Ex Parte Flynn et al

Patent Trial and Appeal Board

Jan 8, 2015

95001608 (P.T.A.B. Jan. 8, 2015)

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.
95/001,608 04/21/2011 Timothy J. Flynn CD-9082-3B 5600
42419 7590 01/08/2015
PAULEY PETERSEN & ERICKSON
2800 WEST HIGGINS ROAD
SUITE 365
HOFFMAN ESTATES, IL 60169
EXAMINER
WEHNER, CARY ELLEN
ART UNIT PAPER NUMBER
3993
MAIL DATE DELIVERY MODE
01/08/2015 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Avery Dennison Corporation
Requester1

v.

Continental Datalabel, Inc.
Patent Owner and Appellant
____________________

Appeal 2014-006697
Reexamination Control 95/001,608
Patent 6,860,050 B2
Technology Center 3900
____________________

Before JEFFREY B. ROBERTSON, DANIEL S. SONG, and
RAE LYNN P. GUEST, Administrative Patent Judges.

GUEST, Administrative Patent Judge.

DECISION ON APPEAL

1 Requester did not participate in this appeal, as no Respondent Brief or
Cross Appeal Brief was filed. See Patent Owners Appeal Brief filed
September 30, 2013 (hereinafter “PO App. Br.”) at 2 (stating that litigation
involving the patent at issue between Requester and Patent Owner has been
settled).
Appeal 2014-006697
Reexamination Control 95/001,608
Patent 6,860,050 B2

2
I. STATEMENT OF CASE
This is a decision on appeal by Continental Datalabel, Inc. (hereinafter
“Patent Owner”)2 from the Patent Examiner’s decision to reject pending
claims in an inter partes reexamination of U.S. Patent 6,860,050 B2. The
Board’s jurisdiction for this appeal is under 35 U.S.C. §§ 6(b), 134, and 315.
We AFFIRM.
II. BACKGROUND
The patent in dispute in this appeal is U.S. Patent 6,860,050 B2
(hereinafter, “the ’050 Patent”), which issued March 1, 2005 to Flynn et al.
A request for inter partes reexamination under 35 U.S.C. §§ 311-318 and 37
C.F.R. §§ 1.902-1.997 for the ’050 patent was filed April 21, 2011 by a
Third-Party Requester, Avery Dennison Corporation. Request for Inter
Partes Reexamination 1. The Third-Party Requester did not participate in
this appeal.
Claims 1-16 of the ’050 patent were cancelled and claims 17-68 were
added in Ex Parte Reexamination 90/010,761. In the present Inter Partes
Reexamination proceeding, claims 69-112 were added. Claims 17-112 stand
rejected and are currently appealed.
The ’050 patent relates to a separable label assembly which allows for
portions of the label assembly to be printed after the portions have been
separated. ’050 patent, col. 1, ll. 7-11, col. 2, ll. 1-26 and col. 4, ll. 61-67.
Representative claim 17 on appeal reads as follows (Claims App’x,
PO App. Br. 42):
17. (Original) A label assembly comprising:

2 See PO App. Br. 2.
Appeal 2014-006697
Reexamination Control 95/001,608
Patent 6,860,050 B2

3
a face sheet, a back sheet, a layer of an adhesive
positioned between said face sheet and said back sheet, said
adhesive adhering to said face sheet more than to said back
sheet; and
a separation line dividing the label assembly into a first
portion that is separated from a second portion, said separation
line formed by at least one first tearable line of separation
extending across said face sheet and a second tearable line of
separation extending across said back sheet, said second
tearable line of separation being continuously die cut through
said back sheet, and each said first tearable line of separation
being offset with respect to said second tearable line of
separation, each said second tearable line of separation
corresponding to two said first tearable lines of separation.
The Examiner maintains 52 rejections on appeal. See PO App. Br. 9-
13. We address the following rejections.
I. The Rejection of claims 17, 22-43, 48-70, 74-90, 93, 94, 96-
102, 104-106, 108-112 under 35 U.S.C. § 103(a) as obvious in
view of Hodsdon (US 2008/0054622 A1, published Mar. 6,
20083). (Grounds 8, 32, 36, 42, 43, 47, 50, and 52.)
II. The Rejection of claims 18-21, 44-47, 71, 72 under 35 U.S.C.
§ 103 as obvious over Hodsdon in view of Ang (US 4,537,809,
issued Aug. 27, 1985). (Grounds 9 and 23.)
III. The Rejection of claims 35 and 73 under 35 U.S.C. § 103(a) as
obvious over Laurash (US 5,284,689, issued Feb. 8, 1994) in
view of Do (WO 01/89825, published Nov. 29, 2001).
(Grounds 13 and 26.)

3 Hodsdon is prior art under 35 U.S.C. § 102(e) by claiming priority to a
PCT application filed on May 22, 2001.
Appeal 2014-006697
Reexamination Control 95/001,608
Patent 6,860,050 B2

4
IV. The Rejection of claims 91, 92, 95, 103, and 107 under 35
U.S.C. § 112, first paragraph, for lacking written descriptive
support and for lack of enablement. (Grounds 28 and 29.)

