The Procter & Gamble Company

Patent Trials and Appeals Board

Sep 30, 2021

2021000229 (P.T.A.B. Sep. 30, 2021)

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.
15/451,446 03/07/2017 Hugh Joseph O'DONNELL 14238 2500
27752 7590 09/30/2021
THE PROCTER & GAMBLE COMPANY
GLOBAL IP SERVICES
CENTRAL BUILDING, C9
ONE PROCTER AND GAMBLE PLAZA
CINCINNATI, OH 45202
EXAMINER
WEINERTH, GIDEON R
ART UNIT PAPER NUMBER
3736
NOTIFICATION DATE DELIVERY MODE
09/30/2021 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
mayer.jk@pg.com
pair_pg@firsttofile.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte HUGH JOSEPH O’DONNELL and
EDWARD DANIEL THEISS III
Appeal 2021-000229
Application 15/451,446
Technology Center 3700
Before JOHN C. KERINS, JILL D. HILL, and
GEORGE R. HOSKINS, Administrative Patent Judges.
HILL, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE

Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1, 2, 4, 5, 7–18, and 20–23.2 We have
jurisdiction under 35 U.S.C. § 6(b).

1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42(a). Appellant identifies The Procter & Gamble Company as the real
party in interest. Appeal Br. 2.
2 Page 1 of the Final Action states that claims 4, 5, 7–18, and 20–23 stand
rejected. Page 2 of the Final Action, however, states that claims 1–5, 7–18,
and 20–22 are rejected. The text of the rejection indicates that claim 23 is
also rejected as obvious. Final Act. 10. Claims 3, 6 and 19 have been
canceled. Appeal Br. 20, 23 (Claims App.). We, thus, discern that claims 1,
2, 4, 5, 7–18, and 20–23 are pending and rejected as obvious.
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We REVERSE.
BACKGROUND
Claims 1 and 23 are independent. Claim 1, reproduced below,
illustrates the claimed subject matter, with certain key limitations in
common with claim 23 italicized:
1. A flexible package for retail sale of discrete articles of a
consumer product, the package comprising:
a flexible film panel, wherein the flexible film panel is
formed only of a film;
external artwork that comprises an image of the discrete
article form of the consumer product;
a raised area having an overall height of 40-5000 microns
disposed on an outside of the flexible film panel, wherein the
raised area comprises a different material than a material of the
flexible film panel, and wherein at least part of the image of the
consumer product is disposed on the raised area;
a plurality of raised reinforcing lines disposed on the
flexible film panel, wherein:
the plurality of raised reinforcing lines are separate
elements from the flexible film panel;
at least some of the plurality of raised reinforcing
lines have an overall height of about 40 microns to about
5,000 microns;
at least some of the raised reinforcing lines have an
overall width of about 25 microns to about 25,000
microns;
the plurality of raised reinforcing lines surround
about 50% to about 100% of an outer perimeter of the
raised area;
the plurality of raised reinforcing lines extend over
a reinforcing area that is about 35% to about 100% of a
total area of the flexible film panel; and
the plurality of raised reinforcing lines cover a total
line area on the flexible film panel, and the total line area
is about 1% to about 35% of the reinforcing area; and
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the discrete articles of the consumer product are contained
within the package;
wherein at least part of the flexible package is opaque,
such that an entire discrete article of the consumer product cannot
be seen from outside of the flexible package when the flexible
package is standing upright on a horizontal support surface.
REFERENCES
Name Reference Date
Scarbrough US 6,979,487 B2 Dec. 27, 2005
Weiss US 2011/0000802 A1 Jan. 6, 2011
Benson US 8,136,664 B2 Mar. 20, 2012
REJECTION
Claims 1, 2, 4, 5, 7–18, and 20–23 stand rejected under 35 U.S.C.
§ 103 as unpatentable over Benson, Weiss, and Scarbrough. Final Act. 2;
see supra footnote 2.
ANALYSIS
Independent claims 1 and 23 recite a “flexible package . . .
comprising: a flexible film panel . . . formed only of a film; external artwork
