Appeal No. 2001-2251 Page 6
Application No. 09/345,857
We agree with the examiner that both Schulz and Sporing disclose consumer
products having latticework indicia thereon, and that it is well-known to place such
products in a package for sale and/or use. However, in Walker the consumer product
has no indicia at all on its surface and thus could not have suggested to one of ordinary
skill in the art that the product and its package should both have indicia, much less
indicia related in the manner required in claim 1. As far as Hay is concerned, it appears
from the drawing of this design patent that there is a ribbon tied in a bow on the outside
of the package and a sculptured piece of soap on the inside, and even if these are
considered to be “indicia,” we fail to appreciate that the relationship required by claim 1
is present or that one of ordinary skill in the art would have been motivated by Hay to
relate the indicia to one another in that fashion. We are not persuaded otherwise by
the examiner’s argument that the bow “provides a harmonizing effect” to the spaced
pieces of soap and therefore would have provided the requisite suggestion to the
artisan (Answer, page 7). Nor do we share the examiner’s view that the indicia need
not be considered in evaluating the claims because of “failing to provide any new or
unexpected utility” (Answer, page 5).
Suffice it to say that we find neither Schulz in view of Hay or Walker nor Sporing
in view of Hay or Walker to establish a prima facie case of obviousness with regard to
the subject matter recited in claim 1, and we therefore will not sustain either of those
rejections of claim 1 or, it follows, of claims 2 and 3, which depend therefrom.
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