Ex Parte Benedetti et al

Patent Trial and Appeal BoardAug 7, 2017

13379716 (P.T.A.B. Aug. 7, 2017)

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. 13/379,716 12/21/2011 Giovanni Benedetti 1018798-000623 2903 105718 7590 08/09/2017 SCA Hygiene Products AB c/o Buchanan Ingersoll & Rooney, PC 1737 King Street, Suite 500 Alexandria, VA 22314 EXAMINER RANDALL, JR., KELVIN L ART UNIT PAPER NUMBER 3651 NOTIFICATION DATE DELIVERY MODE 08/09/2017 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): ADIPDOCl@BIPC.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte GIOVANNI BENEDETTI, MALIN ANDERS SON, and BJORN LARS SON Appeal 2015-003787 Application 13/379,7161 Technology Center 3600 Before NEIL T. POWELL, JASON W. MELVIN, and SEAN P. O’HANLON, Administrative Patent Judges. MELVIN, Administrative Patent Judge. DECISION ON APPEAL This appeal arises under 35 U.S.C. § 134(a), from a Final Rejection of claims 1—4, 6, 8, 10, 11, and 16. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. 1 Appellants identify SCA Hygiene Products AB as the real party in interest. Appeal Br. 2. Appeal 2015-003787 Application 13/379,716 BACKGROUND The claims are directed to a wiping-material system and methods. Claim 1, reproduced below, is illustrative: 1. A wiping material system comprising a plurality of dispensers of different shapes and/or sizes, the dispensers each comprising at least a first and a second component, said first and second components being visible to a user, wherein said first component is of a first colour and said second component is of a second colour, said first and second colours being distinct from each other, wherein the colour of said first component and the colour of said second component are identical for all dispensers of said plurality of dispensers. Claims App. 1. REJECTION Appellants seek review of the rejection of claims 1—4, 6, 8, 10, 11, and 16 under pre-AIA 35 U.S.C. § 103(a) as unpatentable over Clark (US 2003/0071050 Al, pub. Apr. 17, 2003), Klofta (US 2006/0195357 Al, pub. Aug. 31, 2006), and Coffing (US 2006/0151345 Al, pub. July 13, 2006). Final Act. 4-6. DISCUSSION Claims 1—4, 6, 8, 10, and 11 Appellants argue claims 1—4, 6, and 8 as a group. Appeal Br. 5-13. We select claim 1 as representative; the other claims of the group stand or fall with claim 1. See 37 C.F.R. § 41.37(c)(l)(iv). The Examiner finds that that Clark teaches the claimed dispenser but does not teach a plurality of such dispensers. Final Act. 4. The Examiner 2 Appeal 2015-003787 Application 13/379,716 finds that Klofta teaches “a plurality of dispensers of different shapes and/or sizes” and determines that it would have been obvious to a skilled artisan to use that teaching of Klofta with the dispenser of Clark “so as to maximize space capacity of a duplication of parts.” Id. (citing Klofta Fig. 1). The Examiner finds that Coffmg teaches an article where the “first component is of a first color and said second component is of a second color, said first and second colors being distinct from each other” and determines that a skilled artisan had reason to combine that teaching with Clark and Klofta “so as to provide an aesthetically pleasing device.” Id. at 5. In the Answer, the Examiner explains further that Coffmg “teaches products . . . distinguishable by color for groups/teams.” Ans. 5. Appellants argue that “a system of dispensers according to Clark, would all be identical in size, even if dispensing differently sized products.” Appeal Br. 6; accord id. at 9 (“These dispensers would all have the same size”). But the Examiner finds that “Klofta teaches a plurality of dispensers of different shapes and/or sizes (see Fig. 1)” (Final Act. 4), and the rejection expressly relies on using that teaching to modify Clark’s teachings such that a plurality of dispensers would be of a variety of sizes. Thus, we do not agree with Appellants’ argument. Further, according to Appellants, “modifying a system of dispensers 10 of Clark to have different sized dispensers is contrary to Clark’s disclosure.” Appeal Br. 7. Thus, Appellants conclude, the Examiner lacks a sufficient reason for the combination used to reject the claims. Id. at 9. We do not agree. In our view, the Examiner’s stated reason has a rational underpinning—a plurality of dispensers is a “duplication of parts” and making some of those dispensers larger than others as needed would 3 Appeal 2015-003787 Application 13/379,716 “maximize space capacity” in the plurality of dispensers without unnecessarily oversizing dispensers that do not need to be as large. See Final Act. 4. Appellants assert that the Examiner’s reliance on a reason for the combination that does not appear “in the art” shows error in the rejection (Reply Br. 2), but there is no requirement that the art itself express the reason for the combination. