Ex Parte MAZINI et al

Patent Trial and Appeal Board

Jul 31, 2017

12777544 (P.T.A.B. Jul. 31, 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.
12/777,544 05/11/2010 Denis L. MAZINI P011183-LCH (003.0766) 4585
70422 7590
LKGlobal (GM)
7010 E. COCHISE ROAD
SCOTTSDALE, AZ 85253
EXAMINER
POWERS, LAURA C
ART UNIT PAPER NUMBER
1785
NOTIFICATION DATE DELIVERY MODE
08/02/2017 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):
docketing@lkglobal.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL
AND APPEAL BOARD
Ex parte DENIS L. MAZINI, ZACHARY A. ROMME,
D. LUCIA KLOSE, WILLIAM A. BIONDO,
FRANKIE K. THOMAS, and KEVIN W. SNIDER1
Appeal 2015-008170
Application 12/777,544
Technology Center 1700
Before BEVERLY A. FRANKLIN, N. WHITNEY WILSON and
JULIA HEANEY, Administrative Patent Judges.
FRANKLIN, Administrative Patent Judge.
DECISION ON APPEAL
1 Appellant identifies the real party in interest as GM Global Technology
Operations, LLC. App. Br. 3.
Appeal 2015-008170
Application 12/777,544
Appellants request our review under 35 U.S.C. § 134 of the
Examiner’s decision rejecting claims 1, 3—10, and 21—30. We have
jurisdiction over the appeal under 35 U.S.C. § 6(b).
STATEMENT OF THE CASE
Claim 1 is illustrative of Appellants’ subject matter on appeal and is
set forth below (with text in bold for emphasis):
1. A vehicle identification number (VEST) label, comprising:
an adhesive layer;
a self-destruct layer positioned on the adhesive layer;
a first facestock layer positioned on the self-destruct layer, the
first facestock layer having a first color;
a second facestock layer positioned on the first facestock layer
and defining a first window relative to the first facestock layer;
and
an indicia layer positioned over at least the first window of
the second facestock layer, the indicia layer including a
transparent portion and a printed portion, wherein the
printed portion is a second color outlining a first vehicle
identification number (VEST) relative to the transparent portion
such that the first vehicle identification number (VEST) is formed
by a contrast between the first color of the first facestock layer
exposed through the first window of the second facestock layer
and the second color of the printed portion.
THE REJECTIONS
1. Claims 1, 7—10, 21—23, and 25—30 are rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Muth et al. (WO 2009/056352 Al, pub.
May 7, 2009 (hereinafter “Muth”) (herein referencing the US equivalent US
2010/0295290 Al, pub. Nov. 25, 2010, for English translation)) in view
of Harvey et al. (US 2009/0304954 Al, pub. Dec. 10, 2009 (hereinafter
2
Appeal 2015-008170
Application 12/777,544
“Harvey”)) and Takeda et al. (WO 2009/013923 Al, pub. Jan. 29, 2009
(hereinafter “Takeda”) (herein reference the US equivalent US
2010/0189979 Al, pub. July 29, 2010, for English translation).
2. Claims 3, 4, and 24 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Muth, in view of Harvey and Takeda (as applied to claims
1, 7—10, 21—23, and 25—30), and further in view of Herrmann et al. (US
6,428,051 Bl, iss. Aug. 6, 2002 (hereinafter “Hermann”)).
3. Claim 5 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Muth, in view of Harvey and Takeda (as applied to claims 1, 7—10, 21—
23, and 25—30), and further in view of Jones et al. (US 2005/0067497, pub.
Mar. 31, 2005 (hereinafter “Jones”)).
4. Claim 6 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Muth, in view of Harvey and Takeda (as applied to claims 1, 7—10, 21—
23, and 25—30), and further in view of Hermann and Jones.
ANALYSIS
The dispositive issue in this case is whether the combination of Muth
in view of Harvey and Takeda suggests the claimed subject matter, and in
particular, the claimed element of “an indicia layer positioned over at least
the first window of the second facestock layer”.
Appellants argue that the indicia layer as taught by Muth is not
positioned over the first window of the second facestock layer as required by
claim 1.
The Examiner finds that Muth’s Figure 7 illustrates an equivalent
structure to the limitation "an indicia layer positioned over at least the first
window of the second facestock layer” because an indicia layer is formed on
3
Appeal 2015-008170
Application 12/777,544
Muth’s second polymer layer (“first facestock layer”) in an area that is
within the window formed in the first transparent polymer layer
(“second facestock layer”). Ans. 16—17, citing Muth || 1, 102—110, Fig. 1,
5, and 7.
The Examiner reasons that, while the limitation "positioned over" is a
structural limitation, the disclosed structure of Appellants’ Specification is
equivalent to the prior art when the laminate is assembled. Ans. 17. The
Examiner also states that whether the indicia layer is applied to the
