Ex Parte Rogers et al

Patent Trial and Appeal Board

Dec 27, 2016

12487112 (P.T.A.B. Dec. 27, 2016)

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.
12/487,112 06/18/2009 Neil John Rogers 11088Q 6541
27752 7590 12/29/2016
THE PROCTER & GAMBLE COMPANY
Global IP Services
Central Building, C9
One Procter and Gamble Plaza
CINCINNATI, OH 45202
EXAMINER
POLLEY, CHRISTOPHER M
ART UNIT PAPER NUMBER
1785
NOTIFICATION DATE DELIVERY MODE
12/29/2016 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 NEIL JOHN ROGERS and MICHAEL REMUS1
Appeal 2015-005198
Application 12/487,112
Technology Center 1700
Before ROMULO H. DELMENDO, WESLEY B. DERRICK, and
AVELYN M. ROSS, Administrative Patent Judges.
DERRICK, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on an appeal under 35 U.S.C. § 134 from the
Examiner’s maintained rejection under 35 U.S.C. § 103 of claims 12-14 and
16-20 over Martinez2 in view of Samworth.3 We have jurisdiction pursuant
to 35 U.S.C. § 6.
We AFFIRM.
1 Appellants state that the real party of interest is The Procter & Gamble
Company of Cincinnati, Ohio. Appeal Br. 1.
2 The Examiner sets forth Martinez, WO 2005/007729 A1 (WO ’729),
published January 27, 2005, and Martinez, US 2008/0138593 A1 (Martinez
’593), published June 12, 2008, in the statement of the rejection. The same
PCT application—PCT/US2004/021173—underlies both as the US
application is the national phase of the PCT. We rely on Martinez ’593.
3 Samworth, US 2002/0083855 Al, published July 4, 2002.
Appeal 2015-005198
Application 12/487,112
BACKGROUND
Appellants’ invention relates to a method of constructing a package
having printed indicia that includes providing a layer of foamed thin film of
particular caliper (thickness) and reduced density and printing on a surface
of the foamed thin film by applying ink to a printer surface and contacting
the foamed thin film with the inked printer surface. Spec. Abstract, 2,1. 9.
Claim 12, reproduced from the Appeal Brief Claims Appendix, is the
sole independent claim on appeal.
12. A package comprising:
at least one foamed thin film comprising gaseous
bubbles, void volumes, or cells wherein the
foamed thin film has a caliper4 of between 10 and
250 microns and a density reduction in the range
of between 5% to 50% as compared to a
nonfoamed thin film of substantially the same
caliper that does not comprise gaseous bubbles,
void volumes, or cells; and
printed indicia that is printed on a surface of the package,
wherein a first surface of the foamed thin film is
the printed surface of the package;
wherein the indicia is imprinted on the surface by
applying ink to a printer surface and contacting the
printed surface with the inked printer surface to
coat the printed surface with ink and wherein the
printer surface comprises a plurality of raised dots,
the raised dots having top surfaces configured to
contact the printed surface to imprint the indicia on
the printed surface, and wherein the raised dots
have a dot percentage of no greater than 70%; and
wherein the ink comprises a viscosity of 26 seconds to 35
seconds as measured by DIN 53211 test method or
ISO EN 2431 test method.
4 The term “caliper” is synonymous with “thickness” as used in the
Specification. See, e.g., Spec. 2,1. 9.
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Appeal 2015-005198
Application 12/487,112
DISCUSSION5
Upon consideration of the record, we are not persuaded that the
Examiner erred in determining that one of ordinary skill in the art, armed
with the knowledge of cited prior art, would have been led to the subject
matter of the claims within the meaning of 35 U.S.C. § 103(a).
To prevail in an appeal to this Board, Appellants must adequately
explain or identify reversible error in the Examiner’s rejection. See
37 C.F.R. § 41.37(c)(l)(iv) (2012); see also In re Jung, 637 F.3d 1356,
1365—66 (Fed. Cir. 2011) (explaining that even if the examiner had failed to
make a prima facie case, it has long been the Board’s practice to require an
appellant to identify the alleged error in the examiner’s rejection); In re
Chapman, 595 F.3d 1330, 1338 (Fed. Cir. 2010) (“[T]he burden of showing
that the error is harmful normally falls upon the party attacking the agency’s
determination.” (quoting Shinseki v. Sanders, 556 U.S. 396, 409 (2009))).
On this record, we affirm the Examiner’s decision on the basis of
factual findings and legal conclusions set forth by the Examiner in the Final
Office Action and the Examiner’s Answer. We add the following for
emphasis and completeness.
The Examiner determines that “claim 12 is a product-by-process
claim in that it defines how the package was printed” and, as to the recited
viscosity of the ink, finds no patentable distinction grounded on ink viscosity
because the overall final product will be the same when the ink of the
printed product has dried. Final Act. 3.
5 We refer to the Final Office Action mailed June 6, 2014, the Appeal Brief
filed November 20, 2014, and the Examiner’s Answer mailed February 2,
2015.
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Appeal 2015-005198
Application 12/487,112
As relied on by the Examiner (Final Act. 2-3), Martinez discloses a
foamed sheet having a thickness of 25 microns where a foamed sheet is a
sheet exhibiting a density reduction of at least 10%, but generally a
reduction of between 20 and 50 percent, where the foamed sheets contain
