Ex Parte Hansen et al

Board of Patent Appeals and Interferences

Oct 27, 2005

10000254 (B.P.A.I. Oct. 27, 2005)

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The opinion in support of the decision being entered
today was not written for publication and is not binding
precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
_______________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_______________

Ex parte THOMAS E. HANSEN
and ROBERT PHILLIPS
______________

Appeal No. 2005-2131
Application 10/000,254
_______________

HEARD: October 19, 2005
_______________

Before GARRIS, WARREN and WALTZ, Administrative Patent Judges.

WARREN, Administrative Patent Judge.
Decision on Appeal
This is an appeal under 35 U.S.C. § 134 from the decision of the examiner finally
rejecting claims 1 through 4, 6 through 10 and 18 through 20. Claims 11 through 17 are also of
record and have been withdrawn from consideration by the examiner under 37 CFR § 1.142(b).1
Claims 1, 6 and 18 illustrate appellants’ invention of a method of and an apparatus for

1 Appellants state that “[n]o Amendment was filed after Final Rejection under 37 CFR 1.116. A
Request for Reconsideration was filed on June 30, 2004 and received by the United States Patent
and Trademark Office on July 2, 2004. The Request was considered but no claims allowed”
(brief, page 6). The examiner states that “[t]he amendment after final filed on June 30, 2004 has
been entered” (answer, page 2). The official electronic records of the USPTO show that the
amendment filed July 2, 2004, in fact did amend claims 1, 6 and 20, which amendments are
reflected in the appendix to the brief. Claims 11 through 17 remain of record (see the amendment
of July 2, 2004 (page 7)).
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enabling a linered label applicator to accept linerless label sheet for application to the surface of
elements, and are representative of the claims on appeal:2
1. A method for enabling a linered label applicator to accept linerless label sheet for
application to the surface of elements comprising border cutting a sheet consisting essentially of
a linerless label to form a source of precut linerless label, associating the precut source of
linerless labels on a roll of temporary liner sheet consisting essentially of a sheet of less than
0.032mm in thickness, the precut linerless label having a border for a label, the border having a
linear distance defined by a micro-bridged cut along the border so that a composite of:
a) said temporary liner sheet and
b) micro-bridged linerless labels are provided
feeding the composite into said linered label applicator where linered label is normally directed
into said linered label applicator.
6. The method of claim 1 wherein the temporary liner consists essentially of a polymer
film of less than 0.025 mm in thickness.
18. An apparatus for enabling a linered label applicator to accept linerless label sheet for
application to the surface of elements comprising a cutter to provide a source of border cut sheet
linerless label, a source of the cut linerless labels on a roll of temporary liner sheet added to the
cut linerless label, the sheet consisting essentially of a sheet of less than 0.032mm in thickness, a
feeder for feeding the cut linerless label on a roll of a temporary liner sheet to the linered label
applicator, the linerless label having a border for a label, the border having a linear distance
defined by a micro-bridged cut along the border so that a composite of a) and b), wherein a) and
b) are defined below as:
a) said temporary liner sheet and
b) micro-bridged linerless labels
is provided to a feeder for feeding the composite into said linered label applicator, and
a stripping system to remove label from matrix by severing microbridges, and an applicator
system for applying stripped label to a substrate.
20. The apparatus of claim 19 wherein the linerless label is provided as printed label
prior to being supplied to the cutter.
The references relied on by the examiner are:
Evans 3,565,750 Feb. 23, 1971
Koehlinger et al. (Koehlinger) 3,920,122 Nov. 18, 1975
Boreali 5,573,621 Nov. 12, 1996
Nedblake 6,592,693 Jul. 15, 2003

2 We have reproduced these claims as they are presented in the amendment filed July 2, 2004.
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Majkrzak et al. (Majkrzak) WO 00/07883 Feb. 17, 2000
(published World Intellectual Property Organization Application)
Schumann et al. (Schumann)3 WO 00/30963 Jun. 2, 2000
(published World Intellectual Property Organization Application)

