Ex parte Valiulis

Board of Patent Appeals and Interferences

Aug 31, 2001

08752529 (B.P.A.I. Aug. 31, 2001)

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not written for publication and is not binding precedent of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. 33
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte THOMAS E. VALIULIS
__________
Appeal No. 2000-1665
Application 08/752,529
___________
HEARD August 14, 2001
___________
Before ABRAMS, FRANKFORT, and PATE, Administrative Patent
Judges.
FRANKFORT, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the examiner's final
rejection of claims 1, 2, 4 through 8, 12 through 17, 19
through 32 and 35. Claims 9, 33 and 34 stand withdrawn from
consideration as being directed to a non-elected species.
Appeal No. 2000-1665
Application 08/752,529
Decided concurrently herewith is the appeal in1
appellant's copending application S.N. 08/754,245, filed
November 20, 1996 (Appeal No. 2000-1666).
2
Claims 3, 10, 11 and 18 have been canceled.1
Appellant's invention relates to merchandise hangers such
as so-called “Pegboard” hooks or “scanning hooks” like that
seen in Figures 1 and 2 of the application drawings and to a
method of maintaining current merchandising labels in
association with merchandise being marketed from such hooks by
providing the label supporting surface (28 in Fig. 2) of the
hook with a release element or release layer that permits easy
removal and replacement of adhesive merchandising labels. As
indicated in the paragraph bridging pages 3 and 4 of the
specification
A release layer, such as a thin coating of a silicone
material, is provided on the outer surface of the label
panel. This release layer adherently retains and
supports an adhesively coated label that is pressed onto
that surface and will readily release such a label, i.e.
will permit the label to be peeled off cleanly with
little effort, normally without tearing or splitting the
label or leaving any residue therefrom on the label panel
surface. Thereby labels applied to the label panel are
exposed outwardly relative to the arm for viewing by
customers who pass by the display. The labels also are
readily removable and replaceable, as well as
Appeal No. 2000-1665
Application 08/752,529
3
exchangeable, by merchandising personnel as the facts and
circumstances to be displayed change from time to time.
Claims 1 and 23 are representative of the subject matter
on appeal and a copy of those claims can be found in the
Appendix to appellant's brief.
The prior art references of record relied upon by the
examiner as evidence of obviousness of the claimed subject
matter are:
Thalenfeld et al. (Thalenfeld) 4,718,626 Jan. 12, 1988
Petrou 5,628,858 May 13, 1997
(filed May 18,
1995)
As indicated in the seven rejections set forth on pages
4-9 of the examiner’s answer, the claims before us on appeal
stand provisionally rejected under the judicially created
doctrine of obviousness-type double patenting as being
unpatentable over various claims of copending Application No.
08/940,859 taken further in view of Thalenfeld and Petrou, or
Appeal No. 2000-1665
Application 08/752,529
4
Thalenfeld alone.
Claims 1, 2, 4 through 8, 12 through 17, 19 through 32
and 35 also stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Thalenfeld in view of Petrou. In this
regard, the examiner is of the view that Thalenfeld shows the
invention as claimed except for the fact that this reference
lacks a release layer between the label (60, col. 6, line 59 -
col. 7, line 6) and the label support surface (40). To
address this limitation, the examiner turns to Petrou, noting,
inter alia, that
Petrou teaches the use of a release layer (Fig. 2) which
is attached to a support surface 16, which has a release
value which is less than the release value of the surface
16 (Petrou: Col. 1, lines 43-55). It would have been
obvious to a person having ordinary skill in the art at
the time of Appellant’s invention to modify the support
surface [40 of Thalenfeld] to have a release layer
between the label and the label support surface in view
of Petrou in order to provide a means of using
inexpensive permanent pressure sensitive labels on a
surface in which the labels are changed frequently
(Petrou: Col 2, lines 56-65). (answer, page 10).
Reference is made to the examiner's answer (Paper No. 28)
for the examiner's reasoning in support of the above-noted
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Application 08/752,529
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rejections and to the main and reply briefs (Paper Nos. 27 and
29) for appellant's arguments thereagainst.
OPINION
In arriving at our decision on the obviousness issues
raised in this appeal, we have given careful consideration to
the entire record of appellant's application, including the
specification and claims, the teachings of the applied prior
art references, the evidence of non-obviousness supplied by
appellant, and the respective positions advanced by appellant
and the examiner. Upon evaluation of the reference evidence
before us, it is our initial conclusion that the examiner has
established a prima facie case of obviousness with regard to
claims 1, 2, 4 through 8, 12 through 17, 19 through 32 and 35
on appeal based on the combined teachings of Thalenfeld and
Petrou. However, it is our further conclusion, after
consideration of all of the evidence before us, that
appellant's objective evidence of non-obviousness outweighs
the evidence of obviousness presented by the examiner, and,
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Application 08/752,529
6
accordingly, that the subject matter set forth in claims 1, 2,
4 through 8, 12 through 17, 19 through 32 and 35 would not
have been obvious to one of ordinary skill in the art within
the meaning of 35 U.S.C. § 103 at the time appellant's
invention was made. Our reasoning for these determinations
follows.
Looking first to the examiner's seven rejections based on
provisional obviousness-type double patenting, we note that
appellant (brief, pages 2-3) has erroneously characterized
these rejections as being “moot at this time,” because the
claims of Application No. 08/940,859 were not yet allowed.
Accordingly, appellant has merely urged that these rejections
“will be dealt with in whichever of the applications is
appropriate in due course.” In response, the examiner has