III. OBVIOUSNESS
A. Hodsdon
Claims 17, 22-43, 48-68, 88, 93, 94, and 105. See RAN 39-43 (Ground 8).
Initially, Patent Owner addresses all of claims 17, 22-43, 48-68, 88,
93, 94, and 105, as a group. PO App. Br. 20-21. Patent Owner then presents
separate arguments for claims 22, 26, 30, 48, 52, and 56 as a group (Id. 21),
claims 24, 28, 31, 50, 54, 57, and 59 as a group (Id. at 22), claims 35-42 and
61-68 as a group (Id.), claims 25, 29, 32, 34, 51, 55, 58, and 60 as a group
(Id. at 22-23), and claims 88, 93, 94, and 105 as a group (Id. at 23).
The Examiner identifies two rationales for the rejection of these
claims both based on Figures 13-16 of Hodsdon. Figure 13 of Hodsdon is
reproduced below.
App
Reex
Paten

inclu
lines
line
show
teara
the g
Noti
is ba
lines
40.

gutte
eal 2014-0
amination
t 6,860,05
Figure 1
ding a fac
328 on th
324 in a gu
n as broke
The first
ble line of
utter porti
ce, mailed
sed on line
328 form
With res
r strip rem
06697
Control 9
0 B2
3 depicts a
estock 308
e facestock
tter area 3
n lines in
rationale
separation
on 320 ext
May 14, 2
340 as th
ing labels
pect to the
oved, as t
5/001,608
front view
and liner
308 and
20 and a d
Figure 13
is based on
and the f
ending ac
013 (here
e second t
332 as the
first ratio
aught in pa

5
of a labe
sheet 304
the liner sh
ie cut line
). Hodsdo
perforate
irst tearab
ross the fa
inafter “RA
earable lin
first tearab
nale, Paten
ragraph 1
l applicato
with label
eet 304 h
340 (not
n, ¶ 0081;
d line 324
le lines of
ce sheet. R
N”) 39.
e of separ
le lines o
t Owner a
02 of Hod
r construc
s 332 die c
aving a pe
enumerate
Fig. 14.
as the sec
separation
ight of A
The secon
ation and d
f separatio
rgues that
sdon, a co

tion 300
ut from
rforated
d but
ond
forming
ppeal
d rationale
ie cut
n. RAN
with the
ntinuous

Appeal 2014-006697
Reexamination Control 95/001,608
Patent 6,860,050 B2

6
die cut separation line (line 324) would not be supported and would easily
separate. PO App. Br. 20 and 22. The Examiner finds that Hodsdon
expressly teaches die cutting as a preferred method for weakened separation
lines. RAN 39; see Hodsdon, ¶ 0074. The Examiner also finds that before
the gutter strip is removed there is a point at which the gutter strip is
attached to the matrix and the second line of separation, as defined by the
claims. RAN 93; see Hodsdon, ¶ 0074, ¶ 0081, and ¶ 0102. The Examiner
finds that Hodsdon teaches that removing the matrix, including the gutter
strip, is optional. RAN 95-96 (citing Hodsdon, ¶ 96 and ¶ 102). Moreover,
the Examiner finds that even if removed at some point, the intermediate
product meets the label assembly, as claimed. RAN 95-96.
Patent Owner’s arguments fail to address the Examiner’s reasoning
and are limited to the label sheet as illustrated in Figure 1, i.e., after the
removal step has occurred. Patent Owner provides no persuasive evidence
or reasoning as to why the label assembly with the matrix strip intact would
not meet the requirements of the claim. In re Mullin, 481 F.2d 1333, 1335
(CCPA 1973) (finding that a reference that describes a composition or
structure as being an intermediate can be regarded as prior art) (citing In re
Herbert, 461 F.2d 1390 (CCPA 1972)).
Regarding the Examiner’s second rationale, Patent Owner argues that
Hodsdon does not provide the limitation that the second tearable line
corresponds to two said first tearable lines. PO App. Br. 21. Again, Patent
Owner does not address the Examiner’s specific findings or reasoning
articulated in the rejections or explain why these positions are deficient. A
general allegation that the art does not teach any of the claim limitations is
App
Reex
Paten

no m
§ 41
recit
claim
(inte
label
face
argu
in G
as th
show
line
adhe
finds
are s
eal 2014-0
amination
t 6,860,05
ore than m
.67(c)(1)(v
es will not
.”); see a
rpreting id
Claims 2
assembly
. With res
ments than
round 8. W
e second t
s the back
340. Acco
red to all t
that “whe
till adhere
Figure 1
06697
Control 9
0 B2
erely poin
ii) (“A sta
be consid
lso In re L
entical lan
2, 26, 30,
, the back
pect to the
those dis
ith respe
earable lin
ing remov
rding to P
he labels a
n back sh
d to the re
6 of Hodsd
5/001,608
ting out th
tement wh
ered an arg
ovin, 652 F
guage in 3
48, 52, an
sheet is ad
first ration
cussed abo
ct to the se
e of separa
ed from th
atent Own
fter separa
eet portion
maining ba
on is repr

7
e claim li
ich merely
ument for
.3d 1349,
7 C.F.R. §
d 56 recite
hered to e
ale, Paten
ve with re
cond ratio
tion, Pate
e row of l
er, Hodsd
tion. PO
portion [s
ck sheet p
oduced be
mitations.
points ou
separate p
1356 (Fed
41.37(c)(
that upon
ach of the
t Owner p
spect to al
nale, whic
nt Owner
abels 332
on teaches
App. Br. 2
ic] 354 [is
ortion.” R
low.
See 37 C
t what a c
atentabili
. Cir. 201
1)(vii)).
separation
labels cut
resents no
l the claim
h consider
argues tha
upon sepa
that the li
1. The Ex
] separate
AN 98.
.F.R.
laim
ty of the
1)
of the
within the
further
s rejected
s line 340
t Figure 16
ration at
ner is not
aminer
d the label

