Ex parte Holt

Board of Patent Appeals and Interferences

Aug 21, 1998

08055100 (B.P.A.I. Aug. 21, 1998)

Application for patent filed May 3, 1993. The real party in interest appears to1
be Lexmark International, Inc.
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journal and (2) is not binding precedent of the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. 12
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte RICHARD W. HOLT

_____________
Appeal No. 95-1859
Application 08/055,1001
______________
ON BRIEF
_______________
Before: HARKCOM, Vice-Chief Administrative Patent Judge,
and McKELVEY, Senior Administrative Patent Judge, and
SCHAFER, Administrative Patent Judge.
PER CURIAM.
Decision on appeal under 35 U.S.C. § 134
Appeal No. 95-1859
Application 08/055,100
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The appeal is from a decision of the Primary Examiner
rejecting claims 1-4 under 35 U.S.C. § 103 over the prior art.
We reverse, make a new ground of rejection of claim 3 under
37 CFR § 1.196(b) and make a recommendation under 37 CFR
§ 1.196(c).
The subject matter on appeal relates to a process to
achieve printing of a non-barrier-layer, peel-off, adhesive
label with a liquid ink having a mineral oil vehicle. The
method is said to result in a label that avoids the expense
and added bulk of a barrier layer because the microporous
print-receiving label is said to prevent the mineral oil
vehicle from reaching the adhesive layer (specification, page
2, lines 7-9; page 3, lines 15-19).
A. Interpretation of the scope of the claims
Prior to evaluating the prior art applied by the
examiner, as well as other art which we found on our own, we
believe it is appropriate to determine the precise scope of
the claims on appeal.
Interpretation of a claim is a question of law. Based on
our evaluation of the claims, when considered in light of
Appeal No. 95-1859
Application 08/055,100
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applicant's specification, we reach the following conclusions
of law with respect to what is required by independent claim
1.
1. Independent claim 1 reads as follows
[indentation, paragraph numbering and bold ours]:
The method of preparing labels
having an organic adhesive backing degradable by
mineral oil for affixing said labels to surfaces
comprising printing on a print-receiving lamination with
imaging ink or toner containing mineral oil as a vehicle,
(1) said print-receiving lamination being in contact
with a lamination of said adhesive, and
(2) said adhesive being contacted by a supporting
lamination,
(3) said print-receiving lamination being of a
porous material which holds said mineral oil of
said ink or toner in the pores of said porous
material away from said adhesive.
2. The claim requires using an ink or toner which
contains a vehicle which is mineral oil.
Appeal No. 95-1859
Application 08/055,100
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3. The claim also requires using a laminate
comprising at least three layers, as follows:
a. The first (or top) layer is a "print-
receiving" layer referred to in the claim as a "print-
receiving lamination."
b. The second (or middle) layer is an adhesive
layer referred to in the claim as a "lamination of said
adhesive" or "adhesive backing." The adhesive must be an
"organic adhesive" which is "degradable by mineral oil." The
specification reveals the nature of what applicant means by
"degradable." Basically, the adhesive is one which when
contacted by the mineral oil is degraded to the point where it
loses "its condition as an adhesive" (specification, page 1,
lines 13-14).
c. The third (or bottom) layer is a "support
layer" referred to in the claim as a "supporting lamination."
4. The "print-receiving" layer must be in contact
with the "adhesive" layer. There can be no barrier layer
between the "print-receiving" layer and the "adhesive" layer.
5. The "adhesive" layer must contact the "support
layer."
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Application 08/055,100
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6. The claim is directed to a method for making a
printed label which comprises using the ink or toner described
in Paragraph 2 on a three-layer laminated material described
in Paragraphs 3 through 5. The step of the process is
printing.
7. The ink or toner placed on the print-receiving
layer must not come in contact with the adhesive.
B. Discussion
The examiner has rejected claims 1-4 as being
unpatentable under 35 U.S.C. § 103 over a TESLIN® product
brochure and Carley, U.S. Patent 3,790,703 (1974). "The prior
art status of the product brochure is not questioned" (Appeal
Brief, page 4). Carley is prior art under 35 U.S.C. § 102(b).
As noted above, the claims require printing on a three-
layer laminate having specific layers arranged in a particular
manner. We can agree with the examiner that the TESLIN®
product brochure (1) describes the use of a film material
which has the characteristics of applicant's print-receiving
layer; (2) says that TESLIN® film "is great for *** Labels"
(page 1); (3) says that TESLIN® film "allows inks to set
almost instantly" (page 2); (4) says that inks "will penetrate
Appeal No. 95-1859
Application 08/055,100
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the surface [of the TESLIN® film] to root into the structure"
(page 3); (5) says that TESLIN® film can be used in laminates
(page 10) and (6) says that TESLIN® film is sold inter alia in
