Ex Parte Sanders et al

Patent Trial and Appeal Board

Feb 22, 2018

13537896 (P.T.A.B. Feb. 22, 2018)

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.
13/537,896 06/29/2012 Michael David Sanders 12543 9358
27752 7590 02/26/2018
THE PROCTER & GAMBLE COMPANY
Global IP Services
Central Building, C9
One Procter and Gamble Plaza
CINCINNATI, OH 45202
EXAMINER
ORTIZ, RAFAEL ALFREDO
ART UNIT PAPER NUMBER
3728
NOTIFICATION DATE DELIVERY MODE
02/26/2018 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 MICHAEL DAVID SANDERS and
EBONY NICOLE SANDERS
Appeal 2017-003128
Application 13/537,896
Technology Center 3700
Before MICHELLE R. OSINSKI, THOMAS F. SMEGAL, and
LISA M. GUIJT, Administrative Patent Judges.
OSINSKI, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Michael David Sanders and Ebony Nicole Sanders (Appellants)1
appeals under 35 U.S.C. § 134(a) from the Examiner’s rejection of claims 1,
2, and 4-19, which are all of the pending claims. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.
1 Appellants identify the real party in interest as The Procter & Gamble
Company. Appeal Br. 1.
Appeal 2017-003128
Application 13/537,896
THE CLAIMED SUBJECT MATTER
Claim 1, the sole independent claim, is reproduced below and is
representative of the claimed subject matter on appeal.
1. A laundry detergent package comprising:
a container having a container interior surface and an
opposing container exterior surface, wherein said container
exterior surface has a. primary label face: and
a dosing cap comprising a base and a vessel wall extending
from said base, said base having a base interior surface and an
opposing base exterior surface, said vessel wall having a vessel
wall interior surface and an opposing vessel wall exterior surface,
wherein said base exterior surface comprises a region of surface
irregularities;
engaged with saidwherein said dosing cap is
container;
wherein said region of surface irregularities is positioned
such that when said primary label face is aligned with a line of
sight of an observer having her eye level with said base exterior
surface said region of surface irregularities is visible to said
observer; and
wherein said region of surface irregularities has a centroid
in a plane orthogonal to a longitudinal axis of said dosing cap,
wherein said centroid is more than about ti/8 radians away from
said line of sight; as measured about said longitudinal axis of said
mg cap.
EVIDENCE
The Examiner relied on the following evidence in rejecting the claims
on appeal:
Weiby US 3,090,067 May 21, 1963
Kafkis US 4,974,984 Dec. 4, 1990
Maloney US 6,739,781 B2 May 25, 2004
Darr US 6,964,359 B1 Nov. 15,2005
Yang US 2008/0289987 A1 Nov. 27, 2008
Hood US 2010/0036352 A1 Feb. 11,2010
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Application 13/537,896
THE REJECTIONS2
I. Claims 1, 2, and 4-19 stand rejected under 35 U.S.C. § 112, first
paragraph, as failing to comply with the written description
requirement based on an angle of a centroid of a region of surface
irregularities in relation to (i) a line of sight (claim 1) and (ii) a
common line of alignment (claim 12). Non-Final Act. 2-3.
II. Claims 1, 2, and 4-19 stand rejected under 35 U.S.C. § 112, first
paragraph, as failing to comply with the enablement requirement
based on the angle of the centroid in relation to (i) the line of sight
(claim 1) and (ii) the common line of alignment (claim 12). Id. at
3—4.
III. Claims 1, 2, and 4-19 stand rejected under 35 U.S.C. § 112, second
paragraph, as being indefinite for failing to particularly point out and
distinctly claim the subject matter which is regarded as the invention.
Id. at 4-5.
IV. Claims 1, 2, 4-6, and 19 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Maloney and Weiby. Id. at 6-9.
V. Claim 7 stands rejected under 35 U.S.C. § 103(a) as unpatentable over
Maloney, Weiby, and Hood. Id. at 9-10.
