Ex Parte GABRIELE et al

Patent Trials and Appeals Board

May 20, 2019

15040556 - (D) (P.T.A.B. May. 20, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
15/040,556 02/10/2016
27752 7590 05/22/2019
THE PROCTER & GAMBLE COMPANY
Global IP Services
Central Building, C9
One Procter and Gamble Plaza
CINCINNATI, OH 45202
FIRST NAMED INVENTOR
Andrea GABRIELE
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
14208L 1630
EXAMINER
ZIMMERMAN, JOSHUA D
ART UNIT PAPER NUMBER
2854
NOTIFICATION DATE DELIVERY MODE
05/22/2019 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 ANDREA GABRIELE, MIGUEL BRANDT SANZ,
and NIKOLA CURCIC
Appeal2018-005859
Application 15/040,556
Technology Center 2800
Before BRADLEY R. GARRIS, MONTE T. SQUIRE, and
DEBRA L. DENNETT, Administrative Patent Judges.
DENNETT, Administrative Patent Judge.
DECISION ON APPEAL 1
STATEMENT OF THE CASE
Appellant2 appeals under 35 U.S.C. § 134(a) from a rejection of
claims 1-9, 12-17, and 20. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 In our Decision, we refer to the Specification filed February 10, 2016
("Spec."); the Final Office Action dated August 10, 2017 ("Final Act."); the
Appeal Brief filed January 4, 2018 ("App. Br."); the Examiner's Answer
dated February 26, 2018 ("Ans."); and the Reply Brief filed April 26, 2018
("Reply Br.").
2 Appellant is the Applicant, The Procter & Gamble Company, identified as
the real party in interest. App. Br. 1.
Appeal2018-005859
Application 15/040,556
The claims are directed to processes for printing a water soluble film
used as a pouch to contain surface treatment compositions. Claim 1,
reproduced below, illustrates the claimed subject matter:
1. A process comprising the steps of:
providing a water soluble film;
providing an ink comprising between about 5% and
about 30% by weight a solvent selected from the group
consisting of diols, cyclic polyols, diglycols, triols, polyols, and
mixtures thereof;
applying said ink onto said water soluble film; and
incorporating a surface treatment composition enclosed
by said water soluble film in a pouch formed by said water
soluble film;
wherein said surface treatment composition is selected
from the group consisting of a fabric conditioner, a laundry
conditioner, a fabric detergent, a laundry detergent, a laundry
rinse additive, a hard surface cleaner, a hard surface treatment
composition, an air care composition, a car care composition, a
dishwashing composition, a composting composition, a
cleaning product, and combinations thereof;
wherein said ink is positioned on an inside surface of said
pouch.
REFERENCES
The Examiner relies on the following prior art in rejecting the claims
on appeal:
Hassan et al.
("Hassan")
Denome et al.
("Denome")
US 2005/0131103 Al
US 2009/0123679 Al
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June 16, 2005
May 14, 2009
Appeal2018-005859
Application 15/040,556
REJECTIONS
The Examiner maintains the rejection of claims 1-9, 12-17, and 20 as
obvious over Denome in view of Hassan and Applicant's Admitted Prior Art
("AAP A"). Final Act. 2-8; Ans. 2.
OPINION
Rejection of claims 1-9 and 12-17
Appellant argues claim 1 and its dependent claims as a group. App.
Br. 2--4. We select claim 1 as representative of the claims. 37 C.F.R
§ 4I.37(c)(l)(iv). Claims 2-9 and 12-17 stand or fall with claim 1.
With respect to claim 1, the Examiner finds that Denome teaches a
process for printing a water soluble film with ink and incorporating a surface
treatment as claimed into a pouch made of the water soluble film. Final
Act. 2-3. The Examiner finds that Denome fails to teach an ink comprising
"between about 5% and about 30% by weight a solvent selected from the
group consisting of diols, cyclic polyols, diglycols, triols, polyols, and
mixtures thereof," but teaches that problems with ink printed on water
soluble films rubbing off was known. Id. at 3. The Examiner finds that
Hassan teaches an aqueous ink composition for printing on a variety of
surfaces, that has improved slip resistance and mar abrasion, and that uses
materials that are safe to humans and environmentally friendly. Id. The
Examiner finds that Hassan' s ink includes propylene glycol in an amount of
up to 15%. Id. The Examiner concludes that it would have been obvious to
one of ordinary skill in the art at the time of the invention to have used
Hassan's ink composition in Denome's method in order to have an ink
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Application 15/040,556
image that does not rub off as easily or because the inks are safe to humans
and environmentally friendly. Id., see also Ans. 2.
