Ex parte Campbell

Board of Patent Appeals and Interferences

Dec 17, 2001

09145399 (B.P.A.I. Dec. 17, 2001)

To correct an omission regarding claim 8 in the Office1
action dated June 9, 2000 (Paper No. 12) from which the appeal
was taken, the examiner sent a further Office action dated
November 3, 2000 (Paper No. 16), responded to by appellant in
the “SUPPLEMENT TO APPLICANT’S APPEAL BRIEF” (Paper No. 17).
The opinion in support of the decision being entered today was not written
for publication and is not binding precedent of the Board.
Paper No. 23
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte DONALD A. CAMPBELL
____________
Appeal No. 2001-1404
Application No. 09/145,399
____________
HEARD: NOVEMBER 27, 2001
____________
Before COHEN, ABRAMS, and STAAB, Administrative Patent Judges.
COHEN, Administrative Patent Judge.
DECISION ON APPEAL
This appeal involves claims 1, 2, 4, 6 through 8, 13
through 15, 19, 20, and 25. Claims 3, 5, 9 through 12, 17,1
18, and 22 through 24 stand allowed. Claim 16 stands objected
to because of it dependency from a rejected claim but is
Appeal No. 2001-1404
Application No. 09/145,399
2
otherwise considered by the examiner to be allowable. Claim 21
has been canceled. These claims constitute all of the claims
in the application.
Appellant’s invention pertains to a method of making a
looped label and to an apparatus for making a looped label. A
basic understanding of the invention can be derived from a
reading of exemplary claim 1 and 13, copies of which appear in
the APPENDIX to the brief (Paper No. 15).
As evidence of obviousness, the examiner has applied the
documents listed below:
Gilchrist 2,834,595 May
13, 1958
Coast 3,918,698 Nov. 11,
1975
Parker 3,947,310 Mar. 30,
1976
PAXAR 8500 Loop Fold Arrangement, Operation/Maintenance and
Parts list, PAXAR Systems Group, Edition 2, February 1995
(PAXAR 8500).
The following rejections are before us for review.
Appeal No. 2001-1404
Application No. 09/145,399
3
Claims 1, 2, 6, 7, and 14 stand rejected under 35 U.S.C.
§ 112, second paragraph, as being indefinite.
Claims 1, 8, 13, 14, and 25 stand rejected under 35
U.S.C. § 103(a) as being unpatentable over Gilchrist in view
of PAXAR 8500 and Parker.
Claim 6 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Gilchrist in view of PAXAR 8500.
Claims 4, 7, 19, and 20 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Gilchrist in view of
PAXAR 8500 and Coast.
Claims 2 and 15 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over Gilchrist in view of PAXAR 8500 and
Parker, as applied to claims 1 and 13, further in view of
Coast.
The full text of the examiner’s rejections and response
to the argument presented by appellant appears in the answer
Appeal No. 2001-1404
Application No. 09/145,399
We note that appellant’s copy of claim 6 in the APPENDIX2
is as amended pursuant to the AMENDMENT AFTER APPEAL (Paper
No. 14), which amendment was entered by the examiner, as
acknowledged on page 5 of Paper No. 16.
In our evaluation of the applied prior art, we have3
considered all of the disclosure of each document for what it
would have fairly taught one of ordinary skill in the art.
See In re Boe, 355 F.2d 961, 965, 148 USPQ 507, 510 (CCPA
1966). Additionally, this panel of the Board has taken into
account not only the specific teachings, but also the
inferences which one skilled in the art would reasonably have
been expected to draw from the disclosure. See In re Preda,
401 F.2d 825, 826, 159 USPQ 342, 344 (CCPA 1968).
4
(Paper No. 18), while the complete statement of appellants’
argument can be found in the main, supplemental, and reply
briefs (Paper Nos. 15, 17, and 19).
OPINION
In reaching our conclusion on the issues raised in this
appeal, this panel of the Board has carefully considered
appellant’s specification and claims, the applied teachings,2 3
and the respective viewpoints of appellant and the examiner.
Appeal No. 2001-1404
Application No. 09/145,399
5
As a consequence of our review, we make the determinations
which follow.
The indefiniteness rejection
We do not sustain this rejection of claims 1, 2, 6, 7,
and 14.
Independent method claims 1, 6, and 7 are indefinite,
according to the examiner, since there is uncertainty as to
whether inferential language therein is intended as positive
method steps or not. In our opinion, the subject matter of
claims 1, 6, and 7, each claim being considered as a whole, is
clearly definite in meaning. In other words, the metes and
bounds of these method claims would readily be ascertainable
by one skilled in the art. Focusing upon the content of claim
1, it is quite apparent to us that the practice of the method,
according to the claim language, would require rotating rolls
and pressing of the looped label using heat and pressure,
irrespective of the fact that separate step recitations are
Appeal No. 2001-1404
Application No. 09/145,399
6
not set forth. The same reasoning applies to the language of
concern to the examiner in respective method claims 6 and 7.
Claim 14, a dependent apparatus claim, is viewed as
indefinite by the examiner for failure to recite means to
support the functional limitation “being stationary”. As we
see it, the language of the claim is understandable and, as
such, the claim is definite in meaning. It must be kept in
mind that there is nothing intrinsically wrong in defining
something by what it does rather than by what it is. See In
re Hallman, 655 F.2d 212, 210 USPQ 609, 611 (CCPA 1981).
The obviousness rejections
We do not sustain the rejection of claims 1, 8, 13, 14,
and 25 based upon the combination of Gilchrist in view of
PAXAR 8500 and Parker.
