Ex Parte Kennedy

Patent Trial and Appeal Board

Jun 19, 2017

13417953 (P.T.A.B. Jun. 19, 2017)

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.
13/417,953 03/12/2012 Michael R. Kennedy KDY-47920US1 1699
86378 7590 06/21/2017
Pearne Rr frnrHnn T T P
EXAMINER
1801 East 9th Street JUNGE, KRISTINA N S
Suite 1200
Cleveland, OH 44114-3108 ART UNIT PAPER NUMBER
3638
NOTIFICATION DATE DELIVERY MODE
06/21/2017 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@peame.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 2016-004224
Application 13/417,953
Technology Center 3600
Before MICHAEL J. STRAUSS, JOSEPH P. LENTIVECH, and
PHILLIP A. BENNETT, Administrative Patent Judges.
STRAUSS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from a Final Rejection of
claims 1—14 and 18—23. Claims 15—17 are canceled. We have jurisdiction
over the pending claims under 35 U.S.C. § 6(b).
We affirm.
THE INVENTION
The claims are directed to advertising media. Spec., Title. Claims 1,
4, and 5, reproduced below with disputed limitations emphasized in italics,
are illustrative of the claimed subject matter:
1. Advertising media for application to a substrate or
product packaging via an applicator comprising:
Appeal 2016-004224
Application 13/417,953
a release liner having a length and a width, the length being
greater than the width and the length defining a longitudinal axis;
and
a plurality of multi-part labels coupled to the release liner
along the longitudinal axis in spaced succession, each of the
plurality of multi-part labels comprising a base label coupled
directly to the release liner with a first adhesive, and a top label
coupled to the base label with a second adhesive,
wherein the first adhesive has properties that allow the
base label to be removed from the release liner and applied to a
substrate or product packaging in a stable manner, but being
non-permanent and removable from the substrate or product
packaging so as to not mar the substrate or product packaging or
leave a residue thereon; and the second adhesive has properties
such that a sticky residue is not present when the top label is
removed from the base label, and
wherein the release liner comprises, between adjacent
ones of the plurality of multi-part labels, a plurality of spaced
perforations, each plurality of spaced perforations extending
substantially perpendicular to the longitudinal axis with the outer
edges of the release liner directly at the ends of each of the
pluralities of spaced perforations having a space that is free of
perforations.
4. The advertising media of claim 1, wherein the space
directly at the ends of each of the pluralities of perforations on
the outer edges of the release liner that is free of perforations is
large enough such that the release liner does not tear when
folded along the perforations and used in an application
machine.
5. The advertising media of claim 1, wherein the space
directly at the ends of each of the pluralities of perforations on
the outer edges of the release liner that is free of perforations is
about 0.25 inches long.
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REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Roshkoff US 2003/0070338 A1
Mark US 2005/0081415 A1
Crooks US 2006/0257607 A1
Wilkinson US 8,261,477 B1
Apr. 17, 2003
Apr. 21,2005
Nov. 16, 2006
Sept. 11,2012
REJECTIONS
The Examiner made the following rejections:
Claims 1—10 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Crooks, Wilkinson, and Mark.
Claim 11 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Crooks, Wilkinson, Mark, and Roshkoff.
Claims 12—14 and 18—23 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Crooks and Mark.
ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellant’s
arguments the Examiner erred. We disagree with Appellant’s conclusions.
Except as noted below, we adopt as our own (1) the findings and reasons set
forth by the Examiner in the Final Office Action from which this appeal is
taken (Final Act. 2—10) and (2) the reasons set forth by the Examiner in the
Examiner’s Answer in response to Appellant’s Appeal Brief (Ans. 2-4) and
concur with the conclusions reached by the Examiner. We highlight the
following arguments seriatim as they are presented in the Appeal Brief,
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pages 5—35, for ease of reference including section headings corresponding
to those used by Appellant.
A. Claims 1—10
1. Claim 1
Mark and Crooks would not be combined by one of ordinary skill
in the art because they address distinct problems and provide
incompatible solutions
(App. Br. 7.)
The Examiner finds Crooks teaches the disputed plurality of spaced
perforations between adjacent labels as required by claim 1, but fails to
disclose “a perforation free space at each end of the perforations.” Final Act.
