Ex Parte Greer

Patent Trials and Appeals Board

May 20, 2014

12026030 - (D) (P.T.A.B. May. 20, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte MARK GREER
____________________

Appeal 2012-004425
Application 12/026,030
Technology Center 3600
____________________

Before: JENNIFER D. BAHR, EDWARD A. BROWN, and
ANNETTE R. REIMERS, Administrative Patent Judges.

BAHR, Administrative Patent Judge.

DECISION ON APPEAL

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Application 12/026,030

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STATEMENT OF THE CASE
Mark Greer (Appellant) appeals under 35 U.S.C. § 134 from the
Examiner’s decision rejecting claims 1-12 and 14-261. We have jurisdiction
under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.

The Claimed Subject Matter
Claim 1, reproduced below, is illustrative of the claimed subject
matter.
1 A strip of a plurality of thermal printer processible
wristband/label assemblies, said wristband/label assemblies
being joined at their ends to adjacent wristband/label
assemblies to form the strip with a line of weakness separating
adjacent assemblies, each of said wristband/label assemblies
comprising two areas, a wristband area comprising a full length
wristband with its longest dimension extending between said
adjoining wristband/label assemblies and comprising
substantially the entirety of the wristband area, and a label area
comprising a plurality of labels extending substantially the full
length of the wristband/label assembly, and a line of weakness
extending between said adjoining wristband/label assembly
ends and separating said wristband area from said label area
thereby facilitating their ready separation from each other, each
of said wristband/label assemblies being substantially
rectangular shaped and oriented to be fed into said thermal
printer from its shortest dimension to thereby maximize the size
of each wristband/label assembly processible in a continuous
manner by said thermal printer.

1 Both the Examiner and Appellant characterize claim 13 as rejected and
under appeal (see the Office Action Summary of the non-final rejection
mailed December 9, 2010 and page 5 of Appellant’s Appeal Brief).
However, we find no pending rejection of claim 13. Therefore, claim 13 is
not involved in this appeal.
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Evidence
The Examiner relied on the following evidence in rejecting the claims
on appeal:
Dotson
Schintz
US 5,984,363
US 6,641,048 B1
Nov. 16, 1999
Nov. 4, 2003
Riley
Kotik
US 2004/0148836 A1
US 2005/0091896 A1
Aug. 5, 2004
May 5, 2005

Appellant’s Admitted Prior Art (AAPA), Spec. 2, ll. 20-23.
Rejections
The following rejections are before us for review:
I. Claims 1-4, 7, and 9 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Riley.
II. Claims 5, 6, 8, and 12 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Riley and Schintz.
III. Claims 10, 11, 14, 19, and 23-26 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Riley, Schintz, and AAPA.
IV. Claims 15-18 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Riley, Schintz, AAPA, and Kotik.
V. Claims 20-22 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Riley, Schintz, AAPA, and Dotson.

