of skill in the art would not look to
Florina" to "have one of the products inverted in order to improve the
aesthetic value of the system." (Appeal Br. 8.). We are not persuaded by
this argument because the Appellants do not adequately address why Florina
is not analogous to the claimed invention. The Appellants do not assert, for
example, that their field of endeavor is outside that of "container systems
made up of two containers assembled together" (Answer 8) and/or that
Florina's field of endeavor is not the same. A reference is analogous prior
art if it "is from the same field of endeavor [as the inventor's]." Bigio 3 81
F.3d at 1325. And "[a] reference qualifies as prior art for an obviousness
determination" when "it is analogous to the claimed invention.'' Klein 647
F.3d at 1348.
Thus, we sustain the Examiner's rejection of dependent claim 25
under 35 U.S.C. § 103(a) as unpatentable over Douglas, Schenck, Brant, and
Florino.
DECISION
We AFFIRM the Examiner's rejections of claims 1, 3---6, 9-11, 13-21,
24, and 25.
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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