Ex parte Vetter

Board of Patent Appeals and Interferences

Oct 28, 1999

08467084 (B.P.A.I. Oct. 28, 1999)

Application for patent filed June 6, 1995.1
1
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today (1)
was not written for publication in a law journal and (2) is
not binding precedent of the Board.
Paper No. 17
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte KURT W. VETTER
_____________
Appeal No. 1998-0953
Application No. 08/467,084 1
______________
ON BRIEF
_______________
Before COHEN, McQUADE and GONZALES, Administrative Patent
Judges
GONZALES, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on an appeal from the examiner's final
rejection of claims 1, 3 through 11, 13 through 21 and 31
through 33. Claim 12, the only other claim remaining in the
Appeal No. 1998-0953
Application No. 08/467,084
2
application, stands withdrawn from further consideration under
37 CFR
§ 1.142(b), as being directed to a non-elected species.
Claims 2 and 22 through 30 have been canceled.
We REVERSE.
The invention is directed to a plastic security envelope,
and particularly to a tamper-resistant envelope having two
different adhesive closure seals. The subject matter before
us on appeal is illustrated by reference to claims 1, 13 and
31 which, along with the other claims on appeal, have been
reproduced in an "appendix" filed on September 21, 1998 (Paper
No. 15).
The prior art references of record relied upon by the
examiner in rejecting the appealed claims are:
Craig 4,712,729 Dec. 15,
1987
Canno 4,759,643 Jul. 26,
1988
Holcomb et al. 4,937,040 Jun.
26, 1990
(Holcomb)
Restello 1,025,034 Apr. 06,
1966
(British Patent Document)
Carter 2,265,883 Oct. 13,
1993
Appeal No. 1998-0953
Application No. 08/467,084
In the final rejection, claims 1, 3-11, 13-21 and 31-33 were also2
rejected under 35 U.S.C. § 112, second paragraph. Since no mention of this
rejection has been made by the examiner in the answer, we presume that the
examiner has withdrawn the final rejection of claims 1, 3-11, 13-21 and 31-33
on this ground. Ex parte Emm, 118 USPQ 180, 181 (Bd. App. 1957).
We note that claim 4 is inconsistent with claim 1 from which it3
depends. Claim 1 recites that it is the second adhesive seal which is
disposed to adhere to an exterior surface of the second panel. For purposes
of our review, we construe claim 4 as reciting that the second adhesive seal
is positioned on the fold-over flap. Correction of claim 4 is in order upon
return of this application to the jurisdiction of the examiner.
3
(British Patent Document)
The following rejections are before us for review:2
claims 1, 3, 4, 6, 9, 10, 13, 15, 18, 19 and 31
through 33
stand rejected under 35 U.S.C. § 103 as being unpatentable
over Holcomb in view of Canno;3
claims 5 and 14 stand rejected under 35 U.S.C. § 103 as
being unpatentable over Holcomb in view of Canno, as applied
to claims 1 and 13, and further in view of Carter;
claims 7, 8, 16 and 17 stand rejected under 35 U.S.C. §
103 as being unpatentable over Holcomb in view of Canno, as
applied to claims 1 and 13, and further in view of Craig; and
claims 11, 20 and 21 stand rejected under 35 U.S.C. § 103
as being unpatentable over Holcomb in view of Canno, as
Appeal No. 1998-0953
Application No. 08/467,084
4
applied to claims 1 and 13, and further in view of Restello.
The full text of the examiner's rejections and the
responses to the arguments presented by appellant appear in
the final rejection (Paper No. 6, mailed May 1, 1997) and the
answer (Paper No. 10, mailed December 10, 1997), while the
complete statement of appellant's arguments can be found in
the main and reply briefs (Paper Nos. 9 and 11, filed November
3, 1997 and January 8, 1998, respectively).
OPINION
In reaching our decision in this appeal, we have given
careful consideration to the appellant's specification and
claims, to the applied prior art references, and to the
respective positions articulated by the appellant and the
examiner. As a consequence of our review, we have made the
determinations which follow.

