Ex Parte Fell

Patent Trial and Appeal Board

Jan 31, 2019

10941729 (P.T.A.B. Jan. 31, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/137,682 06/12/2008
52554 7590
Southeast IP Group, LLC.
P.O. Box 14156
GREENVILLE, SC 29610
01/31/2019
FIRST NAMED INVENTOR
Stacy R. Kaufman
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
QSS-064 8017
EXAMINER
BATTULA, PRADEEP CHOUDARY
ART UNIT PAPER NUMBER
3725
MAIL DATE DELIVERY MODE
01/31/2019 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
Exparte STACY R. KAUFMAN
Appeal2017-003765
Application 12/137,682 1
Technology Center 3700
Before JOHN C. KERINS, EDWARD A. BROWN, and
ARTHUR M. PESLAK, Administrative Patent Judges.
BROWN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Stacy R. Kaufman (Appellant) seeks review under 35 U.S.C. § 134(a)
of the Examiner's decision rejecting claims 1-5. Appellant's representative
presented oral argument on January 8, 2019. We have jurisdiction under 35
U.S.C. § 6(b).
We AFFIRM.
1 JM Smith Corporation is identified as the real party in interest. Br. 1.
Appeal2017-003765
Application 12/137,682
CLAIMED SUBJECT MATTER
Claims 1 and 5 are independent. Claim 1, reproduced below,
illustrates the claimed subject matter:
1. A medicinal container having a label, said container
compnsmg:
a container having a removable lid;
a label adapted to be applied to said container, said label
compnsmg:
[a] label sheet for making a pharmaceutical label for
placement on said medicinal container, said label sheet
compnsmg:
a front printing face having an adhesive backing and a
length that is substantially greater than a perimeter of said
medicinal container, said adhesive backing covering
substantially an entire area of a backside of said front printing
face;
a backing sheet liner covering said adhesive backing;
said front printing face having a score formed therein
defining a first portion and a second portion of said front printing
face, said first portion having a length corresponding
substantially to the perimeter of said container, said score
defining a border between said first portion and said second
portion, whereby said second portion projects from the container
when said first portion is attached to said container; and
said backing sheet liner having a liner score line formed
therein corresponding to said score in said front face for
removing said releasable backing liner from said first portion.
Br. 8 (Claims App.).
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Application 12/137,682
REJECTI0N2
Claims 1-5 stand rejected under 35 U.S.C. § 103(a) as unpatentable
over Monico (US 6,021,942, issued Feb. 8, 2000), Ferres (US 726,894,
issued May 5, 1903), and Fales (US 1,949,903, issued March 6, 1934).
ANALYSIS
Claims 1 and 5
As for claim 1, the Examiner finds that Monico discloses a label sheet
capable of making a pharmaceutical label for placement on a container
(package 51) that is capable of being used as a medical container. Non-Final
Act. 4. The Examiner finds that the label sheet comprises a front printing
face and a backing sheet liner covering an adhesive backing. Id. The
Examiner finds that the label sheet has a length that is substantially greater
than a perimeter of the container because "[t]he label form will have a size
appropriate to some type of medical container such as a larger test tube." Id.
The Examiner determines that "[Monico's label] only need be capable of
being used on some sort/size of container in the claimed manner." Ans. 7.
The Examiner also finds that the front printing face has a score (line of
weakness 18) defining first and second portions. Non-Final Act. 4--5. The
Examiner finds that the first portion has a length corresponding substantially
to the container's perimeter, as "[ t ]his is merely just a matter of finding a
container ... to fit these dimensions." Id. at 5.
2 The rejection of claims 1-5 under 35 U.S.C. § 112, second paragraph, has
been withdrawn. Ans. 7; Non-Final Act. 2-3.
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Application 12/137,682
The Examiner finds that Monico discloses a backing sheet liner
having a liner score line formed therein corresponding to the score in the
front printing face for removing the releasable backing liner from the first
portion. Non-Final Act. 5 ( citing Monico, col. 4, 11. 31--44). The Examiner
notes that Monico discloses that when the labels are provided as individual
sheets, a liner is provided in all sections of the label. Id. The Examiner
reasons that because the operation of the label requires release in only one
section, and the forms can be provided as individual sheets, the release
would be provided in the individual sections for operation of the label. Id.
(citing Monico, Fig. 2). Additionally, the Examiner concludes that it would
have been obvious to have sectional release liners in Monico as one of the
finite ways to provide release on sections of individual sheets. Id. The
Examiner reasons that because the liners will cover the individual sections,
the liners will be perforated/cut in a corresponding manner to properly cover
individual sections. Id.
The Examiner relies on F erres for teaching a tubular mailing container
having a lid. Id. The Examiner reasons that it would have been obvious to a
person of ordinary skill in the art to use a mailing tube, as taught by Ferres,
with Monico's label. Id. The Examiner relies on Fales for teaching a
medical container having a label. Id. ( citing Fales, Figs. 1, 4). The
Examiner reasons that it would have been obvious to wrap the label of
Monico, as modified by Ferres, around medicinal containers, as shown in
Fales, to provide information about the package. Id. at 6-7.
