Ex Parte MedleyDownload PDFPatent Trial and Appeal BoardDec 20, 201613194844 (P.T.A.B. Dec. 20, 2016) Copy Citation 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. 13/194,844 07/29/2011 KEITH MEDLEY 025815.011206/1 1729 20230 7590 12/22/2016 Vorys, Sater, Seymour and Pease LLP 1909 K St., NW 9th Floor WASHINGTON, DC 20006-1152 EXAMINER CHANG, VICTOR S ART UNIT PAPER NUMBER 1788 NOTIFICATION DATE DELIVERY MODE 12/22/2016 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): patlaw @ vorys. com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte KEITH MEDLEY Appeal 2015-0063611 Application 13/194,8442 Technology Center 1700 Before WESLEY B. DERRICK, JEFFREY W. ABRAHAM, and CHRISTOPHER L. OGDEN, Administrative Patent Judges. OGDEN, Administrative Patent Judge. DECISION ON APPEAL Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s decision3 finally rejecting claims 1—19 in the above-identified application. We have jurisdiction pursuant to 35 U.S.C. § 6(b). We REVERSE. 1 Appeal 2015-006248 in parent U.S. Patent Application No. 10/579,786, from which this application is a continuation-in-part, was the subject of Appeal 2015-006248, decided Nov. 28, 2016. The timely notification, Appeal Br. 1, Feb. 5, 2015, of the related appeal is noted with appreciation. 2 According to Appellant, the real party in interest is Magnum Magnetics Corporation. Appeal Br. 1. 3 Office Action, Dec. 4, 2014 [hereinafter Final Action], Appeal 2015-006361 Application 13/194,844 BACKGROUND Appellant’s claimed invention “relates to providing a system for improved magnetic label-stock.” Spec. 1:18—19. An embodiment is depicted in Figure 3, which is reproduced below: Figure 3 is a drawing “illustrating a coil of the magnetic label-stock tape” according to one embodiment of the invention. Id. at 9:21—22. According to the Specification, “[w]hen magnetic label-stock tape 101 is coiled for shipping, distribution, etc.,. . . lateral edges 110 of the magnetic labels 108 preferably substantially coincide with lateral edges 106 of flexible substrate 102. Consequently, lateral edges 106 of flexible substrate 102 are preferably largely protected from damage in handling and use.” Id. at 9:23—28. Claim 1 is representative of the claims on appeal: 1. A magnetic label-stock system, relating to damage protection of lateral edges of magnetic label-stock used in at least one labeling machine in adhering at least one flexible 2 Appeal 2015-006361 Application 13/194,844 magnet to at least one object, providing magnetic attraction to the at least one object, comprising: a) at least one magnetic label structured and arranged to provide magnetic attraction to the at least one object when adhered to the at least one object; b) at least one label carrier structured and arranged to carry at least one plurality of said at least one magnetic labels through the at least one labeling machine; c) wherein said at least one magnetic label comprises at least one adherer structured and arranged to adhere magnetic label to the at least one object and to adhere magnetic label to said at least one label carrier before adhesion to the at least one object; d) wherein said at least one label carrier comprises i) at least one adhesion releaser structured and arranged to permit release of adhesion of said at least one magnetic label from said at least one label carrier, permitting adhesion to the at least one object, and ii) at least one carrier geometry comprising (1) a width, (2) a length greater than said width, and (3) two lateral edges running said length; e) wherein said at least one magnetic label further comprises at least one spanning geometry structured and arranged to substantially span said width of said at least one label carrier; and f) wherein said two lateral edges are reinforced by said at least one magnetic label against damage. Appeal Br. 16 (emphasis and indentation added). Claim 11 is also independent. See id. at 17—18. However, the Examiner makes no separate findings or conclusions regarding claim 11. See Final Action 5. The Examiner maintains the following grounds of rejection: 1. Claims 1, 9—11, 18, and 19 are rejected under 35 U.S.C. § 103(a) as being unpatentable over admitted prior art (APA) in view of James K. Knudsen, U.S. Patent No. 4,098,935 (issued July 4, 1978) [hereinafter Knudsen]. Final Action 2—5. 