“Controlling costs challenge label stock, liner suppliers,” Paper, Film & Foil Converter (January
1, 1995) (PFFC).
The examiner has rejected appealed claims 1 through 4, 7 through 10 and 18 under
35 U.S.C. § 103(a) as being unpatentable over Majkrzak in view of Schumann, Koehlinger and
Boreali, further in view of Evans and PFFC (answer, pages 4-7), and appealed claims 6, 19 and
20 under 35 U.S.C. § 103(a) as being unpatentable over Majkrzak in view of Schumann,
Koehlinger and Boreali, further in view of Evans and PFFC, and further in view of Nedblake
(answer, page 8).
Appellants state that “[c]laims 1-4, 7-10 and 18 shall stand or fall with the patentability
of claim 1” and “[c]laims 6, 19 and 20 shall stand or fall with the patentability of claim 6,” and
argues claim 20 with respect to the latter group, based on the grounds of rejection (brief, pages
10 and 18-19). Thus, we decide this appeal based on appealed claims 1, 6 and 20. 37 CFR
§ 1.192(c)(7) (2003); see also 37 CFR § 41.37(c)(1)(vii) (September 2004).
We affirm.
Rather than reiterate the respective positions advanced by the examiner and appellants,
we refer to the answer and to the brief for a complete exposition thereof.
Opinion
We have carefully reviewed the record on this appeal and based thereon find ourselves in
agreement with the supported position advanced by the examiner that, prima facie, the claimed
method of and apparatus for enabling a linered label applicator to accept linerless label sheet for
application to the surface of elements would have been obvious over the combined teachings of
Majkrzak, Schumann, Koehlinger, Boreali, Evans and PFFC with respect to claim 1 and the
combined teachings of Majkrzak, Schumann, Koehlinger, Boreali, Evans, PFFC and Nedblake

3 The examiner has relied on United States Patent 6,571,983, issued June 3, 2003, to Schumann
et al. (Schumann ‘983) as a translation of Schumann because the same are “equivalent” (answer,
page 5; see also office action mailed October 1, 2003 (page 7) and the Office action mailed
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with respect to claims 6 and 20 to one of ordinary skill in this art at the time the claimed
invention was made. Accordingly, since a prima facie case of obviousness has been established
by the examiner, we again evaluate all of the evidence of obviousness and nonobviousness based
on the record as a whole, giving due consideration to the weight of appellants’ arguments in the
brief and the testimonial evidence in the Pace declaration4 to the extent that it is relied on in the
brief. See generally, In re Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir.
1992); In re Piasecki, 745 F.2d 1468, 1472, 223 USPQ 785, 788 (Fed. Cir. 1984).
The examiner finds, and we agree, that Majkrzak would have disclosed to one of ordinary
skill in this art a method of applying linerless labels to a substrate through a linered label
applicator by feeding a composite of a linerless label, precut, that is, die-cut, from a sheet
consisting essentially of a linerless label, associated with a roll of temporary liner sheet into the
linered label applicator where the linered label is normally directed into said linered label
applicator, thus differing from the claimed method encompassed by appealed independent claim
1 in not teaching that (1) the label is micro-bridge cut along a border thereof with the sheet, and
(2) the temporary liner sheet consisting essentially of a sheet of less than 0.032 mm, that is, less
than 1.259 mil, and from the claimed method encompassed by appealed claim 6, dependent on
claim 1, in not teaching that the temporary liner consists essentially of a polymer film of less
than 0.025 mm, that is, less than 0.984 mil (answer, e.g., pages 5-6, 8 and 9-10).
The examiner finds with respect to the first issue involving appealed claim 1, that
Schumann would have taught that a “bridge” along the border of a label in a flat form web
matrix, should be punched or cut such that at least one “bridge,” depending on the material,
connects the label to the flat form web with sufficient support to enable the controlled transport
or association of the label to a temporary web (answer, page 5; see Schumann ‘983, e.g., col. 1,
ll. 4-9 and 37-47, col. 2, ll. 21-27, 30-35 and 47-60, col. 2, l. 61, to col. 3, l. 43, and col. 4,
ll. 2-25). The examiner further finds that, in similar manner, Koehlinger would have disclosed

