Ex Parte Port et al

Patent Trial and Appeal Board

Jun 22, 2016

12793024 (P.T.A.B. Jun. 22, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
121793,024 06/03/2010
27752 7590 06/24/2016
THE PROCTER & GAMBLE COMPANY
Global Patent Services - Legal IP
Central Building, CS
One Procter and Gamble Plaza
CINCINNATI, OH 45202
FIRST NAMED INVENTOR
Markus Port
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.
CM3388Q 5824
EXAMINER
CHEUNG, CHUN HO!
ARTUNIT PAPER NUMBER
3728
NOTIFICATION DATE DELIVERY MODE
06/24/2016 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 MARKUS PORT, STEPHAN SPIEKERS, IBRAHIM ULAS, and
THOMAS ALBERT REINHOLD WESSEL
Appeal2014-007076
Application 12/793,024
Technology Center 3700
Before STEFAN STAICOVICI, WILLIAM A. CAPP, and
SEAN P. O'HANLON, Administrative Patent Judges.
O'HANLON, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Markus Port et al. (Appellants1) appeal under 35 U.S.C. § 134 from
the Examiner's Oct. 29, 2013 decision finally rejecting claims 1-5 and 7-
20.2 We have jurisdiction over this appeal under 35 U.S.C. § 6(b).
SUMMARY OF DECISION
We AFFIRM.
1 According to Appellants, the real party in interest is The Procter & Gamble
Company. App. Br. 1.
2 Claim 6 is canceled. Nov. 27, 2012 Amendment 3.
Appeal2014-007076
Application 12/793,024
SUMMARY OF INVENTION
Appellants' invention relates "to plastic bags for stacked soft hygienic
products." Spec. 1, 1. 5. Claim 1, reproduced below from page 10 (Claims
Appendix) of the Appeal Brief, is illustrative of the claimed subject matter:
1. A plastic bag comprising artwork printed on an external
surface containing stacked soft hygienic products, wherein the
plastic bag comprises one machine direction seal along one
closure comer, wherein the artwork is continuous across a
complete periphery of the plastic bag, wherein the one machine
direction seal does not interrupt the artwork printed on the
external surface, and wherein the plastic bag does not present a
folding line in the center of a side panel.
REFERENCES
The Examiner relies on the following prior art references in rejecting
the claims on appeal:
Beer US 2001/0022866 Al Sept. 20, 2001
Buschkiel US 2003/0127352 Al July 10, 2003
Underhill US 2004/0211696 Al Oct. 28, 2004
Burgess US 7,600,641 B2 Oct. 13, 2009
Clark '006 US 7, 780,006 B2 Aug. 24, 2010
Clark '473 US 7,866,473 B2 Jan. 11, 2011
REJECTIONS
I. Claims 1-5, 7, 8, 10, 13, and 18-20 are rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Clark '006, Beer, and Burgess.
II. Claim 9 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Clark '006, Beer, Burgess, and Clark '473.
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Application 12/793,024
III. Claims 11 and 12 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Clark '006, Beer, Burgess, and Buschkiel.
IV. Claims 14--17 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Clark '006, Beer, Burgess, and Underhill.
ANALYSIS
Rejection I
The Examiner finds that Clark '006 discloses, inter alia, a plastic bag
that does not present a folding line in the center of a side panel, but does not
disclose the bag having "one machine directional seal along one closure
comer" or artwork "print[ ed] continuous[ly] across a complete periphery of
the plastic bag, wherein the one machine direction seal does not interrupt the
artwork printed on the external surface [of the] plastic bag." Final Act. 2-3.
The Examiner relies on Beer to teach a plastic bag container having one
machine direction seal, and asserts that it would have been obvious to a
skilled artisan "to modify the plastic package of Clark '006 with [a] single
side seal as taught by Beer to provide a pleasing no side wall seal visual
appearance and to provide support for the package." Id. at 3 (citing Beer
i-fi-120, 28; Figs. 1, 6). The Examiner relies on Burgess to teach a plastic bag
with a single machine direction seal and artwork printed continuously across
a complete periphery without interruption by the machine direction seal, and
asserts that it would have been obvious to a skilled artisan "to modify the
package of Clark '006 as modified [by Beer] with indicia/artwork printed on
the exterior surface of the package and avoid the indicia/artwork printed on
the machine-direction seal as taught by Burgess to provide a complete,
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Application 12/793,024
uninterrupted artwork/indicia to create a better appearance to the package."
Id. at 3--4 (citing Burgess Figs. 1-3).
Regarding claim 1, Appellants argue that the package disclosed by
Burgess includes "a wide heat seal representing a flap. The flap has two
sides and therefore does interrupt the artwork." App. Br. 5. Appellants
further argue that, "as shown in FIG. 3, the lines showing the printed indicia
are vertical in the rear heat seal 18. All the other lines of indicia in the front
and back of the package are shown in a horizontal left to right direction." Id.
Thus, according to Appellants, "one of ordinary skill in the art would
interpret the indicia in the rear heat seal of FIG. 3 as disruptive or
interrupting the indicia on the rest of the package which moves from left to
right." Id. Appellants continue that the "claimed invention requires that the
claimed artwork be continuous across a complete periphery of the plastic
bag," and in contrast, "Burgess discloses a package with non-continuous
artwork on the back and a rear seal which is not part of the artwork on the
back of the package." App. Br. 5.
The Examiner answers:
Burgess clearly shows the artwork ( 54) position in the
front of the package (Figure 2), and further discloses the similar
artwork (54) position in the back of the package (Figure 3).
Figures 4 and 5 of Burgess shows [sic] that the package is form
[sic] from a single piece [of] plastic material wrapped around
