Ex Parte 6,837,957 et al

Board of Patent Appeals and Interferences

Jun 29, 2012

90010761 (B.P.A.I. Jun. 29, 2012)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
90/010,761 12/07/2009 6,837,957 00612.0054.RXUS00 4415
42419 7590 06/29/2012
PAULEY PETERSEN & ERICKSON
2800 WEST HIGGINS ROAD
SUITE 365
HOFFMAN ESTATES, IL 60169
EXAMINER
MCKANE, ELIZABETH L
ART UNIT PAPER NUMBER
3991
MAIL DATE DELIVERY MODE
06/29/2012 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte Continental Datalabel, Inc.
Patent Owner and Appellant
____________________

Appeal 2012-008459
Reexamination Control 90/010,761
Patent 6,837,957 B2
Technology Center 3900
____________________

Before JEFFREY B. ROBERTSON, DANIEL S. SONG, and
RAE LYNN P. GUEST, Administrative Patent Judges.

GUEST, Administrative Patent Judge.

DECISION ON APPEAL
I. STATEMENT OF CASE
Continental Datalabel, Inc. (hereinafter “Appellant”), the real party in
interest1 of Patent 6,837,957 (hereinafter the “‘957 patent”), appeals under
35 U.S.C. §§ 134(b) and 306 from the Examiner’s decision to reject claims
1, 2, 5-12, 15-22, 24, 25, 39, and 40 (Examiner’s Answer, mailed March 1,

