Ex Parte Biggs et al

Patent Trial and Appeal Board

May 31, 2017

13562984 (P.T.A.B. May. 31, 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.
13/562,984 07/31/2012 David Glen Biggs 64807701US01 9393
23556 7590 05/31/2017
KIMBERLY-CLARK WORLDWIDE, INC.
Patent Docketing
2300 Winchester Rd.
NEENAH, WI 54956
EXAMINER
PERREAULT, ANDREW D
ART UNIT PAPER NUMBER
3788
MAIL DATE DELIVERY MODE
05/31/2017 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 DAVID GLEN BIGGS, JENNIFER LEA BACON,
AKRIT MALIK and SUSAN MARY OATES
________________

Appeal 2016-001001
Application 13/562,984
Technology Center 3700
________________

Before STEVEN D.A. McCARTHY, JILL D. HILL and
NATHAN A. ENGELS, Administrative Patent Judges.

McCARTHY, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE 1
The Appellants1 appeal under 35 U.S.C. § 134(a) from the Examiner’s 2
decision finally rejecting claims 1–20. We have jurisdiction under 35 U.S.C. 3
§ 6(b). 4
We sustain the rejection claims 1–20 under pre-AIA 35 U.S.C. 5
§ 103(a), as being unpatentable over either Betts (US 2009/0266733 A1, 6
publ. Oct. 29, 2009) or Benson (US 2011/0253578 A1, publ. Oct. 20, 2011). 7
We do not sustain the rejection of the claims under pre-AIA 35 U.S.C. 8
9

1 The Appellants identify the real party in interest as Kimberly-Clark
Worldwide, Inc.
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§ 112, first paragraph, for lack of enablement; and under pre-AIA 35 U.S.C. 1
§ 112, second paragraph, as indefinite. 2
3
THE CLAIMED SUBJECT MATTER 4
The Appellants’ Specification teaches that product packaging “can 5
provide navigational cues to assist consumers in finding their products 6
quickly and easily.” (Spec., para. 1). Addressing this potential, the 7
Specification says that it “provides packaging graphics that make navigation 8
easier by selectively incorporating contrasting packaging graphics. As used 9
herein, the term ‘contrast’ means to differ in pattern complexity value, the 10
number of colors, and/or color intensity.” (Spec., para. 15). 11
Packaging in accordance with the claimed subject matter includes a 12
display face 14 displaying a focal region and a pointer region. (See Spec., 13
paras. 27 & 29). The focal region may include branding and navigation 14
information. The pointer region is visually more complex than the focal 15
region. (See Spec., para. 29). The Specification suggests that the visual 16
complexity of the pointer region may draw the consumer’s attention to the 17
visually simpler focal region, as well as to the branding and navigation 18
information displayed in the focal region. (See Spec., para. 30). In addition, 19
the pointing region has a portion that acts as a pointer towards the focal 20
region, that is, a portion that functions to point or guide the consumer’s 21
attention toward the focal region. (See Spec., paras. 16 & 31). 22
The Specification provides a formula for calculating a “pattern 23
complexity value” (“PCV”) that represents the complexity of the shape of a 24
region: 25
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PCV ≡ (Area/Perimeter × Convexity/Fullness Ratio) / Area Fraction, 1
where the “Area” is the area of the region; the “Perimeter” is the perimeter 2
of the region; the “Convexity” is the ratio of the convex perimeter divided 3
by the perimeter; and the “Fullness Ratio” is the square root of the area 4
divided by the convex area. (See Spec., paras. 46 & 47). The parameters 5
“Area,” “Perimeter” and “Area Fraction” are obtainable by measurement of 6
an image of the region under analysis, using a commercially available 7
software package bearing the identifier QWIN Pro. (See generally Spec., 8
paras. 38, 39 & 45). Page 13 of the Specification provides a routine for 9
analyzing the image to determine the convex area and the convex perimeter.2 10
The PCV as defined in the Specification will have units of linear measure, 11
such as millimeters, and will decrease with increasing complexity of the 12
shape of the region under analysis. (See Spec, paras. 47 & 49). 13
With specific reference to the subject matter of claims 5, 16 and 19, 14
the Specification teaches that “[a]nother way of creating visual contrast 15
between the various regions is by utilizing different print colors having 16
different L* values in the pointer region as compared to the focal region. . . . 17
The L* scale ranges from 0 (black) to 100 (white).” (Spec., para. 65). The 18
parameter “L*” as used here appears to correspond to luminosity, a term of 19
art in the computer graphics field. The Specification formally defines 20
“luminosity” as “the degree of lightness (paleness) or darkness in a color.” 21
(Spec., para. 23). 22

