Ex parte May et al.

Board of Patent Appeals and Interferences

Aug 23, 2000

08658014 (B.P.A.I. Aug. 23, 2000)

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(2) is not binding precedent of the Board.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. 28
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte GEOFFREY B. MAY, BRIAN F. DAVIS,
and WLADYSLAW L. NOWAK
_____________
Appeal No. 1998-1825
Application 08/658,014
______________
ON BRIEF
_______________
Before COHEN, FRANKFORT, and STAAB, Administrative Patent
Judges.
FRANKFORT, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the examiner's final
rejection of claims 8-13, which are all of the claims
remaining in this application. Claims 1-7 have been canceled.
Appeal No. 1998-1825
Application No. 08/658,014
2
Appellants' invention is directed to an apparatus for
producing packaging material which has an adhered teartape
disposed thereon which facilitates the opening of packages
wrapped in the packaging material, such as packs of cigarettes
and confectionery, and the like. The apparatus includes a
means for moving the packaging material and a dispenser for
supplying the teartape. The dispenser supplies the teartape
through a series of rollers 15 and 17 mounted on a first fixed
guide arm 13 and a second compensating guide arm 14, wherein
the teartape is led along a guide path through the rollers to
a location where the teartape is adhered to the packaging
material (i.e., at roller 50). As the teartape is drawn from
the reel 3 by the packaging material 51, the compensating arm
14 moves in accordance with the tension of the teartape. In
the event that the speed of the packaging material 51 moves
slower than the speed of the tape in the guide path, the
decrease in tension on the tape allows the compensating arm to
pivot downwardly about pin 16 under the influence of the
tension spring 19 to extend the length of the tape path, which
increases the tension on the teartape. The compensating arm
Appeal No. 1998-1825
Application No. 08/658,014
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14 also permits the brake pad 8 to engage spindle 2, which
supports the teartape reel, hence the speed of the tape is
thereby also decreased. In the event that the speed of the
packaging material 51 is greater than that of the teartape,
the tension in the tape path increases and causes the
compensating arm 14 to pivot upwardly against the action of
the spring 19 to reduce the length of the tape in the tape
path, which decreases the tension on the tape. The
compensating arm 14, then causes the brake pad 8 to become
disengaged from the spindle 2, whereby the torque motor 10 can
increase the speed of rotation of the spindle, and hence
increase the speed of the tape in the tape path.