s

Appeal 2014-006697
Reexamination Control 95/001,608
Patent 6,860,050 B2

8
Figure 16 depicts a perspective view of a top portion of the
construction 300 of Figure 13 showing a first step for applying a first series
of printed labels in which the liner strip 364 at the top of the sheet is pulled
away and separated from the remainder portion 370 of the sheet for aligning
the labels with a set of tab dividers or file folders with staggered tabs.
Hodsdon, ¶ 0082.
The claims of the ’050 patent are apparatus claims, namely a label
assembly product. The patentability of an apparatus claim depends on the
claimed structure, not on the use or purpose of that structure, Catalina
Marketing Int’l, Inc. v. Coolsavings.com, Inc., 289 F.3d 801, 809 (Fed. Cir.
2002), or the function or result of that structure. In re Danly, 263 F.2d 844,
848 (CCPA 1959); In re Gardiner, 171 F.2d 313, 315-16 (CCPA 1948). If
the prior art structure possesses all the claimed characteristics including the
capability of performing the claimed function, then there is a prima facie
case of unpatentability. In re Ludtke, 441 F.2d 660, 663-64 (CCPA 1971).
Hodsdon states that “[t]he label liner sheet portions 354 are adhered to
respective ones of the facestock labels 332 while the sheet is intact and
passed through the printer or copier.” Id. at ¶ 0081. Hodsdon’s label
assembly meets the requirements of the claim structurally. If only the liner
die cut 340 was separated, the labels would remain adhered to the label
portions of the liner. Since, the product need only be capable of performing
as recited in the claims, it is of no moment whether the intended use of
Hodsdon’s label assembly is different than that of the invention disclosed in
the ’050 patent. Accordingly, we find no error in the Examiner’s finding.
Appeal 2014-006697
Reexamination Control 95/001,608
Patent 6,860,050 B2

9
Claims 24, 28, 31, 50, 54, 57, and 59 further recite the path of the at
least one first tearable line of separation “generally following” the path of
the second tearable line of separation and both paths “being non-linear.”
The Examiner’s rejection with respect to these claims is directed only to the
Examiner’s second rationale, in which lines 328 and line 340 are non-linear.
RAN 41-42. Patent Owner argues that lines 328 “take disparate paths along
opposite sides of the individual labels 332” and, thus, Hodsdon does not
describe “each first tearable line of separation generally following a second
path of said second tearable line of separation.” PO App. Br. 22. The
Examiner’s position is that the term “generally” is a word of approximation
that somewhat broadens the scope of the claim to more than a strict
following of the paths. See RAN 97 and 107-108.
During reexamination, “claims . . . are to be given their broadest
reasonable interpretation consistent with the specification, and . . . claim
language should be read in light of the specification as it would be
interpreted by one of ordinary skill in the art.” In re Am. Acad. of Sci. Tech.
Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004) (quoting In re Bond, 910 F.2d
831, 833 (Fed. Cir. 1990)). Patent Owner has not directed us to any portion
of the ’050 patent that would indicate that disparate paths, such as that of
lines 328, which are coincidental with the curvature of line 340 in liner sheet
304, do not meet the broadest reasonable interpretation of the phrase,
“generally follows.” Accordingly, we find no error with the Examiner’s
reasoning.
Moreover, each of claims 24, 28, 31, 50, 54, 57, and 59 (and the
claims that depend therefrom) requires only one first tearable line of
Appeal 2014-006697
Reexamination Control 95/001,608
Patent 6,860,050 B2

10
separation in using the phrase “at least one.” The bottom line 328 in
Hodsdon, which defines the bottom portion of each label and the lines
between labels, squarely meets the language of the claims in that the bottom
line 328 follows the path of the second tearable line 340 at a small offset
distance. Patent Owner does not appear to argue that the bottom line 328
alone does not follow directly along with second tearable line 340 in the
liner sheet.
Claims 35-42 and 61-68 recite “at least one of said first tearable line
of separation or said second tearable line of separation terminating short of
at least one . . . edge portion of said label assembly” and “a further tearable
line of separation positioned between [the] tearable line of separation . . .
and . . . said . . . edge portion.” The Examiner’s rejection with respect to
these claims again is directed only to the Examiner’s second rationale, in
which line 340 is the second tearable line of separation. Hodsdon describes
that line 340 is “spaced a small distance to form a small break-away tie at
the edge of the sheet.” Hodsdon, ¶ 0081.
Patent Owner argues that Hodsdon’s “break-away tie” is not a “line of
separation” which is described in the ’050 patent as “a line of weakening of
the structure of face sheet 20 and/or back sheet 30 . . . along which face
sheet 20 and/or back sheet 30 can be separated.” PO App. Br. 22; see also
’050 patent, col. 3, ll. 44-49. The ’050 patent further states that
Each tearable line or line of weakening, according to this
invention, comprises at least one of a die cut line, a laser die cut
line, a score cut line, a perforation line, a microperforation line,
a chemically etched line, a liquid etched line and/or a gas
etched line. Tearable line 42 and/or tearable line 44 of this
invention may comprise any other suitable separation line or
Appeal 2014-006697
Reexamination Control 95/001,608
Patent 6,860,050 B2

11
line of weakening known to those skilled in the art of label
assemblies.
’050 patent, col. 3, ll. 49-57 (emphasis added).
Because the scope of the phrase “tearable line” extends expressly to
lines of weakening in addition to the specific cut, scored, perforated, and
etched lines described specifically, we find no error with the Examiner’s
reasoning. Patent Owner has provided no reason to limit a “tearable line of
separation” to exclude a break-away tie. The “break-away” tie, which is
designed to be a line along which the back sheet can be easily separated, is a
weakened line by the juxtaposition of the edge of the sheet and the die cut
line, similar to the spaces which are still intact between perforations and
which are designed to be easily broken. Thus, the break-away tie is
designed to be a tearable line of separation.
Claims 25, 29, 32, 34, 51, 55, 58, and 60 recite both that the “second
tearable line of separation being continuously die cut though said back
sheet” and that “the adhesive layer having an edge portion offset with
respect to said separation line.” The Examiner’s rejection with respect to
these claims is only directed to the Examiner’s first rationale, in which line
324 is the second tearable line of separation. The Examiner finds that “the
gutter strip is formed by a die cut through the front face sheet and the
adhesive, the edge of the adhesive formed by this cut is offset from the
separation line.” RAN 43. Patent Owner argues, as with respect to claim 17
above, that removal of the matrix during manufacture does not allow for a
continuous non-perforated die cut for line 324 in the back sheet, since the
sheet would be unsupported and divide into two. PO App. Br. 22. The
Examiner responds that Hodsdon does not disclose that the two portions
App
Reex
Paten

