Ex Parte Blank et al

Board of Patent Appeals and Interferences

Dec 8, 2008

11013561 (B.P.A.I. Dec. 8, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte PAUL C. BLANK,
MARK KEETON and JOSEPH ROTH
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Appeal 2008-3819
Application 11/013,561
Technology Center 1700
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Decided: December 8, 2008
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Before CATHERINE Q. TIMM, LINDA M. GAUDETTE, and
KAREN M. HASTINGS, Administrative Patent Judges.

HASTINGS, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING
Appellants, pursuant to 37 C.F.R. § 41.52, have submitted a timely
Request for Rehearing dated October 21, 2008 (hereafter the “Request”),
requesting rehearing of the original Decision in this appeal dated September
4, 2008 (hereafter “Dec.”).
The Examiner rejected claims 1-27 under 35 U.S.C. § 103(a) as
obvious over the combined teachings of Smith, Slagsvol, and Michel; the
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Application 11/013,561

Examiner also rejected claims 1, 2, 5, 6, 8-22, and 24-27 on the ground of
nonstatutory obviousness-type double patenting (Dec. 3).
We reversed both the § 103 rejection and the nonstatutory
obviousness-type double patenting rejection (Dec. 15).1
We also entered a new ground of rejection of claim 1 as anticipated
by, in the alternative, as obvious over Lane (Dec. 10-15).
An applicant may request reconsideration pointing out, with
particularity, matters which were overlooked or misapprehended by the
panel in reaching its decision. 37 C.F.R. § 41.52(a)(1).

ISSUES
Issue 1
Have Appellants established that we reversibly erred in reversing the
Examiner’s rejection by deciding the appeal based on the key issue on
appeal, and declining to consider other issues and separately argued
dependent claims (Request 3-5)?
Issue 2
Have Appellants established that we reversibly erred in making a new
ground of rejection of claim 1 over Lane (Request 5-30)?

