Ex Parte Allen

Patent Trial and Appeal Board

Dec 29, 2017

14052192 (P.T.A.B. Dec. 29, 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.
14/052,192 10/11/2013 Matthew Richard ALLEN 12616 2912
27752 7590 01/03/2018
THE PROCTER & GAMBLE COMPANY
Global IP Services
Central Building, C9
One Procter and Gamble Plaza
CINCINNATI, OH 45202
EXAMINER
YAGER, JAMES C
ART UNIT PAPER NUMBER
1782
NOTIFICATION DATE DELIVERY MODE
01/03/2018 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):
centraldocket. im @ pg. com
pair_pg @ firsttofile. com
mayer.jk @ pg. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL
AND APPEAL BOARD
Ex parte MATTHEW RICHARD ALLEN1
Appeal 2017-005449
Application 14/052,192
Technology Center 1700
Before BEVERLY A. FRANKLIN, MICHAEL P. COLAIANNI, and
JENNIFER R. GUPTA, Administrative Patent Judges.
FRANKLIN, Administrative Patent Judge.
DECISION ON APPEAL
1 Appellant is the Applicant, The Proctor & Gamble Company, which,
according to the Appeal Brief, also is the real party in interest. Appeal Br. 1.
Appeal 2017-005449
Application 14/052,192
Appellant requests our review under 35 U.S.C. § 134 of the
Examiner’s decision rejecting claims 1—8, 11—16, and 18—20. We have
jurisdiction over the appeal under 35 U.S.C. § 6(b).
STATEMENT OF THE CASE
Claim 1 is illustrative of Appellant’s subject matter on appeal and is
set forth below (with text in bold for emphasis):
1. An integrally molded container comprising a structured cured
varnish coating that is in direct contact with the surface of said
container, which is a solid container that comprises one or more
thermoplastic polymers, wherein said container has the dimensions
height (H), width (W) and depth (D) with each dimension H, W and
D having a length of at least 2 millimeters, and wherein said
structured cured varnish coating produces one or more visual effects.
The Examiner relies on the following prior art references as evidence
of unpatentability:
Marcinkowski US 2011/0229695 A1 Sep. 22, 2011
Walker US 4,420,089 Dec. 13, 1983
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Application 14/052,192
THE REJECTIONS
1. Claims 1—8 and 11—13 are rejected under 35 U.S.C. § 112(a) or
35 U.S.C. § 112 (pre- AIA), first paragraph, as failing to comply with the
written description requirement.
2. Claims 1, 3—6, 8, 11—15 and 18—20 are rejected under pre-AIA
35 U.S.C. § 103(a) as being unpatentable over Marcinkowski.
3. Claims 1-8, 11-16 and 18-20 are rejected under pre-AIA 35 U.S.C.
§ 103(a) as being unpatentable over Walker in view of Marcinkowski.
ANALYSIS
Rejection 1
The Examiner rejects claims 1 and 11 for lack of written description
regarding the phrase “which is a solid container,” stating that Appellant does
not point to, and the Examiner cannot find support for, this phrase. Final
Act. 3.
Appellant states that claims 1 and 11 each recite an “integrally
molded container.” Appellant refers to page 5, lines 18—20 of the original
Specification. Therein, it is disclosed that “[t]he plastic is held in the mold
cavity, cooled, and then removed as a solidified part having a shape that
essentially duplicates the cavity shape of the mold.” Appellant submits
this disclosure reflects that the term “molded” indicates “a solidified part”,
and therefore there is adequate written description for a “molded container”
being “a solid container” as set forth in claims 1 and 11. Appellants state
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Application 14/052,192
further that the meaning provided by this written description is consistent
by specific examples in the Specification, which states that integrally
molded containers can be “covers, caps, and lids.” Spec. p. 2,11. 3—5. We
are persuaded by Appellants’ stated position in the record and therefore
agree that the claims comply with the written description requirement. We
accordingly reverse the rejection.
Rejection 2
The dispositive issue in this case is whether the applied art suggests an
“integrally molded container comprising a structured cured varnish coating
that is in direct contact with the surface of said container, which is a
solid container” having the claimed dimensions.
We begin with claim interpretation. As discussed above, with regard
to Rejection 1, the term “molded container”2 indicates “a solidified part”
