Ex parte Hamisch

Board of Patent Appeals and Interferences

Dec 23, 1999

08371642 (B.P.A.I. Dec. 23, 1999)

Application for patent filed January 12, 1995. 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not written for publication in a law journal and (2) is not binding
precedent of the Board.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. 21
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte PAUL H. HAMISCH JR.,
____________
Appeal No. 1996-3198
Application No. 08/371,6421
____________
HEARD: November 15, 1999
____________
Before PAK, WARREN, and KRATZ, Administrative Patent Judges.
KRATZ, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the examiner's refusal
to allow claims 1, 2 and 5-12. Claims 13 and 4, which are all
of the remaining claims pending in this application, have been
Appeal No. 1996-3198 Page 2
Application No. 08/371,642
indicated as allowable by the examiner (final rejection, page
2).
BACKGROUND
The appellant's invention relates to a hand-held labeler
having an elastomeric member placed on the handle exterior and
a method of making the labeler. According to appellant, the
provision of elastomeric material for the handle helps to
"...prevent slippage..." and "...absorb the impact..." when
using the labeler (specification, pages 1 and 2, carryover
paragraph). An understanding of the invention can be derived
from a reading of exemplary claims 1 and 11, which are
reproduced below.
1. A hand-held labeler, comprising: a housing having a
manually graspable handle which subjects the user to impact
during use, means on the housing for mounting a label supply
roll of a composite web having labels releasably adhered to a
carrier web, a platen, a print head cooperable with the platen
for printing on the labels, means for delaminating printed
labels from the carrier web, means for applying printed labels,
means for advancing the composite web to peel a printed label
from the carrier web and advance the printed label into label
applying relationship with label applying means and to advance
another label into the printing position, wherein the advancing
means includes an operating lever disposed at the handle and
engageable by the user’s fingers, wherein the handle includes a
substantially rigid handle member, a frictional elastomeric
member on the exterior of the handle member, and the
Appeal No. 1996-3198 Page 3
Application No. 08/371,642
elastomeric member being receivable against the palm of the
user’s hand for helping to absorb the impact on the user’s palm
resulting from use of the labeler.
11. Method of making a hand-held labeler, comprising the
steps of: providing a housing having a manually graspable
handle, the handle having a pair of handle sections, means on
the housing for mounting a label supply roll of a composite web
having labels releasably adhered to a carrier web, a platen, a
print head cooperable with the platen for printing on the
labels, means for delaminating printed labels from the carrier
web, means for applying printed labels, means for advancing the
composite web to peel a printed label from the carrier web and
advance the printed label into label applying relationship with
the label applying means and to advance another label into the
printing position, wherein, the advancing means includes an
operating lever disposed at the handle and engageable by the
user’s fingers, wherein the handle includes a substantially
rigid handle member, and molding elastomeric material onto the
handle.
The prior art references of record relied upon by the
examiner in rejecting the appealed claims are:
Bronson 1,934,256 Nov. 07,
1933
Hamisch, Jr. (Hamisch) 4,116,747 Sep. 26,
1978
Araujo et al. (Araujo) 5,403,430 Apr. 04,
1995
(Filed Jan. 14, 1994)
Claims 1 and 2 stand rejected under 35 U.S.C. § 103 as
being unpatentable over Hamisch in view of Araujo. Claims 5-12
stand rejected under 35 U.S.C. § 103 as being unpatentable over
Hamisch in view of Araujo and further in view of Bronson.
Appeal No. 1996-3198 Page 4
Application No. 08/371,642
OPINION
In reaching our decision in this appeal, we have given
careful consideration to the appellant's specification and
claims, to the applied prior art references, and to the
respective positions and evidence furnished by the appellant
and the examiner. This review leads us to conclude that the
examiner's
§ 103 rejections of claims 1, 8, and 9 are sustainable.
