Ex Parte Roetker et al

Patent Trial and Appeal Board

Dec 17, 2012

11897806 (P.T.A.B. Dec. 17, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte CONNIE MARIE ROETKER, GREGORY
WILLIAM DURITSCH, MARKUS WILHELM ALTMANN,
MIKE THOMAS LOYSON, KRISTINE GAIL NOSCHANG,
DEAN LARRY DUVAL, and PAUL THOMAS WEISMAN
____________________

Appeal 2010-011668
Application 11/897,806
Technology Center 3700
____________________

Before: STEFAN STAICOVICI, BRETT C. MARTIN, and
PATRICK R. SCANLON, Administrative Patent Judges.

MARTIN, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF CASE
Connie Marie Roetker et al. (Appellants) appeal under 35 U.S.C.
§ 134 from the Examiner’s rejection of claims 1-18. Appellants’
representative presented oral argument on December 4, 2012. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

THE INVENTION
Appellants’ invention is directed generally to “an array of paper towel
products associated with non-textual indicia that are psychologically
matched to intensive properties of the paper towel products.” Spec. 1, ll. 1-
3. Claim 1, reproduced below, is illustrative of the claimed subject matter:
1. An array of paper towel products comprising a first paper
towel product housed within a first paper towel product
package and a second paper towel product housed within a
second paper towel product package, wherein the first and
second paper towel products exhibit a different value of
softness; and wherein the relative value of the softness of the
first paper towel product compared to the second paper towel
product is intuitively communicated to a consumer of paper
towel products by psychologically matched non-textual indicia
on the first and second packages and wherein the first and
second packages comprise a common brand name.

REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Molina
Ronn
Hanson
US 6,601,705 B2
US 6,648,864 B2
US 7,172,073 B2
Aug. 5, 2003
Nov. 18, 2003
Feb. 6, 2007
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THE APPEALED REJECTIONS
Claims 1-4, 11-15, 17, and 18 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over Ronn and Hanson. Ans. 5.
Claims 4-10 and 16 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Ronn, Hanson, and Molina. Ans. 6.

