Ex Parte Wilkinson

Patent Trial and Appeal Board

Dec 31, 2012

11262544 (P.T.A.B. Dec. 31, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte LAURA WILKINSON
____________

Appeal 2010-010815
Application 11/262,544
Technology Center 3700
____________

Before MICHAEL C. ASTORINO, MICHAEL L. HOELTER, and
RICHARD E. RICE, Administrative Patent Judges.

RICE, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Laura Wilkinson (Appellant) seeks our review under 35 U.S.C. § 134
of the Examiner’s rejection of claims 1-21. An oral hearing was held
December 10, 2012. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

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Application 11/262,544

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The Claimed Subject Matter
The claimed subject matter “relates to a label and labeling
system for collection containers, and, more particularly, to a label
with a fill line indicator and a labeling system with alignment indicia
that may be color-coded.” Spec., para. [0001]. Claim 1, reproduced
below, is representative of the subject matter on appeal:
1. A collection container comprising:
a first label attached to a collection container, the first
label comprising identification information, a first opaque
portion, and a second opaque portion, the first opaque portion
having an area that is smaller than an area of the second opaque
portion,
wherein the first label comprises a gap defined by a break
between the first opaque portion and the second opaque portion,
the gap indicating a desirable fill volume for the collection
container.

The Rejections
The following Examiner’s rejections are before us for review:
(1) claims 1, 2, 4-7 and 11 stand rejected under 35
U.S.C. § 103(a) as unpatentable over Stevens (US 6,428,640
B1, iss. Aug. 6, 2002), Jensen (US 4,873,193, iss. Oct. 10,
1989), and Tussing (US 4,480,470, iss. Nov. 6, 1984);

(2) claim 3 stands rejected under 35 U.S.C. § 103(a) as
unpatentable over Stevens, Jensen, Tussing and Weisbach (US
6,279,759 B1, iss. Aug. 28, 2001);

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(3) claims 8, 12, 13, 15, 16, 181 and 19-21 stand
rejected under 35 U.S.C. § 103(a) as unpatentable over Stevens,
Jensen, Tussing and Hogan (US 6,209,921 B1, iss. Apr. 3,
2001);

(4) claim 9 stands rejected under 35 U.S.C. § 103(a) as
unpatentable over Stevens, Jensen, Tussing and Levy (US
6,030,582, iss. Feb. 29, 2000);

(5) claim 10 stands rejected under 35 U.S.C. § 103(a)
as unpatentable over Stevens, Jensen, Tussing and Yamazaki
(US 5,061,263, iss. Oct. 29, 1991); and

(6) claims 14 and 17 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over Stevens, Jensen, Tussing and
Falla (US 4,122,947, iss. Oct. 31, 1978).

Rejection (1) − Claims 1, 2, 4-7 and 11
Appellant argues these claims as a group. App. Br. 10-16. We select
claim 1 as representative. See 37 C.F.R. § 41.37(c)(1)(vii) (2011).
The Examiner finds that Stevens discloses the recited features of
claim 1 except an opaque section including first and second opaque portions,
the first opaque portion having an area that is smaller than an area of the
second opaque portion, wherein the opaque section comprises a gap defined
by a break in the opaque section between the first opaque portion and the
second opaque portion, the gap indicating a desirable fill volume for the
collection container. Ans. 4. To remedy this deficiency in Stevens, the
Examiner first turns to Jensen. The Examiner finds that Jensen discloses

1 Although claim 18 is not listed in the statement of the rejection on page 7
of the Answer, the Examiner discusses the rejection of claim 18 together
with claims 15 and 16 on pages 11 to 14 of the Answer. Accordingly, we
treat the failure to list claim 18 in the statement of the rejection on page 7 of
the Answer as a typographical error.
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Application 11/262,544