OPINION
Rejection I
In contesting this rejection, Appellant presents the same arguments for
claims 1-4 and 9. We select claim 1 as representative of this group, with the
remaining claims standing or falling with claim 1. See 37 C.F.R.
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§ 41.37(c)(1)(vii) (2011). Appellant presents separate arguments for claim
7.
Claim 1 is directed to a strip of wristband/label assemblies wherein
the wristband/label assemblies are joined at their ends to form the strip with
a line of weakness separating the adjacent assemblies. Claim 1 requires that
each wristband/label assembly has a wristband area comprising a full length
wristband comprising substantially the entirety of the wristband area and a
label area comprising a plurality of labels extending “substantially the full
length” of the wristband/label assembly. Claim 1 further requires a line of
weakness separating the wristband area from the label area and that each of
the wristband/label assemblies are substantially rectangular shaped and
oriented to be fed into a thermal printer from its shortest dimension.
Appellant initially argues that the embodiments depicted in Figures 21
and 26 of Riley are the only embodiments of Riley relied upon by the
Examiner that are suitable for use in a strip configuration in a thermal printer
because the embodiments shown in Figures 28 and 29 of Riley are
“sheetlets” not intended for assembly into a strip. App. Br. 11. Appellant
then argues that Figures 21 and 26 of Riley do not show a wristband area
and a label area, a line of weakness separating a wristband area from a label
area, and a plurality of labels and a label area extending substantially the full
length of the wristband/label assembly. App. Br. 11-12. Appellant contends
that the Examiner has used Appellant’s invention as a “road map to pick and
choose what he thinks would support his rejection.” App. Br. 13 Appellant
further points out that Figures 21 and 26 of Riley depict “‘clamshell’ type
self-laminating wristbands” occupying both the top and bottom of the form
and argues that “[b]ecause of the patterned adhesive needed to permit ready
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separation of these two lamination halves from the back of the form, it
would be impossible to use the face stock covering the top half as a label.”
Id. Thus, Appellant argues that it would be impossible for Riley to have the
claimed label area. Id.
The Examiner finds that, in Figure 21, Riley teaches a thermally
printable wristband/label assembly that may be linked end to end with a
plurality of other assemblies to form a roll, each assembly having a
wristband area 300 and a label area 304 with a single label, and notes that
Figures 28 and 29 of Riley show a wristband and two labels and a wristband
and four labels, respectively. Ans. 4. The Examiner also finds that, at
paragraph [0078], Riley discloses “the inventor’s various embodiments for
wristbands, extender construction, and self-adhering labels may all be mixed
and matched interchangeably in various formats to suit various user needs,
printer requirements, and as a matter of form design or preference.” Ans. 5.
In responding to Appellant’s arguments, the Examiner states that
Figures 28 and 29 “depict forms that are used in the same general processes
for the same general purpose” and “are taught within the same reference
because the techniques and features associated with the strips of the other
figures are indeed related to those of these ‘sheetlets.’” Ans. 10. The
Examiner also finds that the features recited in claim 1 are found in Figures
28 and 29, which were “conveniently dismissed as irrelevant” by Appellant.
Ans. 11.
We, like the Examiner, find that Riley teaches that the different
features of the various embodiments disclosed by Riley may be mixed and
matched in different combinations. This would reasonably include, for
example, combination of the feature of the wristband panels being repeated
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and linked end to end at either end to form a continuous strip or roll of the
Figure 21 embodiment with the arrangement on each of those panels of a
wristband disposed side-by-side with a label, as disclosed in the Figure 28
embodiment, and the wristband area separated from the label area by a line
of perforations, as disclosed in the Figure 29 embodiment. Although Figures
28 and 29 of Riley are described as “sheetlets” with holes for track feeding
through a printer, Riley clearly discloses at paragraph [0078] that the various
embodiments may be “mixed and matched interchangeably” to suit “various
