Ex parte Chess

Board of Patent Appeals and Interferences

Jan 10, 2001

08308076 (B.P.A.I. Jan. 10, 2001)

1
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(2) is not binding precedent of the Board.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. 13
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte STANLEY CHESS
_____________
Appeal No. 1997-0835
Application No. 08/308,076
______________
ON BRIEF
_______________
Before JOHN D. SMITH, GARRIS and OWENS, Administrative Patent
Judges.
JOHN D. SMITH, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal pursuant to 35 U.S.C. § 134 from the
final rejection of claims 1-20.
Representative claims 1, 8 and 14 are reproduced below:
1. A business form comprising:
a first , paper, sheet having a first face with
indicia thereon, and a second face with a first
press-ure sensitive adhesive system;
a second sheet substantially the same size and
shape as said first sheet, and having a first face,
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Application No. 08/308,076
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and a second face with a second pressure sensitive
adhesive system;
said first and second adhesive systems being
constructed so that said second faces of said first
and second sheets when placed in face-to-face
engagement with each other will separate from each
other, provid-ing adhesive on each of said second
faces after they separate;
said second faces in aligned engagement with
each other; and wherein said second sheet is water-
imperme-able plastic, and said second sheet and said
second adhesive system are substantially
transparent, and said second adhesive system will
adhere to said first face of said first sheet if
applied thereto, to protect it.
8. A business form comprising:
a first , unsegmented paper, sheet having a
first face with indicia thereon, and a second face
with a first pressure sensitive adhesive system;
a second, paper, sheet substantially the same
size and shape as said first sheet, and having a
first face and a second face with a second pressure
sensitive adhesive system;
said first and second adhesive systems being
constructed so that said second faces of said first
and second sheets when placed in face-to-face
engagement with each other will separate from each
other, providing adhesive on each of said second
faces after they separate;
said second faces in aligned engagement with
each other; and wherein said second sheet first face
has indicia thereon, and further includes a
plurality of lines of weakness separating said
second sheet into a plurality of individual labels,
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Application No. 08/308,076
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each label with indicia thereon.
14. A multi-ply business form comprising:
a first, paper, sheet having a first face with
indicia thereon, and a second face with a first
pressure sensitive adhesive system, and wherein said
first sheet first face has a carbonless coating
thereon;
a second sheet substantially the same size and
shape as said first sheet, and having a first face,
and a second face with a second pressure sensitive
adhesive system;
said first and second adhesive systems being
constructed so that said second faces of said first
and second sheets when placed in face-to-face
engagement with each other will separate from each
other, providing adhesive on each of said second
faces after they separate;
said second faces in aligned engagement with
each other; and a third sheet having a first face
with indicia thereon, and a second face with a
carbonless coating thereon cooperating with said
first sheet carbonless coating and overlying and
engaging said first sheet first face carbonless
coating.
The references of record relied upon by the examiner are:
McElroy 3,312,005 Apr. 04, 1967
Vermeulen 4,932,684 Jun. 12,
1990
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Kobayashi EP 0 512 153 Nov. 11,
1992
(European Patent Application)
Appealed claims 1-7 stand rejected under 35 U.S.C. § 103
as unpatentable over McElroy. Appealed claims 1-13 stand
rejected under 35 U.S.C. § 103 as unpatentable over Kobayashi.
Appealed claims 14-20 stand rejected under 35 U.S.C. § 103 as
unpatentable over Vermeulen in view of Kobayashi.
The subject matter on appeal is directed to business
forms. In his specification, appellant explains that there are
many types of “business forms” where labels are desirable
parts of the forms. Labels are said to be particularly
helpful to ensure the tracking of packages when used as a
business form by express courier services. However, “[m]any
times the main business forms/label applied to the package
being couriered needs protection from handling and the
elements. In order to adequately provide this function, while
still providing securement of the business form/label to a
package, again at least parts of the business form are larger
than is necessary.” See the specification at page 1, lines
14-19, emphasis added. Appellant’s disclosed inventions are
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said to avoid the above problems.