the wiping articles (24) with a single machine directional seam
(18). Such structure meets appellant's claimed invention "the
artwork is continuous across a complete periphery of the plastic
bag" because the artwork is continuous without interrupt [sic]
starting from one end of the seam, across the back of the
package, tum without any seam to interrupt the artwork 54,
across the front surface, tum again without any seam to
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Appeal2014-007076
Application 12/793,024
interrupt the artwork 54 opposite the first turning point and
ended [sic] at the same seam.
Ans. 2-3. The Examiner further asserts that "it has been held that when the
claimed printed matter is not functionally related to the substrate it will not
distinguish the invention from the prior art in terms of patentability." Id.
at 3 (citing In re Gulack, 703 F.2d 1381 (Fed. Cir. 1983)).
We are not persuaded by Appellants' arguments for the reasons noted
by the Examiner. Regarding Burgess's flap 32, printed indicia 54 are shown
extending across flap 32 in Fig. 2, so it is not seen how the flap interrupts the
indicia. Moreover, the Examiner does not propose to modify the Clark '006-
Beer combination to include the Burgess flap. Regarding Burgess's rear
heat seal 18, Appellants recognize the seal to contain printed indicia thereof,
but argues that its apparent vertical orientation, rather than the horizontal
orientation at other locations on the package, evidences interruption of the
• r1 • r1 • • u i.. . . + i.. . r1 • r1 • • • • +-h . pr1nteu 1nu1c1a. _l__l_owever, t_L_Le or1entat1on 0_1_ t_L_Le pr1nteu 1nu1c1a 1s 1nsu_l_l_1c1ent
to establish patentability. See Gulack, 703 F.2d at 1385 ("Where the printed
matter is not functionally related to the substrate, the printed matter will not
distinguish the invention from the prior art in terms of patentability.") (citing
In re Miller, 418 F .2d 1392 (CCP A 1969).
Regarding claim 18, Appellants argue that "none of the prior art cited
teach or suggest trimming the single machine direction seal which is located
along one closure comer of the package. Further, this additional limitation
is not addressed in the rejection." App. Br. 6.
The Examiner answers that "the limitation 'wherein the single
machine directional seal is trimmed of debris' is in a [sic] product-by-
process language and this limitation has been given little or no patentable
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Application 12/793,024
weight." Ans. 4--5. Furthermore, according to the Examiner, even if this
limitation is considered, "both Beer and Burgess shows [sic] that the edge of
the seam (36 of Beer, 18 of Burgess) are [sic] already trimmed (to free of
excess or extraneous matter-definition from Merriam Webster dictionary) to
form a straight line prior [to] the single machine direction seal is [sic]
formed." Id. at 5. 3
With respect to the "wherein the single machine direction seal is
trimmed of debris" limitation, claim 18 is directed to a product (a "plastic
bag"), not the process of making the product. It has been well established
that, when a product recited in product-by-process format reasonably
appears to be the same as or obvious from a product of the prior art, the
burden is on applicant to show that the prior art product is in fact different
from the claimed product, even though the products may be made by
different processes. In re Marosi, 710 F.2d 799, 803 (Fed. Cir. 1983) (citing
In re Best, 562 F.2d 1252, 1255 (CCPA 1977)). We agree with the
Examiner's finding that Beer and Burgess appear to show trimmed seal
edges, and Appellants have not convincingly explained how the seal in their
claimed plastic bag differs therefrom.
Accordingly, for the foregoing reasons, we sustain the Examiner's
rejection of independent claims 1 and 18 as being unpatentable over
Clark '006, Beer, and Burgess. Appellants do not make any other
substantive argument regarding the rejection of claims 2-5, 7, 8, 10, and 13,
each of which depends, directly or indirectly, from claim 1, or of claims 19
3 We note that Appellants did not address claim 18 in the Reply Brief nor
file a petition pursuant to 37 C.F.R. § 41.40(a).
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Application 12/793,024
and 20, each of which depends, directly or indirectly, from claim 18. See
App. Br. 3---6. Therefore, we likewise sustain the rejection of claims 2-5, 7,
8, 10, 13, 19, and 20.
Rejection II
With respect to the rejection of claim 9, Appellants rely solely on the
arguments presented above in regards to the rejection of claim 1. Id. 6-7.
Accordingly, for the same reasons as discussed above, we also sustain the
rejection of claim 9 under 35 U.S.C. § 103(a) as being unpatentable over
Clark '006, Beer, Burgess, and Clark '473.
Rejection III
With respect to the rejection of claims 11 and 12, Appellants rely
solely on the arguments presented above in regards to the rejection of claim
1. Id. at 7. Accordingly, for the same reasons as discussed above, we also
sustain the rejection of claims 11 and 12 under 35 U.S.C. § 103(a) as being
unpatentable over Clark '006, Beer, Burgess, and Buschkiel.
Rejection IV
With respect to the rejection of claims 14--17, Appellants rely solely
on the arguments presented above in regards to the rejection of claim 1. Id.
at 7-8. Accordingly, for the same reasons as discussed above, we also
sustain the rejection of claims 14--17 under 35 U.S.C. § 103(a) as being
unpatentable over Clark '006, Beer, Burgess, and Underhill.
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Application 12/793,024
DECISION
The Examiner's decision to reject claims 1-5 and 7-20 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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