The Examiner finds that Denome modified by Hassan does not teach
that the ink is positioned on the inside of the pouch. Final Act. 3--4.
However, the Examiner finds that statements in the Background of the
Invention section of the '556 Application (Applicant's Admitted Prior Art,
"AAPA") teaches that printing on the inside of a pouch overcomes problems
with printing on the pouch exterior, such problems including transfer of the
ink to a surface with which the pouch comes in contact. Id. at 4. The
Examiner concludes that it would have been obvious to the skilled artisan to
print on the inside surface of a pouch in the modified method of Denome in
order to overcome some of such problems. Id.
Analysis of a rejection under§ 103 requires, inter alia, consideration
of whether the prior art would have suggested to a skilled artisan that he or
she should carry out the claimed process, i.e., is there motivation, and
whether the prior art would have revealed that in carrying out the process, a
skiHed artisan would have had a reasonabfo expectation of success.
lvledichem, SA .. v. Rolabo, S.L., 437 F.3d 1157, 1164 (Fed. Cir. 2006).
These are questions of fact. Al:::a Corp. v. lfylan Labs., inc., 464 F.3d 1286,
1289 (Fed. Cir. 2006).
Appellant's arguments, which only address the combination of
Denome and Hassan, are not persuasive of reversible error by the Examiner.
Hassan's disclosure is not limited to ink for printing on paper and
ceHulosic products, as Appellant impHes. See App. Br. 3. Hassan discloses
that inks and coatings are used for printing on a variety of different surfaces,
and include plastic articles and films. Hassan iril 4, 6. Hassan also discloses
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Appeal2018-005859
Application 15/040,556
that inks are subject to rubbing and scuffing. Hassan ir 4. The inks and
coating compositions disclosed in Hassan are said to be less susceptible to
mar and abrasion. Hassan ,r 1 7.
Denome teaches printing onto water soluble films. Denome 8113.
Denome teaches that a known issue is the strength of ink to remain on the
surface if nibbing is applied. Denome i] 7.
Appellant argues that the Examiner fails to establish a prima facie
case of obviousness. App. Br. 2. More specifically, Appellant argues that
the Examiner's rationale for combining Hassan's ink composition with
Denome's method was to provide for an ink that does not rub off easily. Id.
at 2-3. Appellant contends, "Hassan ... purports that certain ink and
coating compositions disclosed therein and applied to paper and cellulosic
products are resistant to marring and abrasion." Id. at 3 (citing Hassan
Abstract); see also Reply Br. 2. Appellant notes that the pouch claimed is
formed by water soluble film. Id.
Appellant's argument is not persuasive, as it ignores the teachings of
the combination of prior art cited by the Examiner. "Non-obviousness
cannot be established by attacking references individually where the
rejection is based upon the teachings of a combination of references." In re
Merck & Co., Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986). Each reference
cited by the Examiner must be read, not in isolation, but for what it fairly
teaches in combination with the prior art as a whole. See id. Hassan teaches
ink for printing on substrates other than paper and cellulosic products, and
that its ink is resistant to marring and abrasion. Hassan i-f l 7. Denome
teaches printing on water soluble films. Denome ii 3. One of ordinary skill
in the art would have been motivated to seek the advantages of Hassan' s ink
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Appeal2018-005859
Application 15/040,556
for printing on Denome's water soluble film. Evidence of a motivation to
combine prior art references "may flow from the prior art references
themselves, the knowledge of one of ordinmy skill in the art, or, in some
cases, from the nature of the problem to be solved." Brown & FVilliamson
Tobacco Corp. v. Philip ,Morris Inc., 229 F.3d 1120, 1125 (Fed. Cir. 2000).
Appellant contends that ink applied in claim 1 's process would not be
subject to mar and abrasion, because it is on the inside surface of the pouch.
