Ex Parte Waggoner et al

Patent Trial and Appeal Board

Sep 28, 2012

11291069 (P.T.A.B. Sep. 28, 2012)

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.
11/291,069 11/30/2005 Bryce C. Waggoner STD 1247 PA/41213.647 8946
7590 10/01/2012
DINSMORE & SHOHL LLP
One Dayton Centre
Suite 1300
One South Main Street
Dayton, OH 45402-2023
EXAMINER
LEWIS, JUSTIN V
ART UNIT PAPER NUMBER
3725
MAIL DATE DELIVERY MODE
10/01/2012 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 BRYCE C. WAGGONER, BOBBY W. ROACH, SCOTT J.
WILSON, and DAVID F. LAURASH
____________________

Appeal 2010-009118
Application 11/291,069
Technology Center 3700
____________________

Before: JOHN C. KERINS, WILLIAM V. SAINDON, and
NEIL T. POWELL, Administrative Patent Judges.

POWELL, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2010-009118
Application 11/291,069
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STATEMENT OF THE CASE
Bryce C. Waggoner et al. (Appellants) seek our review under
35 U.S.C. § 134 of the final rejection of claims 1-44. We have jurisdiction
under 35 U.S.C. § 6(b).
We AFFIRM.

The Claimed Subject Matter
Independent claim 1, reproduced below, is representative of the
claimed subject matter illustrative:
1. A form having detachable labels and a wristband
comprising:
a printable face sheet having first and second major
surfaces and having a pressure sensitive adhesive on at least a
portion of one surface thereof, said face sheet including first
and second adjacent portions, where said first portion of said
face sheet is die cut to form a detachable wristband having first
and second ends and first and second sides, where said
wristband is die cut to form one or more of labels carrying a
pressure sensitive adhesive which may be removed from the
balance of said wristband, and where said second portion of
said face sheet is die cut to form one or more of detachable
labels; and
a liner ply having first and second major surfaces, said
liner ply including a release coating on at least a portion of one
surface thereof and being adhered to said pressure sensitive
adhesive on said first and second portions of said face sheet.
The Rejection
The Examiner relies upon the following as evidence of
unpatentability:
Huddleston US 5,653,472 Aug. 5, 1997
Riley US 2004/0060216 A1 Apr. 1, 2004
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The Examiner rejects claims 1-44 under 35 U.S.C. § 103(a) as
unpatentable over Huddleston and Riley.

Claim Grouping
Appellants argue the claims in two groups. Appellants argue claims
1-5, 7-22, 24-34, and 36-41 as a first group. Br. 10-12. Of the claims in this
first group, claims 1, 13, 15, 17, 30, 32, 38, and 40 are independent.
Appellants separately argue claims 6, 23, 35, and 42-44 as a second group.
Id. at 13-16. In this second group, claims 6, 23, and 35 depend from
independent claims of the first group, claims 42 and 44 are independent, and
claim 43 depends from claim 42. Appellants present common arguments for
all of the claims in the first group, and Appellants present common
arguments for all of the claims in the second group. Accordingly, we select
claims 1 and 6 as representative of the first and second groups, respectively,
and all other claims in each group stand or fall with their representative
claim. See 37 C.F.R. § 41.37(c)(1)(vii)(2011).