1 See Appellant’s Appeal Brief filed October 31, 2011 (hereinafter “App.
Br.”) at 2.
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2012 (hereinafter “Ans.”), pages 4-8). We have jurisdiction under 35 U.S.C.
§§ 134(b) and 306.
We AFFIRM.
This reexamination proceeding arose from a third-party request for ex
parte reexamination filed by Avery Dennison Corporation (see Request for
Ex Parte Reexamination, filed December 7, 2009).
The ‘957 patent relates to a method for printing portions of a
separable label assembly after the portions have been separated (‘957 patent,
col. 1, ll. 7-11 and col. 2, ll. 44-52).
Representative claim 1 on appeal reads as follows (Claims App’x,
App. Br. 19):
1. A method for separating a label assembly having a
face sheet adhered to a back sheet, the method comprising:
removing a strip on the face sheet positioned between
two corresponding first tearable lines of separation each
extending between a first edge portion and an opposing second
edge portion of the label assembly, and exposing a second
tearable line of separation on the back sheet;
separating the back sheet along the second tearable line
of separation extending between the first edge portion and the
second edge portion of the label assembly which is offset with
respect to each first tearable line of separation to separate a first
portion of the label assembly and a second portion of the label
assembly; and
routing a separated portion through a printer.
The Examiner rejects claims 1, 2, 5-12, 15-20, and 24 under 35 U.S.C.
§ 102(b) as anticipated by Do (WO 01/89825 A1, published November 29,
2011).
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The Examiner rejects claim 21 under 35 U.S.C. § 103(a) as
unpatentable over Do.
The Examiner rejects claims 22, 25, 39, and 40 under 35 U.S.C.
§ 103(a) as unpatentable over Do in view of Ang (U.S. Patent No.
4,537,809, issued August 27, 1985).
II. ISSUES
The issues on Appeal are as follows:
1. Does the evidence support the Examiner’s finding that Do
teaches steps of “removing a strip on the face sheet positioned between two
corresponding first tearable lines” and of routing the label assembly through
a printer before the label assembly is separated?
2. Does the evidence support the Exmainer’s conclusion that it
would have been obvious to use a non-linear score line, as taught by Ang, as
the second tearable line on the liner sheet of Do?
We answer both the questions in the affirmative.
III. DISCUSSION
We adopt the Examiner’s findings in the Answer as our own and add
any additional findings of fact appearing below for emphasis.
A. Anticipation based on Do
Appellant presents separate arguments with respect to claim 1, claim
11, and claims 9, 10, 19, 20 and 24 as a group, for which we select claims 1,
11 and 9 as representative claims. The remaining claims stand or fall with
the independent claim from which they depend.
Appellant argues that “without the gutter strip 128 attached to the
back sheet 112[, Do] fails to teach a tearable line of separation in the face
sheet,” (App. Br. 10). The Examiner finds that the teachings of Do include
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die cutting and removing the gutter strip 128 during manufacture of the label
sheet, which would constitute a step of removing a strip between two
tearable lines (Ans. 9) (see Do, p. 2, ll. 16-18, p. 6, ll. 17-18, and p. 12, ll.
20-26). Appellant’s arguments fail to address the Examiner’s rejection as
Appellant’s arguments are limited to the label sheet as illustrated in Figure 1,
i.e., after the removal step has occurred, and provide no persuasive evidence
or reasoning as to why removing the strip between two corresponding lines
of separation during manufacturing of the label sheet of Do would not meet
the requirements of claims 1 and 11.
Appellant argues that claim 11 is not anticipated because Do “does
not teach or even suggest printing on a label assembly, separating the label
assembly, and subsequently printing on a separated portion of the label
assembly (App. Br. 11). Again, Appellant’s argument fails to address the
Examiner’s rejection. Do teaches a printing step may be included in the
manufacturing process of the label assembly (Ans. 5-6) (citing Do, p. 12, ll.
10-11). Do also teaches that the label assembly is intend to be printed by the
end user either as a single sheet or as separated into two smaller sheets
separately passed through the printer (see Do, p. 2, ll. 16-18 and p. 6, ll. 17-
21). Thus, the Examiner finds that Do teaches printing first on the sheet
during manufacture and, subsequently, separating by the end user and
printing on a separated portion of the sheet by the end user (Ans. 9).
Appellant’s arguments are limited to the printing step by the end user and do
not provide any evidence or reasoning as to why the combined printing
during manufacture and printing by the end user does not meet the
requirements of claim 11.
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Appellant presents substantially the same arguments with respect to
claims 9, 10, 19, 20 and 24, namely that Do teaches the user printing the
label sheet either without separating the label assembly or printing the label
assembly separately after being divided, but that Do fails to teach printing on
the assembly prior to separation, separating the assembly, and then printing
on a separated portion of the label assembly (App. Br. 12).
For the same reasons discussed above, Appellant’s arguments fails to
address the Examiner’s finding that Do teaches printing on the assembly
during manufacture of the label sheet, separation of the sheet by the end
user, and printing on the separated sheets by the end user. Appellant’s
arguments are limited to the printing step by the end user and do not provide
any persuasive evidence or reasoning as to why the combined printing
during manufacture and printing by the end user does not meet the
requirements of claims 9, 10, 19, 20, and 24.
B. Obviousness based on Do
Appellant contends that the embodiment of Do which describes a
label assembly printing during manufacture is a different embodiment than
the unprinted embodiment of a label assembly to be printed by an end user.
Accordingly, Appellant argues that the Examiner has provided no reason for
an end user to route a pre-printed label through a printer (App. Br. 13-14).
We agree with the Examiner that Do teaches a pre-printed label
assembly that is intended to be further printed by the end user (Ans. 10-11).
It is reasonable for the Examiner to conclude that the manufacturing process
described on p. 12, lines 4-32 of Do, which includes printing, refers to the
manufacture of the same label assembly described in Do intended for
printing on by the end user (see Do, p. 6, ll. 17-21). Appellant directs us to
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no evidence to the contrary, but merely asserts that the teachings are directed
to different embodiments.
Moreover, we can reasonably envision many scenarios where a label
may be pre-printed during manufacture and also later printed on by an end
user. For example, a label may be pre-printed with a manufacture’s
trademark or as a pre-printed form with blanks to be subsequently filled in
by printing by the end user. In other words, the evidence of pre-printing
during manufacture does not, by itself, suggest that the manufacturing steps
are directed to an embodiment that is not intended to be printed on by the
end user.
C. Obviousness based on Do in view of Ang
The Examiner concludes that it would have been obvious for one of
ordinary skill in the art to use a non-linear score line, as taught by Ang, as
the second tearable line on the liner sheet of Do, because Ang describes the
non-linear score line enables a “clean edge-to-edge ‘crack’ at any score
line . . . such that the backing/liner sheet may be ‘divided cleanly into two
pieces’” (Ans. 7-8). The Examiner reasons that “[t]he ability to separate the
label assembly sheets cleanly would be desirable in the invention of Do as
well, as separation of the label sheets is performed by the end user” (Ans.
11).
Appellant contends that the non-linear score line of Ang “is unrelated
to, and would not have been obvious to add to, the laminate of [Do]” (App.
Br. 15). Specifically, Appellant argues that the skilled artisan would not
have added a score line for a “crack and peel” laminate to the Do label
assembly, which is not a crack-and-peel laminate (App. Br. 16).
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According to Appellant, a “crack and peel” label construction is
generally used for laminates in which backings are to be removed
completely from the adhesive material (App. Br. 15) (citing Ang, col. 1, ll.
16-20). However, Appellant also notes that “[t]he crackability allows for the
backing sheet to be divided and removed as two pieces” (id.) (citing col. 4,
lines 60-66).
We recognize the distinction between a label assembly that is
designed to have a backing sheet removed completely from a label, as that of
Ang, and a label assembly that is designed to have a single label removed
one-at-a-time from a backing sheet, as that of Do. However, the purpose of
the perforation line 132 of Do is not related to the removal of the labels from
the backing sheet, but, rather, for separating portions of the backing sheet
into two pieces (see Do, p. 6, ll. 17-21). Thus, the teaching in Ang of a non-
linear, discontinuous score line that provides for a clean division of a
backing sheet into two pieces upon bending the sheet appears to be
addressing the same problem faced by the perforation line 132 of Do, i.e.,
the separation of a backing sheet into two pieces.
Using the non-linear, discontinuous crack and peel score line taught
by Ang as the perforated line of Do would have been no more than the
predictable use of a known score line for a label assembly backing sheet
according to its established function of cleanly dividing the backing sheet
into two separate pieces. KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 417
(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.”).
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The weight of the evidence taken as a whole supports the Examiner’s
conclusion of obviousness under the law.
IV. CONCLUSION
On the record before us, we affirm the rejections maintained by the
Examiner.
V. TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED

FOR PATENT OWNER:

PAULEY PETERSEN & ERICKSON
2800 WEST HIGGINS ROAD
SUITE 365
HOFFMAN ESTATES, IL 60169

FOR THIRD-PARTY REQUESTER:

AVERY DENNISION CORPORTION
PATENT GROUP LAW DEPARTMENT-3 SOUTH
150 NORTH ORANGE GROVE BLVD.
PASADENA, CA 91103

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