Ex Parte Keeney et al

Board of Patent Appeals and Interferences

Jan 20, 2011

10482539 (B.P.A.I. Jan. 20, 2011)

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.
10/482,539 07/20/2004 Sean M. Keeney 401-004 9852
1009 7590 01/20/2011
KING & SCHICKLI, PLLC
247 NORTH BROADWAY
LEXINGTON, KY 40507
EXAMINER
SHEWAREGED, BETELHEM
ART UNIT PAPER NUMBER
1785
MAIL DATE DELIVERY MODE
01/20/2011 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte SEAN M. KEENEY and RICHARD D. EVANS
____________

Appeal 2010-002083
Application 10/482,539
Technology Center 1700
____________

Before CHARLES F. WARREN, JEFFREY T. SMITH, and
KAREN M. HASTINGS, Administrative Patent Judges.

HASTINGS, Administrative Patent Judge.

DECISION ON APPEAL1

Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1-13, 15, 16, 18, 19, and 21-7. An oral hearing was held
on January 12, 2011. We have jurisdiction under 35 U.S.C. § 6(b).

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 2010-002083
Application 10/482,539

2
We REVERSE.
Representative claim 1 reads as follows:
1. A cut and stack label, comprising:

a layer of polymer film printing stock having a first face directly
printed with a message and a second, opposite face;

a clear polymer film laminated to said first face of said polymer film
printing stock over said printed message;

a coating of an antistatic formulation over said clear polymer film,
and/or over said second face; and

a dusting of offset powder applied to at least one exposed face of said
cut and stack label.

Claims 1-13, 15, 16, and 19 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over the combined prior art of Sandt (US 6,756,095 B2,
issued Jun. 29, 2004) as evidenced by Kochem (US 5,478,616, issued Dec.
26, 1995), and Buhler (US 3,740,248, issued Jun. 19, 1973).
Claims 18 and 20 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combined prior art of Sandt as evidenced by Kochem,
Buhler, and Otruba (US 5,486,243, issued Jan. 23, 1996).
OPINION
The Examiner bears the initial burden of presenting a prima facie case
of obviousness. In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992).
“[R]ejections on obviousness grounds cannot be sustained by mere
conclusory statements; instead, there must be some articulated reasoning
with some rational underpinning to support the legal conclusion of
obviousness.” In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) quoted with
approval in KSR Int'l. Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007).
Appeal 2010-002083
Application 10/482,539

3
The fact finder must be aware “of the distortion caused by hindsight
bias and must be cautious of arguments reliant upon ex post reasoning.”
KSR Int'l. Co. v. Teleflex Inc., 550 U.S. at 421(citing Graham v. John Deere
Co. of Kansas City, 383 U.S. 1, 36 (1966) (warning against a “temptation to
read into the prior art the teachings of the invention in issue”)).
Applying the preceding legal principles with respect to obviousness to
the factual findings in this record, we determine that the Examiner has not
properly identified factual findings and reasoning for establishing a prima
facie case of obviousness based on the applied prior art, for essentially the
reasons given by Appellants (see generally App. Br.; Reply Br.).
Specifically, we agree with Appellants that the weight of the evidence
establishes that cornstarch is a seal inhibitor, and accordingly, that one of
ordinary skill in the art would not have had any apparent reason to have
added the treated cornstarch powder of Buhler to the heat-sealable laminate
of Sandt as proposed by the Examiner (App. Br. 9-12; Reply Br. 1-2; see,
Declaration of James D. Combs filed under 37 C.F.R. §1.132 on Dec. 10,
2007, and Carlisle (US 4,055,452, issued October 25, 1977). Notably, the
Examiner has not provided any evidence or persuasive technical reasoning
to rebut Appellants’ position that the cornstarch present in Buhler’s treated
powder would have inhibited the heat seal of Sandt (Ans. generally).
The additional reference to Otruba applied in the remaining rejection
has not been relied upon by the Examiner to cure the deficiencies noted
above.
On this record, we cannot say the Examiner has established a prima
facie case of obviousness within the meaning of 35 U.S.C. § 103(a) for the
Appeal 2010-002083
Application 10/482,539

4
claims on appeal. For these reasons and those set out in the Briefs, we
reverse all of the Examiner’s § 103 rejections on appeal.
CONCLUSION
In summary, the rejections before us on appeal are reversed.

REVERSED

sld

KING & SCHICKLI, PLLC
247 NORTH BROADWAY
LEXINGTON KY 40507