Ex parte Betts

Board of Patent Appeals and Interferences

Mar 12, 1999

08549869 (B.P.A.I. Mar. 12, 1999)

Application for patent filed October 30, 1995. 1
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today (1) was not written
for publication in a law journal and (2) is not binding precedent of the Board.
Paper No. 16
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte SUZANNE BETTS
____________
Appeal No. 98-0383
Application No. 08/549,8691
____________
ON BRIEF
____________
Before McCANDLISH, Senior Administrative Patent Judge, COHEN
and ABRAMS, Administrative Patent Judges.
ABRAMS, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal from the decision of the examiner
finally rejecting claims 1 and 6. Claims 2-5 have been
canceled. No claims have been allowed.
Appeal No. 98-0383 Page 2
Application No. 08/549,869
The appellant’s invention is directed to a sheet of
wrapping paper having pressure sensitive adhesive material
adhered to a portion thereof (claim 6), and to the combination
of the sheet with a gift box (claim 1). The claims before us
on appeal have been reproduced in an appendix to the Brief.
THE REFERENCES
The references relied upon by the examiner to support the
final rejection are:
Culberg et al. (Culberg) 3,489,333 Jan.
13, 1970
Weder et al. (Weder ‘229) 5,007,229 Apr. 16,
1991
Additional reference applied by the Board:
Weder (Weder ‘638) 5,111,638 May 12,
1992
THE EXAMINER’S REJECTIONS
Claim 1 stands rejected under 35 U.S.C. § 112, second
paragraph, as being indefinite for failing to particularly
Appeal No. 98-0383 Page 3
Application No. 08/549,869
Although not made the subject of a rejection, the2
examiner noted in the Answer that the appellant’s amendment of
December 17, 1996, added new matter to the specification and
to the claims. The appellant has, however, stated that this
material would be removed at the earliest opportunity.
point out and distinctly claim the subject matter which the
appellant regards as the invention.2
Claims 1 and 6 stand rejected under 35 U.S.C. § 103 as
being unpatentable over Weder ‘229 in view of Culberg.
The examiner’s rejections are explained in the Answer.
The arguments of the appellant in opposition to the
examiner’s positions are set forth in the Brief.
OPINION
The Rejection Under 35 U.S.C. § 112, Second Paragraph
This rejection is directed to claim 1, and is based upon
the examiner’s belief that the phrase “having a variety of
shapes and sizes,” used to describe the gift box, “is
considered indefinite because it is not clear what specific
shape of the gift box is being claimed” (Answer, page 4). The
appellant has acquiesced to this rejection, and we therefore
shall sustain it.
Appeal No. 98-0383 Page 4
Application No. 08/549,869
The Rejection Under 35 U.S.C. § 103
The examiner has rejected both claims as being
unpatentable over Weder ‘229 in view of Culberg. We have
evaluated this on the basis that the examiner bears the initial
burden of presenting a prima facie case of obviousness (see In
re Rijckaert, 9 F.3d 1531, 1532, 28 USPQ2d 1955, 1956 (Fed.
Cir. 1993)), which is established when the teachings of the
prior art itself would appear to have suggested the claimed
subject matter to one of ordinary skill in the art (see In re
Bell, 991 F.2d 781, 783, 26 USPQ2d 1529, 1531 (Fed. Cir.
1993)). This is not to say, however, that the claimed
invention must expressly be suggested in any one or all of the
references. Rather, the test for obviousness is what the
combined teachings of the references would have suggested to
one of ordinary skill in the art (see Cable Electric Products,
Inc. v. Genmark, Inc., 770 F.2d 1015, 1025, 226 USPQ 881, 886-
87 (Fed. Cir. 1985)), considering that a conclusion of
obviousness may be made from common knowledge and common sense
of the person of ordinary skill in the art without any specific
hint or suggestion in a particular reference.
Appeal No. 98-0383 Page 5
Application No. 08/549,869
Claim 6 is the broader of the two claims, and we shall
begin our analysis there. This claim is directed to a self
adhering wrapper for use with a gift box. The wrapper has a
front surface and a back surface. A “pressure sensitive
adhesive material” is adhered to the periphery of the back
surface, wherein “the adhesive material attached thereto may be
wrapped about the . . . [gift box] whereby portions of the
adhesive material contactingly engage and attach to portions of
the wrapping material for generally detachably securing the
sheet of material.” A continuous detachable backing strip is
releasably adhered to the adhesive portion, to be peeled off
before positioning the material around the gift box.
As to claim 6, the examiner’s position is that Weder ‘229
discloses all of the subject matter recited except for the
protective backing strip over the adhesive, which in his view
is taught by Culberg and would have been an obvious addition to
the wrapping paper of Weder ‘229. The examiner apparently is
of the view that the “cling material” utilized by Weder ‘229 to
self adhere the wrapper to the gift box can be considered to be
the “pressure sensitive adhesive material” required by claim 6.
