Ex Parte Medley

Patent Trial and Appeal Board

Nov 28, 2016

10579786 (P.T.A.B. Nov. 28, 2016)

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.
10/579,786 01/12/2011 Keith Medley 025815.011206 3971
20230 7590 11/30/2016
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
11/30/2016 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 MEDLEY1
Appeal 2015-006248
Application 10/579,786
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 final
decision2 rejecting claim 1 in the above-identified application. We have
jurisdiction pursuant to 35 U.S.C. § 6(b).
We AFFIRM.
1 According to Appellant, the real party in interest is Magnum Magnetics
Corporation. Appeal Br. 1, Dec. 23, 2014.
2 Office Action, Sept. 22, 2014 [hereinafter Final Action],
Appeal 2015-006248
Application 10/579,786
BACKGROUND
Appellant’s claimed invention “relates to magnetic labels and more
particularly to a stock material for applying magnetic labels to a substrate.”
Spec. 11. 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 of
the invention.” Id. 111. “The stock tape 100 includes a flexible translucent
substrate 102, which has a release surface at least on the upper surface 104
on which the magnetic labels 108 are carried.” According to the
Specification,
The magnetic labels 108 have a dimension in the lateral direction
of the tape 102, i.e., at right angles to the longitudinal direction
of the tape 102, that is generally equal to the width of the tape in
the lateral direction. Accordingly, the labels are sized to extend
substantially to the lateral edges 106 of the tape 102. Conse­
quently, the relatively thin and delicate edges 106 of the tape 102
are supported along most of their length by the lateral edges 110
of the magnetic labels 108. This tends to prevent crushing, dis­
tortion, or tearing of the tape substrate 102 when a coil of the
stock material 100 is distributed and handled.
Id. 115.
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Appeal 2015-006248
Application 10/579,786
Claim 1 is the sole claim on appeal:
1. A stock tape for applying magnetic labels to a
substrate comprising
a translucent tape having a longitudinal direction and a
transverse direction and a dimension in said transverse
direction, and having at least one major release surface,
a plurality of magnetic labels, each of said magnetic
labels having at least one major surface at least partially
covered with a pressure sensitive adhesive, said labels being
fixed on said release surface by means of said pressure-
sensitive adhesive,
said labels being spaced in said longitudinal direction by
a distance sufficient to permit transmission of an optical signal
through said tape between said magnetic labels,
at least some of said magnetic labels having a dimension
in said transverse direction substantially equal to said
transverse dimension of said translucent tape.
Appeal Br. 12 (emphasis added).
The Examiner rejects claim 1 under 35 U.S.C. § 103(a) as being
unpatentable over admitted prior art (APA) in view of U.S. Patent No.
4,098,935 (issued July 4, 1978) [hereinafter Knudsen], Final Action 2-4.
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.
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Appeal 2015-006248
Application 10/579,786
Final Action 2. According to the Examiner, the APA does not teach that “the
magnetic labels and the release tape have a substantially matched dimension
in the transverse direction of the release tape,” but the Examiner finds that
Knudsen teaches these limitations. Id. at 3.
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:
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
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Application 10/579,786
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. The Examiner also finds that the drawing of
Knudsen clearly shows that “the widths of the labels are the same wi[d]th as
the release tape (labels have a dimension in transverse direction substantially
equal to transverse dimension of release liner).” Answer 6. 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 3.
Appellant argues that neither the APA nor Knudsen teaches or
suggests a solution to the problem solved by the invention, which includes
preventing the tape edges adjacent to the magnets on the roll from being
“bent, crushed or tom in the course of handling and mounting the roll on a
label dispenser.” Appeal Br. 4. In particular, Appellant argues that
“Knudsen is silent with respect to any advantage or improvement in
stmcture or function obtained by having the transverse dimension of labels
14, 16 and 18 coextensive with the transverse edges of the release liner 12 as
appears to be shown in the figure,” id. at 6, and does not refer to the
dimensions of the tape label, see Reply Br. 2, or indicate that the feature has
any significance, see Appeal Br. 7—8. According to Appellant, the
dimensions of labels 14, 16, and 18 in comparison to release liner 12 are
“simply an artifact of the web coating, die-cutting and slitting process used
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Application 10/579,786
to make tape 10 as shown.” Id. Further, Appellant argues that the tape
described in the APA is already wound in roll form, so the Examiner’s stated
motivation for combining Knudsen with the APA does not constitute an
