Ex Parte ThorpeDownload PDFBoard of Patent Appeals and InterferencesJul 27, 200911080915 (B.P.A.I. Jul. 27, 2009) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES ____________ Ex parte DARLA THORPE ____________ Appeal 2009-002999 Application 11/080,915 Technology Center 1700 ____________ Decided:1 July 27, 2009 ____________ 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). Appeal 2009-002999 Application 11/080,915 2 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. Appeal 2009-002999 Application 11/080,915 3 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). Appeal 2009-002999 Application 11/080,915 4 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 Appeal 2009-002999 Application 11/080,915 5 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 Appeal 2009-002999 Application 11/080,915 6 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 Appeal 2009-002999 Application 11/080,915 7 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. Appeal 2009-002999 Application 11/080,915 8 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 WALTER J. TENCZA JR. 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