Each of claims 1, 8, and 25 is drawn to a method of
making a looped label, while claims 13 and 14 set forth an
apparatus for making a looped label.
Appeal No. 2001-1404
Application No. 09/145,399
7
The Gilchrist patent teaches an apparatus for controlling
article folding machines, such as used for folding bed sheets
or the like. As disclosed, the folding apparatus 10 (Fig. 1)
is adapted to receive a series of sheets 11, 12, 13, and 14,
of varying lengths (over 120 inches down to 25 inches, more or
less), fed through a conventional ironer. The sheet 11 is
carried upon parallel tapes 15 driven by rolls 16, 17. Sheet
13 has passed through rolls 21, while sheet 14 has passed
through rolls 24 and is carried by tapes 25 to delivery chute
26 for delivery to receiving table 27. The folding function
is preformed by a half fold folding means 30 and quarter fold
folding means 31. The folding means or blades 30 and 31 are
suitably pivotally supported. For example, folding blade 30
advances to move the sheet 12 between the rollers 12, and then
returns to its starting position. The folding blades 30 and
31 at the proper time operate to cause folds into halves and
quarters.
Appeal No. 2001-1404
Application No. 09/145,399
This document was acknowledged as prior art by appellant4
in the specification (page 1). Additionally, appellant also
referred to U.S. Patent Nos. 3,106,809 and 3,776,441. The
former patent relates to an apparatus and method for feeding a
continuous strip of label material, cutting labels into
individual lengths, folding the labels using a cam, heating
(heater block) and pressing (presser plates) the labels in
their folded position to insure a permanent crease, and
pushing the labels into cartons.
We note appellant’s description of this reference on5
page 9 of the main brief.
8
The PAXAR 8500 document teaches a loop fold attachment4
that folds and presses a label. The looper clamps and folds
the label in the center of the set length. The folded label
is then mechanically transported into heater jaws which iron
down the folded crease. The folded label receives a total of
three heated presses before being delivered to a stacker.5
The patent to Parker addresses non-woven sheets of
thermoplastic synthetic polymer that are folded into layers
with heat-insulating fabric therebetween, followed by heating
and pressing to effect heat sealing.
Simply stated, the patent to Gilchrist does not address a
method or apparatus for making a looped label. Instead, this
Appeal No. 2001-1404
Application No. 09/145,399
9
document is focused, in particular, upon folding ironed bed
sheets into halves and quarters. Clearly, it is known to fold
labels using a clamping and jaw apparatus as revealed by PAXAR
8500, and to apply heat subsequent to a folding operation, as
per each of PAXAR 8500 and Parker. Nevertheless, it is
readily apparent to us that only by relying upon impermissible
hindsight would there have been a basis for combining the
teachings as proposed by the examiner to rework the Gilchrist
teaching and thereby yield the now claimed respective method
and apparatus of claims 1, 8, 13, and 14, and 25 for making a
looped label. As a final point, we observe that there would
have been no need to provide a heater to the Gilchrist
arrangement since the bed sheets are ironed before the folding
process commences.
We also do not sustain the rejection of claim 6 based
upon the combination of Gilchrist in view of PAXAR 8500.
As articulated above, we have determined that the
collective teachings of Gilchrist and PAXAR 8500, absent
hindsight, would not have been suggestive of their combination
Appeal No. 2001-1404
Application No. 09/145,399
10
to yield a method of making a looped label. Thus, the
rejection of method claim 6 is not well founded.
We additionally do not sustain the rejection of claims 4,
7, 19, and 20 based upon the combined teachings of Gilchrist,
PAXAR 8500 and Coast.
Based upon the applied teachings, as explained above,
only inappropriate hindsight would have been the basis for
reworking the Gilchrist teaching in view of the PAXAR 8500
disclosure to achieve the method of making a looped label as
set forth in claims 4, 7, 19, and 20. The knowledge in the
art of stacking as revealed by Coast does not overcome the
deficiency of the Gilchrist and PAXAR 8500 combination, as
discussed above. Further, as to apparatus claims 19 and 20, we
do not discern in the teachings of the applied prior art any
suggestion for means interrupting driving means to enable
pressing rolls to press a label for a predetermined period of
time (claim 19) or for heating means and means for
interrupting driving of pressing rolls to enable the pressing
rolls to press a label at its fold line (claim 20).
Appeal No. 2001-1404
Application No. 09/145,399
11
We also do not sustain the rejection of claims 2 and 15
based upon the combined teachings of Gilchrist, PAXAR 8500,
Parker, and Coast.
As set forth above, the basic combination of Gilchrist
and PAXAR 8500, in particular, has not been determined to be
sound relative to independent claims 1 and 13, from which
claims 2 and 15 respectively depend. Accordingly, the
rejection of claims 2 and 15 is likewise unsound.
In summary, this panel of the board has not sustained any
of the rejections on appeal.
The decision of the examiner is reversed.
REVERSED
Appeal No. 2001-1404
Application No. 09/145,399
12
IRWIN CHARLES COHEN )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
NEAL E. ABRAMS ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
LAWRENCE J. STAAB )
Administrative Patent Judge )
ICC:pgg
Monarch Marking System Inc.
P.O. Box 608
Dayton, OH 45401