gaseous bubbles and can be used as for various purposes including as
consumer packaging (Martinez ’593 13-14, claim 23).
As relied on by the Examiner (Final Act. 3—4), Samworth discloses
printing plates, preferably a flexographic printing plate, and the use of
flexography to print images on materials such as cardboard and plastic films,
such as packing (Samworth || 6, 14, 15). The Examiner further relies on
Samworth for its teaching to use halftoning to provide halftone dots
identified by the percentage coverage of a given area where the range of
values encompasses that claimed. Final Act. 3-4 (citing Samworth ^[55,
81). As disclosed in Samworth, flexographic printing plates have raised
regions, raised dots where halftoning is used, to provide printed areas by
being coated with ink and then contacting the surface to be printed and
thereby transferring ink to the printed surface. Samworth || 7, 12, Fig. 1.
The Examiner determines that one of ordinary skill in the art would
have found it obvious at the time of the invention to have printed an image
onto the film of Martinez being used as packaging by use of the printing
method of Samworth in order to label bags or packaging for purposes of
identifying the source of items within the bags or packaging. Final Act. 4.
Appellants contend that the references do not teach or suggest all of
the claim limitations and that there is no motivation to combine Martinez
and Samworth. Appeal Br. 2—4.
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Appeal 2015-005198
Application 12/487,112
Appellants argue that the Examiner’s determination that the overall
structure of the final product will be the same once the ink has dried is not
well founded. Appeal Br. 2-3. In this argument, Appellants contend the
existence of various problems that were not recognized by the prior art and
that because they were not recognized, the solution could not have been
considered an obvious modification. Appeal Br. 2-3.
On this record, we are directed to no persuasive evidence to rebut the
Examiner’s determination that the printed product would have the same
structure once the ink dried even if the ink did not have the recited viscosity.
See, e.g., In re Pearson, 494 F.2d 1399, 405 (CCPA 1974) (“Attorney’s
argument. . . cannot take the place of evidence.”). As such, the Examiner’s
position that the limitation is a product-by-process limitation that does not
distinguish the claimed product is well-founded. See, e.g., In re Thorpe, 111
F.2d 695, 697 (Fed. Cir. 1985) (“The patentability of a product does not
depend on its method of production. If the product in a product-by-process
claim is the same as or obvious from a product of the prior art, the claim is
unpatentable even though the prior art was made by a different process.”).
Appellants argue that Samworth fails to provide the requisite teaching
or suggestion that selecting “halftone dots having a % dot area of 70% or
less provides any technical advantage.” Appeal Br. 4.
On this record, we are not persuaded that the Examiner erred because
Samworth discloses use of halftone dots having % dot area over a range
(Samworth || 55, 81) that encompasses the dot percentage range recited in
claim 12—no greater than 70%—and Appellants fail to direct us to any
evidence that there is any criticality to the claimed range {generally Appeal
Br.). “[WJhere the general conditions of a claim are disclosed in the prior
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Appeal 2015-005198
Application 12/487,112
art, it is not inventive to discover the optimum or workable ranges by routine
experimentation.” In reAller, 220 F.2d 454, 456 (CCPA 1955).
As to Appellants’ further arguments as to Martinez and Samworth
(Appeal Br. 3^4), we find them unpersuasive of reversible error where they
fail to squarely address the Examiner’s factual findings and reasoning set
forth in the rejection {generally Final Act.; Ans.). Further, to the extent they
constitute arguments against the references individually, they are without
persuasive merit. In re Keller, 642 F.2d 413, 425 (CCPA 1981).
As to Appellants’ contention that “there is no motivation to combine
the references” (Appeal Br. 2, 4), we find it without persuasive merit
because it wholly fails to address the motivation set forth by the Examiner
(Final Act. 4; Ans. 3). “In determining whether the subject matter of a claim
is obvious, neither the particular motivation nor the avowed purpose of the
patentee controls . . . [A]ny need or problem known in the field of endeavor
at the time of invention and addressed by the patent can provide a reason for
combining the elements in the manner claimed.” KSR Int’l Co. v. Teleflex
Inc., 550 U.S. 398, 419-20 (2007). As such, Appellants arguments fail to
show error in the relied on motivation to provide halftone printing on
packaging to convey that printed material to, inter alia, consumers.
For these reasons, and those set forth by the Examiner in the Final
Office Action and Answer, we are unpersuaded of reversible error in the
Examiner’s rejection of the claims and, accordingly, affirm the Examiner’s
rejection of claims. In re Jung, 637 F.3d at 1365-66.
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Appeal 2015-005198
Application 12/487,112
CONCLUSION
The Examiner’s decision rejecting claims 12-14 and 16-20 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)(1).
AFFIRMED
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