user needs, printer requirements, and as a matter of form design or
preference.” Thus, the Examiner’s consideration of the features found in
different embodiments disclosed in Riley was correct. We reject Appellant’s
contention that Figures 28 and 29 should be excluded from consideration
because they depict “sheetlets.”
In addition, the Examiner did not err in determining that the claim
language that the wristband comprises “substantially the entirety of the
wristband area” and the label area extends “substantially the full length of
the wristband/label assembly” is fully met by the disclosure of Riley. When
construing claim terminology in the Patent and Trademark Office, this Board
is required to give the claim language its broadest reasonable interpretation.
See In re Crish, 393 F.3d, 1253, 1256 (Fed. Cir. 2004); In re Bigio, 381 F.3d
1320, 1324 (Fed. Cir. 2004). In re Hyatt, 211 F.3d 1367, 1372-73 (Fed. Cir.
2003). Appellant’s Specification does not define “substantially.” Indeed,
aside from Appellant’s claims, the phrase “substantially the entirety” does
not appear in Appellant’s Specification. We therefore turn to the dictionary
for guidance as to what is meant by “substantially the entirety.” See, e.g.,
York Prods., Inc. v. Central Tractor Farm & Family Ctr., 99 F.3d 1568,
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1572-73, (Fed. Cir. 1996) (“In this case, the patent discloses no novel uses of
claim words. Ordinarily, therefore, ‘substantially’ means ‘considerable in
. . . extent,’ American Heritage Dictionary Second College Edition 12 13 (2d
ed. 1982), or ‘largely but not wholly that which is specified.’ Webster’s
Ninth New Collegiate Dictionary 1176 (9th ed. 1983).”). These meanings
appear to be consistent with Appellant’s Specification. Against this
background, the Examiner’s interpretation of “substantially the entire
length” as covering the configuration shown in Figure 28 of Riley is
reasonable.
For the reasons above, Appellant’s arguments do not apprise us of
error in the Examiner’s rejection of independent claim 1. We sustain the
Examiner’s rejection of claim 1 and of claims 2-4 and 9, which fall with
claim 1, as unpatentable over Riley.
With respect to claim 7, Appellant separately argues that the
Examiner incorrectly compares Figure 28 of Riley to Figure 1 of the subject
application when Figure 1 is “disclosed as one of [Appellant’s] other
inventions.” App. Br. 15. Appellant’s assertion, even if correct, does not
apprise us of error in the Examiner’s position that the configurations
depicted in Riley’s Figures 28 and 29 satisfy the requirement in claim 7 that
“the wristband comprises substantially the entirety of the wristband area and
the plurality of labels comprises substantially the entirety of the label area,”
for the reasons discussed supra.
Moreover, the Examiner takes issue with Appellant’s assertion about
Figure 1 of the present application. Ans. 11. Specifically, the Examiner
states that in an interview held on February 22, 2010, Appellant explained
that the language of claim 7 was intended to include what was depicted in
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Figure 1 of the application.2 Ans. 11. Our review of the electronic record of
the present application reveals that Appellant’s position on appeal with
respect to Figure 1 of the application appears to contradict the position taken
earlier during prosecution (see the Examiner’s Interview Summary mailed
March 1, 2010 and Appellant’s response filed March 22, 2010).
We therefore sustain the rejection of claim 7.
Rejection II
With respect to the rejection of claims 5 and 6, which require nicks
along the upper and lower borders of the label area facilitating the formation
of variable length labels, Appellant disputes the Examiner’s determination
that the rounded corners of Schintz could be put on the adjacent labels
shown in Figure 26 of Riley, thereby resulting in “nicks.” App. Br. 16; see
Ans. 5-6. Appellant further argues that rounded corners of Schintz are not
“nicks” as recited in the claims and furthermore are outside the border and
do not allow for variably sizing a label. Id.
The Examiner responds that modifying the labels of Riley to have the
same shape as those taught by Schintz “would result in nicks at the upper
and lower borders of the labels” and “[t]hese nicks could be used for
variably sizing a label.” Ans. 11.
We find Appellant’s arguments to be persuasive. Modifying the
labels of Riley to have the rounded corners taught in Schintz would not
result in the “nicks positioned along the upper and lower border” of the label
to “facilitate a user’s tearing of the label area between a pair of nicks to

