Ex parte Instance

Board of Patent Appeals and Interferences

Apr 29, 1999

08371620 (B.P.A.I. Apr. 29, 1999)

Application for patent filed January 12, 1995. 1
According to appellant, the application is a continuation of
Application 07/842,370, filed March 27, 1992, now abandoned.
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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journal and (2) is not binding precedent of the Board.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. 34
UNITED STATES PATENT AND TRADEMARK OFFICE
________________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
________________
Ex parte DAVID J. INSTANCE
________________
Appeal No. 97-1872
Application 08/371,6201
________________
HEARD: APRIL 9, 1999
________________
Before CALVERT, STAAB and NASE, Administrative Patent Judges.
STAAB, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on an appeal from the examiner’s final
rejection of claims 1, 3-12, 14, 16 and 19-38, all the claims
Appeal No. 97-1872
Application 08/371,620
Finally rejected claims 15, 17 and 18 were canceled by2
amendments filed subsequent to the final rejection. Although
these amendments have been approved for entry (see, inter
alia, the examiner’s initialed approval for entry in the
margin on page 1 of each of said amendments), they have not
yet been clerically entered.
The patentee of each of the applied references is the3
appellant.
It appears that appellant may be entitled to an4
effective filing date of September 28, 1990, the filing date
of PCT/GB90/014l87. If so, Instance '043 would not be prior
art in this case. However, in that appellant has not raised
this issue, we will treat this patent as prior art.
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currently pending in the application.2
Appellant’s invention pertains to a self-adhesive label
and to a method of making self-adhesive labels. The subject
matter on appeal is reproduced in an appendix to the brief.
The references of record relied upon by the examiner in
support of the rejections are:3
Instance (Instance '686) 4,711,686 Dec. 8,
1987
Instance (Instance '043) 4,933,043 Jun. 12, 19904
Claims 11, 19 and 20 stand rejected under 35 U.S.C. §
102(b) as being anticipated by Instance ‘043.
Claims 14, 16, 22-25 and 31-34 stand rejected under 35
Appeal No. 97-1872
Application 08/371,620
In the answer, the examiner inadvertently included5
canceled claim 17 in the statement of this rejection.
In the answer, the examiner inadvertently included a6
rejection of canceled claim 18 as being unpatentable over
Instance ‘686.
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U.S.C. § 102(b) as being anticipated by Instance ‘686.5
Claim 12 stands rejected under 35 U.S.C. § 103 as being
unpatentable over Instance ‘043 in view of Instance ‘686.
Claims 1, 3-10, 21, 26-30 and 35-38 stand rejected under
35 U.S.C. § 103 as being unpatentable over Instance ‘686.6
The rejections are explained in the examiner’s answer
(Paper No. 28, mailed September 11, 1996).
The opposing viewpoints of appellant are set forth in the
brief (Paper No. 27, filed July 24, 1996) and the reply brief
(Paper No. 29, filed November 18, 1996).
Opinion
We will not sustain the standing rejections for basically
the same reasons set forth by appellant on pages 13-25 of the
brief. We add the following to emphasize and further clarify
our views with respect to the issues raised by this appeal.
A fundamental issue in this appeal is the proper
Appeal No. 97-1872
Application 08/371,620
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interpretation to be given to the language “release material”
found in each of the independent claims on appeal. The
examiner is of the view that the term may be broadly
interpreted so as to read on the support web 18 of Instance
‘043 and/or the support web 26 of Instance ‘686 (answer, page
9), whereas appellant argues that the “release material”
language of the claims is not met by the support webs 18 and
26 of the respective references.
Like appellant, we do not believe that the ordinarily skilled
artisan would consider that web 18 of Instance ‘043 and/or web
26 of Instance ‘686 provides a “release material” when such
language is given its broadest reasonable interpretation
consistent with appellant’s specification as such would be
understood by one of ordinary skill in the art (In re Sneed,
710 F.2d 1544, 218 USPQ 385 (Fed. Cir. 1983); In re Tanaka,
551 F.2d 855, 193 USPQ 138 (CCPA 1977)). The disclosures of
the present application, the Instance ‘043 patent, and the
Instance ‘686 patent are consistent in their use of terms like
“release material,” “backing of release material” and “release
backing material” to describe the web of material that carries
Appeal No. 97-1872
Application 08/371,620
See, for example, page 5, lines 3-7, of the7
specification of the present application; column 9, lines 16-
20, of Instance ‘043; and column 7, lines 37-64, of Instance
‘686.
For example, waxed or siliconized paper (page 5, line 78
of the specification of the present application; column 9,
line 21 of Instance ‘043).
The term “the release material” in the fourth to the9
last line of claim 19 lacks a proper antecedent. This claim
deficiency is worthy of correction.
