Ex Parte Thorpe

Board of Patent Appeals and Interferences

Jul 27, 2009

11080915 (B.P.A.I. Jul. 27, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte DARLA THORPE
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Appeal 2009-002999
Application 11/080,915
Technology Center 1700
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Decided:1 July 27, 2009
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Before CATHERINE Q. TIMM, KAREN M. HASTINGS, and
JEFFREY B. ROBERTSON, Administrative Patent Judges.

TIMM, Administrative Patent Judge.

DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s
decision rejecting claims 1-18. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, begins to run from the Decided Date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).
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Application 11/080,915

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I. STATEMENT OF THE CASE
The invention relates to strips of transparent colored adhesive material
for highlighting printed text and a container for storing and distributing the
strips. (Spec. 3-4). Claim 1 is illustrative of the subject matter on appeal:
1. An apparatus comprising:
a first strip of material having a front surface and a rear surface, with
an adhesive located on the rear surface:
wherein the first strip of material is transparent, elongated, and
colored;
and wherein the first strip of material can be placed over printed
text, wherein the printed text is printed on a tangible medium, so that
the printed text can be seen through the first strip of material, and the
rear surface of the first strip of material adheres to the tangible
medium; and
further comprising a container for storing and distributing the first
strip of material;
and further comprising a second strip of material having a front
surface and a rear surface, with an adhesive located on the rear surface;
wherein the second strip of material is transparent, elongated, and
colored;
and wherein the second strip of material can be placed over printed
text, wherein the printed text is printed on a tangible medium, so that the
printed text can be seen through the second strip of material, and the rear
surface of the second strip of material adheres to the tangible medium: and
wherein
the container includes a first compartment in which is located the first
strip of material and a second compartment in which is located the second
strip of material;
and wherein the first strip of material is a different color from the
second strip of material.
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The Examiner relies on the following prior art references to show
unpatentability:
Schleicher US 4,238,272 Dec. 9, 1980
Goldstein US 4,735,342 Apr. 5, 1988
Sala et al. (“Sala”) US 4,913,946 Apr. 3, 1990
Voorhees US 5,098,817 Mar. 24, 1992
DeSena US 5,193,106 Mar. 9, 1993
Hellenbrand US 5,358,113 Oct. 25, 1994
Fusselman US 5,707,482 Jan. 13, 1998
The Examiner maintains the following rejections:
1. Claims 1, 2, 8, 10, 11, and 17 rejected under 35 U.S.C. 103(a) as
obvious over Sala in view of DeSena and Goldstein;
2. Claims 3, 4, 6, 7, 12, 13, 15, and 16 rejected under 35 U.S.C.
103(a) as obvious over Sala in view of DeSena and Goldstein, as applied to
claims 1, 2, 8, 10, 11, and 17 above, and further in view of either
Hellenbrand or Schleicher;
3. Claims 5 and 14 rejected under 35 U.S.C. 103(a) as obvious over
Sala in view of DeSena, Goldstein, and either Hellenbrand or Schleicher,2 as
applied to claims 3, 4, 6, 7, 12, 13, 15, and 16 above, and further in view of
Voorhees; and
4. Claims 9 and 18 rejected under 35 U.S.C. 103(a) as obvious over
Sala in view of DeSena and Goldstein, as applied to claims 1, 2, 8, 10, 11,
and 17 above, and further in view of Fusselman.

