Ex Parte Mosher,

Board of Patent Appeals and Interferences

Sep 27, 2001

08784180 (B.P.A.I. Sep. 27, 2001)

THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision entered today (1) was not written for publication in a law journal and (2)
is not binding precedent of the Board.
Paper No. 19
UNITED STATES PATENT AND TRADEMARK OFFICE
__________________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________________
Ex parte WALTER W. MOSHER, JR.
__________________
Appeal No. 1999-0758
Application 08/784,180
________________
ON BRIEF
________________
Before COHEN, FRANKFORT and STAAB, Administrative Patent Judges.
COHEN, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal from the refusal of the examiner to allow claims 1 through 3, all
of the claims remaining in the application, as amended subsequent to the final rejection.

Appellant’s invention pertains to an identification bracelet. A basic understanding
of the invention can be derived from a reading of exemplary claim 1, a copy of which
appears in the APPENDIX to the brief (Paper No. 16).
As evidence of anticipation and obviousness, the examiner has applied the
documents listed below:
Appeal No. 1999-0758
Application 08/784,180
2
Solon 4,991,337 Feb. 12, 1991
McKillip 5,145,211 Sep. 8, 1992
The following rejections are before us for review.
Claim 2 stands rejected under 35 U.S.C. § 112, second paragraph, as being
indefinite.
Claims 1 and 3 stand rejected under 35 U.S.C. § 102(b) as being anticipated by
Solon.
Claim 2 stands rejected under 35 U.S.C. § 103(a) as being unpatentable over
Solon in view of McKillip.
The full text of the examiner’s rejections and response to the argument
presented by appellant appears in the answer (Paper No. 17), while the complete
statement of appellant’s argument can be found in the brief (Paper No. 16).

