Ex Parte Emmert

Patent Trial and Appeal Board

Jul 21, 2016

13900336 (P.T.A.B. Jul. 21, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/900,336 05/22/2013
34431 7590 07/25/2016
HANLEY, FLIGHT & ZIMMERMAN, LLC
150 S. WACKER DRIVE
SUITE 2200
CHICAGO, IL 60606
FIRST NAMED INVENTOR
David R. Emmert
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.
2009811002-2 8526
EXAMINER
NORDMEYER, PATRICIA L
ART UNIT PAPER NUMBER
1788
NOTIFICATION DATE DELIVERY MODE
07/25/2016 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):
mailroom@hfzlaw.com
jflight@hfzlaw.com
mhanley@hfzlaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DAVID R. EMMERT
Appeal2015-000958
Application 13/900,336
Technology Center 1700
Before KAREN M. HASTINGS, JEFFREY R. SNAY, and LILAN REN,
Administrative Patent Judges.
REN, Administrative Patent Judge.
DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. § 134 from a rejection2 of claims
1-30. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
1 The Real Party in Interest is identified as R.R. Donnelly & Sons. (Appeal
Brief, filed July 02 2014 ("App. Br."), 2.)
2 Final Office Action mailed March 06 2014 ("Final Rejection"; cited as
"FR.").
100~
r
2.A
Appeal2015-000958
Application 13/900,336
A. Introduction3
OPINION
The subject matter on appeal relates to "forms that include ...
removal hang tags." (Spec. ii 14.) Figures 1 and 6 of the '336 Specification
are reproduced below:
128··
132
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FIG. 1 of the '336 Specification illustrating
a plan view of an example removable hang
tag. (Spec. ii 6.)
FIG. 6 of the '336 Specification illustrating a
plan view of an alternative example
removable hang tag. (Spec. ii 11.)
Figure 1 of the '336 Specification illustrates "an example substrate
100 having a first face 102 and a second face 104." (Spec. ii 18.) Substrate
100 includes "a first line of weakness 106 and a second line of weakness
3 Application 13/900,336, Forms Containing a Removable Hang Tag and
Methods of Producing the Same, filed May 22 2013. We refer to the
'"336 Specification," which we cite as "Spec."
2
Appeal2015-000958
Application 13/900,336
108, which is formed in the substrate 100 adjacent to the first line of
weakness 106 and coupled to the first line of weakness 106 at a first junction
110." (Id.) Figure 1 illustrates "a third line of weakness 112 that is coupled
to the first line of weakness 106 and a fourth line of weakness 114 that is
coupled to the second line of weakness 108." (Id.) "A fifth line of weakness
116 is formed in the example substrate 100 distal to the first line of
weakness 106, and a sixth line of weakness 118 is formed in the example
substrate 100 distal to the second line of weakness 108." (Id.) "The fifth
line of weakness 116 and the sixth line of weakness 118 are coupled at a
second junction 120." (Id.) Substrate 100 further includes "a fold line 122 .
. . between the first junction 110 and the second junction 120." (Id.) In the
example illustrated in Figure 1, the "seventh line of weakness 124 is
adjacent the third line of weakness 112 and the fifth line of weakness 116."
(Id.) "The eighth line of weakness 126 is adjacent the fourth line of
weakness 114 and the sixth line of weakness 118." (Id.) As "a removable
portion" is removed from "[t]he seventh line of weakness 124 and the eighth
line of weakness 126," substrate 100 may therefore be suspended from "an
interior rear view mirror of a vehicle" through an opening created by the
removal. (Id. iJ 27.)
The alternative embodiment illustrated in Figure 6 is similar to that of
Figure. 1. In the alternative embodiment, however, "[t]he seventh line of
3
Appeal2015-000958
Application 13/900,336
weakness 600 and the eighth line of weakness 602 are not directly coupled
to any of the first through sixth lines of weakness." (Id. iJ 29.)
Independent claims 1, 15, and 19, respectively reproduced below, are
illustrative of the claimed subject matter:
Claim 1 recites:
1. A form comprising:
a substrate having a first face and a second face, the
substrate comprising a central area and a perimeter matrix that
surrounds the central area;
a first line of weakness formed in the substrate;
a second line of weakness formed in the substrate adjacent
to the first line of weakness and coupled to the first line of
weakness at a first junction;
a third line of weakness formed in the substrate and
coupled to the first line of weakness;
a fourth line of weakness formed in the substrate and
coupled to the second line of weakness;
a fifth line of weakness formed in the substrate distal to
the first line of weakness;
a sixth line of \"1eakness formed in the substrate distal to
the second line of weakness and coupled to the fifth line of
weakness at a second junction;
a fold line formed on the substrate between the first
junction and the second junction, wherein the first, second, third,
fourth, fifth, and sixth lines of weakness define the central area
and the perimeter matrix and the fold line divides the central area
into a first side and a second side; and
a seventh line of weakness and an eighth line of weakness,
wherein the seventh and eighth lines of weakness are coupled to
the fold line, and form a removable portion to be removed to
create an opening for suspending the form.
