Ex parte Wilkey

Board of Patent Appeals and Interferences

Aug 23, 2000

08656286 (B.P.A.I. Aug. 23, 2000)

1
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today is
not binding precedent of the Board.
Paper No. 22
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte ANDREW W. WILKEY
__________
Appeal No. 1999-0114
Application 08/656,286
__________
ON BRIEF
__________
Before MCCANDLISH, Senior Administrative Patent Judge, STAAB,
and GONZALES, Administrative Patent Judges.
STAAB, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on an appeal from the examiner’s final
rejection of claims 11-20, all the claims in the application.
In the reply brief (Paper No. 20), pages 1-2, appellant
“hereby amends the above-identified patent application by
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Application No. 08/656,286
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consenting to the cancellation of Claims 16-20. The Appeal
is, therefore, to be considered as being limited to a review
of the Examiner’s final rejection of Claims 11-15.” Such
withdrawal operates as a cancellation of claims 16-20 (see
Manual of Patent Examining Procedure (MPEP) § 1215.03),
leaving claims 11-15 before us for our consideration.
Appellant’s invention pertains to a method of packaging
two products together side-by-side by wrapping a wrapper of
plastic sheet material about the products. Appellant explains
on page 1 of the specification that it is known to package
products together side-by-side by slipping a preformed sleeve
of heat shrink material over the products and then applying
heat to the assembled products to shrink the sleeve so that
the products become firmly embraced by the sleeve. According
to appellant, consumers often have a difficult time removing
the sleeve in order to separate the products for use.
Appellant’s solution to this alleged problem is to provide a
wrapper of plastic sheet material having contact adhesive
applied to one or more surface areas of the sheet, then
wrapping the wrapper about the products so that opposite edges
of the wrapper either overlap and bond together via the
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applied contact adhesive, or bond to one of the products.
Optionally, the wrapper is made of a heat shrinkage material,
such that subsequent to bonding, heat may be applied to shrink
the wrapper. According to appellant, since a wrapper made in
accordance with the claimed method is held in position by
contact adhesive, it may be easily removed by the consumer by
simply peeling apart the areas which are held together by the
contact adhesive.
Independent claim 11, the sole independent claim on
appeal, is illustrative of the appealed subject matter. A
copy thereof appears in an appendix to appellant’s main brief.
The references of record relied upon by the examiner as
evidence of obviousness are:
Weiss 2,885,839 May 12, 1959
Plante 4,244,471 Jan. 13, 1981
Åkerström et al. (Akerstrom) 4,627,218 Dec. 9,
1986
Cosmo 4,984,413 Jan. 15, 1991
The following rejections under 35 U.S.C. § 103 are before
us for review:
(a) claims 11, 12 and 14, unpatentable over Weiss in view
of Cosmo;
(b) claim 13, unpatentable over Weiss in view of Cosmo,
Appeal No. 1999-0114
Application No. 08/656,286
The examiner also considers that Weiss does not disclose1
heat shrinking the wrapper about the products, or cutting the
wrapper from a roll; however, independent claim 11 does not
require either of these steps.
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and further in view of Plante; and
(c) claim 15, unpatentable over Weiss in view of Cosmo,
and further in view of Akerstrom.
Weiss, the examiner’s primary reference, pertains to an
apparatus for combining together several individual items, for
example, milk cartons, into a unitary package 2, wherein the
individual items are secured together by an encircling band
10. In rejecting independent claim 11 as being unpatentable
over Weiss in view of Cosmo, the examiner considers that the
manner in which the apparatus of Weiss applies the bands to
the individual items corresponds to the claimed method, except
that Weiss does not provide contact adhesive to bond the edges
of the wrapper. According to the examiner, it would have1
been obvious to one of ordinary skill in the art in view of
Cosmo to substitute contact adhesive for the adhesive 14, 15
of Weiss “to provide a more secure and removable package”
(answer, page 3). Implicit in the rejection is the examiner’s
position that the modified Weiss method would correspond to
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the method of claim 11 in all respects.
Looking at the disclosure of Weiss in greater detail, we
learn that the band 10 used to encircle the individual items
is provided at opposite sides of its opposite end portions
with coatings of adhesive 14, 15. This adhesive is applied
prior to the use of the band ribbon and forms a part of the
fabrication of the ribbon itself (column 2, lines 42-50).
Weiss describes the adhesive and its application to the
individual items to form a unitary package as follows:
The adhesive utilized is of a pressure sensitive
character and may be a rubber latex adhesive.
During the prefabrication it is allowed to become
partially set and to form a substantially dry film
which renders these adhesive coatings to be non-
adherent towards paper or metallic surfaces in order
that the stacks of bands may be shipped or otherwise
handled without the hazard of blocking with each
other. This type of substantially dry adhesive,
which will for all practical purposes adhere only to
itself, may be referred to as a dry self-sealing
adhesive.
. . . [W]hen the end portions of the band 10 are
overlapped and the adhesive coatings 14 and 15 are
brought into overlapping pressure contact these
films bond with each other. The union so produced
is immediate and highly effective and capable of
resisting a longitudinal pull in proportion to the
area so joined. In comparison the bond provided by
a wet adhesive is slippery and not capable of
