Ex Parte Nimmey et al

Board of Patent Appeals and Interferences

Apr 23, 2010

10479197 (B.P.A.I. Apr. 23, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte ALAN NIMMEY, TODD VANGORDON, STEVE JOHNSON,
and RANDY KLIMENT
____________

Appeal 2009-006872
Application 10/479,197
Technology Center 3700
____________

Decided: April 23, 2010
____________

Before JENNIFER D. BAHR, STEFAN STAICOVICI, and
FRED A. SILVERBERG, Administrative Patent Judges.

STAICOVICI, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF THE CASE
Alan Nimmey et al. (Appellants) appeal under 35 U.S.C. § 134 (2006)
from the Examiner’s decision rejecting claims 1-12. Claims 13-20 have been
canceled. We have jurisdiction over this appeal under 35 U.S.C. § 6 (2006).

THE INVENTION
Appellants’ invention relates to a wrapped soap bar including a plastic
wrapper 10 having a plurality of perforations 12, 14 for folding end walls 13.
Spec. 4:27-28 and fig. 1. The plastic wrapper is made from a thermoplastic
film material having a thickness of about 60-180 microns, preferably about
90-150 microns, and a Taber stiffness of more than about 5, preferably about
7 to 20. Spec. 6:1-3.
Claim 1, the sole independent claim, is representative of the claimed
invention and reads as follows:
1. A wrapped soap bar comprising a generally
rectangular soap bar wrapped laterally with a
thermoplastic film having a thickness of about 60
micron to about 180 micron and a Taber Stiffness
of more than about 5, the longitudinal ends of said
soap bar enclosed by a folded over edge portion of
said film.

THE REJECTIONS
The Examiner relies upon the following as evidence of
unpatentability:
Milio US 6,048,829 Apr. 11, 2000
Sillett GB 1,045,217 Oct. 12, 1966

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Appellants seek review of the Examiner’s rejection of claims 1-121
under 35 U.S.C. § 103(a) as unpatentable over Milio and Sillett.2, 3

SUMMARY OF DECISION
We AFFIRM.
THE ISSUE
Claims 1 requires a generally rectangular soap bar wrapped with a
thermoplastic film so that the longitudinal ends of the soap bar are enclosed
by a folded over edge portion of the film. Claim 1 further requires that the
thermoplastic film have a thickness of about 60 microns to about 180
microns and a Taber stiffness of more than about 5.
The Examiner found that Milio discloses a soap bar wrapped in a
thermoplastic film, but without having the longitudinal ends of the soap bar

1 In the event of further prosecution of the subject matter of the claims
involved in this appeal, the Examiner and Appellants should consider
amending the claims to explicitly clarify whether they are directed to a
product or to a method. See, e.g., IPXL Holdings, L.L.C. v. Amazon.com,
Inc., 430 F.3d 1377, 1384 (Fed. Cir. 2005) (holding that a claim reciting
both an apparatus and a method of using that apparatus is indefinite). As
currently drafted, Appellants’ sole independent claim 1 is drafted as a
product claim (i.e., A wrapped soap bar . . .), whereas dependent claims 4
and 5 are written as method claims (i.e., A method as in claim . . .).
2 We refer throughout this opinion to the Examiner’s Answer mailed
Nov. 21, 2008 as “Ans.”.
3 The rejection of claims 1-12 over Milio and DE 19532266 has been
withdrawn by the Examiner. Ans. 5. The Examiner has also withdrawn the
provisional obviousness-type double patenting rejections of claims 1-7 over
claims 1, 2, 4 or 4, 5 or 5, 7, 8, and 9 of copending Application No.
10/486,890 and of claims 8-12 over claim 1 of copending Application No.
10/486,890 and Sillett. Id. See also App. Br. 4 and Non-Final Rejection at
5, mailed Jan. 5, 2007.

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enclosed by a folded over edge portion of the film as recited in claim 1.
Ans. 7. However, the Examiner found that enclosing the longitudinal ends
of a soap bar by folding over an edge portion of wrapper is well known in
the art of soap wrappers, as described in Sillett. Id. Therefore, the
Examiner concluded that it would have been obvious to modify the
thermoplastic film wrapper of Milio to enclose the longitudinal ends of the
soap bar, as taught by Sillett, to provide stiffening to the longitudinal ends of
the soap bar. Id.
Appellants argue that, “[t]here is no suggestion in the primary
reference Milio et al. to select GB 1,045,217 [Sillett].” App. Br. 9.
Specifically Appellants argue that the resulting wrapped soap bar of Milio
and Sillett is a “two piece structure,” whereas the claimed soap bar is
wrapped “in a single layer of thermoplastic film.” Id.
As such, the issue presented for our consideration in the instant appeal
is whether the combined teachings of Milio and Sillett would have prompted
a person of ordinary skill in the art to modify the thermoplastic film member
of Milio to enclose the longitudinal ends of the soap bar, as taught by Sillett,
in order to provide stiffening to the longitudinal ends of the soap bar.