have
cut l
RAN
prod
manu
surro
adhe
desc
illus
offse
simi
inven
sepa
the s
unsu
sugg
eal 2014-0
amination
t 6,860,05
to stay att
ine would
97. Acco
uct in whi
facture or
unding lin
sive are of
Patent O
ribed in th
trates an em
t from a s
Figure 4
lar to line
tion in wh
ration line
eparation
pported an
ested by H
06697
Control 9
0 B2
ached upo
only make
rdingly, it
ch the mat
by the us
e 324. Ac
fset from
wner’s po
e ’050 pat
bodimen
eparation l
of the ’05
3-3 in Figu
ich the ad
40. In the
line to kee
d would d
odsdon an
5/001,608
n removal
separatio
appears th
rix materia
er, along a
cordingly
the line of
sition appe
ent. For ex
t of the inv
ine. Figur
0 patent d
re 1, but i
hesive lay
embodim
p the two p
ivide in tw
d relied u

12
of the gut
n of the tw
at the Exa
l is remov
face sheet
, the first l
separation
ars to be c
ample, Fi
ention in
e 4 is repr
epicts a se
n an altern
er 25 stop
ent of Figu
ortions to
o easily, a
pon by the
ter strip an
o portions
miner is r
ed in Figu
die cut ad
ine of sepa
324.
ontrary to
gure 4 of t
which the
oduced be
ction view
ative emb
s short of a
re 4, with
gether, the
s would th
Examiner
d that “[u
that much
elying on
re 13, eith
jacent the
ration and
the inven
he ’050 pa
adhesive e
low.
taken alon
odiment o
nd surrou
out the ad
portions
e structur
. Accordi
]sing a die
easier.”
an end
er during
gutter 320
the
tion
tent
dge is

g a line
f the
nds
hesive nea
would be
e
ngly,

r
Appeal 2014-006697
Reexamination Control 95/001,608
Patent 6,860,050 B2

13
Patent Owner’s argument about separation at a die cut upon removal of the
matrix material is not persuasive.
Claims 88, 93, 94, and 105 recite that the further tearable line of
separation extending from where the first or second line of separation stops
short to the edge of the sheet is perforated. The Examiner relies on a
teaching in Hodsdon that “[i]nstead of die cutting, the weakened separation
lines can be formed by perforated lines or other mean as would be apparent
to those skilled in the art.” RAN 96 (quoting Hodsdon, ¶ 0074).
Patent Owner argues that “this substitution does not provide
Appellant’s tearable line combination, with one line terminating short of an
edge and the different and perforated further line extending to the edge of
the sheet.” PO App. Br. 23.
As discussed above, the break-away tie of Hodsdon is reasonably
considered to be a line of weakening within the scope of the ’050 patent.
Hodsdon identifies that “weakened separation lines” can alternatively be
“perforated lines.” Thus, it is reasonable to conclude that one of ordinary
skill in the art would have substituted the break-away tie described in
Hodsdon with a perforated line. To do so would have been no more than the
predictable use of one weakened separation line for another. The
Examiner’s conclusion is further supported by the teaching in Tataryan4
expressly identifying perforation, microperforations, and cut-and-tie
arrangements as alternative lines of weakness. See Randall Mfg. v. Rea, 733
F.3d 1355, 1362 (Fed. Cir. 2013) (“[T]he [ KSR ] Court required an analysis

4 US 2006/0110565 A1, published May 25, 2006, naming Tataryan et al. as
inventors. Tataryan was used as a reference in alternative rejections in this
reexamination.
Appeal 2014-006697
Reexamination Control 95/001,608
Patent 6,860,050 B2

14
that reads the prior art in context, taking account of ‘demands known to the
design community,’ ‘the background knowledge possessed by a person
having ordinary skill in the art,’ and ‘the inferences and creative steps that a
person of ordinary skill in the art would employ.’”) (quoting KSR Int'l. Co.
v. Teleflex, Inc., 550 U.S. 398, 418 (2007)). Accordingly, we find no error
in the Examiner’s reasoning.

Claims 74-76, 79, 80, 84, 87, 90, 96, 98, 101, 106, 109, and 110. See RAN
77 (Ground 43).
Claims 74-76, 79, 80, 84, 87, 90, 96, 98, 101, 106, 109, and 110 each
recite “a third tearable line of separation extending across said face sheet and
intersecting” the first tearable line of separation, the second tearable line of
separation, or both. The Examiner finds that the embodiment of Figure 20
of Hodsdon includes a third tearable line of separation in the face sheet that
intersects both the first and second tearable lines of separation, which “relax
the curl in the sheet after the sheet is run through a laser printer.” RAN 77.
Patent Owner argues that the alleged third tearable line “does not intersect
with the center perforated line in the gutter strip lane at the middle of the
sheet.” PO App. Br. 36. Accordingly, Patent Owner appears to present no
argument to dispute that Figure 20 illustrates the recited third tearable line
with respect to the Examiner’s second rationale which identifies line 340 of
the back sheet as the second tearable line of separation.
Figure 21 of Hodsdon is reproduced below.
App
Reex
Paten

dime
Figu
addi
these
just
defin
sepa
the E
(first
seco

Exam

eal 2014-0
amination
t 6,860,05
Figure 2
nsions ind
re 13. Ho
tional “fac
vertical l
short of th
ing lines i
ration) and
xaminer’s
lines of s
nd rationa
Accordin
iner’s fin
06697
Control 9
0 B2
1 depicts a
icated the
dsdon, ¶¶ 0
e cuts” as
ines extend
e opposing
n the face
the separ
first ratio
eparation)
le.
gly, Paten
ding with
5/001,608
front view
reon for an
038, 0039
vertical lin
ing acros
edge. Th
sheet havi
ation gutte
nale and a
and line 3
t Owner h
respect to