standard gauges of 8 mil (page 4) (note claim 4 requires a
thickness on the order of magnitude of 0.008 of an inch
thick). The brochure also states, however, that TESLIN® film
"requires a special ink" (page 1), but no particular special
ink is described in the brochure. The brochure does not
describe the three-layer label configuration required to be
used in the process defined by applicant's claim 1. Nor does
the brochure describe the use of an ink or toner containing
mineral oil as a vehicle, although ink containing mineral oil
as a vehicle is old. See Carley, col. 5, lines 10-13 and
Kirk-Othmer, Encyclopedia of Chemical Technology, Vol. 11,
pages 611-620 (2d ed. 1966), particularly page 616 wherein it
is said that letterpress inks contain mineral oil.
The problem with the examiner's rejection is that it is
not supported by the evidence. The examiner has not
established that the three-layer label laminate used in the
process defined by claim 1 is old. Nor has the examiner
established that it would have been obvious to use a mineral
Appeal No. 95-1859
Application 08/055,100
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oil-containing ink to print on the three-layer label laminate
called for by applicant's claim 1.
Independent of the examination conducted by the examiner,
we have found that the film used to make applicant's print-
receiving layer is old. See Young, U.S. Patent 4,861,644.
Young tells us that letterpress printing may be used to
accomplish printing on a print-receiving layer (col. 11, lines
33-39). Kirk-Othmer further tells us that letterpress
newsprint inks are based mainly on mineral oil (page 616,
fourth paragraph). But like the product brochure, Young does
not describe the three-layer label called for by the process
of claim 1. We have also found that three-layer labels are
old. See Beck, U.S. Patent 3,660,203 (1972) (Fig. 2 and col.
1, lines 61-66). However, the print-receiving layer described
by Beck is not a TESLIN® film layer. More important is the
fact that the brochure, Young, Beck and Kirk-Othmer do not
describe printing with a mineral oil such that the ink does
not come into contact with the adhesive layer, as required by
claim 1. On this record, we conclude that applicant has
discovered a new characteristic for microporous plastics
Appeal No. 95-1859
Application 08/055,100
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sheets and has claimed his discovery, as he must, in the form
of a new and unobvious process.
For the reasons given, we reverse the prior art rejection
made by the examiner.
C. New ground of rejection and recommendation
Claim 3 is rejected under 35 U.S.C. § 112, second
paragraph, as failing to particularly point out and distinctly
claim the invention. Claim 3 contains the phrase "Teslin
brand synthetic paper." TESLIN® is a registered trademark.
Where a trademark is used in a claim as a limitation to
identify a material, the claim does not comply with the
requirements of 35 U.S.C. ß 112, second paragraph. See the
rationale set out in Ex parte Simpson, 218 USPQ 1020, 1021-22
(Bd. App. 1982).
In accordance with 37 CFR ß 1.196(c), we recommend that
the applicant amend claim 3 by replacing the phrase "Teslin
brand synthetic paper" with the language "microporous plastic
sheet" (specification, page 2, lines 15-16), and if such
amendment is made our new ground of rejection under 37 CFR
§ 1.196(b) will have been overcome.
Appeal No. 95-1859
Application 08/055,100
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D. Decision
The decision of the examiner rejecting claims 1-4 over
the prior art is reversed.
E. Time for taking action
This opinion contains a new ground of rejection pursuant
to Rule 196(b) (37 CFR § 1.196(b), amended effective Dec. 1,
1997). See Notice of Final Rule, 62 Fed. Reg. 53131, 53197
(Oct. 10, 1997), reprinted in 1203 Off. Gaz. Pat. & Trademark
Office 63, 122 (Oct. 21, 1997)).
Rule 196(b) provides that, "A new ground of rejection
shall not be considered final for purposes of judicial
review."
Rule 196(b) also provides that the applicant, WITHIN TWO
MONTHS FROM THE DATE OF ENTRY OF THIS DECISION, must exercise
one of the following two options with respect to the new
ground of rejection to avoid termination of proceedings
(§ 1.197(c)) as to the rejected claims:
(1) Submit an appropriate amendment
of the claims so rejected or a showing of
facts relating to the claims so rejected,
Appeal No. 95-1859
Application 08/055,100
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or both, and have the matter reconsidered
by the examiner, in which event the
application will be remanded to the
examiner. . . .
(2) Request that the application be
reheard under § 1.197(b) by the Board of
Patent Appeals and Interferences upon the
same record. . . .
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
REVERSED
(37 CFR § 1.196(b) and 37 CFR § 1.196(c))
______________________________
GARY V. HARKCOM, Vice Chief )
Administrative Patent Judge )
)
)
______________________________)
Appeal No. 95-1859
Application 08/055,100
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FRED E. McKELVEY, Senior ) BOARD OF PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
______________________________)
RICHARD E. SCHAFER )
Administrative Patent Judge )
Appeal No. 95-1859
Application 08/055,100
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cc (via First Class mail):
John A. Brady, Esq.
LEXMARK INTERNATIONAL, INC.
Intellectual Property Law
740 New Circle Road, N.W.
Lexington, KY 40511-1876