Ex Parte Bahar et al

Board of Patent Appeals and Interferences

Aug 17, 2012

10365864 (B.P.A.I. Aug. 17, 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.
10/365,864 02/13/2003 Reuben Bahar 6589-A-6 9077
7590 08/17/2012
CAHILL vonHELLENS & GLAZER P.L.C.
Attn: MARVIN A. GLAZER
155 PARK ONE
2141 E. HIGHLAND AVENUE
PHOENIX, AZ 85016
EXAMINER
YU, MICKEY
ART UNIT PAPER NUMBER
3728
MAIL DATE DELIVERY MODE
08/17/2012 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 REUBEN BAHAR and BARSIN FAMIL
KHORSHID
____________________

Appeal 2010-008646
Application 10/365,864
Technology Center 3700
____________________

Before: JOHN C. KERINS, PHILLIP J. KAUFFMAN, and
SCOTT E. KAMHOLZ, Administrative Patent Judges.

KAMHOLZ, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF CASE
Appellants appeal under 35 U.S.C. § 134 from a rejection of claims
20, 21, 27, and 32-39. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

The claims are directed to methods of displaying a message on a
cigarette box. Claim 20, reproduced below, is illustrative of the claimed
subject matter:
20. A method of presenting a message comprising the
steps of:
packaging cigarettes within a cigarette box;
applying product printing to the cigarette box
relating to the cigarettes packaged therein;
providing a medium different from said product
printing, said medium including at least one holographic
message, three dimensionally fashioned message, or a
combination thereof;
attaching said medium to said cigarette box
subsequent to the step of applying product printing; and
exposing said cigarette box wherein said message
is viewable.
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Kutchin
Galanos
Witkowski
US 4,784,261
US 5,788,479
US 6,327,801 B1
Nov. 15, 1988
Aug. 4, 1998
Dec. 11, 2001
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Application 10/365,864

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REJECTIONS
Claims 20, 21, 27, and 32-39 stand rejected under 35 U.S.C §103(a)
as encompassing subject matter unpatentable over Galanos in view of
Witkowski and Kutchin.

FINDINGS OF FACT
The Examiner found that:
1. Galanos discloses a cigarette package 18. Ans. 3.1
2. Cigarette packages such as those in Galanos typically bear “trade
dress such as advertising, trademarks, and logos by means of which a
manufacturer provides [an] advertising message,” as disclosed by Kutchin.
Id.
3. Galanos discloses applying a holder 10 to cigarette package 18. Id.
at 4.
4. Galanos discloses providing a “decorative design or texture and the
like” on the holder 10. Id. at 5-6.
5. In Galanos, “the timing of the attachment [of the] holder or medium
to the box can only occur after the box has already been printed with indicia.
To argue otherwise would not be rational because providing printing after
the holder has been attached to the box may cause accidental printing [of a]
mark on the holder.” Id. at 5.
6. Galanos does not disclose a hologram or three dimensionally
fashioned message. Id. at 3.

1 All citations to the Examiner’s Answer refer to the Answer dated Jan. 9,
2008.
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7. Witkowski teaches a removable label with at least one hologram.
Id.
Appellants did not dispute these findings, and we accept them as fact.