March 30, 2004 (page 5)), which finding is not disputed by appellants. We refer to Schumann
‘983 in our opinion.
4 The Declaration of Mr. Raymond Pace, executed June 30, 2004, was submitted with the
amendment filed July 2, 2004, and entered and considered by the examiner in the advisory action
mailed July 19, 2004.
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that the number and size of the “bridges” employed is dependent on the label web material
(answer, page 5; see Koehlinger, e.g., col. 1, ll. 4-10, col. 2, ll. 3-7, col. 5, ll. 52-55, and col. 6,
ll. 8-32), and that Boreali would have disclosed that linerless labels are pre-cut with “ties,” that
is, “bridges,” from the matrix to provide support for processing (answer, page 5; see Boreali,
e.g., col. 1, ll. 8-58, col. 2, ll. 10-18, and col. 3, ll. 62-66).
On this factual basis, the examiner determines that one of ordinary skill in the art would
have been led by Schumann, Koehlinger and Boreali to use micro-bridged cut linerless labels in
the method of Majkrzak in the reasonable expectation of avoiding problems of associating labels
from a web to temporary liners (answer, pages 6-7).
The examiner finds with respect to the second issue involving appealed claim 1, that
Evans would have taught that “polyolefin film-based low-release liner for temporarily
supporting and covering pressure sensitive adhesive carried by a sheet or other article can have
thickness of 1-4 mils,” that is, 0.0254 mm to 0.1016 mm, and “can be laminated to label stock”
(answer, pages 6 and 12; see Evans, e.g., col. 1, ll. 18-22 and 29-35, col. 2, l. 71, to col. 3, l. 6,
and col. 5, ll. 64-71). The examiner further finds that PFFC reports that “one of the biggest
trends in labels and liners is the use of thinner substrates” with the thickness of “1 and 1½ mil,”
that is, 0.0254 mm to 0.0381 mm, for cost reduction and environmental needs (answer, page
6; see PFFC, pages 1-2).
On this factual basis, the examiner determines that one of ordinary skill in the art would
have been led by Evans and PFFC to use thin support liners of a polymer film having a thickness
as low as 1 mil, that is, 0.0254 mm, as the liner sheet in the method of Majkrzak in the
reasonable expectation of providing temporary support and covering pressure sensitive adhesives
carried by a liner sheet for labels to reduce costs and satisfy environmental needs (answer, page
7).
The examiner finds with respect to the issue involving appealed claim 6, that in addition
to Evans and PFFC, Nedblake would have taught that a label bearing liner can be “low cost,
lightweight . . . as opposed to heavier webs,” that is, the liner webs can be “on the order of
0.75 mil (0.019 mm) . . . as compared to conventional liner webs of thickness of 2-3 mils,” that
is, 0.0508 mm to 0.07620 mm (answer, page 8; see Nedblake, e.g., col. 1. ll. 7-24, col. 2,
ll. 3-18 and 53-60, col. 3, ll. 46-52, col. 3, l. 66, to col. 4, l. 11, and col. 4, ll. 21-38). On this
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factual basis, the examiner determines that one of ordinary skill in the art would have been led
by Evans, PFFC and Nedblake to use thin support liners of a polymer film having a thickness as
low as 0.75 mil, that is, 0.019 mm, as the liner sheet in the method of Majkrzak in the reasonable
expectation of providing a low cost, lightweight liner instead of heavier stock for material cost
savings (answer, page 8).
Appellants point out that “the linerless label is cut and separated from the matrix” in the
method of Majkrzak, and there is no suggestion in the combined teachings of the references
applied to appealed claim 1 that a micro-bridged cut border “would enable the high speed
application of linerless label stock with an ultrathin liner in a commercial process” (brief, pages
12-13). Appellants submit that in an “automated apparatus, it is essential that surfaces and
combinations of layers provide uniform thicknesses and the absence of wrinkles . . . [which]
capability has never been before provided on linerless label stock with ultrathin liners,” arguing
that “the liner is so thin, it is highly flexible, subject to wrinkling, and does not provide physical
support to the label” as well as being “substantially weaker than industry standard liners and tend
to break on standard label applicators when used with traditional cutting means” (id., pages
13-14). In this respect, appellants contend that Schumann and Koehlinger “used individual
‘thin’ layers by combining multiple layers (e.g., the stiffening layers and then adhesively
securing the stiffened polymer layers) to provide a label material that could be used,” and thus,
there is “[n]o recognition of the use of thin liner material” in the references (id., page 14).
Appellants argue that the liners of “the references in this rejection” are not encompassed by
appealed claim 1 because of the language “a roll of temporary liner sheet consisting essentially
of a sheet of less than 0.032mm in thickness” which “excludes the artificial use of ‘thin’ layers
by adding other layers thereto” (id.; original emphasis deleted).
Appellants submit argument stated to be based on a particular quoted passage in
Schumann with respect to “Figure 7 on pages 5 and 6 of the reference” (brief, page 14). The
quoted passage appears to be a translation of all but the last sentence of the first full paragraph
