Ex parte Boreali et al.

Board of Patent Appeals and Interferences

Mar 30, 2000

08529230 (B.P.A.I. Mar. 30, 2000)

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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journal and (2) is not binding precedent of the Board.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. 27
UNITED STATES PATENT AND TRADEMARK OFFICE
________________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
________________
Ex parte JEFFREY J. BOREALI, CAS FORMAS,
STEVE MICHALOVIC and DANIEL G. SHENK
________________
Appeal No. 1999-1965
Application 08/529,230
________________
ON BRIEF
________________
Before FRANKFORT, McQUADE and NASE, Administrative Patent
Judges.
McQUADE, Administrative Patent Judge.
DECISION ON APPEAL
Jeffrey J. Boreali et al. appeal from the final rejection
of claims 1 through 20, all of the claims pending in the
Appeal No. 1999-1965
Application 08/529,230
Claims 1 and 4 have been amended subsequent to final1
rejection.
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application. We reverse.1
The invention relates to a dispenser for linerless
labels. A copy of the claims on appeal appears in the
appendix to the appellants’ main brief (Paper No. 22).
The references relied upon by the examiner as evidence of
obviousness are:
Hill 3,924,498 Dec.
9, 1975
Yokota 4,690,344 Sept. 1,
1987
Cassia 4,738,176 Apr. 19,
1988
Hirono et al. (Hirono) 5,447,383 Sept. 5,
1995
Kudo et al. (Kudo) 5,556,213 Sept. 17,
1996
(filed Mar. 30,
1994)
Boreali et al. (Boreali) 5,560,293 Oct.
1, 1996
(filed Jun. 7,
1995)
Szczepaniec et al. (Szczepaniec) 5,725,719 Mar. 10,
1998
(filed Jun. 26,
1995)
Appeal No. 1999-1965
Application 08/529,230
In the final rejection (Paper No. 12), claims 1 through2
4 and 7 through 15 also stood rejected under 35 U.S.C. § 112,
second paragraph. The examiner has since withdrawn the
rejection as to these claims in light of amendments made
subsequent to final rejection (see page 12 in the answer,
Paper No. 24).
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The claims stand rejected as follows:
a) claims 5, 6, 17, 18 and 20 under 35 U.S.C. § 112,
second paragraph, as failing to particularly point out and
distinctly claim the subject matter the appellants regard as
the invention;2
b) claims 1, 7, 8, 11, 12 and 19 under 35 U.S.C. § 103(a)
as being unpatentable over Boreali in view of Yokota;
c) claims 2 through 4 and 16 under 35 U.S.C. § 103(a) as
being unpatentable over Boreali in view of Yokota and Hill;
d) claims 5, 13 and 17 under 35 U.S.C. § 103(a) as being
unpatentable over Boreali in view of Yokota, Hill and
Szczepaniec;
e) claims 6, 14, 15 and 18 under 35 U.S.C. § 103(a) as
being unpatentable over Boreali in view of Yokota, Hill,
Szczepaniec and Hirono;
f) claim 9 under 35 U.S.C. § 103(a) as being unpatentable
Appeal No. 1999-1965
Application 08/529,230
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over Boreali in view of Yokota and Cassia;
g) claim 10 under 35 U.S.C. § 103(a) as being
unpatentable over Boreali in view of Yokota, Cassia and Kudo;
and
h) claim 20 under 35 U.S.C. § 103(a) as being
unpatentable over Boreali in view of Yokota, Szczepaniec and
Hirono.
Reference is made to the appellants’ main and reply
briefs (Paper Nos. 22 and 25) and to the examiner’s answer
(Paper No. 24) for the respective positions of the appellants
and the examiner with regard to the merits of these
rejections.
The 35 U.S.C. § 112, second paragraph, rejection rests on
the examiner’s determination that claims 5, 6, 17, 18 and 20
are indefinite because
i) In claim 5 [and presumably claim 17], the
phrase “a label” is vague and indefinite in
that it is a double inclusion of the same
Appeal No. 1999-1965
Application 08/529,230
Nonetheless, the appellants might find it desirable for3
the sake of consistency to carry through on their offer (see
page 5 in the main brief) to amend claim 19 by changing
“combination” to --dispenser--.
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previously recited. Applicant is advised to
carefully review the rest of the claims to
obviate this issue.