2 The Examiner interprets the term “molded” in the phrase “integrally
molded container” as a product-by-process limitation. Final Act. 5. On the
other hand, Appellant argues that this claim term is structural, and therefore
is a product limitation. Appeal Br. 4. On page 5, lines 15—20 of the
Specification, the Specification discloses “molded” as meaning any article
produced through a process using meltable material, commonly
thermoplastic polymers, most often starting in the form of small beads or
pellets, that are heated until it becomes a molten resin that is then placed
into a mold cavity, whereby “plastic is held in the mold cavity, cooled,
and then removed as a solidified part having a shape that essentially
duplicates the cavity shape of the mold.” As such, we agree with
Appellant that the proper claim interpretation of this term is as a product
limitation. See, e.g., In re Garnero, 412 F.2d 276, 279 (CCPA 1979)
(holding “interbonded by interfusion” to limit structure of the claimed
composite and noting that terms such as “welded,” “intermixed,” “ground in
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Application 14/052,192
according to the Specification. Spec. p. 5,11.18—20. Hence, the term
“molded container” is “a solid container” (as claimed) or solid object, such
as “covers, caps, and lids.” Spec. p. 2,11. 3—5.
Having determined the proper claim interpretation as discussed
above, we turn now to the prior art rejection. The Examiner finds that
Marcinkowski discloses an article such as a blister package, made of
polymeric material, comprising a polymer matrix (varnish) that may be
applied directly to an ink layer (ink) on the container, or directly to the
container, wherein the matrix is cured and has a plurality of grooves to
create an optical effect. Ans. 3^4; Marcinkowski, Abstract, || [0001]—
[0002], [0005]—[0016], [0020], Figure 1.
The Examiner states that it appears from Marcinkowski’s Figure 1
that the package is a solid container. Ans. 4. However, it is Appellant’s
position that within the meaning of “solid container” as recited in claim 1, a
solid container is a solidified part (a solid object), for example, covers, caps,
and lids. Appeal Br. 3^4. As stated in footnote 2, supra, the solid container
is produced through a process using meltable material, commonly
thermoplastic polymers, most often starting in the form of small beads or
pellets, that are heated until it becomes a molten resin that is then placed
into a mold cavity, and the plastic is held in the mold cavity, cooled, and
then removed as a solidified part having a shape that essentially
duplicates the cavity shape of the mold. Appellant argues that
Marcinkowski’s article is therefore not a solid container within the meaning
place,” “press fitted,” and “etched” are capable of construction as structural
limitations).
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Appeal 2017-005449
Application 14/052,192
of Appellant’s claim 1. Appellant argues that Marcinkowski discloses that
the article can be a label, a thermoformed blister3, a paperboard card, or a
polymeric sheet or film, none of which is an integrally molded container
which is a solid container. Marcinkowski, [0015]; Appeal Br. 4. We agree
with Appellants that the type of articles disclosed in Marcinkowski are not
an integrally molded container which is a solid container as recited in
Appellant’s claim 1. As such, we agree with Appellants that the rejection
fails to address an element of the claim, and therefore we reverse
Rejection 2.
Rejection 3
The Examiner does not rely upon Walker to cure the aforementioned
deficiencies of Marcinkowski, as stated by Appellant on page 5—6 of the
Appeal Brief. We thus reverse Rejection 3 for the reasons that we reverse
Rejection 2.
DECISION
Each rejection is reversed.
3 A thermoformed blister is formed by unwinding a plastic film or sheet that
is then guided through a pre-heating station on a blister line wherein the
plastic is softened and thereafter formed into a blister. This is different from
melting small beads of plastic and placing the melted plastic into a mold to
form a solid object according to Appellant’s invention.
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Application 14/052,192
ORDER
REVERSED
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