Ex Parte Flynn et al

Patent Trial and Appeal Board

Sep 29, 2016

12381508 (P.T.A.B. Sep. 29, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 12/381,508 03/12/2009 7590 09/30/2016 Douglas H. Pauley Pauley Petersen & Erickson Suite 365 2800 West Higgins Road; Hoffman Estates, IL 60169 FIRST NAMED INVENTOR Timothy J. Flynn 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. CONFIRMATION NO. CD-157 9318 EXAMINER NORDMEYER, PATRICIA L ART UNIT PAPER NUMBER 1788 MAILDATE DELIVERY MODE 09/30/2016 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) UNITEn STATES PATENT ANn TRA.nEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte TIMOTHY J. FLYNN, THOMAS E. FLYNN, PATRICKJ. FLYNN, andBRIAN ZIMMERMAN Appeal2014--007255 Application 12/381,508 Technology Center 1700 Before RICHARD M. LEBOVITZ, JEFFREY B. ROBERTSON, and RAEL YNN P. GUEST, Administrative Patent Judges. ROBERTSON, Administrative Patent Judge. DECISION ON APPEAL This is a decision on an appeal under 35 U.S.C. § 134(a) from the Examiner's final rejection of claims 22--41. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE and enter a NEW GROUND OF REJECTION under the provisions of 37 C.F.R. § 41.50(b). Appeal2014--007255 Application 12/381,508 STATEMENT OF THE CASE The claimed invention is directed to a label assembly having a removable portion for exposing an arcuate end portion of the labels for easy grasping and removal. Spec. 2--4. Claims 22, 24, and 28 are the independent claims on appeal. Claim 22 is representative of the claimed invention and reproduced below. App. Br. 18. 22. A label assembly, comprising: a face sheet, a back sheet, and a layer of an adhesive positioned between said face sheet and the back sheet, the adhesive adhering to the face sheet more than to the back sheet, the face sheet defined by an outer peripheral edge surrounding the face sheet; a first label column of a first plurality of labels cut within the face sheet; a second label column of a second plurality of labels cut within the face sheet and spaced apart from the first label column, the second label column having a first side disposed toward the first label column and a second side disposed opposite the first side; a line of weakening cut in and across the back sheet and dividing the back sheet into at least two portions, the line of weakening extending under each of the second plurality of labels at the first side of the second label column, the line of weakening including a linear first section parallel to and offset from a side edge of the first side of the second label column, the line of weakening further including an arcuate second section, wherein the linear first section comprises a plurality of cuts and ties and the arcuate second section comprises a cut and no ties. Claims 24 and 28 recite similar limitations to claim 22. Claim 24 differs from claim 22 by reciting a "tearable line of separation ... including a non-linear section [which is] angled or curved" as the line of weakening with a first linear section and an arcuate second section of claim 22. Claim 2 Appeal2014--007255 Application 12/381,508 28 includes first and second tearable lines of separation each having "non- linear sections [which are] angled or curved." In the Examiner's Answer ("Answer") mailed April 16, 2014, the Examiner maintained the following ground of rejection for claims 22--41, as set forth in the Final Rejection mailed September 6, 2013 ("Final"): 1 Claims 22--41 are rejected under 35 U.S.C. § 103(a) as unpatentable over Wong, U.S. Patent Publication 2005/0089663 Al (filed Feb. 28, 2003) ("Wong") in view of Aburatani, Japanese Application Publication JP 6- 3331722 (issued April 28, 1994) ("Aburatani"). ISSUE The dispositive issue on appeal is: Whether the Examiner erred in concluding that the combination of Wong and Aburatani renders claims 22- 41 of the subject application obvious? 1 In the Final Rejection, the Examiner also entered a rejection of Claims 22, 24, 25, 27, 28, 32, 33, 36, and 37--41 on the ground of nonstatutory obviousness-type double patenting as unpatentable over claims 1--4, 7, 8, 10, 13, 14, 15, 18, 20, and 21 of United States Patent Number 8,273,436 to Flynn. Final 2-3. Appellants did not appeal this rejection. 