1 While in the statement of the rejection we correctly identified the claims
subjected to the nonstatutory obviousness-type double patenting rejection as
claims 1, 2, 5, 6, 8-22, and 24-27, we inadvertently misstated the claims in
our statement of the issue (Decision 3). Appellants request correction
(Request 3). We correct the issue statement to read as follows: “The second
issue is whether the Appellants have shown that the Examiner reversibly
erred in rejecting claims 1, 2, 5, 6, 8-22, and 24-27 on the ground of
nonstatutory obviousness-type double patenting.” The error was harmless as
we had reviewed and considered the correct claims (those claims reproduced
in Appellants’ Claim Appendix to the Brief) in making our determination.
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ANALYSIS
Issue 1
Appellants contend that since Appellants “clearly argued the many
claims separately”, they are “entitled to the Board’s analysis and written
record for each of those many claims” (Request 3).
We decline Appellants’ invitation to modify our reasons for reversal.
We have duly considered each and every claim on appeal (Dec. 4-9). As
Appellants recognize, our “decision to reverse the rejections can of course
stand on any single issue” (Request 4). Indeed, it is desirable as a matter of
judicial economy that we only decide the dispositive issue(s). We do not
need to address every cumulative and/or duplicative argument presented.
Issue 2
In addition to reversing the rejections advanced by the Examiner, we
entered a new ground of rejection. Per the new ground, we rejected claim 1
under 35 U.S.C. § 102(b) or, in the alternative, under 35 U.S.C. § 103(a) as
obvious over Lane (US 2,170,147, Aug. 22, 1939). (Dec. 10-15).
The § 102 Rejection
Appellants contend that Lane does not anticipate claim 1 since Lane
does not explicitly describe making the labels of Fig. 5 into a roll of labels as
exemplified by the roll of labels depicted in Fig. 2 (e.g., Request 8-10). In
effect, Appellants argue that the rejection relies upon improper picking and
choosing from the various embodiments of Lane.
For a § 102 rejection to be proper, the prior art must clearly and
unequivocally disclose the claimed invention or direct those skilled in the art
to the claimed invention without any need for picking, choosing, and
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combining various disclosures not directly related to each other by the
teachings of the cited reference. In re Arkley, 455 F.2d 586, 587-88 (CCPA
1972). See also Net MoneyIn, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1369
(Fed. Cir. 2008). However, such picking and choosing may be entirely
proper in making a § 103 rejection. In re Arkley, 455 F.2d at 587-88.
Appellants’ argument is persuasive and, therefore, we modify our
decision to remove the rejection of claim 1 as anticipated by Lane.
However, we continue to rely on Lane as evidence of obviousness under 35
U.S.C. § 103.
The § 103 Rejection
Principles of Law
A claimed invention is not patentable if the subject matter of the
claimed invention would have been obvious to a person having ordinary skill
in the art. 35 U.S.C. § 103(a); KSR Int’l Co. v. Teleflex Inc., 127 S. Ct. 1727
(2007); Graham v. John Deere Co. of Kansas City, 383 U.S. 1 (1966).
Whether a prior art reference is within the scope of the prior art one of
ordinary skill in the art would have been presumed to have been aware, i.e.
analogous art, is a threshold question in the inquiry of obviousness. To label
the reference as analogous prior art merely connotes that it is relevant to a
consideration of obviousness under section 103 as “prior art.” In re Sovish,
769 F.2d 738, 742 (Fed. Cir. 1985). Prior art is “analogous,” i.e., part of the
“pertinent art” if it is either “in the field of the applicant's endeavor or is
reasonably pertinent to the problem with which the inventor was concerned.”
In re Kahn, 441 F.3d 977, 986-87 (Fed. Cir. 2006).
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“The combination of familiar elements according to known methods
is likely to be obvious when it does no more than yield predictable results.”
KSR Int'l Co. v. Teleflex Inc., 127 S. Ct. 1727, 1739 (2007).
An obviousness analysis “need not seek out precise teachings directed
to the specific subject matter of the challenged claim, for a court [or this
Board] can take account of the inferences and creative steps that a person of
ordinary skill in the art would employ.” KSR, 127 S. Ct. at 1741.
It is a basic principle that the question under 35 U.S.C. § 103 is not
merely what the references expressly teach but what they would have
suggested to one of ordinary skill in the art at the time the invention was
made. See Merck & Co., Inc. v. Biocraft Labs., Inc., 874 F.2d 804, 807
(Fed. Cir. 1989). A reference stands for all of the specific teachings thereof
as well as the inferences one of ordinary skill in this art would have
reasonably been expected to draw therefrom. In re Fritch, 972 F.2d 1260,
1264-65 (Fed. Cir. 1992).
In Leapfrog Enterprises, Inc. v. Fisher-Price, Inc., 485 F.3d 1157,
1162 (Fed. Cir. 2007), the Federal Circuit found no error in the District
Court's determination that a combination of elements was proper in part
because Leapfrog had presented no evidence that the inclusion of a reader in
the combined device was “uniquely challenging or difficult for one of
ordinary skill in the art” or “represented an unobvious step over the prior
art.” Id. (citing KSR, 127 S. Ct. at 1740-41).
While “it can be important to identify a reason that would have
prompted a person of ordinary skill in the relevant field to combine the
elements in the way the claimed new invention does . . . [an obviousness]
analysis need not seek out precise teachings [in the prior art] directed to the
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specific subject matter of the challenged claim.” KSR Int'l Co. v. Teleflex
Inc., 127 S. Ct. 1727, 1741 (2007). As the Supreme Court has noted, “[i]f a
person of ordinary skill can implement a predictable variation, § 103 likely
bars its patentability. Id. at 1740. “A person of ordinary skill is also a
person of ordinary creativity, not an automaton.” Id. at 1742. See also
DyStar Textilfarben GmbH & Co. Deutschland KG v. C.H. Patrick Co., 464
F.3d 1356, 1367 (Fed. Cir. 2006) (“Our suggestion test is in actuality quite
flexible and not only permits, but requires, consideration of common
knowledge and common sense”).
Findings of Fact and Analysis
Appellants first argue that Lane is not analogous art. (Request 23).
However, Lane is clearly directed to the same field of endeavor as
Appellants claim; that is, adhesive labels. Furthermore, Lane is also
reasonably pertinent to the problem of preventing gumming of machinery
by adhesive patches of labels. Lane teaches that it is desirable for there to
be “ungummed margins” (i.e., “adhesive-free zones” as recited in
independent claim 1) in between “gummed areas 11” (e.g., “adhesive
patches” as recited in claim 1) and the edges of each label (as, e.g., defined
by perforations 12) so that cutting can occur without fouling or gumming
of the cutting knife (see, e.g., Lane, p. 3, col. 1., ll. 11-44).
Therefore, we cannot agree with Appellants that Lane is “non-
analogous art,” i.e., is so outside the scope of what the inventor would be
presumed to know that Lane should not be considered in an obviousness
rejection.
Appellants contend that “the mere forming of the label of figure 5 into
the roll of figure 2 would render that roll inoperable for its intended
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purpose” and, therefore, Lane “teaches away” from configuring the labels of
figure 5 into a roll (Request 23-24). Specifically, Appellants argue that
because the insulating coating (which insulates against sticking) is only
locally applied, the gummed areas 21 would bond to the previous layer in
the wound roll and prevent dispensing of the labels from the roll (Request
23).
We disagree that one of ordinary skill in the art would view this
teaching of locally applying the release coating in Lane as tantamount to the
sort of "teaching away" that is evidence of nonobviousness. Certainly, skill
in the art is presumed and we find that one of ordinary skill in the art would
have found it obvious to weigh the advantages and disadvantages of the
various known ways to manufacture and package the labels of Lane,
especially in light of all the circumstances detailed below.
Lane teaches various embodiments of labels that may be used for a
multiplicity of purposes, and packaged in various ways. For example only,
contrary to Appellants’ remarks that Fig. 5 is only configured for “mounting
a pair of stockings” (Request 23), Lane also teaches that the label of Fig. 5
may be used as a sealing element for advertising folders (p. 3, col. 1, ll. 6-
11). Lane teaches that the labels of Fig. 1 may also be used on items of
wearing apparel, and may be convoluted into a roll (p. 2, col. 1, ll. 70-75).
Lane teaches stickers or labels of Fig. 6 may be used for a variety of
purposes (p. 3, col. 2, ll. 3-7) and may be packaged on a flat paper strip or on
a core roll in layers with a coated backing for each label (p. 3, col. 2, ll. 40-
48). An artisan would readily appreciate that Lane suggests that labels or
stickers may be used and packaged in a wide variety of ways.
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Further, merely because Lane teaches that the printing may be
“preferable” on uncoated surfaces of the label is not determinative of
nonobviousness, as Appellants contend (Request 26). Claim 1 is directed to
a product (a “label roll” intended “for use in a printer”) but does not require
any printing thereon. It is well established that while the features of an
apparatus (or product) claim may be recited functionally, the apparatus (or
product) must be distinguished from the prior art in terms of structure, rather
than function. See In re Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997).
In any event, advances in printing technology and/or release materials
have made the concern expressed in the 1939 patent to Lane obsolete, as it is
now common to print on such surfaces; indeed, Appellants print on the
coated (release) side of the label (see, e.g., Spec. ¶¶ [0006]-[0007];
Appellants’ Fig. 1).2
One of ordinary skill in the art is also a person of ordinary creativity,
and is not an automaton. See KSR 127 S. Ct. at 1742. The evidence
supports our determination that it would have been prima facie obvious to
one of ordinary skill in the art at the time this invention was made to have
formed labels of the Fig. 5 embodiment of Lane into a roll as a known way
to package and dispense labels as exemplified in Fig. 2 of Lane. We
determine that the teachings of Lane would have led one of ordinary skill in
the art, through no more than ordinary creativity, to provide the labels of