App. Br. 3, 4; Reply Br. 2. Appellant argues that the inside location of the
ink precludes motivation to combine Denome and Hassan. App. Br. 4.
Appellant, therefore, contends that there is no motivation for one of ordinary
skill in the art to look to Hassan for inks and coatings resistant to marring
and abrading because the claimed process provides ink on an inside surface
of a pouch, protected from marring and abrading, and Hassan and Denome
relate to printing on different surfaces. Id. at 4.
However, claim 1 does not require printing ink onto the inside of an
already-formed pouch. See App. Br. 7. Claim 1 covers a process wherein a
water soluble film is printed with ink and then formed into a pouch. See id.
Moreover, Appellant does not address the rejection as stated by leaving out
the teaching of AAP A, which teaches a pouch made from a water soluble
film and upon which the Examiner relies for modifying Denome as modified
by Hassan.
Appellant argues that Hassan provides no indication that there is a
reasonable expectation of success that its ink and coating compositions
would be resistant to marring and abrading when printed on water soluble
film, thus a skilled artisan would not look to Hassan for those benefits. App.
Br. 3; see also Reply Br. 2-3.
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Appeal2018-005859
Application 15/040,556
\Ve agree with the Examiner that one of ordinary skill in the art would
have been motivated to use the ink described in Hassan for printing onto the
water soluble films of Denome so that the ink would be less susceptible to
mar and abrasion, safe for humans, and environmentally friendly. See Ans.
2. As the Examiner explains, AAPA--------not Hassan-------teaches putting the ink
on the inside surface of a pouch in order to overcome known problems, such
as transfer of ink from a surface to manufacturing equipment. Id. at 3.
"[O]bviousness does not require absolute predictability of success ...
all that is required is a reasonable expectation of success." In re Kubin, 561
F.3d 1351, 1360 (Fed. Cir. 2009) (citing In re O'Farrell, 853 F.2d 894, 903-
04 (Fed. Cir. 1988)). Here, a skilled artisan would have had a reasonable
expectation of success in using Hassan's ink in combination with Denome's
water soluble film because the ink is less susceptible to mar and abrasion,
safe for humans, and environmentally friendly. Forming the film into a
pouch with the ink on the inside of the pouch would further prevent mar and
abrasion of the ink.
Appellant also argues that the portions of Hassan cited by the
Examiner for mar and abrasion resistance have nothing to do with inks
comprising propylene glycol, thus there is no rational underpinning for a
skilled artisan to reach to Hassan. Reply Br. 2. However, "[ o ]ne of ordinary
skill in the art need not see the identical problem addressed in a prior art
reference to be motivated to apply its teachings." Cross Med. Prods., Inc. v.
Medtronic Sofamor Danek, Inc., 424 F.3d 1293, 1323 (Fed. Cir. 2005)
(citing In re Oetiker, 977 F.2d 1443, 1448 (Fed. Cir. 1992)). To render an
invention obvious, the prior art does not have to address the same problem
addressed by a patent applicant. KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398,
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Appeal2018-005859
Application 15/040,556
420 (2007); see also In re Beattie, 974 F.2d 1309, 1312 (Fed. Cir. 1992)
("As long as some motivation or suggestion to combine the references is
provided by the prior art taken as a whole, the law does not require that the
references be combined for the reasons contemplated by the inventor.").
The Examiner provides adequate reasoning for one of ordinary skill in the
art to combine Hassan's ink with Denome's water soluble film to reach the
claimed invention.
We sustain the rejection of claim 1 over Denome in view of Hassan
and AAPA. For the reasons given above, we also sustain the rejection of
claims 2-9 and 12-17.
Rejection of claim 20
Claim 20 is an independent claim, rejected over the same
combination of prior art as claim 1. See Final Act. 7-8. Appellant's
arguments for patentability of claim 20 do not differ substantively from
those made in support of patentability of claim 1. Compare App. Br. 2--4,
with App. Br. 4--5. We, therefore, sustain the rejection of claim 20 over
Denome in view of Hassan and AAP A for the reasons given above.
DECISION
The Examiner's rejection of claims 1-9, 12-17, and 20 is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv)
AFFIRMED
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