Ex Parte 6364198 et al

Patent Trial and Appeal Board

Apr 22, 2014

95001720 (P.T.A.B. Apr. 22, 2014)

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.
95/001,720 08/19/2011 6364198 JSP-5721-2 9682
42419 7590 04/22/2014
PAULEY PETERSEN & ERICKSON
2800 WEST HIGGINS ROAD
SUITE 365
HOFFMAN ESTATES, IL 60169
EXAMINER
DOERRLER, WILLIAM CHARLES
ART UNIT PAPER NUMBER
3993
MAIL DATE DELIVERY MODE
04/22/2014 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

AVERY DENNISON CORP.
Requester, Cross-Appellant, Respondent

v.

CONTINENTAL DATALABEL, INC.
1

Patent Owner, Appellant
____________________

Appeal 2013-009125
Inter partes Reexamination Control 95/001,720
Patent US 6,364,198 B1
2

Technology Center 3900
____________________

Before JEFFREY B. ROBERTSON, STEVEN D.A. McCARTHY, and
DANIEL S. SONG, Administrative Patent Judges.

SONG, Administrative Patent Judge

DECISION ON APPEAL

1
Continental Datalabel, Inc. is the Patent Owner and the real party in interest
(Appeal Brief of Patent Owner 2).
2
Patent US 6,364,198 B1 (hereinafter "'198 patent") issued April 2, 2002 to
Flynn et al.
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STATEMENT OF THE CASE
Claims 2-47 are subject to reexamination and have been rejected
(RAN
3
1). Claims 37-47 have been newly added during the course of the
reexamination. Claim 1 was canceled and claims 2, 4-6 and 10 were
amended and claims 26-36 added during a previous merged Ex Parte
reexamination (control Nos. 90/009,679 and 90/010,760) which resulted in
Ex Parte Reexamination Certificate being issued on August 2, 2011 (CABR
2; ABPO 2).
The Patent Owner appeals under 35 U.S.C. §§ 134(b) and 315(a) from
the Examiner's rejections with respect to all of the rejected claims (ABPO
2). The Requester cross-appeals under 35 U.S.C. §§ 134(c) and 315(b) from
the Examiner's refusal to adopt a proposed rejection of claims 46 and 47
(CABR 2). We have jurisdiction under 35 U.S.C. §§ 134 and 315.
The '198 patent is involved in the legal action Continental Datalabel
v. Avery Denison Corporation, Civil Action No. 1:09 CV 5980 (N.D. IL)
which has been stayed in view of the present reexamination proceeding
(ABPO 1).
We AFFIRM the Examiner with respect to the Appeal of the Patent
Owner, and dismiss the Cross-Appeal of the Requester.

3
We abbreviate the documents of record as follows:
1. Right of Appeal Notice = RAN
2. Request for Inter Partes Reexamination = Request
3. Appeal Brief of Patent Owner = ABPO
4. Cross-Appeal Brief of Requester = CABR
5. Rebuttal Brief of Requester = Reb. Br.
6. Respondent Brief of Requester = Resp. Br.
The Examiner's Answer incorporates by reference the RAN. Thus, we cite
to the RAN herein.
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THE INVENTION
The '198 patent is directed to a label and an envelope. Figure 7, which
illustrates one embodiment of the claimed invention, is reproduced below:

Figure 7 of the '198 patent reproduced above is a rear plan view of
envelope assembly 10 comprising sheet 12 with tearable shape 20 that
includes panels 22, 24, flaps 26, 28, 30, ring shaped removable panel 56
defined by circles 58, 60', 60, the removable panel being separable from the
assembly for adhesion to a compact disc
4
(col. 5, ll. 26-31; col. 6, ll. 1-9, 47-
65; col. 11, ll. 17-41).
Independent claim 2 is representative of the disclosed invention and
read as follows (Claims App'x, italics added):

4
Also spelled "disk" in the art and herein.
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2. A label comprising:
a face sheet;
a shape on a first surface of the face sheet;
a first circle cut within the face sheet and positioned
within a perimeter of the shape;
a second circle cut within the face sheet and nested
within a first perimeter of the first circle;
an adhesive coating at least partially covering a second
surface of the face sheet; and
a protective panel to which the adhesive coating adheres
significantly less than to the face sheet, wherein the shape
defines a primary panel, a secondary panel, and at least two
flaps, and each of the flaps is adjacent the primary panel on one
of a plurality of edges of the primary panel.

Independent claims 6, 26-29, 31-33, 35, 44, 46 and 47 are also
directed to a label. Independent claims 11, 17 and 25 are directed to an
envelope.

I. APPEAL OF THE PATENT OWNER
A. Examiner's Rejections
5

3. Claims 4-10, 26, 28 and 30-34 under 35 U.S.C. §102(b) as
anticipated by U.S. Patent 5,455,084 to Spencer ("Spencer").
5. Claims 2 and 26-29 under 35 U.S.C. §102(b) as anticipated by
WO 98/29313 to Schwaller et al. ("Schwaller")
6
.