window exposed portion of the first facestock layer before the second
facestock layer is applied, as in Muth, or after the second facestock layer is
applied, as in the instant application, it results in the same final structure of
indicia being present on a first facestock layer within a window formed in
the second facestock layer and thus meets the limitation, “positioned over,”
in the same manner. Id.
We disagree with the Examiner’s stated position for the reasons stated
by Appellants in the record. Appeal Br. 17—19. Reply Br. 4—6. As
Appellants reiterate on pages 4—6 of the Reply Brief, Figure 1 of Muth
shows (reproduced below) shows passport photo 6 (“indicia layer”) is not
positioned over the window 4 in the first transparent polymer layer 1
(“second facestock layer”). The passport photo 6 is positioned on the second
polymer layer 2 (“first facestock layer”) or underneath window 4 of the first
transparent polymer layer 1 (“second facestock layer”).
4
Appeal 2015-008170
Application 12/777,544
FiOi 1 Moth
*
.A second facestock layer
l first faeasteek layer
indicia layer is not
over the window
of the second
facestock layer.
As shown by Muth’s annotated Figure 1 (above), the indicia layer is
not positioned over the first window of the second facestock layer, as
required by claim 1. We agree with Appellants that the “indicia layer” and
“second facestock layer” in Muth are reversed as compared to that recited in
claim 1.
In the Examiner’s response to argument, the Examiner presents
further arguments, each of which is addressed below.
On pages 15—16 of the Examiner’s Answer, the Examiner discusses
the various layers as purportedly described in Appellants’ Specification.
The Examiner states: “[i]n the window or cut-out areas of the second
facestock layer, there is no second facestock layer present; therefore, any
additional layers that are placed within the windows or cut-outs will be
formed on the portions of the gray first facestock layer that underlies the
second facestock layer and not on the second facestock layer itself.”
We agree with Appellants’ position that this interpretation by the
Examiner is not accurate. Reply Br. 5. As Appellants explain, the
Specification discusses the indicia layer 280 being placed on and over the
second facestock layer 240. As a result of the windows in the
second facestock layer 240, a portion of the indicia layer 280 does, in fact,
5
Appeal 2015-008170
Application 12/777,544
contact the first facestock layer 230, e.g., to form the VEST 110. Reply Br. 5.
Appellants explain that the Specification does not state that the indicia layer
is not on the second facestock layer 240, as suggested by the Examiner. To
the contrary, Appellants refer to their Figure 2 which depicts indicia layer
280 being coextensive with the other layers of the label, and not just in the
windows (as suggested by the Examiner). Id. Appellants explain that thus,
in practice, the indicia layer 280 covers the window of the second facestock
layer 240, and the remaining portions of the second facestock layer 240.
Appellants explain that 134 of the Specification states: “[t]o an observer, the
indicia layer [280] overlaps the black [second] facestock layer 240 to form a
solid black label 100, except for the gray [first] facestock layer 230 visible
through the indicia layer 280 that forms the VIN 100 and other identifying
indicia 130, 140, 150, 160, 170, 180 illustrated by FIG. 1.” Id.
As such, we agree that the Specification explicitly states that the
indicia layer overlaps the second facestock layer, contrary to the Examiner’s
position that the indicia layer is not over or on the second facestock layer.
On page 17 of the Examiner’s Answer, the Examiner states: “[t]he
limitation being argued forms the layer structure of the label, and while the
limitation ‘positioned over’ is a structural limitation that has been
considered, it does appear that the disclosed structure of the
instant specification is equivalent to the prior art when the laminate is
assembled.” We agree with Appellants that this interpretation by the
Examiner uses an incorrect reading of the Specification that results in
ignoring a limitation recited in the claims. Claim 1 recites that the indicia
layer is “positioned over” the second facestock layer, and for the reasons
provided by Appellants in the record (highlighted, supra), we agree with
6
Appeal 2015-008170
Application 12/777,544
Appellants that Muth fails to disclose this limitation, contrary to the
Examiner’s stated position.
In view of the above, we reverse Rejection 1. Because Rejections 2-4
are premised on the same deficient findings, we also reverse those rejections.
DECISION
Each rejection is reversed.
ORDER
REVERSED
7