ANALYSIS
Appellants argue claims 20, 21, and 36-38 as a group, and we select
claim 20 as representative. App. Br. 10-13; see 37 C.F.R.
§ 41.37(c)(1)(vii)(2011). With regard to independent claims 32 and 39,
Appellants repeat the arguments used against claim 20 without identifying a
distinction between claim 20 and claims 32 and 39. App. Br. at 14-15. Our
analysis of claim 20 therefore applies also to independent claims 32 and 39
and to claims 33-35, which depend from claim 32. We separately address
claim 27.
We consider Appellants’ arguments in turn.
1. Claims 20, 21, and 32-39
a. Temporal ordering of steps
Appellants argue that Witkowski would have led one ordinarily
skilled in the art away from the claimed subject matter. In particular,
Appellants argue that claim 20 requires applying the holographic message-
bearing medium to the cigarette box subsequent to the step of applying
product printing to the cigarette box, while Witkowski would have led the
person of ordinary skill to form the hologram concurrently with applying
product printing. App. Br. 12. Appellants cite passages in Witkowski that
“emphasize[] the advantages of providing a hologram ‘that is integral with
the label.’ ” Id. at 9, 11-12.
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We agree that Witkowski discloses application of the hologram to a
label prior to printing the advertising graphics on that label. See Witkowski,
col. 3, ll. 34-36. However, such disclosure would not have led a person of
ordinary skill away from the subject matter of claim 20. Claim 20 calls for
the product printing to be applied to the cigarette box and the hologram to be
on a medium that is different from the product printing. The Examiner
relied upon Galanos (as further evidenced by Kutchin) for applying product
printing to a cigarette box, and found that Witkowski’s label on which a
hologram is printed corresponds to the claimed medium different from the
product printing. Ans. 3; see also FF 1, 2, 7. The significance is that
Witkowski’s hologram is not applied to the cigarette box over the product
printing as Appellants’ argument implies; rather, Witkowski’s hologram is
applied to the label (medium). See Ans. 5 (emphasizing that the proposed
combination places Witkowski’s hologram on medium and not the cigarette
box). Further, claim 20 uses the open-ended term “comprising” so that
additional unrecited elements, such as Witkowski’s advertising graphics on
the label (medium), are not excluded. See Genentech, Inc. v. Chiron Corp.,
112 F.3d 495, 501 (Fed. Cir. 1997) (“Comprising” is a term of art used in
claim language which means that the named elements are essential, but other
elements may be added and still form a construct within the scope of the
claim.). Consequently, Appellants’ argument is unpersuasive because it does
not address the rejection as articulated by the Examiner, and is not
commensurate in scope with claim 20.
b. Obviousness of replacing Galanos’s “texture or
decoration”with Witkowski’s hologram
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Appellants argue that it would not have been obvious to substitute
Witkowski’s hologram for the texture or decoration on Galanos’s retaining
band because Galanos’s “texture or decoration” is not a “message.” App. Br.
12-13.
We find this argument unconvincing. Appellants defined “message”
to include a “graphic form,” among other things. Spec. 3:8-10. Galanos’s
“texture or decoration” is a graphic form and so meets the limitation. See FF
3, 4.
Appellants further argue that Galanos’s holding band is not a “label”
for purposes of receiving Witkowski’s hologram, but rather is a pair of
connected loops created independently of the cigarette package. App. Br.
13.
We find this argument unconvincing as well. Appellants offer no
explanation as to how the fact that Galanos’s holding band (holder 10) is a
pair of connected loops created independently of the cigarette pack
demonstrates that it is not a label. Labels may be produced independently of
the package they are subsequently added to and may take a variety of forms.
See e.g. Witkowski, col. 3, ll. 7-16 (discussing producing labels on webs
rather than on the end product).
2. Claim 27
Appellants reiterate argument 1(a) (temporal ordering of steps) as to
claim 27. App. Br. 13-14; Repl. Br. 2-3. We find this argument
unconvincing for the reasons given above with respect to claim 20.
Although Appellants note that claim 27 recites displaying an
advertisement on a display medium, Appellants do not challenge the
Examiner’s finding that Galanos’s “decorative design or texture is
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considered as an advertising message” (Ans. 6), nor do Appellants challenge
the Examiner’s position that “[t]he type of message it[]self does not pertain
any patentable weight to the claimed invention.” Ans. 4. Appellants have
therefore identified no reversible error in the rejection.

DECISION
For the above reasons, the Examiner’s rejection of claims 20, 21, 27,
and 32-39 is AFFIRMED.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv) (2009).

AFFIRMED

MP