2 We cite to the English Translation of the Aburatani reference as translated and declared by Yutaka Tsuda on July 4, 2011, and as entered into the file history for the present application on March 18, 2013, by the Appellants, and considered by the Examiner on April 17, 2014. 3 Appeal2014--007255 Application 12/381,508 FINDINGS OF FACT 1. Figure 4 of the application on appeal is reproduced below. ~ ....................................................................................................................................... , c;,, 53 ~ tj?> 20 ~ 44 1 :;/'u~0 ) ~ ! I ~ ----;+-' -....,.:::,J~~--:v-~: -1-1--l-}11 I --H:: l( ----s~- I ~ ........................................ ~..... "'i:!~\.. ................................................................. .s: ' ' :-------.-< ' 3(:,--·1 %----': >-------- >------- 4& : (__ __________ ;_ :.--------~ 4-6 _L_ ______ _ >------------.: ------------------------- . ··················---~---t· >------L-.(>-----+-< ' . ' I --------~- ,, --78 • i $ ' ,,.;. x ... .-~ f ,,I ;1~ I 3B 30 Exploded view of upper comer of fig.4 Exploded view of lower comer of fig.4 Figure 4 depicts a plan view of a label assembly (20) including a face sheet (22 - not labeled) and a back sheet (26 - not labeled) with a layer of adhesive between them. The label assembly is divided into at least two columns by tearable lines of separation (36 & 38) in the back sheet (line 3 6) and front sheet (line 3 8), with cuts and ties, where 4 Appeal2014--007255 Application 12/381,508 at least one of the tearable lines includes an arcuate portion ( 51 for line 36 or 53 for line 38), with a cut and no ties, that extends towards the other of the tearable lines of separation. (Spec. 13-14; see also, id. at 8-10.) (Exploded views added.) 2. The Specification discloses: "The first and second tearable lines of separation 36 and 38 are offset from each other, for example by less than about 1 cm." (Spec. 7 .) 3. The Specification discloses that the angled portion and/or non-linear portion (51 and 53) is used to keep the pages together during printing (Spec. 9) and an arcuate or curved shape for the non-linear section can be used to reduce the forces necessary for separating the portions (Spec 14). 5 Appeal2014--007255 Application 12/381,508 Wong 4. Figure 1 of Wong is reproduced, in part, below. ~ ~: •· ~·. ,. . ... Figure 1 is a plan view of a label sheet according to the Wong, which includes a die cut, foldable self-adhesive label sheet (1 - not labeled) with a liner (16) and a column of labels (12) adhered to the liner. The liner has a weakened separation line (30) formed by cuts and ties running underneath the column of labels offset from matrix separation line (20) at the edge of the labels, and notches (18) at the top and bottom of the sheet aligned with the weakened separation line 30. (i-fi-f 9, 17, 18.) (Exploded view added.) 5. Wong discloses: "The ties are preferably strongest near the edges of the sheet and weaker in the interior portion of the sheet. This allows the sheet to resist tearing along the weakened separation lines due to normal handling or printing in the printer .... " (i-f 6.) 6. Wong discloses: "A notch is preferably formed in a release liner and the matrix if applicable at each end of the weakened separation line. 6 Appeal2014--007255 Application 12/381,508 The notch is aligned with the weakened separation lines in both the liner and in the matrix. The notch helps to ensure that tearing will begin along the weakened separation lines." (i-f 6.) 7. Wong discloses: "The weakened separation lines could be formed by various known methods. The weakened separation lines are generally linear and parallel, but need not be strictly linear or strictly parallel." (i-f 32.) Aburatani 8. Aburatani discloses a label for sealing and unsealing a package body. (i-f7). The package body is unsealed by removing a central separating piece in between two perforated lines on the label. (i-fi-f 7-8.) 9. Figure 2 of Aburatani is reproduced below: Figure 2 of Aburatani depicts an enlarged front view of the label. (i-f 9- 11.) 