2 Claim 7 contained the language “the wristband comprises substantially the
entirety of the wristband area and the plurality of labels comprises
substantially the entirety of the label area” at the time of that interview.
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thereby variably size a label” as recited in claim 5. Rather, the rounded
corners would be at the borders between already distinct labels.
For the above reasons, we reverse the Examiner’s rejection of claims
5 and 6 as unpatentable over Riley and Schintz.
With respect to the rejection of claim 8, Appellant argues that Schintz
does not disclose the use of polypropylene in either a two ply form or in
labels. App. Br. 17.
The Examiner finds that Riley discloses making the entire form with
two plies and Schintz is only relied upon to show that the specific materials
are known to be suitable in wristband forms. Ans. 12.
Appellant’s argument is unconvincing, because it attacks Schintz
individually and not as combined with Riley as proposed by the Examiner.
See In re Merck & Co. Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986)
(nonobviousness cannot be established by attacking the references
individually when the rejection is predicated upon a combination of prior art
disclosures). The Examiner finds that Riley discloses a two ply
construction. Ans. 6; see, e.g., Riley, para. [0074]. Appellant does not
contest that finding. The Examiner relies on Schintz for its teaching of
polyester and polypropylene as suitable materials for wristbands. Ans. 6;
Schintz, col. 7, ll. 28-33.
Paragraph [0080] of Riley clearly states that “[i]t will be appreciated
by those of ordinary skill in the art that various alternatives not specifically
mentioned are well within the scope of these inventions. Some of these
alternatives include the choice of specific materials for each layer of face
stock or laminate. . .” Riley thus teaches that the particular materials for
constructing the wristband assembly are matters of choice, and Schintz
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teaches polypropylene or polyester as a suitable material for a wristband
panel. Thus, the Examiner’s determination that it would have been obvious
to construct the wristband assembly of Riley from polypropylene or
polyester “since these materials are known to be suitable in the art for this
purpose,” as disclosed by Schintz, has rational underpinnings. See Ans. 6.
We therefore sustain the rejection of claim 8.
In contesting the rejection of claim 12, Appellant simply relies on the
arguments asserted for claim 1. App. Br. 17 (stating that “[c]laim 12 is
allowable as being dependent from allowable claim 1”). Thus, for the
reasons set forth above in discussing the rejection of claim 1, we sustain the
rejection of claim 12.
Rejection III
Appellant argues claims 10 and 11 together and claims 14 and 19
together. App. Br. 17-18. We address these claims together because
Appellant asserts the same argument for both claims 10 and 11 and claims
14 and 19. Pursuant to 37 C.F.R. § 41.37(c)(1)(vii) (2011), we select claims
10 and 14 to decide the appeal as to these claims, with claim 11 standing or
falling with claim 10 and claim 19 standing or falling with claim 14.
The Examiner determines that since Appellant’s Specification states
that known printers have a two inch feeder throat, “a 2-inch total width”
would have been obvious for Riley’s wristband assembly and that “[m]aking
the width of the wristband and label areas one inch each would then have
been obvious to one of ordinary skill in the art at the time of the invention,
since optimization of dimensions requires only routine skill in the art.” Ans.
7.
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Appellant argues that the Examiner’s interpretation of the statement in
Appellant’s Specification that many existing thermal printers have a two
inch feeder throat is misplaced and cannot constitute an admission that the
wristband would obviously be designed to have a two inch width. App. Br.
17. Appellant further argues that the wristband disclosed in Riley is self-
laminating and it “would be impossible to leave room for a label area of the
size recited in the claims.” App. Br. 18.
We find Appellant’s argument unconvincing. Riley discloses that
“the inventor’s various embodiments for wristbands, extender construction,
and self-adhering labels may all be mixed and matched interchangeably in
various formats to suit various user needs, printer requirements, and as a
matter of form design or preference.” Para. [0078] (emphasis added).
Furthermore, Riley discloses that “[t]he particular length or shape of the
strap may be varied to adapt to the particular application, . . . and other
arrangement details may also be considered as part of the invention.” Para.
[0080]. Riley thus contemplates the wristband assemblies having different
sizes and shapes and specifically contemplates adjusting the size or shape