[comprising] an image of the . . . consumer product;” and a “raised area
[that] comprises a different material than a material of the flexible film
panel, and wherein at least part of the image of the consumer product is
disposed on the raised area.” Appeal Br. 19, 23–24 (Claims App.).
The Examiner finds that Benson discloses, inter alia, a flexible film
package 10 with external artwork 30, 32 including an image of the consumer
product within the package (see Benson Figs. 3, 4), and an embossed raised
area 20, 34 (see Benson Figs. 2A, 2B, 4) on an outside of the package. Final
Act. 2–3. The Examiner also finds that at least part of Benson’s consumer
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product image 30, 32 is disposed on the raised area 34. Final Act. 2–3; see
Benson Fig. 4. The Examiner finds that Benson’s raised area 20, 34
comprises a different material than the flexible package material 22. Final
Act. 3–4; see Benson Figs. 2A, 2B. According to the Examiner, Benson’s
raised area 20, 34 is made three-dimensional with cured reticulated coatings.
Id. at 3 (citing Benson 3:50–56 (“In one embodiment, indicia 14 can include
reticulated coatings that can be made three dimensional by suitable exposure
to UV or E-beam radiation treatments.”)).
Appellant argues, inter alia, that the Examiner erred in finding that
Benson’s consumer product image 30, 32 is disposed on a raised area 34
comprising a different material than its flexible packaging material 22.
Appeal Br. 11. Appellant notes that Benson’s embossed indicia 14, shown
in its Figures 1, 2A, and 2B, is a gloss/image-enhancing coating 24 applied
over the entire illustrated outer surface of the flexible film, including over
embossed area 14. Id. at 12. An additional coating 26 is applied around the
embossed area 14. See Benson Figs. 2A, 2B. According to Appellant,
Benson’s statement that “‘indicia 14 can include reticulated coatings that can
be made three dimensional . . .,’ would be interpreted by one skilled in the
art to mean that the three-dimensional coatings are applied over indicia” 14,
rather than indicia 14 being disposed on the coatings. Appeal Br. 12
(emphasis omitted).
The Examiner responds that the language of independent claims 1 and
23 “simply identifies a film package with a printed image that has a raised
profile and printed lines on its surface.” Ans. 4. The Examiner contends
that Appellant’s consumer product image “is made by raised areas of
applied coatings. In the same way that paint deposited on a canvas forms an
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image, the raised area[] forms the representation of the consumer product.”
Ans. 6. In support of this contention, the Examiner considers, inter alia, the
embodiment of Appellant’s Figures 15A and 15B. Ans. 5. The Examiner
notes that Appellant’s package 1520 includes a visual representation 1531 of
a consumer product thereon, with raised areas 1510-1 and 1510-2
representing shapes of features of the visually represented product. Id.; see
Spec. 9:9–16. We note that Appellant’s visual representation 1531 of its
consumer product is “partially disposed on the raised areas 1510-1 and
1510-2.” Spec. 9:10–12 (emphasis added).
The Examiner compares this disclosure of Appellant’s embodiment to
Benson’s embodiment of Figure 4, also considering Benson’s Figure 2A,
which is a cross sectional representation of a portion of the package of the
separate embodiment of Benson’s Figure 1 that shows an exemplary
embossment technique. See Ans. 6–7. The Examiner likens Benson’s
packaging substrate 22 to Appellant’s package 1520, Benson’s product
image 30 to Appellant’s visual representation 1531, and Benson’s embossed
indicia 14 with Appellant’s raised areas 1510-1 and 1510-2. See id.
The Examiner’s annotated version of Appellant’s Figures 15A and
15B (Diagram 1) is reproduced hereunder.
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Ans. 5.
We additionally reproduce the Examiner’s annotated version of
Benson’s Figures 4 and 2A (Diagram 3) below so that the Examiner’s
comparison can be visualized.

