Ex Parte Wong et al

Patent Trial and Appeal BoardFeb 8, 2019

12729139 (P.T.A.B. Feb. 8, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 12/729,139 03/22/2010 Galen Wong 33772 7590 02/12/2019 MCDONALD HOPKINS LLC 600 Superior A venue, East Suite 2100 CLEVELAND, OH 44114-2653 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 ATTORNEY DOCKET NO. CONFIRMATION NO. 38208-00016 6657 EXAMINER CHANG, VICTORS ART UNIT PAPER NUMBER 1788 NOTIFICATION DATE DELIVERY MODE 02/12/2019 ELECTRONIC 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. Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the following e-mail address(es): ipmailbox@mcdonaldhopkins.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte GALEN WONG, STEVEN C. WEIRATHER, JERRY HODSDON, INGE BACHNER, and MARTIN UTZ Appeal2018-005276 Application 12/729, 13 9 Technology Center 1700 Before LINDA M. GAUDETTE, N. WHITNEY WILSON, and JEFFREY R. SNAY, Administrative Patent Judges. SNAY, Administrative Patent Judge. DECISION ON APPEAL 1 Appellants2 appeal under 35 U.S.C. Â§ 134(a) from the Examiner's decision rejecting claims 47---66. We have jurisdiction under 35 U.S.C. Â§ 6(b ). We affirm. 1 We refer to the Specification ("Spec.") filed March 22, 2010; Final Office Action ("Final Act.") dated August 7, 2017; Appellants' Appeal Brief ("App. Br.") filed January 17, 2018; Examiner's Answer ("Ans.") dated February 22, 2018; and Appellants' Reply Brief ("Reply Br.") dated April 23, 2018. 2 Appellants identify CCL Label, Inc. as the real party in interest. App. Br. 3. Appeal2018-005276 Application 12/729,139 BACKGROUND The subject matter of the application on appeal relates to a label sheet configured to facilitate removal of labels from the sheet after printing. Spec. ,r,r 2, 6. Claim 47 is illustrative: Claim 47: A label sheet comprising: a. release liner, the release liner including a layer of release material; b. a first adhesive-backed label that is releasably coupled to the release liner; c. a second adhesive-backed label that is releasably coupled to the release liner; and d. a matrix juxtaposed with the first and second adhesive- backed labels and coupled to the release liner; e. wherein: 1. the first label has a part that includes an edge, ii. the release liner includes a first weakened separation line that underlies the first label, 111. the matrix includes a matrix weakened separation line that is offset from the first weakened separation line of the release liner, wherein a portion of the matrix overlying the first weakened separation line helps to keep the release liner from prematurely tearing when fed through a printer, and a portion of the release liner underneath the matrix separation line helps to keep the matrix from prematurely tearing when fed through a printer; iv. the release liner is configured to be tom along the first weakened separation line, v. the release liner includes a second weakened separation line that underlies the second label, vi. the release liner is configured to be tom along the second weakened separation line; and vii. the matrix is configured to be tom along the matrix weakened separation line to remove a portion of the matrix to expose the edge of the first label. App. Br. 24--25 (Claims Appendix) (emphasis added to highlight a key recitation in dispute). 2 Appeal2018-005276 Application 12/729,139 REJECTIONS I. Claims 47-66 stand rejected on the ground of nonstatutory double patenting over claims 34--43 of U.S. Patent 7,709,071. II. Claims 47---66 stand rejected under 35 U.S.C. Â§ 103(a) as unpatentable over Cusack3 and Brady. 4 OPINION Rejection I Appellants do not challenge the Examiner's double patenting determination. See App. Br. 23. Accordingly, Rejection I is summarily sustained. Rejection II Relevant to Appellants' arguments on appeal, the Examiner finds that Cusack discloses an adhesive label sheet assembly comprising backing sheet 14 releasably adhered to sheet 36 that includes die-cut labels and perforation lines, e.g., 52, 58, that facilitate removal of non-label portions (matrix), 5 e.g., 38, 50, of sheet 36 from backing sheet 14. Final Act. 3 ( citing Cusack Fig. 5). We reproduce Cusack's Figure 5 below: 3 US 5,340,427, issued August 23, 1994 ("Cusack"). 4 US 3,038,597, issued June 12, 1962 ("Brady"). 5 Cusack's non-label portions of sheet 36 correspond to what is identified as matrix in the claims. 3 Appeal2018-005276 Application 12/729,139 {Figure 5 is a front elevation view of a label product having a plurality of labels die cut from a film sheet releasably attached to a backing sheet. Cusack 3:8-10.} Brady discloses "a plurality of dispensably mounted adhesive tape portions arranged in a row and mounted on a cardlike backing-board." Brady 2:65---69. Scorings provided in the backing board are provided such that severance of the backing board along a scoring exposes the end of a tape. Id. at 4:5-15, Fig. 6. We reproduce Brady's Figure 6 below: {Figure 6 is an isometric perspective view showing strips of tape adhered to a partly severed backing-board. Brady 2:32-35.} 4 Appeal2018-005276 Application 12/729,139 In light of the foregoing disclosures, the Examiner determines that it would have been obvious to one of ordinary skill to provide Cusack' s label product with a scored line offset from the label edges to facilitate grasping of exposed label edges. Final Act. 4. The Examiner additionally finds that the so-modified product of Cusack inherently would have met the claimed feature of a weakened separation line in sheet material 36 offset from a weakened separation line of backing sheet 14 because "perforation lines 52, 54, 56, and 58 of Cusack would be offset from the weakened lines 16, 18 of Brady." Ans. 7. Appellants argue, inter alia, that the combined teachings of Cusack and Brady do not provide for the claimed offset of weakened lines in the matrix and the release liner such that a portion of the matrix overlies the weakened separation line in the release liner. App. Br. 13-15. We find Appellants' argument persuasive. Claim 4 7 requires that "the matrix includes a matrix weakened separation line that is offset from the first weakened separation line of the release liner, wherein a portion of the matrix overlying the first weakened separation line helps to keep the release liner from prematurely tearing when fed through a printer." (Emphasis added). The remaining independent claims include similar language. See App. Br. 26-29, 31-32 (Claims Appendix, claims 51, 52, 60). To meet that recitation by modifying Cusack, it would be necessary to not only add an offset weakened separation line beneath Cusack's labels, but also to restrict the added separation line to Cusack's backing sheet 14 and not to Cusack's adhesive sheet 36. That is, the added score line proposed by the Examiner would need to perforate 5 Appeal2018-005276 Application 12/729,139 Cusack' s backing sheet while leaving matrix material in place above the added score line. As Appellants point out, Brady's disclosed product lacks any adhesive sheet material adjacent the removable tape sections and, therefore, provides no reason to provide Cusack' s product with offset weakened lines such that matrix material overlies the weakened line provided in the release liner. App. Br. 15. The Examiner does not address this feature of the claims. Nor does the Examiner present a finding that one skilled in the art would have had a reason to provide Brady's scored line in Cusack's release liner and not in Cusack's adhesive sheet material. For that reason, we are persuaded that the Examiner's findings are insufficient to support the obviousness determination. Accordingly, Rejection II is not sustained. CONCLUSION The Examiner's Rejection on the ground of nonstatutory double patenting is sustained. The Examiner's Rejection under 35 U.S.C. Â§ 103 is not sustained. DECISION The Examiner's decision rejecting claims 47---66 is affirmed. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. Â§ 1.136(a). AFFIRMED 6