Ex Parte Tussey

Board of Patent Appeals and Interferences

Jul 6, 2011

11676045 (B.P.A.I. Jul. 6, 2011)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte JIM M. TUSSEY
____________

Appeal 2009-013201
Application 11/676,045
Technology Center 3700
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Before JENNIFER D. BAHR, STEFAN STAICOVICI, and
GAY ANN SPAHN, Administrative Patent Judges.

SPAHN, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Jim M. Tussey (Appellant) seeks our review under 35 U.S.C. § 134 of
the Examiner’s rejection of claims 1-4. We have jurisdiction under 35
U.S.C. § 6(b).

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The Invention
The claimed subject matter is to an improvement in a printer blank
sheet and to a method of reducing printer misfeeds of printer blank sheets.
Claim 1, reproduced below, with emphasis added, is illustrative of the
subject matter on appeal.
1. In a printer blank sheet for use in printing
drug prescription labels and drug information text
comprised of a lower section of printable bond
paper and an upper section having an adhesive
release surface on which a row of pressure
adhesive backed labels are affixed, said upper and
lower sections having overlapped contiguous strip
parts attached together, the improvement wherein a
lower side edge of at least one of said labels
adjacent said overlapped strip parts is offset to be
located closer to said overlapped strip parts than
the lower side edges of other labels held on said
upper section of said printer blank sheet.

The Rejections
The following Examiner’s rejections are before us for review:
Claims 1-4 stand rejected under 35 U.S.C. § 103(a) as unpatentable
over Foote (U.S. Patent No. 5,855,395, issued Jan. 5, 1999) and Fox (U.S.
Patent No. 6,155,603, issued Dec. 5, 2000).

SUMMARY OF DECISION
We AFFIRM.

OPINION
Appellant contends that Fox’s laboratory reporting and labeling
system is not concerned with printer blank sheets for use in printing drug
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prescription labels as are Foote and the claimed invention. App. Br. 4.
Indeed, Appellant appears to be alleging non-analogous art by arguing that
“[t]he existence of mere patterns of labels per se in other contexts (i.e.,, such
as in the pathology report of Fox) does not render it obvious to incorporate
such a pattern into pharmacy printer blank forms where the universal
practice has long been otherwise, i.e., to align the label edges on the blank.”
Id. Appellant also contends Fox’s upper and lower sheet sections 201, 202
are not overlapped, but are instead divided by a tear line 203. Id. Therefore,
Appellant alleges that neither Foote nor Fox suggests the claimed solution of
locating at least one of the label edges closer to the overlapped strips to
reduce the tendency to catch in U feed printers by reducing the length of
labels engaging the overlapped edges. Id. Appellant also contends that the
present inventor recognized the long-standing problem that the overlapped
strips of two sections of pharmacy printer blanks would have a tendency to
catch on the aligned edges to cause misfeeds and conceived the unobvious
solution of offsetting edges of the labels in order for the feed mechanism to
simply drive the sheet past the catch.1 App. Br. 5-6.
The Examiner found that Foote discloses a printer blank sheet 50 for
use in printing drug prescription labels comprised of a lower section 64 and
upper section 66 having overlapped contiguous strip parts 68, 70. Ans. 3.
The Examiner also found that Foote fails to disclose labels with offset edges,
but that this is taught by Fox. Id. The Examiner concludes that it would
have been obvious to modify Foote by offsetting the edges of the labels as

1 Appellant cites to Eibel Process Co. v. Minn. & Ont. Paper Co., 261 U.S.
45 (1923) and In re Spon Noble, 405 F.2d 578 (CCPA 1969) for the
proposition that an invention can lie in recognizing the cause of a long
standing problem and conceiving an unobvious solution thereto.
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taught by Fox in order to differentiate the different labels and their content.
Ans. 4. In response to Appellant’s argument that Fox is not for use as a
pharmacy prescription printer blank, the Examiner notes that Fox discloses
its sheet as being customizable to any type of information the user desires in
a clinical setting. Id. In response to Appellant’s argument that Fox does not
teach overlapped edges, the Examiner notes that Foote, not Fox, has been
cited as teaching overlapped edges. Ans. 5.
First, we are not persuaded by Appellant’s argument that Fox does not
disclose being used in a pharmacy prescription setting. The language of “for
use in printing drug prescription labels and drug information text” in claim 1
is a recitation of intended use. Fox’s lack of teaching use for pharmacy
prescriptions does not establish that the Examiner erred by relying upon the
combination of Foote and Fox in rejecting claims 1-4. Foote clearly
discloses use in a pharmacy prescription setting and there is no indication of
record that incorporating Fox’s offsetting edges in the labels of Foote would
destroy this capability.
We are also not persuaded that Fox is nonanalogous art. “The
analogous-art test requires that the Board show that a reference is either in
the field of the applicant's endeavor or is reasonably pertinent to the problem
with which the inventor was concerned in order to rely on that reference as a
basis for rejection. In re Oetiker, 977 F.2d 1443, 1447 (Fed. Cir. 1992).
Both the Foote and Fox references concern labeling systems and are in the
Appellant’s field of endeavor, i.e., “printer label blanks” (Spec. 1:5).2

2 We note that Fox, Foote, and Appellant’s application all are classified as
being in the field of printed matter (Class 283).
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With respect to Appellant’s argument that Fox does not teach
overlapping sheet sections, Appellant appears to be attacking the references
individually. Nonobviousness cannot be established by attacking the
references individually when the rejection is predicated upon a combination
of prior art disclosures. See In re Merck & Co., Inc., 800 F.2d 1091, 1097
(Fed. Cir. 1986). Here, Foote teaches overlapped sheets and Fox has only
been cited to teach offsetting the edges of Foote’s labels. Therefore, we
cannot agree with Appellant’s argument that the solution of locating at least
one of the label lower edges closer to the overlapped strips is not suggested
by either Foote or Fox. In making a determination with regard to
obviousness, we should not limit ourselves to looking only at the problem
Appellant was trying to solve. The question is not whether the combination
was obvious to Appellant, but whether it was obvious to a person of ordinary
skill in the art. “Under the correct analysis, any 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). Thus, the Examiner’s
articulated reasoning for combining Foote and Fox, i.e., “to differentiate the
different labels and their content” (Ans. 4), has a rational underpinning. See
KSR at 418.
While it is true that inventions can be predicated upon the solution to
a long standing problem, it appears that Appellant is arguing against
obviousness based upon the secondary consideration of long felt need.
However, in the present case, Appellant has presented attorney argument in
lieu of evidence. Attorney argument is of little probative value in proving
secondary indicia of nonobviousness such as a long felt need met by the
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claimed subject matter. In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997).
Thus, Appellant’s arguments are not persuasive, as the record is devoid of
evidence showing a long-felt need or unsuccessful efforts by others to solve
the problem. See Iron Grip Barbell Co., Inc. v. USA Sports, Inc., 392 F.3d
1317, 1324-25 (Fed. Cir. 2004) (absent a showing of long-felt need or the
failure of others, the mere passage of time without the claimed invention is
not evidence of nonobviousness); In re Wright, 569 F.2d 1124, 1127 (CCPA
1977) (the mere age of the references is not persuasive of the unobviousness
of the combination of their teachings, absent evidence that, notwithstanding
knowledge of the references, the art tried and failed to solve the problem).
In view of the foregoing, we sustain the Examiner’s rejection of
claims 1-4 under 35 U.S.C. § 103(a) as unpatentable over Foote and Fox.

DECISION
We affirm the Examiner’s rejection of claims 1-4 under 35 U.S.C. §
103(a) as unpatentable over Foote and Fox.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).

AFFIRMED

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