15
of the fa
alternativ
, 0084, an
es betwee
s the sheet
ese vertica
ng a distan
r line 324
lso interse
40 in the b
as not dire
this rejecti
ce sheet di
e to the la
d 0085. F
n labels 4
from just
l face cuts
ce apart o
(second li
ct lines 32
ack sheet
cted us to
on.
e cut lines
bel constru
igure 21 s
16. Figure
short of on
intersect
f 430q (fir
ne of sepa
8 in the fa
in the Exa
any error

with
ction of
hows the
21 depict
e edge to
the gutter
st lines of
ration) in
ce sheet
miner’s
in the
s

Appeal 2014-006697
Reexamination Control 95/001,608
Patent 6,860,050 B2

16
Claims 70, 77, and 100. See RAN 76 (Ground 42).
Claims 70, 77, and 100 further recite that the least one first tearable
line of separation defines a first side of an adhesive label of the face sheet
and the third tearable line of separation, which intersects the first tearable
line of separation, defines a second side of an adhesive label of the face
sheet.
Patent Owner argues that the vertical face cuts of Figure 20 “does not
define a label, and does not run adjacent a label, but is cut between the label
332 support matrix.” PO App. Br. 36.
According to the Examiner, a label is a “written or printed matter
accompanying an article to furnish identification or description.” RAN 106.
The ’050 patent does not expressly define the term “labels.” The ’050 patent
states that an “adhesive label” is formed where an adhesive adheres more to
a face sheet than a back sheet such that face sheet can be removed with
respect to back sheet with the adhesive adhering to the face sheet. ’050
patent, col. 3, ll. 17-22. The ’050 patent further exemplifies “labels” with
reference to “two labels 13, with a first shape on a first side and a second
shape on a second side” in Figure 1. Id., col. 5, ll. 13-14.
One of ordinary skill in the art would have recognized that any portion
of the face sheet having adhesive that adheres to one side more than the
other is capable of being printed on and used as a label, including the portion
of the face sheet where the vertical line and the lines forming labels 332
intersect. It is of no moment that Hodsdon does not intend to use these
portions. See Ludtke, 441 F.2d at 663-64. It is also of no moment that the
vertical lines do not form a portion of the oval shaped portions of the face
Appeal 2014-006697
Reexamination Control 95/001,608
Patent 6,860,050 B2

17
sheet that Hodsdon defines as the “labels 332” since other portions of the
face sheet of Hodsdon that are defined by a first and third line of separation
meet the broadest reasonable interpretation of the term “label” used by the
’050 patent. Patent Owner appears to support a broad interpretation of the
term “label” in its arguments made with respect to the rejection of claims 70,
77, 86, 92, and 100 under 35 U.S.C. § 112, first paragraph. PO App. Br. 29.
Accordingly, we find no error in the Examiner’s reasoning.

Claims 69, 85, 108, 111, and 112. See RAN 65 (Ground 32).
Claims 69, 85, 108, 111, and 112 depend from claims 17, 31, 53, 58,
and 59 and each recite that “upon separation of the label assembly along the
separation line into the at least two portions the back sheet remains adhered
to all of the labels cut within the face sheet.” Patent Owner presents no
arguments over those discussed above for the independent claims,
respectively. PO App. Br. 32. Accordingly, for the same reasons we affirm
the Examiner’s rejection of claims 69, 85, 108, 111, and 112 as obvious over
Hodsdon.

Claims 81, 82, 86, and 97. See RAN 68-69 (Ground 36).
Claims 81, 82, 86, and 97 depend from claims 24, 27, 31, and 53 and
recite that the at least one first tearable line of separation defines a side of a
label of the face sheet. Patent Owner presents no arguments over those
discussed above for the independent claims, respectively. PO App. Br. 33.
Accordingly, for the same reasons we affirm the Examiner’s rejection of
claims 81, 82, 86, and 97 as obvious over Hodsdon.
Appeal 2014-006697
Reexamination Control 95/001,608
Patent 6,860,050 B2

18

Claims 78, 83, 99, and 104. See RAN 81 (Ground 47).
Claims 78, 83, 99, and 104 each recite that “upon separation of the
label assembly along the separation line into the at least two portions the
back sheet remains adhered to all of the labels cut within the face sheet.”
Patent Owners arguments, presented with respect to these claims, are
substantially identical to those discussed above with respect to claims 22, 26,
30, 48, 52, and 56. PO App. Br. 38. Accordingly, for the same reasons we
affirm the Examiner’s rejection of claims 78, 83, 99, and 104 as obvious
over Hodsdon.

Claim 102. See RAN 84-85 (Ground 52).
Claim 102 recites “a further tearable line of separation positioned
between an end of said second tearable line of separation and said edge
portion of said label assembly.” Patent Owners arguments presented with
respect to these claims are substantially identical to those discussed above
with respect to claims 35-42 and 61-68. PO App. Br. 39-40. Accordingly,
for the same reasons we affirm the Examiner’s rejection of claim 102 as
obvious over Hodsdon.

Claim 89. See RAN 83 (Ground 50).
Claim 89 recites that “the further tearable line comprising a cut in the
back sheet.” Patent Owners arguments presented with respect to these
claims are substantially identical to those discussed above with respect to
claims 88, 93, 94, and 105, which recite that the further tearable line is
Appeal 2014-006697
Reexamination Control 95/001,608
Patent 6,860,050 B2

19
perforated. PO App. Br. 39-40. Accordingly, for the same reasons we
affirm the Examiner’s rejection of claim 89 as obvious over Hodsdon.

