Ex Parte Bacon et al

Patent Trial and Appeal Board

Apr 19, 2016

13404460 (P.T.A.B. Apr. 19, 2016)

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.
13/404,460 02/24/2012 Jennifer Lea Bacon 64811649US01 7558
23556 7590 04/20/2016
KIMBERLY-CLARK WORLDWIDE, INC.
Patent Docketing
2300 Winchester Rd.
NEENAH, WI 54956
EXAMINER
WAY, JAMES R
ART UNIT PAPER NUMBER
3788
MAIL DATE DELIVERY MODE
04/20/2016 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
________________

Ex parte JENNIFER LEA BACON and
KRISTI JO BRYANT
________________

Appeal 2014-002895
Application 13/404,460
Technology Center 3700
________________

Before MICHAEL L. HOELTER, ANNETTE R. REIMERS, and
ERIC C. JESCHKE, Administrative Patent Judges.

HOELTER, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
This is a decision on appeal, under 35 U.S.C. § 134(a), from a final
rejection of claims 1–6 and 8–20. Br. 1. Claims 7 and 21 have been
canceled. See Amendment dated April 2, 2013. We have jurisdiction under
35 U.S.C. § 6(b). We AFFIRM.

THE CLAIMED SUBJECT MATTER
The disclosed subject matter is entitled “Attention-Directing
Packaging Window” and is directed to “a better means for immediately
communicating to a consumer the key aspects of an article to ensure that the
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consumer quickly finds the appropriate articles with minimal time spent
examining packages of articles in the store aisle.” Spec. Title, ¶ 3. Claims
1, 13, and 15 are independent. Claim 1 is illustrative of the claims on appeal
and is reproduced below:
1. A package for personal care articles, the package
comprising:
an interior space;
a plurality of individually-wrapped personal care articles
disposed in the interior space; and
a front panel including
a brand identifier;
a feature bar that identifies an aspect of the
personal care articles, and
a window through the front panel, the window
disposed vertically beneath the brand identifier and
having a first end and a second end, wherein the window
tapers from the second end to the first end, and wherein
the second end is adjacent the feature bar.

REFERENCES RELIED ON BY THE EXAMINER
Spaulding US 5,326,575 July 5, 1994
Zander US 2005/0145523 A1 July 7, 2005
Messerschmidt US 2008/0000793 A1 Jan. 3, 2008
Burgdorf US 2008/0110782 A1 May 15, 2008

THE REJECTIONS ON APPEAL
Claims 1, 2, 4–6, and 8–13 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Messerschmidt and Spaulding.
Claims 3 and 14 are rejected under 35 U.S.C. § 103(a) as unpatentable
over Messerschmidt, Spaulding, and Zander.
Claims 15–19 are rejected under 35 U.S.C. § 103(a) as unpatentable
over Burgdorf, Messerschmidt, and Spaulding.
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Claim 20 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Burgdorf, Messerschmidt, Spaulding, and Zander.
ANALYSIS
The rejection of claims 1, 2, 4–6, and 8–13
as unpatentable over Messerschmidt and Spaulding
Appellants argue claims 1, 2, 4–6, and 8–13 together. Br. 3–5. We
select independent claim 1 for review with claims 2, 4–6, and 8–13 standing
or falling with claim 1. See 37 C.F.R. § 41.37(c)(1)(iv).
The Examiner primarily relies on Messerschmidt for disclosing the
limitations of claim 1, but relies on Spaulding for disclosing “a brand
identifier (text, Spaulding: Col. 2, Ln. 56–58), wherein the window is
disposed vertically beneath the brand identifier (Spaulding: Col. 2, Ln. 42–
43).” Final Act. 2–3; see also Ans. 3.
“Appellants respectfully submit that Messerschmidt fails to teach or
suggest each and every element of the claims of the current Application and,
therefore, fails to render the claims of the current Application obvious.” Br.
4. Appellants’ contention focusing solely on Messerschmidt is not
persuasive because we are instructed, “[n]on-obviousness cannot be
established by attacking references individually where the rejection is based
upon the teachings of a combination of references.” In re Merck & Co., 800
F.2d 1091, 1097 (Fed. Cir. 1986). Hence, Appellants’ argument that
Messerschmidt fails to teach each and every element of claim 1 is not
persuasive of Examiner error.
Appellants further contend that contrary to the Examiner’s findings,
Spaulding fails to teach “1) a brand identifier and 2) a window disposed
vertically beneath the brand identifier.” Br. 4. The Examiner acknowledges
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that “[w]hile Spaulding doesn’t explicitly identify the text as being a brand
identifier, it is explicitly stated that the text, ‘correspond[s] and relate[s] to
the contents so as to advise the viewer or shopper as to the contents’, which
is a large part of what a brand identifier does.” Final Act. 3 (referencing
Spaulding 2:42–43 and 2:56–58); see also Spaulding Fig. 1 and Ans. 3.
Regarding whether Spaulding’s “text 20” is indeed a “brand
identifier” as claimed,1 Appellants contend, “Spaulding clearly states that the
text relates to the contents of the package.” Br. 5. In other words,
Appellants contend, “Spaulding fails to teach, disclose, or suggest that the
text relates to the brand of the product” and as such, the combination of
Messerschmidt and Spaulding “fail to teach, disclose or suggest each and
every element” of claim 1. Br. 5.
We agree that the cited passage in Spaulding describes text 20 (in
conjunctions with graphics 18) as corresponding and relating “to the
contents so as to advise the viewer or shopper as to [the] contents.”
Spaulding 2:56–58. The Examiner, as indicated supra, references this
passage directed to advising a shopper as to the contents therein contained
stating that this “is a large part of what a brand identifier does.” Final Act.
3; see also Ans. 3. Appellants do not indicate how the Examiner’s reliance
on Spaulding’s text 20 fails to inform a consumer as to what a package
contains, or that this consumer awareness is not “a large part of what a brand
identifier does.”
We further note the Examiner’s additional reliance on In re Ngai, 367
F.3d 1336, 1339 (Fed. Cir. 2004) to the effect that, as stated by the

