Ex Parte Langseder et alDownload PDFPatent Trial and Appeal BoardApr 1, 201311250280 (P.T.A.B. Apr. 1, 2013) Copy Citation 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 5 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 dw Copy with citationCopy as parenthetical citation