based upon the printer requirements. In addition, Appellant’s Specification
admits that thermal printers having two inch feeder throats were well known
in the art at the time of the invention. Spec. 2, ll. 21-22 (AAPA). Thus, the
Examiner’s determination that it would have been obvious to construct the
wristband assembly of Riley with a two inch overall width, for receipt in the
AAPA printer throat, has rational underpinnings. We also agree with the
Examiner that the division of the wristband/label form into two equal one-
inch widths involves only routine skill in the art and does not patentably
distinguish claim 14 over the prior art. Appellant’s contention that Riley’s
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self-laminating wristband would not leave room for a label area within the
claimed two-inch width amounts to unsupported attorney argument, and thus
is entitled to little, if any, weight. See In re De Blauwe, 736 F.2d 699, 705
(Fed. Cir. 1984) (Arguments and conclusions unsupported by factual
evidence carry no evidentiary weight.).
We therefore sustain the rejection of claims 10, 11, 14 and 19.
Appellant argues claims 23, 25 and 26 together. App. Br. 19-20. We
select claim 23 as representative of this group, with the remaining claims
standing or falling with claim 23. See 37 C.F.R. § 41.37(c)(1)(vii) (2011).
Appellant presents a separate argument for claim 24. App. Br. 20.
Appellant argues that the label area of the wristband shown in Figure
21 of Riley “does not extend [ ] substantially the full length and width of the
form” and is not “occupying substantially the entirety of any wristband
area.” App. Br. 19. Appellant also argues that there is no die cut separating
the wristband area and the label area. Id. Appellant also argues that the
Examiner has not explained where the applied references disclose a fan fold
arrangement and thus it would not be obvious to form the assemblies taught
by Riley into a fan fold strip. Id.
Appellant’s argument with respect to the extent of the label area is not
commensurate with the scope of claim 23, which requires that the label area
comprise a label portion “extending substantially the full length and width of
the label area” (not substantially the full length and width of the form). This
line of argument is not convincing, for the reasons set forth above in
discussing that same argument vis-à-vis the rejection of claim 1.
The Examiner finds that Riley discloses that a plurality of assemblies
can be linked and formed in a roll and Schintz discloses a fan fold strip of a
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plurality of wristband/label business forms joined to adjacent assemblies at
their ends along a perforation and, thus, determines it would have been
obvious to form the assemblies of Riley as a fan fold strip. Ans. 7. The
Examiner also notes that Figure 1 of Schintz clearly shows a fan fold strip of
wristband/label assemblies. Ans. 12. Appellant does not specifically contest
the Examiner’s findings or point out any error in the Examiner’s reasoning
in combining Schintz’s fan-fold feature with Riley.
For the reasons above, Appellant’s arguments do not apprise us of
error in the Examiner’s rejection of independent claim 23. We sustain the
Examiner’s rejection of claim 23 and of claims 25 and 26, which fall with
claim 23, as unpatentable over Riley, Schintz, and AAPA.
With respect to the rejection of claim 24, Appellant additionally
argues that there is no disclosure of “a ‘combo’ wristband/label assembly [of
the self-laminating type] that would fit into a width of two inches as
claimed.” App. Br. 20. Appellant asserts that “the Examiner once again
suggests merely knowing the dimensions of a thermal printer is enough to
make it obvious to design a form with all of what is recited in claim 24 into
those dimensions . . .” and contests the Examiner’s position because “the
wristbands and labels depicted in these references are incapable of being
combined in that manner .” Id. This line of argument is unconvincing, for
the reasons set forth above in discussing the rejection of claims 10 and 14.
Thus, we sustain the rejection of claim 24 as unpatentable over Riley,
Schintz, and AAPA.
Rejection IV
In addressing claim 15, the Examiner finds that Kotik teaches a
wristband that comprises the entirety of the wristband and determines it
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“would have been obvious to modify the assembly taught by Riley to
include a rectangular wristband, instead of a tapered one, since the mere
substitution of one known wristband for another would have yielded
predictable results and required only routine skill in the art to modify the
design.” Ans. 8.
Appellant argues that Kotik discloses a non-self-laminating wristband,
not a wristband that is configured as part of a larger form, such as in Riley,
and the two wristbands are “not of the same ilk, nor intended to be mere