Appellant contends that the claims require a label having explicit
dimensions with respect to the container that the label is to be placed on, and
it is unreasonable for the Examiner "to allege that a container 'can be
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Application 12/137,682
found"' or "the label will have a size 'appropriate to some type of medical
container."' Br. 11. Appellant contends that Monico does not disclose that
sheet 11 shown in Figure 4 has a length that is substantially greater than a
perimeter of package 51, or that the first label portion ( first section 21)
corresponds substantially to the perimeter of package 51. Id. at 9.
Claims 1 and 5 recite a medicinal container comprising a container
and a label adapted to be applied to the container and comprising a label
sheet, the label sheet comprising a front printing face having (a) a length that
is substantially greater than a perimeter of the container and (b) a first
portion having a length corresponding substantially to the perimeter of the
container. Br. 18-19 (Claims App.). Although the embodiment of the form
and package shown in Figure 4 of Monico does not have length limitations
(a) and (b ), this does not apprise us of error in the Examiner's rejection. The
Examiner states, "[i]f a modification to Monico's structure would be needed,
this would be only to the size of Monico' s label so that it would fit a
particular container." Ans. 9-10. That is, the Examiner proposes to modify
the label of Monico to have the claimed length limitations. The Examiner
notes that the Federal Circuit has held that, where the only difference
between the prior art and the claims was a recitation of relative dimensions
of the claimed device and a device having the claimed relative dimensions
would not perform differently than the prior art device, the claimed device
was not patentably distinct from the prior art device. In Gardner v. TEC
Syst., Inc., 725 F.2d 1338, 1349 (Fed. Cir. 1984). Here, referring to the
embodiment shown in Figure 4 of Monico, for example, it does not appear
that changing the length of first section 21 to "[have] a length corresponding
substantially to the perimeter of [package 51 ]," such that first section 21 and
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Application 12/137,682
second section 22 together have "a length substantially greater than a
perimeter of said container [i.e., package 51 ]," would cause the resulting
label to perform differently. As noted above, the Examiner also finds that
Ferres and Fales disclose other container configurations on which Monico's
labels having the claimed length limitations could be applied. For these
reasons, we agree with the Examiner that length limitations (a) and (b) noted
above do not provide a patentable distinction from the applied prior art.
Appellant contends that Monico teaches away from sheet 11 having a
length that is substantially greater than a perimeter of the package and from
first section 21 having a length corresponding substantially to the perimeter
of package 51. Br. 9. According to Appellant, Monico discloses that the
preferred embodiment provides the labels in a pad, as shown in Figure 3,
where "all the forms in the pad are identical" and individual label sheets can
be pulled from a pad of labels, as needed. Id. at 10 ( citing Monico, col. 1, 11.
50-52, col. 3, 11. 31-34, col. 4, 11. 39-44, Fig. 3). Appellant asserts that the
preferred embodiment teaches away from a label having dimensions
determined relative to the size of the package. Id.
These contentions are unpersuasive. Monico teaches that forms 10
can be provided in a pad or as individual sheets. See Monico, col. 4, 11. 42-
44. Appellant does not identify any portion of Monico that criticizes,
discredits, or otherwise discourages changing the length of a section of a
label provided as an individual sheet to be substantially greater than a
perimeter of a container the label is provided on. See In re Fulton, 391 F.3d
1195, 1201 (Fed. Cir. 2004). Accordingly, we are not persuaded that
Monico teaches away from sheet 11 having a length that is substantially
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Application 12/137,682
greater than a perimeter of a package or from a first section having a length
corresponding substantially to the perimeter of the package. Br. 9.
Appellant also contends that modifying Monico' s label to have a
length substantially greater that the perimeter of the package would result in
Monico being inoperable because "both the address and postage would be
covered by the label, thus rendering the package undeliverable." Br. 10.
This contention is not persuasive. One of ordinary skill in the art
would have the requisite knowledge and skill to construct a label that does
not conceal such information. In this regard, we note "[a] person of ordinary
skill is also a person of ordinary creativity, not an automaton." See KSR
Int'! Co. v. Teleflex, Inc., 550 U.S. 398,421 (2007). Indeed, Figure 4 of
Monico shows that the return address 53 and the mailing destination 52 of
package 51 are uncovered by the attached label. Appellant does not explain
persuasively how changing the length of the label relative to the perimeter of
package 51 would, nonetheless, cause the label to cover this or any other
information.
Appellant contends that Monico also does not disclose the limitation
"said backing sheet liner having a liner score line formed therein
corresponding to said score in said front face for removing said releasable
backing liner from said first portion," as recited in claim 1. Br. 18 (Claims
App.) ( emphasis added). 3 Claim 5 recites, "said backing sheet liner having a
liner score formed therein defining a first portion and a second portion of
said front printing face, said first portion having a length corresponding
substantially to the perimeter of the container." Id. at 19 (Claims App.)
