13205684 (P.T.A.B. Oct. 17, 2018)

Ex Parte Nelson et al

Patent Trial and Appeal BoardOct 17, 2018

13205684 (P.T.A.B. Oct. 17, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 13/205,684 08/09/2011 27752 7590 10/19/2018 THE PROCTER & GAMBLE COMPANY Global IP Services Central Building, C9 One Procter and Gamble Plaza CINCINNATI, OH 45202 FIRST NAMED INVENTOR Naomi Ruth Nelson 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. 11833M 2361 EXAMINER POLLEY, CHRISTOPHER M ART UNIT PAPER NUMBER 1785 NOTIFICATION DATE DELIVERY MODE 10/19/2018 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 NAOMI RUTH NELSON, JASON MERRILL JONES, REBECCA KATHLEEN PAGELS, MONICA HO-KLEINWAECHTER, JULIE SPAETH LOVELACE, ANDRE MELLIN, JOHN ALLEN MANIFOLD, FREDERICK SCOTT BRITTON, JEFFREY GLEN SHEEHAN, NICHOLAS AUGUST VITUCCI, and ALEXANDER PAUL WEBER Appeal2018-000395 Application 13/205,684 Technology Center 1700 Before ROMULO H. DELMENDO, LINDA M. GAUDETTE, and JANEE. INGLESE, Administrative Patent Judges. DELMENDO, Administrative Patent Judge. DECISION ON APPEAL The Applicants (hereinafter "Appellants") 1 appeal under 35 U.S.C. Â§ 134(a) from the Primary Examiner's final decision to reject claims 1---6, 8- 18, 20-27, 30-36, and 38. 2 We have jurisdiction under 35 U.S.C. Â§ 6(b). We affirm. 1 The Appellants identify the real party in interest as "The Procter & Gamble Company" (Appeal Brief filed June 6, 2016 ("Br.") at 1). 2 Br. 2--4; Final Office Action entered February 8, 2016 ("Final Act.") at 2- 14; Examiner's Answer entered August 18, 2016 ("Ans.") at 2--4. Appeal2018-000395 Application 13/205,684 I. BACKGROUND The subject matter on appeal relates to a sanitary tissue product with a surface pattern designed to provide consumers with a "perception of improved cleaning compared to known surface patterns" (Specification filed August 9, 2011 ("Spec.") 1, 11. 10-13; 2, 11. 1-8). Figure 7 (Drawings filed August 9, 2011), reproduced below, illustrates the surface pattern: ----16 'MD 26 ~ Leo Figure 7 above is a top plan view of a sanitary tissue product with a surface pattern provided by filamentary patterns 16, which comprise motif 24 comprising dots 26, that overlay filamentary line patterns 10 in an angular relationship defined by a (Spec. 3, 11. 21-33; 10, 1. 22-11, 1. 25). Representative claim 1 is reproduced from the Claims Appendix to the Appeal Brief (Br. 5), as follows: 1. A sanitary tissue product having a surface exhibiting a machine direction and a cross machine direction, wherein the surface comprises an embossed surface pattern comprising at least one filamentary pattern overlaying at least one filamentary line pattern, and wherein the filamentary pattern overlays the filamentary line pattern at an angle of from about 20Â° to about 160Â° and wherein the at least one filamentary pattern is the area 2 Appeal2018-000395 Application 13/205,684 between a first set of two parallel lines including at least one motif and wherein the at least one filamentary line pattern is the area between a second set of two parallel lines. II. REJECTIONS ON APPEAL On appeal, the Examiner maintains rejections under pre-AIA 35 U.S.C. Â§ I03(a) as follows: A. Claims 1---6, 8-18, 20-27, 30-36, and 38 as unpatentable over Penn et al. 3 ("Penn"); and B. Claims 1---6, 8-18, 20-27, 30-36, and 38 as unpatentable over Penn in view of Johnsrud. 4 (Ans. 2--4; Final Act. 2-14.) III. DISCUSSION For both rejections, the Appellants argue the claims together (Br. 2- 4). Therefore, we confine our discussion to claim 1, which we select as representative. 37 C.F.R. Â§ 4I.37(c)(l)(iv). By this rule, all other claims stand or fall with claim 1. The Examiner finds that Penn describes toilet paper that includes printed or embossed indicia for conveying various information including decorative images that are "pleasing" (Final Act. 2-3). The Examiner finds that although Penn does not specifically disclose the pattern specified in claim 1, a person having ordinary skill in the art would "have made any pattern on the paper to convey information including" the pattern specified in claim 1 (id.). Alternatively, the Examiner relies on Johnsrud's surface 3 US 2004/0003521 Al, published January 8, 2004. 4 US D555,908 S, issued November 27, 2007. 3 Appeal2018-000395 Application 13/205,684 embossment or pattern as "a good starting point for showing the complexity of patterns that can be formed on the paper to [convey] information to a user by the use of indicia" (id. at 7-8). Furthermore, the Examiner finds that the specified pattern amounts to an ornamentation that does not have any mechanical function but, instead, is designed to create an aesthetically- pleasing appearance (Ans. 3--4). Therefore, the Examiner holds that the pattern "cannot be relied upon to patentably distinguish the claimed invention from the prior art" (id. at 3). The Appellants contend that Penn "is not really concerned with images that are 'pleasing' in the way [the] Appellants['] emboss[ed] pattern is" (Br. 2). According to the Appellants, neither Penn nor Johnsrud teaches or suggests their specified embossed filamentary pattern overlayed at a specified angle with respect to a filamentary line pattern (id. at 3). The Appellants' arguments fail to reveal any reversible error in the Examiner's rejections. In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011). The Appellants' Specification informs one skilled in the relevant art that the specified embossed pattern's purpose is to provide the consumer "with a perception of improved cleaning compared to known surface patterns" (Spec. 2, 11. 1-8). The Appellants, however, do not assert-let alone direct us to evidence establishing-that the embossed pattern is, in any way, functionally related to the sanitary tissue product in terms of, e.g., cleaning performance (Br. 2--4). Indeed, the Appellants do not comment on the Examiner's determination that the specified pattern cannot be given any patentable weight as it amounts to ornamentation or aesthetics (id.). Under these circumstances, we uphold the Examiner's uncontested determination that the pattern specified in claim 1 cannot confer patentability to the claims 4 Appeal2018-000395 Application 13/205,684 on appeal in this utility patent application. In re Distefano, 808 F.3d 845, 848-51 (Fed. Cir. 2015) (reaffirming the principle that no patentable weight is to be given to information recorded in any substrate if that printed matter is for informational content only and not functionally or structurally related to the substrate); In re Seid, 161 F .2d 229, 231 ( CCP A 194 7) ( ornamentation having no mechanical function relates to a design that does not confer patentability to claims directed to a structural device). It follows then that the specified pattern in claim 1 fails to distinguish the claimed tissue product over Penn's embossed toilet paper (Penn ,r,r 25- 27; Abst.; Fig. 12) alone or as modified in view of Johnsrud's wipe as depicted in the disclosed design claim. Therefore, we sustain the Examiner's rejections. IV. SUMMARY The Examiner's rejections are sustained. Therefore, the Examiner's final decision to reject claims 1---6, 8-18, 20-27, 30-36, and 38 is affirmed. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. Â§ 1.136(a). AFFIRMED 5