ANALYSIS
Claims 1-5, 7-22, 24-34, and 36-41
The Examiner finds that Huddleston discloses a form meeting all of
the limitations of claim 1 except for “the wristband itself being die cut to
form one or more labels.” Ans. 3. The Examiner also finds that “Riley
teaches a wristband being die cut to form one or more of labels which may
be removed from the balance of said wristband (see fig. 1).” Id. The
Examiner concludes that it would have been obvious at the time of the
invention to create a form meeting the limitations of claim 1 by modifying
Huddleston’s form to include removable labels within its wristband. See Id.
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Application 11/291,069
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With respect to claim 1, Appellants dispute only the Examiner’s
rationale for combining the references. Br. 10. This presents a question of
fact, as the presence or absence of a reason “to combine references in an
obviousness determination is a pure question of fact.” In re Gartside,
203 F.3d 1305, 1316 (Fed. Cir. 2000) (citation omitted).
The Examiner finds that a person of ordinary skill in the art would
have considered Riley relevant to Huddleston and combined their teachings
because they both disclose systems with wristbands and corresponding
removable labels. Ans. 16-17. Both references suggest using the removable
labels and wristband to identify a person and associate certain items with the
person by putting the wristband on the person and applying the removable
labels to the associated items. See Huddleston, col. 1, ll. 36-54, col. 4, ll. 53-
62; Riley, ¶ 0033. Riley discloses incorporating removable labels on a
wristband as part of a system used for “separately identify[ing] a person,
such as a health care patient, with his/her possessions or other related items,”
including associating victims’ belongings and body parts in a disaster
scenario. Riley, ¶¶ 0002, 0006. Based on this, the Examiner finds that a
person of ordinary skill in the art would have had reason to modify
Huddleston’s form to incorporate removable labels on the wristband “in
order to provide a means by which to conveniently associate victims with
their belongings, body parts, etc., as explicitly taught by Riley (see
paragraph 2).” Ans. 4.
Appellants dispute the rationale for combining the references by
extensively discussing differences between certain details of the two
references. But Appellants do not identify a convincing reason that these
details would have dissuaded or inhibited a person of ordinary skill in the art
from combining the teachings of the references.
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Application 11/291,069
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Appellants stress that Riley discusses using its wristband in a disaster
situation and “specifically contrasts the environment in which the Riley form
is used with a typical hospital environment.” Br. 10. At first blush, these
statements and similar assertions of Appellants seem to suggest that a person
of ordinary skill in the art would dismiss all of Riley’s disclosure as
unnecessary or useless in a hospital setting or other circumstances where one
might use Huddleston’s system. But Appellants further state that
“Applicants have never argued that the Riley form is not useful in a hospital
environment,” conceding that “[p]resumably, the Riley wristband could be
‘useful’ in any one of a number of diverse environments.” Id. at 12.
Consistent with this, Riley itself explicitly notes that it discloses “[a]
business form particularly adapted for use in a medical or hospital
environment” (Riley, Abstr.), and that its disclosure has use in “applications
other than in emergency situations in the field” (Riley, ¶ 0037).
Accordingly, we agree with the Examiner’s finding that Riley’s discussion
of exemplary uses would not divert a person of ordinary skill in the art from
combining the teachings of the references. Ans. 16-17.
Appellants further assert that a person of ordinary skill in the art
would not have combined the references because Riley’s labels have
structural features that Appellants purport would not work in Huddleston’s
system. Br. 10-12. For example, Appellants stress that Riley’s preprinted
and laminated labels would not work in Huddleston’s system of printing the
labels just prior to use. Id. This line of reasoning is unpersuasive because it
rests on an incorrect assumption that the Examiner can properly combine the
references only if it would work to blindly copy every aspect of Riley’s
labels when applying the concept of removable wristband labels to
Huddleston’s system.
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To justify combining reference teachings in support of a
rejection it is not necessary that a device shown in one
reference can be physically inserted into the device shown in
the other. The test for obviousness is not whether the features of
a secondary reference may be bodily incorporated into the
structure of the primary reference; nor is it that the claimed
invention must be expressly suggested in any one or all of the
references.
In re Keller, 642 F.2d 413, 425 (CCPA 1981) (internal citations omitted).
Additionally, Appellants’ arguments conflict with the level of
ordinary skill in the art demonstrated by the references. Huddleston and
Riley demonstrate an ability among those of ordinary skill in the art to adapt
the construction of a label to its intended use; Riley discloses a label
construction with features specially adapted for emergency situations (Riley,
¶ 0006), and Huddleston discloses a label construction adapted for use in
situations more conducive to printing the form just prior to use, such as
hospitals and similar environments (Huddleston, col. 1, ll. 5-11 and 44-49,
col. 4, ll. 53-62). A person of ordinary skill in the art could similarly adapt
Riley’s concept of removable wristband labels to Huddleston by modifying
Huddleston’s wristband with removable wristband labels constructed in a
manner like Huddleston’s other labels. See KSR Int’l Co. v. Teleflex, Inc.,
550 U.S. 398, 421 (2007) (“A person of ordinary skill is also a person of
ordinary creativity, not an automaton.”).
In view of the strong similarities between the two references and
Riley’s disclosure of certain benefits, we agree with the Examiner’s finding
that a person of ordinary skill in the art would have recognized ample reason
to combine the references in a manner that would result in Appellants’
claimed invention.

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Claims 6, 23, 35, and 42-44
Regarding claim 6, Appellants argue (1) that the cited references do
not suggest the claim features of “said printed indicia being patient-specific
and printed on said one or more labels on said wristband” and (2) that the
Examiner errs in asserting that this recitation of claim 6 constitutes “non-
functional descriptive material for which no patentable weight will be
afforded” (Fin. Rej. 16).1 Br. 13-16. Because we agree with the Examiner’s
factual finding that the cited references do suggest the claim features, we
sustain the rejection without needing to reach the second issue.
Accordingly, the dispositive issue regarding claim 6 is a question of fact.
Para-Ordnance Mfg., Inc. v. SGS Importers Int’l, Inc., 73 F.3d 1085, 1088
(Fed. Cir. 1995) (“What the prior art teaches . . . is a determination of fact.”).
The Examiner finds that both references disclose labels with patient-
specific printed indicia. The Examiner finds that Riley discloses patient-
specific information in the form of a bar code printed on labels removably
attached to a wristband (See Ans. 17), given that Riley discloses that its bar
code is “identifying indicia” associated with a particular person “to
separately identify” the person (Riley, ¶¶ 0002, 0006, 0009). The Examiner
also finds that Huddleston discloses printing patient-specific information on
both a wristband and labels (See Ans. 5), as Huddleston discloses printing a
patient’s name on a wristband and each of the labels associated with that
wristband (Huddleston, col. 1, ll. 46-49, col. 3, ll. 38-50, col. 4, ll. 53-62).
Appellants offer conclusory assertions that Huddleston and Riley fail
to teach or suggest patient-specific printed indicia on labels on a wristband,

1 Appellants also passingly reiterate their position that the Examiner erred in
combining the references (Br. 13), but Appellants do not offer any further
arguments on this subject beyond those associated with claim 1.
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Application 11/291,069
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but Appellants do not explain why they believe this to be the case. Br. 13,
16. Appellants do not explain why they believe Riley’s bar code does not
constitute patient-specific information, nor do they discuss Huddleston’s
disclosure of printing a patient’s name on each label of its form.
Accordingly, Appellants’ arguments are unpersuasive. We agree with
the Examiner’s finding that the bar code printed on the removable labels on
Riley’s wristband constitutes patient-specific printed indicia. Furthermore,
even if Riley’s bar code did not meet the claim features, Huddleston and
Riley together support the Examiner’s finding. Huddleston’s disclosure of
printing a patient’s name on every label of its form would have suggested
also printing the patient’s name on any removable labels added to
Huddleston’s wristband when modifying Huddleston to implement Riley’s
concept of removable labels on a wristband. Appellants have not addressed
the Examiner’s finding that Huddleston discloses patient-specific printed
indicia on labels. See Fin. Rej. 4; Ans. 5; Br. 13-16.

DECISION
We affirm the Examiner’s decision regarding claims 1-44.
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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