5
We utilize the same numbering of the rejections as used by the Examiner
and the Patent Owner for clarity.
6
Citations to the English translation of record. The statement on page 13 of
the RAN that claims 2 and 26-29 are rejected under 35 U.S.C. § 103(a) as
obvious over Schwaller appears to be an error.
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7. Claims 2-21, 23-26, 28 and 30-34 under 35 U.S.C. § 103(a) as
obvious over U.S. Patent 5,333,780 to Scott ("Scott") in view of Spencer.
9. Claims 2, 3, 11-13, 16-18, 21, 22, 24, 26 and 28 under 35
U.S.C. § 103 (a) as obvious over Scott in view of U.S. Patent 5,052,613 to
Lin ("Lin") and U.S. Patent 5,543,001 to Casillo et al. ("Casillo").
10. Claims 14, 15, 19, 20, 23, 25 and 30-34 under 35 U.S.C.
§103(a) as obvious over Scott in view of Lin, Casillo and U.S. Patent
5,799,982 to McClure et al. ("McClure").
11. Claims 2, 3, 11-13, 16-18, 21, 24, 26 and 28 under 35 U.S.C.
§ 103(a) as obvious over Scott in view of U.S. Patent 3,774,839 to Woods
("Woods") and Casillo.
12. Claims 4-10, 14, 15, 19, 20, 23 and 25 under 35 U.S.C. §103(a)
as obvious over Scott in view of Woods, Casillo and McClure.
13. Claims 2, 3, 11-13, 16-18, 21, 22 and 24 under 35 U.S.C.
§103(a) as obvious over Lin in view of Casillo and FR 1,080,221 to Robba
("Robba").
14. Claims 4-10, 14, 15, 19, 20, 23, 25, 26 and 28 under 35 U.S.C.
§ 103(a) as obvious over Lin in view of Casillo, Robba and McClure.
15. Claims 2-26, 28, 30-34, 44 and 45 under 35 U.S.C. § 103(a) as
obvious over Scott in view of Spencer and U.S. Patent 6,092,843 to Peterson
et al. ("Peterson").
16. Claims 2, 3, 11-13, 16-18, 21, 22 and 24 under 35 U.S.C.
§ 103(a) as obvious over Lin in view of U. S. Patent 3,199,768 to Farmlett
("Farmlett') and Casillo.
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17. Claims 4-10, 14, 15, 19, 20, 23, 25, 26 and 28 under 35 U.S.C.
§ 103(a) as obvious over Lin in view of Farmlett, Casillo and McClure.
18. Claims 2, 3, 27 and 29 under 35 U.S.C. §103(a) as obvious over
U.S. Patent 4,550,683 to Jones ("Jones").
19. Claims 4-10, 26-43 and 47 under 35 U.S.C. § 103(a) as obvious
over Schwaller in view of Casillo, and further in view of McClure.
20. Claims 27, 29, 35 and 36 under 35 U.S.C. § 103(a) as obvious
over Scott in view of WO 97/38919 to Lindblom ("Lindblom") and Casillo.
21. Claims 37, 40 and 44-46 under 35 U.S.C. § 103(a) as obvious
over Scott in view of McClure and Casillo.

B. Analysis
Preliminarily, we note that only those arguments timely made in the
briefs have been considered. Other arguments not made or those not
properly presented to the Board have not been considered and are deemed to
be waived. See 37 C.F.R. § 41.67(c)(1)(vii) ("Any arguments or authorities
not included in the brief permitted under this section or §§ 41.68 and 41.71
will be refused consideration by the Board, unless good cause is shown.").
We also address the various rejections, and arguments directed thereto, in an
order that differs slightly from the order presented by the parties.

Rejection 3
Claims 4-10, 26, 28 and 30-34 have been rejected as anticipated by
Spencer, the Examiner incorporating by reference, Request 103-108 and
Appendix C (RAN 13). Figure 1 of Spencer is reproduced below:
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Figure 1 of Spencer shows a top plan view of a laminate sheet 10 with
plurality of concentric, annular segments 22 that may be removed from the
laminate sheet 10 and adhered to a drain nozzle (Spencer, col. 2, ll. 1-2; 10-
16; col. 2, l. 67-col. 3, l. 5; col. 3, ll. 25-32).
The Examiner finds that Spenser describes a label and meets
limitations of the claims because it discloses "a 'plastic upper layer, a middle
layer of tacky, water-resistant adhesive, and a bottom layer of release
material.'" (RAN 22, citing Spencer, Abst.).
The Patent Owner asserts that Spencer does not anticipate the claims
because it is not a "label" as claimed, but instead, is directed to "a laminate
repair sheet for covering discoloration and/or corrosion of a tub, shower or
sink nozzle." (ABPO 13). However, we agree with the Examiner because as
noted, the sheet 10 of Spencer with its numerous ring-shaped segments is
disclosed as being made of a vinyl label stock (RAN 22; see also Spencer,
col. 3, ll. 50-57). We also agree with the Examiner that "use in plumbing
fixtures is seen as intended use, which bears no patentable weight in an
anticipation rejection of an apparatus claim, as long as the device can be
used to perform the claimed intended use. In the instant case, Spencer could
be used for a label of a disc with no modification required." (RAN 22). In re
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Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997) ("[r]ecitation of a new
intended use for an old product does not make a claim to that old product
patentable").
The Patent Owner also separately argues claims 5, 7 and 9 which
require circles sized corresponding to a non-read/write portion of a disc
(ABPO 13-14). The Patent Owner asserts that such size is not disclosed in
Spencer (ABPO 13-14). However, we agree with the Examiner's finding
that the dimensions of the circles in Spencer "appear to place several of the
circles within the range given in Casillo for the non-read/write portion of the
disc." (RAN 22). In this regard, as noted by the Requester "[t]he '198 patent
does not prescribe any numerical dimensions for read/write and non-
read/write portions of a disc," and agree that the Patent Owner "ignores the
teachings of the '198 patent (and Casillo) that an entire side of a disc can be
a non-read/write portion of the disc." (Resp. Br. 3, citing '198 patent, col.
11, ll. 40-41 ("The removable panel 56 can then be adhered to a non-
read/write side of the compact disc 54."); also citing Casillo, col. 7, ll. 4-7).
The claim limitation "a non-read/write portion of a disc" does not specify a
particular portion of the disc, but merely requires the portion to be not
read/writeable. Thus, the recited "non-read/write portion," can reasonably
be satisfied by any portion of the disc that is not read/writeable, including
any portion of the non-read/write side of a disc which is noted in the
Specification of the '198 patent.
Thus, we find the Patent Owner's arguments unpersuasive and we
affirm Rejection 3.

