Ex Parte Hill

Patent Trial and Appeal Board

Jul 24, 2017

12536888 (P.T.A.B. Jul. 24, 2017)

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.
12/536,888 08/06/2009 Dean Hill 200007-01095-1 4241
3705 7590 07/26/2017
ECKERT SEAMANS CHERIN & MELLOTT, LLC
600 GRANT STREET
44TH FLOOR
PITTSBURGH, PA 15219
EXAMINER
POWERS, LAURA C
ART UNIT PAPER NUMBER
1785
NOTIFICATION DATE DELIVERY MODE
07/26/2017 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
ipmail @ eckertseamans. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DEAN HILL1
Appeal 2017-000709
Application 12/536,888
Technology Center 1700
Before JAMES C. HOUSEL, AVELYN M. ROSS, and
SHELDON M. MCGEE, Administrative Patent Judges.
ROSS, Administrative Patent Judge.
DECISION ON APPEAL2
Appellant appeals under 35 U.S.C. § 134(a) from a final rejection of
claims 1, 2, 5—13, and 25—27. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 Appellant identifies the real party in interest as OPSEC Security Group,
Inc. Appeal Br. 2.
2 In our Decision we refer to the Specification (“Spec.”) filed August 6,
2009, the Final Office Action (“Final Act.”) dated June 30, 2015, the Appeal
Brief (“Appeal Br.”) filed March 10, 2016, and the Examiner’s Answer
(“Ans.”) dated August 4, 2016.
Appeal 2017-000709
Application 12/536,888
STATEMENT OF THE CASE
The subject matter on appeal relates to a multi-layer “garment tag that
includes a fabric base stock that can be quickly and easily sewn into
garments, and a face stock of another material with properties suitable for
the application of detectable features such as high-resolution printing and
optically variable devices.” Spec. 111. Claim 1, reproduced below, is
illustrative of the claimed subject matter:
1. A small sheet-like item comprising:
a substrate comprising a fabric or woven material;
a smooth, pliable, non-adhesive coating disposed on a
surface of the substrate;
an adhesive disposed on the smooth, pliable, non-adhesive
coating; and
a face stock disposed on the adhesive.
Appeal Br. 9 (Claims App’x).
REJECTIONS
The Examiner maintains the following rejections:
A. Claims 1 and 11 stand rejected under 35 U.S.C. §112 first
paragraph as failing to comply with the written description
requirement. Final Act. 2.
B. Claims 1, 2, 5—9, and 11—12 stand rejected under 35
U.S.C. § 103(a) as unpatentable over Holat3 in view of
O’Keefe.4 Id. at 5.
3 Barry Holat, US 5,945,201, issued August 31, 1999 (“Holat”).
4 O’Keefe et al., US 2009/0246391 Al, published October 1, 2009
(“O’Keefe”).
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Application 12/536,888
C. Claims 10 and 13 stand rejected under 35 U.S.C. § 103(a)
as unpatentable over Holat in view of O’Keefe and further
in view of Bonkowski.5 Id. at 9.
D. Claims 25 and 26 stand rejected under 35 U.S.C. §103(a)
as unpatentable over Holat, in view of O’Keefe and further
in view of Euse.6 Id. at 10.
E. Claim 27 stands rejected under 35 U.S.C. § 103(a) as
unpatentable over Holat in view of O’Keefe and Euse and
further in view of Bonkowski. Id. at 11.
Appellant seeks our review of rejections A—E, but focuses their
discussion on independent claims 1 and 11 (Rejections A and B). See
generally Appeal Br. But, Appellant does not present any argument for
independent claim 11 or dependent claims 2, 5—10, 12—13 and 25—27
separate from what is argued for independent claim 1. Id. at 6—7. We
therefore focus our discussion below on claim 1 (Rejections A and B) to
resolve the issues on appeal.
OPINION
Rejection A — Written Description (claims 1 and 11)
The Examiner rejects claim 1 (and claim 11) for failing to comply
with the written description requirement of 35 U.S.C. §112, first paragraph.
Final Act. 2. In particular, the Examiner finds that claim 1 requires a
smooth, pliable, non-adhesive coating (or urethane coating in the case of
claim 11) disposed on the surface of the substrate but, “the present
5 Bonkowski et al., WO 01/03945 Al, published January 18, 2001
(“Bonkowski”).
6 Karen L. Euse, US 2008/0163973 Al, published July 10, 2008 (“Euse”).
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Application 12/536,888
specification does not describe the coating as exclusively being non­
adhesive as recited in claims 1 and 11.” Id. at 3. The Examiner further finds
that the Specification explains that the “composition of the coating is not
critical, and therefore, there is no suggestion to limit these coatings to being
non-adhesive as recited in the claims, as long as the materials for the
coatings are capable of providing an adequate bonding surface and strength
to receive the adhesive layer.” Final Act. 4.
Appellant argues that “the narrowing term ‘non-adhesive’ was not
deemed necessary in describing ‘coating’ as the term ‘adhesive’ was
employed to describe all elements which were intended to actually be an
adhesive, while the term ‘coating’ was employed to describe elements which
are simply coatings, and thus ‘not’ adhesives.” Appeal Br. 4. Appellants
rely upon the example coatings identified in the Specification and explain
that “urethane-based coatings, as well as generic acrylic- and styrene-based
latex coatings,. . . are all examples of coatings which are not adhesives
and thus may be termed as ‘non-adhesive.’” Id. Furthermore, Appellants
urge that the non-adhesive coating is characterized as smooth, and “one of
ordinary skill in the art would not look to apply an adhesive as the coating if
the object was to ‘present a smooth surface for the bonding of pressure