improvement over the APA. See Appeal Br. 8; see also Reply Br. 4—5.
Appellant also argues that Knudsen is not analogous to the APA. See
Appeal Br. 5—6, 9-11; Reply Br. 1—5. According to Appellant, the labels
described in Knudsen are not “magnetic labels” as required by the claim.
See Reply Br. 2. While the labels in Knudsen contain a magnetic recording
material 26 that may be read by a magnetic pickup head, Appellant argues
that the Knudsen labels are not “magnetic labels” because the recording
material does not “cause the labels 14, 16, and 18 to be magnetically
attached to a metal surface by a magnetic force, as is the case with the
magnets of the APA.” Appeal Br. 5—6. Appellant argues that the Examiner
has not shown that a stock tape containing magnetic labels (assuming the
above definition) could have been made by the process disclosed by
Knudsen. See Reply Br. 2-4.
Appellant’s arguments do not persuade us that the Examiner erred in
rejecting claim 1. We give claims their broadest reasonable interpretation
consistent with the specification. In re Translogic Tech. Inc., 504 F.3d 1249,
1256 (Fed. Cir. 2007). According to the Specification, the magnetic labels
108 of the invention “may be any conventional flexible magnetic label.
Such labels are made from suspensions of magnetizable material, e.g., an
appropriate ferrite, dispersed in a flexible synthetic resin or rubber binder,
and subsequently magnetized.” Spec. 112. This description of a magnetic
label is consistent with Knudsen’s description of magnetic recording layer
26 as containing “a major proportion of magnetizable particles and a minor
proportion of a polymeric binder.” Knudsen 2:4—6; see also id. at 4:61—5:26.
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Application 10/579,786
While the Specification refers to “flexible magnets for supporting papers and
the like,” Spec. 12, it also refers to “[t]hin flexible magnetic labels” and
refers generally to “thin flexible magnetic articles,” id. These descriptions
are not explicitly limited to magnetic labels that are capable of being
attached to a metal surface by a magnetic force. Thus, we determine that the
broadest reasonable interpretation of the phrase magnetic labels includes the
type of magnetic identification labels disclosed by Knudsen.
Because Knudsen relates to creating stock tapes for magnetic labels, it
is within the same field of endeavor as claim 1, and is therefore analogous
art. See In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004) (art is analogous if
it “is from the same field of endeavor, regardless of the problem addressed”).
Independently of whether Knudsen is in the same field of endeavor,
Knudsen is also analogous art because it is “reasonably pertinent to the
particular problem with which the inventor is involved,” id., which
according to Appellant is the problem of protecting the edges of the roll from
being bent, distorted, or tom. See Appeal Br. 2. The problem addressed by
claim 1 is not restricted only to magnetic labels that may be attached to a
metal surface by a magnetic force, but may also apply to any other type of
magnetic label, such as that described by Knudsen. Thus, we are not
persuaded of reversible error in the Examiner’s finding that Knudsen is an
analogous reference.
We also find no reversible error in the Examiner’s stated reasons why
a person of ordinary skill in the art would have combined the teachings of
Knudsen with the APA. As the Examiner correctly finds, claim 1 is not
limited by the process steps used in forming the claimed stock tape. See
Answer 4. If a technique “has been used to improve one device, and a
person of ordinary skill in the art would recognize that it would improve
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Application 10/579,786
similar devices in the same way,” then applying the technique to improve
similar devices is obvious when it is within that person’s skill. KSR Int’l Co.
v. Teleflex Inc., 550 U.S. 398, 417 (2007). A person of ordinary skill in the
art would have had reason to combine the APA with the teachings of
Knudsen, by using the same or similar manufacturing process to that of
Knudsen, which results in a stock tape in which the label widths are
substantially equal in the transverse dimension to the widths of the tape. We
have considered Appellant’s argument that Knudsen did not explicitly
recognize that the stock tape formed by the process disclosed in Knudsen
has the benefit of protecting the tape from being bent, distorted or tom
during handling or use. However, “[i]t is not invention to perceive that the
product which others had discovered had qualities they failed to detect.”
Gen. Elec. Co. v. Jewel Incandescent Lamp Co., 326 U.S. 242, 249 (1945).
Because there was a reason for a person of ordinary skill in the art to
combine the teachings of Knudsen with the APA to produce a stock tape
with the relative dimensions required by claim 1, it does not matter whether
or not Knudsen recognized the advantage of this arrangement that Appellant
recognized.
For the above reasons, we affirm the Examiner’s decision to reject
claim 1.
DECISION
The Examiner’s decision is affirmed.
No time period for taking any subsequent action in connection with
this appeal maybe extended. See 37 C.F.R. § 1.136(a)(l)(iv) (2013).
AFFIRMED
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