Ex Parte KennedyDownload PDFPatent Trial and Appeal BoardSep 25, 201814085317 (P.T.A.B. Sep. 25, 2018) Copy Citation 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 Copy with citationCopy as parenthetical citation