on page 7 of Schumann. We cannot find in the record a translation which corresponds to that
quoted by appellants. In this respect, we will consider appellants’ arguments as if they were
based on the corresponding disclosure in Schumann ‘983, at col. 4, ll. 14-25, and the description
of Schumann Fig. 7 as described at Schumann ‘983, col. 5, ll. 32-45. We note again here that the
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examiner has relied on Schumann ‘193 as a translation in the Office actions and the answer,
which position is not disputed by appellants (see above note 3).
Appellants contend that “problems arise in the use of liners and particularly thin liners as
[claimed] . . . in the cutting of labels,” pointing out that Majkrzak “cuts the label from the
supporting matrix and removes the label from the matrix before applying it to a liner” and
Schumann “cuts the label while it is on the temporary carrier” (brief, page 14). Appellants
further contend with respect to the cited portion of Schumann and Schumann Fig. 7, that “[t]he
problem attempted to be addressed by this disclosure is the inability to precisely control the
thickness of the cut so that it would pass completely through the label layer (and not leave partial
cuts between the bridges), yet not cut the liner layer” such that “any cutting contact would
damage a significant portion of the thickness of . . . [a thin] liner, and almost any significant
contact with the cutter would shift or wrinkle the thin liner . . . [which] would tear the release
liner, causing adhesive to ooze through the back of the adjacent substrate in a wound up roll”
(id., pages 14-15).
Appellants submit that PFFC5 “is the classic reference cited for a technical wish or
objective, without any disclosure that enables attainment of that objective, recognizing the
difficulties and problems in obtaining that objective” (id., pages 15-16). Appellants argue that
this reference is non-enabling, pointing out that “one of the ‘objectives’” of the claimed
invention is “a thinner liner,” contending that “[i]t was found that any attempt to use a thinner
liner suffered from the immediate effects of wrinkling and partial separation of the liner from the
label” and “[t]here is no suggestion in the art that the use of microbridging with thin liners in a
system with precutting of the liner and subsequent application to linerless label . . . would
overcome these problems” (id., pages 16-17; original emphasis deleted). Appellants additionally
contend that “the precutting of the label allows its application to an ultrathin label that is of
lower cost than normal label liner” (id., pages 17-18).
Appellants further contend that the teachings of thinner liners in Nedblake “is not done
with linerless label (and no reason is provided for using linerless label) and is not done with
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microbridge cutting,” pointing out that the reference is “limited to laser cutting as an enabling
cutting step, and does not teach microbridging” (id., pages 19).
Finally, appellants contend that the Pace declaration “provides evidence that one with
executive knowledge in the art is unaware of any products that provide thin (less than 0.5 mil)
liners with any label products and particularly not with linerless label products,” and that
“declarant recognizes the technical difficulties in providing such thin liners on labels and
indicates his belief that only through the combination of steps” in the claimed process are
“quality thin (less than or equal to 0.05 mils) liners . . . applied to labels” (brief, page 19).
The examiner responds that, with respect to appellants’ argument that Majkrzak “does
not teach border cutting before association with a liner,” the reference would have taught one of
ordinary skill in this art to “partially sever individual labels on a continuous sheet (i.e., linerless
stock” and then “apply the continuous sheet with its partially severed labels to a temporary,
reusable support (i.e., liner),” citing page 11, ll. 1-7, and page 11, l. 30, to page 12, l. 4, but “does
not . . . mention using microbridges” (answer, page 10). The examiner argues that Schumann
would have taught that a partially severed, “bridged” border cut holds the label within the sheet
until it is dispensed, thus avoiding dispensing problems during label application, and that this
reference along with Koehlinger teach that partially severed labels in a continuous web (answer,
pages 10-11).
The examiner further argues that “Evans and [PFFC] would have suggested the use of “a
liner of thickness within the range of less than 0.032 mm (1.26 mil), as claimed” (answer, page
12). In this respect, the examiner argues that one of ordinary skill in the art would have used a
polymer film “liner as thin as 1 mil (0.025 mm)” taught by the combination of Evans and PFFC
as a release liner with the motivation to reduce costs as taught by PFFC, which thickness falls
within appealed claim 1 (answer, pages 12-13). The examiner further argues that Nedblake
clearly would have suggested the use of a “liner as thin as 0.75 mil (0.019 mm)” for material
savings compared to thicker conventional liners, and uses a laser to cut the label while it is
separated from the liner, the thickness of the thinnest liner disclosed by the reference falling