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416-18 (2007). Appellants also draw a distinction between dispensing packages and dispensing individual sheets of products. Appeal Br. 9-10 (“The Examiner's rejection relies on using the dispenser 10 of Clark to dispense absorbent articles products packages 70, 80 and wipes products packages 10, 20 of Klofta.”); Reply Br. 3—4 (asserting the Examiner lacks a reason “why one skilled in the art would modify the dispensers 10 of Clark to dispense packages as opposed to individual sheets of products”). Appellants do not explain the argument sufficiently for us to understand how it bears on the claim language at issue or the teachings of the prior art. Thus, the argument fails to demonstrate error in the rejection. Regarding the Examiner’s use of Coffing, Appellants argue that using Coffmg’s colored panels would defeat the purpose of Klofta, which is to use visual indicators to differentiate different products. Appeal Br. 11-12. The Examiner, however, proposes to use only Klofta’s teaching of a variety of dispenser sizes (Final Act. 4), and Appellants do not argue that including Coffmg’s teachings would impair that aspect of Klofta. Thus, we see no basis on which to conclude that the Examiner’s combination is improper. Cf. In re Gordon, 733 F.2d 900, 902 (Fed. Cir. 1984) (reversing the 4 Appeal 2015-003787 Application 13/379,716 conclusion of obviousness because modifying a device would render that device inoperable). Finally, Appellants argue that Coffing is not analogous art to the claimed invention and, thus, cannot be used in an obviousness rejection. Appeal Br. 12. The Examiner responds that Coffing is “reasonably pertinent to the particular problem with which the [Ajpplicant was concerned.” Ans. 6 (citing In re Oetiker, 977 F.2d 1443 (Fed. Cir. 1992)). The Examiner also explains that Coffing “teaches products [that] are distinguishable by color for groups/teams.” Ans. 5. We agree with the Examiner that the problem addressed by the present application is how to make an item visually identifiable and that Coffing is reasonably pertinent to this problem. See Coffing 3 (“Players on a sports team traditionally purchase an equipment bag in the color(s) of their team. This promotes team solidarity and presents a unified presence of team support.”); see also id. ^ 12 (“various panel covers to vary the bag’s appearance”). Accordingly, we conclude that Coffing is available as prior art in an obviousness combination. Because Appellants have not demonstrated error in the Examiner’s rejection of claim 1, we sustain the rejection of claims 1—4, 6, and 8. For claims 10 and 11, Appellants rely on the same arguments made for claim 1. Appeal Br. 13. Accordingly, we also sustain the rejection of claims 10 and 11. Claim 16 Claim 16 depends from claim 1 and further recites that each of the “dispensers comprises a housing, the housing having a dispensing opening through which wiping material is dispensed without manipulating the 5 Appeal 2015-003787 Application 13/379,716 housing.” Claims App. 2. Appellants assert that in the combination applied by the Examiner, “each dispenser [would] still dispense [] individual products” and that “[dispensing at least the wipe products would require manipulating the housing.” Appeal Br. 14. Appellants provide no support for this assertion, which lacks sufficient explanation for why we should reach such a conclusion. Accordingly, Appellants have not demonstrated an error in the Examiner’s rejection of claim 16, and we therefore sustain the rejection. DECISION For the above reasons, the Examiner’s rejection of claims 1—4, 6, 8, 10, 11, and 16 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)(l)(iv). AFFIRMED 6