remained silent in the answer and has not challenged appellant
in any way on this characterization of the double patenting
rejections. Unfortunately, the problem has arisen that
Application No. 08/940,859 was issued as U.S. Patent No.
6,145,231 on Nov. 14, 2000. Thus, one or more of the
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Application 08/752,529
7
examiner’s obviousness-type double patenting rejections may no
longer be valid and, at the very least, the double patenting
rejections would no longer be provisional. Neither appellant
nor the examiner has addressed these possibilities.
Accordingly, we REMAND this application back to the examiner
for consideration of the obviousness-type double patenting
rejections now that the application (08/940,859) relied upon
therein has issued as a U.S. patent.
Regarding the examiner’s rejection of claims 1, 2, 4
through 8, 12 through 17, 19 through 32 and 35 under 35 U.S.C.
§ 103(a) based on Thalenfeld and Petrou, we have reviewed the
applied references and agree with the examiner that one of
ordinary skill in the labeling art would have found it prima
facie obvious to employ the release layer labeling approach
disclosed in Petrou in association with the merchandise holder
and adhesive label of Thalenfeld so as to gain the advantages
discussed in Petrou at column 1, lines 36-58, and set forth in
claims 4 and 5 of Petrou.
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Application 08/752,529
8
Having arrived at the conclusion that the evidence of
obviousness as applied by the examiner in the rejection of
claims 1, 2, 4 through 8, 12 through 17, 19 through 32 and 35
is sufficient to establish a prima facie case of obviousness,
we also recognize that evidence of secondary considerations,
such as that presented by appellant in this application must
be considered and weighed in route to a determination of
obviousness/nonobviousness under 35 U.S.C. § 103.
Accordingly, we consider anew the issue of obviousness under
35 U.S.C. § 103, carefully evaluating and weighing both the
evidence relied upon by the examiner and the objective
evidence of nonobviousness provided by appellant. See
Stratoflex Inc. v. Aeroquip Corp., 713 F.2d 1530, 1538, 218
USPQ 871, 879 (Fed. Cir. 1983) and In re Piasecki, 745 F.2d
1468, 1472, 223 USPQ 785, 788 (Fed. Cir. 1984).
Appellant has submitted five declarations, i.e., from
Stanley C. Valiulis, Robert W. Harrell, Carol Hopson, Theodore
J. Stipanovich, and Frank N. Shope. According to the examiner
(answer, page 13), those declarations are of little weight
Appeal No. 2000-1665
Application 08/752,529
9
because 1) there is no showing that others of ordinary skill
in the art were working on the problem and if so, for how
long; and 2) there is no showing that persons skilled in the
art who were presumably working on the problem knew of the
teachings of the above cited references (Thalenfeld and
Petrou) and still were unable to solve the problem.
On the whole, we find that the evidence submitted by
appellant demonstrates the existence of a labeling problem
associated with merchandising display supports recognized in
the merchandising industry for a long period of time and also
that efforts have been made, for many years, by those who
design and sell such merchandising supports, as well as by
those who use such supports, to solve this labeling problem,
without any satisfactory success. See paragraphs 3-6, 11 and
12 of the Valiulis declaration; paragraphs 2-5 of the Harrell
declaration; and paragraphs 2-4 of the Hopson, Stipanovich,
and Shope declarations. In addition, we find from the
evidence submitted by appellant that those skilled in the art
of merchandising supports and labeling for such supports have
Appeal No. 2000-1665
Application 08/752,529
10
found appellant’s claimed invention to be a solution to the
labeling problem and, thus, to satisfy the long-felt need.
See paragraphs 13-26 of the Valiulis declaration; paragraphs
6-8 of the Harrell declaration; paragraphs 5-10 of the Hopson
declaration; paragraphs 5-7 of the Stipanovich declaration;
and paragraphs 5 and 6 of the Shope declaration. In this
regard, we agree with appellant’s arguments put forth on pages
25-28 and 39-42 of the brief and on pages 5-6 of the reply
brief. More particularly, we agree with appellant (brief,
pages 40-42) that the examiner’s reasons, set forth above, for
not giving the declaration evidence adequate weight are
without foundation (factually or legally) and are therefore
unpersuasive.
Thus, we have now carefully considered all of the
evidence of nonobviousness supplied by appellant, and weighed
that evidence along with the evidence of obviousness relied
upon by the examiner. As a result of our considerations, we
reach the conclusion that appellant's invention as set forth
in claims 1, 2, 4 through 8, 12 through 17, 19 through 32 and
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Application 08/752,529
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35 on appeal would not have been obvious to the person of
ordinary skill in the art within the meaning of 35 U.S.C. 103.
The evidence of nonobviousness taken as a whole, in our view,
clearly outweighs the evidence of obviousness relied upon by
the examiner.
In summary:
The examiner's rejection of claims 1, 2, 4 through 8, 12
through 17, 19 through 32 and 35 under 35 U.S.C. § 103(a) as
being unpatentable over Thalenfeld in view of Petrou is not
sustained.
As for the double patenting rejections, we REMAND this
application back to the examiner to reconsider the provisional
nature of the obviousness-type double patenting rejections now
that the application (08/940,859) relied upon in those
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Application 08/752,529
12
rejections has issued as a U.S. patent.
The decision of the examiner on the sole issue ripe for
appeal (i.e., the rejection of claims 1, 2, 4 through 8, 12
through 17, 19 through 32 and 35 under 35 U.S.C. § 103) is,
accordingly, reversed.
REVERSED AND REMANDED
Appeal No. 2000-1665
Application 08/752,529
13
NEAL E. ABRAMS )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
CHARLES E. FRANKFORT )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
WILLIAM F. PATE, III )
Administrative Patent Judge )
CEF:pgg
Noel I. Smith
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