However, we will not affirm the examiner's § 103 rejections of
claims 2,
5-7, and 10-12. Our reasons for these determinations follow.
Initially, we note that appellant states "[a]ll of the
appealed claims are submitted to be patentable and each claim
is argued separately." ( Brief, page 4). Accordingly, we shall
treat the claims separately to the extent appellants have
argued the limitations of each claim separately consistent with
37 CFR
§ 1.192 (c)(7) and (8) (1995). See page 3 of the examiner's
answer.
Appellant acknowledges that Hamisch discloses a hand-held
labeler corresponding to the labeler called for in appealed
Appeal No. 1996-3198 Page 5
Application No. 08/371,642
claim 1 (brief, page 7 and specification, page 4) except for
the recited "frictional elastomeric member on the exterior of
the handle member...." According to the examiner, Araujo
discloses an elastomeric cover for a hand-held applicator as a
grip (answer, page 4), and it would have been obvious to one of
ordinary skill in the art to modify the hand-held labeler of
Hamisch to include such a cover on the handle of the labeler
for providing a better grip thereto. We note that appellant
does not specifically dispute the examiner's holding (implicit
in the stated rejection) that the claimed foam handle grip or
sleeve of Araujo (column 4, lines 53 and 54 and column 5, lines
21-25) corresponds to the claimed frictional elastomeric
member. On this record, it is our view that a skilled artisan
would have been imbued with a reasonable expectation of success
in improving the gripping surface of the handle of Hamisch's
labeler by adding a foam sleeve cover thereto which corresponds
to the claimed elastomeric cover as taught by Araujo.
Moreover, on this record, we are of the opinion that it would
have been obvious from the combined teachings of Hamisch and
Araujo to select a foam sleeve cover material with a desired
hardness value, such as that recited in claims 8 or 9, to
Appeal No. 1996-3198 Page 6
Application No. 08/371,642
A discussion of Bronson is not necessary to our decision. 2
obtain the expected enhanced gripping surface for the handle of
the labeler. This is especially true where, as here,2
appellant has not established, either in the specification or
through evidence in the record, that the particular hardness
value of the handle cover material as claimed is critical. See
In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
In light of the above, we agree with the examiner that the
subject matter of claims 1, 8, and 9 would have been prima
facie obvious from the combined references' teachings.
We do not share appellant's viewpoint that the evidence
furnished by appellant (declaration of Borcher, filed October
10,
1995 and admitted prior art labelers in the amendment of
October 10, 1995; pages 3 and 4), which allegedly demonstrates
large sales and use of labelers without an elastomeric cover
for the handle, supports appellant's contention that
patentability lies in the discovery of the impact problem and
Appeal No. 1996-3198 Page 7
Application No. 08/371,642
alleged solution thereof. Clearly, the discovery of any
problem with impact on the hands of users of the prior art
hand-held labelers would have been manifest to one of ordinary
skill in the art upon such use. See In re Ludwig, 353 F.2d
241,243, 147 USPQ 420, 421 (CCPA 1965); In re Goodman, 339 F.2d
228, 232-33, 144 USPQ 30, 33-34 (CCPA 1964). Thus, one of
ordinary skill in the art would have been led to use an
elastomeric cover with a desired hardness on the prior art
labelers with a reasonable expectation of reducing the impact.
See also In re Huang, 100 F.3d 135, 40 USPQ2d 1685 (Fed. Cir.
1996). In any event, for the reasons expressed in the answer
and above, a skilled artisan would have been motivated to
modify the labeler of Hamisch to include a cover material as
claimed to obtain a better grip thereon in light of the
combined teachings of the references. The fact that the reason
or motivation to modify Hamisch's labeler advanced by the
examiner may be for providing a better grip rather than solving
a problem with reducing impact on the hands of a user of the
device does not detract from the combinableness of the
references or suggest impermissible hindsight reasoning as
Appeal No. 1996-3198 Page 8
Application No. 08/371,642
alleged by appellant. In this regard, it is not necessary that
the prior art suggest the combination to achieve the same
advantage or result allegedly discovered by applicant. See In
re Dillon, 919 F.2d 688, 692, 16 USPQ2d 1897, 1900 (Fed. Cir.
