Ex Parte Laurenzi et al

Board of Patent Appeals and Interferences

Feb 27, 2009

10974156 (B.P.A.I. Feb. 27, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte LARRY LAURENZI, GILES MANIAS,
DAVID SAFENOVITZ, JOSEPH DRASNER,
and JASON DRASNER
____________

Appeal 2008-4664
Application 10/974,156
Technology Center 1700
____________

Decided:1 February 27, 2009
____________

Before JEFFREY T. SMITH, LINDA M. GAUDETTE and
MICHAEL P. COLAIANNI, Administrative Patent Judges.

SMITH, Administrative Patent Judge.

DECISION ON APPEAL

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, begins to run from the decided date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).
Appeal 2008-4664
Application 10/974,156

Appellants’ appeal under 35 U.S.C. § 134(a) from the Examiner’s
decision rejecting claims 1-13. Claims 14-20 have been withdrawn from
consideration. (Br. 2). We have jurisdiction under 35 U.S.C. § 6(b).2
We AFFIRM.
I. BACKGROUND
The invention relates to a method of labeling rubber component bags.
Claim 1 is illustrative of the subject matter on appeal:
1. A method of labeling rubber component bags comprising the steps of:
forming a label having a first side with an adhesive and a second side;
applying at least a first identifying marking to the second side of the
label;

adhering the label to a bag adapted to hold a component to be used in
making rubber;

inserting the bag and the label into a rubber mixing machine used to form
a rubber mixture; and,

mixing the label into the rubber mixture.

The Examiner issued the following rejections:
Claims 1-3, 10, and 13 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over the combined teachings of Brown, U.S. Patent
Application No. 2003/01106722 A1, published June 12, 2003, Drasner, U.S.
Patent No. 5,120,787, issued June 9, 1992 and Dornbusch, U.S. Patent No.
4,883,697, issued November 28, 1989.
Claims 4 and 5 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over the combined teachings of Brown, Drasner, Dornbusch,

2 In rendering this decision, we have considered the Appellants’ arguments
presented in the Brief filed October 30, 2007 and the Reply Brief filed
February 20, 2008.
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and Fearn, U.S. Patent Application No. 2003/0152722 A1, published August
14, 2003.
Claim 6 stands rejected under 35 U.S.C. § 103(a) as unpatentable over
the combined teachings of Brown, Drasner, Dornbusch, Fearn, and
Sakashita, U.S. Patent No. 5,720,499, issued February 24, 1998.
Claim 7 stands rejected under 35 U.S.C. § 103(a) as unpatentable over
the combined teachings of Brown, Drasner, Dornbusch, Fearn, Sakashita,
and Wiklof, U.S. Patent No. 6,585,437 B1, issued July 1, 2003.
Claims 8, 9, 11, and 12 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over the combined teachings of Brown, Drasner, Dornbusch,
and Maguire, International Patent Application No. WO 98/51458, published
November 19, 1998.
The Examiner found that Brown discloses a method of inserting a
labeled bag containing rubber components into a rubber mixing machine to
form a rubber mixture; and, mixing the label into the rubber mixture. The
Examiner found that Brown also discloses that the mass of the bag and
labeling must be consistent with the blended product. (Ans. 4-5; Brown
¶ [0003]). The Examiner found that Brown does not explicitly teach the
steps of forming a label and adhering the label to a bag. (Ans. 5). The
Examiner found that Dornbusch discloses forming an EVA label having
adhesive on one side, applying identifying markings to the label and
adhering the label to a container. (Ans. 5). The Examiner found that
Drasner discloses low melt EVA materials suitable for forming rubber bags.
The Examiner concluded that it would have been obvious to a person of
ordinary skill in the art to have utilized known labeling techniques and
materials to form the label on the bags of Brown. (Ans. 5-6).
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Appellants contend that there is no motivation to combine Brown,
Drasner, and Dornbusch. Appellants contend that the combination was
derived based on hindsight. (App. Br. 6).
The issue presented is: Did Appellants identify reversible error in the
Examiner’s rejections of claims 1-13 under § 103? We answer this question
in the negative. The issue turns on whether a person of ordinary skill in the
art would have used known techniques and materials to produce the label for
the container of Brown.