The cling material is described in the patent as being film of
Appeal No. 98-0383 Page 6
Application No. 08/549,869
the type commonly used in food wrap, and among the appellant’s
arguments against the propriety of this rejection is that the
Weder ‘229 cling material is not a “pressure sensitive
adhesive” as commonly defined in the art or as described in the
appellant’s specification. We agree, and we note here that the
examiner’s attempt to cast this argument aside is ill-founded,
in that the reference does not teach, as the examiner has
implied on page 7 of the Answer, that adhesive can be used
instead of the cling material, but teaches that adhesive can be
used to attach the cling material to the wrapper.
Thus, Weder ‘229 fails to disclose or teach the claimed
pressure sensitive adhesive or the detachable backing strip
installed thereupon. Culberg has been cited for its teaching
of placing a backing strip over a pressure sensitive adhesive,
but the examiner has not utilized it beyond that point. Such
being the case, the examiner’s application of the these two
references to the claimed subject matter falls short of
establishing a prima facie case of obviousness with regard to
the subject matter recited in claim 6. We therefore will not
sustain this rejection.
Appeal No. 98-0383 Page 7
Application No. 08/549,869
Claim 1 is directed to the combination of a gift box and a
sheet of flexible wrapping material for placing around the gift
box. It recites the same requirements for the wrapping
material, in somewhat different language, but including the
“pressure sensitive adhesive material.” The same rejection has
been applied against it and, as was the case with claim 6, it
also is fatally defective for the same reasons as were
explained above.
There is an additional reason why the rejection of claim 1
cannot be sustained. This claim also requires the presence of
a “protective contact portion” on the front surface of the
wrapping material, which portion is defined as a material from
which pressure sensitive adhesive can be removed without damage
to the underlying surface. As described in the last four lines
of the claim, when the wrapping material is wrapped about the
gift box the pressure sensitive adhesive portion can
contactingly engage portions of the front of the wrapping paper
where the protective contact material is located, thereby being
detachably secured thereto. This structure is not taught by
either of the references.
The examiner’s rejection of claim 1 is not sustained.
Appeal No. 98-0383 Page 8
Application No. 08/549,869
This reference was cited on page 4 of the appellant’s3
specification as an example of the prior art, and thus is not
unknown to the appellant.
New Rejection By The Board
Pursuant to our authority under 37 C.F.R. § 1.196(b), we
enter the following new rejection:
Claim 6 is rejected under 35 U.S.C. § 103 as being
unpatentable over Weder ‘638 in view of Culberg. As described3
by the appellant on page 4 of the specification as one of four
examples of the prior art, Weder ‘638 discloses a method for
wrapping an object with a material “having pressure sensitive
adhesive thereon” (lines 4-5), which “do not describe [a] self
adhering wrapper that is pre-sized and comes with a container
and a sheet of material with an adhesive strip for wrapping a
variety of items” (sentence bridging pages 4 and 5). With
regard to this, we note that claim 6 does not positively recite
a container, which causes the statements in this claim relating
the sizing of the sheet of wrapping material to a box to be of
no patentable significance, and it does not even mention
wrapping a variety of items.
Appeal No. 98-0383 Page 9
Application No. 08/549,869
Claim 6 is directed to a self adhering wrapper which
comprises a rectangular sheet of material having a front
surface and a back surface, a pressure sensitive material
adhered only to the periphery of the back surface and forming a
continuous uninterrupted rectangular adhesive frame about the
rectangular sheet, and a continuous detachable attached backing
strip releasably adhered over the adhesive portion of the
periphery only of the wrapping material to thereby form a
continuous rectangular frame having a periphery co-extensive
with the periphery of the adhesive material and the rectangular
sheet.
Weder ‘638 discloses a number of embodiments of wrapping
sheets having pressure sensitive adhesive portions on one side.
Of particular interest are the ones shown in Figures 11 and 12,
which are sheets of wrapping material provided around their
entire peripheries with a continuous uninterrupted rectangular
frame of pressure sensitive adhesive material. The usefulness
of these sheets in wrapping packages is specifically mentioned
(column 9, line 23; column 10, line 3). While with specific
regard to Figure 11 the patent states that when used as a
wrapping for packages “it is preferable in some applications”
Appeal No. 98-0383 Page 10
Application No. 08/549,869
to use the type of pressure sensitive adhesive which will bond
only to itself (column 9, lines 30-33), the definition of
“pressure sensitive adhesive” which appears early on in this
reference in the description of the embodiment shown in Figures
1 and 2 is “any substance, inorganic or organic, natural or
synthetic, that is capable of bonding to other surfaces or to
other surfaces coated with a like pressure sensitive adhesive”
(column 3, lines 17-19, emphasis added). Therefore, while a
limitation to this effect is not recited in the appellant’s
claim 6, it is clear that Weder ‘638 would have suggested to
the artisan that both types of pressure sensitive adhesive can
be used in wrapping packages.
