Ex Parte Kennedy

Patent Trial and Appeal Board

Sep 25, 2018

14085317 (P.T.A.B. Sep. 25, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/085,317 11/20/2013
86378 7590 09/27/2018
Pearne & Gordon LLP
1801 East 9th Street
Suite 1200
Cleveland, OH 44114-3108
UNITED ST A TES OF AMERICA
FIRST NAMED INVENTOR
Michael R. Kennedy
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
KDYl-51916 4380
EXAMINER
JALLOW, EYAMINDAE CROSSAN
ART UNIT PAPER NUMBER
3721
NOTIFICATION DATE DELIVERY MODE
09/27/2018 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):
patdocket@pearne.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MICHAEL R. KENNEDY
Appeal 2018-004767
Application 14/085,317 1
Technology Center 3700
Before ANTON W. PETTING, MICHAEL C. ASTORINO, and
PHILIP J. HOFFMANN, Administrative Patent Judges.
ASTORINO, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), the Appellant appeals from the
Examiner's decision rejecting claims 1-11 and 35.2 We have jurisdiction
over the appeal under 35 U.S.C. § 6(b ).
We REVERSE.
1 According to the Appellant, "[ t ]he real party in interest is The Kennedy
Group Incorporated." Appeal Br. 2.
2 The Appellant lists Application Serial Numbers 14/085,281 and
14/667 ,270 under the Related Appeals and Interferences section of the
Appeal Brief. Appeal Br. 2. These related applications have been assigned
appeal numbers 2018-004645 and 2018-005890, respectively, and are being
decided concurrently with the present appeal.
Appeal 2018-004767
Application 14/085,317
STATEMENT OF THE CASE
Claimed Subject Matter
Claims 1 and 3 5 are the independent claims on appeal. Claim 1,
reproduced below, is illustrative of the appealed subject matter.
1. A method of applying communication members to bags
compnsmg:
feeding the bags along a production line; and
applying the communication members to surfaces of the
bags with an adhesive while the bags are on the production line,
wherein the communication members and the adhesive are
simultaneously removable from the bags such that substantially
no adhesive residue or recess remains on the bags upon removal
of the communication members.
Rejections
I. Claims 1, 3-5, and 8-11 are rejected under (pre-AIA) 35 U.S.C.
§ I02(b) as anticipated by Absher (US 5,298,104, iss. Mar. 29, 1994).
II. Claims 2 and 35 are rejected under (pre-AIA) 35 U.S.C.
§ I03(a) as unpatentable over Absher and Czech et al. (US 5,363,966, iss.
Nov. 15, 1994) ("Czech").
III. Claims 6 and 7 are rejected under (pre-AIA) 35 U.S.C. § I03(a)
as unpatentable over Absher and Daniels et al. (US 2006/0045393 Al, pub.
Mar. 2, 2006) ("Daniels").
ANALYSIS
Independent claim 1 recites, among other things3, "applying the
communication members to surfaces of the bags with an adhesive while the
3 We agree with the Appellant that "substantially no adhesive residue or
recess remains on the bags upon removal of the communication members,"
2
Appeal 2018-004767
Application 14/085,317
bags are on the production line." Appeal Br. 18. Claim 1 also recites
"substantially no adhesive residue or recess remains on the bags upon
removal of the communication members."4 Id.
The Examiner finds that Absher's bag stock 10 (in Figure 7, plastic
bag 60) corresponds to the claimed "bags," and Absher's coupon portions 43
corresponds to the claimed "communication members." See Final Act. 2-3;
Ans. 3.
The Appellant argues that Absher's removable coupon portions 43 are
not "comparable to the claimed communication members, which are both
secured to the bags via adhesive and removable from the bags together with
that adhesive." See Appeal Br. 8. The Appellant's position is persuasive.
As shown in Absher' s Figure 7, coupon assembly 40 includes coupon
portion 43 and adhesive portion 41. See Absher, col. 5, 11. 8-10, Fig. 7. As
pointed out by the Appellant, "[ w ]hen the coupon portion 43 is removed, the
entirety of the adhesive portion [ 41] (including polyester layer 50 and
adhesive 51 adhering the polyester layer 50 to the bag surface 60) is left
behind." Reply Br. 3; see Absher, col. 5, 11. 14--16. Put simply, coupon
portion 43 does not correspond to the claimed "communication member" of
claim 1 because adhesive portion 41 is not removed from bag 60 upon
removal of coupon portion 43. Further, we note that coupon portion 43
as recited in independent claim 1, sets forth cumulative limitations (i.e.,
substantially no adhesive residue and no recess remains on the bags), rather
than alternative limitations. Appeal Br. 3-7; Reply Br. 2.
4 The Appellant argues in related appeal ( appeal number 2018-004645,
Reply Brief at page 4) that the term "'substantially no adhesive' is
understood as a meaning that a negligible adhesive residue is left behind, if
any." We agree.
3
Appeal 2018-004767
Application 14/085,317
includes patterned adhesive layer 4 7 positioned between two other layers 45,
49 of coupon portion 43. Id. at col. 5, 11. 17-24, Fig. 7. Patterned adhesive
layer 47 is not applied between coupon portion 43 and bag 60, rather
patterned adhesive layer 47 is part of coupon portion 43.
Thus, we do not sustain the Examiner's rejection of claim 1, and
dependent claims 3-5 and 8-11, as anticipated by Absher.
The remaining rejections of claims 2, 6, 7, and 35 5 based on Absher in
combination with Czech or Daniels rely on the same erroneous finding as
discussed above. As such, we do not sustain the rejections under 35 U.S.C.
§ 103(a) of: claims 2 and 35 as unpatentable over Absher and Czech; and
claims 6 and 7 as unpatentable over Absher and Daniels.
DECISION
We REVERSE the Examiner's decision rejecting claims 1-11 and 35.
REVERSED
5 Independent claim 35 includes similar limitations as claim 1. See Appeal
Br. 22.
4