2 In the “Grounds of Rejection to be Reviewed on Appeal” section of
Appellant’s Brief, Appellant fails to include Hellenbrand or Schleicher in
this rejection (Br. 14). We consider this harmless error since Appellant’s
arguments reflect Appellants’ knowledge that these references are included
in the rejection (see Br. 18).
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II. FIRST REJECTION
Regarding the first rejection, Appellant first presents arguments with
respect to claim 1 (Br. 14-16).
A. ISSUE ON APPEAL
The Examiner has relied upon Sala to teach the claimed highlighting
adhesive tape and DeSena and Goldstein to teach the claimed container
(Ans. 3 and 5-6). The Examiner has determined that one of ordinary skill in
the art would have combined these teachings to arrive at the claimed
invention (Ans. 3 and 6). Appellant contends that this reasoning is flawed
because a person of ordinary skill in the art would not combine teachings
directed towards highlighting adhesive tape with teachings directed to
containers for dispensing “medical devices” (Br. 16).
Thus, the sole issue on appeal arising from the contentions of
Appellant and the Examiner is: has Appellant shown that the Examiner
erred in determining that one of ordinary skill in the art would have
combined the highlighting adhesive tape of Sala with a container for
dispensing alternative types of rolled materials as taught by DeSena and
Goldstein?
B. FACTUAL FINDINGS
The following Findings of Fact (FF) are relevant to deciding the
above identified issue on appeal:
1. Sala teaches that the disclosed highlighter adhesive tape is
made up into reels in a manner analogous to normal adhesive tape (Sala, col.
2, ll. 41-42).
2. DeSena teaches a container (dispenser 4) for dispensing
multiple rolls of pressure sensitive adhesive medical tape onto which a
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flexible radiopaque material is affixed. The type of pressure sensitive tape
may be any such tapes well known in the field. (DeSena, col. 4, ll. 32-51;
Figure 3b.)
3. Goldstein discloses a container (dispenser 20) for dispensing
packaged rolls of bandage strips disposed in end-to-end relation, with a
plurality of areas 40, each for housing a roll of bandage strips (Goldstein,
col. 2, ll. 7-13 and 35-38; col. 3, ll. 49-51; Figure 3).
C. PRINCIPLES OF LAW
“On appeal to the Board, an applicant can overcome a rejection by
showing insufficient evidence of prima facie obviousness or by rebutting the
prima facie case with evidence of secondary indicia of nonobviousness.”
In re Kahn, 441 F.3d 977, 985-86 (Fed. Cir. 2006) (emphasis omitted).
“The combination of familiar elements according to known methods
is likely to be obvious when it does no more than yield predictable results.”
KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007). 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.
D. ANALYSIS
As evidence of obviousness, the Examiner has directed us to two
known dispensers used to dispense reeled or rolled materials (FF 2-3). The
suitability of these dispensers for dispensing the reeled tape taught by Sala
(FF 1) would have been no more than using the known dispensers according
to their established functions of dispensing rolled or reeled materials in a
predictable manner. One of ordinary skill in the art would have expected
success in using these containers with the highlighting adhesive tape taught
by Sala because Sala teaches that the adhesive tape reels are analogous to
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conventional adhesive tape reels (FF 1). Appellant has failed to persuade us
that the type of material on the rolls or reels would have discouraged such a
combination. Thus, Appellant has not shown that the Examiner erred in
determining that one of ordinary skill in the art would have combined the
highlighting adhesive tape of Sala with a container for dispensing alternative
types of rolled materials as taught by DeSena and Goldstein.
Appellant asserts that claims 2-5, 8, and 9 are allowable for the same
reasons as claim 1 (Br. 16). Accordingly, Appellant has further failed to
show that the Examiner erred with respect to these dependent claims.
Regarding claim 10, Appellant provides no arguments for
patentability other than the arguments presented above for claim 1, and
Appellant asserts that claims 11-14, 17, and 18 are allowable for the same
reasons as claim 10 (Br. 17). Accordingly, we sustain the Examiner’s first
rejection.
III. REMAINING REJECTIONS
With respect to claims 3, 5, and 9, representing the remaining
rejections, Appellant does not address the Examiner’s specific positions
articulated in the rejections or explain why these positions are deficient. For
example, with respect to claim 3, Appellant argues that “Hellenbrand and
Schleicher do not disclose first and second slots, each having a sharp edge
for cutting a single strip of material” (Br. 18). Yet, the Examiner has clearly
relied upon DeSena and Goldstein as teaching a container with multiple slots
and Hellenbrand or Schleicher as teaching the use of a cutting edge for each
slot (Ans. 4 and 7). Appellant further asserts that neither Voorhees nor
Fusselman disclose first and second strips of material of different colors
provided from a container (Br. 19). Again, the Examiner has clearly relied
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on the combined teachings of Sala, DeSena, and Goldstein as evidence of
the obviousness of these features (Ans. 3 and 5-7). Appellant has attacked
the references individually rather than disputed the Examiner’s specific
findings. In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986).
Accordingly, Appellant’s remaining arguments present no convincing
evidence that the Examiner has erred in his determination of obviousness
with respect to the remaining rejections. Accordingly, we sustain the
Examiner’s remaining rejections.
IV. CONCLUSION
For the reasons discussed above and provided by the Examiner, we
sustain following rejections:
1. Claims 1, 2, 8, 10, 11, and 17 rejected under 35 U.S.C. 103(a) as
obvious over Sala in view of DeSena and Goldstein;
2. Claims 3, 4, 6, 7, 12, 13, 15, and 16 rejected under 35 U.S.C.
103(a) as obvious over Sala in view of DeSena, Goldstein, and either
Hellenbrand or Schleicher;
3. Claims 5 and 14 rejected under 35 U.S.C. 103(a) as obvious over
Sala in view of DeSena, Goldstein, either Hellenbrand or Schleicher, and
Voorhees; and
4. Claims 9 and 18 rejected under 35 U.S.C. 103(a) as obvious over
Sala in view of DeSena, Goldstein, and Fusselman.
V. DECISION
We affirm the Examiner’s decision.
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VI. TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal maybe extended under 37 C.F.R. § 1.136(a)(1)(v) (2008).

AFFIRMED

cam

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