Ex Parte Allen

Patent Trial and Appeal BoardDec 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 2 Appeal 2017-005449 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 3 Appeal 2017-005449 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 4 Appeal 2017-005449 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). 5 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. 6 Appeal 2017-005449 Application 14/052,192 ORDER REVERSED 7