10. Aburatani discloses: a label includes a label base material 1 having an adhesive agent applied on the back surface side, two separating lines 6 and 6 formed parallel to the side edges of the label base material 1 in the label base material 1, and a separating piece 7 that is the portion between the separating lines 6 and 6, 7 Appeal2014--007255 Application 12/381,508 where each of the separating lines 6 and 6 consists of a plurality of discontinuous aduncate cuts 5, ... each consisting of a straight portion 5a parallel to the side edges of the label base material 1 and a slant portion 5b continuing to the straight portion 5a and formed toward the separation start end portion side of the separating line 6, 6. (i-f 6; see Fig. 1.) 11. Aburatani discloses grasp piece 3 where the pulling force on the grasp piece is transmitted to the separation start cuts 4 where then the tear reaches the slant portion 5b. (i-f 17 .) 12.Aburatani teaches that the "The reference numerals 5 ... denote a plurality of aduncate cuts formed from the separation start cuts 4 ... [where the aduncate cuts have] a substantially arc-shaped slant portion 5b." (i-f 11; see i-f 18 "the slant portions 5b of the aduncate cuts 5 are formed into arc shapes, however, the shapes of the slant portions 5b are not limited to this, and for example, the slant portions may be formed straight as shov,rn in Fig. 7."; see also i119 "the slant portions 5b of the aduncate cuts 5 are formed inward, however, the slant portions 5b may be formed outward as shown in Fig.8.") 13. Aburatani also teaches that "a preferable effect is obtained in which the terminal edge 5c of the straight portion 5a and the starting edge 5d of the slant portion 5b are formed to be positioned in an array on the same lateral line, so that even if the rupture line from the terminal edge 5c of the straight portion 5a is slightly deformed, the slant portion 5b preferably copes with the deformation." (i-f 25.) 8 Appeal2014--007255 Application 12/381,508 PRINCIPLES OF LAW In KSR, the Supreme Court explained, "[ w ]hen a work is available in one field of endeavor, design incentives and other market forces can prompt variations of it, either in the same field or a different one. If a person of ordinary skill can implement a predictable variation, § 103 likely bars its patentability." KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007). "The test for obviousness is not whether ... the claimed invention must be expressly suggested in any one or all of the references. Rather, the test is what the combined teachings of those references would have suggested to those of ordinary skill in the art." In re Keller, 642 F.2d 413, 425 (CCP A 1981) (citations omitted). "Any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning, but so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made and does not include knowledge gleaned only from applicant's disclosure, such a reconstruction is proper." In re McLaughlin, 443 F.2d 1392, 1395 (CCPA 1971). "We must still be careful not to allow hindsight reconstruction of references to reach the claimed invention without any explanation as to how or why the references would be combined to produce the claimed invention." Innogenetics, N. V. v. Abbott Labs., 512 F.3d 1363, 1374 n.3 (Fed. Cir. 2008). 9 Appeal2014--007255 Application 12/381,508 ANALYSIS Wong in view of Aburatani The Examiner found that Wong discloses the limitations recited in claims 22--41, except for "the line of weakening further including an arcuate second section, wherein ... the arcuate second section comprises a cut and no ties" as recited in claim 22, or a non-linear section angled or curved, as recited in claims 24 and 28. (Ans. 4 and 7.) The Examiner found that Aburatani discloses non-linear, aduncate3 cut 5 in a label system. (Ans. 8- 9.) The Examiner concluded that it would have been obvious to use the non- linear, arcuate cut of Aburatani in the matrix section at the end of the line of weakening of Wong in order to "easily and smoothly separate a portion of the assembly from the rest of the construction as taught by [Aburatani]." (Ans. 9.) Appellants argue that