Ex parte Freedman et al.

Board of Patent Appeals and Interferences

May 12, 2000

08439414 (B.P.A.I. May. 12, 2000)

Application for patent filed May 11, 1995.1
1
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today
(1) was not written for publication in a law journal and
(2) is not binding precedent of the Board.
Paper No. 18
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte MELVIN S. FREEDMAN
and TIM PARKER

_____________
Appeal No. 1997-3611
Application 08/439,4141
______________
ON BRIEF
_______________
Before PAK, OWENS, and DELMENDO, Administrative Patent Judges.
PAK, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on an appeal from the examiner’s
refusal to allow claims 9 through 12 and 36 through 39. Claim
Appeal No. 1997-3611
Application No. 08/439,414
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9 was amended subsequent to the final Office action dated
March 26,
1996. Claims 1 through 8 and 33 through 35 were withdrawn
from consideration by the examiner as being directed to a
nonelected invention.
The subject matter on appeal in this application is
directed to in-mold labeled plastic bottles or other in-mold
labeled articles. This appealed subject matter relates to the
subject matter claimed in U.S. Application 07/839,369, Appeal
No.
97-1282, which is directed to methods involving manufacturing
and labeling particular labels and recycling labeled articles.
Claim 9, which is representative of the subject matter on
appeal in this application, reads as follows:
9. An in-mold labelled plastic bottle or other substrate
comprising a substrate body, a label formed of a coextruded
layered film material and containing within itself a
separation interface, said label being applied to the
substrate body, said layered film material comprising two
polymeric film plies each comprising one or more film layers,
said film plies being on contact with each other and
presenting to each other surfaces of different composition at
a pair of contacting interior faces joined at said separation
interface, one of said film plies comprising printable in-mold
label facestock, including a printable face layer, the other
of said film plies comprising a core or stiffening layer of
polymetric [sic, polymeric] film and a heat-activatable
adhesive layer, said film plies adhering to each other at said
Appeal No. 1997-3611
Application No. 08/439,414
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separation interface to a sufficiently high degree to
withstand the maximum process separation force imposed at said
separation interface as said layered film material is printed
and as labels cut therefrom are deployed from affixation on
said substrate, said film plies adhering to each other at said
separation interface to a sufficiently low degree to allow
them to cleanly and readily separate from each other at said
separation interface under the imposition of a separation
force greater than said maximum process separation force.
Claims 9 through 12 and 36 through 39 stand rejected
under 35 U.S.C. § 103 as unpatentable over the disclosure of
U.S. Patent 4,925,714 issued to Freedman on May 15, 1990
(hereinafter referred to as “Freedman”).
We have reviewed the claims, specification, and applied
prior art, including all of the arguments and evidence
advanced by the examiner and appellants in support of their
respective positions. This review leads us to conclude that
the examiner’s § 103 rejection is not well founded.
Accordingly, we will not sustain the examiner’s § 103
rejection for essentially those reasons set forth at pages 6-
13 of the Brief. We add the following primarily for emphasis.
The examiner states (Answer, page 3)that:
Freedman substantially discloses the instant claimed
invention of a multilayered in-mold label stock
containing within itself a separation interface
comprising at least two polymeric films of a
different composition, said composition is a
polyolefin, polyethylene or polypropylene, or
Appeal No. 1997-3611
Application No. 08/439,414
At page 3 of the Answer, the examiner similarly does not2
provide any evidence to support his assertions regarding
dependent claim limitations involving label compositions.
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composition which are closely related (see col. 2,
line 55 to col. 4, line 23, col. 5, lines 48-59 and
col. 8, lines 11-18). Freedman further discloses
that the labels are used on containers, bottles (see
col. 4, lines 18-22 and col. 5, lines 56-59).
Recognizing that Freedman does not disclose the claimed
heat-activatable adhesive layer, the examiner asserts (Answer,
page 4) that:
Heat-activated adhesives and pressure-sensitive
adhesives are functionally equivalent for the
purpose of bonding. It would have been within the
purview of one of ordinary skill in the art to
select an adhesive for the desired properties in the
end product such as peel strength including a heat-
activated adhesive.
The examiner’s assertion, however, is not supported by any
factual evidence. The Freedman reference relied on by the2
examiner is directed to “a method and means for using pressure