1 Appellants’ Specification states that a consumer can “see the brand of
articles 10 in the brand identifier 120, 220.” Spec. ¶ 45.
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Examiner, “where the only difference between a prior art product and a
claimed product is printed matter that is not functionally related to the
product, the content of the printed matter will not distinguish the claimed
product from the prior art.” Final Act. 3; Ans. 3. According to the
Examiner, “[u]nder this provision the use of the indicia of the brand
identifier and the feature bar cannot be given patentable weight as they are
not providing a new and unobvious functional relationship between the
printed matter and the substrate.” Ans. 3.
Appellants do not indicate how or why the Examiner is incorrect in
ascertaining that the indicia of the brand identifier “cannot be given
patentable weight” because such indicia does not provide “a new and
unobvious functional relationship between the printed matter and the
substrate.” Ans. 3.
Accordingly, and based on the record presented, we are not persuaded
of Examiner error. We sustain the Examiner’s rejection of claims 1, 2, 4–6,
and 8–13.
The rejection of claims 3 and 14
as unpatentable over Messerschmidt, Spaulding, and Zander
Claims 3 and 14 depend from claims 2 and 13, respectively.
Appellants argue claims 3 and 14 together. We select claim 3 for review
with claim 14 standing or falling with claim 3.
Appellants contend, “Zander fails to correct the deficiencies of
Messerschmidt and Spaulding.” Br. 5. Appellants do not explain how or
why the Examiner is incorrect in relying on the additional teachings of
Zander for disclosing the additional limitation of “multiple individually-
wrapped personal care articles” or that they “comprise at least two colors.”
Final Act. 7 (referencing Zander ¶ 6). Furthermore, our reviewing court has
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stated that the Board reasonably interprets 37 C.F.R. § 41.37 to require more
substantive arguments in an appeal brief than a mere recitation of the claim
elements and a naked assertion that the corresponding elements were not
found in the prior art (see In re Lovin, 652 F.3d 1349, 1357 (Fed. Cir.
2011)). Accordingly, and based on the record presented, we are not
persuaded of Examiner error. We sustain the Examiner’s rejection of claims
3 and 14.
The rejection of claims 15–19
as unpatentable over Burgdorf, Messerschmidt, and Spaulding
Appellants argue claims 15–19 together. We select independent claim
15 for review with dependent claims 16–19 standing or falling with claim
15. Appellants repeat the contention discussed supra with respect to claim
1—that “Spaulding discloses ‘text 20’ which ‘correspond and relate to the
contents so as to advise the viewer or shopper as to the contents.” Br. 7
(referencing Spaulding 2:56–58). Appellants again contend that Spaulding
fails to teach “that the text relates to the brand of the product” and that
consequently, the cited combination fails “to render the currently pending
claims obvious.” Br. 7.
In responding to Appellants’ contention, the Examiner again discusses
Spaulding’s text 20 and that it is used to advise the viewer of the contents of
the package “which is the purpose of a brand identifier.” Ans. 4 (referencing
Spaulding 2:56–58). The Examiner again references Ngai to the effect that
indicia of the brand identifier is not given patentable weight because such
indicia does not provide “a new and unobvious functional relationship
between the printed matter and the substrate.” Ans. 4.
Accordingly, and based on the record presented, we are not persuaded
of Examiner error. We sustain the Examiner’s rejection of claims 15–19.
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The rejection of claim 20
as unpatentable over Burgdorf, Messerschmidt, Spaulding, and Zander
Claim 20 depends from claim 15 and includes, among other
limitations, the additional limitation of “multiple individually-wrapped
disposable personal care articles comprising at least two colors.” The
Examiner relies on Zander for this teaching. Final Act. 11. As above,
Appellants contend, “Zander fails to correct the deficiencies of Burgdorf,
Messerschmidt and Spaulding.” Br. 7. Appellants do not explain how or
why this might be the case, only that it is; and as such, Appellants contend
that the cited combination fails “to render the claim of the current
Application obvious.” Br. 7.
Appellants’ contention is not persuasive for reasons previously
discussed. See also Ans. 4. We sustain the Examiner’s rejection of claim
20.

DECISION
The Examiner’s rejections of claims 1–6 and 8–20 are 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)(1)(iv).

AFFIRMED