Ex Parte Schuller

Board of Patent Appeals and Interferences

Jun 28, 2010

10389474 (B.P.A.I. Jun. 28, 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 ROBERT J. SCHULLER
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Appeal 2009-013699
Application 10/389,474
Technology Center 1700
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Decided: June 28, 2010
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Before CHARLES F. WARREN, CATHERINE Q. TIMM, and
STEPHEN WALSH, Administrative Patent Judges.

TIMM, Administrative Patent Judge.

DECISION ON APPEAL
I. STATEMENT OF CASE
Appellant appeals under 35 U.S.C. § 134 from the Examiner’s
decision to reject claims 44, 45, and 50 under 35 U.S.C. § 103(a) as
unpatentable over Hewitt (US 5,578,797; issued Nov. 26, 1996) in view of
Mori (EP 0 362 075; published Apr. 4, 1990), Birkholz (US 4,895,747; Jan.
23, 1990), Dunsirn (US 4,479,838; issued Oct. 30, 1984), and Smith (US
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4,977,006; issued Dec. 11, 1990). We have jurisdiction under 35 U.S.C.
§ 6(b).
We AFFIRM.
Appellant’s invention relates to label structures used by in-store
printer mechanisms, such as an in-store scale, that include labels to be
applied to products for increased marketing and promotional opportunities
(Spec. 1:4-8). Claim 45 is illustrative: 1
45. A supply of labels for use in pricing products and
distributing coupons, comprising:
a liner including a release surface;
a plurality of labels removably attached to the release
surface of the liner such that the labels are separate from each
other and arranged in a manner to provide exposed areas of the
release surface between the labels, each label including a pre-
printed coupon bar code located at a rear side thereof, the pre-
printed coupon bar code faces toward the release surface of the
liner, the rear side of each label contacting the release surface of
the liner, the pre-printed coupon bar code relating to a
predetermined product, each label including a front side with a
region for having product and price information printed
thereon, the region includes an associated thermal layer for
producing visible indicia responsive to heat, wherein placement
of the pre-printed coupon bar code at the rear side of each label
prevents scanner confusion of the pre-printed coupon bar code
with any product pricing bar code later printed on the front
surface of the label;
wherein the liner and labels are formed into a roll;