2 Although we do not rely on the fact, we note that the parameter names
“convex area” and “convex perimeter,” as used in paragraph 46 of the
Specification, would have suggested that these parameters represented the
area and perimeter, respectively, of a convex hull of the shape of the region
under analysis.
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Claims 1, 12, 13 and 20 are independent. Claim 1 is illustrative: 1
1. A package comprising: 2
an outer structure having at least one display face; 3
the display face having a pointer region and a focal 4
region, wherein the pointer region has a pointer pattern having a 5
pointer pattern complexity value and the focal region has a focal 6
pattern having a focal pattern complexity value, wherein the 7
difference between the pointer pattern complexity value and the 8
focal pattern complexity value is at least 3 for measurements in 9
millimeters, and 10
wherein a portion of the pointer region points toward the 11
focal region. 12
13
ISSUES 14
The Appellants argue claims 1–20 as a group for purposes of each of 15
the rejections on appeal. (See Br. 3, 6, 7 & 10). Claim 1 is representative 16
for purposes of the rejection under § 103(a). 17
The issues in this appeal are: 18
First, are the limitations: “wherein the difference between the pointer 19
pattern complexity value and the focal pattern complexity value is at least 3 20
for measurements in millimeters,” as used in claims 1 and 13; “wherein the 21
difference between the pointer pattern complexity value and the focal region 22
complexity value is at least 3 for measurements in millimeters,” as used in 23
claim 12; and “wherein the difference between the pointer pattern 24
complexity value and the border pattern complexity value is at least 3 for 25
measurements in millimeters,” as used in claim 20, indefinite under the 26
second paragraph of § 112? 27
Second, are the limitations, “wherein the lowest L* value for the 28
background color of the focal region is at least 10 less than the lowest L* 29
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value for the background color of the pointer region,” as used in claims 5 1
and 19; and “wherein the lowest L* value for the background color of the 2
focal region is at least 10 less than the lowest L* value for the first 3
background color of the pointer region,” as used in claim 16, are indefinite? 4
Third, is the subject matter of claims 1–20 enabled by the 5
Specification? 6
Fourth, would the subject matter of claims 1–20 have been obvious 7
from the package depicted in Figure 1 of Betts? 8
Fifth, would the subject matter of claims 1–20 have been obvious 9
from the package depicted in Figure 3 of Benson? 10
11
FINDINGS OF FACT 12
The record supports the following findings of fact (“FF”) by a 13
preponderance of the evidence. 14
1. Figure 1 of Betts, reproduced on the next page, is a front 15
elevational view featuring a front panel 12 of a box for disposable absorbent 16
articles such as diapers. Figure 2 of Betts is a view of a side or end panel 14 17
of the box. The box depicted in Figures 1 and 2 has an outer structure that 18
includes, in addition to the front panel 12, top and bottom panels, as well as 19
side panels including the end panel 14. (Betts, paras. 26 & 28). The front 20
panel 12 defines a display face depicted in Figure 1: 21
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1
2. The display face of the box depicted in Figure 1 of Betts 2
includes a pointer region positioned near the upper end of the front panel 12. 3
The display face also includes a focal region positioned below the pointer 4
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region and to the left of a depiction of a child and its mother. The focal 1
region includes a product designator 50, reading “EASY UPS pull-on 2
diapers.” The boundary between the pointer region and the focal region has 3
a serpentine shape. The pointer region points to the focal region in the sense 4
that the serpentine shape of the boundary of the pointer region dips toward 5
the focal region on the left side of the front panel, where the focal region is 6
located. 7
3. Figure 3 of Benson, reproduced below, is a front elevational 8
view featuring a face 12 of a package for “wet wipes:” 9
10
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“Wet wipes” are disposable, personal care products. (See Benson, para. 26). 1
4. The display face of the package depicted in Figure 3 of Benson 2
includes a pointer region positioned near the lower, left side of the front 3
panel 12 and a focal region positioned above the pointer region. The focal 4
region includes an indicia 14 consisting of a brand name, ALWAYS®, and a 5
product designator, “wipes-to-go.” The pointer region includes a depiction 6
of a package for an individual wet wipe, with a portion of the wet wipe 7
extending out of the package. The portion of the wet wipe extending out of 8
the package points to the focal region in the sense that the portion of the wet 9