5 Appellants argue the “AWA article” they identify as a “new” reference cited in the final Office
action (brief, page 15). It is clear from appellants’ argument and the record that PFFC is that
“article.”
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within appealed claim 6 (answer, pages 13-14). The examiner finds that the Pace declaration is
insufficient because “liners as thin or thinner than 0.5 mils (0.0127 mm)” is more than twice as
thin as the range of “less than 0.032 mm (1.2 mils) specified in appealed claim 1 (answer, pages
14-15).
We find substantial evidence on this record supporting the examiner’s position. As an
initial matter, we interpret the term “micro-bridged cut” and the terms in the limitations
“temporary liner sheet consisting essentially of a sheet of less than 0.032mm in thickness” and
“temporary liner consists essentially of a polymer film of less than 0.025 mm in thickness,”
appearing in appealed claims 1 and 6, respectively, involved with the issues before us. We give
this claim language the broadest reasonable interpretation in their ordinary usage as they would
be understood by one of ordinary skill in the art in light of the written description in the
specification, unless another meaning is intended by appellants as established in the written
description of the specification, and without reading into the claims any limitation or particular
embodiment disclosed in the specification. See, e.g., In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d
1359, 1364, 70 USPQ2d 1827, 1830 (Fed. Cir. 2004); In re Morris, 127 F.3d 1048, 1054-55,
44 USPQ2d 1023, 1027 (Fed. Cir. 1997); In re Zletz, 893 F.2d 319, 321-22, 13 USPQ2d 1320,
1322 (Fed. Cir. 1989).
We find that the term “micro-bridged cut” as it is used in context in appealed claim 1 and
in the specification, means that the border of the label is partially severed from the sheet or web,
that is, one or more uncut sections or “bridges” still attach(es) the border of the label to the sheet
or web (e.g., page 11, l. 1, to page 12, l. 6). Indeed, we fail to find in the specification a specific
definition of this term with respect to the amount of “the periphery of the intended outline or
border of the label . . . left uncut” or the “absolute dimensions of the bridges,” and will not read
into the appealed claims any illustrative embodiment or preferred ranges (e.g., page 11,
ll. 18-28).
With respect to the subject claim limitations, appellants contend that this language
“excludes the artificial use of ‘thin’ layers by adding other layers thereto” (see above p. 6). We
cannot agree. The term “consisting essentially of” is used in claim construction to indicate that
“the invention necessarily includes the listed ingredients and is open to unlisted ingredients that
do not materially affect the basic and novel properties of the invention.” PPG Indus., Inc. v.
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Guardian Indus. Corp., 156 F.3d 1351, 1354, 48 USPQ2d 1351, 1353-54 (Fed. Cir. 1998).
Thus, the interpretation of this term requires a determination of whether additional layers in
liners taught in the applied prior art would materially affect the basic and novel characteristics of
the claimed method of appealed claim 1, because this phrase customarily excludes such
materials. See In re Herz, 537 F.2d 549, 551, 190 USPQ 461, 463 (CCPA 1976) (explaining
Ex parte Davis, 80 USPQ 448 (Pat. Off. Bd. App. 1948)). In arriving at this determination, the
written description in appellants’ specification must be considered. Herz; supra (“[I]t is
necessary and proper to determine whether [the] specification reasonably supports a
construction” that would exclude or include particular ingredients.); see also PPG Indus.,
156 F.3d at 1354-57, 48 USPQ2d at 1353-56 (Patentees “could have defined the scope of the
phrase ‘consisting essentially of’ for purposes of its patent by making clear in its specification
what it regarded as constituting a material change in the basic and novel characteristics of the
invention. The question for our decision is whether PPG did so.”).
Our review of the written description in the specification reveals that the liner can be
“less than or equal to 1.25 miles (less than 0.032 mm)” and “may be any polymeric or even thin
paper layer,” wherein “[r]elease layers, controlled release layers, and the like such as silicone
resins, acrylate resins, epoxy resins, and mixed resin functionalities can be used as extremely
thin coatings on the liner to control these properties as can corona discharge, sputtering,
oxidation, laser discharge, or chemical reaction of the surface” (page 9, ll. 17-18, and page 9, l.
29, to page 10, l. 8). Thus, contrary to appellants’ arguments, the liners having the thickness
specified in claims 1 and 6 can have additional “coatings” thereon which would provide
functionality and additional thickness, the construct not excluded from the claims by use of the
transitional term “consisting essentially of.” See PPG Indus., supra; Herz, supra.
