Ex Parte Cheng et al

Patent Trial and Appeal Board

Feb 22, 2017

13614149 (P.T.A.B. Feb. 22, 2017)

United States Patent and Trademark Office
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O.Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
13/614,149 09/13/2012 David Cheng 000006-001US1 2414
16404 7590
Leber IP Law
4 Laurel Rd.
Lynnfield, MA 01940
EXAMINER
SILBERMANN, JOANNE
ART UNIT PAPER NUMBER
3638
NOTIFICATION DATE DELIVERY MODE
02/24/2017 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
celia@leberiplaw.com
admin @ leberiplaw .com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DAVID CHENG and JOCELYNN CHENG
Appeal 2015-004716
Application 13/614,149
Technology Center 3600
Before STEFAN STAICOVICI, GEORGE R. HOSKINS, and
ARTHUR M. PESLAK, Administrative Patent Judges.
PESLAK, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
David Cheng and Jocelynn Cheng (“Appellants”) appeal under 35
U.S.C. § 134(a) from the Examiner’s decision rejecting claims 6, 7, 10-13,
and 16—19. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
Appeal 2015-004716
Application 13/614,149
THE CLAIMED SUBJECT MATTER
Claim 6, reproduced below, is representative of the claimed subject
matter.
6. A method comprising:
(a) providing a plurality of stickers, each sticker
comprising a flexible sheet material having an adhesive on one
side and a printed play graphic on the opposite side;
wherein the sheet material includes a horizontal or vertical
line of perforations that divides a first portion of the play graphic
from a second portion of the play graphic, the first and second
portions of the play graphic displaying different, substantially
non-alphanumeric images, and the play graphic is configured so
that if a user removes the second portion of the play graphic, to
reduce the size of the sticker, the first portion of the play graphic
depicts a complete image; and
wherein at least two of the stickers are dimensioned to
substantially cover an area of at least 150 in2, and depict at least
two sides of a vehicle or dwelling;
(b) removing the second portion of the play graphic of at
least one of the stickers to size the sticker to a cardboard box to
be used in play; and
(c) placing the stickers on two or more sides of the
cardboard box so that they represent the sides of the vehicle or
dwelling.
REJECTIONS
1) Claims 6, 7, 11, 13, and 16—19 are rejected under 35 U.S.C.
§ 103(a) as unpatentable over Bollman (US 2002/0111106 Al,
published Aug. 15, 2002) and Miles (US 2010/0293829 Al,
published Nov. 25, 2010).
2) Claim 10 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Bollman, Miles, and Raming (US 8,109,537 B2, issued Feb. 7,
2012).
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Application 13/614,149
3) Claim 12 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Bollman, Miles, and Hester (US 2006/0003307 Al, published Jan.
5, 2006).
DISCUSSION
Rejection 1
Appellants argue the rejection of claims 6, 7, 11, 13, and 16—19 as a
group. Br. 3—8. We select claim 6 as representative and claims 7, 11, 13,
and 16—19 stand or fall with claim 6. 37 C.F.R. § 41.37(c)(l)(iv).
The Examiner finds that Bollman discloses most of the limitations of
claim 6 except the stickers “having horizontal or vertical perforation lines
for dividing the graphics.” Final Act. 2—3 (citing Bollman || 6, 14, 17, Figs.
1C, 3 A, 3B). The Examiner finds that “such perforations are well known in
the art as shown by Miles,” which discloses “a sheet of stickers wherein
horizontal and vertical lines of perforation 18 and 22 . . . divide portions of
the indicia.” Id. at 3 (citing Miles, Fig. 2). The Examiner concludes “[i]t
would have been obvious to a person having ordinary skill in the art to
utilize such perforations on stickers in the system of Bollman so that sticker
size may be adjusted as desired or needed.” Id.
Appellants contend that Bollman does not disclose the “claimed step
of removing a second portion of a play graphic to size a sticker to a
cardboard box” because Bollman “designs stickers specifically to
accompany and enhance the packaging of a particular product.” Br. 5. In
connection with this contention, Appellants concede that Bollman “considers
differently sized boxes” to which stickers are affixed. Id. Appellants next
contend that Bollman does not disclose “a sticker having a play graphic
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Application 13/614,149
configured so that if a user removes a second portion of the play graphic, to
reduce the size of the sticker, a first portion of the play graphic depicts a
complete image.” Id. at 5—6. Appellants also contend that one of ordinary
skill in the art would not look to Miles because it is directed to address or
name tag labels. Id. at 7. Although not specifically stated by Appellants, we
understand Appellants to be arguing that Miles is non-analogous art.
Appellants’ final contention is two-fold and directed to the Examiner’s
combination of Bollman and Miles. Specifically, Appellants contend that
the Examiner’s rationale is conclusory and that even if one of ordinary skill
in the art looked to Miles to modify Bollman, the result would not be the
claimed invention, but rather would result in “a plurality of Bollman’s pre­
sized stickers being supported on a single perforated backing sheet and made
separable by the perforations.” Id.
The Examiner responds that “Miles teaches an adhesive printable
label sheet. . . with lines of perforation for dividing indicia on the sheet.
Such a sheet allows a user to cover a small or large area with the stickers.”
Ans. 2 (citing Miles 128). The Examiner also finds that Bollman discloses
“a variety of stickers of multiple sizes to create a desired play object” and
“applying the stickers to the box, thus including first portions as well as
second portions.” Id. at 2—3 (citing Bollman || 16, 20, Fig. 3 A). For the
following reasons, we sustain the rejection of claim 6.
Bollman discloses a “box for holding contents during delivery to a
user [that] contains play graphics associated with a play activity of a child,
thus encouraging reuse of the box as a toy by children. . . . The play graphics