The rejection of claims 1, 3, 4, 6, 9, 10, 13, 15, 18, 19 and
31 through 33
Appeal No. 1998-0953
Application No. 08/467,084
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We reverse the examiner’s rejection of claims 1, 3, 4, 6,
9, 10, 13, 15, 18, 19 and 31 through 33 under 35 U.S.C. § 103.
In rejecting claims under 35 U.S.C. § 103 the examiner
bears the initial burden of presenting a prima facie case of
obviousness. In re Rijckaert, 9 F.3d 1531, 1532, 28 USPQ2d
1955, 1956 (Fed. Cir. 1993); In re Oetiker, 977 F.2d 1443,
1445, 24 USPQ2d 1443, 1444 (Fed. Cir. 1992). Only if that
burden is met does the burden of coming forward with evidence
or argument shift to the applicant. Id. If the examiner
fails to establish a prima facie case, the rejection is
improper and will be overturned. In re Fine, 837 F.2d 1071,
1074, 5 USPQ2d 1596, 1598 (Fed. Cir. 1988). In order to
establish the prima facie
obviousness of a claimed invention, all the claim limitations
must be taught or suggested by the prior art. In re Royka,
490 F.2d 981, 985, 180 USPQ 580, 583 (CCPA 1974).
We begin our review with independent claim 1. We note
that claim 1 calls for a tamper resistant envelope comprising,
inter alia, first and second panels, a first adhesive seal
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disposed on an interior surface of the first panel opposite an
interior surface of the second panel for sealingly adhering to
the interior surface of the second panel at a location spaced
from the upper edge of the second panel and formed of an
adhesive material having adherent properties which are
resistant to release at temperatures substantially below room
temperature, and a second adhesive seal disposed on the first
panel for sealingly adhering to an exterior surface of the
second panel at a location spaced from the upper edge of the
second panel and formed of an adhesive material having
temperature related adherent properties which are different
from those of the adhesive material from which the first
adhesive seal is formed.
The examiner describes Holcomb (final rejection, pages 2
and 3) as disclosing an adhesive seal 38' (Figures 9A-9C)
including a first adhesive seal 46 and a second adhesive seal
52 of different
materials. The adhesive seal 52 is described by the examiner
as "disposed on the flap 36 for adhering to the exterior
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surface 24 of the second panel 12 (Fig. 9C)" (id.). The
examiner, acknowledging that Holcomb does not show the
adhesive seal 38' disposed on the interior surface 28 of the
first panel 14, cites Canno for its teaching of an adhesive
seal 25 (Figs. 2-5) on both a flap 24 and an interior surface
of a panel 21. It is the examiner's position that it would
have been obvious
to extend the adhesive seal 38' of Holcomb et al. from
the flap to the interior surface of the first panel (thus
inherently disposing the first adhesive seal 46 on the
interior surface 28 of the first panel 14) as taught by
Canno, in order to provide the envelope with an effective
and self-sealing closure. (Final rejection, page 3).
Appellant argues that the combined disclosures of Holcomb
and Canno fail to teach or suggest positioning first and
second adhesive seals having different adherent properties at
the locations recited in claim 1 (main brief, page 10).
We agree. Assuming, arguendo, that it would have been
obvious to extend the adhesive seal 38' of Holcomb to the
inter- ior surface 28 of panel 14 opposite the interior
surface of panel 12, as suggested by the examiner, the
adhesive seal would not have been capable of sealingly
adhering to the interior surface
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Application No. 08/467,084
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of the second panel at a location spaced from the upper edge
of the second panel. Rather, the seal 38' of Holcomb would
have extended to the upper edge of panel 12 (see Canno's Fig.
5). Since all the claim limitations would not have been
taught or suggested by the combined disclosures of Holcomb and
Canno, it follows that the examiner has not established the
prima facie obviousness of the invention set forth in claim 1.
See In re Royka, supra. Accordingly, we cannot support the
examiner's rejection of claim 1 under 35 U.S.C. § 103.
Independent claims 13 and 31 call for a tamper resistant
envelope comprising, inter alia, first and second panels, a
first adhesive seal disposed on an interior surface of the
first panel and a second adhesive seal disposed on the
interior surface of the first panel spaced from the first
adhesive seal. Appellant argues (brief, pages 12 and 14) that
neither Holcomb nor Canno discloses "a second adhesive seal .
. . spaced from the first adhesive seal." We agree. Holcomb
discloses a single closure strip 38' in Figures 9A-9C composed
of a low adhesion material 52 and a layer of adhesive 46
applied over the low adhesion material (col. 8, lines 1-16).
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Application No. 08/467,084
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As shown in Figure 9A, the adhesive 46 is in direct contact
with, not spaced from, low adhesion material 52. Canno also
fails to teach or suggest two adhesive seals
spaced from one another on the same panel. Accordingly, we
will not sustain the standing 35 U.S.C. § 103 rejection of
independent claims 13 and 31.
Claims 3, 4, 6, 9 and 10, dependent on claim 1, claims
15, 18 and 19, dependent on claim 13, and claims 32 and 33,
dependent on claim 31, contain all of the limitations of their
respective independent claim. Therefore, we will also not
sustain the standing 35 U.S.C. § 103 rejection of these
claims.

