Ex Parte Eric Mitchell et al

Patent Trial and Appeal Board

Jan 31, 2018

13710873 (P.T.A.B. Jan. 31, 2018)

United States Patent and Trademark Office
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
13/710,873 12/11/2012 SCHICKLI Eric Mitchell 12324M 4490
27752 7590 02/02/2018
THE PROCTER & GAMBLE COMPANY
Global IP Services
Central Building, C9
One Procter and Gamble Plaza
CINCINNATI, OH 45202
EXAMINER
POON, ROBERT
ART UNIT PAPER NUMBER
3788
NOTIFICATION DATE DELIVERY MODE
02/02/2018 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):
centraldocket. im @ pg. com
pair_pg @ firsttofile. com
mayer.jk @ pg. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SCHICKLI ERIC MITCHELL,
DAVID CHRISTOPHER SOUZA, and
MATTHEW HOWARD WASSON
Appeal 2016-008425
Application 13/710,873
Technology Center 3700
Before LISA M. GUIJT, JEFFREY A. STEPHENS, and
BRENT M. DOUGAL, Administrative Patent Judges.
DOUGAL, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134 from a final rejection of
claims 1—10, 12—16, and 19-21. We have jurisdiction under 35 U.S.C.
§ 6(b).
We affirm.
Appeal 2016-008425
Application 13/710,873
CLAIMED SUBJECT MATTER
The claims are directed to a package comprising a peelable overlabel.
Claims 1,16, and 21 are independent. Claim 1, reproduced below with
reference numbers added in brackets, is illustrative of the claimed subject
matter:
1. A package [30]1 comprising:
a. a package interior;
b. a package substrate;
c. an opening [38] defined in the package substrate to
provide access to the package interior;
d. a peelable overlabel [50] affixed to the package
substrate to selectively cover the opening and expose the
opening, the overlabel comprising opposing first [52] and second
[53] edges and opposing third [54] and fourth [55] edges that are
situated substantially orthogonal to the first and second edges;
and
e. adhesive [60] disposed at least partially on a surface of
the overlabel facing the package substrate;
f. wherein adhesive deadener [70] is applied over portions
of the adhesive that is disposed on the second edge;
g. wherein the adhesive on each of the third and fourth
edges is substantially devoid of adhesive deadener; and
h. wherein the peelable overlabel has an average peel force
and a peak peel force, and wherein the peak peel force that is
within 70% of the average peel force upon lifting the peelable
overlabel off of the package substrate.
1 We remind Appellants that our rules require that Appellants’ Appeal Brief
include “[a] concise explanation of the subject matter defined in each of the
rejected independent claims, which shall refer ... to the drawing ... by
reference characters.” 37 C.F.R. § 41.37 (iii) (emphasis added). As
reference to the drawings is missing in Appellants’ Appeal Brief, we include
reference numbers in brackets herein to aid the reader.
2
Appeal 2016-008425
Application 13/710,873
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Hebert US 2005/0276525 A1 Dec. 15,2005
Toms US 2011/0184367 A1 July 28, 2011
Duan US 2012/0177307 A1 July 12, 2012
REJECTIONS
Claims 1—10 are rejected under 35 U.S.C. § 112, second paragraph, as
being indefinite.
Claims 1—3 and 10 are rejected under 35 U.S.C. § 102(e) as being
anticipated by Duan.
Claims 1 and 4—9 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Toms and Duan.
Claims 12—16 and 19-21 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Toms, Duan, and Hebert.
OPINION
35 U.S.C. §112
The Examiner finds that the terms “average peel force” and “peak
peel force” in claim 1 are indefinite because they are “not defined in the
original disclosure.” Final Act. 2.2 The Examiner further explains that the
terms are indefinite because there are multiple ways to calculate “average
2 The issue of the terms “the average peel force,” and “the underlying
package substrate” lacking antecedent basis appears to have been resolved in
after-final amendments entered by the Examiner. Adv. Act. 1.