one of ordinary skill in the art would have viewed the plurality of aduncate cuts 5 disclosed in Aburatani as a whole, i.e., as parts of a line of separation (separating line 6), rather than as having sections. (App. Br. 12.) Appellants argue that combining Wong and Aburatani would "result, at best, in replacing Wong's cuts 22 and 32 with Aburatani's aduncate cuts 5," rather than a line of weakening with a linear section with cuts and ties and a non-linear, arcuate section with a cut and no ties between the label column and the edge of the sheet as recited in, for example, claim 22. (App. Br. 12.) Appellants also argue that the aduncate 3 Aburatani uses the term aduncate, which is synonymous with the terms arcuate and curved as used in the claims. Aduncate (adjective): hooked; bent inward. Aduncate, OXFORD LIVING DICTIONARIES, https://en.oxforddictionaries.com/definition/us/aduncate. 10 Appeal2014--007255 Application 12/381,508 cuts of Aburatani "would not be expected to improve Wong, particularly as the Wong face sheet does not tear in a similar manner as the strip of Aburatani ... and the record does not reflect that the Wong assembly suffers from the same tearing problem that Aburatani is seeking to solve." (App. Br. 12.) Appellants conclude that the Examiner's rationale is "insufficiently conclusory" and that there is "no basis in the prior art combination to have a non-linear section in the 'matrix' portion between the label column and the sheet edge for either of the tearable lines, and especially not for both." (App. Br. 13 and 16.) We agree with Appellants that the Examiner erred in concluding that the claims would have been obvious over Wong and Aburatani. Specifically, we agree with Appellants that the Examiner has articulated an insufficient rationale for supporting the position that one of ordinary skill in the art would have taken the aduncate cuts 5b of Aburatani, and applied them only to the edges of Wong to have made an arcuate second section that comprises a cut and no ties as required by the claims. (Appeal Br. 12-13; FF 1.) Although Aburatani discloses that the aduncate cuts are useful to cope with the deformation of the straight portion 5a, Aburatani discloses that the aduncate cuts 5 are used throughout the line of tearing and not at the edge, where Wong uses a notch 18 at the top and bottom of the sheet aligned with the lines of separation. (FFs 6, 9-13.) Thus, there is no indication, absent hindsight, that one of ordinary skill in the art would have placed such cuts only at the end portion of Wong in the manner proposed by the Examiner. 4 (See McLaughlin, 443 F.2d at 1395; Innogenetics 512 F.3d at 4 We interpret the location of the arcuate second section of the line of weakening of claim 22 as at the end portion of the line of weakening. As 11 Appeal2014--007255 Application 12/381,508 1374 n.3.) Accordingly, we reverse the Examiner's rejection of the claims. However, pursuant to our authority under 37 C.F.R. 41.50(b), we enter a NEW GROUND OF REJECTION of the claims as set forth below. NEW GROUND OF REJECTION Pursuant to our authority under 37 C.F.R. § 41.50(b), we reject claims 22--41under35 U.S.C. § 103(a) as obvious over Wong in view of Kaplan et al., U.S. Patent 5,135,790 (issued Aug. 4, 1992) ("Kaplan"),5 and further in view of Aburatani. Kaplan 14. Kaplan discloses a tear tape opening system for packages. (Col. 1, 11. 5 9---61.) 15. Figure 2 of Kaplan is reproduced below: !Ob FtG.2 claimed, the linear first section of the line of weakening includes cuts and ties and is parallel to and offset from the side of the label column. Thus, the second arcuate portion with a cut and not ties is at the end portion of the line of weakening. 5 Kaplan was cited in combination with Wong to reject similar claims in Reexamination Control 90/020,033, an ex parte reexamination of U.S. Patent 8,273,436 B2. The rejection was appealed to the Board and affirmed in a Decision on Appeal (Appeal No. 2015-005308), issued on September 29, 2015. 12 Appeal2014--007255 Application 12/381,508 Figure 2 of Kaplan depicts a detailed plan view of the operation of the tear tape opening system including die cuts 22 and tear lines 26 and 28. (Col. 2, 11. 