wipe extending out of the package is twisted so as to form a point in profile 10
and that point is directed generally toward the focal region. 11
12
ANALYSIS 13
First and Second Issues 14
Claims 1 and 13 recite packages “wherein the difference between the 15
pointer pattern complexity value and the focal pattern complexity value is at 16
least 3 for measurements in millimeters.” Claim 12 recites a package 17
“wherein the difference between the pointer pattern complexity value and 18
the focal region complexity value is at least 3 for measurements in 19
millimeters.” Claim 20 recites a package “wherein the difference between 20
the pointer pattern complexity value and the border pattern complexity value 21
is at least 3 for measurements in millimeters.” 22
These limitations are not indefinite. The Examiner concludes that the 23
Appellants have “failed to define . . . how the complexity values are actually 24
obtained within the claims. Thus, [the Appellants have] failed to indicate 25
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within the claims as to how one would arrive at different complexity 1
values.” (Ans. 10). 2
Contrary to the Examiner’s conclusion, the Specification provides a 3
formula for calculating the pattern complexity value of a region. (See Spec., 4
para. 47). Although this formula depends on parameters defined within a 5
commercially available software package (see Spec., paras. 38, 39, 45 & 46), 6
the commercial availability of the software package implies that one of 7
ordinary skill in the art could ascertain these values with reasonable effort. 8
The fact that the proprietor of this software package has a place of business 9
in Switzerland (see Spec., para. 38; see also Ans. 9) does not imply that 10
obtaining the software would place an undue burden on one seeking to 11
determine whether a package is encompassed by one of the appealed claims, 12
particular in this age, where software may be downloaded from the Internet 13
or purchased from a domestic broker. Although paragraphs 36 and 37 of the 14
Specification teach a preferred setup for acquiring an image of packaging for 15
PCV analysis, neither the Specification itself, nor common sense, suggests 16
that this setup, or any of its particular components, is critical to determining 17
whether a package is encompassed within any appealed claim. 18
With particular reference to claims 5, 16 and 19, the Examiner 19
concludes that the Appellants have “failed to define the meaning of ‘L*’ 20
within the claims.” (Ans. 10). The quantity “L*” referred to in those claims 21
appears to be luminosity. This reading is supported by the teaching that the 22
value of L* varies from zero for the color black to 100% for the color white 23
(see Spec., para. 65), which is a salient property of luminosity. Furthermore, 24
the reference in paragraph 63 to “L*a*b color values” appears to be a 25
reference to a standard “Lab” color space, in which the “L*” refers to 26
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luminosity. “Luminosity” itself appears to be both a quantitative term of art 1
and, less precisely, a defined term in the Specification. (See Spec., para. 23). 2
Although we view the question as closer than this brief analysis might 3
suggest, we do not sustain the Examiner’s rejection of claims 1–20 as 4
indefinite under the second paragraph of § 112. 5
6
Third Issue 7
Pre-AIA 35 U.S.C. § 112, first paragraph, requires that a specification 8
“contain a written description of the invention, and of the manner and 9
process of making and using it, in such full, clear, concise, and exact terms 10
as to enable any person skilled in the art to which it pertains . . . to make and 11
use the same.” The Federal Circuit’s decision in Re Wands, 858 F.2d 731, 12
737 (Fed. Cir. 1988), lists eight factors to be considered in addressing 13
whether a specification enables the subject matter of a claim. These factors 14
include the breadth of the claims; the nature of the invention; the state of the 15
prior art; the level of ordinary skill; the level of predictability in the art; the 16
amount of direction provided in the specification; the existence of working 17
examples; and the quantity of experimentation needed to make or use the 18
invention based on the content of the disclosure. Id. 19
In the Examiner’s enablement rejection, the Examiner finds that: 20
Although theory is postulated using the QUIPS software 21
algorithm for complexity patterns relative to a pointer region and 22
a focal region with different L* values, one skilled in the art 23
would [have] be[en] required to complete undue experimentation 24
on different graphical patterns, color arrangements, hue 25
differentiations, contrasts along with numerous other factors to 26
find ones that fall within the claimed parameters given the 27
absence of working examples. 28
(Final Off. Act. 2 & 3; see also Ans. 5–9). This finding is not persuasive. 29