3
Appeal 2016-008425
Application 13/710,873
peel force” and “peak peel force” that would provide different results, thus
rendering the terms unclear. Ans. 8—9.
Appellants’ Specification describes a resealable overlabel designed to
be “at least partially peeled off of [a] package,” for example, “the overlabel
may be permanently affixed on one of its edges and releasably affixed on the
remaining edges.” Spec. 1,1. 16—18; 3,1. 29. The overlabel has adhesive
that “must possess sufficiently high strength to maintain adhesion of the
overlabel to the package substrate prior to use by a consumer, but not too
much strength (or tack) wherein the initial peeling force can lead to tearing,
delaminating, [etc.].” Id. at 1,11. 20-23. The Specification further illustrates
example peel force profiles (PF1, PF2) for particular peelable overlabels,
though it does not specify how these profiles are determined. Id. at 1,1. 27—
2,1. 13 & Fig. 3. The Specification teaches:
In certain embodiments of the present invention, a peak peel
force from peeling the overlabel off of the package substrate can
be within 70%, 80%, or 90% of the average peel force. Peel force
measurements can be made on a universal constant rate of
elongation tensile tester with computer interface. The rate used
during testing is 100 inches per minute (2.54 meters per minute).
Average and peak peel force measurements can be made to
determine how uniform the peel force is.
Id. at 7,1. 32-8,1. 4.
Appellants first point to the teachings of the Specification concerning
how the calculations can be performed, namely “on a universal constant rate
of elongation tensile tester with computer interface.” Br. 4. The Examiner
responds that “[e]ven if a computer interface was used for calculation, it is
still unclear how the two peel forces are calculated.” Ans. 8. The Examiner
further explains that the terms are indefinite because there are multiple ways
to calculate “average peel force” and “peak peel force” that would provide
4
Appeal 2016-008425
Application 13/710,873
different results for the same overlabel. Id. at 8—9. Appellants did not file a
Reply Brief, and therefore do not contest this finding, nor do they provide
further response or explanation on how to calculate “average peel force” and
“peak peel force.”
Appellants assert that “[ajutomated tensile testers are well known to
the skilled artisan, as are the terms ‘average peel force’ and ‘peak peel force’
when using instrumentation.” Br. 4. Appellants’ statement is merely
attorney argument, with no supporting evidence. See In re Pearson, 494
F.2d 1399, 1405 (CCPA 1974) (“Attorney’s argument in a brief cannot take
the place of evidence.”). Appellants invite “the Examiner to conduct a
simple internet search” (Br. 4), but absent evidence in the record of a
meaning in the art that resolves the issues of clarity raised by the Examiner,
we are not persuaded of error.
For all of these reasons, Appellants’ arguments do not inform us of
error in the Examiner’s rejection. Accordingly, we sustain the 35 U.S.C.
§112, second paragraph, rejection.
35 U.S.C. § 102(e)
Appellants argue that the Examiner’s finding that Duan discloses all
elements of claim 1 is flawed. Br. 5. Concerning the claim element:
“wherein the peelable overlabel has an average peel force and a peak peel
force, and wherein the peak peel force that is within 70% of the average peel
force upon lifting the peelable overlabel off of the package substrate,” the
Examiner found that:
if the average peel force was the force used by a user on average
to lift the overlabel, then the peak veel force can simply be the
minimum require[d] force to lift [the] overlabel off and that can
5
Appeal 2016-008425
Application 13/710,873
be 70 percent of the average force used by the user to lif[t] the
overlabel off.
Final Act. 3 (emphasis added).
Appellants contest this finding, stating that “[t]he plain meaning of the
term ‘peak’ is understood by skilled artisans to represent the highest value;
thus, changing the plain meaning of this term to ‘simply be the minimum
require[d] force to lift [the] overlabel off is improper.” Br. 5 (citing The
American Heritage College Dictionary, 4th Edition, 2004 (“‘peak’:
The point of greatest development, value, or intensity”).
Though we agree with Appellants that the peak is the highest point,
the Examiner’s finding that the peak peel force can be the minimum force
required to lift the overlabel is not inconsistent with the plain meaning of the
term “peak.” This is because the minimum force required to lift the
overlabel off the package can still define the peak of a peel force profile.
