Ex parte Deal

Board of Patent Appeals and Interferences

Apr 30, 1998

08518957 (B.P.A.I. Apr. 30, 1998)

Application for patent filed August 24, 1995. According1
to appellant, the application is a continuation of Application
08/269,915, filed June 30, 1994, now abandoned.
-1-
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered
today (1) was not written for publication in a law
journal and (2) is not binding precedent of the Board.
Paper No. 22
UNITED STATES PATENT AND TRADEMARK OFFICE
________________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
________________
Ex parte RICHARD E. DEAL JR.
________________
Appeal No. 97-1088
Application 08/518,9571
________________
ON BRIEF
________________
Before MEISTER, FRANKFORT and McQUADE, Administrative Patent
Judges.
McQUADE, Administrative Patent Judge.
DECISION ON APPEAL
This appeal is from the final rejection of claims 1, 3, 4,
6, 10 through 13 and 19 through 25, all of the claims pending in
the application.
Appeal No. 97-1088
Application 08/518,957
The following informalities in the appealed claims are2
deserving of correction in the event of further prosecution
before the examiner. The term “the bead” as it appears in claims
4 and 13 lacks a proper antecedent basis and should read as --
the beads-- for consistency with preceding claim terminology.
Also, the preamble of claim 11 which refers to a plurality of
“cans and bottles” is inconsistent with the body of this claim
which refers to a single “can or bottle.”
-2-
The invention pertains to a label having raised rib-like
surfaces to facilitate gripping the object to which the label is
applied. Claim 1 is illustrative and reads as follows:2
1. A container adapted to be gripped in a person’s hand,
the container having a smooth exterior surface and a label, the
label comprising:
a panel member adapted to be applied to a container; and
a plurality of elongated solid beads adapted to be
positioned between the panel member and the smooth exterior
surface of the container in substantially horizontal and
vertically spaced orientations to provide a raised surface for
enhanced gripping of the container.
The reference relied upon by the examiner as evidence of
anticipation and obviousness is:
West 2,051,665 Aug. 18, 1936
Claims 1, 3, 4, 11 through 13, 19 and 22 through 25 stand
rejected under 35 U.S.C. § 102(b) as being anticipated by West,
and claims 6, 10, 20 and 21 stand rejected under 35 U.S.C. § 103
as being unpatentable over West.
Appeal No. 97-1088
Application 08/518,957
-3-
Reference is made to the appellant’s main and reply briefs
(Paper Nos. 18 and 20) and to the examiner’s answer (Paper No.
19) for the respective positions of the appellant and the
examiner with regard to the merits of these rejections.
West discloses a label for containers, bottles or the like
wherein the symbols and/or lettering on the label “are made
pronounced and luminous so as to afford a signal or warning of
the character of the contents of such container, bottle or the
like . . . to prevent a person from mistaking the nature of the
contents, particularly where the same be of a poisonous kind”
(column 1, lines 6 through 12). As described by West,
[t]he label comprises an outer body section 5,
preferably made from sheet material, for example,
celluloid, having transparence and this section has
outstruck therefrom letters 6, these being selective
and in this instance spell the word “Poison” the
character of the letters 6 being of no consequence
excepting that such letters shall be raised from the
outer face of the section 5 and contain within the
hollows 7 of such letters as created by the outstruck
formation thereof a compound 8 of self-luminous
substance or radio active substances, the same being
held in the hollows by a backing 9 in the form of a
sheet of material carrying a coat of black paint 10 the
latter extending over the body section and functioning
to secure the backing to the body section and the label
in its entirety upon the body of the bottle A [column
2, lines 4 through 21].
With regard to the standing 35 U.S.C. § 102(b) rejection of
claims 1, 3, 4, 11 through 13, 19 and 22 through 25, anticipation
Appeal No. 97-1088
Application 08/518,957
-4-
is established only when a single prior art reference discloses,
expressly or under principles of inherency, each and every
element of a claimed invention. RCA Corp. v. Applied Digital
Data Sys., Inc., 730 F.2d 1440, 1444, 221 USPQ 385, 388 (Fed.
Cir. 1984). It is not necessary that the reference teach what
the subject application teaches, but only that the claim read on
something disclosed in the reference, i.e., that all of the
limitations in the claim be found in or fully met by the
reference. Kalman v. Kimberly Clark Corp., 713 F.2d 760, 771,
218 USPQ 781, 789 (Fed. Cir. 1983), cert. denied, 465 U.S. 1026
(1984). In this regard, during patent prosecution claims are
given their broadest reasonable interpretation consistent with
the underlying specification without reading limitations from the
specification into the claims. In re Prater, 415 F.2d 1393,
1404-05, 162 USPQ 541, 550-51 (CCPA 1969).
In light of these principles, the examiner’s determination
that West meets all of the limitations in appealed claim 1 (see
page 3 in the answer) is well founded. More particularly, the
limitations in this claim relating to the container, the panel
member and the plurality of elongated solid beads read on West’s
bottle A, outer body section 5 and self-luminous compound 8,
respectively.
Appeal No. 97-1088
Application 08/518,957
Webster’s New Collegiate Dictionary (G. & C. Merriam Co.3
1977) defines the term “separate” as meaning “existing by itself”
or “dissimilar in nature or identity.”