Claim 15 recites:
15. A form comprising:
4
Appeal2015-000958
Application 13/900,336
a substrate having a first face and a second face, the substrate
compnsmg:
a first line of weakness formed on the substrate to separate a
central area and a perimeter matrix, the perimeter matrix at least
partially surrounding the central area;
a fold line formed on the central area to divide the central area
into a first side and a second side; and
a second line of weakness and a third line of weakness at least
partially formed within the central area, the second and third lines of
weakness being coupled to the first line of weakness,
the second and third lines of weakness form opposing
removable portions that are symmetric about the fold line, wherein,
when the central area is folded about the fold line and the opposing
removable portions are removed, the second and third lines of
weakness substantially align to create an opening for suspending the
form.
Claim 19 recites:
19. An apparatus comprising:
a substrate having a first face and a second face, the
substrate comprising:
a first line of weakness formed on the substrate to separate
a central area and a perimeter matrix, the perimeter matrix at least
partially surrounding the central area;
a fold line formed on the central area to divide the central
area into a first side and a second side; and
a second line of weakness and a third line of weakness at
least partially formed within the central area, the second and third
lines of weakness being symmetric about a lateral axis of the
substrate and a longitudinal axis of the substrate, the second and
third lines of weakness being coupled to the first line of weakness
or the fold line, wherein, when the central area is folded about
the fold line and the removable portions are removed, the second
and third lines of weakness substantially align to create an
opening for suspending the form.
5
Appeal2015-000958
Application 13/900,336
(Claims Appendix, App. Br. 27, 30 (emphases added to highlight key
limitations).)
The Examiner maintains the following grounds of rejection: 4
A. Claims 1-25 stand rejected under 35 U.S.C § 103(a) as being
unpatentable over Haas et al., (U.S. Patent No. 6,197,396 Bl,
issued March 6, 2001 ).
Al. Claims 26 and 28 (dependent from claim 1) stand rejected
under 35 U.S.C § 103(a) as being unpatentable over Haas and
Kernan (U.S. Patent No. 2,076,149) (issued April 6, 1937).
A2. Claims 29 and 30 (dependent from claim 1) stand rejected
under 35 U.S.C § 103(a) as being unpatentable over Haas and
Banks et al., (U.S. Patent Application Publication No.
2004/0091659 Al, published May 13, 2004).
A3. Claim 2 7 (dependent from claim 1) stands rejected under
35 U.S.C § 103(a) as being unpatentable over Haas, Kernan,
and Hawes (U.S. Patent No. 4,508,365, issued April 2, 1985).
B. Claims 1-25 stand rejected on the ground of non-statutory
double patenting as being unpatentable over claims 1-32 of
Emmert (U.S. Patent No. 8,455,074 B2, issued June 4, 2013).
B. Discussion
Findings of fact throughout this Opinion are supported by a
preponderance of the evidence of record.
4 Examiner's Answer mailed July 25, 2014 ("Ans.").
6
Appeal2015-000958
Application 13/900,336
Rejection A: Claim 15
With regard to the obviousness rejection of claim 1 based on Haas, the
dispositive issue is whether the Examiner has shown that a form having
"seventh and eighth lines of weakness [that] are coupled to the fold line" is
present in or would have been obvious in view of the applied prior art.
The cited reference Haas discloses an "identification card strip
assembly" that may "pass through ... a laser printer." (Haas, 3, 11. 13, 19-
20.) This particular assembly includes "a support strip" and "a plurality of
identification card blanks removably and adhesively adhered to the support
strip." (Id. at 3, 11. 17-18.) "The card blank includes a first sheet and a
second sheet foldably connected to each other along a fold line." (Id. at 3, 11.
25-27.) Haas discloses that each sheet also includes an "identically shaped
aperture":
so that when the card blank is removed from the support strip
and the sheets are folded along the fold line upon each other
\"1ith the adhesive surfaces joined to each other, the first sheet
and second sheets are substantially superimposed upon each
other and substantially coextensive with each other and the
apertures in each sheet overlay each other to form a mounting
means for mounting the card on an object.
(Id. at 3, 11. 30-37.)
5 Appellant does not contest Rejection A as applied to any of claims 15, 17
and 18, (see App. Br. 10), which therefore we summarily sustain. With
regard to Rejection A, appellant argues only claims 1, 16 (which depends
from claim 15), 19 and 20. (App. Br. 11-20). We decide the propriety of
Rejection A as applied to claims 2-14 based on representative claim 1.
