Ex Parte Lam

Patent Trial and Appeal Board

Sep 20, 2012

11905187 (P.T.A.B. Sep. 20, 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.
11/905,187 09/28/2007 Joe Augustine S.T. Lam ATAT2 3599
7590 09/20/2012
C.A.ROWLEY
51 RIVERSIDE PARKWAY
FRANKFORD, ON K0K 2C0
CANADA
EXAMINER
RIVERA, JOSHEL
ART UNIT PAPER NUMBER
1746
MAIL DATE DELIVERY MODE
09/20/2012 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 JOE AUGUSTINE S.T. LAM
____________

Appeal 2011-005071
Application 11/905,187
Technology Center 1700
____________

Before EDWARD C. KIMLIN, BRADLEY R. GARRIS, and
CHUNG K. PAK, Administrative Patent Judges.

KIMLIN, Administrative Patent Judge.

DECISION ON APPEAL

This is an appeal from the final rejection of claims 1, 4, 6, 7, 11, 13,
and 17. We have jurisdiction under 35 U.S.C. § 6(b). Claim 1 is illustrative:
1. A tape applicator comprising a detachable unit and a stationary
unit, said stationary unit having a main frame mounting a rear portion of a
taping mechanism, said detachable unit providing a front portion of said
taping mechanism, said front portion having an auxiliary frame including a
tape roll holder and pivotably mounting a front link of said taping
mechanism, a connector on said detachable unit and a cooperating connector
on said main frame of said stationary unit which combine to releasably
mount said detachable unit on said stationary unit and connect said
stationary unit with said detachable unit, a coupler in the form of a cam track
on said front portion of said taping mechanism and a cooperating coupler on
said rear portion of said taping mechanism, said coupler and said
Appeal 2011-005071
Application 11/905,187

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cooperating coupler combining to form a releasable coupling releasably,
operatively interconnecting said front link and said rear portion of said
taping mechanism for movement together when said detachable unit is
mounted on said stationary unit.

The Examiner relies upon the following references as evidence of
obviousness:
Marchisen et al. (Marchisen) 3,403,869 Oct. 1, 1968
Pabodie et al. (Pabodie) 4,290,840 Sep. 22, 1981
Lam 5,676,298 Oct. 14, 1997

Appellant’s claimed invention is directed to a tape applicator which,
we are told, is an improvement over conventional devices commonly used
commercially to tape boxes. In particular, the claimed tape applicator is
asserted to be an improvement over Appellant’s device disclosed in the
primary reference to Lam. The claimed applicator comprises a detachable
unit and a stationary unit comprising a main frame for mounting a rear
portion of the taping mechanism. The detachable unit provides the front
portion of the taping mechanism and has an auxiliary frame which includes a
tape roll holder. The front portion of the mechanism comprising the tape
roll holder is pivotably mounted on a front link of the taping mechanism.
According to Appellant, the detachable unit of the claimed device prevents
an operator from being cut by the cutting blade “because the tape cutting
mechanism (64) which cuts the tape is mounted on stationary unit 14 and is
not part of the detachable unit 12 which is rethreaded with a replacement roll
of tape when this detachable unit (12) has been removed” (Prin. Br. 4, first
para.).
Appeal 2011-005071
Application 11/905,187

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Appealed claims 1, 4, 6, 7, 11, 13, and 17 stand rejected under
35 U.S.C. § 103(a) as being unpatentable over Lam in view of Marchisen
and Pabodie.1
We have thoroughly reviewed the respective positions advanced by
Appellant and the Examiner. In so doing, we agree with Appellant that the
Examiner’s rejection is not sustainable.
Lam discloses a tape applicator which, as acknowledged by the
Examiner, does not comprise a detachable unit and a stationary unit wherein
the detachable unit includes a tape roll holder. Marchisen discloses a tape
dispenser, not a tape applicator, comprising a removable cartridge for
housing the tape. According to the Examiner, it would have been obvious
for one of ordinary skill in the art to modify the applicator of Lam in
accordance with Marchisen by providing a detachable mechanism which
houses the tape.
We do not subscribe to the Examiner’s position. We concur with
Appellant that the tape dispenser of Marchisen is not a tape applicator of the
type disclosed by Lam and, therefore, would not have suggested the
modification proposed by the Examiner. In addition, such a modification of
Lam would not result in the pivotal mounting of the detachable unit required
by the appealed claims. The Examiner cites Pabodie for the use of the
claimed cam tracks to control pivotal movement but, as urged by Appellant,
Pabodie is directed to a label printing and applying apparatus and not a tape
applicator. We are not persuaded that one of ordinary skill in the art would

1 Appellant has not addressed, let alone contested, the Examiner’s objection
to claims 7 and 11 as duplicates.
Appeal 2011-005071
Application 11/905,187

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have found the requisite suggestion or reason in Pabodie to modify the tape
applicator of Lam to comprise a stationary unit and a pivoting detachable
unit comprising a tape roll holder. In our view, the Examiner’s legal
conclusion of obviousness requires the use of impermissible hindsight.
In conclusion, based on the foregoing, we are constrained to reverse
the Examiner’s rejection.
REVERSED

cam