may supplement or supplant the original logos on the box.” Bollman,
Abstract. Bollman discloses an embodiment “wherein the original logos [on
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Application 13/614,149
the box] have been substantially (preferably completely) replaced with
graphics . . . designed to enhance a predetermined configuration for the
box.” Id. 120, Fig. 3A. Bollman discloses that the graphics in Fig. 3 A
“could comprise stickers placed on proper locations.” Id. 121. Figure 3 A
discloses stickers of different sizes such as items 30 and 38. Id. Fig. 3 A. The
graphics on the boxes in Bollman can be configured to illustrate a vehicle or
a dwelling. See id. Figs. 3A, 4A.
Miles discloses “[a] label assembly comprising a plurality of labels on
a carrier sheet.” Miles, Abstract; see also id. Fig. 1. Miles discloses the
plurality of labels are “self-adhesive labels.” Miles 12. The front face of
the labels has “a surface of any type of matter upon which a person or
machine can draw, print, color, paint, photocopy, write, emboss, or make
any other type of mark or graphic.” Id. 128. Miles’ sheet of labels contains
“weakened line[s] of separation” 22a, 22b, 22c. Id. 126, Fig. 2.
Appellants’ first contention that Bollman does not disclose the
limitation “that if a user removes the second portion of the play graphic, to
reduce the size of the sticker, the first portion of the play graphic depicts a
complete image” is an attempt to distinguish the claim limitation from
Bollman based on the content of the graphics printed on the stickers.
However, when printed matter on a substrate “is not functionally related to
the substrate, the printed matter will not distinguish from the prior art in
terms of patentability.” In re Gulack, 703 F. 2d. 1381, 1385 (Fed. Cir.
1983). Appellants do not provide persuasive argument or evidence why the
recited play graphics are functionally related to the sticker. The contention
is, thus, unpersuasive.
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Application 13/614,149
Appellants’ next contention is that Boll man does not disclose the
claim limitation of removing the second portion of the play graphic “to size
the sticker to a cardboard box” because Bollman “designs stickers
specifically to accompany and enhance the packaging of a particular
product.” Although Appellants concede that Bollman considers differently
sized boxes, Appellants do not explain why removing the play graphics
shown as affixed to the front or side of the box shown in Bollman’s Figure
3 A from the sticker would not result in sizing “the sticker to a cardboard
box.” The contention is, thus, unpersuasive.
With respect to Appellants’ contention that Miles is non-analogous art,
the Federal Circuit explains that
[t]wo separate tests define the scope of analogous prior art:
(1) whether the art is from the same field of endeavor, regardless
of the problem addressed and, (2) if the reference is not within
the field of the inventor’s endeavor, whether the reference still is
reasonably pertinent to the particular problem with which the
inventor is involved.
In re Klein, 647 F.3d 1343, 1348 (Fed. Cir. 2011); see also In re ICON
Health and Fitness, Inc., 496 F.3d 1374, 1379-80 (Fed. Cir. 2007). Claim 6
is directed to a method of applying adhesive backed stickers to a cardboard
box. The Specification describes Appellants’ stickers as having “a self­
adhering surface (not shown) that [] is covered by a backing, e.g., a release
paper film, prior to use.” Spec. 3. Miles similarly discloses self-adhesive
labels on a carrier sheet. Appellants do not provide persuasive evidence or
technical reasoning why Miles’ self-adhesive labels on a carrier sheet are not
within Appellants’ field of endeavor or, if not within Appellants’ field of
endeavor, why Miles is not reasonably pertinent to the particular problem
with which Appellants are involved, namely, quick and easy resizing
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(separating) of the stickers. Compare Spec. 2 with, Miles, 1 10. Appellants’
argument that one of ordinary skill in the art would not have considered
Miles because it concerns “the address label art” is, thus, not persuasive.
Appellants’ final contention that the Examiner’s rationale for the
combination of Boll man and Miles is conclusory and the combination would
not result in the claimed invention but rather a sheet of pre-sized stickers
separated by perforations is also not persuasive. The Examiner’s
combination is based on the combined teachings of Bollman and Miles, not
the incorporation of Miles’ particular structure into Bollman. The test for
“obviousness is not whether the features of a secondary reference may be
bodily incorporated into the structure of the primary reference. . . . Rather,
the test is what the combined teachings of those references would have
suggested to those of ordinary skill in the art.” In re Keller, 642 F.2d 413,
425 (CCPA 1981). Appellants do not dispute the Examiner’s finding that
Miles teaches a sheet of stickers with horizontal and vertical lines of
perforation, and, further, do not provide persuasive argument or evidence
that the Examiner’s modification of Bollman’s stickers with Miles’
perforations would have been beyond the capabilities of a person of ordinary
skill in the art. Consequently, Appellants have not apprised us of error in the
Examiner’s articulated reason for the rejection of claim 6 which is supported
by rational underpinnings.
As Appellants have not apprised of error in the rejection of claim 6,
we sustain the rejection of claim 6 as well as claims 7, 11, 13, and 16—19
which fall with claim 6.
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Rejections 2 and 3
Claims 10 and 12 depend directly or indirectly from claim 6. Br. 10—
11. Concerning the rejections of claims 10 and 12, Appellants rely on the
same contentions discussed above for claim 6. Br. 8. We sustain the
rejections of claims 10 and 12 for the same reasons stated above for claim 6.
DECISION
The Examiner’s decision rejecting claims 6, 7, 10—13, and 16—19 is
affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(l)(iv).
AFFIRMED
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