In responding to the examiner’s prior art rejections of
the herein appealed claims based on McElroy and Kobayashi,
appellant indicates that a label and a business form “are not
the same thing” (brief, page 11) although labels may be
associated with business forms. According to appellant, a
label is defined as “the functional portion of a pressure
sensitive construction comprising the face sheet and adhesive,
die cut into various
shapes.” See page 8 of the Glossary of Terms, Tag and Label
Manufacturers Institute, copyright 1973. On the other hand,
appellant indicates that the term “business form” is “1) any
material which has been printed or otherwise especially
prepared for the primary purpose of facilitating the entry of
variable written information by hand or machine according to
some predetermined format. Blank paper may be included,
especially if it is continuous and has undergone some
manufacturing operation such as punching or perforating to
facilitate manual entries, machine writing, or use after
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writing. 2) More specifically, document bearing instructions
with repetitive information printed in fixed positions to save
writing and reference time.” See page 20 of the Business
Forms Glossary, published by International Paper Company,
copyright 1967, 1977.
THE OBVIOUSNESS REJECTION BASED ON MCLEROY
Appealed claims 1-7 stand rejected under 35 U.S.C. § 103
as obvious over McElroy. Prior to a discussion of the
examiner’s stated rejection, it should be emphasized that
appealed claim 1 defines a business form having a first paper
sheet with an associated pressure sensitive adhesive system
and a second
substantially transparent water-impermeable plastic sheet
associated with a substantially transparent adhesive system
that functions to protect the first sheet when applied
thereto. As appellant correctly argues, these claimed
features are neither described nor suggested by the
disclosures in McElroy.
The deficiencies in the examiner’s stated rejection based
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on McElroy are readily apparent. Thus, the examiner contends
that “[t]he selection of the type of sheets (plastic and
water-impermeable, paper stock) used and the type of adhesive
(permanent and transparent) would depend on the intended use.”
See the answer at page 6. But McElroy, a reference which
relates to labels only, contains no disclosure related to
appellant’s “intended use” of a “business form” which includes
a second transparent water-impermeable plastic sheet to
protect a first paper sheet when the second sheet is applied
thereto. We agree with appellant that McElroy does not
establish a prima facie case of obviousness for the subject
matter defined by rejected claims 1-7. The examiner’s
rejection is not sustained.
THE OBVIOUSNESS REJECTION BASED ON KOBAYASHI
Appealed claims 1-13 stand rejected under 35 U.S.C. § 103
as obvious over Kobayashi. As with McElroy, the Kobayashi
publication similarly fails to establish a prima facie case of
obviousness for the subject matter defined by rejected claims
1-13. Although Kobayashi arguably relates to the field of
business forms (see column 7, lines 42-45 of Kobayashi which
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describes a “voucher sheet” having blank areas which “the user
can freely fill in”), Kobayashi contains no disclosure of a
“business form” which includes a second transparent water-
impermeable plastic sheet to protect a first paper sheet when
the second sheet is applied thereto as required by appealed
claim 1. Nor does Kobayashi describe or suggest a “business
form” having a first unsegmented paper sheet associated with a
second paper sheet having substantially the same size and
shape as the first sheet and including a “plurality of lines
of weakness separating said second sheet into a plurality of
individual labels” as required by appealed claim 8.
Accordingly, the examiner’s obviousness rejection based on
Kobayashi is not sustained.
THE OBVIOUSNESS REJECTION BASED ON VERMEULEN AND KOBAYASHI
Appealed claims 14-20 stand rejected under 35 U.S.C. §
103 as unpatentable over the combined teachings of Vermeulen
and Kobayashi. We do not sustain this rejection. Again, the
examiner has failed to articulate precisely how the
disclosures in these references may be combined to arrive at
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the subject matter defined by appealed claims 14-20, much less
why one of ordinary skill in this art would have been led or
motivated to modify the Vermeulen business form to provide a
structure meeting the terms of the rejected claims. See the
answer at pages 6 and 7, and compare the brief at page 14.
The decision of the examiner is reversed.
REVERSED
JOHN D. SMITH )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
BRADLEY R. GARRIS ) APPEALS AND
Administrative Patent Judge ) INTERFERENCES
)
)
)
TERRY J. OWENS )
Administrative Patent Judge )
jds/vsh
Appeal No. 1997-0853
Application No. 08/308,076
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