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Rejection 5
Claims 2 and 26-29 have been rejected as anticipated by Schwaller,
the Examiner incorporating by reference, Request 116-119 and Appendix E
(RAN 14). These claims recite a "shape on a first surface of the face sheet."
Figure 9c of Schwaller is reproduced below:

Figure 9 of Schwaller illustrates a perspective view of compound label
12 having self-adhesive, punched-out label 12e for a compact disk thereon
formed by circles 12o, 12k (Schwaller, pgs. 7, 13, 14).
The dispositive issue with respect to this rejection is the propriety of
the Examiner's finding that "the outer perimeter of 12i [of Schwaller] forms
the boundary of the tearable/assembly shape." (RAN 23). In other words,
the position of the Examiner and the Requester is that the outer perimeter 12i
of the label 12 disclosed in Schwaller satisfies the limitation reciting a
"shape on a first surface of the face sheet." (Id.; see also Resp. Br. 7-8).
We disagree with the Examiner and the Requester. As the Patent
Owner argues, the recited claim limitation requiring a "shape on a first
surface of the face sheet" is not satisfied by the outer perimeter of the face
sheet itself (ABPO 14; see also ABPO 15-17). The outer perimeter of the
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face sheet cannot reasonably be said to be a "shape on a first surface" of the
face sheet. There is nothing in the Specification of the '198 patent that
supports such a broad view and we are not provided with persuasive
evidence that demonstrates that a person of ordinary skill in the art would
interpret the claims at issue in view of the Specification of the '198 patent in
the manner advocated by the Examiner and Requester. In our view, such an
interpretation is unreasonable and improperly reads out this limitation from
the claim.
The Requester also argues that the Patent Owner is precluded from
relying on the above argument (Resp. Br. 4). According to the Requester,
the Examiner in the previous ex parte reexamination of the subject '198
patent rejected various claims stating that shape of the face sheet itself
satisfies the limitation of "a shape on a first surface of the face sheet." (Id.).
The Requester states that while the Patent Owner disputed the Examiner's
interpretation, it never appealed the rejection, and thus, the Patent Owner
"acquiesced to the Examiner's position and waived its right to argue" that the
recited shape of these claims cannot be the shape of the face sheet itself
(Resp. Br. 5, citing TorPharm, Inc. v. Ranbaxy Pharm., Inc., 336 F.3d 1322,
1330 (Fed. Cir. 2003)). We disagree.
Firstly, unlike the facts of TorParm wherein the patentee amended the
claims rather than argue the error in a particular rejection of the Examiner,
as noted by the Requester, the Patent Owner of the subject '198 patent
clearly disputed the interpretation as to the limitations at issue during the
earlier ex parte reexamination. Secondly, the Requester overlooks the
additional portions of the TorParm decision that are pertinent to the present
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situation wherein the Federal Circuit stated "[a] patentee is not required to
fight tooth and nail every possibly adverse thought an examiner commits to
paper, nor to advance redundant arguments for patentability." Id. Thus, we
do not agree with the Requester that the Patent Owner acquiesced as to this
issue and is precluded from arguing that the shape of the face sheet does not
satisfy the recited "shape on a first surface of the face sheet."
Therefore, in view of the above, we reverse Rejection 5. The Patent
Owner's additional arguments directed to specific claims (ABPO 15-17) are
moot.

Rejection 7
Claims 2-21, 23-26, 28 and 30-34 have been rejected as obvious over
Scott in view of Spencer, the Examiner incorporating by reference Request
123-128 and Appendix G (RAN 14). Figure 1 of Scott is reproduced below:

Figure 1 of Scott is a plan view of front sheet 12 adhesively attached
to a back sheet (not shown) with separable envelope pattern 18 that is
removed and assembled into an envelope for a computer diskette, front sheet
12 including panels 28, 30, side tabs 32, and further including removable
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diskette label 24 and customer information label 26 (Scott, col. 2, l. 40-col.
3, l.16; col. 3, ll. 55-63).
The Examiner points out that Scott teaches that the laminate sheet can
be a mailer with "a built-in return envelope and movable labels to enable a
customer or consumer to effect a reply." (RAN 24 quoting Scott, col. 6, ll.
46-49). The Examiner states that "[t]his is seen as a teaching of placing the
labels to the central portion of the envelope." (RAN 24 citing Scott, col. 6, ll.
41-49). The Examiner concludes that
As Scott states that his invention can be adapted to fit disks of
any size and also includes labels to label the disks, one of
ordinary skill in the art would be led to circular labels, such as
shown by Spencer, to more closely fit round disks.
(RAN 24).

In the above regard, the Requester asserts that Scott's envelope is ready for
improvement and placement of a circular label on the panel of the envelope
would have been obvious (Request, App'x G).
The Patent Owner argues, inter alia, that whereas the rejection moves
the labels 24 and 26 of Scott within the envelope shape, it is unclear as to
why a person of ordinary skill would do so because it "would not provide
any value other [than] leaving a weakened cut-out portion on the envelope
after removal." (ABPO 17). The Patent Owner further argues that
one of ordinary skill in the art at the time of the invention of the
'198 Patent would not have found it obvious from the
disclosures of Scott and Spencer to combine a nozzle repair
sheet with a diskette envelope and/or move the labels from
outside to within the boundary of the envelope shape of Scott.
(ABPO 18).

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We generally agree with the Patent Owner. We fail to see why a
person of ordinary skill would have been motivated to place the labels on the
panel of the disclosed envelope to be removed therefrom based on Scott.
The teaching of a "return envelope" does not provide a reason with rational
underpinnings as to why it would have been obvious to place the removable
labels on the panel of Scott rather than elsewhere on the face sheet like all of
the various other labels disclosed in Scott. The Examiner does not appear to
have articulated any other persuasive basis for modifying Scott in view of
Spencer to result in the invention claimed. In addition, while the Examiner
asserts that "one of ordinary skill in the art would be led to circular labels,
such as shown by Spencer, to more closely fit round disks" (RAN 24), the
articulated rationale appears to be based on impermissible hindsight because
it is not readily apparent why a person of ordinary skill in the art would have
applied teachings with respect to a repair sheet for plumbing fixtures when
providing labels for a diskette. Hence, it appears that this rejection is
premised on impermissible hindsight rather than any rational underpinnings.
The Requester asserts that Scott does not identify any concern that the
removable labels would result in a weakened cut-out portion (Resp. Br. 8).
However, this argument is unpersuasive since Scott's labels are not on a
panel of the envelope, and thus, it is expected that Scott would be silent as to
any issues that may be raised by such a placement.
Thus, in view of the above considerations, Rejection 7 is reversed.
The remaining arguments of the Patent Owner (ABPO 18-19) are moot.

