11031537 (B.P.A.I. Oct. 8, 2010)

Ex Parte Juby et al

Board of Patent Appeals and InterferencesOct 8, 2010

11031537 (B.P.A.I. Oct. 8, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES ____________ Ex parte ANITA B. JUBY and STEVE SAUNDERS ____________ Appeal 2009-003937 Application 11/031,537 Technology Center 1700 ____________ Before MICHAEL P. COLAIANNI, EDWARD C. KIMLIN, and ADRIENE LEPIANE HANLON, Administrative Patent Judges. KIMLIN, Administrative Patent Judge. DECISION ON APPEAL1 This is an appeal from the final rejection of claims 1-33. We have jurisdiction under 35 U.S.C. § 6(b). Claim 1 is illustrative: 1 The two-month time period for filing an appeal or commencing a civil action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing, as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE” (paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery mode) shown on the PTOL-90A cover letter attached to this decision. Appeal 2009-003937 Application 11/031,537 1. A composite comprising (A) a first layer of paper having a printable upper surface and a lower surface, the printable upper surface forming a topmost surface of the composite; (B) a first extruded polymer layer having an upper surface joined to the lower surface of the first layer of paper and having a lower surface; and (C) an adhesive layer on the lower surface of the first extruded polymer layer. The Examiner relies upon the following references as evidence of obviousness (Ans. 3): DeFife 6,150,035 Nov. 21, 2000 Ko WO 00/36042 Jun. 22, 2000 Appellants’ claimed invention is directed to a composite comprising a first layer of paper, a polymer layer joined to the lower surface of the paper, and an adhesive layer on the lower surface of the polymer layer. The paper has a printable upper surface. All the appealed claims stand rejected under 35 U.S.C. § 103(a) as being unpatentable over DeFife. Claims 3, 15, and 30 also stand rejected under 35 U.S.C. § 103(a) as being unpatentable over DeFife in view of Ko. Appellants do not present separate, substantive arguments for any particular claim on appeal. Accordingly, all the appealed claims stand or fall together. We have thoroughly reviewed each of Appellants’ arguments for patentability. However, we are in complete agreement with the Examiner that the claimed subject matter would have been obvious to one of ordinary skill in the art within the meaning of § 103 in view of the applied prior art. 2 Appeal 2009-003937 Application 11/031,537 Accordingly, we will sustain the Examiner’s rejections for the reasons set forth in the Answer, which we incorporate herein, and we add the following for emphasis only. Appellants do not dispute the Examiner’s factual determination that DeFife, like Appellants, discloses a composite laminate with a printable top surface comprising a paper substrate, an extruded polymer layer, a pressure sensitive adhesive layer and a release liner on the pressure sensitive adhesive layer. As recognized by the Examiner, the paper substrate is not the top most layer of DeFife’s laminate, as presently claimed. However, DeFife expressly teaches the following: The faces of labels may be made from various materials, and in some applications, it is desired to prepare the label from paper because of its low cost, strength, and printability. In other applications, it is desired to use non-paper materials such as polymeric sheet materials which are often preferred because of their toughness, resistance to moisture and improved film characteristics. (col. 1., ll. 37-43). Hence, based on the state of the prior art disclosed by DeFife, we fully concur with the Examiner that “it would have been obvious to a person of ordinary skill in the art to make a composite laminate without the first coating layer on the paper substrate in order to provide a composite laminate having a paper face because of its low cost, strength and printability” (Ans. 4, first para.). We are not persuaded by Appellants’ argument that the crux of DeFife’s composite is the polymer/paper/polymer composite that allows the composite to exhibit desired film-like performance while maintaining paper- like strength, and “[t]here is simply no teaching or suggestion in DeFife et 3 Appeal 2009-003937 Application 11/031,537 al. that such properties would still be present in the absence of the polyolefin surface layer” (App. Br. 7, first para.). We agree with the Examiner that DeFife, considered in its entirety, would have made it obvious to one of ordinary skill in the art that a top surface of either paper or polymer are viable options contingent upon the specific properties desired for the composite. Simply because DeFife’s invention includes a top polymer surface does not make it unobvious to use a top surface of paper which is disclosed by the prior art as having the advantages of low cost, strength and printability. It is clear to us that the state of the art cited by the Examiner provides alternatives for the material of the top layer of the composite, each having its own particular advantages and disadvantages. Also, it is well settled that the omission of a feature disclosed by the prior art along with its attendant function is a matter of obviousness for one of ordinary skill in the art. In re Thompson, 545 F.2d 1290, 1294 (CCPA 1976); In re Kuhle, 526 F.2d 553, 555 (CCPA 1975); In re Larson, 340 F.2d 965, 969 (CCPA 1965); In re Porter, 68 F.2d 971, 973 (CCPA 1934). In the present case, we agree with the Examiner that it would have been obvious for one of ordinary skill in the art to eliminate the top polymer layer of DeFife, along with its disclosed advantages, to result in a top paper layer that was known in the art to provide the benefits of low cost, strength, and printability. As for the separate rejection over DeFife in view of Ko, Appellants do not rebut the Examiner’s legal conclusion that “it would have been obvious to a person of ordinary skill in the art to combine the primer layer of Ko with the invention of DeFife to enhance the adhesion between the pressure sensitive layer and the second coating” (Ans. 8, first para.). 4 Appeal 2009-003937 Application 11/031,537 As a final point, we note that Appellants base no argument upon objective evidence of non-obviousness, such as unexpected results. In conclusion, based on the foregoing and the reasons well stated by the Examiner, the Examiner’s decision rejecting the appealed claims 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) (2008). AFFIRMED ssl AVERY DENNISON CORPORATION AMANDA WITTINE 8080 NORTON PARKWAY 22-D MENTOR, OH 44060 5