VI. Claim 8 stands rejected under 35 U.S.C. § 103(a) as unpatentable over
Maloney, Weiby, and Kafkis. Id. at 10.
VII. Claim 9 stands rejected under 35 U.S.C. § 103(a) as unpatentable over
Maloney, Weiby, and Darr. Id. at 10-11.
2 The rejection of claims 1, 2, and 4-19 under 35 U.S.C. § 112, first
paragraph, as failing to comply with the written description and enablement
requirements based on calculation of the location of the centroid of the
region of surface irregularities is withdrawn. Ans. 2.
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Application 13/537,896
VIII. Claims 10-14, 17, and 18 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Maloney, Weiby, and Yang. Id. at 11-13.
IX. Claim 15 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over Maloney, Weiby, Yang, and Hood. Id. at 13-14.
X. Claim 16 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over Maloney, Weiby, Yang, and Kafkis. Id. at 14.3
OPINION
Rejection I
The Examiner rejects claims 1, 2, and 4-19 as failing to comply with
the written description requirement because “it is unclear from the
[Specification how [Appellants] calculate the angle of the centroid in
relation with the line of sight” and “it is unclear from the [Specification
how [Appellants] calculate the angle of the centroid in relation with the
common line of alignment.” Non-Final Act. 3.
As to the line of sight, Appellants point to Figures 2^1 and page 8,
line 29 to page 10, line 2 of the Specification. Appeal Br. 3. The
Specification describes how centroid 23 is “more than about tt/8 radians
away from the line of sight 19 as measured about the longitudinal axis F of
the dosing cap 10.” Spec. 8:29-9:4. The Specification also describes that
“[t]he centroid 23 can be about tt/2 radians away from the line of sight 19 as
measured about the longitudinal axis F of the dosing cap 10.” Id. at 9:15-
lb. In our view, the Specification describes that, using the longitudinal axis
3 Even though the Examiner does not specifically identify Weiby as part of
Rejections IX and X, each rejection refers to the claims as being
unpatentable over Maloney and Yang “as applied to claim 10 above” (Final
Act. 13, 14), and the rejection of claim 10 includes Weiby (id. at 11).
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Application 13/537,896
as a vertex and moving away from a line of sight about the longitudinal axis
L until reaching a plane of the centroid, the angle (3 between the line of sight
and a plane of the centroid must be more than tt/8 radians. See, e.g., id. at
Fig. 3. We find that the disclosure reasonably conveys to a person of
ordinary skill in the art that Appellants were in possession of the claimed
subject matter as of the filing date. See Ariad Pharm., Inc. v. Eli Lilly and
Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010).
As to the common line of alignment, Appellants point to Figure 4 and
pages 10 and 11 of the Specification. Appeal Br. 3. The Specification
describes that the longitudinal axis of each of a plurality of dosing caps are
substantially aligned within a common line of alignment and that “[ejach
centroid 23 can be positioned about zero radians away from the common
line of alignment 210.” Spec. 10:14-15, 11:4-5, Fig. 4. In our view, the
Specification describes that a plane of each centroid is substantially aligned
with (i.e., about zero radians away from) the common line of alignment.
See, e.g., id. at Fig. 4. We find that the disclosure reasonably conveys to a
person of ordinary skill in the art that Appellants were in possession of the
claimed subject matter as of the filing date.
Thus, the rejection of claims 1, 2, and 4-19 under 35 U.S.C. § 112,
first paragraph, as failing to comply with the written description requirement
is not sustained.
Rejection II
The Examiner rejects claims 1, 2, and 4-19 as failing to comply with
the enablement requirement. Non-Final Act. 3—4. In particular, the
Examiner determines that Appellants’ “written description fails to disclose
how the location of the centroid of the surface of irregularities is tt/8 radians
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Application 13/537,896
away from the line of sight” and “how to calculate the angle from where the
line of sight is away from the surface of irregularities enabling an ordinary
artisan to build the package.” Id. at 4. The test for enablement is whether
Appellants’ disclosure is sufficient for one of ordinary skill in the art to
make and use the invention without undue experimentation. In re Wands,
858 F.2d 731, 737 (Fed Cir. 1988). The rejection states that Appellants’
disclosure does not identify how to calculate the angle of the centroid from
the line of sight or the common line of alignment. Non-Final Act. 4. The
rejection, however, fails to discuss the disclosure in terms of undue
experimentation or address any Wands factors.