Appeal No. 1999-0758
Application 08/784,180
1 In our evaluation of the applied prior art, we have considered all of the disclosure of each document
for what it would have fairly taught one of ordinary skill in the art. See In re Boe, 355 F.2d 961, 965, 148
USPQ 507, 510 (CCPA 1966). Additionally, this panel of the board has taken into account not only the specific
teachings, but also the inferences which one skilled in the art would reasonably have been expected to draw
from the disclosure. See In re Preda, 401 F.2d 825, 826, 159 USPQ 342, 344 (CCPA 1968).
3
OPINION
In reaching our conclusion on the issues raised in this appeal, this panel of the
board has carefully considered appellant’s specification and claims, the applied
teachings,1 and the respective viewpoints of appellant and the examiner. As a
consequence of our review, we make the determinations which follow.
The indefiniteness issue
We cannot sustain the rejection of claim 2 under 35 U.S.C. § 112, second
paragraph, as being indefinite.
This panel of the board fully comprehends the examiner’s well stated
assessment of the claim language at issue (answer, pages 3 and 4), but discerns that
claim 2 is definite in meaning for the reasons articulated below.
Appeal No. 1999-0758
Application 08/784,180
4
Claim 1 requires that, in an identification bracelet, there be an information storing
area on an elongated strip. The claim goes on to make it apparent that the information
storing area is “for the receipt of information”. Thus, the information storing area of the
bracelet is intended to receive and, accordingly, be capable of receiving information.
Claim 2, dependent from claim 1, further restricts the information storing area to one
intended to receive and be capable of receiving machine readable information. The
antecedent basis for the language of claim 2 is the recitation of “information” set forth in
claim 1. The circumstance that the antecedent basis in claim 1 appears in an intended
use “for” clause does not prevent the language of claim 2 from having an appropriate
antecedent basis, as indicated. Thus, we conclude that the language of claim 2 is not
indefinite and the rejection thereof under 35 U.S.C. § 112, second paragraph, is not
sound.
The anticipation rejection
We sustain the rejection of claims 1 and 3 under 35 U.S.C. § 102(b) as being
anticipated by Solon.
Like the examiner (answer, page 3), we find that the claimed identification
bracelet with “exposed pressure sensitive adhesive fastening means” (claim 1) on one
of the extremities of an elongated flexible strip is anticipated by the identification
Appeal No. 1999-0758
Application 08/784,180
5
bracelet of Solon. Clearly, the identification bracelet of Solon (Figs. 2 and 3), in use,
evidences “exposed pressure sensitive adhesive fastening means” 40, 46 when it is
being applied to the limb of a child, i.e., after conventional release liners 44, 50 have
been removed.
Appellant’s argument (brief, pages 10 through 13) fails to persuade us of error
on the part of the examiner in rejecting appellant’s claims 1 and 3 under 35 U.S.C.
§ 102(b). Contrary to appellant’s point of view (brief, page 12), Solon does, in fact,
teach “an essential element of the invention which is an exposed pressure sensitive
adhesive fastener”, as explained above. The circumstance that appellant does not
teach a conventional release liner and that Solon exemplifies conventional practice in
the manufacture of a bracelet with a removable release liner (brief, page 11) does in no
way detract from the fact that appellant’s claimed bracelet, when ready for application
to a user, corresponds identically to the bracelet of Solon, when ready for application to
a user. Thus, the examiner’s anticipation rejection is sound.
Appeal No. 1999-0758
Application 08/784,180
2 It is apparent to us that McKillip is basically being relied on for a teaching of what appellant has
already acknowledged in the background section of the specification (page 3), i.e., bar coding (machine
readable information) on an identification bracelet is a well known expedient in the art.
6
The obviousness rejection
Claim 2 stands rejected under 35 U.S.C. § 103(a) as being unpatentable over
Solon in view of McKillip
McKillip discloses an air baggage (identification) tag with (machine readable) bar
codes thereon (Fig. 1) and a release liner 22 covering an adhesive material. 2
In our opinion, it would have been obvious to one having ordinary skill in the art,
from a combined assessment of the teachings of Solon and McKillip, to utilize machine
readable information on the identification bracelet of Solon, following the suggestion
therefor derivable from the teaching of McKillip, to gain the art recognized and self-
evident advantages thereof.
We are not convinced by appellant’s argument (brief, pages 13 through 15) that
the rejection under 35 U.S.C. § 103(a) is unsound. Notwithstanding appellant’s
conclusion to the contrary (brief, page 13), we determined that the Solon document
teaches the claimed feature of an exposed pressure sensitive adhesive fastener, as
Appeal No. 1999-0758
Application 08/784,180
7
explained, supra. Further, and again contrary to appellant’s point of view (brief, page
15), we found ample suggestion in the applied prior art for the modification of the Solon
teaching to include machine readable information. Appellant’s focus (brief, pages 13
and 14) upon Solon’s method of manufacture vis-a-vis appellant’s method of
manufacture is simply misplaced since at issue in this appeal is the patentability of an
article of manufacture, i.e., an identification bracelet, not a process or method of
manufacture.
In summary, this panel of the board has not sustained the rejection based upon
35 U.S.C. § 112, second paragraph, but has sustained the respective rejections under
35 U.S.C. § 102(b) and 35 U.S.C. § 103(a).
Appeal No. 1999-0758
Application 08/784,180
8
The decision of the examiner is affirmed.
No time period for taking any subsequent action in connection with this appeal
may be extended under 37 CFR § 1.136(a).
AFFIRMED
IRWIN CHARLES COHEN )
Administrative Patent Judge )
)
) BOARD OF PATENT
CHARLES E. FRANKFORT ) APPEALS AND
Administrative Patent Judge ) INTERFERENCES
)
)
LAWRENCE J. STAAB )
Administrative Patent Judge )
ICC:yrt
Appeal No. 1999-0758
Application 08/784,180
9
cc: Thomas P. Mahoney
660 Newport Center Drive
Suite 710
Newport Beach, CA 92660