B. Hodsdon in view of Ang
Claims 18-21 and 44-47. See RAN 44 (Ground 9).
Claim 18-21 and 44-47 recite that the “second tearable line of
separation being non-linear at an edge portion of said label assembly.” The
Examiner acknowledges that neither second line of separation 324 nor
second line of separation 340 is non-linear at the edge of the sheet. The
Examiner finds that Ang describes a backing sheet with tearable lines of
separation 12 that are “curved”, “zig-zag, sawtooth, and like non-linear
patterns” at an edge of the sheet. RAN 44; see Ang, Figures 1 and 6 and col.
4, ll. 27-32.
The Examiner concludes that it would have been obvious for one of
ordinary skill in the art to use a non-linear score line, as taught by Ang, as
the second tearable line on the liner sheet of Hodsdon, because Ang
describes the non-linear score line enables a “clean edge-to-edge ‘crack’ at
any score line . . . such that the liner sheet may be divided cleanly into two
pieces.” RAN 98-99 (citing Ang, col. 4, ll. 53-55 and 63-66). The
Examiner reasons that such an advantage “would be relevant to any adhesive
label assembly.” Id.
Appellant contends that the non-linear score line of Ang “is directed
to removing an entire liner from a label sheet” while Hodsdon “discloses a
face sheet remaining portion surrounding the label that is not separated from
the liner during use.” PO App. Br. 23. Specifically, Appellant argues that
Appeal 2014-006697
Reexamination Control 95/001,608
Patent 6,860,050 B2

20
“[c]urving the gutter strip lines according to Ang provides no additional
benefit [to Hodsdon].” Id. (citing col. 4, lines 43-66)
Ang states that “[c]rackability enables the backing sheet to be divided
cleanly into two pieces 11 and 13, each of which can be removed separately
from the adhesive laminate.” Ang, col. 4, ll. 63-66.
We recognize the distinction between a label assembly that is
designed to have a backing sheet removed completely from a label, as that of
Ang, and a label assembly that is designed to have a single label removed
one-at-a-time from a backing sheet, as that of Hodsdon. However, the
purpose of the perforation line 324 of Hodsdon is not related to the removal
of the labels from the backing sheet, but, rather, for separating portions of
the backing sheet into two pieces. See Hodsdon, ¶ 0081. Line 340 in the
back sheet of Hodsdon likewise is related to the clean removal of the
backing sheet entirely from the labels. See Hodsdon, ¶ 0082; Fig. 16. Thus,
the teaching in Ang of a non-linear, discontinuous score line that provides
for a clean division of a backing sheet into two pieces upon bending the
sheet appears to be addressing the same problem faced by the perforation
line 328 and line 340 of Hodsdon, i.e., the separation of a backing sheet into
two pieces.
Using the non-linear, discontinuous crack and peel score line taught
by Ang as the perforated line of Hodsdon would have been no more than the
predictable use of a known score line for a label assembly backing sheet
according to its established function of cleanly dividing the backing sheet
into two separate pieces. KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 417
(2007) (The question to be asked is “whether the improvement is more than
Appeal 2014-006697
Reexamination Control 95/001,608
Patent 6,860,050 B2

21
the predictable use of prior art elements according to their established
functions.”). Moreover, one of ordinary skill in the art would have
recognized that the crack-and-peel structure of Ang would provide the die
cut structure taught by Hodsdon in a manner that would not allow the
backing to separate without the rupture or cracking of the separation line.
Accordingly, we find no error in the Examiner’s reasoning.

Claims 71 and 72. See RAN 58 (Ground23).
Claims 71 and 72 depend from claim 18 and recite that each of the
first and second portions of the label assembly “includes two labels defined
in the face sheet.” The Examiner finds that Figure 13 shows at least two
labels 332 in each portion of the label assembly. Patent Owners arguments
presented with respect to these claims are substantially identical to those
discussed above with respect to claim 18. PO App. Br. 28. Accordingly, for
the same reasons we affirm the Examiner’s rejection of claims 71 and 72 as
obvious over Hodsdon in view of Ang.

Claim 73 depends from claim 35. Claim 73 does not stand rejected
based on Hodsdon alone or in view of Ang.5 Accordingly, we address the
alternative rejection of claim 35 and claim 73 based on Laurash in view of
Do.

5 We believe the failure to adopt a rejection of claim 73 based on Hodsdon to
be an oversight. As discussed above, claim 35 is unpatentable over Hodsdon
as discussed supra at 10-11. Yet, the Examiner’s reason for withdrawing the
rejection of claim 73 is because the rejection of claim 35 based on Hodsdon
was not adopted. See RAN 54-55.
App
Reex
Paten

C.
Clai
(Gro
56, 6
rejec
Laur
Figu
show
to a
15 w

eal 2014-0
amination
t 6,860,05
Laurash
ms 22, 26,
und 13).
Initially,
1-68, 88,
tion is bas
ash. Figur
re 2 depict
ing a plur
liner sheet
hich form
Figure 1
06697
Control 9
0 B2
in view of
30, 35-42,
Patent Ow
93, and 94
ed on the
e 2 of Lau
s a top pla
ality of lab
14. In a f
labels 32.
0 of Laura
5/001,608
Do
48, 56, 61
ner addre
, as a grou
embodime
rash is rep
n view, pa
els 32. Th
irst embod
Laurash,
sh is repro

22
-68, 88, 9
sses all of
p. PO Ap
nt describe
roduced b
rtially bro
e sheet in
iment, fac
col. 5, ll. 8
duced bel
3, and 94.
claims 22
p. Br. 24-2
d in Figur
elow.
ken away
cludes a fa
e sheet 12
-12.
ow.
See RAN
, 26, 30, 3
5. The Ex
es 2 and 1
of a single
ce sheet 1
has die cu
48-49
5-42, 48,
aminer’s
0 of

sheet
2 adhered
ts 13 and

App
Reex
Paten

Figu
the l
die c
ll. 18

eithe
edge
using
of th
The
teara
the l
sepa
assem

end o
bene
shee
of Fi
340
recit
eal 2014-0
amination
t 6,860,05
re 10 depi
abel assem
ut along li
-24.
The Exa
r the first
of the lab
a break-a
e label ass
Examiner
ble lines o
abel assem
ration, as t
bly.” Id.
Patent O
f a perfor
fits of the
t provide t
The disc
gures 13-2
in the liner
ed in the c
06697
Control 9
0 B2
cts a fragm
bly of Fig
nes 13 and
miner ackn
or second
el assembl
way tie be
embly. Id
determine
f separatio
bly, thereb
aught by D

wner argu
ated gutter
tie of Do b
he support
losure of F
1 of Hods
sheet 304
laims. Do
5/001,608
entary sec
ure 2 in w
15 in an a
owledges
tearable lin
y. RAN 4
tween the
. (citing D
s that it wo
n of Laura
y forming
o, in orde
es that Do
strip line
ecause “th
needed.”
igures 13
don. Acco
which is
, p. 8, ll. 2

