Ex Parte Freund et al

Patent Trial and Appeal BoardMar 16, 2018

12946378 (P.T.A.B. Mar. 16, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 12/946,378 11/15/2010 24113 7590 03/16/2018 PATTERSON THUENTE PEDERSEN, P.A. 80 SOUTH 8TH STREET 4800 IDS CENTER MINNEAPOLIS, MN 55402-2100 FIRST NAMED INVENTOR Robert F. Freund 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. 3729.186US01 9814 EXAMINER KATCOFF, MATTHEW GORDON ART UNIT PAPER NUMBER 3725 MAILDATE DELIVERY MODE 03/16/2018 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 ROBERT F. FREUND and RAJENDRA MEHTA Appeal 2016-003 807 Application 12/946,378 Technology Center 3700 Before JOHN C. KERINS, STEVEN D.A. McCARTHY, and GEORGE R. HOSKINS, Administrative Patent Judges. KERINS, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Robert F. Freund and Rajendra Mehta (Appellants) seek our review under 35 U.S.C. Â§ 134 of the final rejection of claims 1---6, 8-15, and 26-29. We have jurisdiction under 35 U.S.C. Â§ 6(b ). An oral hearing was conducted on March 6, 2018, with Daidre L. Burgess, Esq., appearing telephonically on behalf of Appellants. We REVERSE. Appeal 2016-003 807 Application 12/946,378 THE INVENTION Appellants' invention is directed to a label for in-mold application to a molded article, and a labeled article. Claim 1, reproduced below, is illustrative: 1. A labeled article, comprising: an article body made of a moldable material, having an outer article body surface, and a label, integral with said article body, having an outer label surface coplanar with said outer article body surface, said label comprising: an outer, transparent, film ply defining said outer label surface, a printable sheet ply inward from said outer film ply, said printable sheet ply having a surface facing the outer film ply and being printed thereon, and a transparent adhesive layer between said outer film ply and said printable sheet ply, said outer film ply having a length and width greater than the length and width of said printable sheet ply such that said outer film ply extends beyond said printable sheet ply adjacent all edges of said printable sheet ply and shields said printable sheet ply from exposure to the environment surrounding said labeled article, the surface of said printable sheet ply opposite said surface facing the outer film ply being substantially free of adhesive and permanently fused to said article body. 2 Appeal 2016-003 807 Application 12/946,378 The Examiner rejects: THE REJECTIONS (i) claims 1, 6, and 26 under 35 U.S.C. Â§ 102(b), as being anticipated by Reardon (US 7,377,859 B2, issued May 27, 2008); (ii) claims 1, 6, and 26 under 35 U.S.C. Â§ 103(a) as being unpatentable over Husband (US 2003/0222100 Al, published Dec. 4, 2003) in view of Reardon; (iii) claims 2-5, 8-15, and 27-29 under 35 U.S.C. Â§ 103(a) as being unpatentable over Reardon; and (iv) claims 2-5, 8-15, and 27-29 under 35 U.S.C. Â§ 103(a) as being unpatentable over Husband and Reardon. ANALYSIS Claims 1, 6, and 26--Anticipation--Reardon Independent claims 1 and 26 each recite a transparent adhesive layer disposed between an outer transparent film ply and a printable sheet ply disposed inwardly of the outer film ply. Appeal Br. 18, 20 (Claims App.). The Examiner takes the position that, because Reardon discloses that an outer film ply is applied to a sheet ply, the outer ply is adhered to the sheet ply. Ans. 9. According to the Examiner, Reardon thus implicitly discloses the presence of "some adhesive layer" as being "that what adheres the film ply to the sheet ply." Id. We have reviewed the Reardon disclosure, and, in particular, the portions in column 7 relied on by the Examiner (col. 7, 11. 15-51) as well as the remainder of that column as well as column 8, and we find that the 3 Appeal 2016-003 807 Application 12/946,378 Examiner's position is not supported by a preponderance of the evidence. Nowhere does Reardon explicitly disclose the use of an adhesive layer disposed between its printed label ply and its overlay material. Reardon, passim. As to the Examiner's position that Reardon implicitly or inherently involves the use of an adhesive layer that is a separate component from an outer film ply and said printable sheet ply, as required by the claims, that position is belied by the Reardon disclosure that the overlay corresponding to the claimed outer film ply may be applied by overmolding to overlay material, by dipping the article in a liquid vat of overlay material, or by spraying the overlay material onto the article having the label ply disposed thereon. Reardon, col. 7, 1. 52---col. 8, 1. 