Claims 16, 19 and 20 are separately addressed, with claims 21-25 standing
or falling with claim 19 from which they depend. Rejections Al and A2 are
not separately contested (see generally App. Br.), and therefore stand or fall
with Rejection A of claim 1.
7
Appeal2015-000958
Application 13/900,336
In particular, figures 5 and 6 of Haas (reproduced below) illustrate "an
identification card strip assembly 20" which includes "support strip 22"
having "perforations 44 along the longitudinal edges of the strip 22 to permit
driving the strip through an associated printer device 46." (Id. at 5, 11. 3-8.)
"[E]ach identification card blank 24 has a front printing surface 26 for
printing indicia 28 thereon[.]" (Id. at 5, 11. 17-19.) Haas further discloses:
Each sheet 34, 36 is of a size and shape and each aperture 40 is
located in each sheet 34, 36 so that when the card blank 24 is
removed from the support strip 22 and the sheets are folded along
the fold line 38 upon each other with the adhesive surfaces 30
[not shown] joined to each other, the first sheet 34 and second
sheet 3 6 are substantially superimposed upon each other and
substantially coextensive with each other and the apertures 40 in
each sheet 34, 36 overlay each other to form a mounting means
for mounting the card 24 on an object, for example a rear view
mirror.
(Id. at 5, 11. 26-35 (cited in FR. 5).)
8
Appeal2015-000958
Application 13/900,336
FIG. 5
FIG. 5 of Haas illustrating "a plurality
of the card badges ... being printed."
(Haas, 4, 11. 20-21.)
FIG. 6
FIG. 6 of Haas illustrating a plurality
of card badges being printed. (Haas,
4' 11. 18-21.)
In addition to these figures, Haas provides multiple alternative
embodiments showing that "apertures 40 may be located at any appropriate
place in the card blank 24." (Haas, 5, 11. 36-39 (cited in FR. 5).) For
example, figures 12 andl3 (reproduced below) illustrate sheets 34 and 36
each having "a fold line 3 8" and "at least one substantially identically
shaped aperture area 50 therein in the shape of an aperture 52, the aperture
area 50 being defined by a continuous slit 54 ... severable from the sheet[ s]
34, 36." (Haas, 5, 11. 42--47, 51.)
9
Appeal2015-000958
Application 13/900,336
FIG. 12
FIG. 12 of Haas illustrates a
perspective view of a parking
permit on a rear view mirror of a
car. (Haas, 4, 11. 36-39.)
FIG. 13
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Appellant's annotated figure based on FIG. 1 of the '336 Specification (App.
Br. 21.)
Similar to the arguments for claim 1, Appellant again argues that there
is no motivation to modify Haas. (App. Br. 21.) For the reasons discussed
with regard to claim 1, we find that a skilled artisan would have found the
limitation "second and third lines of weakness being coupled ... the fold
line" obvious.
For the limitation of the "second and third lines of weakness being
coupled to [a] first line of weakness," we find that based on Haas' teaching
that the "aperture 40" shown in figure 5 "may be located at any appropriate
place" (Haas, 5, 11. 36-37) and that the aperture may intersect one of the two
vertical edges of the form, a skilled artisan would have had the skill to
implement the aperture at a different one of the two edges to arrive at an
14
Appeal2015-000958
Application 13/900,336
apparatus encompassed by claim 19. The rejection of claim 19 is therefore
affirmed. 9
Rejection A: Claim 20
Claim 20, which depends from claim 19 additionally recites "wherein
the second and third lines of weakness intersect at the fold line." (Claims
Appendix, App. Br. 30.) Because we find that a skilled artisan would have
found the limitation that the "lines of weakness are coupled to the fold line"
obvious in light of Haas, we find that the skilled artisan would have known
how to implement a predictable variation such that - when lines of weakness
are both coupled to a fold line - the lines of weakness may intersect at the
fold line to which they are coupled. See KSR, 550 U.S. at 417.
Rejection A3: Claim 27
Claim 27 depends from claim 26 which is a dependent claim of claim
2 which depends from claim 1. The dispositive issue is whether the
Examiner has shown that a form having a tab that "is folded and coupled to
the second side to couple the first side and the second side in an opposed
configuration" and also "comprising a line of weakness between [a] tab and
[a] first side" is present in or would have been obvious in view of the
combined teachings of Haas, Kernan, and Hawes.
Kernan teaches a tag having two panels that may be closed using a tab
as shown in the reproduced figures below:
9 We note that, similar to claim 16 (based on its dependency from claim 15),
the limitation of the "second and third lines of weakness being coupled to [a]
first line of weakness" is also recited in claim 19. Our discussion in fn. 8 is
therefore also applicable to claim 19.
15
Appeal2015-000958
Application 13/900,336
(:~.l -«'"-·,
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FIGs. 2 & 3 of Kernan showing an open and a closed tag 5 respectively.