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the individual labels prior to their being applied to a
product. Consistent with these disclosures, the ordinarily7
skilled artisan would understand the term “release material”
as used in the appealed claims to denote a material having8
surface characteristics that would allow for relatively easy
removal of the labels therefrom with the adhesive therebetween
preferentially adhering to the labels rather than the release
material.
Each of independent claims 1, 19 and 21, in one fashion9
or another, calls for at least a portion of the folded sheet
of the label to be directly adhered to the release material.
This limitation is not disclosed or suggested by either
Instance ‘043 or Instance ‘686 because in each case, no
portion of the folded panels of the label is directly attached
Appeal No. 97-1872
Application 08/371,620
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to the release material. Rather, the folded panels of
Instance ‘043 and Instance ‘686 are directly attached to the
support web (element 18 of Instance ‘043; element 26 of
Instance ‘686), which is not a “release material” as that term
is used herein.
Independent claims 11 and 14 are somewhat broader than
claims 1, 19 and 21 in the sense that they call for at least a
portion of “the label” to be directly adhered to the release
material. With respect to the standing rejection of claim 11
as being anticipated by Instance ‘043, the examiner’s position
that this claim limitation is met by Instance ‘043 because
support web 18 may be considered a release material is not
well taken for the reasons given above. Further, the support
web 18 itself of Instance ‘043 cannot be considered a part of
“the label” because claim 11 further specifies that the label
comprises an upper panel and a lower panel connected by a
folded edge with the label being directly releasably adhered
to the release material by means of a self-adhesive rear
surface of the lower panel. These additional limitations have
the effect of precluding one from considering the support web
18 of Instance ‘043 to be a part of the label.
Appeal No. 97-1872
Application 08/371,620
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As to the standing rejection of claim 14 as being
anticipated by Instance ‘686, considering the claimed upper
panel as corresponding to one of the panels 6, 8, 10, 12 of
Instance ‘686 and the lower panel which is separate from the
upper panel as being the support web 26 of Instance ‘686,
Instance ‘686 does not anticipate claim 14 because the upper
panel (any one of the panels 6, 8, 10 and 12) does not extend
beyond the lower panel (support web 26). Alternatively, if
the support web 26 of Instance ‘686 in conjunction with the
release material 73 is considered to read on the claimed
“release material,” Instance ‘686 still does not anticipate
claim 14 because the “lower panel being separate from the
upper panel” requirement of claim 14 cannot be read on the
panels of Instance ‘686 that are unitary in the sense that
they are joined together by fold lines 14, 16 and 18.
Independent claims 22 and 26 in effect call for a self-
adhesive label comprising a support web carried on a release
material, and a folded sheet disposed on the support web
having a free outer edge extending past the support web and
over the backing of release material so that the free outer
edge is adhered to the release material. This limitation is
Appeal No. 97-1872
Application 08/371,620
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not disclosed or suggested by Instance ‘043 or Instance ‘686
because no portion of the folded label panels (elements 10,
12, 14, 16 of Instance ‘043; elements 6, 8, 10, 12 of Instance
‘686) of either reference can be reasonably interpreted as
extending past the support web (element 18 of Instance ‘043;
element 26 of Instance ‘686) and over the release material
(element 37 of Instance ‘043; element 73 of Instance ‘686) so
as to be releasably adhered thereto.
Independent claims 31 and 35 in effect call for folded
label portions adhered to a release material, and laminar
material extending past the folded label portions thereby to
form an end portion which is directly adhered to the release
material. This limitation is not disclosed or suggested by
either of the applied references because no portion of the
laminar material (element 30 of Instance ‘043; element 28 of
Instance ‘686) extends past and is adhered to the release
material (element 37 of Instance ‘043; element 73 of Instance
‘686). Rather, the laminar material of the applied references
is coextensive with and directly attached to the support web
(element 18 of Instance ‘043; element 26 of Instance ‘686),
which is not a “release material” as that term is used herein.
Appeal No. 97-1872
Application 08/371,620
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For these reasons, as well as the reasons set forth by
appellant in the brief, the decision of the examiner is
reversed.
REVERSED
IAN A. CALVERT )
Administrative Patent Judge )
)
)
)
LAWRENCE J. STAAB ) BOARD OF PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
JEFFREY V. NASE )
Administrative Patent Judge )
Appeal No. 97-1872
Application 08/371,620
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