Van Wagoner, Jon Phillip.

Patent Trials and Appeals Board

Jul 1, 2020

14322870 - (D) (P.T.A.B. Jul. 1, 2020)

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.
14/322,870 07/02/2014 Jon Phillip Van Wagoner 50011/0002 2407
105758 7590 07/01/2020
Laurence & Phillips IP Law
7327 SW Barnes Road #521
Portland, OR 97225-6119
EXAMINER
VERAA, CHRISTOPHER
ART UNIT PAPER NUMBER
3636
NOTIFICATION DATE DELIVERY MODE
07/01/2020 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):
docket@lpiplaw.com
mphillips@lpiplaw.com
mphillips_patlaw@yahoo.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte JON PHILLIP VAN WAGONER

Appeal 2018-009233
Application 14/322,870
Technology Center 3600
____________

Before CYNTHIA L. MURPHY, KENNETH G. SCHOPFER, and
BRADLEY B. BAYAT, Administrative Patent Judges.

MURPHY, Administrative Patent Judge.

DECISION ON APPEAL
The Appellant1 appeals from the Examiner’s rejections of claims 1–8,
11–16, 18–22, and 24–33 under 35 U.S.C. §§ 102 and 103. We REVERSE.2

1 The Appellant is the “applicant” as defined by 37 C.F.R. § 1.42 (e.g., “the
inventor or all of the joint inventors”). “The real parties in interest are Jon P.
Van Wagoner, the inventor, and Matthew C Phillips.” (Appeal Br. 1.)
2 We have jurisdiction under 35 U.S.C. §§ 6(b) and 134(a). A hearing was
held on June 22, 2020.
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STATEMENT OF THE CASE
The Appellant’s invention “relates generally to business cards and
more particularly to a business card with a selectively exposable and
re-exposable adhesive flap designed for removably attaching the business
card to other objects.” (Spec. ¶ 3.)
Independent Claims on Appeal
1. A business card comprising:
a front side;
a back side opposite the front side;
four edges; and
a non-removable flap permanently attached to the
business card along substantially the entire length of one of the
four edges, the flap comprising:
a front side;
a back side opposite the front side of the flap; and
an adhesive on at least a portion of the back side of
the flap, wherein the adhesive is capable of removably
and reusably adhering to objects, the flap being foldable
with respect to the business card such that the flap can be
alternately and repeatedly placed in the following two
configurations:
a first configuration wherein the adhesive on
the back side of the flap adheres to a portion of the
hack side of the business card, and
a second configuration wherein the flap
aligns at least approximately with the business
card such that the front of the business card and the
front of the flap face the same general forward
direction, and the back of the business card and the
back of the flap face the same general direction
that is generally opposite the forward direction,
thereby presenting the flap’s adhesive to be able to
adhere to another object such that the front side of
the business card faces outward from said another
object,
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wherein the back side of the flap has a lengthwise central
area in which there is no adhesive anywhere along the height of
the f1ap.

21. A business card changeable between an adhesive
configuration and non-adhesive configuration, the business card
comprising:
a generally flat paper business card body having
opposing front and back sides; and
a non-removable plastic flap permanently attached to the
generally flat paper business card body, the plastic flap having
an adhesive side and an opposing non-adhesive side, the
adhesive side of the plastic flap having an adhesive area that is
adherable to, removable from, and re-adherable to another
object, the plastic flap being moveable from a first position to a
second position, wherein the plastic flap in the first position is
folded against the paper business card body such that the
adhesive side of the plastic flap adheres to the back side of the
paper business card body, and wherein the plastic flap in the
second position exposes the adhesive area to permit the
business card to adhere to another object, and
wherein the plastic flap can be placed in a third position
wherein the plastic flap’s adhesive is able to adhere to said
another object, and the third position is further characterized in
that the paper business card body is further able to pivot with
respect to the plastic flap such that the back side of the paper
business card body is exposed outward from said another
object, and wherein the paper business card body lies flat
against said another object.

32. A card comprising:
indicia of business information on at least one side of the
card; and
a means for enabling the card to be converted from an
adhesive configuration to a non-adhesive configuration and vice
versa.