23
tional view
hich face s
lternating
that Laur
es of sepa
9. The Ex
end of a l
o, p. 2, l. 2
uld have b
sh that “te
a break-a
r to maint
discloses
and that L
e offset an
PO App.
-21 of Do
rdingly, D
the second
1-23. Do
of anoth
heet 12 an
offset pat
ash does n
ration term
aminer fin
ine of sepa
4; see als
een obvio
rminate s
way tie or
ain the inte
using brea
aurash doe
d overlyi
Br. 25.
is substant
o describ
tearable l
describes t

er embodi
d liner sh
tern. Laur
ot describe
inate sho
ds that Do
ration and
o Do, p. 8,
us to form
hort of the
further lin
grity of th
k-away tie
s not requ
ng liner an
ially ident
es a separa
ine of sepa
hat line 34
ment of
eet 14 are
ash, col. 8
that
rt of the
describes
the edge
ll. 21-23)
the
edge of
e of
e label
s at the
ire the
d face
ical to tha
tion line
ration
0 is a die
,

.
t
Appeal 2014-006697
Reexamination Control 95/001,608
Patent 6,860,050 B2

24
cut with end lines “spaced a small distance to form a small break-away tie at
the edge of the sheet.” Id. Contrary to the assertion of Patent Owner, Do is
directed towards positioning the break-away ties at the end of die cut lines
340, not the perforated gutter strip line. Thus, we find no error in the
Examiner’s reasoning that the skilled artisan would have applied the same
structural break-away tie to the die cut lines 13 and 15 of Laurash. We are
not persuaded that Laurash would not benefit from the break-away tie at the
end of a die cut line. Despite the fact that support is provided by the face
and liner sheets overlap with adhesive therebetween, Patent Owner has not
shown that additional break-away ties would not provide additional support
as taught by Do, particularly considering that the liner and face sheet of
Laurash are designed to be separated. See KSR, 550 US at 420 (“[A]ny need
or problem known in the field of endeavor at the time of invention and
addressed by the patent can provide a reason for combining the elements in
the manner claimed.”). Patent Owner has not directed us to any persuasive
evidence to the contrary.
Patent Owner further argues that Do’s break-away tie is not a further
line of separation. Patent Owner presents substantially identical arguments,
discussed above, with respect to the rejection of claims 35-42 and 61-68 as
being obvious over Hodsdon. For the reasons discuss above, we find Patent
Owner’s argument to be unpersuasive.

Claims 73 and 74. See RAN 60 (Ground 26).
Claim 73 recites that “each of the first portion and the second portion
includes two labels defined in the face sheet.” Claim 74 recites “a third
Appeal 2014-006697
Reexamination Control 95/001,608
Patent 6,860,050 B2

25
tearable line of separation extending across said face sheet and intersecting
said second tearable line of separation.” The rejection of claim 74 was
affirmed above with respect to Ground 43. As we point out above, the
disclosure with respect of Figures 13-21 of Do is substantially identical to
that of Figures 13-21 of Hodsdon. Accordingly, similar reasoning would
apply to the rejection of claim 74 based on Do as rejected based on
Hodsdon.
With respect to claim 73, the Examiner finds that Laurash’s Figure 2
shows two “labels” 35 and 110 in each portion of the label assembly. RAN
60. Patent Owner contends that the alleged label 35 is “a three-sided flap
and not a label” and that the alleged label 110 is “a printed slogan and not a
label.” PO App. Br. 29.
Laurash describes that “a three sided die cut 24 which creates a flap
35 may be provided on the face sheet.” Laurash, col. 5, ll. 12-13. Laurash
continues that
flap 35 may be folded inwardly and secured to a store shelf to
provide a point-of-sale hang label . . . . Upon removal of liner
sheet 14, the area of the face sheet beneath flap 35 may contain
a pressure sensitive adhesive which can be used to adhere the
flap to the store shelf while the remaining portion of the label
remains nontacky and hangs over the shelf.
Laurash, col. 5, ll. 14-21.
The Examiner responds that under the broadest reasonable
interpretation of a “label,” flap 35 and slogan 110 are properly considered
“labels.” As discussed above, the Examiner determines that the term “label”
should be interpreted broadly. The Examiner determines that the definition
and the ’050 patent do not require that labels be “separated from a carrier
Appeal 2014-006697
Reexamination Control 95/001,608
Patent 6,860,050 B2

26
sheet” or “removable from the face sheet.” RAN 106. The skilled artisan
could reasonably interpret that labels 13 of the ’050 patent may be printed
material on portions 11 and 12. The ’050 patent does not specify that
“labels” 13 are formed from die cuts in the face sheet or are separately
removable from portions 11 and 12.
The Examiner’s interpretation appears to be consistent with the broad
use of the term “label” in the ’050 patent, as discussed above. Patent Owner
directs us to no persuasive evidence that a more narrow meaning to the term
is appropriate which would have distinguished the flap 35 or the slogan 110
from being a “label” to one of ordinary skill in the art. Both flap 35 and
slogan 110 are provided for descriptive purposes, are present on the face
sheet, and have adhesive on the back that adheres more to the face sheet than
a back sheet.