Weder ‘638 discloses all of the subject matter positively
recited in claim 6 except for the detachable attached backing
strip over the pressure sensitive adhesive, which is removed
prior to wrapping the package. Culberg provides evidence that
this feature was known in the art at the time of the
appellant’s invention. As shown in Figures 1-5 and explained
in the specification, backing sheets 17, 19 and 24 cover
pressure sensitive adhesive strips 15 until the point at which
the surfaces of the wrapping sheet are to be adhered, at which
Appeal No. 98-0383 Page 11
Application No. 08/549,869
time the backing strips are removed. It is our view that it
would have been obvious to one of ordinary skill in the art to
utilize a continuous detachable backing strip over the pressure
sensitive adhesive of Weder ‘638, suggestion being found in the
self evident advantages of protecting the adhesive from
contamination and preventing bonding from occurring until the
proper moment, which would have been known to the artisan, who
is considered to possess skill rather than lack it. See In re
Sovish, 769 F.2d 738, 742, 226 USPQ 771, 774 (Fed. Cir. 1985).
It therefore is our conclusion that the combined teachings
of Weder ‘638 and Culberg establish a prima facie case of
obviousness with regard to the subject matter of claim 6.
SUMMARY
The examiner’s rejection of claim 1 under Section 112 is
sustained.
The examiner’s rejection of claims 1 and 6 under Section
103 is not sustained.
A new rejection of claim 6 under Section 103 has been
made.
Appeal No. 98-0383 Page 12
Application No. 08/549,869
The decision of the examiner is affirmed-in-part.
Appeal No. 98-0383 Page 13
Application No. 08/549,869
In addition to affirming the examiner’s rejection of one
or more claims, this decision contains a new ground of
rejection pursuant to 37 C.F.R. § 1.196(b)(amended effective
Dec. 1, 1997, by final rule notice, 62 Fed. Reg. 53,131, 53,197
(Oct. 10, 1997), 1203 Off. Gaz. Pat. & Trademark Office 63, 122
(Oct. 21, 1997)). 37 C.F.R. § 1.196(b) provides, “A new ground
of rejection shall not be considered final for purposes of
judicial review.”
Regarding any affirmed rejection, 37 C.F.R. § 1.197(b)
provides:
(b) Appellant may file a single request for rehearing
within two months from the date of the original
decision . . . .
37 C.F.R. § 1.196(b) also provides that the appellant,
WITHIN TWO MONTHS FROM THE DATE OF THE DECISION, must exercise
one of the following two options with respect to the new ground
of rejection to avoid termination of proceedings (37 C.F.R.
§ 1.197(c)) as to the rejected claims:
(1) Submit an appropriate amendment of the
claims so rejected or a showing of facts relating to
the claims so rejected, or both, and have the matter
reconsidered by the examiner, in which event the
application will be remanded to the examiner. . . .
Appeal No. 98-0383 Page 14
Application No. 08/549,869
(2) Request that the application be reheard
under § 1.197(b) by the Board of Patent Appeals and
Interferences upon the same record. . . .
Should the appellant elect to prosecute further before the
Primary Examiner pursuant to 37 C.F.R. § 1.196(b)(1), in order
to preserve the right to seek review under 35 U.S.C. §§ 141 or
145 with respect to the affirmed rejection, the effective date
of the affirmance is deferred until conclusion of the
prosecution before the examiner unless, as a mere incident to
the limited prosecution, the affirmed rejection is overcome.
If the appellant elects prosecution before the examiner
and this does not result in allowance of the application,
abandonment or a second appeal, this case should be returned to
the Board of Patent Appeals and Interferences for final action
on the affirmed rejection, including any timely request for
rehearing thereof.
Appeal No. 98-0383 Page 15
Application No. 08/549,869
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 C.F.R.
§ 1.136(a).
AFFIRMED-IN-PART
37 C.F.R. § 1.196(b)
HARRISON E. McCANDLISH )
Senior Administrative Patent Judge
)
)
)
)
) BOARD OF PATENT
IRWIN CHARLES COHEN ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
NEAL E. ABRAMS )
Administrative Patent Judge )
NEA/jlb
Appeal No. 98-0383 Page 16
Application No. 08/549,869
Michael J. Colitz Jr.
217 Harbor View Lane
Largo, FL 33770