Ex Parte SchullerDownload PDFBoard of Patent Appeals and InterferencesJun 28, 201010389474 (B.P.A.I. Jun. 28, 2010) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES ____________________ Ex parte ROBERT J. SCHULLER ____________________ Appeal 2009-013699 Application 10/389,474 Technology Center 1700 ____________________ Decided: June 28, 2010 ____________________ 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 Appeal 2009-013699 Application 10/389,474 2 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. Appeal 2009-013699 Application 10/389,474 3 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, Appeal 2009-013699 Application 10/389,474 4 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 Appeal 2009-013699 Application 10/389,474 5 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”). Appeal 2009-013699 Application 10/389,474 6 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. Appeal 2009-013699 Application 10/389,474 7 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). Appeal 2009-013699 Application 10/389,474 8 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 BROOKS KUSHMAN P.C. 1000 TOWN CENTER TWENTY-SECOND FLOOR SOUTHFIELD MI 48075 Copy with citationCopy as parenthetical citation