3. The Examiner applies Mark for teaching the perforation-free ends. Id.
The Examiner finds modifying Crooks to include Mark’s perforation-free
ends is “a matter of obvious design choice in order to ensure proper
alignment of the labels when used with an applicator” and that “such a
modification would have been a simple substitution of one known label or
perforation pattern for another to obtain predictable results.” Final Act. 3^4.
Appellant argues:
Crooks utilizes perforations between labels to facilitate
separation of adjacent labels from one another for use in a label
applicator machine, whereas Mark utilizes perforations through
the label to separate the various parts of a single label into
different sub-labels (e.g., separating the label according to
patterns of applied adhesive 80/85 and 90). When understood in
this light, it is clear that the teachings of Mark regarding
perforations in labels cannot suggest their use in perforations
in the liner between labels as in Crooks. This is because the
perforations serve different purposes and provide incompatible
solutions that do not suggest each other.
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App. Br. 8. According to Appellant, modifying Crooks according to Mark
would result in forming perforations through the label and, therefore, “would
not facilitate separation between labels or removal of the label from the
liner.” App. Br. 8 (emphasis omitted). Appellant concludes the applied
combination of Crooks and Mark is improper. Id. The Examiner explains
Mark is relied upon only for “the specific pattern of perforations, with the
perforations not extending all the way to the edges of a substrate” not for the
location of the perforations which is taught by Crooks to be between labels.
Ans. 2. The Examiner finds
Both perforation patterns facilitate the separation of one substrate
from another. These are not incompatible solutions. It is the
examiner’s position that selecting one known perforation pattern
or another is a matter of design choice, as those in the label
printing art understand that perforations can be designed as
desired to create the intended size, shape, and features of a label
system.
Ans. 2—3. The Examiner further finds one skilled in the art would have
modified Crooks to include Mark’s perforation-free ends to provide, inter
alia, “a reduced risk of tearing when folded.” Ans. 3.
Appellant replies, arguing the perforations of Crooks and Mark
“provide different functions at different locations through different structures
[such that] it does not make sense to ‘merely chang[e] the perforation pattern
of Crooks to that of Mark [as asserted by the Examiner].”’ Reply Br. 3.
According to Appellant, the Examiner has engaged in impermissible
“cherry-pick[ing of] individual features of the perforations in Mark to
include in Crooks.” Reply Br. 4. Appellant further argues the Examiner’s
finding the pattern of perforations is a matter of design choice is “entirely
conclusory . . . because the reasons why the combination is obviousness are
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not articulated.” Reply Br. 5. Appellant also argues the combination is
improper because “[t]he references are completely silent regarding smaller
cutting areas, smaller perforation machines, and/or reduced manufacturing
costs,” some of the reasons given by the Examiner for making the
modification. Reply Br. 6 (emphasis omitted).
Appellant’s arguments are unpersuasive of Examiner error. In
construing claim 1, we note claim 1 does not specify the length of the
perforation-free space (although such a limitation appears in dependent
claim 5, discussed below). Appellant’s Specification only describes a
preferred length of % inch that “provides sufficient strength so that the liner
14 does not tear when used in an application machine, but that allows the
liner 14 to be folded.” Spec. p. 4,11. 21—25. However, the disclosed length
preference is explicitly recited by claim 4 and, therefore, under the doctrine
of claim differentiation1, there is a presumption claim 1 is not so limited.
Therefore, under a broad but reasonable interpretation and in the absence of
evidence to the contrary, any portion of the release liner that is not part of a
perforation satisfies the recited “space that is free of perforations” language
of claim 1 without regard to shape or length of the non-perforated portion.
1 Under the doctrine of claim differentiation, “the presence of a dependent
claim that adds a particular limitation gives rise to a presumption that the
limitation in question is not present in the independent claim.” Phillips v.
AWH Corp, 415 F.3d 1303, 1315 (Fed. Cir. 2005). This presumption is
“especially strong when the limitation in dispute is the only meaningful
difference between an independent and dependent claim, and one party is
urging that the limitation in the dependent claim should be read into the
independent claim.” SunRace Roots Enter. Co., Ltd. v. SRAM Corp., 336
F.3d 1298, 1303 (Fed. Cir. 2003).
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Addressing Appellant’s argument, we disagree the combination of
Crooks and Mark would result in forming perforations through the label.
