Ex parte Chess

Board of Patent Appeals and Interferences

Sep 28, 2001

08778688 (B.P.A.I. Sep. 28, 2001)

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publication and is not binding precedent of the Board.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. 11
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte STANLEY C. CHESS
____________
Appeal No. 2000-0304
Application No. 08/778,688
____________
ON BRIEF
____________
Before NASE, CRAWFORD, and BAHR, Administrative Patent Judges.
CRAWFORD, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the examiner's final
rejection of claims 1 through 20, which are all of the claims
pending in this application.
The appellant's invention relates to an intermediate for
making repositionable or removable adhesive backed labels. An
understanding of the invention can be derived from a reading
of exemplary claim 1, which appears in the appendix to the
appellant's brief.
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Application No. 08/778,688
The prior art
The prior art references of record relied upon by the
examiner in rejecting the appealed claims are:
Cross 4,863,772 Sep. 5,
1989
Stewart 5,482,328 Jan. 9,
1996
The rejection
Claims 1 through 20 stand rejected under 35 U.S.C. § 103
as being unpatentable over Stewart in view of Cross.
Rather than reiterate the conflicting viewpoints advanced
by the examiner and the appellant regarding the above-noted
rejection, we make reference to the answer for the examiner’s
complete reasoning in support of the rejection (Paper No. 8)
and to the brief (Paper No. 7) and reply brief (Paper No.9)
for the appellant's arguments thereagainst.
OPINION
In reaching our decision in this appeal, we have given
careful consideration to the appellant's specification and
claims, to the applied prior art references, and to the
respective positions articulated by the appellant and the
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Application No. 08/778,688
examiner. As a consequence of our review, we make the
determinations which follow.
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Application No. 08/778,688
The rejection in this case is under 35 U.S.C. § 103.
Initially we note that when it is necessary to select elements
of various teachings in order to form the claimed invention,
we ascertain whether there is any suggestion or motivation in
the prior art to make the selection made by the appellant.
Obviousness cannot be established by combining the teachings
of the prior art to produce the claimed invention, absent some
teaching, suggestion or incentive supporting the combination.
The extent to which such suggestion must be explicit in, or
may be fairly inferred from, the references, is decided on the
facts of each case, in light of the prior art and its
relationship to the appellant’s invention. As in all
determinations under
35 U.S.C. § 103, the decision maker must bring judgment to
bear. It is impermissible, however, simply to engage in a
hindsight reconstruction of the claimed invention, using the
appellant’s structure as a template and selecting elements
from references
to fill the gaps. The references themselves must provide some
teaching whereby the appellant’s combination would have been
obvious. In re Gorman, 933 F.2d 982, 986, 18 USPQ2d 1885,
Appeal No. 2000-0304 Page 5
Application No. 08/778,688
1888 (Fed. Cir. 1991) (citations omitted). That is, something
in the prior art as a whole must suggest the desirability, and
thus the obviousness, of making the combination. See In re
Beattie, 974 F.2d 1309, 1312, 24 USPQ2d 1040, 1042 (Fed. Cir.
1992); Lindemann
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Application No. 08/778,688
Maschinenfabrik GmbH v. American Hoist and Derrick Co., 730
F.2d 1452, 1462, 221 USPQ 481, 488 (Fed. Cir. 1984). In
determining obviousness/nonobviousness, an invention must be
considered "as a whole," 35 U.S.C. § 103, and claims must be
considered in their entirety. Medtronic, Inc. v. Cardiac
Pacemakers, Inc., 721 F.2d 1563, 1567, 220 USPQ 97, 101 (Fed.
Cir. 1983).
The examiner is of the opinion that the Stewart reference
discloses:
. . . a business form with a removable
label comprising a first paper layer (60),
a liner material layer (59), a permanent
adhesive layer (80), a removable adhesive
layer (82), and a second paper layer (12).
[Examiner’s answer at page 4].
The examiner, recognizing that Stewart does not disclose
a permanent adhesive release material layer, relies on Cross
for teaching of a permanent adhesive release material layer
for use in a rolled intermediate and concludes:
It would have been obvious to one having
ordinary skill in the art at the time the
invention was made to have provided the
label stock of Stewart with the release
material of Cross to enable the
intermediate to be processed in a rolled
configuration and easily unrolled when
desired.[Examiner’s answer at page 4].
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Application No. 08/778,688
The appellant argues that there is no teaching for
utilizing non-highly calendered liner material in Stewart.
In regard to the recitation in both independent claims 1 and
14 of a liner material having a non-highly calendered texture,
the examiner states:
Stewart does not disclose a liner material
having a non-highly calendered texture. It
would have been obvious to one having
ordinary skill in the art at the time the
invention was made to have provided the
label of Stewart with a non-highly
calendered liner, since calendering is a
well known process in the label art, and it
would have been within the level of
ordinary skill in the art to have provided
a liner with an amount of calendering
suitable for its end use. [Examiner’s
answer at page 4].
However, there is no disclosure in Stewart about the need
for non-highly calendered liner material. In fact, the
Stewart reference does not mention calendering of the liner at
all. There is no evidence that the end use of the liner in
the Stewart reference would require non-highly calendered
liner material. As such, in our view, there is no suggestion
to utilize non-highly calendered liner material in Stewart.
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Application No. 08/778,688
We have reviewed the disclosure of Cross and find that it
does not cure the deficiencies noted above for the Stewart
reference. Therefore, we will not sustain the rejection of
claims 1 and 14 or claims 2 through 13 and 15 through 20
dependent therefrom.
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Application No. 08/778,688
The decision of the examiner is reversed.
REVERSED
JEFFREY V. NASE )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
MURRIEL E. CRAWFORD ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
JENNIFER D. BAHR )
Administrative Patent Judge )
MEC/jrg
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Application No. 08/778,688
NIXON AND VANDERHYE
1100 NORTH GLEBE RD 8TH FLOOR
ARLINGTON, VA 22201-4714
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Application No. 08/778,688