Ex Parte GreerDownload PDFPatent Trial and Appeal BoardMay 20, 201412026030 (P.T.A.B. May. 20, 2014) Copy Citation 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 Appeal 2012-004425 Application 12/026,030 2 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. Appeal 2012-004425 Application 12/026,030 3 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. Appeal 2012-004425 Application 12/026,030 4 § 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 Appeal 2012-004425 Application 12/026,030 5 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 Appeal 2012-004425 Application 12/026,030 6 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, Appeal 2012-004425 Application 12/026,030 7 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 Appeal 2012-004425 Application 12/026,030 8 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. Appeal 2012-004425 Application 12/026,030 9 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 Appeal 2012-004425 Application 12/026,030 10 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. Appeal 2012-004425 Application 12/026,030 11 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 Appeal 2012-004425 Application 12/026,030 12 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 Appeal 2012-004425 Application 12/026,030 13 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 Appeal 2012-004425 Application 12/026,030 14 “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 Appeal 2012-004425 Application 12/026,030 15 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). Appeal 2012-004425 Application 12/026,030 16 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. Appeal 2012-004425 Application 12/026,030 17 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 Klh Copy with citationCopy as parenthetical citation