See App. Br. 8. As explained by the Examiner, Mark is only relied upon for
disclosing a perforation-free space at the ends of each of the pluralities of
spaced perforations, not for the location of the perforations. Other than
attorney argument, Appellant provides insufficient evidence (i) Mark’s
perforation-fee ends are only applicable to perforations through a label and
not to the space between labels (as per Crooks) or (ii) that one skilled in the
art adopting Mark’s pattern of perforations would also relocate the
perforations from between the labels (as taught by Crooks) to on and
through the labels (as depicted and taught by Mark). Appellant’s argument
improperly relies on wholesale incorporation/combination of structures
rather than what the combination of Crooks and Mark teaches and suggests.
The test for obviousness is not whether the features of a
secondary reference may be bodily incorporated into the
structure of the primary reference; nor is it that the claimed
invention must be expressly suggested in any one or all of the
references. Rather, the test is what the combined teachings of the
references would have suggested to those of ordinary skill in the
art.
In re Keller, 642 F.2d 413, 425 (CCPA 1981). The artisan is not compelled
to blindly follow the teaching of one prior art reference over the other
without the exercise of independent judgment. See Lear Siegler, Inc. v.
Aeroquip Corp., 733 F.2d 881, 889 (Fed. Cir. 1984). Furthermore the skilled
artisan would “be able to fit the teachings of multiple patents together like
pieces of a puzzle” because the skilled artisan is “a person of ordinary
creativity, not an automaton.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398,
420—21 (2007). Here, Appellant has not demonstrated the Examiner’s
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proffered combination in support of the conclusion of obviousness would
have been “uniquely challenging or difficult for one of ordinary skill in the
art.” Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed.
Cir. 2007) (citing KSR, 550 U.S. at 418).
Crooks teaches all of the limitations of the disputed limitations of
claim 1 except of the release liner directly at the ends of each of the
pluralities of spaced perforations having a space that is free of perforations.
For example, with reference to Figure 1 of Crooks, the labeled frangible
region or score line 38 is depicted as including perforations extending to the
left-edge of web 16 but not to the extreme right edge, i.e., the final
perforation of score line 38 is spaced apart from the right edge of web 16
thereby forming a space that is free of perforations. Crooks’s Figure 6
further depicts folding the label strip or roll along score line 38 of web 16
into a continuous, fanfold-type stack of the labels, i.e., without separating
the labels or tearing web 16. Mark also teaches perforations through a web,
although Mark’s perforations are also through the overlying label. Mark Fig.
1,1 50. In Figure 1 of Mark perforations or cuts 100 are depicted as ending
before both the left and right edges of substrate 10. Thus, the disputed
limitation is taught or suggested by combining Crooks’s teaching of a
plurality of spaced perforations through a release liner at locations between
labels to include a space that is free of perforations at both ends of the
spaced perforations as taught by Mark.
We also disagree the rejection is improper for “a failure [of the
Examiner] to determine the scope and content of the prior art, and the
differences between the claimed invention and the prior art, as required
under Graham.” App. Br. 9. The Examiner explains what is taught or
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suggested by each reference, what is missing from each, and how and why
the teachings and suggestions of the references are combined in rejecting the
claim 1. See Final Act. 2-4, Ans. 2—3.
The Examiner s purported rationale for combining Mark with
Crooks is unsupported by the references and is gleaned from
impermissible hindsight
App. Br. 9-12.
Appellant argues the combination of Crooks and Mark is improper
because neither provides rationale for making the combination, concluding
“[t]he only possible rationale comes from the present disclosure and claims.”
App. Br. 9. We disagree. Appellant’s argument is not persuasive because it
attempts to hold the Examiner to the now-rejected rigid application of the
teaching, suggestion, or motivation (“TSM”) standard where there must be
some suggestion or motivation in the references themselves to modify the
reference or to combine reference teachings; such a standard is not required.
KSR, 550 U.S. at 415 (“We begin by rejecting the rigid [application and
requirement of a TSM to combine known elements in order to show
obviousness]”). The proper inquiry is whether the Examiner has articulated
adequate reasoning having a rational underpinning which explains why a
person of ordinary skill in the art would have been led to combine the
disclosures of Crooks and Mark. See In re Kahn, 441 F.3d 977, 988 (Fed.
Cir. 2006) (“[Rejections on obviousness grounds . . ., there must be some
articulated reasoning with some rational underpinning to support the legal
conclusion of obviousness”) (cited with approval in KSR, 550 U.S. at 418).