ANALYSIS
Rejection of Claims 1-4, 11-15, 17, and 18 as Obvious over
Ronn and Hanson
Claims 1, 11, and 12
Appellants group claims 1, 11, and 12 together. App. Br. 6. We
select claim 1 as representative and decide the appeal with respect to claims
1, 11, and 12 on the basis of claim 1 alone. See 37 C.F.R.
§ 41.37(c)(1)(vii) (2011).
The Examiner finds that Ronn discloses “an array of absorbent paper
products … having differing characteristics wherein the differing
characteristics are intuitively communicated to a consumer via pictorial
representation indicia.” Ans. 5. The Examiner acknowledges that because
Ronn’s packaging and indicia relate to diapers, that it does not disclose the
specifically claimed subject matter of paper towels. Id. The Examiner then
goes on to conclude that employing
an array of paper towel products having different characteristics
and differentiated via non-textual indicia that will
psychologically match with a consumer to enable the consumer
to select the desired [paper towels] would have been obvious
given the array-indicia teaching of Ronn et al. and the indicia-
property teaching of Hanson in conjunction.
Id.
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In response, Appellants argue that the combination fails to teach each
and every element of claim 1, but then proceeds to attack the references
individually. App. Br. 6-7. For instance, Appellants state “that Ronn
teaches an array of diapers which are arranged according to their
configuration and sizes” and that “[n]othing in Ronn teaches a common
intensive property of the diapers.” App. Br. 6. The Examiner, however,
utilizes Ronn not for the claimed property, but for teaching an array of paper
products with a non-textual indicia that communicates some property to the
consumer. Accordingly, Appellants’ attack on Ronn appears to be directed
at an aspect for which the Examiner does not use Ronn. Nonobviousness
cannot be established by attacking the references individually when the
rejection is predicated upon a combination of prior art disclosures. See In re
Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986).
Appellants go on to assert that “[n]othing [in] Hanson teaches
communicating a common intensive property of its product to a consumer by
a psychologically matched non-textual indicia on the package.” App. Br. 7.
Appellants assert this because Hanson uses “a sample of the product within
the package on the exterior of the package so that a consumer can touch and
feel the sample to get an idea about the product within the package.” Id.
Appellants then argue that “[j]ust because a consumer can touch and feel a
sample of Hanson’s product without opening the package does not mean that
the consumer recognizes that one of Hanson’s products may exhibit a
different common intensive property, such as softness, than another of
Hanson’s products.” Id. Appellants appear to suggest that a swatch that a
consumer may touch is not properly considered a non-textual indicia.
Appellants’ disclosure, however, specifically states that “a non-textual
indicia may communicate, even intuitively communicate, to a consumer …
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through touch (texture indicia).” Spec. 9, ll. 30-32. Accordingly, we agree
with the Examiner that Hanson’s swatch teaches a non-textual indicia within
the specific definition provided in Appellants’ Specification, and do not find
Appellants’ arguments on this point persuasive.
Appellants further appear to take issue with the type of indicia used by
both Ronn and Hanson as not teaching the claimed properties. With respect
to Ronn this is alleged because Ronn’s packaging is only for diapers and
does not relate to the claimed softness, but to the size and configuration of
the diaper. Reply Br. 3. As noted above, the Examiner does not use Ronn
for softness or for teaching paper towel packaging. With respect to Hanson,
the Examiner points out that Hanson specifically teaches the swatch indicia
may be applicable to a variety of products, which includes both diapers
(Hanson 1:13) and paper towels (Hanson 1:16). The Examiner utilizes this
link to then apply the teaching of the array aspects of Ronn in the context of
diaper packaging to the specifically taught paper towel and softness aspects
of Hanson. We find this to be a reasonable application of Ronn to Hanson.
Appellants continue their argument with respect to Ronn in the Reply
Brief and assert that Ronn is inapplicable because the size or configuration
of a diaper is different from softness, which is “not visibly recognizable.”
Reply Br. 4. First, as noted above, Ronn is not being used by the Examiner
for teaching an intensive property of softness, and second, Appellants’
claims do not include any reference to the specific property as “not visibly
recognizable,” so such an argument is not commensurate with the scope of
the claims.
As we understand the proposed combination, the Examiner has found
a reference in Ronn that teaches an array of absorbent paper products –
diapers – in packaging that includes various non-textual indicia – “pictorial
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representations of different age children” (Ans. 10) – that communicate
something about the contents of the products within the various packages.
The Examiner acknowledges that this does not teach the softness and paper
towel product recited claim 1, but finds that Hanson’s teaching of a swatch,
or sample, on the outside of the packaging does specifically teach the
communication of the intensive property of softness. Hanson specifically
states that one of the properties that may be perceived by the consumer from
the swatch/non-textual indicia, is softness. Hanson 4:34. It is, therefore, this
combination of Ronn and Hanson that teaches to one of skill in the art each
of the aspects of claim 1 as suggested by the Examiner. We do not find
Appellants’ arguments persuasive with respect to the Examiner’s
combination of these references and generally agree with the Examiner that
“Appellants’ arguments are directed to the fact that neither Ronn et al. nor
Hanson individually disclose[s] the entire claimed invention” as opposed to
the overall combination. Ans. 8.
Because we do not find Appellants’ arguments persuasive as to claim
1, we sustain the Examiner’s rejection of claims 1, 11, and 12.
Claims 2-4, 13-15, 17, and 18
Although Appellants purport to argue each of these claims
individually, Appellants’ arguments amount to merely reciting claim
language and then asserting that such recitations are “not rendered obvious
over Ronn in view of Hanson.” See App. Br. 7-10. Appellants do not
meaningfully explain why the variously recited elements are not met by the
Examiner’s combination. Merely reciting the language of the claims and
asserting that the prior art reference or combination does not disclose or
teach each claim limitation is insufficient. See 37 C.F.R. § 41.37(c)(vii) (“A
statement which merely points out what a claim recites will not be
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considered an argument for separate patentability of the claim.”); see also In
re Lovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011) (“[W]e hold that the Board
reasonably interpreted Rule 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.”).
Accordingly, we sustain the Examiner’s rejection of each of claims 2-
4, 13-15, 17, and 18 for the same reasons as expressed above with respect to
claim 1.
Rejection of Claims 4-10 and 16 as Obvious over
Ronn, Hanson, and Molina
Although Appellants provide fairly brief arguments with respect to
claim 4, we understand Appellants as taking issue with the Examiner’s use
of Molina for specifically teaching the use of color as the claimed non-
textual indicia in combination with Ronn and Hanson, the combination of
which we sustain above. See App. Br. 10. The Examiner concludes that
modification of “the previous non-textual indicia of the combination to
comprise color would have been obvious in view of Molina et al.” Ans. 12.
In the portion of Molina cited by the Examiner, Molina specifically states
that “[w]hen the signal color 7 is used on the wrapper 9 of the article 6, the
signal color provides a method for selecting the proper absorbent articles 6.”
Molina 5:12-14. Molina even specifically refers to this method as
“intuitive.” Molina 5:9 and 5:21. Molina further explains how absorbency
is one of many characteristics that can be communicated via color. Molina
4:30-67. Given that Molina describes use of color to intuitively
communicate to a consumer the absorbency of a paper product and that
Appellants’ Specification specifically describes absorbency1 as one of the

1 See Spec. 8, ll.7-10.
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various “intensive properties” that may be intuitively communicated via the
claimed non-textual indicia, we do not find Appellants’ arguments as to the
inapplicability of Molina to the combination of Ronn and Hanson
persuasive. Accordingly, we sustain the rejection of claim 4.
Appellants’ arguments with respect to claims 5-10 and 16 also amount
to a mere recitation of claim elements and a naked assertion that the
corresponding elements were not found in the prior art cited by the
Examiner, similar to that described above. As such, we do not consider
these to be separate arguments and sustain the rejection of claims 5-10 and
16 on the same basis as we sustain the rejections above.

DECISION
For the above reasons, we AFFIRM the Examiner’s decision to reject
claims 1-18.
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) (2009).

AFFIRMED

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