Ex parte Langan

Board of Patent Appeals and Interferences

Aug 9, 1999

08078918 (B.P.A.I. Aug. 9, 1999)

Application for patent filed June 21, 1993. According to appellant, this application is a1
continuation-in-part of application Serial No. 07/912,851, filed July 13, 1992, now U.S. Patent No. 5,354,588
issued October 11, 1994.
1
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today (1) was not written for
publication in a law journal and (2) is not binding precedent of the Board.
Paper No. 12
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte JOSEPH W. LANGAN
_____________
Appeal No. 96-0031
Application No. 08/078,9181
______________
ON BRIEF
_______________
Before KIMLIN, PAK and SPIEGEL, Administrative Patent Judges.
KIMLIN, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal from the final rejection of claims 1-14. Claims 15-20, the other
claims remaining in the present application, stand withdrawn from consideration.
Appeal No. 96-0031
Application No. 08/078,918
2
Claims 1 and 2 are illustrative:
1. A stack of cut sheet linerless labels comprising:
a plurality of linerless labels, each label comprising a substrate having
first and second faces, a pressure sensitive adhesive substantially
completely covering said first face and a release coat substantially
completely covering said second face;
said pressure sensitive adhesive and release coat having an
adhesive force between them of between 0.001-1.2 oz/inch, when
peeling a one inch by six inch sample at a rate of twelve inches per
minute at a ninety degree angle, while being sufficiently tacky to hold
the labels together in a stack; and
said labels disposed in a stack with the pressure sensitive adhesive
of each label engaging the release coat of the next label below it.
2. A stack of cut sheet linerless labels as recited in claim 1 further
comprising a tie coat enhancing adherence of said pressure sensitive
adhesive to said substrate, said tie coat adhering to both said substrate first
face and said pressure sensitive adhesive.
In the rejection of the appealed claims, the examiner relies upon the following
references:
Keeling et al. (Keeling) 3,896,249 Jul. 22, 1975
Fickenscher et al. (Fickenscher) 4,851,383 Jul. 25, 1989
Appeal No. 96-0031
Application No. 08/078,918
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Encyclopedia Of Chemical Technology, Volume 16, "NOISE POLLUTION
TO PERFUMES", published 1981 by John Wiley & Sons (NY), pp. 785-792.
Appellant's claimed invention is directed to a stack of cut sheet linerless labels
wherein each label comprises a substrate having opposing first and second faces. A
pressure sensitive adhesive substantially covers the first face of the substrate, while a
release coat substantially covers the second face of the substrate.
Appealed claims 1, 6, 7, 10 and 14 stand rejected under 35 U.S.C. § 102(b) as
being anticipated by Keeling. Claims 1, 4, 5, 6, 10, and 12 stand rejected under 35
U.S.C. § 102(b) as being anticipated by Fickenscher. Claims 1, 6-10, 13 and 14 stand
rejected under 35 U.S.C. § 103 as being unpatentable over Keeling, while claims 1, 4-6, 8-
10, 12 and 13 stand rejected under 35 U.S.C. § 103 as being unpatentable over
Fickenscher. In addition, claims 2, 3, and 11 stand rejected under U.S.C. § 103 as being
unpatentable over either Keeling or Fickenscher in view of Encyclopedia Of Chemical
Technology.
At the outset, we must formally reverse the examiner's rejections of claims 2-5 and
11-14 inasmuch as we find that one of ordinary skill in the art could not reasonably
ascertain the scope of these claims. In re Steele, 305 F.2d 859, 862, 134 USPQ 292, 295
(CCPA 1962). In our view, claims 2-5 and 11-14 are indefinite since they do not
Appeal No. 96-0031
Application No. 08/078,918
4
further limit the claims upon which they ultimately depend. For instance, independent
claims 1 and 10 require that the opposing faces of the substrate be substantially,
completely covered with a pressure sensitive adhesive and a release coat, whereas
claims 2-5 and 11-14 recite the provision of different compositions between the pressure
sensitive adhesive and the substrate, as well as between the release coat and the
substrate. For example, claim 2 recites a tie coat between the substrate and the pressure
sensitive adhesive, and claim 4 provides for a thermosensitive layer between the substrate
and the release coat. Manifestly, since 35 U.S.C. § 112 requires that a dependent claim
"shall be construed to incorporate by reference all the limitations of the claim to which it
refers," and must "specify a further limitation of the subject matter claimed," it can not be
said that claims 2-5 and 11-14 further limit independent claims 1 and 10 and incorporate
the limitations therein pertaining to the pressure sensitive adhesive and release coat
substantially completely covering the opposing faces of the substrate.