Here, the Examiner has articulated reasoning based on rational
underpinning, sufficient to support a conclusion of obviousness, i.e.,
substituting Mark’s perforation pattern for that of Crooks provides “the
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added benefit of... a reduced risk of tearing when folded.” Ans. 3. In
particular, the Examiner finds, inter alia, the “modification would have been
a simple substitution of one known label or perforation pattern for another to
obtain predictable results” (Final Act. 4) and “selecting one known
perforation pattern or another is a matter of design choice, as those in the
label printing art understand that perforations can be designed as desired to
create the intended size, shape, and features of a label system” (Ans. 3). We
agree.
Crooks discloses folding the label strip or web at score line 38.
Crooks Fig. 6. One skilled in the art would have understood, although the
score line functions to promote folding at the score line, the resultant folded
strip or web should remain continuous, i.e., should not have any tears.
Furthermore, it would have been obvious to include a spacing between
perforations and/or a space without perforations to inhibit tearing without
inhibiting folding along the perforations. In the absence of persuasive
evidence to the contrary, we find one skilled in the art would have
recognized Mark’s non-perforated end portions would inhibit tears while
perforated central portion would promote folding. Accordingly, we disagree
the combination of Crooks and Mark is improper.
Appellant further argues “[t]he references are silent regarding smaller
cutting areas, smaller perforation machines, and/or reduced manufacturing
costs, all of which [reasons for modifying Crooks according to Mark]
apparently came from the Examiner's mind.” App. Br. 11. However,
Appellant fails to address the Examiner’s finding that Mark’s perforation
pattern would provide “a reduced risk of tearing when folded” (Ans. 3). As
discussed supra, this reasoning properly supports combining the teachings of
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Crooks and Mark. We are also not persuaded the rejection is improper
because, as alleged by Appellant, “the examiner failed to make any findings
regarding the level of ordinary skill in the art.” App. Br. 11. Instead, we
determine that no express finding is necessary with regard to the level of
ordinary skill in the art, and that the level of ordinary skill in the art is
reflected by the prior art of record. See Okajima v. Bourdeau, 261 F.3d
1350, 1355 (Fed. Cir. 2001); In re GPACInc., 57 F.3d 1573, 1579 (Fed. Cir.
1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978).
Because the Examiner has provided appropriate reasoning for
modifying Crooks to incorporate the perforation pattern of Mark, their
combined teaching or suggesting the disputed limitation of claim 1, we do
not consider whether Mark’s perforation pattern is mere design choice. See
App. Br. 11-12.
For the reasons discussed supra, we are unpersuaded the Examiner
erred in rejecting claim 1 and, therefore, sustain the rejection.
2. Claim 4
The Examiner finds the claimed perforation-free space “large enough
such that the release liner does not tear when folded along the perforations
and used in an application machine” would have been obvious based on “the
combined teachings of Mark and Crooks [which] would provide a folded
advertising media that does not tear.” Final Act. 4. The Examiner further
finds “it would have been obvious ... to make the space any dimension
required to properly function for its intended use.” Final Act. 4—5. The
Examiner explains “where the general conditions of a claim are disclosed in
the prior art, discovering the optimum or workable ranges involves only
routine skill in the art.” Ans. 4 (citing In reAller, 105 USPQ 233 (CCPA
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1955)). Appellant argues “only recognized result-effective-variable[s] may
be optimized” and, because neither Crooks nor Mark disclose any problem
that would be addressed by perforations, the Examiner’s reliance on
optimization of perforation patterns is improper. App. Br. 12—13. The
Examiner responds, finding “the exact size of the free space is also
considered something that can be optimized by a user, to ensure that the
perforations still function to separate the labels while allowing smooth runs
through a labeling apparatus or while avoiding unintended tearing during
fan-folding.” Ans. 4.
Appellant’s argument is unpersuasive of Examiner error. Crooks
discloses perforations for promoting folding of a web or release liner as
depicted in the fanfold arrangement of Crooks’s Figure 6. As explained
supra, it is evident the release liner is not tom during the folding operation,
or else it would not constitute a “fan-fold stack” as described by Crooks.
Crooks 140. Thus, one skilled in the art would have understood the need to
optimize the perforation pattern to promote folding but avoid tearing.
Accordingly, we agree with the Examiner in finding the recited spacing is
taught or suggested by the combination of Crooks and Mark2 and we sustain
the rejection of claim 4.