The Examiner did not articulate sufficient findings or analysis to show
that a person of ordinary skill in the art would have been unable to make and
use the claimed invention without undue experimentation. See Wands, 858
F.2d at 737. As such, the Examiner has not met the initial burden to
establish a reasonable basis to question the enablement. In re Wright, 999
F.2d 1557, 1561-62 (Fed. Cir. 1993) (when rejecting a claim for lack of
enablement, the USPTO bears the initial burden of setting forth a reasonable
explanation as to why the scope of the claim is not adequately enabled by
the description provided in the Specification).
Accordingly, we do not sustain the Examiner’s rejection of claims 1,
2, and 4-19 under 35 U.S.C. § 112, first paragraph, as failing to comply with
the enablement requirement.
Rejection III
Claims 1, 2, and 4-19 stand rejected as being indefinite for failing to
particularly point out and distinctly claim the subject matter which is
regarded as the invention. Non-Final Act. 4-5. Claims, when read in light
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of the Specification, must “reasonably apprise those skilled in the art both of
the utilization and scope of the invention” using language “as precise as the
subject matter permits.” In re Packard, 751 F.3d 1307, 1313 (Fed. Cir.
2014). In determining whether a claim is definite under 35 U.S.C. § 112,
second paragraph, “[t]he USPTO, in examining an application, is obliged to
test the claims for reasonable precision according to [this principle].” Id.
The Examiner finds that the recitation in claim 1 that “when said
primary label face is aligned with a line of sight of an observer having her
eye level with said base exterior surface” is indefinite because “the primary
label face is not defined in relation to the container in the claim” and “[t]he
claim recites primary label face[,] but the primary label face does not include
a label.” Non-Final Act. 4-5.* * * 4
Appellants respond that “the primary label face is structurally related
to the container” in that “[cjlaim 1 states that the container has a primary
4 As to the limitations relating to the centroid’s relation to the line of sight
or the common line of alignment also identified by the Examiner in this
rejection (Non-Final Act. 5), we are not persuaded that these limitations
render the claims indefinite for similar reasons as discussed above in
connection with 35 U.S.C. § 112, first paragraph. As to the Examiner’s
additional statements with respect to claim 10 that “it is unclear how the
longitudinal axis (L) of the cap could be aligned with common line of
alignment” and “[i]t appears the longitudinal axis of the dosing cap is
perpendicular to the common line of alignment of the plurality of laundry
packages” {id.), we are not persuaded that the limitation in claim 10 is
indefinite. We agree with the Examiner that the longitudinal axis of each
dosing cap is perpendicular to the common line of alignment. See Spec. Fig.
4. We, however, do not read the claim as requiring the longitudinal axis of
each dosing cap being aligned with the common line of alignment as set
forth in the Examiner’s rejection, but rather that the longitudinal axis of each
dosing cap is aligned within the common line of alignment. See Spec.
10:14-15, Fig. 4.
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label face.” Appeal Br. 2. Appellants also state that page 3, line 30 to page
4, line 9 of the Specification “amply describes what the primary label face
is.” Id. The Examiner replies that “claim 1 does not specify the shape of the
container,” nor “a location of the primary label face” other than that it be on
the exterior surface of the container. Ans. 14-15; see also id. at 15 (“In case
the container is cylindrical, the question arises as to which exterior surface
of the container [is the primary label face] or where would be the primary
label face?”).
We agree with the Examiner that the claim does not require the
primary label face to have any particular structure relative to the rest of the
exterior surface of the container and/or to have a label attached thereto. In
addition, the Specification only describes that “[t]he primary label face 2 is
the part of the container exterior surface 111 that is presented to the
consumer when the product is on a shelf in a store”; “is the front of the
package”; and “includes the name of the product.” Spec. 3:30^1:3.