43--44; col. 3, 11. 9-21.) 16. Kaplan discloses: "The tear itself is initiated by means of a die cut 22 which forms an opening or starter tab 24 at the initiating end of tear tape 14." (Col. 3, 11. 14--16.) Regarding claims 24 and 28, which require that the tearable line of separation includes non-linear section angled or curved portions, Wong discloses a label assembly with weakened [ tearable] separation lines that are generally linear and parallel, but need not be strictly linear or strictly parallel. (FF 4 and 7.) Wong discloses strong ties at the edge of the sheet to resist tearing along the separation lines during normal handling and printing, and a notch at the edge of the assembly to facilitate tearing along the weakened separation lines when ready to separate. (FF 4--6; see also FF 3.) Thus, Wong emphasizes precise separation between lines of weakening. (FF 6.) Kaplan also is concerned with initiating tearing on a precisely defined weakened separation line via an angled die cut 22. (FF 14--16.) Kaplan discloses expressly that the angled die cut lines 22 initiate tearing. (FF 16.) Thus, it would have been obvious to one of ordinary skill in the art at the time of the invention to have applied the predictable variation of the angled cut of Kaplan in Wong's label separation assembly to improve the precise initiation of tearing the lines of separation. (KSR, 550 U.S. at 417.) Regarding the arcuate cut sections recited in claims 22 and 29, Aburatani also is concerned with easily and smoothly separating the label base material where curved cuts 5 absorb the force of the pulling and cuts 5b 13 Appeal2014--007255 Application 12/381,508 cope with any deformation. (FF 9, 10, and 13.) Aburatani discloses that the shape of the slant portion 5b of the aduncate cut 5 are not limited to arc shapes and can be straight as well, for example. (FF 12.) Thus, one of ordinary skill in the art would have understood that non-linear cuts have been used in various shapes to aid in tearing in lines of separation. Therefore, it would have been obvious to vary the shape of the non- perpendicular die cut of Kaplan, to a shape such as a curve or arcuate shape, as shown in Aburatani to easily and smoothly separate the material and cope with any deformation. Consequently, the combination of Wong, Kaplan, and Aburatani renders claim 22 obvious and therefore unpatentable. Regarding claims 23, 25-27, and 30-41, because the Examiner's rationale for the additional limitations in rejecting those claims applies equally to the combination of Wong, Kaplan, and Aburatani, we adopt the Examiner's rationale as applied to the Wong and Aburatani reference combination, and reject the claims based on the combination of Wong, Kaplan, and Aburatani. (See Ans. 9-11.) CONCLUSION On this record, we reverse the Examiner's decision to reject the claims as obvious over Wong in view of Aburatani. We enter a NEW GROUND OF REJECTION of the claims as set forth above. DECISION The Examiner's rejection of claims 22--41 under 35 U.S.C. § 103(a) is REVERSED. 14 Appeal2014--007255 Application 12/381,508 We enter a new ground of rejection for claims 22--41under35 U.S.C. § 103(a). Pursuant to 37 C.F.R. § 41.50(b) provides that "[a] new ground of rejection ... shall not be considered final for judicial review." We note that 37 C.F.R. § 41.50(b) also provides that Appellant[s], WITHIN TWO MONTHS FROM THE DATE OF THE DECISION, must exercise one of the following two options with respect to the new ground of rejection to avoid termination of the appeal as to the rejected claims: ( 1) Reopen prosecution. Submit an appropriate amendment of the claims so rejected or new Evidence relating to the claims so rejected, or both, and have the matter reconsidered by the examiner, in which event the prosecution will be remanded to the examiner .... (2) Request rehearing. Request that the proceeding be reheard under 37 C.F.R. § 41.52 by the Board upon the same Record. No time period for taking any subsequent action in connection with this appeal may be extended. 37 C.F.R. § 1 .136(a)(l)(iv). REVERSED NEW GROUND OF REJECTION 15