Ex Parte Bernard et al

Board of Patent Appeals and Interferences

May 28, 2010

10873887 (B.P.A.I. May. 28, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte RICHARD A. BERNARD, JUDITH D. AUSLANDER,
DONALD G. MACKAY, and JAY REICHELSHEIMER
____________

Appeal 2009-002423
Application 10/873,887
Technology Center 1700
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Decided: May 28, 2010
____________

Before MICHAEL P. COLAIANNI, JEFFREY T. SMITH, and
JEFFREY B. ROBERTSON, Administrative Patent Judges.

SMITH, Administrative Patent Judge.

DECISION ON APPEAL

Appellants appeal under 35 U.S.C. § 134 from the Examiner's final
rejection of claims 1, 2, 4-12, 14-20, and 30. We have jurisdiction under 35
U.S.C. § 6(b). 1

1 In rendering this decision we have considered Appellants’ Brief dated
April 22, 2008
Appeal 2009-002423
Application 10/873,887

STATEMENT OF THE CASE
Claim 1 is representative of the subject matter on appeal and is set
forth below: 2
1. A label comprising:
a main section having a thermal sensitive layer comprising a color
former and developer dispersed in a binder forming a blank label
section; and
a fluorescent signal section on the blank label section, that is
thermally stable at 70° C and above to allow the formation of an
image;
wherein the label is adapted to have an indicium subsequently
printed on the blank label section by a printing device, wherein the
fluorescent signal section provides a water and moisture protection
layer to the fluorescent signal section without the fluorescent
signal section substantially interfering with reading of the indicium
on the label.

THE REJECTIONS
Appellants request review of the following rejection
Claims 1, 2, 4-6, 8-12, 14-17, 19, 20, and 30 stand rejected under 35
U.S.C. § 103(a)as unpatentable over Gray, U.S. 5,685,570 in view of
Sakamoto, U.S. 6,596,358. Claims 1, 2, 7-9, 12-14, 18, and 30 stand
rejected under 35 U.S.C. § 103(a) as unpatentable over Paz-Pujalt, U.S.
6,136,752 in view of Sakamoto.
In rejecting the subject matter of independent claims 1 and 12 the
Examiner found that Gray and Paz-Pujalt each describe a label comprising a

2 The claim is reproduced from the appendix to the Appeal Brief.
2
Appeal 2009-002423
Application 10/873,887

fluorescent signal section on a blank label section “wherein the section
would inherently be thermally stable at 70° C and above to allow the
formation of an image since the section is made with a fluorescent material
and is being printed with markings or images.” (Ans. 5 and 8).
Appellants contend that the appealed rejections are not proper because
the cited prior art does not disclose or anticipate the claimed “a fluorescent
signal section on a blank label section, that is thermally stable at 70° C and
above to allow the formation of an image.” (Br. 14 and 17).
ISSUE
The dispositive issue is:
Did the Examiner identify sufficient evidence to establish that Gray
and Paz-Pujalt each describe a label comprising a fluorescent signal section
on a blank label section that was inherently thermally stable at 70° C and
above to allow the formation of an image since the section is made with a
fluorescent material and is being printed with markings or images as
required by the independent claims 1, and 12?
We answer this question in the negative.
ANALYSIS
Appellants have challenged the Examiner’s inherency position
regarding the thermal stability of the fluorescent signal section of both Gray
and Paz-Pujalt.
The Examiner contends that both Gray and Paz-Pujalt disclose
“a fluorescent signal section on the blank label section..., is
formed with a phosphor varnish that has luminescent abilities.
Since both the prior art and the claimed invention are
constructed with the same luminescent materials the prior art
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Appeal 2009-002423
Application 10/873,887

section would inherently be thermally stable at 70°C and above
to allow the formation of the image since the section is made
with the fluorescent material and is being printed with markings
or images.”
(Ans. 10 and 12-13).

The Examiner's citation to “florescent materials” without more is
insufficient to support an inherency determination. The Examiner has not
identified specific (fluorescent) materials or the characteristics of the type of
the fluorescent materials utilized in either Gray or Paz-Pujalt. Consequently
the Examiner has not identified evidence to support an inherency position.
For these reasons we reverse the stated rejection.
DECISION
The Examiner’s rejection of claims 1, 2, 4-12, 14-20, and 30 under 35
U.S.C. §103(a) is reversed.
REVERSED

tc

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