Ex parte Chess

Board of Patent Appeals and Interferences

Sep 26, 2001

09079537 (B.P.A.I. Sep. 26, 2001)

1
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not written for publication and is not binding precedent of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. 19
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte STANLEY C. CHESS
__________
Appeal No. 2001-1328
Application 09/079,537
___________
ON BRIEF
___________
Before STAAB, MCQUADE, and NASE, Administrative Patent Judges.
MCQUADE, Administrative Patent Judge.
DECISION ON APPEAL
Stanley C. Chess appeals from the final rejection of
claims 1 through 7, all of the claims pending in the
application.
THE INVENTION
The invention relates to “multi-ply integrated label
forms which expedite and simplify inventory control, shipment,
tracking and return of packages” (specification, page 1).
Representative claim 1 reads as follows:
1. A multi-ply integrated label form, comprising;
Appeal No. 2001-1328
Application 09/079,537
In the event of further prosecution, steps should be1
taken to correct the lack of proper antecedent basis for the
terms “said second ply marginal strip portion” in claim 1 and
“said uncovered die cut window openings in said first ply” in
claims 4 and 5.
2
a first ply having an upper side and an underside and
having at least one uncovered die cut window opening therein;
a second ply comprising a label portion and a card stock
portion adjacent to and detachably secured to said label
portion, each of said label portion and card stock portion
having an upper side and an underside, part of said upper side
of said label portion accessible and visible through said at
least one first ply uncovered die cut window opening, said
underside of said label portion being coated with an adhesive,
wherein said first ply is removably secured to said second
ply; and
a third ply comprising a first portion and a second
portion, each of said third ply first and second portions
having an upper side coated with a release material, said
third ply first portion being in register with said second ply
label portion and removably secured thereto by said adhesive,
and said third ply second portion being in register with said
second ply marginal strip portion and removably secured
thereto by said adhesive.1
THE PRIOR ART
The references relied on by the examiner to support the
final rejection are:
Neubauer 4,729,506 Mar. 8,
1988
Doll et al. (Doll) 5,267,898 Dec. 7,
1993
Appeal No. 2001-1328
Application 09/079,537
3
Laurash et al. (Laurash) 5,547,227 Aug. 20,
1996
THE REJECTIONS
Claims 1, 3 through 5 and 7 stand rejected under 35
U.S.C. § 103(a) as being unpatentable over Laurash in view of
Neubauer.
Claims 2 and 6 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Laurash in view of Neubauer and Doll.
Attention is directed to the appellant’s main and reply
briefs (Paper Nos. 13 and 15) and to the examiner’s final
rejection and answer (Paper Nos. 11 and 14) for the respective
positions of the appellant and the examiner with regard to the
merits of these rejections.
DISCUSSION
Laurash, the examiner’s primary reference, pertains to
multi-ply label forms adapted to facilitate various business
operations. Figures 1 and 2 show an embodiment designed for
use in package shipping operations, Figure 3 shows a simpler
version of this embodiment, Figure 4 shows an embodiment
Appeal No. 2001-1328
Application 09/079,537
4
suited for certified mailings, and Figure 5 shows an
embodiment intended for use as a medical prescription form.
In determining the differences between the subject matter
claimed and the prior art, the examiner (see page 2 in the
final rejection) appears to have compared the limitations in
the claims to a hybrid structure composed of elements
conveniently chosen from the package shipping embodiment shown
in Laurash’s Figures 1 and 2 and the certified mail embodiment
shown in Figure 4. The examiner has not explained, however,
nor is it apparent, how or why it would have been obvious to
so combine these two distinct embodiments. Moreover, as
conceded by the examiner (see pages 2
and 3 in the final rejection), even this highly selective
combination of Laurash embodiments differs markedly from the
multi-ply integrated label form recited in the claims. Simply
put, Laurash’s deficiencies find no cure in Neubauer’s
disclosure of mailers embodying covered and uncovered die cut
window openings and/or in Doll’s disclosure of label forms or
mailers having feed strips along their edges. The examiner’s
conclusion to the contrary stems from an impermissible
hindsight reconstruction wherein the appellant’s claims have
Appeal No. 2001-1328
Application 09/079,537
5
been used as a template to selectively combine isolated
disclosures in the prior art without any legitimate suggestion
or motivation to do so.
Accordingly, we shall not sustain the standing 35 U.S.C.
§ 103(a) rejection of independent claims 1 and 7, and
dependent claims 3 through 5 as being unpatentable over
Laurash in view of Neubauer, or the standing 35 U.S.C. §
103(a) rejection of dependent claims 2 and 6 as being
unpatentable over Laurash in view of Neubauer and Doll.
SUMMARY
The decision of the examiner to reject claims 1 through 7
is reversed.
REVERSED
Appeal No. 2001-1328
Application 09/079,537
6
LAWRENCE J. STAAB )
Administrative Patent Judge )
)
) BOARD OF PATENT
)
) APPEALS AND
JOHN P. MCQUADE )
Administrative Patent Judge ) INTERFERENCES
)
)
)
)
)
JEFFREY V. NASE )
Administrative Patent Judge )
JPM/kis
ROBERT P. SIMPSON
MARINE MIDLAND BANK BUILDING
5554 MAIN STREET, SUITE 200
WILLIAMSVILLE, VA 14221-5406