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measurement indicia (specimen level markers 56 “spaced to define a desired
fill volume, at an extreme most edge of the label”) and concludes that “it
would have been obvious to a person having ordinary skill in the art at the
time the invention was made to provide the level markings on an edge of the
vial label of Stevens in order to allow an individual to determine desired
level area for the specimen in a particular vial.” Id. at 5 (citing Jensen, col.
5, ll. 5-13, figs. 2, 3 and 4). Next, the Examiner turns to Tussing. The
Examiner finds that Tussing discloses a measurement scale 36 having
continuous indicia with gaps indicating certain fill volumes; the Examiner
particularly points to “a first portion (Figure 2, Item 36 and small line under
gap and numeral ‘4’) and a second portion (Figure 2, Item 36 and line over
gap and numeral ‘4’ . . . ).” Ans. 5-6. The Examiner concludes that:
it would have been obvious to a person having ordinary skill in
the art at the time the invention was made to provide the label
of Stevens modified by Jensen with measuring indicia in the
manner as taught in Tussing in order to provide a label with the
ability to indicate different levels within a desired fill range.
Id. at 6.
Appellant’s first argument is that “[t]he Tussing patent merely
discloses a conventional clear, graduated cylinder coupled to a gas cap for
measuring gas or oil,” does not teach or suggest “using a label of any kind
for any purpose” and accordingly “is in a different field of endeavor than the
present invention.” App. Br. 11-12; see also Reply Br. 4-5. This argument
is not persuasive. First, in arguing that the Tussing patent merely discloses a
conventional clear, graduated cylinder coupled to a gas cap for measuring
gas or oil, Appellant fails to adequately explain how the Examiner erred in
relying on measurement scale 36 of Tussing as disclosing continuous fill
indicia with gaps indicating certain fill volumes. Second, even if Tussing is
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in a different field of endeavor than the invention, Tussing is not
nonanalogous art if it is “is reasonably pertinent to the particular problem
with which the inventor is involved.” In re Klein, 647 F.3d 1343, 1348
(Fed. Cir. 2011) (internal quotations omitted). Here, Appellant is involved
with the problem of providing a quick, visual indication of the fill volume of
a container.2 Tussing discloses an oil measurement scale 36 that provides a
visual indication of the volume of oil in a cylinder 32. Tussing, col. 3, ll. 60-
63, figs. 1 and 2. We find that Tussing is reasonably pertinent to the
problem of providing a quick, visual indication of the fill volume of a
container, and that Tussing is not nonanalogous art for at least that reason.
Appellant next argues that the combination of Stevens, Jensen and
Tussing
fail[s] to disclose or suggest a first label that includes a first
opaque portion and a second opaque portion, with the first
opaque portion having an area that is smaller than an area of the
second opaque portion, and the first label including a gap
defined by a break between the first opaque portion and the
second opaque portion as required by independent claim 1.
App. Br. 12. In support of this argument, Appellant contends that “a line, as
shown by the measuring scale (36) in the Tussing patent, will not have an
area because a line does not enclose a region” and
[t]herefore, even if the small line shown under the numeral “4”
in FIG. 2 [of Tussing] was considered to correspond to the first
opaque portion and the longer line over the numeral “4” in FIG.
2 [of Tussing] was considered to correspond to the second
opaque portion, the small line and the longer line of the Tussing

2 E.g., Spec., para. [0018] (“Opaque bar 33 with gap 35 provides a user of
the container 10, such as a phlebotomist, with a quick, visual indication that
the proper and intended amount of blood to be collected has been drawn and
deposited in the container 10.”).
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patent do not have respective areas as required by independent
claim 1.
Id. However, we agree with the Examiner’s findings that the printed lines in
Tussing’s figures have areas (Ans. 18) and that the breaks in the lines define
clear gaps, even though numbers (indicative of volume) are in the gaps (id.
at 19).
Appellant further argues that “the gas cap of the Tussing patent
cannot provide a gap for indicating a desirable fill volume for a collection
container as recited by independent claim 1.” App. Br. 14 (referencing In re
Gulack, 703 F.2d 1381 (Fed. Cir. 1983)). The Examiner’s position in
response is that there is no difference in function between the indicia
disclosed by the asserted combination of references and the indicia recited in
claim 1, both of which “have fill volumes defined by gaps.” Ans. 18-19
(discussing Gulack).3 The Examiner further contends that a “desired fill
volume” (emphasis added) is “just a method of use,” that the combination of
references is “fully capable” of such use, and that “one can choose [his or
her] desired fill volume based on the breaks between the opaque portions.”
Id. at 19. Again, we agree with the Examiner. Appellant does not
adequately explain why Tussing’s gap is incapable of indicating a desirable
fill volume. See Reply Br. 8.4