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Rejection 9
Claims 2, 3, 11-13, 16-18, 21, 22, 24, 26 and 28 have been rejected as
obvious over Scott in view of Lin and Casillo, the Examiner incorporating
by reference Request 133-137 and Appendix I (RAN 14). Figure 1 of Lin is
reproduced below:

Figure 1 of Lin shows a plan view of unfolded envelope blank 10 with
flaps 12, 14, 16 which is folded to form an envelope, envelope blank 10
having tearable label 20 that can removed to provide a window 27 (not
shown) in face 24 of the envelope, and be used as a return label (Lin, col. 2,
ll. 65-68; col. 3, ll. 36-61; col. 4, ll. 3-11, 47-50).
Figure 1 of Casillo is reproduced below:
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Figure 1 of Casillo shows a labeling device with self-adhesive label
400 that is placed on compact disk 200, label 400 having writing surface 410
and hole area 430 (col. 6, ll. 44-45, 54-58; col. 7, l. 55-col. 8, l. 11).
The Examiner finds that "Lin teaches providing information on a
removable label that creates a window in the envelope[] when removed."
(RAN 25). The position of the Examiner and the Requester is that it would
have been obvious to position the label within the perimeter of the shape of
Scott, especially if an envelope with a window for viewing contents was
desired (see Request Appendix I, pgs. 5-6). Specifically, the Examiner
concludes that there is "motivation to include a CD label within the envelope
shape" since Scott teaches providing a diskette label and "Lin teaches
providing information on a removable label that creates a window in the
envelope, when removed." (RAN 25; see also Resp. Br. 10).
The Patent Owner argues that a window opening would not be created
in Scott by incorporating a label according to Casillo wherein only one layer
12 or 14 of the Scott envelope is removed, and further asserts that Lin and
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Scott are so different that a person of ordinary skill in the art would not have
found the combination obvious (ABPO 20). However, as the Requester
responds, it would have been obvious to a person of ordinary skill in the art
"desiring to use Scott's envelope form 10 for labels for optical disks and
desiring an envelope with a window for viewing the envelope's contents, to
modify Scott's back sheet 16 to comprise a transparent material" in view of
Lin (Resp. Br. 10-11). The Patent Owner argues that the structures of Lin
and Scott "are sufficiently different that one of ordinary skill in the art would
not have found the proposed combination obvious." (ABPO 20). However,
we find no basis for this assertion, both Lin and Scott being directed to
envelopes.
As to claims 26 and 28, the Patent Owner also argues that these claims
recite that the assembly shape comprises three circles and further recite
positioning of the circles which is not disclosed in the combination (ABPO
20). However, we observe that these claims do not require three circles, but
instead recite a first circle positioned within the perimeter of the shape, and a
second circle nested within the first circle. These limitations of claims 26
and 28 would be satisfied by the suggested combination of Scott, Lin and
Casillo because Casillo discloses a label for a compact disk having first and
second circles (see Casillo, col. 7, l. 55-col. 8, l. 11; Fig. 1). As to the
positioning of the label, we observe that Lin discloses positioning a
removable label such as that of Scott directly on a panel of the envelope, and
as articulated, when the label is removed, the contents of the envelope may
be viewed.
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Thus, we are not persuaded by the Patent Owner's arguments and
affirm Rejection 9.

Rejection 10
Claims 14, 15, 19, 20, 23, 25 and 30-34 have been rejected as obvious
over Scott in view of Lin, Casillo and McClure, the Examiner incorporating
by reference Request 138-144 and Appendix J (RAN 15). Figures 1 and 2 of
McClure are reproduced below:

Figures 1 and 2 of McClure shows a top plan view of adhesive sticker
20 which is installed on a compact disk 40 around central hole 42, adhesive
sticker 20 having indicia 26 such as ownership identification information
printed thereon (McClure, col. 3, ll. 10-14, 39-55; col. 4, ll. 16-32).
Rejection 10 is substantively the same as Rejection 9 except that
McClure is relied upon for disclosing a label with owner information that is
affixed to a compact disk adjacent to its hole (see McClure, col. 4, ll. 16-17;
Fig. 2) to thereby provide an additional nested circle (RAN 25-26; Request
App'x J, pg. 2). The Examiner states that "McClure and Casillo can be used
together to provide a label for the contents of the disc (Casillo) as well as the
owner of the disc (McClure)." (RAN 26). In this regard, the position of the
Examiner and the Requester is that it would be obvious to a person of
ordinary skill in the art, "at least by economic and convenience
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considerations – to include both ownership label and a contents label in a
nested arrangement on a single sheet in order to reduce waste and
manufacturing costs." (Request 142).
In addition to the same arguments set forth relative to Rejection 9, the
Patent Owner argues that "Casillo and McClure are directed to alternative
CD labels and there is no reasonable basis to combine these two separate and
different alternatives together." (ABPO 21). The Patent Owner asserts that
"if a consumer is going to use the Casillo label for a CD, then there is no
motivation or rationale provided by the teachings of Casillo and McClure to
also use the McClure label." (ABPO 22). According to the Patent Owner, a
person of ordinary skill in the art would simply enlarge the single ring of
Casillo "to also cover the center portion of the disc" and print the ownership
information on the label of Casillo rather than providing another label nested
therein (id.). The Patent Owner further argues that the label of McClure fits
in, but does not cover, the central ring of a compact disc (id.).
The Requester responds that "[t]he combination eliminates the need to
supply different sheets having different sized labels, thus resulting in
economies in manufacture and distribution" and "[s]imply enlarging the
rings of Casillo would not provide the options" resulting from the
combination (Resp. Br. 6). The Requester further notes that the Patent
Owner "improperly seeks to transform[] the 'corresponding' claim language
into a 'covering requirement.'" (Resp. Br. 4).
We agree with the Examiner and the Requester that these claims
would have been obvious in view of the combination of Scott, Lin, Casillo
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and McClure for the reasons noted above and discussed relative to Rejection
9. Correspondingly, we affirm Rejection 10.

