Ex Parte DEHLINGER et alDownload PDFPatent Trial and Appeal BoardFeb 25, 201613270631 (P.T.A.B. Feb. 25, 2016) Copy Citation 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 3 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 4 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 5 Copy with citationCopy as parenthetical citation