For example, if a gradually increasing force is applied to the overlabel (i.e.,
the “peel force”), which does not result in the overlabel peeling from the
package, and then the gradually increasing force reaches a value that results
in peeling the overlabel from the package (i.e., the “peak peel force”), then
as determined by the Examiner, the minimum force required to peel (or lift)
the overlabel from the package is the peak peel force. We understand from
the language of claim 1 that such a peak peel force must be within 70% of
the average peel force (which notably seems to include the peak peel force
value in determining the average peel force). Thus, Appellants’ argument
does not identify error in the Examiner’s rejection.
6
Appeal 2016-008425
Application 13/710,873
35 U.S.C. § 103(a) — Claims 1 & 4—9
Concerning the rejection of claim 1 over Toms and Duan, Appellants
provide attorney argument with no supporting evidence. Appellants state
that “even if one of ordinary skill in the art would be motivated to modify
the overlabel of Toms in view of Duan, the peel force properties recited in
claim 1 would unlikely be achieved.” Br. 6. Appellants assert that this is
because “a large initial wet edge . . . would still exist on the modified Toms
overlabel that would lead to a high peak peel force in comparison to the
average peel force.” Id. “Attorney’s argument in a brief cannot take the
place of evidence.” In re Pearson, 494 F.2d at 1405. Thus, Appellants’
argument does not identify error in the Examiner’s rejection.
35 U.S.C. § 103(a) - Claims 12-16 & 19-21
Appellants argue the rejection of claims 12—16 and 19—21 together.
We select claim 16 as representative. See 37 C.F.R. § 41.37(c)(l)(iv).
The Examiner determines that claim 16 would have been obvious
primarily in view of the teachings of Toms, Duan, and Hebert. Final Act. 6—
8. Relevant to Appellants’ arguments, the Examiner finds that “[t]he
modified Toms does not explicitly teach the recited minimum and maximum
width dimensions of active adhesive.” Id. at 7. The Examiner finds that
Herbert teaches “to incorporate additives or deadeners to the pressure-
sensitive adhesive [on a package] in order to reduce the tenacity of the bond
to the substrate so that the pressure-sensitive adhesive readily detaches from
the substrate on [the] opening.” Id. The Examiner then determines that it
would have been “obvious to incorporate additives to the adhesive of Toms
in order to achieve optimum results for peeling of the overlabel.” Id. The
7
Appeal 2016-008425
Application 13/710,873
Examiner also determines that “[ajpplying additives to the adhesive would
alter the amount of active adhesive and [that a] change in width of active
adhesive would be a direct result of experimentation of incorporating
additives to the adhesive.” Id.
Appellants argue “that Hebert does not teach or suggest the use of
‘deadeners.’” Br. 7. However, Appellants “acknowledge that Hebert
discloses ... the use of additives in the adhesive composition to decrease the
level of tack. But deadeners substantially null and void adhesive tack, rather
than simply ‘dialing it back.’” Id.
Appellants’ argument is inconsistent with Appellants’ definition of
“‘adhesive deadener’” as “any substance that can be brought into contact
with adhesive to reduce the level of tack of the adhesive, including
deadeners, detackifiers (e.g., talc), and ink/pigments.” Spec. 6,11. 9—11. As
noted by the Examiner, this definition “does [not] . . . state that deadeners
null and void adhesive tack.” Ans. 10. We further agree with the Examiner
that “the disclosure specifically states that a deadener reduces adhesive tack,
which the additives taught by Hebert do. Thus, the additives taught by
Hebert are indeed deadeners as defined by the appellant’s own disclosure.”
Id.
For these reasons we are not informed of error in the Examiner’s
rejection of claims 12—16 and 19—21.
DECISION
The Examiner’s rejections of claims 1—10, 12—16, and 19—21 are
affirmed.
8
Appeal 2016-008425
Application 13/710,873
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)(l)(iv).
AFFIRMED
9