33. A method of using a selectively adhesive business card,
the method comprising:
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storing the business card in a non-adhesive form such
that an adhesive flap of the business card is folded down against
and adheres to a portion of the business card;
unsticking the flap from the portion of the business card;
sticking the adhesive flap to another object to thereby
adhere the business card to said another object so as to reveal
indicia on a front side of the business card;
turning the business card over 180º while the adhesive
flap remains adhered to said another object so that the business
card lies flat against said another object to reveal indicia on a
back side of the business card;
removing the adhesive flap from said another object; and
re-sticking the adhesive flap to the portion of the business
card to thereby return the business card to the non-adhesive
form.
Evidence
Drexler US 4,711,347 Dec. 8, 1987
Meetze US 5,980,676 Nov. 9, 1999
Mertens US 5,575,574 Nov. 19, 1996
Dobbins US 5,887,899 Mar. 30, 1999
Laurence US 6,120,184 Sept. 19, 2000
Bay US 6,146,728 Nov. 14, 2000
Hsu US 2005/0191455 A1 Sept. 1, 2005
Von Ohsen US 2007/0180746 A1 Aug. 9, 2007
Declaration of Jon P. Van Wagoner Dec. 21, 2016
Rejections
I. The Examiner rejects claims 1–8, 11, 12, 15, 16, 18, 21, and 22
under 35 U.S.C. § 103 as unpatentable over Dobbins and Laurence. (Final
Action 3.)
II. The Examiner rejects claims 13 and 24 under 35 U.S.C. § 103
as unpatentable over Dobbins, Laurence, and Bay. (Final Action 5.)
III. The Examiner rejects claim 14 under 35 U.S.C. § 103 as
unpatentable over Dobbins, Laurence, Bay, and Drexler. (Final Action 7.)
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IV. The Examiner rejects claim 19 under 35 U.S.C. § 103 as
unpatentable over Dobbins, Laurence, and Mertens. (Final Action 8.)
V. The Examiner rejects claim 20 under 35 U.S.C. § 103 as
unpatentable over Dobbins, Laurence, Bay, Mertens, Van Ohsen, and
Meetze. (Final Action 8.)
VI. The Examiner rejects claims 21–23 and 25–31 under 35 U.S.C.
§ 103 as unpatentable over Dobbins and Bay. (Final Action 6.)
VII. The Examiner rejects claim 32 under 35 U.S.C. § 102 as
anticipated by Dobbins. (Final Action 2.)
VIII. The Examiner rejects claim 33 under 35 U.S.C. § 103 as
unpatentable over Dobbins and Hsu. (Final Action 10.)
ANALYSIS
Claims 1, 21, 32, and 33 are the independent claims on appeal, with
the rest of the claims on appeal (i.e., claims 2–8, 11–16, 18–20, 22,
and 24–31) depending directly or ultimately from either independent claim 1
or independent claim 21. (See Appeal Br., Claims App.)
Each of the claims on appeal recites a card (e.g., a “business card”)
comprising a card portion, a flap structure, and adhesive associated with the
flap structure. (Appeal Br., Claims App.)3

3 Independent claim 1 recites “four edges,” a “flap” attached along “one of
the four edges,” and “adhesive” on the flap (Appeal Br., Claims App.);
independent claim 21 recites a “business card body,” and a “flap” attached to
the business card body that has “an adhesive area” (id.); independent
claim 32 recites “business information on at least one side of the card,” a
“means for enabling the card” to be converted” between two configurations,
including an “adhesive configuration” (id.); and independent claim 33
recites “a portion of the business card” and an “adhesive flap” (id.).
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Independent Claim 1
Independent claim 1 requires the flap to be “foldable with respect to
the business card such that the flap can be alternately and repeatedly placed”
in a “first configuration” and a “second configuration.” (Appeal Br., Claims
App.) The Examiner finds that Dobbins discloses such a flap. (See Final
Action 3.)
Dobbins discloses three embodiments of a business card 10, each
having a card portion 12, a flap 13, and an adhesive 17. (See Dobbins,
Figs. 1–10.) In the first embodiment, the flap 13 converts between a first
configuration (see id., Figs. 3–4) and a second configuration (see id.,
Figs. 1–2) “as a cycle, repeatedly.” (Id. 5:9–15.)
Independent claim 1 requires the adhesive to be “on at least a portion
of the back side of the flap.” (Appeal Br., Claims App.) In Dobbins’s first
embodiment (in which the flap 13 is repeatedly folded and unfolded), the
adhesive 17 is on the card portion 12, not the flap 13. (See Dobbins Fig. 2.)
Dobbins discloses that the adhesive 17 can be located on the flap 13, rather
than the card portion 12, in the second and third embodiments. (See id.
5:23–25, 5:65–67.) However, neither the second nor third embodiments
involve repeated conversions between the first configuration and the second
configuration. (See id. 5:16–23, 50–53.)
The Examiner determines that “[i]t would have been obvious to one of
ordinary skill in the art to locate the adhesive on the flap, since it is the result
of merely choosing from a finite number of identified, predictable solutions,
with a reasonable expectation of success.” (Final Action 3.) The Appellant
argues that the record contains unrebutted evidence that the Examiner’s
proposed modification would not have been obvious to one of ordinary skill
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in the art. (See e.g., Appeal Br. 19–23.) We are persuaded by the
Appellant’s position.
Insofar as the Examiner is saying that, absent evidence to the contrary,
one of ordinary skill in the art would infer from Dobbins’s teachings that the
adhesive in the first embodiment could be re-located on the flap 13 (see e.g.,
Final Action 11), we do not necessarily disagree. Here, however, the record
includes a Declaration containing evidence that one of ordinary skill in the
art would not make this inference. The Declaration explains why one of
ordinary skill in the art would not modify Dobbins’s first embodiment in the
proposed manner because there would be no reasonable expectation of
success. (See Declaration ¶¶ 11–13.)4 And, as pointed out by the Appellant,
“[t]he Examiner has presented no evidence or reasoning to counter” this
explanation. (Appeal Br. 31.)
Thus, we do not sustain the Examiner’s rejection of independent
claim 1 under 35 U.S.C. § 103 (Rejection I).
Dependent Claims 2–8, 11–16, and 18–20
The Examiner’s further findings and determinations with respect to
these dependent claims do not compensate for the shortcomings in the
rejection of independent claim 1, from which they depend. (See Final

