Ex Parte Avis

Patent Trial and Appeal Board

Jun 28, 2017

14032307 (P.T.A.B. Jun. 28, 2017)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
14/032,307 09/20/2013 Benjamin Adam Avis CFLAY.00884 3727
110933 7590 06/28/2017
Carstens & Cahoon, LLP
PO Box 802334
Dallas, TX 75380
EXAMINER
KIM, SHIN H
ART UNIT PAPER NUMBER
3638
MAIL DATE DELIVERY MODE
06/28/2017 PAPER
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE

____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte BENJAMIN ADAM AVIS
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Appeal 2017-0016191
Application 14/032,307
Technology Center 3600
____________

Before JOSEPH L. DIXON, LARRY J. HUME, and
ALEX S. YAP, Administrative Patent Judges.

YAP, Administrative Patent Judge.

DECISION ON APPEAL

Appellant appeals under 35 U.S.C. § 134(a) from the final rejection of
claims 1–13 and 15–20.2 We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

1 According to Appellant, the real party in interest is Frito-Lay North
America, Inc. (App. Br. 2.)
2 Claim 14 is cancelled. (App. Br 14 (Claims App’x).)
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Application 14/032,307

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STATEMENT OF THE CASE
Introduction
Appellant’s disclosed and claimed inventions relate to “a better way to
affix and distribute [] labels.” (Spec. ¶ 1.) Claim 1 is illustrative, and is
reproduced below (with minor reformatting):
1. A label, comprising:
a remaining portion, wherein said remaining portion
comprises a first front face, a first back face, and a first adhesive;
and;
a detachable portion removably coupled to said remaining
portion only by a weakened connection along one edge of the
detachable portion,
wherein said detachable portion comprises a second front
face, a second back face, and a second adhesive on an entire
surface of the second back face,
wherein at least an amount of the second adhesive is
exposed on the second back face to adhere the detachable portion
to a container, and
wherein the amount of the second adhesive exposed on the
second back face is located at least at one corner formed from
two edges of the detachable portion, each of the two edges
lacking the weakened connection.

Prior Art and Rejections on Appeal
The following table lists the prior art relied upon by the Examiner as
evidence in rejecting the claims on appeal:
White US 4,128,954 Dec. 12, 1978
McKillip US 5,219,183 June 15, 1993
Thompson et al.
(“Thompson”) US 6,974,159 B2 Dec. 13, 2005
Irvine et al.
(“Irvine”) US 7,140,135 B2 Nov. 28, 2006
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Claims 1, 3, 6–13, and 15–20 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over Irvine in view of White. (See Final Office
Action (mailed Nov. 10, 2015) (“Final Act.”) 2–6.)
Claims 2 and 5 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Irvine, in view of White, and further in view of McKillip.
(See Final Act. 7.)
Claim 4 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Irvine, in view of White, and further in view of
Thompson. (See Final Act. 7–8.)

ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellant’s
arguments the Examiner erred. We are not persuaded that the Examiner
erred in rejecting the claims on appeal for the reasons discussed, infra.
With respect to claim 1, the Examiner finds the combination of Irvine
and White teaches or suggests “wherein the amount of the second adhesive
exposed on the second back face is located at least at one corner formed
from two edges of the detachable portion, each of the two edges lacking the
weakened connection”:
Irvine does not directly disclose the adhesive on the second back
face to be disposed along the entire face and selectively exposed.
White discloses a label comprising a first face and second face
wherein the second back face comprises the adhesive to be
disposed along the second back face; wherein an amount of the
adhesive is exposed along the second back face. White discloses
a label for a container comprising a first and second back face
(Figure 2 Element 15 and 18) wherein a second adhesive is on
the entire surface of the second back face (Figure 2 and 3
Element 25 and 26), and wherein the amount of second adhesive
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exposed on the second back face is located at least at one corner
formed from two edges of the detachable portion each of the two
edges lacking the weakened connection (Figure 2 away from
Element 12).
(Final Act. 3.) Figure 2 of Irvine is reproduced below.

