Ex Parte Langseder et al

Patent Trial and Appeal Board

Apr 1, 2013

11250280 (P.T.A.B. Apr. 1, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
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.
11/250,280 10/14/2005 Neal E. Langseder SAN0024US 5598
7590 04/02/2013
Licata & Tyrrell P.C.
66 E. Main Street
Marlton, NJ 08053
EXAMINER
VU, MINDY D
ART UNIT PAPER NUMBER
2884
MAIL DATE DELIVERY MODE
04/02/2013 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 NEAL E. LANGSEDER and EDWARD WIEGAND
____________________

Appeal 2010-011540
Application 11/250,280
Technology Center 2800
____________________

Before ROBERT E. NAPPI, DEBRA K. STEPHENS, and
PATRICK M. BOUCHER, Administrative Patent Judges.

BOUCHER, Administrative Patent Judge

DECISION ON APPEAL

Appeal 2010-011540
Application 11/250,280
2
STATEMENT OF THE CASE
Introduction
Appellants appeal under 35 U.S.C. § 134 from a rejection of claims 1–
3. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

Illustrative Claim
The disclosure relates to an invisible eyemark for orienting squeeze
tubes during manufacture. Abstract.
Claim 1 is illustrative and is reproduced below:
1. An invisible eyemark for orienting a squeeze tube during
manufacture comprising a dye which absorbs infrared
wavelengths, wherein said infrared wavelengths are from 700
nm to 1900 nm or from 11 μm to 1 mm.

References
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Ortlieb US 3,522,432 Aug. 4, 1970
Mayer US 2005/0052519 A1 Mar. 10, 2005

Rejections
The Examiner rejected claims 1-3 under 35 U.S.C §103(a) as
unpatentable over Ortlieb in view of Mayer.
1

1
Appellants indicate that “claims 1–3 stand or fall together” (App. Br. 11).
We accordingly treat claim 1 as representative for all claims.
Appeal 2010-011540
Application 11/250,280
3

ISSUE
Appellants argue on pages 11–15 of their Appeal Brief that the
Examiner’s rejections of claims 1–3 under 35 U.S.C. §103(a) are in error.
These arguments present us with the issue of whether the Examiner erred by
improperly combining the teachings of Ortlieb and Mayer.

ANALYSIS
We have reviewed Appellants’ arguments in their Appeal Brief and
Reply Brief, and have reviewed the Examiner’s response to Appellants’
arguments.
We find Ortlieb describes an “alignment apparatus for containers such
as a plastic tube having a registration mark
2
thereon invisible to the naked
eye” (Ortlieb, col. 1, ll. 13–15), and discloses that the mark absorbs light at
ultraviolet wavelengths (Ans. 3, citing Ortlieb, col. 1, ll. 61–64). The
Examiner acknowledges that “Ortlieb lacks a dye which absorbs infrared
wavelengths wherein the wavelengths are from 700 nm to 1900 nm or from
11 μm to 1 mm” (Ans. 3), and cites Mayer for such a disclosure.
Appellants argue that Mayer “is non-analogous art and that it is
improper to combine its teachings with the [Ortlieb] reference” (App. Br.
11), noting that Mayer “relate[s] to invisible security marks for marking
documents of value …, not an eyemark mark used to align a container
during filling or labeling” (App. Br. 13).

2
Appellants’ Specification draws a distinction between “registration marks”
and “eyemarks” (Spec. 3:21–24), but the context of Ortlieb’s disclosure
makes clear that its use of the term “registration mark” is equivalent to
Appellants’ “eyemark.”
Appeal 2010-011540
Application 11/250,280
4
“Two criteria have evolved for determining whether prior art is
analogous: (1) whether the art is from the same field of endeavor, regardless
of the problem addressed, and (2) if the reference is not within the field of
the inventor's endeavor, whether the reference still is reasonably pertinent to
the particular problem with which the inventor is involved.” In re Clay , 966
F.2d 656,658 (Fed. Cir. 1992). (citing In re Deminski, 796 F.2d 436, 442
(Fed. Cir. 1986); In re Wood, 599 F.2d 1032, 1036 (CCPA 1979)).
We agree with the Examiner that “[i]n this case, [Appellants’] . . .
identification of the field of endeavor is too narrowly drawn” (Ans. 4):
“Mayer discloses a dye . . . [that] can be used to produce markings on any
objects, packaging and containers” (Ans. 3, citing Mayer ¶¶2, 23). The test
for obviousness is not that the claimed invention must be expressly
suggested in any one or all of the references. Rather, the test is what the
combined teachings of the references would have suggested to those of
ordinary skill in the art. Here, the Examiner relies on Mayer’s teaching of a
dye which permits invisible printing on an object (Ans. 4). Ortleib teaches
using a dye which permits invisible printing on an object (Abstract).
We find Mayer reasonably pertinent to the problem with which
Appellants were concerned because the availability of alternative dyes that
absorb outside the visible spectrum would logically have commended itself
to an ordinarily skilled artisan’s attention in considering the problem of
producing invisible eyemarks. Therefore, we find the references, Mayer and
Ortleib, are analogous art.
What the Examiner has identified is “the simple substitution of one
known element for another” (KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398,
417 (2007))—an infrared-absorbing dye in place of an ultraviolet-absorbing
Appeal 2010-011540
Application 11/250,280
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dye—to obtain predictable results, and Appellants have provided no
compelling identification of any unexpected results.
We are therefore not persuaded that the Examiner erred in combining
the teachings of Ortlieb and Mayer, and accordingly sustain the Examiner’s
rejection of claims 1–3.

CONCLUSION
On the record before us, we conclude that the Examiner has not erred
in rejecting claims 1–3 under 35 U.S.C. §103(a).

DECISION
The Examiner’s decision rejecting claims 1–3 is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED

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