9. The preponderance of the evidence is to the effect that Reardon discloses an inner label ply and an outer transparent ply that are in some way bonded together without any adhesive layer interposed. Accordingly, the Examiner has not established that Reardon discloses each and every element set forth in claims 1 and 26, as is required for a viable anticipation rejection. The rejection is also flawed in that the Examiner has not adequately established that Reardon discloses a structure in which the outer film ply has a length and width greater than the length and width of the printable sheet ply, so as to extend beyond the printable sheet ply along all edges, as claimed. Even assuming that the Examiner is correct that, for any embodiment in Reardon, a gap will exist between a printable sheet ply and the article body, into which the outer ply will extend, 1 this establishes only 1 The finished article in Figure 11 exhibits no such gaps, therefore we assume that the Examiner's position is that Figure 11 is inaccurate in this respect. We note that the Examiner may have failed to consider the 4 Appeal 2016-003 807 Application 12/946,378 that the overlay/outer ply would have a greater dimension (length or width) than the printable sheet ply, but not both length and width. Accordingly, the rejection falls short on this basis as well. The rejection of claims 1, 6, and 26 as being anticipated by Reardon is not sustained. Claims 1, 6, and 26--Unpatentability--Husband and Reardon The Examiner takes the position that, in the event that it is found that Reardon does not disclose that the outer film ply has a width greater than the width of the printable sheet ply, such a construction would obviously have been obtained by "applying the methods of Reardon to create the label of Husband." Final Act. 5 (emphasis omitted). The Examiner additionally notes that, to the extent that Reardon does not disclose the use of an adhesive ply, "Husband teaches that glue, heat fusing and other means for attaching permanently or semi-permanently are all equivalents and thus applying any of these to attach the film ply to the sheet ply would have been obvious." Id. at 7 (emphasis omitted). As to the former, we generally agree with Appellants' objection that the Examiner does not adequately explain how the methods of Reardon are being applied to produce a label on the Husband article. Appeal Br. 13. In addition, although the Examiner's proposed modification is to provide the label of Husband with an outer ply to protect the label from ambient conditions and exposure to friction (Final Act. 6), Appellants point out that, possibility that the label in Figure 11 may have a length equal to the spacing between the mold protrusions 40 that cause a gap to be formed in other embodiments, such that no gap was present in the article at the completion of molding. 5 Appeal 2016-003 807 Application 12/946,378 "because an outer surface of label 50a [in Husband] is flush with the sidewall of article 26, the overlay material 90 [from Reardon] would necessarily lie over label 50a and the sidewall [of article 26] such that the outermost surface of the overlay material ... would not be coplanar with the article sidewall 26" (Reply Br. 5), which is another limitation in the claims. Appellants have the better position here. The Examiner does not adequately explain how this latter limitation discussed by Appellants would be met in the proposed combination, even assuming that it would have been obvious to provide a transparent outer ply over the label on the Husband article. As to the Examiner's reliance on the alleged equivalency of glue, heat fusing, and other means, Appellants point out that Husband discloses these in terms of securing the label to the article, and not to adhering an outer ply to the outer surface of the label. Reply Br. 6. Moreover, we note that if, as the Examiner posits, it would have been obvious to apply the methods of Reardon to include a transparent outer layer over the Husband label, it would appear that no adhesive layer would be used to do so, given Reardon's teachings of applying an overlay without using an adhesive layer to do so. The rejection of claims 1, 6, and 26 as being unpatentable over Husband and Reardon is not sustained. Claims 2-5, 8-15, and 27-29--Unpatentability--Reardon The Examiner's findings and conclusions relative to the rejection of these claims as being unpatentable over Reardon do not cure the deficiencies 6 Appeal 2016-003 807 Application 12/946,378 in Reardon noted above with respect to claims 1 and 26. The rejection is not sustained. Claims 2-5, 8-15, and 27-29--Unpatentability--Husband and Reardon The Examiner's findings and conclusions relative to the rejection of these claims as being unpatentable over Husband and Reardon do not cure the deficiencies in the combination of the teachings of the same two references noted above with respect to claims 1 and 26. The rejection is not sustained. DECISION The Examiner's rejections of claims 1---6, 8-15, and 26-29 are reversed. REVERSED 7