Ex Parte Dehlinger et al

Patent Trial and Appeal Board

Feb 25, 2016

13270631 (P.T.A.B. Feb. 25, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/270,631 10/11/2011
81029 7590 02/29/2016
A very Dennison Corporation
Brian G. Bembenick
8080 Norton Parkway, 22D
Mentor, OH 44060
FIRST NAMED INVENTOR
Anne M. DEHLINGER
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
ATTORNEY DOCKET NO.
4919-US-Cl;
AD2011000672
CONFIRMATION NO.
8757
EXAMINER
NORDMEYER, PATRICIA L
ART UNIT PAPER NUMBER
1788
NOTIFICATION DATE DELIVERY MODE
02/29/2016 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):
patentdocket@averydennison.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ANNE M. DEHLINGER, MICHAEL J. MOORE, and
WILLIAM BECKER
Appeal2014--003529
Application 13/270,631
Technology Center 1700
Before BEYERL YA. FRANKLIN, JAMES C. HOUSEL, and
JULIA HEANEY, Administrative Patent Judges.
FRANKLIN, Administrative Patent Judge.
DECISION ON APPEAL
Appellants1 seek our review under 35 U.S.C. § 134(a) of the
Examiner's decision rejecting claims 1-19. We have jurisdiction over the
appeal under 35 U.S.C. § 6(b).
1 Appellants identify the real party in interest as Avery Dennison Corp.
App. Br. 1.
Appeal2014-003529
Application 13/270,631
STATEMENT OF THE CASE
Claim 1 is illustrative of Appellants' subject matter on appeal and is
set forth below (with text in bold for emphasis):
1. A healthcare form assembly comprising:
a carrier sheet defining a leading edge and an oppositely
disposed trailing edge;
a release coating disposed on the carrier sheet;
an adhesive layer disposed on the release coating;
a printable sheet having a same or substantially the same
shape as the carrier sheet and being removably disposed on the
carrier sheet, the printable sheet defining a leading edge and an
oppositely disposed trailing edge, the printable sheet oriented
on the carrier sheet such that the trailing edge of the printable
sheet is intimately disposed next to the trailing edge of the
carrier sheet, the printable sheet also defining a first set of cut
lines, and another set of transversely extending cut lines
extending substantially parallel to the leading edge of the
printable sheet to thereby create a first peel zone along the
leading edge of the printable sheet;
the healthcare form assembly also comprising a strip
or section of a layer of a deadening material disposed in the
first peel zone;
wherein the deadening material is comprised of
paper, polymer film, fibrous materials, or a combination
thereof.
Appeal Br. Al (Claims Appendix).
The Examiner relies on the following prior art references as evidence
of unpatentability:
Garvie et al.
(hereafter "Garvie")
US 2003/0186016 Al
2
Oct. 2, 2003
Appeal2014-003529
Application 13/270,631
Blok et al.
(hereafter "Blok")
US 6,177,163 Bl Jan.23,2001
THE REJECTION
Claims 1-19 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Garvie in view of Blok.
ANALYSIS
We select claim 1 as representative of all the claims on appeal, based
upon Appellants' presented arguments (for dependent claims 18 and 19,
Appellants rely upon the similar arguments relied upon for claim 1 (Appeal
Br. 12)). 37 C.F.R. § 41.37(c) (1) (iv).
We adopt the Examiner's findings in the Answer and affirm for the
reasons provided by the Examiner in the Answer, and add the following for
emphasis, with a focus on the matters raised by Appellants in the Appeal
Brief and Reply Brief.
At issue in the instant appeal is whether the combination of
teachings of Garvie in view of Blok make obvious the claimed
invention, particularly with respect to the claimed subject matter
pertaining to a deadening material disposed in the first peel zone
wherein the deadening material is comprised of paper, polymer film,
fibrous materials, or a combination thereof.
It is the Examiner's position that Garvie teaches, inter alia, use of
deadening material in a first peel zone (Figure 6, #130b, para. [0010] of
Garvie), but fails to teach that the deadening material is comprised of paper,
polymer film, fibrous materials, or a combination thereof. Ans. 2-5. The
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Appeal2014-003529
Application 13/270,631
Examiner relies upon Blok for teaching use of a deadening material
comprised of polymer film and refers to the Figures and Abstract of Blok
and to col. 3, 1. 61 through col. 4, 1. 40 of Blok, in this regard. Ans. 6.
Appellants argue that Garvie uses a deactivating material and not a
strip or section of paper, polymer film, fibrous materials or combinations
thereof. Appeal Br. 11. Appellants then argue that Blok teaches that the
carrier (item 3 in Figure 1 of Blok) itself can be made of a material that
inherently has release properties or, alternatively, that a release agent can be
employed. Appeal Br. 12. Blok, col. 3, 1. 61 through col. 4, 1. 40.
Appellants thus submit that in fact no layer of deadening material comprised
of paper, polymer film, fibrous materials, or a combination thereof is taught
by Blok.
In response, the Examiner states that the section of carrier (item 3 in
Figure 1 of Blok) that is removable with the label (item 4 in Figure 1 of
T""'\1 1 ~ .. '. • • 1 '. 1 .. 1 • ' .1 1 1 • ' • 1 {" .1
l:HOKJ runcuons man 10enuca1 rasmon w me aeaaemng macena1 or me
claimed invention. Ans. 8.
In reply, Appellants explain that the deadening material as claimed is
in addition to the carrier layer and print sheet, and it is not simply a section
of the carrier layer (as in Blok). Reply Br. 2.
It appears that Appellants miss the point made by the Examiner
in her response made on page 8 of the Answer, discussed, supra.
Implicit in the Examiner's stated position is that Blok teaches that a
polymer film as disclosed by Blok is a known deadening material
because Blok teaches that materials having an inherent release
property can be polyethylene or polypropylene. Blok, col. 3, 1. 65
through col. 4, 1. 3. Hence, it is the Examiner's position that
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Appeal2014-003529
Application 13/270,631
substitution of the release agent of Garvie with the polymer material
of Blok would have been obvious to one skilled in the art. We add
that
[t]he test for obviousness is not whether the features of a
secondary reference may be bodily incorporated into the
structure of the primary reference; nor is it that the claimed
invention must be expressly suggested in any one or all of the
references. Rather, the test is what the combined teachings of
the references would have suggested to those of ordinary skill
in the art.
In re Keller, 642 F.2d 413, 425 (CCPA 1981) (citations omitted.) As such,
we are not persuaded by Appellants' arguments, including those pertaining
to their contention (as set forth on pages 2-3 of the Reply Brief) that the
Examiner is picking and choosing parts of a reference in a way that is
impermissible.
In view of the above, we affirm the rejection.
DECISION
The rejection is affirmed.
TIME PERIOD
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).
ORDER
AFFIRMED
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