4 Specifically, for example, the Declaration explains that, “[w]hen a person
grabs the [card] portion 12 of the business card 10 to unstick the adhesive 17
from another object,” the fold line 14 will be subjected to force,” and,
“[a]fter repeated cycles of that happening,” this force will “cause a tear
along the fold line.” (Declaration ¶ 12.) In other words, the Declaration
explains why a person of ordinary skill in the art would “quickly realize[]”
that fold line 14 “would weaken and tear after just a few uses.” (Appeal
Br. 16.)
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Action 3–5, 7–10.) Thus, we do not sustain the Examiner’s rejections of
dependent claims 2–8, 11–16, and 18–20 under 35 U.S.C. § 103
(Rejections I–V).
Independent Claim 21
Independent claim 21 requires the flap to be placeable in a “third
position” which is “characterized” in that the card portion is “able to pivot”
with respect to the flap “such that the back side of the [card portion] is
exposed outward from [an] object.” (Appeal Br., Claims App.) The
Examiner finds that “[t]he card taught by Dobbins can be placed” in such a
third position. (Final Action 6.)
Independent claim 21 requires the card portion to “lie[] flat against”
the object when the flap is in the third position. (Appeal Br., Claims App.)
The Examiner finds that, when Dobbins’s business card 10 is placed in the
third position, “[t]he Dobbins fold line would lay flat within the broadest
reasonable interpretation of the claim.” (Final Action 13.) The Appellant
argues that the record contains unrebutted evidence that Dobbins’s business
card 10 is “incapable of lying flat” when it is in the third position. (See
Appeal Br. 35.) We are persuaded by the Appellant’s position.
Here, the record establishes that Dobbins’s disclosed business card 10
has a simple fold line 14. (See e.g., Dobbins 3:2–14, 3:40–46, Figs. 1–4.)
The record also establishes, per the Declaration, that a “shortcoming of a
simple fold line hinge is that it takes considerable effort to crease the paper
to try to create a flexible hinge to make the note lay upside down to reveal
the back side of note.” (Declaration ¶ 9.) Specifically, for example, the
Declaration explains that “no matter how many times or how hard you press
the fold line, it is impossible to make the note lay flat upside down.” (Id.)
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The Examiner does not seem to dispute the explanation provided in
the Declaration. Rather, the Examiner maintains that the Declaration is “not
convincing” because, per the Specification, the card portion need only be
“substantially or generally flat.” (Answer 6.) However, the Examiner
provides no discussion, much less evidence, that Dobbins’s card portion 12
would be capable of lying substantially or generally flat in the third position
as required by independent claim 21.
Independent claim 21 requires the flap to be a “plastic flap” (Appeal
Br., Claims App.), and the Examiner determines that it would have been
obvious to form Dobbins’s flap 13 from plastic in view of the teachings of
Bay. (Final Action 6). To the extent that such a plastic flap 13 would
facilitate Dobbins’s capability to lie flat in the third position, the Examiner
does not discuss why this would happen. (See id. at 6–7; Answer 5.) And,
as pointed out by the Appellant, the Examiner seems to “rel[y] exclusively
on Dobbins to teach the third configuration.” (Appeal Br. 35.)
Thus, we do not sustain the Examiner’s rejections of independent
claim 21 under 35 U.S.C. § 103 (Rejections I and VI).
Dependent Claims 22, and 24–31
The Examiner’s further findings and determinations with respect to
these dependent claims do not compensate for the shortcomings in the
rejection of independent claim 21, from which they depend. (See Final
Action 5–7.) Thus, we do not sustain the Examiner’s rejections of
dependent claims 22, and 24–31 under 35 U.S.C. § 103 (Rejections I, II,
and VI).
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Independent Claim 32
Independent claim 32 recites a card comprising “a means for enabling
the card to be converted from an adhesive configuration to a non-adhesive
configuration and vice versa.” (Appeal Br., Claims App.) The Examiner
finds that Dobbins discloses, in its first embodiment (Figs. 1–4), a “flap that
is placeable” into the “configurations claimed.” (Final Action 2.)
In Dobbins’s first embodiment of its business card 10, the flap 13
converts repeatedly between a first configuration and a second
configuration. (See Dobbins 5:9–15, Figs. 1–4.) The Appellant does not
appear to dispute that Dobbins’s flap 13 enables its business card 10 to be
converted from an adhesive configuration to a non-configuration and vice
versa. (See Appeal Br. 40–41.) However, the Appellant argues that the
structure of Dobbins’s flap 13 is not the same as or equivalent to the
structure of the flap described in the Specification. (See id. at 41.) We are
persuaded by the Appellant’s position.
As discussed above, in Dobbins’s disclosed first embodiment of its
business card 10, the adhesive 17 is located on the card portion 12, not the
flap 13. (See Dobbins Fig. 2.) This structurally differs from the Appellant’s
described flap, in which the adhesive is located on the flap. (See Spec.
¶¶ 43, 44, 48, 50, Figs. 1–7.) And, as pointed out by the Appellant, the
Examiner does not explain why, despite this different location of the
adhesive, Dobbins’s flap 13 can be considered structurally equivalent to the
flap disclosed in the Specification. (See Appeal Br. 41.)5

