Ex Parte Maule et al

Board of Patent Appeals and Interferences

Jul 28, 2009

11479917 (B.P.A.I. Jul. 28, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte ALAN MAULE and JERRY HODSDON
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Appeal 2009-002464
Application 11/479,917
Technology Center 1700
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Decided:1 July 28, 2009
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Before BEVERLY A. FRANKLIN, LINDA M. GAUDETTE, and
MICHAEL P. COLAIANNI, Administrative Patent Judges.

GAUDETTE, Administrative Patent Judge.

DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
decision finally rejecting claims 1 and 11 (Final Office Action (“Final”),

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, begins to run from the Decided Date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).

Appeal 2009-002464
Application 11/479,917

mailed Jul. 6, 2007). (Reply Brief (“Rep. Br.”), filed Dec. 18, 2007, 2.)2
We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
Claim 1 is illustrative of the subject matter on appeal, and is
reproduced from the Claims Appendix to the Appeal Brief:
1. A label sheet assembly, comprising:

a facestock having a first side and an opposed second side, the
facestock comprising a conformable material; and

a release liner adhered to the second side of the facestock;

wherein the facestock includes a plurality of cuts therein extending
from the first side to the second side, the plurality of cuts comprising a
plurality of straight line cuts and a plurality of curved line cuts that define a
perimeter of a conformable label for a portable electronic device and a
facestock matrix, the plurality of cuts further defining a plurality of tie lines
formed on a leading edge of the facestock tying the conformable label to at
least a portion of the facestock matrix.

Appellants requests review of the rejection of claims 1 and 11 under
35 U.S.C. § 102(e) as anticipated by Trigg, US 2006/0062953, published
Mar. 23, 2006. (App. Br. 8; Rep. Br. 2.)

2 Claims 3-10, 12-14, 16, and 17 also stand finally rejected and are
identified as appealed claims. (Final 1; Appeal Brief (“App. Br.”), filed Sep.
20, 2007, 4; Paper 20080825.) However, Appellants have not specifically
requested review of the grounds of rejection pertaining to these claims. (See
App. Br. 1 and 8; Rep. Br. 2-3.) Therefore, we treat these claims as
withdrawn from appeal. See Ex parte Ghuman, 88 USPQ2d 1478, 1480
(BPAI 2008). The Examiner is authorized to cancel the non-appealed claims
upon return of the Application to the jurisdiction of the Examiner. Id.

2
Appeal 2009-002464
Application 11/479,917

Appellants contend that Trigg cannot anticipate the claimed invention
because Trigg fails to disclose the use of tie lines as claimed. (App. Br.
11:22 – 12:2.) The Examiner does not dispute Appellants’ assertion that
Trigg does not expressly disclose tie lines. (See generally, Examiner’s
Answer (“Ans.”), mailed Oct. 18, 2007, 4-6.) Rather, the Examiner
maintains that “[i]t would have been obvious to one of ordinary skill in the
art at the time the applicant's invention was made to have provided the tie
cuts in combination with the die cuts in Trigg in order to keep a label in
place as taught by Chess.” (Ans. 5.) Chess (US 5,324,153; issued Jun. 28,
1994) is listed in the Evidence Relied Upon by the Examiner (Ans. 2), but is
not included in a statement of rejection. (See generally, Final & Ans.)
The issue presented for our review is: have Appellants shown
reversible error in the Examiner’s finding that Trigg discloses a facestock
which includes a plurality of tie lines as recited in claims 1 and 11?
We answer this question in the affirmative for the reasons explained
below.
“To anticipate a claim, a prior art reference must disclose every
limitation of the claimed invention, either explicitly or inherently.” In re
Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997). Although additional
references may be used to confirm the contents of the allegedly anticipating
reference, anticipation does not permit an additional reference to supply a
missing claim limitation. Studiengesellschaft Kohle, m.b.H. v. Dart Indus.,
Inc., 726 F.2d 724, 726-27 (Fed. Cir. 1984); see also, In re Baxter Travenol
Labs., 952 F.2d 388, 390 (Fed. Cir. 1991) (noting that other references or
extrinsic materials may be cited in the rejection to explain an element in the
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Appeal 2009-002464
Application 11/479,917

cited prior art reference, as long as they are not used to expand on the
teachings of the primary reference).
In order to establish anticipation, the Examiner has relied on an
additional reference, Chess, to supply a missing claim element, i.e., tie lines,
in Trigg. Because the Examiner did not find that Trigg, alone, discloses
every limitation of claims 1 and 11, the Examiner failed to set forth a prima
facie case of anticipation. Accordingly, we cannot sustain the rejection of
claims 1 and 11 under 35 U.S.C. § 102(e) as anticipated by Trigg.
The decision of the Examiner rejecting claims 1 and 11 is reversed.
The Examiner is authorized to cancel non-appealed claims 3-10, 12-14, 16,
and 17.

REVERSED

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