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Claim 1, for example, is limited only in that “the difference between 1
the pointer pattern complexity value and the focal pattern complexity value 2
is at least 3 for measurements in millimeters.” In order to make a package 3
including pointer and focal regions satisfying this limitation, one would have 4
had to generate different graphical patterns. One need not have generated 5
different color arrangements or hue differentiations. Furthermore, the 6
teachings of the Specification would have suggested that one could increase 7
the pattern complexity value of the focal region relative to that of the pointer 8
region by increasing the complexity of the pointer region beyond that of the 9
focal region. (See Spec., paras. 29 & 30). The working example depicted in 10
Figure 1 of the application would have provided some guidance to this end. 11
Considering the Specification and the drawing as a whole, the Examiner’s 12
finding that one of ordinary skill in the art would have had to engage in 13
undue experimentation to design a package satisfying one of the appealed 14
claims is not persuasive. (See Br. 5). 15
With particular reference to dependent claims 5, 16 and 19, we find 16
that, as a matter of common sense, one of ordinary skill in the art could have 17
distinguished a lighter background color from a darker background color, 18
that is, a background color having a higher L* value from a background 19
color having a lower value. Consequently, one of ordinary skill in the art 20
could have designed a package satisfying the limitations of claims 5, 16 and 21
19 without undue experimentation. (See id.) 22
We do not sustain the Examiner’s rejection of claims 1–20 for lack of 23
enablement under the first paragraph of § 112. 24
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Fourth and Fifth Issues 1
Betts and Benson describe packages satisfying each limitation of 2
representative claim 1 except “wherein the difference between the pointer 3
pattern complexity value and the focal pattern complexity value is at least 3 4
for measurements in millimeters.” (See FF 1–4). The Examiner finds that 5
the “difference between the claimed subject matter and Betts [or Benson] 6
resides in the printed matter provided on the display structure.” (Final Off. 7
Act. 5; see also id. at 6). 8
A claim to an article of manufacture, such as a package, must differ 9
from the teachings of the prior art in terms of how the article is structured or 10
how the article functions. “It is well settled that the recitation of a new 11
intended use for an old product does not make a claim to that old product 12
patentable.” In re Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997); see also 13
In re Ngai, 367 F.3d 1336, 1339 (Fed. Cir. 2004) (holding that the addition 14
of an instruction sheet to a known chemical kit did not result in a patentable 15
combination where “[a]ll that the printed matter [did was] teach a new use 16
for an existing product”). As a matter of policy, the use of a known or 17
obvious article of manufacture as a substrate to display printed matter, 18
merely to communicate information or an aesthetic impression intelligible 19
only in the mind of an observer, may be deemed an intended use of the 20
article, or at least treated in a manner analogous to the manner in which an 21
intended use of the article may be treated, instead of being deemed a 22
structural or functional feature. Therefore, the addition of such printed 23
matter to a known or obvious article does not result in a patentable 24
combination unless there is a new and nonobvious functional relationship 25
between the printed matter and the article. See AstraZeneca LP v. Apotex, 26
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Inc., 633 F.3d 1042, 1064–65 (Fed. Cir. 2010); In re Distefano, 808 F.3d 1
845, 848–51 (Fed. Cir. 2015); cf. In re Seid, 161 F.2d 229, 231 (CCPA 2
1947).3 3
The Examiner correctly concludes that the limitation, “wherein the 4
difference between the pointer pattern complexity value and the focal pattern 5
complexity value is at least 3 for measurements in millimeters,” recites 6
printed matter displayed on the display face of the claimed package. Both 7
the package depicted in Figure 1 of Betts, and that depicted in Figure 3 of 8
Benson, have printed pointing and focus regions. (See FF 1–4). The 9
arguable difference between the claimed subject matter and the prior art lies 10
in the recited contrast between the pointer region and the focal region. The 11
Appellants contend that this contrast serves as a navigational aid and, as 12
such, performs a function. (See Br. 10 & 12). That is, according to the 13
Appellants, the visual complexity of the pointer region may draw the 14
consumer’s attention to the visually simpler focal region and, thereby, to 15
branding and navigation information displayed in the focal region. (See 16
Spec., para. 30). 17