Rejection 11
Claims 2, 3, 11-13, 16-18, 21, 24, 26 and 28 have been rejected as
obvious over Scott in view of Woods and Casillo, the Examiner
incorporating by reference Request 144-149 and Appendix K (RAN 15).
Figure 1 of Woods is reproduced below:

Figure 1 of Woods shows a face view of phonograph record jacket 2
which on its front wall 4, is provided with detachable sections 22, 24 with
record information printed thereon, detachable sections 22, 24 having a
pressure sensitive adhesive to allow them to be adhered to any surface
(Woods, col. 2, l. 3-5, 12-29, 39-49; col. 2, l. 67-col. 3, l. 4).
The Examiner finds that Scott teaches that envelope with movable
labels that can be used in a return envelope (RAN 26). In reference to
Woods which provides removable sections 22, 24 on a primary panel of a
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record jacket, the position of the Examiner and the Requester is that it would
have been obvious to one of ordinary skill in the art desiring to use Scott's
envelope form for an optical disc, "to position the first cut defining the ring-
shaped label within the perimeter of the shape disclosed by Scott." (Request
App'x K, pg. 3; see also Woods, col. 2, l. 27-col. 3, l. 14; Fig. 1). In this
regard, the Requester contends that a person of ordinary skill in the art
"desiring an envelope having movable labels and designed to ensure that the
labels remain with the envelope would have been motivated to cut the labels
into the face sheet on the primary panel [] of Scott's envelope/mailer."
(Resp. Br. 11). We agree with the Examiner and Requester.
The Patent Owner argues that adding a removable label according to
Casillo to layer 12 of Scott does not provide a window opening because
second layer 14 is still present, and cutting a circle through both layers does
not provide an adhesive label according to Casillo (ABPO 23). The Patent
Owner also argues that Woods is not relevant to labeling as the records are
preprinted (ABPO 23). However, we observe that Woods is relied upon for
teaching that removable sections can be provided on a panel of a record
jacket, and this teaching is being applied to the envelope form of Scott so
that the removable diskette label disclosed in Scott would be provided on a
panel of the envelope form. Furthermore, whereas Woods may not provide
a label which is affixed to the contents of the jacket (i.e., the record) which
are preprinted, Scott clearly teaches providing labels for affixing to the
contents of the envelope disclosed therein.
As to claims 26 and 28, the Patent Owner also argues that these claims
require three circles and positioning of the circles which is not disclosed in
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the combination proposed (ABPO 23-24). However, as noted by the
Requester, these claims do not require three circles (Resp. Br. 12). Instead,
they require "a tearable shape" and two circles. The rejection combines the
teachings of Scott with its envelope form (i.e., a tearable shape) and Casillo
so that the rectangular label of Scott would be made circular corresponding
to Casillo which clearly discloses a label having a circular shape with a
circle nested therein (see Casillo, col. 7, l. 55-col. 8, l. 11; Fig. 1).
Therefore, we are not persuaded by the Patent Owner's arguments and
Rejection 11 is affirmed.

Rejection 12
Claims 4-10, 14, 15, 19, 20, 23 and 25 have been rejected as obvious
over Scott in view of Woods, Casillo and McClure, the Examiner
incorporating by reference Request 149-155 and Appendix L (RAN 15).
Rejection 12 is substantively similar to Rejection 11 except that McClure is
relied upon for disclosing a label with owner information that is affixed
adjacent to the hole of a compact disc (RAN 26; see also McClure, col. 4, ll.
16-17; Fig. 2) to thereby provide an additional nested circle (RAN 26). The
Patent Owner's arguments are substantively the same as those set forth with
respect to Rejections 10 and 11 (ABPO 25-26) which we find unpersuasive
for the reasons already discussed.
As to claims 5 and 7, the Patent Owner also argues that incorporating
the label of McClure within the inner circle of the label of Scott and Casillo
does not result in "a ring formed between the first circle and the second
circle [that] is of a size corresponding to a non-read/write portion of a disc."
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(ABPO 26). However, this argument is unpersuasive because both Casillo
and McClure are sized to be affixed to a non-read/write portion of a disc (see
Casillo, col. 7, l. 55-col. 8, l. 11; Fig. 1; McClure, col. 4, ll. 16-17; Fig. 2).
As previously discussed, the claims do not require the label to "cover" a
specific portion of the disc, but rather, merely require it to be sized to an
undefined non-read/write portion which the label of Casillo and/or McClure
does.
The Patent Owner further argues that the combination results in a
waste portion due to McClure's label size and creates difficulty for the end
user (ABPO 26). However, while there may be some "waste" due to the size
of McClure's label size, there is no reasonable basis to conclude that this
waste would dissuade a person of ordinary skill from combining these
references. In fact, we observe that the envelope form of Scott, like the face
sheet of the subject '198 patent, includes areas of the front sheet that are not
used, i.e., that are wasted (compare Scott, Fig. 1 with '198 patent, Fig. 7). In
addition, nesting of the sticker of McClure in the label of Casillo would
reduce such waste. Moreover, the subject '198 patent also specifically
discloses an embodiment wherein such removable panel 63 is removed and
"discarded." (See Spec. of '198 patent, col. 11, ll. 51-56; Fig. 12; see also
col. 11, l. 65-col. 12, l. 4 (disclosing that "middle portion 66 can simply be
discarded."). Finally, we discern no difficulty in providing text or other
indicia on a circular label, such use evident in both Casillo and McClure.
Therefore, we find the Patent Owner's arguments unpersuasive and
affirm Rejection 12.

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Rejections 13 and 14
Claims 2, 3, 11-13, 16-18, 21, 22 and 24 have been rejected as
obvious over Lin in view of Casillo and Robba under Rejection 13, while
claims 4-10, 14, 15, 19, 20, 23, 25, 26 and 28 have been rejected as obvious
in further view of McClure under Rejection 14 (RAN 16, 27-28). Each of
these claims remains rejected as obvious under one or more of Rejections 9-
12. Hence, we decline to reach Rejections 13 and 14.