The rejection of claims 5 and 14
We reverse the examiner’s rejection of claims 5 and 14
under 35 U.S.C. § 103.
Carter is cited by the examiner (final rejection, pages 3
and 4) for its teaching of a fold line, i.e., weld seam 25,
between a first panel 14 and a flap 30 (see, Carter, page 3).
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Our review of Carter reveals that Carter also discloses that
more than one strip of adhesive 31 may be provided (id.). For
example, in Figure 2, Carter shows a second band of adhesive
80 located on wall portion 16.
Claims 5 and 14 recite that the first adhesive seal has
adherent properties which are resistant to release at
temperatures substantially below room temperature and that the
second adhesive seal has temperature related adherent
properties which are different from those of the first
adhesive seal. Holcomb does, in fact, suggest forming closure
strip 38' with a layer of adhesive 46 which is resistant to
release at temperatures substantially below room temperature
(see, col. 10, lines 29 et seq.). The examiner has determined
(final rejection, page 2) that Holcomb teaches or suggests
that low adhesion material 52 has adherent properties which
are different from those of adhesive layer 46. Assuming,
arguendo, that the different adherent properties of low
adhesion material 52 are temperature related as required by
the claims, we can find no motivation in the combined
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teachings of Holcomb, Canno and Carter for forming the
adhesive layer 46 of Holcomb spaced from the low adhesion
material 52 so as to provide spaced first and second seals.
Holcomb teaches that the layer of adhesive 46 must be applied
over the low adhesion material 52 so that if the bag is
sealed, reopened and then resealed, indicia is formed
indicating that the bag has been opened and resealed. See,
col. 5, lines 49 through col. 6, line 31. Thus, separating
the adhesive layer 46 of Holcomb from the low adhesion
material 52 would be contrary to the very teachings of
Holcomb.
Since all the limitations of claims 5 and 14 would not
have been taught or suggested by the combined disclosures of
Holcomb, Canno and Carter, it follows that the examiner has
not established the prima facie obviousness of the invention
set forth in these claims. See In re Royka, supra.
The rejection of claims 7, 8, 16 and 17
We reverse the examiner’s rejection of claims 7, 8, 16
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and 17 under 35 U.S.C. § 103.
Claims 7 and 8, which depend from claim 1, and claims 16
and 17, which depend from claim 13, include all of the
limitations of their respective parent claims. Our review of
Craig, which is applied by the examiner along with Holcomb and
Canno to reject claims 7, 8, 16 and 17, indicates to us that
this reference does not supply the deficiencies in the
combined teachings of Holcomb and Canno noted above.
Accordingly, we will not sustain the standing 35 U.S.C. § 103
rejection of these claims.
The rejection of claims 11, 20 and 21
Our review of Restello which is used in combination with
Holcomb and Canno to reject claims 11, 20 and 21,
respectively, reveals that it also fails to supply the
deficiencies in Holcomb
and Canno discussed above. Since claims 11, 20 and 21 are
dependent from claims 1 or 13, we will not sustain the
standing 35 U.S.C. § 103 rejection of these claims.
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Application No. 08/467,084
13
In summary, all of the examiner's rejections of claims 1,
3 through 11, 13 through 21 and 31 through 33 are reversed.
REVERSED
IRWIN CHARLES COHEN )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
JOHN P. McQUADE ) APPEALS AND
Administrative Patent Judge ) INTERFERENCES
)
)
)
JOHN F. GONZALES )
Administrative Patent Judge )
vsh
Appeal No. 1998-0953
Application No. 08/467,084
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David M. Carter
Dilworth & Barrese
333 Earle Ovington Blvd.
Uniondale, NY 11553