Accordingly, one of ordinary skill in the art does not know which portion of
a container is the primary label face to be aligned with a line of sight of an
observer, until the container is placed on a store shelf for presentation to a
consumer, and it is known which portion of the exterior surface (i) is
presented to the consumer, (ii) is the front of the package, and (iii) includes
the name of the product.
Consequently, one of ordinary skill in the art also does not know
where the region of surface irregularities must be positioned on the dosing
cap so as to be visible to a user when the primary label face is aligned with a
line of sight of an observer, until the container is placed on a store shelf for
presentation to a user so as to reveal what is the primary label face. Because
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it is unclear where the region of surface irregularities must be positioned on
the dosing cap to meet the language of the claim until the container is placed
on a store shelf for presentation to a user, the metes and bounds of the
claimed invention are not clear.
In other words, it is not apparent how one of ordinary skill in the art
would be able to determine whether a particular laundry detergent package
(e.g., a package comprising a cylindrical container, as recognized by the
Examiner) would be covered by claim 1. For example, we are unable to
determine with any certainty whether Maloney’s laundry detergent package,
once modified by Weiby so that only a portion of the base exterior of
Maloney’s dosing cap has surface irregularities, would have surface
irregularities that (i) are visible to an observer aligning his or her line of
sight with a primary label face and (ii) have a centroid positioned more than
about 7i/8 radians away from a line of sight that is aligned with the primary
label face. That is, although not disclosed as having a particular relationship
between the primary label face and the location of the centroid of the region
of surface irregularities, we cannot ascertain with certainty whether modified
Maloney inherently possesses surface irregularities positioned as claimed,
because it appears that any portion of an exterior of Maloney’s container 41
may be considered the primary label face, when the primary label face is not
claimed as having any particular structure and any portion of the exterior of
Maloney’s container could arbitrarily be selected as the front of the
container for presentation to the consumer on a store shelf and for inclusion
of the product name in accordance with the Specification.
We find the claims are indefinite because they do not reasonably
apprise those of skill in the art of the scope of the claimed invention.
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Accordingly, we sustain the rejection of claims 1, 2, and 4-19 under 35
U.S.C. § 112, second paragraph.
Rejections IV—X
We do not sustain the Examiner’s rejections of claims 1, 2, and 4-19
under 35 U.S.C. § 103(a). For the reasons discussed above, claims 1, 2, and
4-19 are indefinite. Before a proper review of these rejections can be
performed, the subject matter encompassed by the claims on appeal must be
reasonably understood without resort to speculation. Therefore, since the
claims fail to satisfy the requirements of 35 U.S.C. § 112, second paragraph,
we are constrained to reverse the prior art rejections because they necessarily
are based on speculative assumptions as to the scope of the claims. See In re
Steele, 305 F.2d 859, 862-63 (CCPA 1962) (holding that the Board erred in
affirming a rejection of indefinite claims because the rejection was based on
speculative assumptions as to the meaning of the claims). We emphasize,
however, that our decision in this regard is based solely on the indefmiteness
of the claimed subject matter, and does not reflect on the adequacy of the
prior art evidence applied in support of the rejections.
DECISION
The Examiner’s decision to reject claims 1, 2, and 4-19 under
35 U.S.C. § 112, first paragraph, as failing to comply with the written
description requirement is reversed.
The Examiner’s decision to reject claims 1, 2, and 4-19 under
35 U.S.C. § 112, first paragraph, as failing to comply with the enablement
requirement is reversed.
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The Examiner’s decision to reject claims 1, 2, and 4-19 under
35 U.S.C. § 112, second paragraph, as failing to particularly point out and
distinctly claim the subject matter which is regarded as the invention is
affirmed.
The Examiner’s decision to reject claims 1, 2, and 4-19 under
35 U.S.C. § 103(a) is reversed.
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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