OPINION
Claim 1
It is our finding that Milio discloses a thermoplastic film soap bar
wrapper (stiffening member) having a thickness of 50 to 250 microns and a
stiffness of at least 3 Taber Stiffness Units. Milio, col. 2, ll. 7-14 and col. 4,
ll. 17-18. However, we find that Milio does not describe that the
longitudinal ends of the soap bar are enclosed by a folded over edge portion
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of the thermoplastic film soap bar wrapper (stiffening member). We further
find that Sillett discloses a wrapper for a soap tablet having a thickness of
200-250 microns and score lines 15 that form end closure flaps 13, 14, 16 at
the longitudinal ends of the soap tablet. Sillett, p. 1, ll. 71-72 and 83-86; p.
2, ll. 4-5; and fig. 2. Sillett further discloses that the wrapper provides
support to the soap tablet against movements within the wrapper. Sillett, p.
2, ll. 37-39. The Examiner’s proposed combination is merely modifying the
thermoplastic film soap bar wrapper (stiffening member) of Milio by
providing the folded arrangement of Sillett so as to enclose the longitudinal
ends of the soap bar (tablet), which is known to provide support for a soap
bar (tablet) against movement within the wrapper.
Appellants argue that the Examiner’s proposed combination of
substituting the paperboard blank of Sillett for the stiffener material of Milio
results in a soap bar wrapped in the paperboard stiffener of Sillett with
folded over end flaps and which is then over-wrapped with the outer
wrapper film of Milio. See App. Br. 7. In other words, Appellants appear to
argue that the combined structure of Milio and Sillett results in a two-piece
structure, whereas “[t]he claimed invention is to a soap bar fully enclosed
(wrapped) in a single layer of thermoplastic film.” App. Br. 9. See also
App. Br. 6-7.
At the outset, this argument is not persuasive because it does not
address the Examiner’s proposed combination. The Examiner is not
proposing to substitute the stiffening member of Milio with the wrapper of
Sillett. Rather, the Examiner is proposing to modify the thermoplastic film
soap bar wrapper (stiffening member) of Milio by providing the folded
arrangement of Sillett so as to enclose the longitudinal ends of the soap bar
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(tablet). See Ans. 6. Furthermore, even assuming arguendo that the bar
soap of Milio and Sillett has a two-piece structure as Appellants argue, such
a configuration is not precluded by claim 1, as nothing in claim 1 would
prohibit the wrapped soap bar from having an additional outer wrapper film.
See Genentech, Inc. v. Chiron Corp., 112 F.3d 495, 501 (Fed. Cir. 1997)
(“Comprising” is a term of art used in claim language which means that the
named elements are essential, but other elements may be added and still
form a construct within the scope of the claim.).
In conclusion, for the foregoing reasons, the rejection of claim 1 over
the combined teachings of Milio and Sillett is sustained.

Claims 2-7
With respect to claim 2, Appellants argue that:
[T]he references do not disclose or suggest the
wrapped soap bar of claim 1 with the preferred
thermoplastic film thickness of about 90 micron to
about 150 micron (.09 mm to 15 mm)and a Taber
Stiffness of about 7 to 20.
App. Br. 8.
Similarly, with respect to claims 3-7, Appellants argue that, “Milio et
al. fails to disclose the thermoplastic film characteristics of thickness and
Taber stiffness of claim 1.” Id. The Examiner responds that the claimed
thickness and stiffness is disclosed in column 2, lines 7-14 of Milio. Ans. 7.
It is our finding that Milio specifically discloses a film thickness of 50 to
250 microns, preferable 160-180 microns and a stiffness of at least 3 Taber
Stiffness Units, preferably at least 8 Taber Stiffness Units. Milio, col. 2, ll.
7-14. Hence, like the Examiner, we find that the claimed thickness range of
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90-150 microns and stiffness range of 7-20 Taber Stiffness Units is within
the ranges disclosed by Milio.
Moreover, we note that when an applicant seeks to overcome a prima
facie case of obviousness by showing improved performance in a range that
is within or overlaps with a range disclosed in the prior art, the applicant
must “show that the [claimed] range is critical, generally by showing that
the claimed range achieves unexpected results relative to the prior art
range.” In re Woodruff, 919 F.2d 1575, 1578 (Fed.Cir.1990). Appellants
have not provided such a showing. Therefore, in absence of any factual
evidence showing the criticality of the claimed thickness range of 90-150
microns and stiffness range of 7-20 Taber Stiffness Units, we find that a
person of ordinary skill in the art would have readily expected that a film
having a thickness of 50-250 microns and a stiffness of at least 3 Taber
Stiffness Units, as taught by the stiffening member of Milio, would have the
same properties as the claimed thermoplastic film. Therefore, the rejection
of claims 2-7 is likewise sustained.

Claims 8-12
With respect to claims 8-12, Appellants once more argue that the
combined teachings of Milio and Sillett fail to disclose ”the use of a single
layer of thermoplastic film having the limitations of claim 1.” App. Br. 8.
Accordingly, for the reasons set forth above, the rejection of claims 8-12
cannot be sustained.

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CONCLUSION
The combined teachings of Milio and Sillett would have prompted a
person of ordinary skill in the art to modify the thermoplastic film member
of Milio to enclose the longitudinal ends of the soap bar, as taught by Sillett,
in order to provide stiffening to the longitudinal ends of the soap bar.

DECISION
The Examiner’s decision to reject claims 1-12 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). See 37 C.F.R.
§ 1.136(a)(1)(iv) (2007).

AFFIRMED

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