1990), cert. denied, 500 U.S. 904 (1991) and In re Lintner, 458
F.2d 1013, 1016, 173 USPQ 560, 562 (CCPA 1972).
Under the circumstances recounted above, it is our
determination that the evidence of record for and against a
conclusion of obviousness of the subject matter of claims 1, 8
and 9 considered in light of the respective arguments advanced
by the appellant and the examiner, on balance, weighs most
heavily in favor of an obviousness conclusion with respect to
the rejections under consideration.
Appellant simply has not shouldered the burden of
presenting convincing countervailing evidence of nonobviousness
by merely presenting the declaration of Borcher and other
information. Compare Huang, 100 F.3d 135, 40 USPQ2d 1685.
Accordingly, we will sustain the examiner's § 103 rejection of
claim 1 as unpatentable over Hamisch in view of Araujo and
separately stated § 103 rejection of claims 8 and 9 as
Appeal No. 1996-3198 Page 9
Application No. 08/371,642
unpatentable over Hamisch in view of Araujo and further in view
of Bronson.
However, we cannot sustain the examiner's § 103 rejection
of claim 2 over Hamisch in view of Araujo and § 103 rejection
of claims 5-7 and 10-12 over Hamisch in view of Araujo and
Bronson. Regarding claim 2, we note that the labeler requires
a pair of handle sections each having an elongate exterior
recess for receiving elastomeric sections as argued. The
examiner has not explained how the applied references
reasonably teach or suggest such structure including a recess
in each section. In this regard, we note that Araujo suggests
a sleeve for the handle, not a recess mounted material.
Claim 11 requires a method including molding the
elastomeric material to a labeler handle; claim 12 additionally
requires keying of the elastomer to the handle as part of the
method; and claim 5 requires a means for keying the elastomeric
material to the handle of a labeler device. The examiner
additionally cites the Bronson patent which is directed to a
running board cover. However, like appellant, we do not
envision how a skilled artisan would have been led to the
claimed labeler with a molded and/or keyed elastomeric handle
Appeal No. 1996-3198 Page 10
Application No. 08/371,642
from such disparate prior art selections as culled by the
examiner, without the benefit of impermissible hindsight. With
regard to claims 6 and 7, the thickness of the elastomer is
required to be varied. Here, the examiner has not explained
how the applied references would have suggested modifying the
apparently uniformly thick sleeve of Araujo for application to
a labeler as claimed. Accordingly, we cannot sustain the
examiner's stated rejection(s) of claims 2, 5-7, and 10-12.
CONCLUSION
To summarize, the decision of the examiner to reject claim
1 under 35 U.S.C. § 103 as being unpatentable over Hamisch in
view of Araujo and to reject claims 8 and 9 under 35 U.S.C. §
103 as being unpatentable over Hamisch in view of Araujo and
further in view of Bronson is affirmed. However, the decision
of the examiner to reject claim 2 under 35 U.S.C. § 103 as
being unpatentable over Hamisch in view of Araujo and to reject
claims 5-7 and 10-12 under 35 U.S.C. § 103 as being
unpatentable over Hamisch in view of Araujo and further in view
of Bronson is reversed.
Appeal No. 1996-3198 Page 11
Application No. 08/371,642
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Application No. 08/371,642
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
AFFIRMED-IN-PART
CHUNG K. PAK )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
CHARLES F. WARREN ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
PETER F. KRATZ )
Administrative Patent Judge )
PFK/jlb
Appeal No. 1996-3198 Page 13
Application No. 08/371,642
MONARCH MARKINGS SYSTEMS, INC.
P.O. BOX 608
DAYTON, OH 45401