We find, as did the examiner and contrary to appellants’ arguments, that Majkrzak would
have disclosed that “[a]mong the more useful methods of constructing . . . prerolled linerless
labels” are several which include the step of “partially severing individual labels on the
continuous sheet,” the composite of partially severed linerless labels on a “temporary, reusable
support material” can “then be fed into a conventional label applicator” (page 11, ll. 1-2, 4, 9-10,
and 16-17, and page 11, l. 30, to page 12, l. 4). Schumann would have disclosed that the
formation of bridges from flat form, web-like label stock, which can have two layers, can be
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accomplished by “cutting” the stock with, for example, lifting punches, rotary cutting rollers and
laser beams, wherein the cutting edge of cutting devices, other than laser beams, has “one or
more interruptions, for example, notches” which can be controlled to obtain the desired pattern
for controlling dispensing of the label (Schumann ‘983, e.g., col. 1, 32-56, col. 2, ll. 21-60, col.
2, l. 61, to col. 3, l. 38, col. 3, l. 57, to col. 4, l. 25, and col. 5, ll. 31-45, describing FIG. 7).
Thus, the reference establishes a method wherein only the label layer is cut and then only
partially severed. We fail to find in the passage of Schumann relied on by appellants the
“problem” of the “inability to precisely control the thickness of the cut” as they argue (see above
p. 7). This is because Schumann would have taught in this entire passage how the problem,
which occurs “in rare cases,” can be overcome by the design of the “cutting edge” (Schumann
‘983, e.g., col. 4, ll. 23-25). Thus, Schumann contains no teaching which would have led one
of ordinary skill in the art away from using the “punch” cutting means as implied by appellants’
argument. Indeed, even if this was so, Schumann still would have taught the use of laser beams
for the same purpose.
Furthermore, we agree with appellants that Schumann would have disclosed “multiple
layers” (see above p. 6) because the flat form label stock that can be used in the methods of this
reference has at least two layers. However, we cannot agree with appellants that Koehlinger
discloses “multiple layers” because appellants have not cited to the reference in support of their
finding and we fail to find such a construct in the references. We find that Koehlinger would
have taught at col. 4, l. 6 et seq., that a web of label stock is printed on one surface before or
after it is cut to form bridge(s), and thereafter an adhesive is applied to the other surface, thus
disclosing a single layer label web sheet.
In any event, appellants do not argue the teachings of Boreali which we find would have
disclosed the use of “ties” or bridges in cut linerless label stock, thus alone establishing that one
of ordinary skill in this art would have micro-bridge cut linerless label stock.
Thus, we find that the examiner correctly determines that one of ordinary skill in this art
would have used the methods of the combined teachings of Schumann, Koehlinger and Boreali
to partially sever the individual labels in the continuous linerless label sheet in the method of
Majkrzak. See In re Keller, 642 F.2d 413, 425, 208 USPQ 871, 881 (CCPA 1981)(“The test for
obviousness is not whether the features of a secondary reference may be bodily incorporated into
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the structure of the primary reference; nor is it that the claimed invention must be expressly
suggested in any one or all of the references. Rather, the test is what the combined teachings of
the references would have suggested to those of ordinary skill in the art.”); In re Siebentritt, 372
F.2d 566, 567-68, 152 USPQ 618, 619 (CCPA 1967) (express suggestion to interchange methods
which achieve the same or similar results is not necessary to establish obviousness).
With respect to the matter of the thickness of the temporary liner sheet encompassed by
appealed claim 1, the examiner relies on the combined teachings of Evans and PFFC in this
respect. We are unconvinced by appellants’ arguments which focus only on PFFC, contending
that this reference merely suggests a non-enabled desideratum in the label and liner arts, and that
the use of a thin liner overcomes certain problems. PFFC would have disclosed that in addition
to the trend in the art to achieve reduced costs noted by several sources as reported in this
reference, according to one source, polypropylene liners were being used which can be silicone-
coated, wherein the polypropylene can be as thin as 1.5 mil, that is, 0.0381 mm (page 2). In this
respect, we find that Evans would have disclosed pressure sensitive adhesive sheet material
which is “a smooth thin planar-rigid polyolefin film having an inseparably-bonded cured
silicone-polymer coating” which can be as thin as 1 mil, as the examiner finds, wherein the
polyolefin base layer can be a polypropylene and can be used as a liner for pressure sensitive