(Kernan, 1, 11. 29-31.)
These figures in Kernan illustrate that tag 5 may be applied to "an
article of jewelry such as the ring 12" and that "the finger 10 of panel 6 is
looped over the article and then downwardly against the panel 6." (Kernan,
1, 11. 36, 50-53.) Panel 6 and panel 6' are connected via "a connecting
portion 7." (Id. at 1, 1. 44.) When closing tag 5, the "short tabs 8 and 9 of
panel 6 are clinched over panel 6', thus effectively closing the tag." (Id. at 1.
1, 55-1. 2, 1-2.)
Hawes teaches "a stack of continuous form paper" having a pull tab as
shown in the reproduced figure below:
16
Appeal2015-000958
Application 13/900,336
FIG. 4
FIG. 4 of Hawes illustrating a layout of a separable continuous sheet.
(Hawes, 1, 11. 50, 56.)
Illustrated in figure 4 of Hawes is "a stack of continuous form paper
35 that is bifolded along the fold line 3." (Hawes, 2, 11. 40--43.) By using
"pull tabs 21," "the tope membrane 29" may be separated from "the bottom
membrane 31" exposing "a carbon film 27." (Id. at 2, 11. 15-17, 45-48.) By
"pulling" the pull tabs 21, "the individual sheets" may be separated along
perforated lines. (Id. at 2, 11. 3-5.)
Based on the combined teachings of the references, we find that it
would have been obvious to a skilled artisan to use the tabs taught in Kernan
instead of the adhesive (Haas, FIG. 3, component 32) used in Haas for
coupling the front and back sides of a form. (See Ans. 16.) Based on
Hawes' teaching that a perforation line may be located between a tab and a
sheet, and its teaching that the sheet remains intact before and after the
perforation line is removed, the skilled artisan would have known to place
the tab without injuring the parking permit in Haas to which it may be
attached. (See id; see also Hawes, 1, 11. 42-44 (providing that one of the
17
Appeal2015-000958
Application 13/900,336
objectives of Hawes is "to provide continuous form paper having paper
handling means to facilitate the rapid printing thereon").)
Appellant argues that because the pull tabs 21 in Hawes are used to
separate the sheets and that the tabs 8 and 9 in Kernan are used to couple
two panels of an article, the Examiner's modification defeats the intended
purpose of each reference. (App. Br. 25; Reply Br. 6-8.) In support,
Appellant provides an annotated figure which is reproduced below:
:::n0- ..... \. -.----.... ............ ~ ............ --~~~~--~
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Appellant's annotated figure based on FIG. 8 of the '336 Specification (App.
Br. 23.)
Appellant indicates 802 as the "tab" recited in claim 27, and 132 as
the "first side" recited. (App. Br. 9, 23.) Appellant, however, does not show
whether "a line of weakness" recited in claim 27 is one of the eight "lines of
18
Appeal2015-000958
Application 13/900,336
weakness" or a new, ninth line ofweakness. 10 The annotated figure based
on figure 8 provided by Appellant apparently indicates that tab 802 is the
same as "a line of weakness" recited in claim 27-although Appellant does
not explain how to have "a line of weakness" overlapping tab 802 as
illustrated.
Based on the record before us, we are not persuaded that claim 27 is
patentably distinguished over the combined teachings of the prior art
because "[t]he test for obviousness is not whether the features of a secondary
reference may be bodily incorporated into the structure of the primary
reference. . . . Rather, the test is what the combined teachings of those
references would have suggested to those of ordinary skill in the art." In re
Keller, 642 F.2d 413, 425 (CCPA 1981) (citations omitted). Appellant has
not shown that a skilled artisan would have been dissuaded from combining
the teachings of Haas, Kernan, and Hawes to arrive at a form as recited in
claim 27 and we find no harmful error in the Examiner's findings.
Rejection B: Double Patenting
Appellant requests that we hold the Examiner's provisional double
patenting rejections in abeyance pending the identification of allowable
subject matter. (App. Br. 4.) However, "[i]f a ground of rejection stated by
the examiner is not addressed in the appellant's brief, that ground of
rejection will be summarily sustained by the Board." MPEP § 1205.02 (8th
ed., July 2010); see also MPEP § 1205.02 (9th ed., March 2014).
To hold the double patenting in abeyance, as Appellant requests, could
result in inefficient piecemeal examination and delay. We summarily affirm
10 It is not clear, based on the record before us, whether the '336
Specification supports a new, ninth line of weakness.
19
Appeal2015-000958
Application 13/900,336
the Examiner's provisional double patenting rejections of claims 1-25
because Appellant does not present arguments or evidence showing error in
those rejections.
C. Order
It is ORDERED that the rejections of claims 1-30 are affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § l.136(a). See 37 C.F.R.
§ l.136(a)(l )(iv).
AFFIRMED
20