substitutes for each other.” App. Br. 21. Appellant also alleges that the
Kotik wristband is “inferior” to that of Riley. Id.
Appellant’s allegation that Kotik’s wristband is inferior to that of
Riley is unsupported attorney argument and thus entitled to no weight.
Appellant fails to persuade us that the nature of the differences between the
wristband of Kotik and that of Riley is such that a person of ordinary skill in
the art would consider their teachings incompatible with one another.
Appellant proffers no evidence or technical reasoning to show that
modifying Riley to have the wristband formed in a rectangular shape
comprising the entirety of the wristband area is beyond the scope of one of
ordinary skill in the art. As noted above, paragraph [0080] of Riley clearly
states that “[t]he particular length or shape of the strap may be varied to
adapt to the particular application, . . . and other arrangement details may
also be considered as part of the invention.” Riley thus contemplates the
wristband assemblies having different sizes and shapes and specifically
contemplates adjusting the size or shape. Kotik teaches another wristband
shape, i.e., rectangular, known in the art. The modification proposed by the
Examiner is nothing more than the substitution of Riley’s wristband shape
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with another shape known in the art. “[W]hen a patent claims a structure
already known in the prior art that is altered by the mere substitution of one
element for another known in the field, the combination must do more than
yield a predictable result.” KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 416
(2007). Thus, the Examiner correctly determined that it would have been
obvious to construct the wristband assembly of Riley with a rectangular
wristband comprising the entirety of the wristband area.
We thus sustain the rejection of claim 15.
In contesting the rejection of claim 18, Appellant further relies on the
arguments asserted for claim 14. App. Br. 21 (stating that “Claim 18 is
allowable as depending from allowable claim 14”). This argument is not
convincing, for the reasons set forth above in discussing the rejection of
claim 14. Thus, we sustain the rejection of claim 18.
With respect to the rejection of claims 16 and 17, which, like claims 5
and 6, require nicks spaced along the upper and lower borders of the label
portion, facilitating tearing of the label portion therebetween to create labels
of variable size, Appellant relies on the arguments asserted for claims 5 and
6. App. Br. 21 (stating that “[c]laims 16 and 17 recite the nicks along the
borders to facilitate variable sizing of the labels. As explained above,
neither Riley [n]or Schintz disclose these nicks”). For the reasons set forth
above in discussing the rejection of claims 5 and 6, we reverse the rejection
of claims 16 and 17.
Rejection V
Appellant groups claims 20-22 together in contesting this rejection.
App. Br. 22. Thus, we select claim 20 as representative, with claims 21 and
22 standing or falling with claim 20. 37 C.F.R. § 41.37(c)(1)(vii) (2011).
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In contesting the rejection of claim 20, Appellant relies on the
arguments asserted for claim 14. App. Br. 22 (stating that “[t]hese claims
are allowable as being dependent from allowable claim 14”). This argument
is not convincing, for the reasons set forth above in discussing the rejection
of claim 14.
Appellant additionally argues that “there is no teaching, suggestion, or
other motivation or reason for” combining Dotson with Riley as proposed by
the Examiner. App. Br. 22. According to Appellant, Dotson’s “construction
would not be readily adaptable to Riley’s construction without detracting
from the insulating ability of the Riley lamination layer.” App. Br. 22.
Appellant points to no teaching in either reference to support this contention.
Appellant also argues that because Riley provides a separate laminating
layer, there would be no need to add any more layers. App. Br. 22. The
Examiner finds that Riley lacks a protective layer coated onto the thermally
printed face. Ans. 10. Appellant does not contest this finding. Applying a
protective coating to the thermally printed face would provide protection for
the thermally printed face. Thus, Appellant’s argument that there would be
no need for such a coating is incorrect.
For the above reasons, Appellant’s argument fails to apprise us of
error in the Examiner’s rejection of claim 20. Thus, we sustain the rejection
of claims 20-22.

DECISION
The Examiner’s decision rejecting claims 1-4, 7-12, 14, 15 and 18-26
is affirmed. The Examiner’s decision rejecting claims 5, 6, 16, and 17 is
reversed.
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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). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED-IN-PART

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