1 As the copy of claim 45 reproduced in the Claims Appendix of the Brief
contains errors, we reproduce the claim as presented in the Amendment of
March 6, 2008.
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wherein each label includes at least one separation line to
divide the label into at least a coupon part and a product pricing
part, on the coupon part the rear side includes the pre-printed
coupon bar code and has an adhesive layer over which a
deadening layer is applied to render the coupon part non-
adhesive, on the product pricing part the front side includes the
region and the rear side is adhesive.
Appellant’s arguments are directed to the limitations of claim 45 (Br.
4-7). Therefore, we decide this Appeal on the basis of representative
independent claim 45.
II. DISPOSITIVE ISSUE
The dispositive issue on appeal arising from the contentions of
Appellant and the Examiner is: does the evidence support the Appellant’s
view that the Examiner erred in finding that the limitations of claim 45 are
suggested by the combined teachings of Hewitt, Mori, Birkholz, Dunsirn,
and Smith? We answer this question in the negative.
III. DISCUSSION
We adopt the Examiner’s findings in the Answer as our own and add
the additional findings of fact appearing below for emphasis.
Appellant initially asserts that the combination of Hewitt, Mori,
Birkholz, Dunsirn, and Smith does not teach a coupon bar code at the rear
side of each label to prevent scanner confusion (Br. 4). We disagree. The
Examiner reasonably concludes that “[i]t would have been an obvious
modification to one ordinary skill in the art . . . to pre-print Hewitt’s coupon
or advertisement, including a coupon barcode, on either side of the
detachable portion of the label, because both sides are non-tacky and
visually available for bearing coupon information, as taught by Dunsirn,
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motivated by the desire to be able to fully use all the available printing
spaces, such as providing more printing space for advertisement on the front
side of a small detachable coupon portion.” (Ans. 5). The Examiner has
provided a sound reason for the proposed combination, and Appellant has
provided no persuasive evidence or argument to support finding the
Examiner’s position untenable. Appellant’s arguments are directed to the
individual teachings of the references (Br. 4-6; Reply Br. 2-4), and fail to
address the particular reasoning set forth in the Examiner’s rejection. One
cannot show nonobviousness by attacking references individually where the
rejections are based on combinations of references. In re Merck & Co., Inc.,
800 F.2d 1091, 1097 (Fed. Cir. 1986).
Further, Appellant notes that Dunsirn fails to recognize the problem of
scanner confusion (Br. 6). However, in an obviousness analysis, the
problem examined is not the specific problem solved by the invention but
the general problem that confronted the inventor before the invention was
made. In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006). “[A]ny need or
problem known in the field of endeavor at the time of invention and
addressed by the patent can provide a reason for combining the elements in
the manner claimed.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 420
(2007). .
Appellant next challenges the Examiner’s combination of Hewitt and
Smith as teaching the rear part having “an adhesive layer over which a
deadening layer is applied to render the coupon part non-adhesive” as recited
in claim 45 (Br. 6). The Examiner concludes that “[i]t would have been an
obvious modification to one ordinary skill in the art to make Hewitt’s label
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with well known transparent adhesive and deadener on the back side of the
detachable coupon portion” (Ans. 5).
Appellant contends that Smith teaches away from a deadener portion
as part of a dispensed label since Smith’s deadener portion remains on the
label roll after dispensing the label and that it is inappropriate to modify
Hewitt’s label by adding a dispensed label with a deadener portion, since it
is not disclosed or suggest by Smith (Reply Br. 5). We disagree.
“The combination of familiar elements according to known methods
is likely to be obvious when it does no more than yield predictable results.”
KSR, 550 U.S. at 416. The question to be asked is “whether the
improvement is more than the predictable use of prior art elements according
to their established functions.” KSR, 550 U.S. at 417. Using an adhesive
and deadener to render the rear side of the coupon portion of Hewitt non-
sticky is no more than the predictable use of a deadener according to its
established function as described by Smith, i.e., to render a portion of the
adhesive non-sticky (Smith, col. 8, ll. 38-41).
Smith does not teach away from the claimed invention, since there is
nothing in the teachings of Smith to discourage one of ordinary skill in the
art from using an adhesive and deadener, rather than an adhesive and
backing as taught by Hewitt, to render non-sticky the rear side of the coupon
portion of Hewitt’s label. See In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir.
2004) (explaining “[t]he prior art’s mere disclosure of more than one
alternative does not constitute a teaching away from any of these alternatives
because such disclosure does not criticize, discredit, or otherwise discourage
the solution claimed”).
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Appellant next challenges the Examiner’s combination of Hewitt and
Birkholz as teaching “a plurality of labels removably attached to the release
surface of the liner such that the labels are separate from each other and
arranged in a manner to provide exposed areas of the release surface
between the labels” and “the liner and labels are formed into a roll” as
recited in claim 45 (Br. 7). In particular, Appellant contends that there is a
teaching away because there is no reason to combine Hewitt, in which the
liner (backing) stays with the coupon part of the label, with Birkholz, which
teaches releasing a label (sheet member) from a liner while retaining an
adhesive layer on the label (Br. 7). We disagree.
Appellant’s arguments fail to address the particular reasoning set forth
in the Examiner’s rejection. Appellant’s arguments are directed to the
concept of using a liner with an adhesive label in the first instance. Yet,
Hewitt already teaches the adhesive/liner combination when it teaches
retaining a backing (liner) on the coupon portion to render it non-sticky
(Hewitt, col. 5, ll. 4-6 and 8-9). The Examiner relies on Birkholz for the
particular arrangement of using a plurality of labels separated on a liner with
exposed release surface between the labels and the liner and labels formed
into a roll (Ans. 4). The Examiner concludes that “[i]t would have been
obvious to one of ordinary skill in the art to construct Hewitt’s printable
label roll with the label/liner arrangement taught by Birkholz, motivated by
the desire to obtain convenience of using the labels” (Ans. 4) (emphasis
added). The Examiner has provided a sound reason for the proposed
combination, and Appellant has provided no persuasive evidence or
argument to support finding the Examiner’s position untenable.
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Further, Hewitt does not teach away from the claimed combination
since there is nothing in the teaching to criticize, discredit, or otherwise
discourage using its labels with the liner/label arrangement of Birkholz. See
Fulton, 391 F.3d at 1201.
Finally, Appellant argues that the Examiner did not provide any
reason for combining the teachings of Mori with Hewitt, but instead, on
page 3 of the Final Office Action, gave an alleged reason for combining
Mori with Treleaven (Br. 7). The Examiner points out in the Answer that
“Treleaven” was a typographical error and clarifies that the intended
combination was Mori with Hewitt (Ans. 6). As the error was rectified in
the Answer and Appellant had an opportunity to respond to the correct
reasoning in the Reply Brief, the error was harmless.
The evidence as a whole supports the Examiner’s conclusion that
claim 45 would have been obvious to one of ordinary skill in the art having
the combined teachings of Hewitt, Mori, Birkholz, Dunsirn, and Smith.
IV. CONCLUSION
On the record before us2 and for the reasons discussed above, we
sustain the rejection maintained by the Examiner.
V. DECISION
We affirm the Examiner’s decision.
VI. TIME PERIOD FOR RESPONSE

2Only those arguments actually made by Appellant have been considered in
this decision. Arguments which Appellant could have made but chose not to
make have not been considered and are deemed to be waived. See 37 C.F.R.
§ 41.37(c)(1)(vii) (2008).
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No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED

cam

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