ii) Claim 20 is vague and indefinite in that it is
not clear what the claim encompasses. What is
the “combination” in line 1 referring to?
A “combination” has not been recited
in independent claim 19 [answer, page 4].
Neither of these concerns is well taken. The references
to “a label” in claims 5 and 17 (from which claims 6 and 18
depend, respectively) are made in a functional context to
define how the claimed subject matter works. As such, they do
not pose a double inclusion problem. Furthermore, although
“dispenser” claim 19 does not explicitly include the word
“combination,” it is in fact a combination claim. In this
light, the reference in the preamble of claim 20 to the
“combination as recited in claim 19" is readily understood to
refer to the combination of dispenser elements recited in
claim 19. 3
Thus, the claim limitations targeted by the examiner are
not indefinite. Accordingly, we shall not sustain the
Appeal No. 1999-1965
Application 08/529,230
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standing 35 U.S.C. § 112, second paragraph, rejection of
claims 5, 6, 17, 18 and 20.
With regard to the standing prior art rejections,
Boreali, the examiner’s primary reference, discloses a
linerless label printer and transport system comprising a roll
of linerless labels 13 mounted on an unwind core 12, a label
guide 15, a transport plate 16, a driven platen roller 17, a
thermal printhead 18, a stripper blade/bridge 42, a cutter 60
and an exit plate 65. These elements are arranged as shown in
Figures 1 and 2.
As conceded by the examiner (see page 4 in the answer),
the Boreali system fails to meet the limitations in
independent claims 1, 16 and 19 requiring first and second
drive rolls for engaging the labels and taking them off a
supply. In the Boreali system, this function is performed by
driven platen roller 17. Boreali also fails to respond to the
limitations in independent claim 1 requiring the drive rolls
to be grooved and to be associated with first and second sets
of stripper and guiding fingers disposed in at least some of
the grooves.
Appeal No. 1999-1965
Application 08/529,230
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Yokota discloses an apparatus for rotatably holding and
paying out a roll 1 of thin, film-like products 3 such as
plastic pouches or paper towels. The apparatus includes a
winding core 2 for supporting the roll, grooved feed rolls 6
and 7, and product guides 11 and 12 having wire portions
disposed in the roller grooves.
In rejecting claims 1, 16 and 19 under 35 U.S.C. §
103(a), the examiner concludes that
[i]t would have been obvious to one having ordinary
skill in the art at the time the invention was made
to provide the device of Boreali et al ‘293 with the
pair of drive rolls and first and second sets of
“stripper and guiding fingers” as taught by Yokota
in order to facilitate positive guiding [and]
feeding of the strip of material to be cut [answer,
page 5].
The appellants counter that this proposed reference
combination constitutes an impermissible hindsight
reconstruction of their invention.
Given the disparate teachings of Boreali and Yokota, the
appellants’ hindsight argument is persuasive. These
references provide no support for the examiner’s determination
that the feeding and guiding characteristics of Boreali’s
linerless label system would be facilitated or improved by
Appeal No. 1999-1965
Application 08/529,230
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Yokota’s plastic
bag/paper towel feed roll arrangement. The addition of the
Yokota feed rolls and product guides to the Boreali system
would appear to be unnecessarily redundant, while the
substitution of same for Boreali’s driven platen roller 17
would complicate the printing aspect of the Boreali system by
necessitating the provision of another platen for printhead
18. In this light, it is evident that the examiner has
improperly employed the claimed invention as a template to
selectively combine the Boreali and Yokota disclosures. It is
also noted that these references fail to respond to the
particular relationship required by claims 1, 16 and 19
between the housing and the label supply support. As for the
additional prior art references applied by the examiner,
suffice to say that they are insufficient to cure the
foregoing deficiencies in the basic Boreali-Yokota
combination.
Hence, we shall not sustain the standing 35 U.S.C. §
103(a) rejections of independent claims 1, 16 and 19 or of
Appeal No. 1999-1965
Application 08/529,230
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claims 2 through 15, 17, 18 and 20 which depend therefrom.
The decision of the examiner is reversed.
REVERSED
CHARLES E. FRANKFORT )
Administrative Patent Judge )
)
)
)
JOHN P. McQUADE ) BOARD OF PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
JEFFREY V. NASE )
Administrative Patent Judge )
Appeal No. 1999-1965
Application 08/529,230
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