Rejection 15
Claims 2-26, 28, 30-34, 44 and 45 have been rejected as obvious over
Scott in view of Spencer and Peterson, the Examiner incorporating by
reference Request 166-173 and Appendix O (RAN 16-17). Figure 5 of
Peterson is reproduced below:

Figure 5 of Peterson shows a top plan view of carrier 10 for mailing of
a vehicle license plate, carrier 10 having glassine patch 20 with spot coating
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25 for securing renewal year decal 14 with pressure sensitive adhesive for
affixing the decal to the license plate (col. 3, ll. 54-55; col. 4, ll. 6-38).
The Examiner notes that Scott teaches that the disclosed envelope can
be "adapted to fit disks of any size and also includes labels to label the
disks." (RAN 28; see also Scott, col. 4, ll. 61-65 ("The inventive envelope
…can of course be readily adapted or customized for use with disks or
diskettes of any size.")). According to the Examiner, "one of ordinary skill
in the art would be led to circular labels, such as shown by Spencer, to more
closely fit round disks," and "Peterson adds to the combination of Scott and
Spencer by explicitly teaching the placement of a label within the perimeter
of a primary panel." (RAN 28).
The Patent Owner argues, inter alia, that there is no reasonable basis
in the prior art to combine the diskette envelope of Scott with a drain nozzle
repair sheet of Spencer (ABPO 30; see also ABPO 18 regarding Rejection
7). We generally agree with the Patent Owner that the suggested
combination of Scott with Spencer appears to be based on impermissible
hindsight rather than rational underpinnings as discussed relative to
Rejection 7. Hence, we reverse Rejection 15. The Patent Owner's further
arguments (ABPO 30-31) are moot.

Rejections 16 and 17
Claims 2, 3, 11-13, 16-18, 21, 22 and 24 have been rejected as
obvious over Lin in view of Farmlett and Casillo under Rejection 16, while
claims 4-10, 14, 15, 19, 20, 23, 25, 26 and 28 have been rejected as obvious
in further view of McClure (RAN 16-17, 27-29). Each of these claims
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remains rejected as obvious under one or more of Rejections 9-12. Hence,
we decline to reach Rejections 16 and 17.

Rejection 19
Claims 4-10, 26-43 and 47 have been rejected as obvious over
Schwaller, Casillo and McClure, the Examiner incorporating by reference,
Request 188-193 and Appendix S (RAN 18). The Examiner concludes that
incorporating dimensions of Casillo's label into Schwaller's label would be
obvious and "McClure['s] label could be nested within the perimeter of the
inner surface and still provide space for a spacer ring between Schwaller's
ring shaped panel 'for identifying a compact disk' and McClure's label for
identifying the owner of the disk" so as to "provide multiple identifiers."
(RAN 31).
The Patent Owner's arguments are substantively similar to those
proffered with respect to Rejection 10, i.e., that Schwaller/Casillo and
McClure are directed to alternative compact disc labels and a person of
ordinary skill would enlarge the single ring of Schwaller/Casillo to also
cover the center portion of the disc (ABPO 35-36). However, these
arguments are unpersuasive for reasons similar to those discussed supra
relative to Rejection 10.
The Patent Owner's arguments with respect to claims 5, 7 and 42
regarding size corresponding to non-read/write portion of a disc and that the
combination results in waste and difficulty (ABPO 36-37) are unpersuasive
for the reasons discussed supra relative to Rejection 12, Casillo and/or
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McClure being sized to be affixed to a non-read/write portion of a disc (see
Casillo, col. 7, l. 55-col. 8, l. 11; Fig. 1; McClure, col. 4, ll. 16-17; Fig. 2).
The Patent Owner also asserts that the prior art does not disclose that
"the circle shape has a diameter slightly smaller than a diameter of a
compact disc," a first circle with a diameter approximately equivalent to a
diameter where a read/write portion adjoins a non-read/write portion, or a
second circle having a diameter approximately equivalent to "a diameter of
an inner cut-out circle of the compact disc" as recited in claim 43 which
depends from claim 32 (ABPO 37-38).
However, the first limitation of claim 43 noted by the Patent Owner is
reasonably taught or otherwise rendered obvious by the disclosure of Casillo
which states that "[a] self-adhesive label 400 is designed to fit onto the top
of a compact disk 200 so as to allow for easy identification of the
information provided upon compact disk 200. … Self-adhesive labels onto
compact disk 200, covering all or most of the non-readable side of the
compact disc 200 except for the center hole 210, the center area 220, and the
outer edge 240." (Casillo, col. 7, ll. 55-65, emphasis added).
The second limitation of claim 43 noted by the Patent Owner is also
disclosed by Casillo which states that the "[h]ole area 430 [of label 400] will
typically correspond to and have a similar, if not exact, diameter to that of
center area 220 of compact disk 200." (Casillo, col. 8, ll. 9-11; Fig. 1; see
also Request App'x S, pg. 8).
As to the third limitation of claim 43 noted by the Patent Owner, the
combination of McClure and Casillo results in a label that has a "diameter
approximately equivalent to a diameter of an inner cut-out circle of the CD"
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as noted by the Requester (Resp. Br. 16) because McClure discloses that its
sticker is sized with a central circular opening having a diameter that is
approximately equivalent to the diameter of the central hole of the compact
disc. In particular, McClure discloses that compact discs have a central hole
42 with a diameter of 15 mm (McClure, col. 4, ll. 17-28), and that the central
circular opening 30 of its sticker 20 should have a diameter 32 greater than
15 mm, and more preferably, greater than16.5 mm (McClure, col. 3, ll. 63-
66; Fig. 1). To any extent that the Patent Owner may be asserting that this
circle in the combination of Schwaller, Casillo and McClure is not a
"second" circle, we observe that neither claim 43 nor claim 32 from which
claim 43 depends preclude additional circles. All that is required with
respect to positioning of the recited "second circle" is that it be nested within
a first perimeter of the first circle (Claims App'x) which results from the
suggested combination of Schwaller, Casillo and McClure.
Thus, we are not persuaded by the Patent Owner's arguments and
affirm Rejection 19.

