Ex Parte Dellevigne et al

Patent Trial and Appeal BoardOct 22, 2012

11835048 (P.T.A.B. Oct. 22, 2012)

UNITED STATES PATENT AND TRADEMARKOFFICE 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. 11/835,048 08/07/2007 Laura Dellevigne 006943.01939 1751 66811 7590 10/23/2012 BANNER & WITCOFF, LTD. and ATTORNEYS FOR CLIENT NO. 006943 10 SOUTH WACKER DR. SUITE 3000 CHICAGO, IL 60606 EXAMINER YAGER, JAMES C ART UNIT PAPER NUMBER 1782 MAIL DATE DELIVERY MODE 10/23/2012 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 LAURA DELLEVIGNE and JEFFREY T. SLOAT __________ Appeal 2011-008348 Application 11/835,048 Technology Center 1700 ____________ Before JEFFREY T. SMITH, MICHAEL P. COLAIANNI, and DONNA M. PRAISS, Administrative Patent Judges. COLAIANNI, Administrative Patent Judge. DECISION ON APPEAL Appeal 2011-008348 Application 11/835,048 2 Appellants appeal under 35 U.S.C. § 134 the final rejection of claims 1-5, 7, 8, 10-15, and 17-19. We have jurisdiction over the appeal pursuant to 35 U.S.C. § 6(b). Oral arguments were waived in this appeal on August 15, 2012. We AFFIRM. Appellants’ invention is said to be directed to insulating labels with a laminated structure having a low-density core disposed between layers of cellulose acetate (Spec. para. [05]). Claim 1 is illustrative: 1. An insulating label comprising a laminated structure having a core layer which has a density ranging from about 0.25g/cm3 to about 0.75g/cm3 and a plurality of polymeric layers comprising cellulose acetate, wherein at least one of the layers has indicia thereon and wherein the label has an overall thickness of less than about 0.007”. Appellants appeal the following rejections: 1. Claims 1-5, 7, 8, 11-15, and 18 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Tollette (US 4,273,816 issued June 16, 1981) in view of Stana (US 3,791,526 issued Feb. 12, 1974). 2. Claims 10, 17, and 19 are rejected under 35 U.S.C. §103(a) as being unpatentable over Tollette in view of Stana and Hoof (US 3,514,290 issued May 26, 1970). With regard to rejection (1), Appellants argue the subject matter common to claims 1 and 12 (App. Br. 3-7, 8). We select claim 1 as representative. Appellants argue the subject matter of dependent claims 11 and 18 also (id. at 7-8). Appeal 2011-008348 Application 11/835,048 3 Instead of separately arguing rejection (2), Appellants rely on arguments made regarding claims 1 and 12 (id. at 8). Accordingly, the rejection of claims 10, 17 and191 will stand or fall with our analysis of the rejection of claim 1. ISSUE Did the Examiner reversibly err in determining that Tollette’s disclosure would have rendered obvious the subject matter of claim 1 that includes a label thickness of less than 0.007 inches? We decide this issue in the negative. FINDINGS OF FACT AND ANALYSES Appellants argue that Tollette discloses that the foam layer of the label has a thickness that is less than about 0.03125 to about 0.09375 inches, which is greater than the claimed range of the less than 0.007 inches for the total label thickness (App. Br. 4-5). Appellants contend that Tollette’s disclosure that the foam thickness is less than about 0.03125 inches must be given some meaning within the context of cushioning properties for the label, which would be diminished as the foam thickness decreases (id. at 5). Appellants contend that the Examiner’s position that “less than about 0.03125 inches to about 0.09375 inches” is read out of context and does not disclose that the foam layer may have a thickness of 0.00025 as recited in the broader range disclosed by Tollette in column 2, lines 65-67 (id. at 5-6). Appellants contend that Tollette’s column 2, lines 65-67 disclosure is not a 1 Appellants characterize claim 19 as being a dependent claim (App. Br. 8). Actually, claim 19 is independent and includes the same argued subject matter as independent claims 1 and 12. Appeal 2011-008348 Application 11/835,048 4 disclosure that each type of layer has a thickness which may span the entire range of thicknesses (id. at 6). The Examiner responds that Tollette’s disclosure that the foam layer is “less than” about 0.03125 inches is modified by the additional disclosure that the layers may have thicknesses from 0.00025 to 0.25 inches (Ans. 7). The Examiner reasons that based on the totality of Tollette’s disclosure, it is reasonable to interpret the “less than” language in describing Tollette’s foam layer thickness as including thicknesses as low as 0.00025 inches (id.). The preponderance of the evidence favors the Examiner’s obviousness conclusion. We adopt the Examiner’s analysis on page 7 of the Answer as our own. We add the following discussion primarily for emphasis. Tollette broadly discloses that the layers making up the label may vary in thickness from 0.00025 to 0.25 inches. The Examiner reasonably finds that one of ordinary skill in the art would have understood such disclosure to modify the disclosure that the foam layer has a thickness of less than about 0.03125 inches. In other words, one of ordinary skill in the art would have understood that “less than” in the context of the foam layer thickness includes thicknesses down to 0.00025 inches. Though Appellants contend that the decrease in foam thickness would affect the cushioning characteristic of the label, we do not agree that such an affect would deter one of ordinary skill in the art from using a foam layer with a thickness of 0.00025 inches where such a thickness would provide an appropriate level of cushioning. Regarding claims 11 and 18, Appellants argue that Stana does not teach solvent welding as that term should be interpreted in light of the Specification (App. Br. 7-8). Appellants contend that solvent welding in the Appeal 2011-008348 Application 11/835,048 5 context of the Specification, and thus the claims, means using a solvent to dissolve the cellulose acetate on an overlapping portion of a label which then allowed to resolidify and to bond the label to the container (id.). Appellants’ arguments fail because they are directed to limitations not recited in the claims as found by the Examiner (Ans. 9). The claims require solvent welding, but there is no requirement that solvent welding be performed on overlapping segments as argued. We decline Appellants’ invitation to read limitations from the Specification into the claims. In re Zletz, 893 F.2d 319, 321 (Fed. Cir. 1989). Appellants do not dispute that Stana discloses solvent welding or the Examiner’s reason for combining Stana’s solvent welding adhesive with Tollette’s label. On this record, we affirm the Examiner’s § 103 rejections. DECISION The Examiner’s decision is affirmed. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136. ORDER AFFIRMED bar