Ans. 7.
The Examiner concludes, from the comparison of Benson and the
embodiment of Appellant’s Figures 15A and 15B, that Benson “discloses an
embossed indicia which is further raised and enhanced by both coatings (24)
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and contrasting coatings (26)” (Ans. 7) as required by the independent
claims’ recitation of a consumer product image and a raised area disposed on
the package’s flexible panel, wherein at least part of the consumer product
image “is disposed on the raised area” (Ans. 8).
Initially, we do not agree with the Examiner’s conclusion, which
appears to be an overly-broad claim construction, that the independent
claims “simply identif[y] a film package with a printed image that has a
raised profile and printed lines on its surface” (Ans. 4). Independent
claims 1 and 23 recite and require a raised area disposed on a flexible film
panel, with the raised area comprising a different material than the panel,
and an image of the consumer product disposed at least partially on the
raised area.
The Examiner’s finding that those claim requirements are met by
Benson is not supported by a preponderance of the evidence. In the
representative context of Benson’s Figure 2A, the Examiner found the
claimed panel to be packaging substrate 22, the claimed raised area to be
embossed portion 20, and the claimed image to be printed indicia 14. See,
e.g., Benson, 2:50–55 (Fig. 1 illustrates embossed indicia 14 can show a
water droplet as relevant to wet wipes 16 stored in package 10); id. at 4:7–
11, 4:33–35 (Fig. 3 illustrates embossed indicia 14 can show wet wipe
packet 28 as stored in package 10); id. at 4:44–47, 5:4–13 (Fig. 4 illustrates
embossed indicia 14 can show dots 34 of sanitary napkin 32 as stored in
package 10).
However, according to Benson, the printing that forms indicia 14 is
disposed underneath image-enhancing (i.e., glossy) coating 24, either on or
in substrate 22. For example, Benson indicates: “The externally visible face
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comprises indicia [14], the indicia having disposed thereon a relatively
glossy or shiny coating [24].” Benson, 1:30–36 (emphasis added). Benson
also indicates “indicia 14 can be. . . further visually enhanced by application
of [coating 24] on at least a portion of the visible surface of an embossed
image.” Id. at 3:24–31 (emphasis added). Benson describes Figure 2A as
illustrating that “images, such as colors, trademarks, product images and the
like can be printed directly on to packaging substrate 22,” such that “[a]fter
indicia is printed . . . an image-enhancing coating 24 can be applied, at least
over and contiguous with a portion of indicia 14.” Id. at 3:31–45 (emphases
added). In light of these disclosures in Benson, we determine that Benson’s
image indicia 14 is not “disposed on a raised area” where the raised area
“comprises a different material” than the panel, as is required by claims 1
and 23 (emphases added). Instead, in Benson, image indicia 14 are disposed
on or in substrate 22, which the Examiner equated to the panel of the claims.
Further, we determine that the Examiner erred in finding that
Benson’s embossed indicia 14 (Figure 2A) or 34 (Figure 4) are “further
raised and enhanced” by contrasting coatings 26. Assuming that the
embossments in the embodiment of Benson’s Figure 4 are the same as the
embossments shown in cross section in Benson’s Figure 2A, Benson’s gloss
coating 24 is shown to cover the entire surface of substrate 22–– including
the product image, and is not a raised area on which part of the consumer
product image is disposed. Regarding Benson’s contrasting coating 26, this
coating is disclosed to surround Benson’s embossed area 14 to offset its
enhancement, rather than to create a raised area on which part of the
consumer product image is disposed. See, e.g., Benson, 3:50–60. The
Examiner, thus, has not established that Benson, or any of the other
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references relied upon in the pending obviousness rejection, disclose the
claimed raised area disposed on a flexible film panel, and an image of the
consumer product being disposed at least partially on the raised area. For
this reason, we do not sustain the pending obviousness rejection.
DECISION SUMMARY
In summary:

Claim(s)
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1, 2, 4, 5,
7–18, 20–
23
103 Benson, Weiss,
Scarbrough
1, 2, 4, 5,
7–18, 20–
23

REVERSED