11452718 (B.P.A.I. Jan. 10, 2012)

Ex Parte Bethke

Board of Patent Appeals and InterferencesJan 10, 2012

11452718 (B.P.A.I. Jan. 10, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES ____________ Ex parte DARVIN R. BETHKE ____________ Appeal 2010-000480 Application 11/452,718 Technology Center 3700 ____________ Before JENNIFER D. BAHR, LINDA E. HORNER, and KEN B. BARRETT, Administrative Patent Judges. HORNER, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Darvin R. Bethke (Appellant) seeks our review under 35 U.S.C. § 134 of the Examiner’s decision rejecting claims 1-8 under 35 U.S.C. § 102(b) as anticipated by Kimura (JP 02-187396 A; pub. Jul. 23, 1990). We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. Appeal 2010-000480 Application 11/452,718 2 THE INVENTION Appellant’s claimed invention relates to “double postcard pressure seal forms.” Spec. 1, para. [0002]. Claim 1, reproduced below, is representative of the subject matter on appeal. 1. An intermediate for a postcard mailer, comprising: a quadrate sheet of paper having parallel top and bottom edges, parallel first and second side edges perpendicular to the top edge and first and second faces; at least first, second and third fold lines parallel to said top and bottom edges dividing said sheet into at least first, second, third, and fourth panels, said first and fourth panels being substantially the same size and said second and third panels being substantially the same size; first adhesive areas provided on the second face of at least one of said first and fourth panels, and on the second face of at least one of and second and third panels for permanently adhering mutually facing portions of said first and fourth panels and mutually facing portions of said second and third panels together as respective first and second postcard plies when said sheet is double V-folded about said fold lines; and wherein said first through fourth panels are each substantially free from lines of weakness within their respective perimeters. ISSUE The Examiner determined that “[t]he claims do not explicitly require permanent adhesive” and recite only the function “for permanently adhering” mutually facing portions of panels together, and Kimura’s adhesive between the mutually facing portions of the panels “would be capable of maintaining permanent adherence to the degree that the mutually Appeal 2010-000480 Application 11/452,718 3 facing portions would remain adhered together (i.e., stable) during mailing and until it was desired by the recipient to peel the mutually facing portions apart.” Ans. 4. Appellant argues that Kimura’s panels are “releasably joined” to each other and thus Kimura does not “describe a structure that is capable of permanent adherence.” App. Br. 7. Appellant argues that “[t]o hold otherwise would be nonsensical and would ignore the plain meaning of the term ‘permanently.’” App. Br. 8 (citing Merriam-Webster’s Online Dictionary definition of “permanent” as “continuing or enduring without fundamental or marked change.”). Appellant argues that the rejection construes “permanently” the same as “not permanently” and thus “eviscerates all meaning of the term ‘permanently.’” App. Br. 9. The issue presented by this appeal is whether the Examiner’s interpretation of “for permanently adhering” as broad enough to encompass an adhesive used to pseudo-adhere panels of a postcard to each other is reasonable. ANALYSIS The Specification distinguishes between adhesive used to permanently secure the first faces of the panels together and adhesive used to non- permanently secure the second faces of the panels together to form the mailer. The former adheres the panels of the postcard so that they “comprise one ply or layer of the postcard,” while the latter is “sufficient to allow the mailer to be processed by U.S. Postal Service automated systems” but is also capable of being disrupted by the recipient in order to open the mailer. See Appeal 2010-000480 Application 11/452,718 4 Spec. 7, paras. [0021] – [0022] and Spec. 8, para. [0024] (describing permanent adhesive 64, 66) and Spec. 7, para. [0023], Spec. 8-9, para. [0025], and Spec. 10, para. [0028] (describing temporary adhesive patterns 68, 70). Kimura discloses a postcard having four surfaces A, B, C, and D on each of front and rear sides of the card separated by folding lines. Kimura 6, ll. 14-17. Kimura discloses that two pairs of two continuous surfaces from among the total of eight front and rear surfaces of surfaces A, B, C, and D have a resin film 3 for pseudo adhesion permanently adhered to an inner portion of each surface. Kimura 6, ll. 17-20 and 10, ll. 19-21. Kimura discloses that the film 3 causes the surfaces to be “detachably adhered” to each other. Kimura 8, ll. 5-7. Kimura refers to this condition as “pseudo adhesion.” Kimura 8, ll. 7-8. Kimura discloses that the recipient separates each of the pseudo-adhered surfaces. Kimura 9, ll. 3-5. The Examiner’s determination that Kimura’s adhesive, which detachably adheres the surfaces to each other, is capable of “permanently adhering” portions of the panels together, is unreasonably broad. The Examiner’s determination eviscerates the meaning of “permanently” in the claim by reading the claim to encompass an adhesive that temporarily adheres the panels together. For this reason, we do not sustain the rejection of claims 1-8 under 35 U.S.C. § 102(b) as anticipated by Kimura. Appeal 2010-000480 Application 11/452,718 5 CONCLUSION The Examiner’s interpretation of “for permanently adhering” as broad enough to encompass an adhesive used to pseudo-adhere panels of a postcard to each other is unreasonably broad. DECISION The decision of the Examiner to reject claims 1-8 is REVERSED. REVERSED nlk