Claim 8 is representative of the subject matter before us
on appeal and a copy of that claim is attached to this
decision.
The prior art references of record relied upon by the
examiner in rejecting claims 8-13 are:
Huck 3,097,844 Jul. 16,
1963
Appeal No. 1998-1825
Application No. 08/658,014
4
Martin 3,618,870 Nov. 9,
1971
Slezak 3,899,143 Aug. 12,
1975
Keilhack et al. 3,934,837 Jan. 27,
1976
(Keilhack)
Asar Madhu P. et al. 4,317,695 Mar. 2,
1982
(Asar)
Claims 8, 11 and 12 stand rejected under 35 U.S.C. §
103(a) as being unpatentable over Huck in view of Asar.
Claims 9 and 13 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over Huck in view of Asar as applied to
claim 8 above, and further in view of Martin or Slezak.
Claim 10 stands rejected under 35 U.S.C. § 103(a) as
being unpatentable over Huck in view of Asar and Martin or
Slezak as applied to claim 9 above, and further in view of
Keilhack.
Appeal No. 1998-1825
Application No. 08/658,014
5
Rather than attempt to reiterate the examiner's full
statement with regard to the above noted rejections and
conflicting viewpoints advanced by the examiner and appellants
regarding the rejections, we make reference to the final
rejection (Paper No. 22, mailed January 21, 1997) and the
examiner's answer (Paper No. 27, mailed December 29, 1997) for
the reasoning in support of the rejections, and to appellants'
brief (Paper No. 26, filed September 25, 1997) for the
arguments thereagainst.
OPINION
In reaching our decision in this appeal, we have given
careful consideration to appellants' specification and claims,
to the applied prior art references, and to the respective
positions as set forth by the appellants and the examiner.
Before addressing the examiner's rejection specifically,
we note that on page 4 of the brief, appellants indicate that
“[c]laims 8, 11 and 12 stand or fall together. Claims 9 and
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Application No. 08/658,014
6
13 stand or fall together. Claim 10 stands alone.” In
accordance with 37 CFR 1.192(c)(7), we have selected claims 8,
9 and 10 for consideration in this appeal and will decide the
issues on appeal based on these claims alone.
With regard to the examiner's rejection of claim 8 under
35 U.S.C. § 103(a) based on Huck in view of Asar, we find that
the examiner has failed to establish a prima facie case of
obviousness.
Huck discloses an apparatus for registering continuous
webs of sheet material (W , W , W and W ) wherein the plurality1 2 3 4
of webs are brought together at a station located past rollers
(30) in accurate register, each with one another. Each of
the webs is mounted on a separate roller (11). The web is
unwound and travels to rollers (22) and (23), respectively.
After passing roller (23), the web is guided around rollers
(26-30) to the station where it is collated with other webs
which have followed similar paths.
[F]loating roller 23 is effective to detect any
deviation from a predetermined value of tension in
the unwound web W and is correspondingly displaced1
Appeal No. 1998-1825
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clockwise or counterclockwise about the axis of
rockable shaft 25 . . . Thus, when the tension in
the web W exceeds the predetermined value, the speed1
of movement of belt 66 is increased and
correspondingly increases the speed at which the web
is unwound from the supply roll 11, thereby
restoring the desired value of web tension. On the
other hand, when an insufficient tension is detected
by floating roller 23, the speed of movement of belt
66 is decreased and correspondingly decreases the
speed at which the web W is unwound from roll 111
until the desired value of tension is restored in
the web (col. 6, lines 19-39).
Scanning head (95) and selector switch (99) compare
signals from respective register marks (R) on each web such
that when the register mark (R) of each web is ahead of its
correct position, reversible motor (90) is rotated to
effectively displace the register mark (R) in the direction
opposite to the travel of the web. If the register mark is
detected as lagging behind its correctly registered position,
the motor (90) is turned in the opposite direction in order to
restore the web to its proper position. When the web register
control acts to advance the web in response to register error,
there is a resulting increase in tension in the web between
the drive rollers (28 and 29) and supply roll (11) and this
increase is detected by floating roller (23) to cause an
Appeal No. 1998-1825
Application No. 08/658,014
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increase in speed at which the web is unwound from roll (11).
Conversely, the floating roller (23) causes a decrease in the
speed at which the web is unwound from the supply roll (11)
when the web control retards the web in response to a detected
register error (col. 9, lines 58-74).
Asar discloses a taping apparatus for applying sections
of plastic tape (36) to a strip stock of thin plastic film
(12). A supply reel (13) of film (12) is provided, wherein
the film is led through rollers (37, 38 and 41). A spring-
biased dancer arm (42) mounted to roll (41) pivots to shorten
or lengthen the film loop (12a) depending on the tension
exerted on the film. The film is then advanced to a taping
station (25) where tape (36) is fed transversely to the
direction in which the film travels by an applicator mechanism
(28 and 29), which secures a predetermined length of tape (36)
to an adjacent side of the film (12) while momentarily
stopped. The film, with spaced tapes secured thereto, is
further advanced to a take-up reel (14), which is
incrementally driven by motor 16. Asar further discloses "an
optional dynamic brake (or brake-functioning motor)
Appeal No. 1998-1825
Application No. 08/658,014
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32, . . . coupled to the pay-off reel 13" (col. 4, lines 26-
28). Both the drive motor (16) of take-up reel (14) and the
dynamic brake (32) coupled to pay-off reel (13) may be
operated in response to signals supplied from a control
circuit 33 (col. 4, lines 26-30).
It is the examiner's position that Huck "substantially
describes the claimed invention except for a braking means,
separate from the drive motor, for reducing the speed of
rotation of the reel in dependence on a reduction on web
tension" (answer, pg. 4). The examiner applies Asar to teach
that the rotation of a supply reel (13) is controlled by a
brake (32). The examiner also points out that Asar
additionally teaches guide means (37, 38 and 41) and a spring
biased dancer arm (42) which adjusts in response to a change
in web tension, and concludes that "[i]t would have been
obvious to one of ordinary skill to have provided a supply
reel brake [of Asar] with the apparatus taught by Huck, since
Huck teaches controlling the rate of rotation of a supply reel
to compensate for tension variations, and Asar recognizes the
desirability of employing a reel brake to control supply reel
Appeal No. 1998-1825
Application No. 08/658,014
10
rotation to compensate for changes in downstream web tension"
(answer, pg. 4). The examiner also states that "both Huck and
Asar are concerned with controlling the rate of rotation of a
supply reel in response to tension variation" (answer, pg. 8).
We do not agree with the examiner's position.
In the first place, we note that neither Huck nor Asar is
directed to an apparatus for producing packaging material
having teartape adhered thereto, wherein the teartape is an
oriented plastic material base film coated with a pressure
sensitive adhesive composition, and wherein the apparatus
comprises a means for moving the packaging material, and a
dispenser for applying the teartape at a controlled tension to
a location where the teartape is adhered to the moving
packaging material. Moreover, we observe that neither Huck
nor Asar discloses a brake means for reducing the speed of
rotation of a supply reel in dependence on reduction in
tension of a teartape (emphasis ours). The apparatus of Huck
does not disclose or require a brake since the belt (66)
controls the rate at which the web is unwound from the supply
Appeal No. 1998-1825
Application No. 08/658,014
11
roll (11). No brake per se is needed due to the interrelated
mechanisms that control the drive, supply and tension of the
web in Huck. Also, we understand the floating roller (23) of
this patent to be a tension adjustment mechanism, as opposed
to a tension responsive mechanism (col. 9, lines 58-74).
Therefore, the examiner turns to Asar for the teaching of a
brake means. However, the brake (32) of Asar is disclosed as
operating in response to signals supplied from a control
circuit (33), wherein the "brake . . . coupled to the pay-off
reel . . . facilitate[s] control over film tension, as well
as rapid stopping of the film" (col. 9, lines 47-51). This
statement by Asar clearly teaches that the tension in plastic
film (12) is in dependence on the brake, as opposed to the
operation of the brake being in dependence on the tension as
stated in appellants' claim 8 on appeal. In other words, in
the device of Asar, the brake controls the tension, instead of
the tension controlling the brake. Even when an optional
feed-back loop is used to determine the angular position of
the dancer arm, the feedback from the dancer arm "would allow
the braking motor to more closely track the instantaneous
speed of the drive motor and, thus provide more responsive and
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Application No. 08/658,014
12
uniform control over film tension" (col. 9, line 68-col. 10,
line 3). This statement by Asar further indicates that
tension is dependent on the brake, as opposed to the
operation of the brake being dependent on the tension of the
plastic film.
Given the foregoing discussion, we agree with the
appellants' argument that the apparatus for producing
packaging material having adhered a teartape thereto of
appellants' claim 8 would not have been obvious to one of
ordinary skill in the art based upon the teachings of Huck and
Asar. In determining the differences between the prior art
and the claims, the question under § 103 is not whether the
differences themselves would have been obvious, but whether
the claimed invention as a whole would have been obvious,
Stratoflex, Inc. V. Aeroquip Corp., 713 F.2d 1530, 1537, 218
USPQ 871, 877 (Fed. Cir. 1983). In our view, the claimed
invention as a whole has not been evaluated by the examiner.
Therefore, we conclude that the examiner used impermissible
hindsight in combining Huck and Asar to arrive at appellants'
Appeal No. 1998-1825
Application No. 08/658,014
13
claim 8 on appeal.
We also do not agree with the examiner's assertion that
appellants' recitation in the claims on appeal of "'support
means for receiving a reel of teartape so that the reel can
rotate as the tape is drawn from the reel by said moving
packaging material' relates to an intended method of using the
apparatus" (answer, pg. 7). The prior art must be capable of
performing this "means-plus-function" statement. We do not
find any capability in Huck or Asar, separately or combined,
which allows the supply reel to be rotated through the
movement of another web as appellants' "means-plus-function"
limitation dictates.
For the above reasons, we will not sustain the examiner's
rejection on independent claim 8 on appeal under 35 U.S.C.
§ 103(a) based on Huck in view of Asar.