IV. SECTION 112
Claims 91, 92, 95, 103, and 107. See RAN 61-63 (Grounds 28 and 29).
The only claims that are not rejected based on prior art are claims 91,
92, 95, 103 and 107. These claims stand rejected under 35 U.S.C. § 112,
first paragraph for lacking written descriptive support and for lack of
enablement. Each of claims 91, 95, 103 and 107 recite a “third tearable line
of separation extending across said face sheet and intersecting the further
tearable line of separation,” positioned between a first or second tearable
line of separation and an edge portion of the label assembly. Claim 92
depends from claim 91.
App
Reex
Paten

not c
the f
is no
face
63.
us to
first
15.
edge
conn
“thir
of th
eal 2014-0
amination
t 6,860,05
The Exa
ontain any
urther tear
t enabling
sheet and
In the co
Figure 5,
Figure 5
and secon
A tearable
portions 1
Accordin
ecting the
d tearable
e ’050 pat
06697
Control 9
0 B2
miner find
disclosur
able line o
for the thi
intersectin
ntext of w
reproduce
is a top vi
d tearable
line 45 is
4 and 15.
g to Paten
ends of th
line” recit
ent does n
5/001,608
s that “[t]h
e of a tear
f separatio
rd tearable
g the furth
ritten desc
d below. P
ew of an a
lines 42 an
positioned
’050 pate
t Owner,
e first tear
ed in claim
ot identify

27
e specific
able line o
n” and de
line of se
er tearable
riptive sup
O App. B
lternative
d 45 stop
between t
nt, col. 4,
the unnum
able lines
s 91, 95,
this line in
ation, as o
f separatio
termines th
paration e
line of se
port, the P
r. 28.
label assem
short of ed
he end of
ll. 13-27.
bered hori
42 in Figu
103 and 10
Figure 5
riginally f
n intersect
at “the sp
xtending a
paration.”
atent Ow

bly 10 in
ge portion
tearable li
zontal line
re 5 consti
7. The sp
. However
iled, does
ing with
ecification
cross the
RAN 62-
ner directs
which
s 14 and
ne 44 and
s
tutes the
ecification
, Patent

Appeal 2014-006697
Reexamination Control 95/001,608
Patent 6,860,050 B2

28
Owner fails to explain how Figure 5 describes or would enable the
horizontal line “extending across said face sheet” as recited in the claims.
The Examiner determines that the phrase “extending across said face
sheet” encompasses extending from one edge of the face sheet to an
opposing edge, as illustrated in Figure 1 above, or stopping just short of
opposing edges, as illustrated by first lines of separation 42 in Figure 5. See
e.g., RAN 23. The Examiner’s interpretation is well-supported by the ’050
patent. See ’050 patent, col. 4, ll. 16-19. Patent Owner seems to agree with
this interpretation in arguing, for example, that it would not have been
obvious to extend the back sheet lines 76 of Tataryan “across the entire
sheet.” See e.g., PO App. Br. 14.
Accordingly, the Examiner did not err in finding that the ’050 patent
lacks written descriptive support for “a third tearable line of separation
extending across said face sheet and intersecting the further tearable line of
separation” and in determining that the ’050 patent does not enable “a third
tearable line of separation extending across said face sheet and intersecting
the further tearable line of separation.”

V. REMAINING REJECTIONS
Because our decision is dispositive regarding the unpatentability of all
the claims, we need not reach the merits of the cumulative obviousness
rejections based on other references and/or the additional rejection based on
35 U.S.C. § 112, first paragraph. See In re Gleave, 560 F.3d 1331, 1338
(Fed. Cir. 2009) (holding that obviousness rejections need not be reached
upon affirming a rejection of all claims as anticipated).
Appeal 2014-006697
Reexamination Control 95/001,608
Patent 6,860,050 B2

29

V. CONCLUSION
On the record before us and for the reasons presented above, we
affirm the following rejections.
I. The Rejection of claims 17, 22-43, 48-70, 74-90, 93, 94, 96-
102, 104-106, 108-112 under 35 U.S.C. § 103(a) as obvious in
view of Hodsdon. (Grounds 8, 32, 36, 42, 43, 47, 50, and 52.)
II. The Rejection of claims 18-21, 44-47, 71, 72 under 35 U.S.C.
§ 103 as obvious over Hodsdon in view of Ang. (Grounds 9
and 23.)
III. The Rejection of claims 35 and 73 under 35 U.S.C. § 103(a) as
obvious over Laurash in view of Do. (Grounds 13 and 26.)
IV. The Rejection of claims 91, 92, 95, 103, and 107 under 35
U.S.C. § 112, first paragraph, for lacking written descriptive
support and for lack of enablement. (Grounds 28 and 29.)
Since we affirm rejections of each claim on appeal, we decline to
address the merits of additional grounds of rejection maintained by the
Examiner and appealed by the Patent Owner.

In the event neither party files a request for rehearing within the time
provided in 37 C.F.R. § 41.79, and this decision becomes final and
appealable under 37 C.F.R. § 41.81, a party seeking judicial review must
timely serve notice on the Director of the United States Patent and
Trademark Office. See 37 C.F.R. §§ 90.1 and 1.983.

Appeal 2014-006697
Reexamination Control 95/001,608
Patent 6,860,050 B2

30
AFFIRMED

FOR PATENT OWNER:

PAULEY PETERSEN & ERICKSON
2800 WEST HIGGINS ROAD
SUITE 365
HOFFMAN ESTATES, IL 60169

FOR THIRD-PARTY REQUESTER:

AVERY DENNISION CORPORTION
PATENT GROUP LAW DEPARTMENT-3 SOUTH
150 NORTH ORANGE GROVE BLVD.
PASADENA, CA 91103

NOVAK DRUCE & QUIGG, LLP
(NDQ REEXAMINATION GROUP)
1000 LOUISIANA STREET
FIFTY-THIRD FLOOR
HOUSTON, TX 77002