sensitive adhesive label technology.” See column 1, lines 8-
16. One of the pressure-sensitive adhesives used may be a
hot-melt material. See column 5, lines 60-63. Nowhere does
the Freedman reference, however, teach or suggest that the
pressure sensitive adhesive layers, including those made of a
hot melt material, are equivalent to the claimed heat-
Appeal No. 1997-3611
Application No. 08/439,414
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activatable adhesive layers for its labeling process. Nor
does the Freedman reference indicate that the employment of
the claimed heat-activatable adhesive layers is desirable or
useful in the label of the type described in Freedman. Under
this circumstance, we are constrained to agree with appellants
that the examiner has not supplied sufficient evidence to
demonstrate that one of ordinary skill in the art would have
been led to use the claimed heat-activatable adhesive layer,
in lieu of the pressure-sensitive adhesive layer, in the
labeling process described in the Freedman reference. In
other words, the Freedman reference would not have suggested
forming in-mold labeled articles containing the claimed heat-
activatable adhesive layer.
Moreover, as argued by appellants at pages 9 and 12 of
their Brief, Freedman also fails to disclose the claimed
coextrudate of two polymeric film plies, one of which
comprising a printable label face layer. See Freedman in its
entirety. Nowhere does Freedman indicate that its printable
label face layer (face stock 30), for example, is extruded.
See, e.g., Freedman, column 2, lines 55-65 and column 3, lines
Appeal No. 1997-3611
Application No. 08/439,414
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12-66, together with Freedman’s Figures 1A to 2D. According
to the examiner (Answer, page 4):
Appellant[s] is [sic, are] arguing process
limitations which are given little or no weight in
determining the patentability of the claimed product
in the absence of a factual showing that the label
of the claimed invention differs from that of the
prior [art].
In so stating, the examiner ignores the fact that he has the
initial burden of establishing the “virtual identity” between
the claimed coextruded printable label face layer and the
printable label face layer (face stock 30) described in the
Freedman reference. In re Spada, 911 F.2d 705, 708, 15 USPQ2d
1655, 1658 (Fed. Cir. 1990); In re Thorpe, 777 F.2d 695, 697-
98, 227 USPQ 964, 965-66 (Fed. Cir. 1985). The examiner has
improperly shifted the burden to appellants, without meeting
his own.
Thus, on this record, we conclude that the examiner has
not established a prima facie case of obviousness regarding
the claimed subject matter within the meaning of 35 U.S.C. §
103. Accordingly, we reverse the examiner’s decision
rejecting claims 9 through 12 and 36 through 39 under 35
U.S.C. § 103 as unpatentable over Freedman.
OTHER ISSUE
Appeal No. 1997-3611
Application No. 08/439,414
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U.S. Patent 5,242,650 issued to Rackovan on September 7,
1993 (hereinafter “Rackovan”) is directed to an in-mold
labeling process and in-mold labeled articles, wherein a label
film to be employed, comprising a face layer 12, a core layer
16 and a heat-activatable adhesive (base) layer 14, is
coextruded and then hot-stretched to avoid shrinking, relaxing
or any distortion of the film which may interfere with the in-
mold labeling process. See Rackovan, column 4, lines 6-27,
and column 5, line 11. Rackovan also refers to US. Patent
4,837,075 issued to Dudley on June 6, 1989, which discloses an
in-mold labeling process involving the use of polymeric label
stock in the form of a multilayer coextrudate comprising a
layer of heat-activatable adhesive. See Rackovan, column 3,
lines 25-42. Although both Rackovan and Dudley do not appear
to describe forming coextruded films having therebetween a
peelable interface, Freedman does teach that the formation of
such films having a peelable interface advantageously provides
“renewable surfaces” for manufactured products as indicated
supra.
Upon return of this application, the examiner should:
Appeal No. 1997-3611
Application No. 08/439,414
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(1) Determine whether Rackovan is qualified as “prior art”
for purposes of 35 U.S.C. §§ 102 and 103; and
(2) Determine whether Freedman taken together with Rackovan
(if qualified as “prior art”) and/or Dudley would have
rendered the claimed subject matter obvious within the meaning
of 35 U.S.C.
§ 103.
Appeal No. 1997-3611
Application No. 08/439,414
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CONCLUSION
In view of the foregoing, we reverse the examiner’s § 103
rejection and return this application to the examiner to
consider the above-mentioned references consistent with our
instruction.
REVERSED
Chung K. Pak )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
Terry J. Owens ) APPEALS AND
Administrative Patent Judge ) INTERFERENCES
)
)
)
Romulo Delmendo )
Administrative Patent Judge )
CKP:tdl
Appeal No. 1997-3611
Application No. 08/439,414
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