transfer tape that can be laminated to label stock (col. 1., ll. 15-18 and 29-35, col. 2, l. 71, to col.
3, l. 15, and col. 5, ll. 68-71). The examiner finds that this combination of references would have
suggested a liner for labels of a thickness of 1 mil falling within appealed claim 1. Indeed, in the
absence of argument based on the combined teachings of PFFC and Evans, and appellants do
not present any argument with respect to Evans, cf. Keller, 642 F.2d at 426, 208 USPQ at 882
(arguments must be addressed to the combination of references rather than the references
individually), we find that one of ordinary skill in this art would have found an enabling
disclosure in Evans for the thin silicone-coated polypropylene liners described in PFFC, such
liners having a thickness of 1 mil, that is, 0.0254 mm, and thus falling within appealed claim 1.
Appellants do not dispute that Nedblake teaches liners as thin as 0.75 mil, that is,
0.019 mm falling within appealed claim 6. We are not convinced by appellants’ arguments that
Nedblake is inapplicable because it would not have taught using the liners with linerless labels
which have been micro-bridge cut during the laser cutting step disclosed therein. Indeed, we
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Application 10/000,254
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find that Nedblake would have disclosed a process using “preprinted continuous label-bearing
webs using laser cutting techniques . . . employing low-cost, lightweight liners as opposed to the
relatively thick and more costly liners conventionally used[,] . . . wherein a preprinted label
bearing web is separated from its liner, laser cut . . . to generate individual cut labels, whereupon
the individual labels are reapplied either to the original liner or a secondary liner web” (col. 1,
ll. 7-24; see also col., 2, ll. 3-18 and 53-60). Nedblake further would have disclosed that the
“low-cost, very thin liner web 24” can be either the original liner or the secondary liner, either
liner having the thickness of 0.75 mil, that is, 0.019 mm, with which the process using a laser
“allows run speeds of 500 ft/min. or more” (e.g., col. 3, ll. 46-52, and col. 3, l. 66, to col. 4,
l. 38). Thus, as the examiner finds, Nedblake uses a laser to cut the label from the web while it
is in fact linerless, which is then combined with a temporary thin liner that is either the original
thin liner or a secondary thin liner to form a composite.
In view of the teachings of bridge cuts in the label layer in Schumann, which teaches
punch cutters and lasers, and the teachings of bridge cuts in linerless labels in Koehlinger and
Boreali, we find that the examiner has properly determined that one of ordinary skill in this art
would have used the methods of the combined teachings of Schumann, Koehlinger and Boreali
with the thin liners of the combined teachings of PFFC and Evans with respect to claim 1, and
with the thin liners of the combined teachings of PFFC, Evans and Nedblake with respect to
appealed claim 6, in the reasonable expectation of providing a composite of micro-bridged
linerless labels and thin temporary liner sheet that can be used in the method of Majkrzak.
We are not persuaded otherwise by appellants’ arguments based on the alleged problems
associated with micro-bridge cutting linerless labels and combining the same with temporary
liner sheet having the claimed thicknesses. We find no objective evidence in the record,
including the testimonial evidence in the Pace declaration, which supports appellants’ arguments
in these respects, and appellants do not cite to such evidence other than the Pace declaration.
Indeed, the Pace declaration sets forth no objective evidence in support of declarant Pace’s “best
professional belief” based on “liners as thin as or thinner than 0.5 mils,” that is, 0.0127 (¶¶ 6-8),
which, as the examiner finds, is twice as thin as the upper end of the ranges in appealed claims
1 and 6, and indeed, does not reflect the teachings of the references in which the liners can be as
thin as 0.75 mils, that is, 0.019 mm. See In re De Blauwe, 736 F.2d 699, 705, 222 USPQ 191,
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196 (Fed. Cir. 1984); In re Payne, 606 F.2d 303, 315, 203 USPQ 245, 256 (CCPA 1979); In re
Lindner, 457 F.2d 506, 508, 173 USPQ 356, 358 (CCPA 1972) (“This court has said . . . that
mere lawyers’ arguments unsupported by factual evidence are insufficient to establish
unexpected results. [Citations omitted.] Likewise, mere conclusory statements in the
specification and affidavits are entitled to little weight when the Patent Office questions the
efficacy of those statements. [Citations omitted]”); see also In re Baxter Travenol Labs.,
952 F.2d 388, 392, 21 USPQ2d 1281, 1285 (Fed. Cir. 1991) (“[W]hen unexpected results are
used as evidence of nonobviousness, the results must be shown to be unexpected compared to
the closest prior art. [Citation omitted.]”); In re Burckel, 592 F.2d 1175, 1179, 201 USPQ 67,