5 As for the second and third embodiments of Dobbins’s business cards, the
adhesive 17 is located on the flap 13. (See Dobbins, 5:23–25, 65–67.)
However, the flaps 13 in the second and third embodiments do not perform
the function recited in independent claim 32. In the second embodiment,
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Thus, we do not sustain the Examiner’s rejection of independent
claim 32 under 35 U.S.C. § 102 (Rejection VII).
Independent Claim 33
Independent claim 33 requires the step of “turning the business card
over 180º while the adhesive remains adhered to [an] object so that the
business card lies flat against [the object] to reveal indicia on the back side
of the business card.” (Appeal Br., Claims App.) The Examiner finds that
Dobbins does not teach this turning step. (Final Action 10.) However, the
Examiner determines that “[i]t would have been obvious to one of ordinary
skill in the art to use the Dobbins card with the additional step of turning 180
degrees to view the back as taught by Hsu, in order to make use of more area
for notetaking.” (Final Action 10.)
Independent claim 33 requires the 180º turned business card to “lie[]
flat against” the object to which the adhesive is adhered. (Appeal Br.,
Claims App.) As with independent claim 21, the Examiner finds that “[t]he
Dobbins fold line would lay flat” (Answer 6); and the Appellant argues that
the Declaration evidences otherwise. For the same reasons as discussed
above in connection with independent claim 21, we are persuaded by the
Appellant’s position.
Thus, we do not sustain the Examiner’s rejection of independent
claim 33 under 35 U.S.C. § 103 (Rejection VIII).

when the business card 10 is in the adhesive configuration, the flap 12 is
separated from the portion 12, and the business card 10 can no longer be
converted to a non-adhesive configuration. (See id. 5:20–21). In the third
embodiment, when the business card 10 is in the adhesive configuration, the
flap 13 can be moved to enable the business card 10 to return a non-adhesive
configuration, but not vice versa. (See id. 5:53–59.)
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CONCLUSION
Claims
Rejected
Basis Affirmed Reversed
1–8, 11, 12, 15,
16, 18, 21, 22
§ 103
Dobbins, Laurence
1–8, 11, 12, 15,
16, 18, 21, 22
13, 24 § 103
Dobbins, Laurence,
Bay
13, 24
14 § 103
Dobbins, Laurence,
Bay, Drexler
14
19 § 103
Dobbins, Laurence,
and Mertens
19
20 § 103
Dobbins, Laurence,
Bay, Mertens,
Van Ohsen, Meetze
20
21–23, 25–31 § 103
Dobbins, Bay
21–23, 25–31
32 § 102
Dobbins
32
33 § 103
Dobbins, Hsu
33

Overall Outcome 1–8, 11–16,
18–22, 24–31–33

REVERSED