Rejection 18
Claims 2, 3, 27 and 29 have been rejected as obvious over Jones
(RAN 17-18). However, each of these claims remains rejected as obvious
under one of Rejections 9, 11 or 19. Hence, we decline to reach Rejection
18.

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Rejection 20
Claims 27, 29, 35 and 36 have been rejected as obvious over Scott in
view of Lindblom and Casillo (RAN 18). However, each of these claims
remains rejected as obvious under Rejection 19. Hence, we decline to reach
Rejection 20.

Rejection 21
Claims 37, 40 and 44-46 have been rejected as obvious over Scott in
view of McClure and Casillo, the Examiner incorporating by reference Third
Party Response dated February 4, 2012, pgs. 36-44 (hereinafter "3
rd
Pty
Resp."; RAN 18-19). Thus, it is the position of the Examiner and the
Requester that it would have been obvious to "replace the diskette label 24
depicted in Fig. 1 [of Scott] with a ring-shaped label such as that disclosed in
Casillo" which is suitable for compact discs, and to "position McClure's
sticker within the perimeter of Casillo's 'inscribed center hole …' and
thereby provide a combined label that includes both a contents label and an
ownership label." (See, e.g., 3
rd
Pty Resp., pg. 37). It is further the position
of the Examiner and the Requester that it is "[t]he outer periphery of
Casillo's label 400 [which] provides a shape on a first surface of the face
sheet." (Id. at 36).
The Examiner does not rely on the envelope form of Scott to
correspond to the recited "shape" or "circle shape" of these claims, but
rather, relies on the outer periphery of label 24 of Scott when it is modified
to be circular in view of Casillo, and the additional inner circle of Casillo
and circles of the nested McClure sticker as corresponding to the
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additionally recited nested circles of the claims. Hence, because Rejection
21 does not rely on placement of the diskette label within the perimeter of
the envelope form of Scott (see also Resp. Br. 17), it avoids the hindsight
reasoning of Rejection 7 wherein the label was moved to a panel of the
envelope.
The Patent Owner's argues that Casillo and McClure are directed to
alternative compact disc labels and a person of ordinary skill would simply
enlarge the single ring of Casillo to also cover the center portion of the disc
(ABPO 39-41). As to claim 45, the Patent Owner also argues that the
combination of references do not disclose a label that has a size that
corresponds to a non-read/write portion of a disc because McClure's sticker
does not cover the center portion (ABPO 41). These arguments are
unpersuasive for the reasons already discussed supra.
Furthermore, while the Patent Owner points out that claim 46 uses the
transitional term "consisting of," it only argues that "there is no reasonable
basis for [the] combination," and incorporates the arguments proffered with
respect to Rejection 10 (ABPO 41-42). However, this argument is
unpersuasive for the reasons already discussed supra. We also observe that
whereas claim 46 uses the transitional term "consisting of," it is the position
of the Examiner and the Requester that Scott discloses multiple labels on its
envelope form 10, including label 24 for a diskette (see, e.g., 3
rd
Pty Resp.,
pg. 37). Hence, upon modification of label 24 to have a circular shape
shown in Casillo and providing with a sticker as suggested in McClure for
use with a compact disc, a circular label "consisting of" the limitations
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recited in claim 46 results. We are not provided with any persuasive
arguments to the contrary by the Patent Owner.
Therefore, in view of the above, Rejection 21 is affirmed.

C. Orders With Respect to Appeal of the Patent Owner
1. Rejections 3, 9-12, 19 and 21 are AFFIRMED;
2. Rejections 5, 7 and 15 are REVERSED; and
3. We decline to reach Rejections 13, 14, 16-18 and 20.

D. Conclusions With Respect to Appeal of the Patent Owner
In the Appeal of the Patent Owner in which the rejections of claims 2-
47 were appealed, all of these claims remain rejected.

AFFIRMED

II. CROSS-APPEAL OF REQUESTER
The Requester acknowledges that claims 46 and 47 stand rejected by
the Examiner but nonetheless, submits a cross-appeal as to these claims
(CABR 2, fn. 2). The basis of the Requester's cross-appeal is the proposed
rejection of independent claims 46 and 47 under 35 U.S.C. § 103 as obvious
over the combination of McClure and Casillo (CABR 9). The cross-appeal
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raises issues pertaining to Substantial New Question of Patentability
(hereinafter "SNQP").
The Examiner refuses to consider the proposed rejection at issue
stating:
It is not agreed that McClure in view of Casillo raises a
substantial new question of patentability regarding new claims
[] 46 and 47. As stated on pages 16 and 17 of the Order, the
combination of McClure and Casillo is not seen to present a
SNQ[P]. McClure and Casillo have both been considered by
the Office in the earlier reexamination proceeding. The new
proposed rejection is seen as the same as the earlier presented
proposed rejection 6 which was found to not present a SNQ[P],
as both references were extensively discussed (and thus
considered) during the earlier reexamination.
(RAN 9).