71 (CCPA 1979) (the claimed subject matter must be compared with the closest prior art in a
manner which addresses the thrust of the rejection); cf. In re Woodruff, 919 F.2d 1575, 1577-78,
16 USPQ2d 1934, 1936-37 (Fed. Cir. 1990) (“The law is replete with cases in which the
difference between the claimed invention and the prior art is some range or other variable within
the claims. [Citations omitted.] These cases have consistently held that in such a situation, the
applicant must show that the particular range is critical, generally by showing that the claimed
range achieves unexpected results relative to the prior art range. [Citations omitted.]”).
Furthermore, appellants do not contest the teachings of Majkrzak with respect to the
claimed apparatus encompassed by appealed independent claim 18, but argue appealed claim 20,
dependent thereon, which requires that “the linerless label is provided as printed label prior to
being supplied to the cutter,” thus further limiting claim 18 which specifies “[a]n apparatus . . .
comprising” at least, among other limitations, “a source of the cut linerless labels on a roll of
temporary sheet.” We determine that claims 18 and 20 encompass apparatus that includes the
materials on which the claimed apparatus is intended to work, and thus, the materials, such as the
printed linerless labels of claim 20, do not constitute any structural limitation which patentably
distinguishes the claims from the applied prior art. See generally, In re Otto, 312 F.2d 937,
939-40, 136 USPQ 458, 459-60 (CCPA 1963) In re Young, 75 F.2d 996, 25 USPQ 69 (CCPA
1935); In re Rishoi, 197 F.2d 342, 344-45, 9 USPQ 71, 72-73 (CCPA 1935); cf. Ex parte
Masham, 2 USPQ2d 1647, 1648 (Bd. Pat. App. & Int. 1987).
Accordingly, on this record, we determine that one of ordinary skill in the art routinely
following the combined teachings of Majkrzak, Schumann, Koehlinger, Boreali, Evans and
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Application 10/000,254
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PFFC and the combined teachings of Majkrzak, Schumann, Koehlinger, Boreali, Evans, PFFC
and Nedblake would have arrived at the claimed method of and apparatus for enabling a linered
label applicator to accept linerless label sheet for application to the surface of elements
encompassed by appealed claims 1, 6 and 20, respectively, including each and every limitation
thereof arranged as required therein, without recourse to appellants’ disclosure. See In re
Gorman, 933 F.2d 982, 986-87, 18 USPQ2d 1885, 1888-89 (Fed. Cir. 1991) (“The extent to
which such suggestion [to select elements of various teachings in order to form the claimed
invention] must be explicit in, or may be fairly inferred from, the references, is decided on the
facts of each case, in light of the prior art and its relationship to the applicant’s invention.”); In
re Dow Chem. Co., 837 F.2d 469, 473, 5 USPQ2d 1529, 1531 (Fed. Cir. 1988) (“The consistent
criterion for determination of obviousness is whether the prior art would have suggested to one
of ordinary skill in the art that [the claimed] process should be carried out and would have a
reasonable likelihood of success, viewed in light of the prior art. [Citations omitted] Both the
suggestion and the expectation of success must be founded in the prior art, not in the applicant’s
disclosure.”); Keller, 642 F.2d at 425, 208 USPQ at 881; Siebentritt, 372 F.2d 566, 567-68,
152 USPQ 618, 619; see also In re O’Farrell, 853 F.2d 894, 903-04, 7 USPQ2d 1673, 1680-81
(Fed. Cir. 1988) (“Obviousness does not require absolute predictability of success. . . . There is
always at least a possibility of unexpected results, that would then provide an objective basis for
showing the invention, although apparently obvious, was in law nonobvious. [Citations omitted.]
For obviousness under § 103, all that is required is a reasonable expectation of success.
[Citations omitted.]”).
Accordingly, based on our consideration of the totality of the record before us, we have
weighed the evidence of obviousness found in the combined teachings of Majkrzak, Schumann,
Koehlinger, Boreali, Evans and PFFC and the combined teachings of Majkrzak, Schumann,
Koehlinger, Boreali, Evans, PFFC and Nedblake with appellants’ countervailing evidence of and
argument for nonobviousness and conclude that the claimed invention encompassed by appealed
claims 1 through 4, 6 through 10 and 18 through 20 would have been obvious as a matter of law
under 35 U.S.C. § 103(a).
Appeal No. 2005-2131
Application 10/000,254
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The examiner’s decision is affirmed.
No time period for taking any subsequent action in connection with this appeal may be
extended under 37 CFR § 1.136(a)(1)(iv) (2005).
AFFIRMED

BRADLEY R. GARRIS )
Administrative Patent Judge )
)
)
)
CHARLES F. WARREN ) BOARD OF PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
THOMAS A. WALTZ )
Administrative Patent Judge )

Appeal No. 2005-2131
Application 10/000,254
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