Ex Parte Plummer

Board of Patent Appeals and Interferences

Mar 1, 2010

11187103 (B.P.A.I. Mar. 1, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte SEAN A. PLUMMER
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Appeal 2009-003111
Application 11/187,103
Technology Center 1700
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Decided: March 1, 2010
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Before ALLEN R. MACDONALD, Vice Chief Administrative Patent Judge,
CHUNG K. PAK, and MARK NAGUMO, Administrative Patent Judges.

NAGUMO, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2009-003111
Application 11/187,103

A. Introduction1
Sean A. Plummer (“Plummer”) timely appeals under
35 U.S.C. § 134(a) from the final rejection2 of claims 1, 2, 4, 6, 11, 12,
and 14, which are all of the pending claims. We have jurisdiction under
35 U.S.C. § 6. We REVERSE.
The subject matter on appeal relates to jewelry tags and jewelry tag
substrates. According to Plummer, printed matter applied by thermal
printers is easily degraded by wear and by conventional ultrasonic or steam
cleaning processes, and the attachment of tags to jewelry via opaque shanks
is unsightly. To ameliorate these problems, Plummer protects the printed
portion of tags with clear lamination folded over the printed portions of the
label, and clear shanks attached to the label that are said to be less visible
than standard opaque shanks.
The independent claims, claims 1 and 11, are representative and read:
1. A jewelry tag substrate comprising:
a liner;
a clear face stock having a print side and an adhesive
side,
said liner disposed proximate said adhesive side so
as to support said face stock;

1 Application 11/187,103, Jewelry Tag Substrate, filed 23 July 2005,
claiming the benefit under 35 U.S.C. § 119(e) of a provisional application
filed 24 July 2004. The real party in interest is listed as Sean A. Plummer.
(Appeal Brief, filed 1 May 2008 (“Br.”), 3.)
2 Office action mailed 13 November 2007.
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Appeal 2009-003111
Application 11/187,103

an adhesive disposed between said liner and said face
stock,
said liner and said adhesive adapted so that when
portions of said face stock are separated from said
liner, said adhesive adheres to said adhesive side;
a plurality of jewelry tags die cut from said face
stock so that
each of said jewelry tags have a flap and a
shank extending from a corresponding label
and so that
said flap is configured to fold over and
laminate at least a portion of said
corresponding label after removal of each of
said jewelry tags from said liner; and
a printable top coat applied in zones across said print
side corresponding to said labels.
(Claims App., Br. 10; indentation, paragraphing, and emphasis added.)
11. A jewelry tag substrate comprising:
a release liner;
an adhesive disposed on said release liner;
a face stock disposed on said adhesive;
a top coat disposed on said face stock; and
a jewelry tag die cut from said face stock having a label,
a shank extending from said label,
a flap extending from said label, and
a fold line defined in said face stock between said
flap and said label,
wherein after said jewelry tag is removed from said face
stock along said die cut,
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Appeal 2009-003111
Application 11/187,103

said flap folds along said fold line and onto said label as
said jewelry tag moves from an un-laminated position to
a laminated position.
(Claims App., Br. 11; indentation, paragraphing, and emphasis added.)
The Examiner has maintained the following grounds of
rejection:3
A. Claims 1, 2, 4, 6, and 11 stand rejected under
35 U.S.C. § 102(e) in view of Riley.4
B. Claims 12 and 14 stand rejected under 35 U.S.C. § 103(a) in
view of Riley.
Plummer contends that the Examiner erred in rejecting claim 1
because, inter alia, Riley does not disclose a clear face stock for the
embodiment shown in Figure 9, and Riley does not disclose a printable top
coat applied in zones across the face stock. (Br. 6.) The Examiner’s
reliance on the structures shown in Figures 1-3 is inappropriate, according to
Plummer, because the latter embodiments are distinct, and Riley does not
teach or suggest using the laminating layers covering the face stock in
Figures 1-3 in the labels shown in Figure 9. (Id.) Regarding claim 11,
Plummer contends the Examiner erred in finding that Riley teaches a fold
line in the face stock. (Id. at 7.)
Plummer’s objections are well supported by Riley. The wrist-band
embodiment shown in Figure 9, on which the Examiner relies, does not have
a clear face stock. Rather, the face stock is described as “bond or the like.”

3 Examiner’s Answer mailed 28 May 2008.
4 James R. Riley, Thermal Wristband/Cinch with Inboard Label Assembly
Business Form and Method, U.S. Patent 7,222,448 B2 (29 May 2007), based
on an application filed 23 December 2003.
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Appeal 2009-003111
Application 11/187,103

(Riley, col. 12, ll. 28-29). While it might be possible to show that a
transparent material would have been regarded as an equivalent to “bond or
the like,” the Examiner has rejected the claims under § 102, not under § 103.
Moreover, the Examiner has not come forward with credible evidence that a
person having ordinary skill in the art would have understood the disclosure
of “bond or the like” to be a description of a clear face stock, as required by
claim 1. Furthermore, as pointed out by Plummer, Riley does not describe
the use of “a printable top coat applied in zones across said print side
corresponding to said labels.” The Examiner’s reliance on the distinct
embodiment shown in Figures 1-3 is not persuasive of anticipation. Thus,
we REVERSE the rejection of claim 1 as anticipated because every
limitation is not described by Riley.
As for claim 11, Riley states that “[t]he laminating portion 114 is then
folded together to enclose the printed face stock region.” (Riley, col. 13,
ll. 13-14.) Neither the written description nor Figure 9 supports the
Examiner’s finding that the fold line described by Riley is “defined in said
face stock between said flap and said label,” as required by claim 11. Thus,
we REVERSE the rejection of claim 11 as anticipated by Riley.
The Examiner relies on further disclosures of Riley for evidence that
the rejected dependent claims are anticipated or, in the case of claims 12
and 14, that the further-limited subject matter would have been obvious.
Those further disclosures do not correct the errors underlying the rejection of
the independent claims. Accordingly, we REVERSE the rejections of the
remaining claims as well.
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Appeal 2009-003111
Application 11/187,103

D. Order
We REVERSE the rejection of claims 1, 2, 4, 6, and 11 under
35 U.S.C. § 102(e) in view of Riley.
We REVERSE the rejection of claims 12 and 14 under
35 U.S.C. § 103(a) in view of Riley.
REVERSED

tc

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