Figure 2 of Irvine depicts “a top plan view of a flag label with a tab portion
extending perpendicularly from one side of a tear-away body portion of the
label.” (Irvine, 3:30–32.) Figure 2 of White is also reproduced below:

Figure 2 of White depicts “the reverse side of the label shown in FIG. 1 and
illustrates the manner in which different dual adhesives are provided on such
reverse side.” (White, 1:34–36.)
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Appellant contends that Irvine does not teach adhesive located at any
corner, whereas:
White teaches that none of the adhesive on the rear of the second
section (15) is thermally activated, and is therefore not exposed
on the back face to adhere the detachable portion to a container,
as recited by claim 1. The only adhesive exposed on the rear of
the third section is shown by the circular regions (28) [and f]rom
a simple visual inspection, it is evident that the circular areas are
not located at least at one comer formed from two edges of the
detachable portion, each of the two edges lacking the weakened
connection.
(App. Br. 9; Reply 2–4.) In other words, according to Appellant, neither
Irvine nor White teaches or suggests any exposed second adhesive “located
at least at one corner formed from two edges of the detachable portion, each
of the two edges lacking the weakened connection.”
We agree with the Examiner’s finding that the combination of Irving
and White teaches or suggests the limitation at issue. Appellant’s contention
that in White, there is no adhesive “located at least at one corner formed
from two edges of the detachable portion,” is not persuasive. Specifically,
Figure 2 of White shows that thermosensitive adhesive 25 covers both
corners (i.e., at least one corner) “formed from two edges of the detachable
portion, each of the two edges lacking the weakened connection.” Appellant
ignores adhesive 25 because it is not activated thermally and instead
contends that because the area under dotted circles 28 are thermally
activated, the area under these circles should be considered the second
adhesive as claimed. However, the limitation at issue only requires the
“second adhesive exposed on the second back face is located at least at one
corner formed from two edges of the detachable portion . . . ,” it does not
require the second adhesive to be activated. In other words, the limitation at
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issue only requires an adhesive to be “located at least at one corner . . . .”
Appellant further contends that:
the preceding limitation of claim 1 which provides: “the second
adhesive is exposed on the second back face to adhere the
detachable portion to a container.” Thus, the amount of the
second adhesive exposed on the second back face serves to
adhere the detachable portion to a container, and the second
adhesive is located “at least at one corner formed from two edges
of the detachable portion, each of the two edges lacking the
weakened connection.” (See, Irvine, col. 5, lines 45–49[.])
(Reply 2.) This contention is also not persuasive because “at least an
amount of the second adhesive (i.e., the area under dotted circles 28) is
exposed on the second back face to adhere the detachable portion to a
container.” The claim does not recite that the corner “formed from two
edges of the detachable portion” must be attached to the container but just
“an amount of [the] second adhesive” “is located at least at one corner . . . .”
Furthermore, we also agree with the Examiner’s finding that it would
have been obvious to one of ordinary skill in the art, at the time of the
invention, to modify Irvine to include the teaching in White (i.e., having
adhesive that extends to cover the corners of the back face of a label)
because “to further enhance the securing of the label to a product is well
known.” (Ans. 3–4.) Appellant contends that “further enhancing the
securing of the label to a product is not a concern of the Irvine reference and
would contradict its express intent to create a label that can be easily
removed from the product/packaging.” (Reply 4.) Even assuming arguendo
that column 5, lines 45 to 49 of Irving stand for the proposition that
Appellant is proposing (they do not), to further enhance the securing of the
label does not mean that the label cannot be “easily removed from the
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product/packaging.” Moreover, in Irving, easy removal is accomplished by
using adhesive that “provide[s] a lesser bond” to the product/packaging.
(Irving, 5:33–36.) Irving does not disparage or discourage extending the
adhesive to cover the corners of the back face of a label. See Depuy Spine,
Inc. v. Medtronic Sofamor Danek, Inc., 567 F.3d 1314, 1327 (Fed. Cir.
2009) (“A reference may be said to teach away when a person of ordinary
skill, upon reading the reference, would be discouraged from following the
path set out in the reference, or would be led in a direction divergent from
the path that was taken by the applicant.” . . . A reference does not teach
away, however, if it merely expresses a general preference for an alternative
invention but does not ‘criticize, discredit, or otherwise discourage’
investigation into the invention claimed.”) (internal citations omitted).
For the foregoing reasons, we are not persuaded the Examiner erred in
rejecting claim 1 such that we sustain the 35 U.S.C. § 103(a) rejection of
claim 1. Appellant does not make any separate, substantive patentability
arguments regarding dependent claims 2–13 and 15–20, but instead rely
solely on their arguments with respect to claim 1. (App. Br. 6, 9, 10.)
Therefore, we also sustain the 35 U.S.C. § 103(a) rejections of claims 2–13
and 15–20.
DECISION
We affirm the decision of the Examiner to reject claims 1–13
and 15–20.
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No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv). See 37
C.F.R. § 41.50(f).
AFFIRMED