Ex Parte Spina

Board of Patent Appeals and Interferences

Apr 10, 2003

09238553 (B.P.A.I. Apr. 10, 2003)

1
The opinion in support of the decision being entered today was
not written for publication and is not binding precedent of the
Board.
Paper No. 20
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte THOMAS N. SPINA
__________
Appeal No. 2003-0059
Application 09/238,553
___________
ON BRIEF
___________
Before GARRIS, OWENS and TIMM, Administrative Patent Judges.
OWENS, Administrative Patent Judge.
DECISION ON APPEAL
This appeal is from the final rejection of claims 1-12.
Claim 13, which is the only other claim in the application,
stands withdrawn from consideration by the examiner as being
directed toward a nonelected invention.
THE INVENTION
The appellant’s claimed invention relates to “a label
assembly having multiple layers, one such layer susceptible to
receiving printed information by direct thermal transfer, that
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Application 09/238,553

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layer being removable from the label assembly after attachment to
a substrate, leaving no tacky surface and a substantially
transparent surface to enable one to read printing on the
underlying substrate” (specification, page 1, lines 10-15).
Claim 1 is illustrative:
1. A continuous roll of labels comprising:
a length of backing web;
a sheet of paper stock material reactive to a heat source
for the development of an indicia in said paper stock material,
said paper stock material having coating layers applied thereto
comprising:
a first coating layer comprising a sealant layer applied to
the underside of said paper stock material, said sealant layer
formed by drying an adhesive to said underside of said paper
stock materials;
a second coating layer overlaying said sealant layer, said
second coating layer being cured silicone;
a third coating layer overlaid said cured silicone layer,
said third layer being a cured layer of varnish;
a pressure sensitive adhesive layer overlaid said varnish
layer, said pressure sensitive adhesive layer adjacent said
backing web;
said first coating layer comprising a sealant being non-
reactive with said paper stock material and said second coating
layer so as to permit said paper stock material to develop said
indicia from said heat source, said second coating layer and said
third coating layer being substantially incompatible such that
said second and third coating layer separate from one another
when said labels, applied to a surface, are pulled therefrom but
have shear and tensile strength therebetween greater than the
tensile strength between said pressure sensitive adhesive layer
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whereby said label can be first separate from said backing web
and then applied to articles, and thereafter removed from said
articles leaving said adhesive layer and said third coating layer
on said articles.
THE REFERENCES
Eckberg et al. (Eckberg) 5,369,205 Nov. 29, 1994
Freedman (Freedman ‘165) 5,914,165 Jun. 22, 1999
(filed Jul. 29, 1996)
THE REJECTION
Claims 1-12 stand rejected under 35 U.S.C. § 103 as being
unpatentable over Freedman ‘165 in view of Eckberg.
OPINION
We reverse the aforementioned rejection.
Freedman ‘165 discloses a peelable label comprising, in
order, an optional release liner (the appellant’s backing web), a
pressure sensitive adhesive (14), a first polymeric layer (11)
(preferably polyethylene) and a second polymeric layer (12)
(preferably polypropylene) which is dissimilar to the first
polymeric layer (col. 3, lines 1-3, 13-14, 41-42, 47-48 and 53-
54). “The films [layers 11 and 12] adhere to each other to a
sufficiently high degree to withstand the maximum separation
forces imposed as the labels are processed. However, the films
adhere to each other to a sufficiently low degree to allow them
to cleanly and readily separate from each other under the
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imposition of stripping or separation forces greater than the
maximum separation forces to which they have been exposed during
label preparation” (col. 2, lines 26-34). At least the second
layer has a tear propagation axis, such as a perforation, so that
a part of the layer containing information such as price can be
torn off, leaving a removable second portion of the layer
containing other information such as a product bar code (col. 1,
lines 61-65; col. 2, lines 46-57). An edge or portion of the
second layer can be coated with a UV curable material such as an
ink or varnish which shrinks upon exposure to UV radiation,
thereby breaking the bond at the interface between the first and
second layers such that these layers can be more easily pulled
apart (col. 5, lines 27-34).
Freedman ‘165 incorporates by reference (col. 2, lines 34-
36) U.S. Pat. No. 4,925,714 to Freedman (Freedman ‘714) which
discloses peelable labels which include two polymeric films (11
and 12) (col. 2, lines 15-20; col. 5, lines 48-50) that are
comparable to those of Freedman ‘165. The second polymeric film
of Freedman ‘714 has thereon a layer of pressure sensitive
adhesive (22) having permanently laminated thereto a layer of
indicia-containing face stock (30) which can be any suitable
conventional face stock material from any source, the disclosed
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materials being paper and polymer (col. 3, line 53 - col. 4,
line 3).
As argued by the appellant (brief, page 7), each of the
appellant’s independent claims requires that the paper stock
material is reactive to a heat source for developing indicia in
the paper stock material. The examiner argues that this
requirement relates to a method of production and, therefore,
cannot serve to patentably distinguish the claimed product
(answer, page 5). The reactivity to a heat source for the
development of indicia, however, is a characteristic of the paper
stock material which is part of the claimed product. Thus, the
examiner’s argument is not well taken. The lack of an
explanation as to why the applied prior art would have fairly
suggested, to one of ordinary skill in the art, a paper stock
material which is reactive to a heat source for the development
of indicia is a fatal deficiency in the examiner’s rejection.
Moreover, the examiner argues (answer, page 4) that it would
have been obvious to one of ordinary skill in the art to make the
Freedman ‘165 second layer out of Eckberg’s UV curable
epoxysilicone polymer because Freedman ‘165 discloses using
UV curable material to break the bond at the interface between
the first and second polymer layers (col. 5, lines 27-34) and
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Eckberg teaches that the epoxysilicone polymer has release
properties (col. 1, lines 38-42). Freedman ‘165, however,
requires that the first and second polymer layers have a
sufficiently high degree of adherence to each other to withstand
the maximum separation forces imposed as the labels are processed
(col. 2, lines 26-29). The disclosed polymers for obtaining that
adherence are polyolefins (col. 3, lines 13-44). The UV curable
material is applied to only a portion or edge of the second layer
to facilitate peeling (col. 5, lines 27-34). The examiner has
not established that a second layer made of epoxysilicone polymer
would provide the required degree of adherence to the first
polymer layer.
Also, Freedman ‘165 discloses that the UV curable material,
which is applied to the second layer, shrinks upon exposure to
UV radiation, thereby pulling up the edge of the label and
breaking the bond between the first and second polymer layers
(col. 5, lines 27-34). The appellant’s independent claims
require that the silicone layer and the varnish layer are
separable from each other when labels containing these layers are
pulled from a surface. Thus, to establish a prima facie case of
obviousness of the appellant’s claimed invention over
Freedman ‘165 and Eckberg, the examiner has the burden of
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establishing both of the following: 1) that one of ordinary skill
in the art would have expected the Freedman ‘165 UV curable
varnish, when applied to a second layer made of Eckberg’s
epoxysilicone, to function as required by Freedman ‘165, i.e., to
adhere to the second layer and, when exposed to UV radiation,
bend up the edge of the label, and 2) that the UV curable varnish
and epoxysilicone polymer layer would be separable from each
other when a label containing these layers is pulled from a
surface as required by the appellants’ claims. The examiner has
not carried this burden.
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DECISION
The rejection of claims 1-12 under 35 U.S.C. § 103 over
Freedman ‘165 in view of Eckberg is reversed.
REVERSED
)
BRADLEY R. GARRIS )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
TERRY J. OWENS )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
CATHERINE TIMM )
Administrative Patent Judge )
TJO/ki
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