Ex Parte Weintraub et al

Patent Trial and Appeal Board

Jan 22, 2018

14305867 (P.T.A.B. Jan. 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.
14/305,867 06/16/2014 Gary D. Weintraub J-5952A (51009.02483) 1798
28165 7590
S.C. JOHNSON & SON, INC.
1525 HOWE STREET
RACINE, WI53403-2236
EXAMINER
GRABOWSKI, KYLE ROBERT
ART UNIT PAPER NUMBER
3638
NOTIFICATION DATE DELIVERY MODE
01/24/2018 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):
F074168@scj.com
selechne @ scj. com
mjzolnow @ scj .com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte GARY D. WEINTRAUB and LYNN TEMPLETON
Appeal 2017-001931
Application 14/305,867
Technology Center 3700
Before JOHN C. KERINS, EDWARD A. BROWN, and
LYNNE H. BROWNE, Administrative Patent Judges.
BROWN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Gary D. Weintraub and Lynn Templeton (Appellants) appeal under 35
U.S.C. § 134(a) from the Examiner’s decision rejecting claims 1—20. We
have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
Appeal 2017-001931
Application 14/305,867
CLAIMED SUBJECT MATTER
Claims 1,11, and 18 are independent. Claim 1, reproduced below,
illustrates the claimed subject matter:
1. A visual cue system associated with a plurality of
consumer product packages, comprising:
a first visual cue having at least a first symbol and first text
associated therewith and being affixed to a first consumer
product package, wherein a first product therein is adapted to
perform a first function;
a second visual cue having at least a second symbol and
second text associated therewith and being affixed to a second
consumer product package, wherein a second product therein is
adapted to perform a second, different function; and
a regimen key disposed on at least one of the first or
second consumer product packages,
wherein the first and second consumer product packages
are different.
REJECTIONS
The Final Action includes the following rejections:
I. Claims 1, 5—10, 16, 17, and 20 stand rejected under 35 U.S.C.
§ 102(b) as anticipated by Cole (US 2005/0065492 Al, published Mar. 24,
2005).
II. Claims 2-4, 11—15, and 18—20 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over Cole.
ANALYSIS
Rejection I—Claims 1, 5—10, 16, 17, and 20
The Examiner finds that Cole discloses a visual cue system associated
with a plurality of consumer product packages, comprising: a first visual cue
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having a first symbol and first text (the words “very light”) associated
therewith and being affixed to a first consumer product package; a second
visual cue having at least a second symbol and second text (the word “light”)
associated therewith and being affixed to a second consumer product
package; and a regimen key disposed on at least one of the first or second
consumer product packages. Final Act. 2 (citing Cole, Fig. 1). The
Examiner also finds Cole discloses that the first and second consumer
product packages are different. Id. (citing Cole, Fig. 2).
The Examiner construes the claim limitations “wherein a first product
[within the first consumer product package] is adapted to perform a first
function,” and “wherein a second product [within the second consumer
product package] is adapted to perform a second, different function,” as
intended use limitations. Id. According to the Examiner, “‘adapted to
perform different functions’ does not constitute any particular structural
difference.’” Ans. 5. Regardless, the Examiner finds, Cole’s different
products (different absorbency pads having different sizes and absorbencies)
are capable of being used for different functions. Id.
Appellants contend that the disputed limitations are not intended use
limitations. Appeal Br. 8—9. Appellants also contend that Cole does not
disclose a second product adapted to perform a different function than a first
product {id. at 6); rather, Cole’s products perform the same function of
absorption {id. at 7 (citing Cole ^fl[ 4, 26—28)).
Appellants contend that Cole does not disclose a “regimen key,” as
claimed. Id. at 9-10. Appellants note that the Specification defines a “key.”
Appeal Br. 9—10; see Spec. 148. The Specification states, “‘[k]ey’ as used
herein, relates to a guide, whether provided in printed form on a consumer
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product or package containing a consumer product. . . that identifies at least
two consumer products that are associated with one another in a regimen.'1'’
Spec. 144 (emphasis added). Appellants assert that, based on this definition
of “key,” “a regimen key is a guide that identifies at least two consumer
products that are associated with one another in a regimen.” Id. at 10. The
Specification defines a “regimen” as “at least two distinct consumer products
that are used together during an activity or task engaged in by a user of those
products to accomplish a desired outcome or to enhance a desired outcome
of the activity or task.” Id. 148 (emphasis added).
The recitation of the term “regimen key” in claim 1, as construed in
light of the definitions of the terms “key” and “regimen” in the
Specification, makes clear that the claimed first and second products are
adapted to perform different functions from each other because they are
“distinct consumer products” used together in a regimen “to accomplish a
desired outcome or to enhance a desired outcome of the activity or task.” In
response to Appellants’ contention that Cole does not disclose a regimen
key, the Examiner states, “/a]ll arguments are drawn to details of the
regimen in the Specification (not claimed) or drawn to Cole not disclosing a
‘regimen’ among the products. Again, intended use is being argued to
differentiate a product claim.” Ans. 5 (emphasis added).
“[T]he PTO must give claims their broadest reasonable construction
consistent with the specification. Therefore, we look to the specification to
see if it provides a definition for claim terms, but otherwise apply a broad
interpretation.” In re ICON Health & Fitness, Inc., 496 F.3d 1374, 1379
