Ex parte Younger

Board of Patent Appeals and Interferences

Feb 24, 2000

08152741 (B.P.A.I. Feb. 24, 2000)

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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journal and (2) is not binding precedent of the Board.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. 16
UNITED STATES PATENT AND TRADEMARK OFFICE
________________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
________________
Ex parte ZO YOUNGER
________________
Appeal No. 1996-0743
Application 08/152,741
________________
ON BRIEF
________________
Before CALVERT, ABRAMS and STAAB, 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 5, 7, 9, 15-30. Claims 37-42 and 46, the
only other claims remaining in the application, have been
withdrawn from further consideration under 37 CFR § 1.142(b)
as not being readable on the elected invention.
Appeal No. 1996-0743
Application 08/152,741
In the copy of claim 15 appearing in the appendix to the1
brief, at line 11, --, said second tear strip having adhesive
applied thereto-- should appear after “said second side”, and
at lines 23-24, “said adhesive on said first and second thin
strips of adhesive and” should be deleted. In the copy of
claim 24 appearing in the appendix to the brief, at line 11, -
-, said second tear strip having adhesive applied thereto--
should appear after “said second side”.
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Appellant’s invention pertains to a self mailer formed
from a single cut sheet and including a return envelope. A
copy of the appealed claims appears in an appendix to
appellant’s brief.1
The prior art references of record relied upon by the
examiner as evidence of obviousness are:
Stewart et al. (Stewart) 4,715,531 Dec. 29,
1987
Sauerwine et al. (Sauerwine) 5,289,972 Mar. 1,
1994
Claims 7, 9, 15-18 and 20-23 stand rejected under 35
U.S.C. § 103 as being unpatentable over Stewart.
Claims 5, 19 and 24-30 stand rejected under 35 U.S.C. §
103 as being unpatentable over Stewart in view of Sauerwine.
The rejections are explained in the initial office action
(Paper No. 3, mailed June 29, 1994) and the examiner’s answer
Appeal No. 1996-0743
Application 08/152,741
Throughout this decision, bold format numbers denote2
reference numerals appearing in appellant’s drawing figures.
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(Paper No. 10, mailed October 11, 1995).
The opposing viewpoints of appellant are set forth in the
brief (Paper No. 8, filed August 16, 1995).
Claims 7 and 9
Independent claim 7 calls for the size of the single
sheet business form to be about 8.5" wide by about 11" long,
with the distance between the top of the form and the first
transverse line of weakening 44 being about 3.5" and the2
distance between the lower edge 72 of the lateral strip of
adhesive 48 and the bottom of the form being about 7".
Independent claim 9 calls for the size of the single sheet
business form to be about 8.5" wide by about 14" long, with
the distance between the top of the form and the first
transverse line of weakening 44 being about 4 and 7/8" and the
distance between the lower edge 72 of the lateral strip of
adhesive 48 and the bottom of the form being about 8".
Appeal No. 1996-0743
Application 08/152,741
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The examiner recognizes that Stewart is silent as to the
overall dimensions of the sheet and the placement of the
various fold lines and strips of adhesive relative to the
sheet’s edges. However, the examiner considers that
[t]he exact specific dimensions of the business form
to be a letter or a legal sized sheet of paper and
the placement of the transverse line of weakening
and the lateral strip would have been an obvious
matter of design choice . . . since applicant has
not disclosed
that the position of the transverse line of
weakening and lateral strip and size of the business
form solves any stated problem and it appears that
the invention would perform equally well with the
business form as shown in Stewart et al. [First
office action, page 5.]
Regardless of how we attempt to read claims 7 and 9 on
the envelope of Stewart, we cannot agree with the examiner’s
position to the effect that it would have been obvious to
reconfigure Stewart’s reusable envelope in the manner that
would correspond to the subject matter of claims 7 and 9.
Considering first claim 7, Steward’s envelope comprises only
two laterally extending strips of adhesive, namely, strip of
adhesive 47 on the side of the sheet that will become the
inside of the first mailed envelope (see Figure 1), and strip
Appeal No. 1996-0743
Application 08/152,741
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of adhesive 57 on the side of the sheet that will become the
inside of the second return envelope (see Figures 2 and 6).
If, on the one hand, we attempt to read the claimed lateral
strip of adhesive on Stewart’s strip 47, the top of the sheet
and the bottom of the sheet must be as viewed in Figure 1
because claim 7 requires that the lateral strip of adhesive be
located between the transverse line of weakening and the
bottom of the sheet. Under these circumstances, it certainly
would not have been obvious to one of
ordinary skill in the art to relocate strip 47 of Stewart so
that its lower edge is about 7" from the bottom of the sheet,
as called for in claim 7, because to do so would result in a
tear strip that would be excessively large, resulting in
needless waste of material. If, on the other hand, we attempt
to read the claimed lateral strip of adhesive on Stewart’s
strip 57, and further consider the top of the sheet to be as
shown in Figure 2, relocating the strip so that its lower edge
is about 7" from the bottom of the sheet would again result in
the same excessively large tear strip and needless waste of
Appeal No. 1996-0743
Application 08/152,741
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material. Additionally, if Figure 2 of Stewart were to be
turned upside down (i.e., if the lower edge of the sheet as
viewed in Figure 2 were to be considered the top of the
sheet), such that line 38 of Stewart was considered to be the
first transverse line of weakening, it still would not have