OPINION
The following facts (FF) are relevant in resolving the dispositive issue
in this appeal:
1. The Examiner found that Brown disclosed labeled lightweight
plastic bags are used to facilitate production of rubber products.
The chemicals for the product are generally weighed and
assembled separately and packaged in labeled plastic bags. (Ans.
3; Brown, [0003]).
2. The contents of the bag conform to the requirements of the
particular rubber product being produced so that they can be added
to the blender in a single operation. (Brown, [0003]).
3. The composition and mass of the bag including the label must be
consistent with the blended product because they are absorbed into
the rubber product. (Brown, [0003], [0009]).
4. Brown discloses that bagging equipment exist to form bags
directly from sheets of plastic, filling the bags with the contents,
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and marking the bags (i.e. labeling) as required by the
manufacturer. (Brown, [0009], [0019]).
5. Brown does not disclose the detailed method of forming the bag
including the label.
6. The present record on appeal includes many examples of known
processes and techniques for forming labels that are applied to
plastic materials. These known techniques are exemplified by the
Dornbusch, Fearn, Sakashita, Wiklof, and Maguire references.
7. Dornbusch discloses forming an EVA label having adhesive on
one side, applying identifying markings to the label and adhering
the label to a plastic container. (Col. 3, ll. 9-24; col. 4, ll. 42-61).
8. Fearn discloses forming printed labels having adhesive on one
side, applying identifying markings to the label and adhering the
label to containers including plastic. ([0003], [0007], [0018]).
9. Fearn discloses the film label can further include a release liner
applied to the adhesive side of the label film. ([0019]).
10. Sakashita discloses forming printed labels having adhesive on one
side, applying identifying markings to the label and adhering the
label to a plastic container. (Col. 1, ll. 6-21; col. 2, ll. 16-24).
11. Sakashita discloses the label can be formed of a translucent resin
sheet, or a resin sheet made of opaque materials. (Col. 3, ll. 8-24).
12. Sakashita discloses the label includes a release liner having slits
formed therein. (Col. 2, ll. 21-24).
13. Wiklof discloses forming printed labels having adhesive on one
side, applying identifying markings to the label and adhering the
label to containers including plastic. (Col. 1, ll. 18-38).
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14. Wiklof discloses the labels are formed on rolls which comprise
perforations on the label edge. (Col. 3, ll. 43-46).
15. The Examiner found that Drasner discloses low melt EVA
materials suitable for forming plastic bags. (Col. 1, ll. 6-22).
A claimed invention is unpatentable if the differences between it and
the prior art “are such that the subject matter as a whole would have been
obvious at the time the invention was made to a person having ordinary skill
in the art.” 35 U.S.C. § 103. “The combination of familiar elements
according to known methods is likely to be obvious when it does no more
than yield predictable results.” KSR Int'l Co. v. Teleflex Inc., 127 S. Ct.
1727, 1739 (2007). The question to be asked is “whether the improvement
is more than the predictable use of prior art elements according to their
established functions.” Id.
We have thoroughly reviewed each of Appellants’ arguments for
patentability. However, we are in complete agreement with the Examiner
that the claimed subject matter would have been obvious to one of ordinary
skill in the art within the meaning of § 103 in view of the applied prior art.
Accordingly, we will sustain the Examiner’s rejections.
This case falls squarely under the rule of law expounded by KSR
where the Supreme Court held that “[i]f a person of ordinary skill in the art
can implement a predictable variation, and would see the benefits of doing
so, § 103 likely bars its patentability.” KSR Int’l Co. v. Teleflex Inc.,
127 S. Ct. at 1740. Here, Brown discloses the method of inserting a labeled
bag containing rubber components into a rubber mixing machine to form a
rubber mixture and, mixing the label into the rubber mixture. Brown also
discloses that the mass of the bag and labeling must be consistent with the
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blended product. Brown does not explicitly teach the steps of forming a
label and adhering the label to a bag. However, the present record is replete
with references that exhibited known techniques for forming labels and
adhering them to substrates including plastic substrates. A person of
ordinary skill in the art would have reasonably expected that the known
method steps of forming a label having a first side with an adhesive and a
second side, applying at least a first identifying marking to the second side
of the label, and adhering the label to a container, would have been suitable
for Brown’s method of inserting a labeled bag containing rubber
components into a rubber mixing machine to form a rubber mixture.
Appellants’ arguments regarding claims 1-3, 10, and 13 are not
persuasive for the reasons set forth above.3 It has not been disputed that the
labeled bag must be compatible with the components which are combined
for creating the rubber mixture. Thus, Appellants’ arguments regarding
claim 3 are not persuasive.
Claims 4 and 5 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over the combined teachings of Brown, Drasner, Dornbusch,
and Fearn. We select claim 5 as representative. The subject matter of claim
5 differs from that of claim 1 by describing a specific set of steps for
creating the label including rolling the thermoplastic into a roll, adding an
adhesive to one side of the label material and adding a release liner to cover
the adhesive coating. Appellants have not asserted that it was unknown to
persons of ordinary skill in the art to form rolls of printed labels and to form

