Dais, Brian C. et al.

Patent Trials and Appeals BoardAug 3, 2020

2018001746 (P.T.A.B. Aug. 3, 2020)

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. 13/631,580 09/28/2012 Brian C. Dais J-5797 8071 28165 7590 08/03/2020 S.C. JOHNSON & SON, INC. 1525 HOWE STREET RACINE, WI 53403-2236 EXAMINER ATTEL, NINA KAY ART UNIT PAPER NUMBER 3734 NOTIFICATION DATE DELIVERY MODE 08/03/2020 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): mjzolnow@scj.com selechne@scj.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte BRIAN C. DAIS, IMTIAZ A. MUSALIAR, BUNLIM LY, JONATHAN DAVID HORN, PAMELA J. WEISENBERGER, JOSE PORCHIA, CHARLES P. ALTHOFF, and ERICA EDEN COHEN ____________ Appeal 2018-001746 Application 13/631,580 Technology Center 3700 ____________ Before MICHAEL L. HOELTER, JEREMY M. PLENZLER, and BRANDON J. WARNER, Administrative Patent Judges. WARNER, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to reject claims 1–5, 17–21, and 23–28. Appeal Br. 1. We have jurisdiction over the appeal under 35 U.S.C. § 6(b). An oral hearing, scheduled for October 17, 2019, was waived. We AFFIRM. 1 We use the word “Appellant” to refer to the “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies the real party in interest as S.C. Johnson & Son, Inc. Appeal Br. 3. Appeal 2018-001746 Application 13/631,580 2 CLAIMED SUBJECT MATTER Appellant’s disclosed invention “relates to a storage bag,” and, more specifically, “relates to a storage bag with features that facilitate sealing and unsealing the bag, as well as a storage bag that includes features for distinguishing the bag from other storage bags.” Spec. ¶ 1. Claim 1, reproduced below, is the sole independent claim and is representative of the subject matter on appeal. 1. A storage bag comprising: a first side surface; a second side surface connected to the first side surface so as to form an interior of the bag with an opening to the interior; a first closure profile attached to the first side surface and positioned adjacent to the opening of the bag, the first closure profile having a top edge and including an interlocking member, the first closure profile forming a lip between the interlocking member and the top edge of the first closure profile, with the lip being a color on both an inner surface and an outer surface of the lip, the color having defined a*, b*, and L* values that are indicative of a particular color having a first shade; and a second closure profile attached to the second side surface and positioned adjacent to the opening of the bag, the second closure profile having a top edge and including an interlocking member, the second closure profile forming a lip between the interlocking member and the top edge of the second closure profile, such that at least a first portion of the lip of the second closure profile is not overlapped by the lip of the first closure profile, and at least a second portion of the lip of the second closure profile is overlapped by the lip of the first closure profile, with the lip of the second closure profile being a color on both an inner surface and an outer surface of the lip, the color having defined a*, b*, and L* values that are indicative of a second shade of the particular color, the second Appeal 2018-001746 Application 13/631,580 3 shade being a different shade than the first shade, with the defined L* value of the color of the lip of the second closure profile differing from the defined L* value of the color of the lip of the first closure profile, such that the lip of the first closure profile is darker than the lip of the second closure profile and the lip of the second closure profile is visually distinguishable from the lip of the first closure profile due to the difference in the defined L* value of the color of the lip of the first closure profile and the defined L* value of the color of the lip of the second closure profile, wherein, when the bag is viewed towards at least one of the first side surface and the second side surface, the first portion of the lip of the second closure profile that is not overlapped by the lip of the first closure profile appears as the second shade of the particular color, and the second portion of the lip of the second closure profile that is overlapped by the lip of the first closure profile appears as a third shade of the particular color. EVIDENCE The Examiner relies on the following evidence in rejecting the claims on appeal: Ericson US 3,508,473 Apr. 28, 1970 Grimes US 3,762,542 Oct. 2, 1973 Ishizaki US 2004/0078940 A1 Apr. 29, 2004 Ballard US 2008/0105679 A1 May 8, 2008 REJECTIONS The following rejections are before us for review: I. Claims 1–5, 17, 21, and 23–28 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Ballard and Ishizaki. Non-Final Act. 3–9. Appeal 2018-001746 Application 13/631,580 4 II. Claims 18–20 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Ballard, Ishizaki, and Ericson or Grimes. Id. at 10. ANALYSIS Rejection I – Claims 1–5, 17, 21, and 23–28 as unpatentable over Ballard and Ishizaki Appellant presents arguments against the rejection of independent claim 1, and expressly states that all the dependent claims will stand or fall based on the arguments for independent claim 1. See Appeal Br. 11, 15–31. We select claim 1 as representative of the issues that Appellant presents in the appeal of this rejection, with claims 2–5, 17, 21, and 23–28 standing or falling therewith. See 37 C.F.R. § 41.37(c)(1)(iv). The Examiner determines that a combination of teachings from Ballard and Ishizaki renders obvious the subject matter recited in claim 1. See Non-Final Act. 3–7. Appellant argues that the Examiner’s conclusion is in error, premised on an assertion that the coloring of the lips of the closure profiles as claimed is patentably distinct from the coloring of the lips of the closure profiles in the cited prior art. See Appeal Br. 16–30; Reply Br. 5–13. After careful consideration of the record before us, Appellant’s argument does not apprise us of error in the Examiner’s conclusion of obviousness. Regarding the disputed feature of the specific coloring of the lips of the closure profiles of the storage bag, Appellant repeatedly asserts that neither Ballard nor Ishizaki discloses the lips being colors (defined by a*, b*, and L* values) that are different shades of the same particular color (having different L* values) as recited in the claim. See Appeal Br. 17–26; Appeal 2018-001746 Application 13/631,580 5 Reply Br. 5–10. But the rejection is not based on any express disclosure of lips being different shades of the same color, as the Examiner acknowledges that neither reference discloses that specific lip coloring. See Non-Final Act. 4–5. Rather, the Examiner’s position is that—based on teachings from both Ballard and Ishizaki to color the lips so as to be distinct and distinguishable from one another—it would have been obvious to a person having ordinary skill in the art to specifically color the lips of the closure profiles of the storage bag in different shades, as recited in the claim. See Non-Final Act. 5–7. In particular, the Examiner is correct that Ballard teaches providing “a distinct appearance on each of the lips,” such as by making the lips distinguishable with contrasting colors. Non-Final Act. 4; see also Ballard ¶ 14. Likewise, the Examiner is correct that Ishizaki similarly teaches “providing lips of a bag with distinct and distinguishable appearances.” Non-Final Act. 5 (citing Ishizaki ¶ 20 (which notes that the lips can be “colored differently,” and that “[a]ny color combination is possible as long as the colors are distinguishable from each other”)). From these teachings, the Examiner determines that it would have been obvious to a person having ordinary skill in the art to color the lips of the closure profiles of Ballard with different shades as specifically recited in the claim because, “as long as the colors and/or shades [chosen] are visually distinct and distinguishable,” storage bags with variously colored or shaded lips “[would] not function any differently or have any distinct advantages over each other.” Non-Final Act. 6; see id. at 6–7. In this regard, we agree with the Examiner’s reasoned conclusion that either the coloring of the cited art (any color combination) or the specific Appeal 2018-001746 Application 13/631,580 6 coloring recited (different shades of the same particular color) would accomplish the same purpose—namely, having lips that are “visually distinguishable from” each other as claimed. Appeal Br. 33–34 (Claims App.). Further, we note that the Examiner’s conclusion is in accord with Appellant’s disclosure, which indicates that using either different colors (as in the cited art) or different shades of the same color (as recited in the claim) would be obvious variants, as either of these alternatives would be suitable to provide an aid for a user to distinguish between the first and second lips. See, e.g., Spec. ¶ 63. Accordingly, Appellant’s arguments do not identify error in the Examiner’s ultimate conclusion that the claimed subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. See 35 U.S.C. § 103(a). We discern no shortcoming in the Examiner’s reasoning, as discussed above, that it would have been obvious to a person having ordinary skill in the art to choose to color the lips either as different colors or as different shades of the same color (and that such a choice is within the realm of ordinary skill and would not produce any unexpected result in the recited storage bag). Further, Appellant does not explain how such a choice in the color used for the lips would have yielded unpredictable results or somehow been beyond the level of ordinary skill in the art. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007); Ans. 7–9. In this regard, Appellant’s assertions against the colors used in Ballard and Ishizaki individually (see Appeal Br. 22–26) neglect to adequately consider that “[a] person of ordinary skill is also a person of ordinary creativity, not an automaton” Appeal 2018-001746 Application 13/631,580 7 (KSR, 550 U.S. at 421). The analysis under 35 U.S.C. § 103(a) presumes not only common sense, but also skill in the art. See In re Sovish, 769 F.2d 738, 743 (Fed. Cir. 1985). After careful consideration of the record before us, Appellant’s arguments do not apprise us of error in the Examiner’s factual findings from Ballard or Ishizaki, which are supported by a preponderance of the evidence, or the Examiner’s reasonable conclusion of obviousness, which is rationally articulated based on prior art teachings. In short, we sustain the Examiner’s rejection based on the reasoned positions set forth therein and in light of the Examiner’s thorough responses to Appellant’s arguments. See Non-Final Act. 3–7; Ans. 7–23. We note that any other arguments not specifically addressed in detail herein have been thoroughly considered by the panel but are not persuasive for the reasons well expressed in the Examiner’s Answer. In conclusion, after careful consideration of the evidence of record and for the foregoing reasons, Appellant’s arguments do not apprise us of error in the Examiner’s findings or reasoning in support of the conclusion of obviousness. Accordingly, we sustain the rejection of independent claim 1, and claims 2–5, 17, 21, and 23–28 falling therewith, under 35 U.S.C. § 103(a) as being unpatentable over Ballard and Ishizaki. Rejection II – Claims 18–20 as unpatentable over Ballard, Ishizaki, and Ericson or Grimes With respect to Rejection II, Appellant relies solely on the argument made previously with respect to Rejection I of base claim 1. Appeal Br. 11, 29–31. Thus, for the same reasons explained supra, Appellant’s argument is Appeal 2018-001746 Application 13/631,580 8 not persuasive; hence, we sustain the rejection of claims 18–20 under 35 U.S.C. § 103 as being unpatentable over Ballard, Ishizaki, and Ericson or Grimes. DECISION We AFFIRM the Examiner’s decision rejecting claims 1–5, 17, 21, and 23–28 under 35 U.S.C. § 103(a) as being unpatentable over Ballard and Ishizaki. We AFFIRM the Examiner’s decision rejecting claims 18–20 under 35 U.S.C. § 103(a) as being unpatentable over Ballard, Ishizaki, and Ericson or Grimes. 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). CONCLUSION In summary: Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1–5, 17, 21, 23–28 103(a) Ballard, Ishizaki 1–5, 17, 21, 23–28 18–20 103(a) Ballard, Ishizaki, Ericson or Grimes 18–20 Overall Outcome 1–5, 17–21, 23–28 AFFIRMED