-5-
The appellant’s arguments to the contrary rest on a
purported failure of West to meet the elongated solid bead
limitations. In this regard, the appellant submits that “West
does not have a ‘bead’ which is a separate element from the panel
section 5" (main brief, page 7), that West’s compound 8 “is shown
in the drawings to be a particulate, which is not elongated and
which does not form a solid bead” (main brief, page 8), and that
“[t]he raised lettering of West is not intended to be a gripping
surface” (main brief, page 9). None of these arguments is
persuasive.
To begin with, claim 1 does not actually call for the beads
to be “separate” from the panel member. In any event, however,
West’s compound 8 and panel member or body section 5 are
certainly “separate” under the ordinary and accustomed meaning of
this term. The compound 8 as it exists in the West label also3
forms elements which can reasonably be described as being “solid
beads” under the ordinary and accustomed meanings of these
Appeal No. 97-1088
Application 08/518,957
Webster’s New Collegiate Dictionary (G. & C. Merriam Co.4
1977) defines the term “solid” as meaning “being without an
internal cavity” or “not interrupted by a break or opening,” and
the term “bead” as meaning “a projecting rim, band, or molding.”
-6-
terms. Moreover, there is nothing in West’s drawings, or in any4
other part of the West disclosure, which supports the appellant’s
assertion that the compound 8 is a particulate. Finally,
although West does not expressly describe the raised lettering,
which is formed in part by the compound 8, as a gripping surface,
it is not apparent, nor has the appellant pointed out, why such
raised lettering is not inherently capable of being used to grip
the bottle A to which it is applied.
Thus, the appellant’s position that the subject matter
recited in claim 1 is not anticipated by West is not convincing.
Accordingly, we shall sustain the standing 35 U.S.C. § 102(b)
rejection of this claim.
We also shall sustain the standing 35 U.S.C. § 102(b)
rejection of claims 4, 22, 24 and 25, which depend from claim 1,
as being anticipated by West since the appellant has not argued
such with any reasonable specificity, thereby allowing these
claims to stand or fall with parent claim 1 (see In re Nielson,
816 F.2d 1567, 1572, 2 USPQ2d 1525, 1528 (Fed. Cir. 1987)).
Appeal No. 97-1088
Application 08/518,957
-7-
We shall not sustain the standing 35 U.S.C. § 102(b)
rejection of claims 3, 11 through 13, 19 and 23 as being
anticipated by West.
Claim 3 depends from claim 1 and requires the panel member
to engage the container between adjacent beads. Claim 23 also
depends from claim 1 and requires the beads to have a rear
surface engageable with the exterior surface of the container.
West’s outer body section/panel member 5 and compound/beads 8 do
not engage the bottle or container A associated therewith. In
this regard, the examiner’s finding that the backing component 9
of West’s label forms the exterior of the bottle A (see page 3 in
the answer) is inconsistent with the express teachings of West
and is completely unreasonable. Independent claim 11 requires
that the beads be “formed separately from the . . . panel
member.” As is evident from the passages from the West
disclosure reproduced above, the compound 8 as it exists in the
West label is not formed separately from the outer body section
5. Thus, West does not meet all of the limitations in claim 11,
or in claims 12, 13 and 19 which depend therefrom.
We shall not sustain the standing 35 U.S.C. § 103 rejection
of claim 6, or of claim 10 which depends therefrom, as being
unpatentable over West. In short, West does not teach and would
Appeal No. 97-1088
Application 08/518,957
-8-
not have suggested a method meeting the limitations in claim 6
requiring the steps of placing a plurality of solid beads
adjacent the exterior surface of an object and applying a label
over the beads and to the object so as to provide a horizontally
ribbed label surface. Although West’s label does include a
ribbed surface, such is formed via a method which differs
substantially from that recited in claim 6.
Nor shall we sustain the standing 35 U.S.C. § 103 rejection
of claim 20 as being unpatentable over West. Claim 20 depends
from claim 1 and requires the beads to be made of plastic or
paper. The West reference would not have suggested, and indeed
appears to teach away from, replacing the compound/beads 8 of
self-luminous or radio active substances disclosed therein with
plastic or paper.
Finally, we shall sustain the standing 35 U.S.C. § 103
rejection of claim 21 as being unpatentable over West. Claim 21
depends from claim 1 and requires the beads to be made of non-
particulate material. The examiner’s conclusion that it would
have been obvious to make West’s compound/beads 8 of a non-
particulate material (see page 3 in the answer) is reasonable on
its face. As discussed above, the appellant’s assertion that
West teaches the compound 8 to be made of a particulate material
Appeal No. 97-1088
Application 08/518,957
-9-
lacks any factual support.
In summary, the decision of the examiner to reject claims 1,
3, 4, 6, 10 through 13 and 19 through 25 is affirmed with respect
to claims 1, 4, 21, 22, 24 and 25, and reversed with respect to
claims 3, 6, 10 through 13, 19, 20 and 23.
AFFIRMED-IN-PART
JAMES M. MEISTER )
Administrative Patent Judge )
)
)
)
CHARLES E. FRANKFORT ) BOARD OF PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
JOHN P. McQUADE )
Administrative Patent Judge )
Appeal No. 97-1088
Application 08/518,957
-10-
Kirk M. Hartung
Zarley McKee Thomte Voorhees and Sease
Suite 3200
801 Grand Avenue
Des Moines, IA 50309-2721