sensitive adhesives.’” Id.
We are not persuaded by the Examiner’s rationale. The test for
sufficiency of a written description is whether the disclosure “‘clearly
allow[s] persons of ordinary skill in the art to recognize that [the inventor]
invented what is claimed.’” AriadPharms., Inc. v. Eli Lilly & Co., 598 F.3d
1336, 1351 (Fed.Cir.2010) (enbanc) (quoting Vas-Cath Inc. v. Mahurkar,
935 F.2d 1555, 1562—63 (Fed.Cir.1991)). The Examiner’s finding (Ans. 12—
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Application 12/536,888
13) that “the composition of the coating is not critical” and there is nothing
within the Specification that would limit the coatings to be non-adhesive is
incomplete and fails to consider other characteristics of the coating. The
Specification describes “[t]he purpose of the coating 120 is to present a
smooth surface for printing and the adhesion of a polymer film 140.” Spec.
126 (emphasis added); see also id. 14 (“The coating imparts some
directional stability and provides a smoother printing surface.”) and 127
(“the coating is used ... to provide a smooth surface for the permanent
bonding of pressure sensitive adhesives.”). And, Appellant notes (Appeal
Br. 4) that the skilled artisan desiring a smooth surface would not look to an
adhesive coating to provide a smooth surface. While it is true that negative
limitations recited in claims, which do not appear in the Specification as
filed, violate the written description requirement if the limitations “introduce
new concepts.” Ex parte Grasselli, 231 USPQ 393, 394 (Bd. App. 1983),
aff’d mem., 738 F.2d 453 (Fed. Cir. 1984). An adequate written description
“does not require literal support for the claimed invention.” Ex parte Parks,
30 USPQ2d 1234, 1236 (BPAI 1993). As such, “a lack of literal support
does not, in and of itself, establish a prima facie case for lack of adequate
descriptive support ....” Id. “Rather, it is sufficient if the originally-filed
disclosure would have conveyed to one having ordinary skill in the art that
an appellant had possession of the concept of what is claimed.” Id. Because
Appellant’s Specification discloses the need for a smooth coating, there is a
reason to exclude adhesive coatings. Thus, the Specification reasonably
conveys that the inventor had possession of a non-adhesive coating.
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Application 12/536,888
Rejection B — Obviousness (claims 1—2, 5—9, and 11—12)
The Examiner rejects claim 1 (among others) as obvious over Holat in
view of O’Keefe. Final Act. 5. The Examiner finds that Holat teaches a
holographic garment tag comprising a sheet of fabric, a first optional heat
seal adhesive, a second heat seal adhesive and a polyester foil over the
adhesive. Id. at 5—6. The Examiner finds that Holat “is silent to a smooth,
pliable, non-adhesive coating being applied to the surface of the fabric.” Id.
at 6. But, the Examiner finds that O’Keefe teaches a water resistant fabric
with a polyurethane coating disposed on at least one surface ... to provide
water-repellent characteristics.” Id. The Examiner reasons that one skilled
in the art would have found it obvious to include a polyurethane coating on
the garment tag of Holat to utilize the water-repellant nature of the urethane
and to “enhance [the garment tag’s] durability during normal use and wear
of the garment.” Id. at 6—7.
Appellant argues that “Holat specifically requires the use of two
layers of pressure-sensitive adhesive between the fabric and holographic
foil, with the layer nearest the fabric provided for adhesion, thus it plainly
must be an adhesive.” Appeal Br. 6. Appellant contends that a
replacement of the second heat sensitive adhesive of Holat with the non­
adhesive urethane of O’Keefe, is improper because it would contradict the
teachings of Holat. Id.
We are not persuaded by Appellant’s arguments. As the Examiner
explains (Ans. 13; Final Act. 14), the rejection does not replace the second
adhesive of Holat with the urethane of O’Keefe, but rather adds the urethane
coating of O’Keefe to the garment tag of Holat. Appellant fails to address
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Application 12/536,888
the combined teachings of Holat and O’Keefe as presented by the Examiner,
and in doing so, fails to identify reversible error.
Therefore, on this record, we sustain the Examiner’s obviousness
rejection.
CONCLUSION
The Examiner reversibly erred in rejecting claims 1 and 11 under 35
U.S.C. §112 first paragraph as failing to comply with the written description
requirement.
The Examiner did not reversibly err in rejecting claims 1,2, 5—9, and
11—12 under 35 U.S.C. §103(a) as unpatentable over Holat in view of
O’Keefe.
The Examiner did not reversibly err in rejecting claims 10 and 13
under 35 U.S.C. § 103(a) as unpatentable over Holat in view of O’Keefe and
further in view of Bonkowski.
The Examiner did not reversibly err in rejecting claims 25 and 26
under 35 U.S.C. § 103(a) as unpatentable over Holat, in view of O’Keefe and
further in view of Euse.
The Examiner did not reversibly err in rejecting claim 27 under 35
U.S.C. §103(a) as unpatentable over Holat in view of O’Keefe and Euse and
further in view of Bonkowski.
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Application 12/536,888
DECISION
For the above reasons, the Examiner’s rejection of claims 1,2, 5—13,
and 25—27 is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED
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