been obvious to relocate the lower edge of the strip of
adhesive 57 about 7" from the bottom of the sheet because to
do so would greatly diminish, if not completely destroy, the
ability of strip 57 to act as a closure for a return envelope
derived from an originally sized 8.5" by 11" sheet. The
examiner’s position as applied to claim 9 is without merit for
similar reasons.
In view of the fact that the examiner’s proposed
modification of Stewart would render it unsuitable for its
intended purpose, it cannot be said that it would have been
obvious to one of ordinary skill in the art. Ex parte
Rosenfeld, 130 USPQ 113, 115 (Bd. App. 1961). It follows that
the standing § 103 rejection of claims 7 and 9 as being
Appeal No. 1996-0743
Application 08/152,741
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unpatentable over Stewart cannot be sustained.
Claims 15-18 and 20-23
The last paragraph of independent claim 15 calls for the
base sheet to be folded along a base fold line 78 and secured
by the first and second thin strips of adhesive 70, 74 and the
adhesive 64 on the first and second tear strips 32, 38 to
define an envelope. The examiner has not explained, and it is
not apparent to us, where Stewart teaches an envelope formed
by folding the sheet along a base fold line and securing it by
first and second sets of adhesive strips to define an
envelope, as now claimed. In this regard, Stewart’s first set
of adhesive strips 43, 45 act alone to form the first envelope
and Stewart’s second set of adhesive strips 53, 55 act alone
to form the second return envelope.
For this reason, the standing § 103 rejection of
independent claim 15 as being unpatentable over Stewart, as
well as claims 16-18 and 20-23 that depend therefrom, cannot
be sustained.
Appeal No. 1996-0743
Application 08/152,741
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Claim 5
Concerning the examiner’s § 103 rejection of claim 5 as
being unpatentable over Stewart in view of Sauerwine, the only
argued distinction of claim 5 over Stewart is the requirement
of claim 5 that the adhesive of the lateral strip of adhesive
48 is remoistenable glue. While conceding that remoistenable
glue "is, of course, the same sort of glue encountered on the
flaps of conventional business envelopes" (brief, page 7),
appellant contends that one of ordinary skill in the art would
never consider using remoistenable glue at adhesive strip 57
on return flap 28 of Stewart because
[t]he remoistenable glue would be exposed on the
exterior of the envelope at all times during the
mailing process. If it got wet, it might cause the
envelope to adhere to other pieces of mail.
Alternatively, it might pick-up all manner of
debris, bacteria or the like and certainly would not
be suitable for licking with the tongue. Indeed,
it’s hard to imagine a situation where the
substitution proposed by the examiner is so
unlikely. [Brief, pages 7-8.]
This argument is not well taken. Claim 5 does not
require that the lateral strip of adhesive set forth in the
last paragraph of the claim be for the return envelope flap.
Thus, even if we were to agree with appellant that, as a
Appeal No. 1996-0743
Application 08/152,741
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general proposition, it would not have been obvious to provide
remoistenable glue at adhesive strip 57 on Stewart’s return
envelope flap, there remains the question of providing
remoistenable glue at Stewart’s adhesive strip 47, used on the
closure flap of the first mailed envelope. Stewart describes
this adhesive strip as being “an activatable adhesive for
example a wetable adhesive or a two-part adhesive or a two-
sided tape with a release strip 46 as shown” (column 3, lines
13-15; emphasis added). To the extent “wetable” adhesive is
not “remoistenable” adhesive as claimed, it would have been
obvious to one of ordinary skill in the art to use a
conventional remoistenable glue at Stewart’s adhesive strip 47
in view of Sauerwine’s teaching at column 4, lines 22-26, that
adhesive 40 for envelope flap 39 may be “any type of adhesive
that can be activated by the end user to form a sealed return
envelope, such as rewettable adhesive, or pressure sensitive
adhesive covered by a release liner strip” (emphasis added).
In this regard, the circumstance that Sauerwine’s adhesive 40
is used to close the flap of Sauerwine’s return envelope is
not seen as limiting that teaching to the closure flaps of
Appeal No. 1996-0743
Application 08/152,741
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return envelopes.
In light of the foregoing, we will sustain the standing §
103 rejection of claim 5 as being unpatentable over Stewart in
view of Sauerwine.
Claims 19 and 24-30
Independent claim 24 is similar to claim 15 in the sense
that it also calls for the base sheet to be folded along a
base fold line 78 and secured by the first and second thin
strips of adhesive 70, 74 and by the adhesive 64 on the first
and second tear strips 32, 38 to define an envelope. Claim 19
depends from independent claim 15 and thus includes this
limitation through its dependency therefrom. We have
thoroughly reviewed the teachings of Sauerwine additionally
relied upon by the examiner in rejecting claims 19 and 24, but
find nothing therein that makes up for the above noted
deficiencies of Stewart with respect to this limitation.
Accordingly, we cannot sustain the examiner’s rejection of
claims 19 and 24, or claims 25-30 which depend from claim 24,
based on the combined teachings of Stewart and Sauerwine.
Appeal No. 1996-0743
Application 08/152,741
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Summary
The standing § 103 rejections of claims 7, 9 and 15-30
are reversed.
The standing § 103 rejection of claim 5 is affirmed.
The decision of the examiner is affirmed-in-part.
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
AFFIRMED-IN-PART
IAN A. CALVERT )
Administrative Patent Judge )
)
)
)
NEAL E. ABRAMS ) BOARD OF
PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
Appeal No. 1996-0743
Application 08/152,741
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LAWRENCE J. STAAB )
Administrative Patent Judge )
ljs/ki
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