As to claims 9 and 10, which depend directly and
indirectly from independent claim 8, we have reviewed the
patents to Martin, Slezak and Keilhack, additionally applied
Appeal No. 1998-1825
Application No. 08/658,014
14
in the rejection of these claims, but find nothing therein
which makes up for the deficiencies of Huck in view of Asar
noted above. Accordingly, the standing § 103(a) rejection of
these claims also cannot be sustained.
With regard to independent claims 11 and 12, we note that
these claims are directed to an apparatus for producing filmic
packaging material having a teartape adhered thereto (claim
11), and a dispenser for supplying a teartape (claim 12).
Both of these claims include limitations like those found in
claim 8 discussed above, i.e., a support means for receiving a
reel of the teartape so that the reel can rotate as tape is
drawn from the reel by said moving packaging material, and a
brake means provided to reduce the speed of rotation of the
reel depending on the tension of the tape. It follows from
our treatment of those limitations in claim 8 that we will
also not sustain the examiner's rejection of claims 11 and 12
under 35 U.S.C. § 103(a) based on Huck and Asar.
Claim 13 is dependent from claim 12 and includes all of
the limitations thereof. Accordingly, the standing § 103(a)
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Application No. 08/658,014
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rejection of this claims also cannot be sustained.
Therefore, the decision of the examiner to reject claims
8-13 under 35 U.S.C. § 103(a) is reversed.
REVERSED
IRWIN CHARLES COHEN )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
CHARLES E. FRANKFORT )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
Appeal No. 1998-1825
Application No. 08/658,014
A-1
)
LAWRENCE J. STAAB )
Administrative Patent Judge )
CEF:lmb
HARNESS, DICKEY & PIERCE
P.O. BOX 828
BLOOMFIELD HILLS, MI 48303
Appeal No. 1998-1825
Application No. 08/658,014
A-1
CLAIM 8
An apparatus for producing packaging material having
adhered thereto a teartape comprising an oriented
thermoplastic plastic material base film coated with a
pressure sensitive adhesive composition by means of which the
teartape is adhered to the packaging material which apparatus
comprises: (a) means for moving the packaging material and (b)
a dispenser for supplying the teartape at a controlled tension
to a location where the teartape is to be adhered to the
moving packaging material, which dispenser comprises a frame
carrying:
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A-1
(1) a support means for receiving a reel of the teartape
so
that the reel can rotate as tape is drawn from the
reel
by said moving packaging material,
(2) a guide means defining a tape path from the reel to
said location,
(3) a brake means for reducing the speed of rotation of
the
reel in dependence on a reduction in tension of the
teartape passing along said path, and
(4) a drive motor for the reel for increasing the speed
of rotation of the reel in dependence on an increase
in tension of the tape passing along said path.