3 With the exception of claim 3, Appellants have not provided separate
arguments for the rejection of claims 1-3, 10, and 13. We select claim 1 as
representative of the remaining claims.
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printed labels having adhesive on one side wherein the adhesive layer has
been covered by a release liner to protect the adhesive layer. As set forth
above, a person of ordinary skill in the art would have reasonably expected
that the known method steps of forming a label would have been suitable for
the invention of Brown.
Appellants’ arguments regarding the rejections under 35 U.S.C.
§ 103(a) of: claim 6 over the combined teachings of Brown, Drasner,
Dornbusch, Fearn, and Sakashita; claim 7 over the combined teachings of
Brown, Drasner, Dornbusch, Fearn, Sakashita, and Wiklof; claims 8, 9, 11,
and 12 over the combined teachings of Brown, Drasner, Dornbusch, and
Maguire are not persuasive.4 The Examiner cited the Sakashita, Maguire,
and Wiklof references for specific known techniques of label producing
processes. (Ans. 9-12). Appellants have not asserted that the Examiner's
findings regarding the cited references’ teachings for label making
techniques were in error. For example, Appellants have not asserted that it
was unknown to persons of ordinary skill in the art to form rolls of labels
comprising slits in the release liner and the application of various indicia on
the labels (barcodes and other markings). Consequently, we agree with the
Examiner's obviousness determinations. A person of ordinary skill in the art
would have reasonably expected that the known method steps of forming a
label would have been suitable for the invention of Brown.
Based on the totality of the record, including due consideration of
Appellants’ arguments, we determine that the preponderance of evidence
weighs most heavily in favor of an obviousness determination for the

4 Appellants have not provided separate arguments for the rejection of
claims 8, 9, 11, and 12. We select claim 8 as representative.
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claimed subject matter. Accordingly, we affirm the Examiner’s rejections
under 35 U.S.C. § 103(a) for the reasons stated in the Answer and above.

Conclusions of Law
For the above stated reasons, Appellants have failed to show error in
the Examiner’s conclusion that the claimed subject matter would have been
prima facie obvious and have failed to present evidence of nonobviousness
which outweighs the Examiner's reference evidence of obviousness.
Therefore, we sustain the § 103 rejections advanced by the Examiner
in this appeal.
Order

We affirm the decision of the Examiner.

No time period for taking any subsequent action in connection with
this appeal maybe extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED

tc/cam

CYNTHIA S. MURPHY ESQ.
RENNER, OTTO, BOISSELLE & SKLAR, LLP
1621 EUCLID AVENUE, 19TH FLOOR
CLEVELAND, OH 44115
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