(Fed. Cir. 2007) (internal citation omitted). “[0]ur cases recognize that the
specification may reveal a special definition given to a claim term by the
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Application 14/305,867
patentee that differs from the meaning it would otherwise possess. In such
cases, the inventor’s lexicography governs!'’ Phillips v. AWH Corp., 415
F.3d 1303, 1316 (Fed. Cir. 2005) (emphasis added; citation omitted). The
Examiner appears to disregard the definitions of “regimen” and “key.”
There is no requirement that these definitions be explicitly recited in the
claims for them to govern construction of the term “regimen key.”
We are persuaded that Cole does not disclose a second product
adapted to perform a different function than that of a first product, as
claimed. Appeal Br. 6—7. Cole’s products perform the same function, that
is, absorption. Cole Tflf 4, 26—28. Because Cole’s products are designed for
absorption, they are used as alternatives rather than together in a regimen.
Further, the Examiner does not explain what elements shown in Figure 1 of
Cole are considered to be “a regimen key disposed on both packages.” Final
Act. 2. The Examiner’s findings do not establish by a preponderance of the
evidence that Cole discloses a visual cue system as claimed.
For these reasons, we do not sustain the rejection of claim 1, or of
claims 5—10 depending therefrom, as anticipated by Cole. Claims 16 and 17
depend from claim 11, and claim 20 depends from claim 18. As claims 11
and 18 are not rejected under this ground, we do not sustain the rejection of
dependent claims 16, 17, and 20 as anticipated by Cole.
Rejection II—Claims 2—4, 11—15, and 18—20
Claims 2—4
The Examiner’s reasoning set forth in the rejection of dependent
claims 2—4 does not cure the deficiencies in the rejection of claim 1. Final
Act. 4. Thus, we do not sustain the rejection of claims 2-4 as unpatentable
over Cole.
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Claims 11—15 and 18—20
Regarding claim 11, the Examiner finds that Cole discloses most of
the claimed limitations, but does not disclose products that are adapted for
attacking bugs, controlling bugs, or preventing bugs, or are designed to be
used together as part of a pest management regimen. Final Act. 4—5. The
Examiner finds, however, that paragraph 6 of the Specification discloses that
products adapted to attack bugs, control bugs, and prevent bugs are known,
but “may not be known to be used together.” Final Act. 4—5. The Examiner
concludes that it would have been obvious to utilize the visual cue system of
Cole for pest control products to yield predictable results of a visual cue for
identifying similar products or for distinguishing between different products.
Id. at 5; see also Ans. 5.
Claim 11 recites “a first consumer product package having a first
product therein adapted for attacking bugs having a first visual cue
thereon,” ‘a second consumer product package having a second product
therein adapted for controlling bugs having a second visual cue thereon,”
and “a third consumer product package having a third product therein
adapted for preventing bugs having a third visual cue thereon,” “wherein the
first, second, and third products are different.” “[T]he phrase ‘adapted to’ is
frequently used to mean ‘made to,’ ‘designed to,’ or ‘configured to,”’
“[although the phrase can also mean ‘capable of or ‘suitable for.’” In re
Giannelli, 739 F.3d 1375, 1379 (Fed. Cir. 2014) (quoting Aspex Eyewear,
Inc. v. Marchon Eyewear, Inc., 672 F.3d 1335, 1349 (Fed. Cir. 2012). Here,
the similar term “adapted for” in claim 11 has the narrower meaning, viz.,
that the claimed first, second, and third products are made or designed to
attack bugs, control bugs, and prevent bugs, respectively. The Specification
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supports this construction, describing that the tasks of a pest management
regimen can comprise attacking, controlling, and preventing pests, such as
insects. Spec. 145. “[A]attacking” may be effected by an aerosol and may
kill or otherwise knockdown bugs,” “[controlling” may be accomplished by
a product directed to a surface or other substrate that works over a period of
time,” and “[preventing” may be effected through utilization of pest traps or
baits.” Id. This description makes clear that “attacking,” “controlling,” and
“preventing” bugs are different functions, which are provided by different
products respectively made or designed to achieve one of the functions.
The Examiner does not provide an adequate reason with a rational
underpinning to combine the different first, second, and third products
together in a pest management regimen. It is insufficient that products for
attacking bugs, products for controlling bugs, and products for preventing
bugs are known individually.
Cole provides no teaching or suggestion supporting the proposed
modification of the products, as described at paragraph 6 of Appellants’
Specification, to utilize a visual cue system for pest control. Cole’s “visual
cues” are used with products having the same function and, as such, are not
“associated with each other visually to provide an indication that the first,
second, and third consumer product packages are designed to be used
together as part of the pest management regimen,” as recited in claim 11.
Appeal Br. 19 (Claims App. (emphasis added)). Thus, we do not sustain the
rejection of claims 11, or of claims 12—15 depending therefrom, as
unpatentable over Cole.
Claim 18 recites a method for providing consumer product packages
associated with a regimen. In rejecting claim 18, the Examiner relies on the
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same findings and reasoning as for claim 11. Final Act. 4—5. We do not
sustain the rejection of claim 18, or of claims 19 and 20 depending
therefrom, for reasons discussed for claim 11, as well as for claim 1.
DECISION
We reverse the rejections of claims 1—20.
REVERSED
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