The Examiner also states that "[a]s stated in the determination of this
reexamination[,] McClure and Casillo do not present new technical
teachings related to the shortcomings of the other reference which were
discussed in the reasons for allowance of the earlier reexams." (RAN 35).
Thus, the record is clear that the Examiner made a determination
under 35 U.S.C. § 312(a) that the Requester's proposed rejection based on
the combination of McClure and Casillo did not raise a substantial new
question of patentability. The law is equally clear that in inter partes
reexaminations, issues pertaining to the determination of the existence of
SNQP are not appealable. See 35 U.S.C. § 312(c) ("A determination by the
Director under subsection (a) [regarding determination as to whether a
substantial new question of patentability is raised] shall be final and non-
appealable."). Correspondingly, the Board does not possess the authority to
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review the Examiner's determination that the proposed rejection does not
raise SNQP.
The Requester sets forth arguments as to how the Examiner erred in
making the SNQP determination because the two alternative combinations
of McClure and Casillo as now proposed present technical teachings "that
were not considered in prior examination." (CABR 12-15; Reb. Br. R 6-7
and 10-13). The Requester also notes that neither the Patent Owner nor the
Examiner has responded to the Requester's substantive arguments as to
obviousness of these claims (Reb. Br. R 4-5). However, these arguments of
the Requester are immaterial since the Examiner's determination as to the
presence or lack of SNQP is not appealable.
The Requester notes that claims 46 and 47 were newly added during
the reexamination proceeding, and as such, it asserts that these claims are
not subject to the SNQP standard because they "have not been issued and are
not in effect" so that they are not "any claim of the patent" as recited in 35
U.S.C. § 312(c) (CABR 17). In this regard, the Requester argues that these
claims are "viewed as undergoing an initial examination" and refers to
MPEP § 2666.05 which allows citation of new prior art in response to a
patent owner's claim amendment but does not instruct the Examiner to apply
SNQP standard with respect to newly added claims (Reb. Br. 3; CABR 17).
The Requester further cites to In re Swanson for the proposition that SNQP
guards against "simply repeating the prior examination on the same issues
and arguments" which is not applicable in the present appeal where the new
rejection is based on the combination of references that was unconsidered
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during the prior ex parte reexamination (CABR 15 citing Swanson, 540 F.3d
1368, 1380 (Fed. Cir. 2008); Reb. Br. 8-9).
We are not persuaded by the Requester's arguments. Firstly, while not
mirroring the facts of this reexamination, a decision from the Federal Circuit
which issued after filing of the Requester's Appeal Brief (but subsequent to
the Requester's Respondent Brief), supports the view that SNQP is a
requirement for all claims in reexamination. In particular, in Belkin Int’l Inc.
v. Kappos, the court stated:
The statutory framework thus requires that an issue must raise a
'substantial new' question of patentability, as determined by the
Director, with respect to cited prior art before it can be
considered during inter partes reexamination. . . .
Inter partes reexamination is not totally limited to those
issues suggested by the requester that present a substantial new
question of patentability. Indeed, the PTO may make any new
rejection, as long as that rejection also meets the substantial
new question of patentability requirement. … Thus, the scope
of reexamination may encompass those issues that raise a
substantial new question of patentability, whether proposed by
the requester or the Director, but, unless it is raised by the
Director on his own initiative, it only includes issues of
patentability raised in the request under § 311 that the Director
has determined raise such an issue.

Belkin, 696 F.3d 1379, 1382-83 (Fed. Cir. 2012).
Hence, Belkin supports the view that the statutory framework limits
the scope of the reexamination to those issues for which the Examiner has
determined SNQP is raised. In the present cross-appeal, the Examiner has
explicitly determined that there is a lack of SNQP. Whereas the Requester
seeks to distinguish claims 46 and 47 as being new, we do not see
significance in this distinction because the inter partes reexamination is
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nonetheless limited to those issues that the Examiner has determined raises
SNQP. In this regard, these newly added claims still pertain to the '198
patent reexamined, and the statute also prohibits claims or amendments that
enlarge the scope of the claims. See 35 U.S.C. § 314(a).
The Requester further asserts that "[i]n this matter, the Board has
authority to make new grounds of rejection" which should be exercised
(CABR 18). However, it is our opinion that such an action would either
entail the Board making the SNQP determination which is strictly within the
purview of the Director with respect to inter partes reexaminations, or
circumventing the statutory framework which requires finding of SNQP by
the Director. Moreover, to any extent that the position of the Requester may
be that the Examiner's decision determining lack of SNQP is a decision
favorable to patentability, Belkin indicates the contrary. Belkin, 696 F.3d at
1383 (Fed. Cir. 2012)("[T]he Director's determination that an issue does not
raise a substantial new question of patentability is not a decision favorable to
patentability. Lack of a substantial new question of patentability is not a
favorable decision on patentability. Indeed, it cannot be one, as the decision
on the substantial new question preceded the actual reexamination, and
merely raised a 'question' to be answered. Furthermore, it is explicitly non-
appealable under § 312(c).").
While the Requester further refers to MPEP § 2666.05, this section
pertains to 37 C.F.R. §§ 1.947-1.948 which permits the Requester to submit
prior art "which is necessary to rebut" a finding of fact by the examiner or a
response of the patent owner, or which became known or available after
filing of the request. 37 C.F.R. § 1.948. The rule does not stand for the
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proposition that SNQP is no longer a requirement with respect to application
of these references to any claims at issue in the reexamination.
Finally, to the extent that the Requester disagreed with the Examiner,
it should have submitted its arguments in a petition to the Director for relief.
Belkin, 696 F.3d at 1382-83 ("[I]f a requester disagrees with the Director's
determination that no substantial new question of patentability with respect
to certain prior art has been raised, 37 C.F.R. § 1.927 permits the requester
only to file a petition to the Director for review of that decision.").
In view of the above considerations, we dismiss the cross-appeal of
the Requester.

C. Conclusion With Respect to the Cross-Appeal of the Requester
The Requester's cross-appeal is dismissed as non-appealable under 35
U.S.C. § 312(c).

Requests for extensions of time in this inter partes reexamination
proceeding are governed by 37 C.F.R. §§ 1.956 and 41.77(g).
In the event neither party files a request for rehearing within the time
provided in 37 C.F.R. § 41.79, and this decision becomes final and
appealable under 37 C.F.R. § 41.81, a party seeking judicial review must
timely serve notice on the Director of the United States Patent and
Trademark Office. See 37 C.F.R. §§ 90.1 and 1.983.

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ack

Patent Owner:

PAULEY PETERSEN & ERICKSON
2800 WEST HIGGINS ROAD
SUITE 365
HOFFMAN ESTATES, IL 60169

Third Party Requester:

NIXON & VANDERHYE, PC
901 NORTH GLEBE ROAD
11TH FLOOR
ARLINGTON, VA 22203