We will not sustain the examiner's rejections of claims 1, 6, 7, 10 and 14 under 35
U.S.C. § 102(b) over Keeling. As urged by appellant, Keeling fails to disclose the claimed
requirement of a substrate having its first and second faces substantially
Appeal No. 96-0031
Application No. 08/078,918
5
completely covered with a pressure sensitive adhesive and a release coat, respectively.
Rather, Keeling requires that backing 1 have both its faces coated with a
release layer. Apparently, the examiner has not given full consideration to the claim
limitation that the faces of the substrate are covered with a pressure sensitive adhesive
and release coat. We will also not sustain the examiner's rejection under 35 U.S.C.
§ 103 over Keeling, taken alone, or in view of Encyclopedia Of Chemical Technology. The
examiner has not established a prima facie case of obviousness for the claimed subject
matter by setting forth a rationale why one of ordinary skill would have found it obvious to
modify the structure of Keeling to arrive at the claimed labels which have the opposing
faces of a substrate coated with a pressure sensitive adhesive and a release coating.
We will also not sustain the examiner's rejection of claims 1, 4, 5, 6, 10 and 12
under 35 U.S.C. § 102(b) as being anticipated by Fickenscher. As with the Keeling
reference, Fickenscher does not describe, within the meaning of §102, a substrate having
one face coated with a pressure sensitive adhesive and its opposing face coated with a
release coat. In Fickenscher, the release coat 32 is situated on the barrier layer 30, which
overlays thermosensitive layer 14. Clearly, Fickenscher fails to describe a release coat
substantially completely covering a face of the substrate as
Appeal No. 96-0031
Application No. 08/078,918
6
required by the appealed claims. Also, although this is not essential to our holding, we
concur with appellant that the examiner errs in finding that barrier layer 30 is a release
layer. Fickenscher fails to disclose any release function for the barrier layer, but rather
teaches that the barrier layer comprises a composition of a water soluble resin solution
which functions to prevent the silicon release layer from discoloring the thermosensitive
layer.
We will also not sustain the examiner's rejections under 35 U.S.C. § 103 over
Fickenscher, taken alone, or in combination with the Encyclopedia Of Chemical
Technology. The examiner has not established that it would have been obvious for one of
ordinary skill in the art to modify Fickenscher to substantially completely cover the face of
substrate 12 with release coating 32.
Under the provisions of 37 C.F.R. § 1.196(b), we enter the following new ground of
rejection. Claims 2-5 and 11-14 are rejected under 35 U.S.C. § 112. As explained above,
these claims are improper dependent claims insofar as they do not further limit the
independent claims upon which they ultimately depend. For example, we are unable to
ascertain the scope of claim 4 when it is read in conjunction with claim 1, upon which it
depends.
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Application No. 08/078,918
7
In conclusion, based on the foregoing, the examiner's rejections of the appealed
claims are reversed. A new ground of rejection has been entered under 37 C.F.R.
§ 1.196(b) of claims 2-5 and 11-14.
This decision contains a new ground of rejection pursuant to 37 C.F.R.
§ 1.196(b)(amended effective Dec. 1, 1997, by final rule notice, 62 Fed. Reg. 53,131,
53,197 (Oct. 10, 1997), 1203 Off. Gaz. Pat. & Trademark Office 63, 122 (Oct. 21, 1997)).
37 C.F.R. § 1.196(b) provides that, “A new ground of rejection shall not be considered final
for purposes of judicial review.”
37 C.F.R. § 1.196(b) also provides that the appellant, WITHIN TWO MONTHS
FROM THE DATE OF THE DECISION, must exercise one of the following two options with
respect to the new ground of rejection to avoid termination of proceedings (§ 1.197(c)) as
to the rejected claims:
(1) Submit an appropriate amendment of the claims so rejected or a
showing of facts relating to the claims so rejected, or both, and have the
matter reconsidered by the examiner, in which event the application will be
remanded to the examiner. . . .
(2) Request that the application be reheard under § 1.197(b) by the
Board of Patent Appeals and Interferences upon the same record. . . .
Appeal No. 96-0031
Application No. 08/078,918
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No time period for taking any subsequent action in connection with this appeal
may be extended under 37 C.F.R. § 1.136(a).
REVERSED
§1.196(b)
EDWARD C. KIMLIN )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
CHUNG K. PAK ) APPEALS AND
Administrative Patent Judge ) INTERFERENCES
)
)
)
CAROL A. SPIEGEL )
Administrative Patent Judge )
vsh
Appeal No. 96-0031
Application No. 08/078,918
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