3 An examiner must consider all claim limitations, including descriptive
material, when determining patentability of an invention over the prior art.
Gulack, 703 F.2d at 1385. However, the Examiner need not give patentable
weight to descriptive material that does not have a new and unobvious
functional relationship with the substrate. See Gulack, 703 F.2d at 1386; see
also In re Ngai, 367 F.3d 1336, 1338 (Fed. Cir. 2004).
4 See, e.g., In re Schreiber, 128 F.3d 1473, 1477-78 (Fed. Cir. 1997) (claims
directed to an apparatus must be distinguished from the prior art in terms of
structure rather than function); see also In re Swinehart, 439 F.2d 210, 213
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Finally, we are not persuaded by Appellant’s largely repetitive
argument that the Examiner's conclusion of obviousness is based upon
improper hindsight reasoning. Reply Br. 9-11. For the reasons discussed
supra, we determine that the Examiner’s conclusion of obviousness is
supported by adequate articulated reasoning with rational underpinning.
Accordingly, we sustain the rejection of claims 1, 2, 4-7 and 11 under
35 U.S.C. § 103(a) as unpatentable over Stevens, Jensen and Tussing.
Rejections (2) – Claim 3
Claim 3 depends from claim 1. Appellant argues with respect to the
rejection of claim 3 that Weisbach does not cure the deficiencies in the
rejection of claim 1 based on the combination of Stevens, Jensen and
Tussing. App. Br. 17; Reply Br. 12. For the reasons discussed supra, there
are no deficiencies to cure.
Accordingly, we sustain the rejection of claim 3 under 35 U.S.C.
§ 103(a) as unpatentable over Stevens, Jensen, Tussing and Weisbach.
Rejection (3) − Claims 8, 12, 13, 15, 16, 18 and 19-21
Claim 8 depends from claim 7, which in turn depends from claim 1.
Appellant argues with respect to the rejection of claim 8 that Hogan does not
cure the deficiencies in the rejection of claim 1 based on the combination of
Stevens, Jensen and Tussing. App. Br. 18. For the reasons discussed supra,
there are no deficiencies to cure and thus we sustain the rejection of claim 8

(CCPA 1971) (“[W]here the Patent Office has reason to believe that a
functional limitation asserted to be critical for establishing novelty in the
claimed subject matter may, in fact, be an inherent characteristic of the prior
art, it possesses the authority to require the applicant to prove that the
subject matter shown to be in the prior art does not possess the characteristic
relied on.”).
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under 35 U.S.C. § 103(a) as unpatentable over Stevens, Jensen, Tussing and
Hogan.
Appellant argues that independent claims 12 and 15 are patentable for
the same reasons as claim 1. Id. at 18-24; Reply Br. 4-11. For the reasons
discussed supra in respect to the rejection of claim 1, we sustain the
rejection of claims 12 and 15, and claims 13, 16, 18 and 19-21 dependent
thereon,5 under 35 U.S.C. § 103(a) as unpatentable over Stevens, Jensen,
Tussing and Hogan.
Rejections (4)-(7) – Claims 9, 10, 14 and 17
Claims 9 and 10 each depend from claim 7, which in turn depends
from claim 1. Claim 14 depends from claim 12. Claim 17 depends from
claim 16, which in turn depends from claim 15. Appellant argues with
respect to the rejections of claims 9, 10, 14 and 17 that Levy, Yamazaki and
Falla do not cure the deficiencies in the rejection of claim 1 based on the
combination of Stevens, Jensen and Tussing. App. Br. 24-26. For the
reasons discussed supra, there are no deficiencies to cure and thus we
sustain the rejections under 35 U.S.C. § 103(a) of: claim 9 as unpatentable
over Stevens, Jensen, Tussing and Levy; claim 10 as unpatentable over
Stevens, Jensen, Tussing and Yamazaki; and claims 14 and 17 as
unpatentable over Stevens, Jensen, Tussing and Falla.

DECISION
We affirm the rejections of claims 1-21.
No time period for taking any subsequent action in connection with

5 Separate patentability is not argued for dependent claims 13, 16, 18 and 19-
21. App. Br. 24; Reply Br. 11.
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this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).

AFFIRMED

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