3 As explained in Seid:
The particular shape and arrangement of the upper part of the
body in appellant’s figure, including the arrangement of the
arms, are also emphasized by counsel for appellant. Those
matters, as the board properly held, relate to ornamentation only
and have no mechanical function whatsoever. They cannot,
therefore, properly be relied on here, as the appealed claims are
not directed to a design but are structural claims.
Seid, 161 F.2d at 231.
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Even if the Appellants are correct regarding the purported 1
navigational function, the recited contrast between the pointer region and the 2
focal region performs this function entirely within the mind of an observer. 3
That is, the recited contrast serves as a navigational aid only due to the 4
manner in which the contrast is perceived by the observer. The result 5
achieved by the contrast is improved communication regarding the source or 6
characteristics of products contained in the packaging. This is not the sort of 7
functional relationship between the package, on the one hand, and the 8
pointer and focal regions, on the other, that might imply that the 9
combination claimed in claim 1, as a whole, differs structurally or 10
functionally from the teachings of the prior art. Cf. Distefano, 808 F.3d at 11
849 (“Printed matter is given [patentable] weight if the claimed 12
informational content has a functional or structural relation to the 13
substrate.”). The subject matter of representative claim 1, as a whole, would 14
have been obvious. 15
Even were we not to agree with the Examiner that the recited contrast 16
between the pointer region and the focal region relates solely to printed 17
matter, we would conclude that the shapes and color schemes of the pointer 18
and focus regions were mere matters of design choice and, hence, not 19
patentable distinctions. Betts and Benson teach providing a package with 20
surface ornamentation including a pointer region and a focus region. 21
Although an ordinary designer ignorant of the teachings of the Specification 22
might have conceived myriad patterns for decorating these two regions, 23
those options would have resulted either in a package on which the pattern 24
complexity value of the focus region exceeded that of the pointer region by 25
at least three millimeters or a package in which the pattern complexity value 26
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of the focus region did not exceed that of the pointer region by at least three 1
millimeters. Each of the two design choices would have been an obvious 2
combination of the prior art elements. As such, both design choices would 3
have been obvious. See ACCO Brands Corp. v. Fellowes, Inc., 813 F.3d 4
1361, 1367 (Fed. Cir. 2016) (explaining that where combining elements of 5
the prior art would present one of ordinary skill with two design choices, 6
each of the two design choices is an obvious combination of the prior art; 7
“even if one possible obvious combination falls outside of the claims, if fails 8
to undercut the fact that the other possible obvious combination lies within 9
their scope”); see also KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 421 10
(2007).4 Hence, the subject matter of claim 1, as a whole, would have been 11
obvious. 12
We sustain the rejection of claims 1–20 under § 103(a) as being 13
unpatentable over the teachings of either Betts or Benson. 14
15
DECISION 16
We AFFIRM the Examiner’s decision rejecting claims 1–20. 17
Although we sustain only the rejection of these claims under § 103(a), and 18

4 As explained in KSR Int’l:
When there is a design need or market pressure to solve a
problem and there are a finite number of identified, predictable
solutions, a person of ordinary skill has good reason to pursue
the known options within his or her technical grasp. If this leads
to the anticipated success, it is likely the product not of
innovation by of ordinary skill and common sense.
KSR Int’l, 550 U.S. at 421.
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not under either paragraph of § 112, this constitutes a general affirmance of 1
the decision of the Examiner as to claims 1–20. See 37 C.F.R. § 41.50(a)(1). 2
No time period for taking any subsequent action in connection with 3
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. 4
§ 1.136(a). 5
6
AFFIRMED 7