resisting longitudinal pull. [Column 2, lines 52-
72; emphasis added.]
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When the individual items packaged together comprise
containers such as milk cartons, Weiss indicates that the
closures 6 of the individual cartons should be located
diagonally opposite each other so that “either of the two
containers may be emptied without interfering with the other
container and without the need for breaking the band 10”
(column 3, lines 45-47; emphasis added). Weiss goes on to
states that the package produced by the disclosed method and
apparatus “is such that the
individual containers 1 are so firmly united with each other
that they in effect constitute a single unit” (column 12,
lines 38-40; emphasis added).
From our perspective, Weiss’s pressure sensitive adhesive
coatings 14 and 15 (column 2, lines 52-54) that firmly bond
with each other when brought into overlapping pressure contact
(column 2, lines 66-68) constitute a “contact” adhesive.
Accordingly, we do not agree with the examiner’s position to
the extent that it rests on the proposition that claim 11
distinguishes over Weiss on the basis that the adhesive used
in the claimed method is a “contact” adhesive. However, claim
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Application No. 08/656,286
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11 further requires that the bond produced by the adhesive is
such that “the bonded end edge, or edges, of said wrapper is
able to be peeled off for separating said products.” As read
in light of appellant’s specification (see, for example, page
1, lines 30-33, and page 4, lines 6-10), we understand this
claim terminology as requiring that the bond produced by the
adhesive is such that it fails before the material of the
wrapper tears when an attempt is made to remove the wrapper by
lifting a bonded end edge of the wrapper. In that the
pressure sensitive adhesive coatings 14, 15 of Weiss produce
an immediate and highly effective bond when overlapped in
pressure sensitive contact (column 2, lines 65-68), and firmly
unite the individual items with each other so that they in
effect constitute a single unit (column 12, lines 39-41), and
secure the individual items together so that, in effect, they
can only be separated by breaking the band (column 3, lines
45-47), it is, at best, speculative to consider the adhesive
of Weiss as being capable of producing a bond of the type
called in claim 11 (i.e., so that the bonded end edges of the
band 10 are able of being peeled off for separating the
individual items). Accordingly, we hold that claim 11
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distinguishes over Weiss on the basis of the capability of the
adhesive to produce a bond having the characteristics called
for in the last three lines of the claim.
Cosmo, the examiner’s secondary reference in the
rejection of claim 11, is directed to a machine for wrapping a
sheet of wrapping material about a generally cylindrical
article. To this end, a first end of a web of sheet material
6 is adhered to cylindrical article 1 at station 17 as the
cylindrical article rolls down an inclined infeed table 3.
Thereafter, a predetermined length of the wrapping material is
cut from the web so that as the article continues to roll down
the infeed table, the wrapping material wraps itself about the
article. The wrapped article is then fed by a conveyor 31
through a heat tunnel 70 where the wrapping material is heat-
shrunk into tight engagement with the article. Cosmo
discloses (column 4, line 54 through column 5, line 18)
various systems for adhering the wrapping material to the
article at station 17, including a water atomizing system
(Figure 4), a contact adhesive applying system (Figure 5), and
a electrostatic generator system (Figure 6).
Because of the need in Cosmo for only a light and
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Application No. 08/656,286
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temporary adhesion of the leading edge of the web to the
article at station 17, one of ordinary skill in the art would
consider Cosmo’s adhering systems, including the contact
adhesive applying system of Figure 5, as being, at best,
unsuitable of producing the sort of strong and robust bond
called for in Weiss at, for example, column 2, lines 68-70.
This would present a clear disincentive to one of ordinary
skill in the art to modifying Weiss’s pressure sensitive
adhesive based on the teachings of Cosmo to arrive at an
adhesive having characteristics like those called for in the
last three lines of claim 11. Under such circumstances, where
the proposed modification would have rendered the primary
reference unsuitable for its intended purpose, it cannot be
said that the claimed subject matter would have been obvious
in light of the teachings of the applied references. Ex parte
Rosenfeld,
130 USPQ 113, 115 (Bd. App. 1961). Accordingly, the
examiner’s rejection of claim 11, as well as claims 12 and 14
that depend therefrom, cannot be sustained.
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Application No. 08/656,286
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As to the rejection of claim 13 as being unpatentable
further in view of Plante, and the rejection of claim 15 as
being unpatentable further in view of Akerstrom, we have
carefully reviewed the Plante and Akerstrom references
additionally relied upon by the examiner but find nothing
therein that makes up for the deficiencies of Weiss and Cosmo
discussed supra. Therefore, the examiner’s rejections of
claims 13 and 15 also cannot be sustained.
The decision of the examiner is reversed.
REVERSED
Harrison E. McCandlish, Senior )
Administrative Patent Judge )
)
)
)
Lawrence J. Staab ) BOARD OF
PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
John F. Gonzales )
Administrative Patent Judge )
LJS:tdl
Appeal No. 1999-0114
Application No. 08/656,286
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Edwin D. Schindler
Five Hirsch Avenue
P.O. Box 966
Coram, NY 11727-0966