3 Appellant indicates incorrectly that claim 5 also recites this same
limitation. Br. 8.
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( emphasis added). Appellant contends Monico does not disclose that the
release liner has (a) scores corresponding to the lines of weakness 18, 19, or
(b) a score that defines a border between a first portion and a second portion
of the label so that the length of the first portion corresponds to the perimeter
of the container. Br. 9.
Even if Monico does not expressly describe or depict the claimed liner
score line, the Examiner reasons that it would have been obvious to one of
ordinary skill in the art to have sectional release liners in Monico, where the
liners are perforated/cut to cover individual sections. Non-Final Act. 5---6.
Appellant contends that the Examiner has not cited any reference that shows
"sectional backing liners for different sections of the label." Br. 12. To the
extent it is Appellant's position that Monico, Ferres, and/or Fales is required
to explicitly disclose "sectional backing liners for different sections of the
label," we disagree. As stated in KSR, "the analysis need not seek out
precise teachings directed to the specific subject matter of the challenged
claim, for a court can take account of the inferences and creative steps that a
person of ordinary skill in the art would employ." See KSR, 550 U.S. at 418.
Here, Appellant's contentions do not apprise us error in the Examiner's
reasomng.
For these reasons, we sustain the rejection of claims 1 and 5.
Claim 2
For claim 2, Appellant relies on the same arguments presented for
parent claim 1. Br. 14. Thus, we sustain the rejection of claim 2 for the
same reasons as for claim 1.
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Application 12/137,682
Claim 3
Claim 3 depends from claim 2 and recites, "said backing sheet liner
has a second liner score formed therein which corresponds to said further
score line for removing a portion of said backing sheet liner from said third
portion which allows said third portion to adhere to said second portion
when said first portion is attached to the container." Br. 18 (Claims App.)
( emphasis added). The Examiner relies on the findings and reasoning
provided for claim 1 about having "three independent liners" in Monico,
which would allow the third portion to adhere to the second portion when
the first portion is attached to a container of appropriate size. Non-Final
Act. 8.
Appellant relies on the arguments presented for claim 1 with respect
to "sectional backing liners for different sections of the label." Br. 15.
These contentions are not persuasive as discussed above for claim 1.
Appellant next contends there is no motivation to adhere the third
portion of the label to the second portion in Monico, as this would render
Monico unsatisfactory for its intended purpose. Id.
This contention is not persuasive. The Examiner proposes to modify
the release liner in Monico to effectively have a distinct liner for each of the
respective sections 21, 22, and 23. Claim 3 does not recite that the third
portion is adhered to the second portion, but recites that the second liner
score allows this. Appellant does not explain persuasively why the modified
label structure of Monico would lack this capability. Thus, we sustain the
rejection of claim 3.
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Application 12/137,682
Claim 4
Claim 4 depends from claim 1 and recites, "a face of said backing
sheet liner which faces away from said adhesive backing is formed of a
material that can be printed on with a printer." Br. 19 (Claims App.)
( emphasis added). The Examiner finds that the applied combination teaches
this limitation. Non-Final Act. 8. The Examiner states, "[i]t is well known
in the art that release liners are provided with silicone coating or wax
material on a face that mates with adhesive where the opposite surface
facing outward is not treated. This surface is very well known to be capable
of being printed." Id. The Examiner cites McKillip4 as evidence. Id. (citing
McKillip, col. 3, 11. 6-9).
Appellant contends that Monico does not teach or suggest the
limitation of claim 4. Br. 16. Appellant asserts that the Examiner
impermissibly makes the assertion that this limitation is "very well known"
without evidentiary support. Id.
These contentions are unpersuasive. Monico discloses that "[t]he
release liner 28 is of any 35 conventional release liner material, such as
silicone coated paper." Monico, col. 4, 11. 34--36 (emphasis added).
Although Monico does not expressly describe the limitation of claim 4, the
Examiner cites McKillip as evidence to show that this limitation would be
present in Monico' s label. Particularly, McKillip discloses that "[ t ]he
release liner 22 ... is made of paper having a silicone coating, as is well
known in the art. If desired, indicia may be printed on the back of the
release liner." McKillip, col. 3, 11. 6-9 (emphasis added). Accordingly,
4 US 5,145,211, issued Sept. 8, 1992.
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Application 12/137,682
McKillip teaches that indicia can be printed on the back, that is, on the paper
portion, of the conventional silicone coated paper. This teaching in
McKillip provides evidentiary support for the Examiner's position that, in
Monico's release liner 28 likewise made of conventional silicone coated
paper, the back surface (i.e., "a face of said backing sheet liner which faces
away from said adhesive backing") could be printed on by a printer.
Appellant acknowledges the Examiner's citation to McKillip, but fails to
persuasively address the Examiner's reliance on McKillip as evidence
showing what Monico discloses with respect to release liner 28. As
Appellant does not apprise us of error in the Examiner's findings or
reasoning, we sustain the rejection of claim 4.
DECISION
We affirm the rejection of claims 1-5 as unpatentable over Monico,
Ferres, and Fales.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED
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