3 Appeal 2015-006361 Application 13/194,844 2. Claims 2—8 and 12—17 are rejected under 35 U.S.C. § 103(a) as being unpatentable over the APA in view of Knudsen and Yukio Yamada, U.S. Patent No. US 6,762,504 B1 (issued July 13, 2004). Final Action 5—6. DISCUSSION The Examiner describes the APA as follows: Thin flexible magnetic labels are commonly distributed in com merce as attachments to substrates such as paper, cardboard and the like. The magnetic labels are supplied with a conventional thin flexible release tape with the magnets arranged sequentially thereon. The magnetic labels have a pressure-sensitive adhesive coating on the side facing the release tape. The release tape may be a synthetic resin web, such as polyethylene, polypropylene, or polyester. The tape has a release surface which allows the adhe sive magnet to be easily removed therefrom. The release tape may be treated with a silicone to provide release properties. Final Action 3. According to the Examiner, the APA does not teach that “the magnetic labels and the release tape (label carrier) have substantially matched widths in the transverse direction of the release tape,” but the Examiner finds that Knudsen teaches these limitations. Id. at 3^4. Knudsen is directed to “label tape, suitable for application to vulcanizable articles to provide identification of said articles after vulcanization has been completed.” Knudsen 1:7—10. Figure 1 is reproduced below: 4 Appeal 2015-006361 Application 13/194,844 / Figure 1 shows a cross-section of a label tape 10, which includes a release liner 12 and a series of labels 14, 16, and 18, which are attached to various layers, including a pressure sensitive adhesive 24, a layer of magnetic recording material 26, and printed indicia 30. Id. at 2:37—53. The Examiner finds that “Knudsen relates to a magnetic identification label tape.” Final Action 3^4. The Examiner also finds that the drawing of Knudsen clearly shows that “the widths of the labels are the same as the width of the release tape (labels have a dimension in transverse direction substantially equal to transverse dimension of release liner).” Answer 8. Thus, according to the Examiner, the relative dimensions required by claim 1 may be characterized as “latent properties” of the stock tape disclosed in 5 Appeal 2015-006361 Application 13/194,844 Knudsen. See Answer 7—8. In light of the above findings, the Examiner concludes as follows: It would have been obvious to one of ordinary skill in the art to likewise form a label tape of APA with the same structural fea tures taught by Knudsen, motivated by the desire to obtain the same beneficial effect of forming a roll for storage and transport and of being unwound in condition for printing, and/or applica tion for the same end uses as the claimed invention. Final Action 4. We are not persuaded that the Examiner has sufficiently articulated a prima facie case for rejecting claim 1. The claim requires that the magnetic label is “structured and arranged to provide magnetic attraction to the at least one object when adhered to the at least one object.” Appeal Br. 16. The Examiner acknowledges that the type of label described in Knudsen, in which the magnetic part is a recordable medium, is different from the magnets required by claim 1, which are capable of magnetic attraction to an object. See Final Action 6—8.4 However, the Examiner’s rejection of claim 1 does not establish that a person of ordinary skill in the art would have had reason to produce a stock tape according to claim 1, with attractive magnets, using the process described in Knudsen. It is not enough that a person of ordinary skill in the art could have made the magnetic label-stock system of claim 1, because “obviousness 4 Although the Examiner does not separately discuss claim 11, see Final Action 5, we interpret claim 11 as having this same limitation. The preamble of claim 11 describes the claimed process as relating to “adhering at least one flexible magnet to at least one object, providing magnetic attraction to the at least one object.” Appeal Br. 17—18. This preamble phrase clearly imposes a structural limitation on the system defined by claim 11, and defines the “magnetic label” as a magnet distinct from the magnetic identification label described by Knudsen. 6 Appeal 2015-006361 Application 13/194,844 concerns whether a skilled artisan not only could have made but would have been motivated to make the combinations or modifications of prior art to arrive at the claimed invention.” Belden Inc. v. Berk-TekLLC, 805 F.3d 1064, 1073 (Fed. Cir. 2015). The only motivation provided by the Examiner for combining the latent features of Knudsen with the APA is “the desire to obtain the same beneficial effect of forming a roll for storage and transport and of being unwound in condition for printing, and/or application for the same end uses as the claimed invention.” Final Action 4. However, this motivation does not specifically relate to the relative dimensional features of claim 1. Thus, absent some other teaching in the art, there is not a sufficient basis for a person of ordinary skill in the art to include the structural features at issue. For the above reasons, the Examiner reversibly erred in rejecting claim 1. For the same reasons, the Examiner reversibly erred in rejecting independent claim 11. The Examiner’s stated grounds for rejecting dependent claims 2—10 and 12—19 do not remedy this error. Thus, we reverse the Examiner’s decision to reject claims 1—19. DECISION The Examiner’s decision is reversed. REVERSED 7 Copy with citationCopy as parenthetical citation