Difficulties in Claiming Indicia

There can often be strong business incentives to protecting certain indicators on products.  However, there are several problems that can come about in claiming indicia, including the printed matter doctrine and indefiniteness. In a recent appeal, the Proctor and Gamble Company struggled before the PTAB particularly on defining the function of indicia on a razor.

The claim term at issue specified a razor cartridge with first and second indicia, one of which communicates a functional benefit to a user before use of said razor cartridge.  The examiner complained that the claim wording was unclear, citing to a blind person as being unable to recognize the desired functional benefit.  Figure 1 (shown below) from the application shows an example of water droplets, and the specification contained extensive language defining the functional benefit of the indicia.  Namely, the specification explained that:

 A "functional benefit" of the indicia of the present invention pertains to having an advantage communicated to or obtained by a user (or prospective user or consumer) before, during or after the operation or use of the razor product (e.g., while shaving) involving, or concerned with the functionality or usage of the product. This functional benefit may be communicated to a user at the point of purchase (e.g., before use or when choosing a product). For instance, a user may determine that a product has a functional benefit based on the indicia on the razor product in a razor package displayed on a store shelf. The functional benefit may be obtained by the user during use as well. For instance, the functional benefit desirably may include a faster leaching time or an increased release of lubricant or having a scent released from indicia disposed on an exterior surface of a lubricating body or other component of a razor cartridge

The PTAB was not distracted by the side show arguments over blind persons, and instead focused on the claim language.  The Board found that the claimed functional benefit was subjective to the particular user receiving the communication such that there is no way to objectively ascertain the metes and bounds of the claim.  Because the claim defined the indicia based on what it communicates to the user, as opposed to its structure, it was relatively straight forward for the Board to find the claim term indefinite since what a particular shape communicates to one user may be different from what it communicates to another user. From this, the Board determined that the structure required to communicate a functional benefit to a user would not be readily apparent to one of ordinary skill in the art.

Another problem with indicia that was not raised in the case is the printed matter doctrine. The printed matter doctrine stands for the proposition that the addition of written material to a known product does not impart patentability. This doctrine is discussed in MPEP 2112.01 (III), which states that 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. In this particular case, the applicant would likely assert that the functional relationship is the fact that the indicia communicates a functional benefit to the user related to the product (e.g., the water droplets communicates moisturizing or lubricating functional benefits).  However, it seems that the indicia themselves may still be lacking the required functional relationship even if they communicate a functional benefit. In other words, the basic rule that the information cannot be patented when it is the “content” of the information that differentiates the claimed subject matter from the prior art seems to still apply. However, this issue was not addressed as the claimed elements were deemed indefinite, leaving for another day whether there exists any new and unobvious functional relationship between the claimed indicia and the cartridge.