2 Note that claim 1 does not require the claimed “release strip” (which
may be a silicone coating) to be continuous, nor does claim 1 even preclude
the use of a separate liner. Claim 1 is open-ended and additional elements
may be included. As is well known, a separate liner may be used to enable
labels/stickers to be wound in a roll (see Lane, p. 3, col. 2, ll. 20-47; also,
Appellants’ Spec. 6, ¶ [0040]).

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Fig. 5 into a roll as shown in Fig. 2 (with the requisite coating on the entire
back surface to enable it to be made into a roll) as a known alternative way
to package and dispense the labels or sealing strips.
Appellants contend that the Board’s “abdication . . . of re-examination
of the many claims other than claim 1” permits “an inference of a license to
the examiner to re-reject these claims” using Lane (Request 27).
Our decision reversed the rejection of all claims and entered a new
ground of rejection as to claim 1. The panel did not express any view on the
effect of the new ground on the remaining claims. While entering the new
ground, we also expressly declined to consider the effect of the new ground
on the patentability of claims 2-27, leaving that determination to the
Examiner (Dec. 15).
The new ground of rejection relied on a different basis for
unpatentability than relied on by the Examiner. The application of the new
basis to the more detailed subject matter of all other claims is, in our view,
best left to the expertise of the Examiner.

CONCLUSION
Appellants have not established that the Board erred in reversing the
Examiner’s rejection. We do however modify the “Issues on Appeal”
section of our Decision at page 3 to reflect the correct claim grouping, that
is, claims 1, 2, 5, 6, 8-22, and 27, rejected on the ground of nonstatutory
obviousness-type double patenting.
Appellants have also not established that the Board erred in making a
new ground of rejection of claim 1 over Lane. We do however modify our
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decision to the extent that claim 1 is now rejected only under 35 U.S.C. §
103(a) over Lane.
We have granted Appellants’ request to the extent that we have
modified our decision of September 4, 2008 as set forth above, however, in
all other respects the decision remains unchanged.
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)(iv).

REHEARING DENIED-IN-PART AND GRANTED-IN-PART

tc

DOUGLAS S. FOOTE
INTELLECTUAL PROPERTY SECTION
NCR CORPORATION
1700 SOUTH PATTERSON BLVD.
DAYTON, OH 45479-0001

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