3. Claim 5
Appellant’s arguments that the Examiner erred in rejecting claim 5
(App. Br. 14—15) substantially repeat those presented in connection with
claim 4 which arguments we find unpersuasive for the reasons supra. In
2 Should prosecution be continued, the Examiner may want to consider
whether defining the size of the perforation-free space on whether tearing
would occur when used in an application machine renders the claim
indefinite under 35U.S.C. § 112, second paragraph.
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connection with the numeric length value of about 0.25 inches as recited by
claim 5, Appellant presents no evidence of probative value that the claimed
value is critical. See In re Woodruff, 919 F.2d 1575, 1578 (Fed. Cir. 1990)
(where the difference between the claimed invention and the prior art is a
range or other variable within the claims, “the applicant must show that the
particular range is critical, generally by showing that the claimed range
achieves unexpected results relative to the prior art range”). Accordingly,
we are unpersuaded of Examiner error and sustain the rejection of claim 5.
4. Claims 2, 3, and 6—10
Although Appellant contends dependent “[cjlaims 2, 3, and 6-10 are
herein argued separately” (App. Br. 16), no separate arguments are
presented. Instead, Appellant asserts the dependent claims are allowable for
the reasons set for in connection with claim 1. Id. Finding those arguments
unpersuasive for the reasons discussed supra, we likewise sustain the
rejection of claims 2, 3, and 6—10.
B. Claim 11
Although Appellant contends dependent “[cjlaim 11 is herein argued
separately” (App. Br. 16), no separate arguments are presented. Instead,
Appellant asserts the dependent claims are allowable for the reasons set for
in connection with claim 1. Id. Finding those arguments unpersuasive for
the reasons discussed supra, we likewise sustain the rejection of claim 11.
C. Claims 12-14 and 18-23
1. Claim 12
Appellant’s arguments in connection with claim 12 (App. Br. 17—23)
are repetitive of those presented in connection with independent claim 1
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(App. Br. 6—12) and are unpersuasive for the reasons discussed supra.
Accordingly, we sustain the rejection of claim 12 for the same reasons.
2. Claim 13
Appellant’s arguments in connection with claim 13 (App. Br. 23—24)
are repetitive of those presented in connection with dependent claim 4 (App.
Br. 13—14) and are unpersuasive for the reasons discussed supra.
Accordingly, we sustain the rejection of claim 13 for the same reasons.
3. Claim 19
Appellant’s arguments in connection with claim 19 (App. Br. 24—25)
are repetitive of those presented in connection with dependent claim 4 (App.
Br. 13—14) and are unpersuasive for the reasons discussed supra.
Accordingly, we sustain the rejection of claim 13 for the same reasons.
4. Claims 14 and 18
Although Appellant contends dependent “[cjlaims 14 and 18 are
herein argued separately” (App. Br. 26), no separate arguments are
presented. Instead, Appellant asserts the dependent claims are allowable for
the reasons set for in connection with claim 12. Id. Finding those
arguments unpersuasive for the reasons discussed supra, we likewise sustain
the rejection of claims 14 and 18.
5. Claim 20 (App. Br. 26—32)
Appellant’s arguments in connection with claim 20 (App. Br. 26—32)
are repetitive of those presented in connection with independent claim 1
(App. Br. 6—12) and are unpersuasive for the reasons discussed supra.
Accordingly, we sustain the rejection of claim 20 for the same reasons.
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6. Claim 22
Appellant’s arguments in connection with claim 22 are repetitive of
those presented in connection with dependent claim 4 and are unpersuasive
for the reasons discussed supra. Accordingly, we sustain the rejection of
claim 22 for the same reasons.
7. Claim 23
Appellant’s arguments in connection with claim 23 (App. Br. 34—35)
are repetitive of those presented in connection with dependent claim 5 (App.
Br. 14—15) and are unpersuasive for the reasons discussed supra.
Accordingly, we sustain the rejection of claim 23 for the same reasons.
8. Claim 21
Although Appellant contends dependent “[cjlaim 21 is herein argued
separately” (App. Br. 35), no separate arguments are presented. Instead,
Appellant asserts the dependent claims are allowable for the reasons set for
in connection with claim 21. Id. Finding those arguments unpersuasive for
the reasons discussed supra, we likewise sustain the rejection of claim 21.
DECISION
We affirm the Examiner’s decision to reject claims 1—14 and 18—23.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED
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