Ex Parte Wagner

Board of Patent Appeals and Interferences

Jan 30, 2004

09923016 (B.P.A.I. Jan. 30, 2004)

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The opinion in support of the decision being entered
today was not written for publication in a law journal
and is not binding precedent of the Board.
Paper No. 11
UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES

Ex parte THOMAS WAGNER

Appeal No. 2004-0185
Application No. 09/923,016

ON BRIEF

Before KIMLIN, PAK and WALTZ, Administrative Patent Judges.
KIMLIN, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal from the final rejection of claims 9, 10,
13, 16 and 17. Claim 16 is illustrative:
16. The combination of a postal stamp and sticker for use
for retaining a foldable flyer in closure during mailing, said
postal stamp and sticker being formed of two parts, said postal
stamp and sticker parts being foldably connected along contiguous
edges, said postal stamp and sticker parts at their fold line
being formed as a line of perforation to form said fold line
intermediate thereof, said postal stamp being imprinted with
postal stamp indicia acceptable for transfer through mailing,
while said sticker portion capable of folding over for adhering
the foldable flyer into closure during mailing, and said foldable
postal sticker portion being imprinted with indicia.
Appeal No. 2004-0185
Application No. 09/923,016
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In the rejection of the appealed claims, the examiner relies
upon the following references:
Sternberg 3,774,758 Nov. 27, 1973
Brasington et al. 5,923,406 Jul. 13, 1999
(Brasington)
Meshulam 6,029,849 Feb. 29, 2000
Farren WO 97/28522 Aug. 07, 1997
(PCT International Application)
Appellant's claimed invention is directed to a combination
of a postal stamp and sticker that are foldably connected along
contiguous edges. The sticker portion of the combination is
imprinted with indicia, e.g., advertising material. Also, the
sticker portion is capable of folding over a foldable flyer for
adhering it into closure during mailing. According to appellant,
the claimed combination of postal stamp and sticker "saves the
customer one step, that is, it requires the customer only to
attach a stamp to the upper edge, in a one step process, and fold
it over to secure the flyer into closure, simultaneously" (page 6
of Brief, first paragraph). Appellant further explains that "the
user accomplishes two tasks at one time, which applies both the
postage and the sealing means at the same time, rather than
requiring the separate application of postage, and the separate
sealing of the edges of the flyer, through two different tasks"
(id.).
Appeal No. 2004-0185
Application No. 09/923,016
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Appealed claim 16 stands rejected under 35 U.S.C. § 102(b)
as being anticipated by Sternberg. Claim 17 stands rejected
under 35 U.S.C. § 103 as being unpatentable over Sternberg in
view of Farren. Claim 9 also stands rejected under § 103 as
being unpatentable over Sternberg in view of Farren and Meshulam,
while claims 10 and 13 stand rejected under § 103 as being
unpatentable over Sternberg in view of Brasington.
Appellant submits that the appealed claims "form a single
group from the standpoint of the invention" and, hence, "the
claims stand or fall together" (page 8 of Brief). Accordingly,
all the appealed claims stand or fall together with independent
claim 16. Also, although the dependent claims have been
separately rejected by the examiner under § 103, and "applicant
still needs to review the various basis presented by the examiner
for rejection" (page 11 of Brief, second paragraph), appellant
does not advance substantive arguments specific to the features
of the dependent claims. Appellant's arguments focus upon
asserted deficiencies of the Sternberg reference with respect to
the § 102 rejection of claim 16. Accordingly, we will limit our
discussion to the § 102 rejection of claim 16.
We have thoroughly reviewed the respective positions
advanced by appellant and the examiner. In so doing, we find
Appeal No. 2004-0185
Application No. 09/923,016
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ourselves in full agreement with the examiner that the claimed
subject matter is unpatentable over the cited prior art.
Accordingly, we will sustain the examiner's rejections for
essentially those reasons expressed in the Answer, and we add the
following primarily for emphasis.
We fully concur with the examiner that Sternberg describes
the claimed combination of a postal stamp and sticker within the
meaning of § 102. The figures of Sternberg clearly depict a
combination of a postal stamp and sticker being foldably
connected along contiguous edges with the foldable sticker
portion being imprinted with indicia. Although Sternberg, as
appreciated by the examiner, does not disclose that the
combination of postal stamp and sticker is used to retain a flyer
or envelope in closure during mailing, we agree with the examiner
that the reference combination is "capable of folding over for
adhering the foldable flyer into closure during mailing," as
required by the appealed claims (emphasis added). While
appellant makes the argument that "[i]t does not appear that
Sternberg suggests the usage of his device for holding any type
of flyer in closure, in fact, the envelope to which Sternberg is
applied, will readily be sealed into closure, through its own
Appeal No. 2004-0185
Application No. 09/923,016
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adherence means," it is not necessary that Sternberg teaches or
suggests such usage for the combination (sentence bridging
pages 9 and 10 of Brief). This is because the claims on appeal
are not directed to any use of the combination of postal stamp
and sticker but, rather, are directed to the combination itself.
All that is required is that the combination of Sternberg be
capable of folding over and adhering a foldable flyer, and
appellant has proffered no argument, let alone evidence, to
refute the examiner's reasonable conclusion that the combination
stamp/sticker of Sternberg possesses such capability. While
appellant submits that the combination of Sternberg "is a
somewhat different structure" than the claimed combination,
appellant fails to articulate any specific distinction in
structure (page 10 of Brief, first paragraph).
In conclusion, based on the foregoing and the reasons set
forth by the examiner, the examiner's decision rejecting the
appealed claims is affirmed.
Appeal No. 2004-0185
Application No. 09/923,016
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No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
AFFIRMED
EDWARD C. KIMLIN )
Administrative Patent Judge )
)
)
)
)
CHUNG K. PAK ) BOARD OF PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
)
THOMAS A. WALTZ )
Administrative Patent Judge )
ECK: clm
Appeal No. 2004-0185
Application No. 09/923,016
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Paul M. Denk
763 South New Ballas Road
St. Louis, MO 63141