Ex Parte Dronzek

Board of Patent Appeals and Interferences

Nov 23, 2010

10292231 (B.P.A.I. Nov. 23, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
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.
10/292,231 11/12/2002 Peter J. Dronzek JR. 181-030A 5887
47888 7590 11/24/2010
HEDMAN & COSTIGAN, P.C.
1230 AVENUE OF THE AMERICAS
7th floor
NEW YORK, NY 10020
EXAMINER
AUGHENBAUGH, WALTER
ART UNIT PAPER NUMBER
1782
MAIL DATE DELIVERY MODE
11/24/2010 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 PETER J. DRONZEK JR.
________________

Appeal 2010-001371
Application 10/292,231
Technology Center 1700
________________

Before BRADLEY R. GARRIS, ADRIENE LEPIANE HANLON, and
TERRY J. OWENS, Administrative Patent Judges.

GARRIS, Administrative Patent Judge.

DECISION ON APPEAL1

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.
Appeal 2010-001371
Application 10/292,231

2
Appellant appeals under 35 U.S.C. § 134 from the Examiner’s
decision rejecting claims 24-35, 37-42, 45-47, and 52-56. We have
jurisdiction under 35 U.S.C. § 6.
We REVERSE.
Appellant claims a container having a polymer patch label which
consists essentially of (claim 24) or comprises (claim 28) a microvoided low
density polymer film and a dried water-based adhesive, the dried water-
based adhesive being such that the polymer patch label would feed from a
label magazine, gripper, or machine (claims 24, 28). In one embodiment,
the label has a reverse printed clear polymeric film which is laminated to the
low density polymer film (claim 38).

Representative claims 24 and 38 read as follows:
24. A plastic, metal or glass container having a
polymer patch label consisting essentially of a microvoided low
density polymer film and a dried water based adhesive within
said microvoided polymer film said dried water based adhesive
being such that the polymer patch label would feed from a label
magazine or gripper in which a portion of a water based
adhesive has migrated into said polymer film and has formed a
dried water based adhesive during a drying cycle, wherein said
low density polymer has a density of less than 0.9, and said
dried water based adhesive is formed by applying a water based
adhesive to said polymer patch label by post mold wet
application of a water based adhesive by using a cut label
machine and thereafter drying said water based adhesive after
affixing said polymer patch label to said container.
38. A glass, plastic or metal container as defined in
claim 24 wherein the polymer patch label is a polymer patch
label having a reverse printed clear polymeric film which is
laminated to the low density polymer.
Appeal 2010-001371
Application 10/292,231

3
The Examiner rejects claims 38 and 40-42 under 35 U.S.C. § 112,
2nd paragraph, for failing to particularly point out and distinctly claim the
subject matter which Appellant regards as the invention.
Under 35 U.S.C. § 103(a), the Examiner also rejects:
Claims 24-27, 35, and 37 as unpatentable over Jacoby (US Patent
5,176,953, issued January 1993);
Claims 28-34, 38-40, 45-47, and 52-56 as unpatentable over Jacoby in
view of Jannusch (US Patent 4,440,884, issued April 1984); and
Claims 41 and 42 as unpatentable over Jacoby in view of Kelly
(US Patent 4,978,436, issued December 1990).

The § 112, 2nd Paragraph, Rejection

According to the Examiner, “[c]laims 38 and 40-42 are indefinite
because the scope that Applicant intends to delineate cannot be ascertained”
(Ans. 3). By way of explanation, the Examiner states (1) that the patent
claim 24 language “consisting essentially of” excludes components that
materially affect the basic and novel characteristics of the claimed invention,
(2) that dependent claims 38 and 40-42 recite additional components or
layers, and (3) that “all of these layers materially affect the basic and novel
characteristic(s) of the claimed invention, so these additional components
recited in claims 38 and 40-42 are precluded from the language of claim 24”
(id. para. bridging 3-4).
We agree with Appellant that the Examiner has failed to establish that
the rejected claims violate the 2nd paragraph of § 112 (App. Br. 3-4; Reply
Br. 1-2). Pivotal to this rejection is the Examiner’s determination that the
Appeal 2010-001371
Application 10/292,231

4
additional layers or components recited in claims 38 and 40-42 materially
affect the basic and novel characteristics of the claim 24 invention and
accordingly are excluded by the “consisting essentially of” language of
claim 24. However, this determination is unsupported in the record provided
by the Examiner. That is, in the record of this appeal, the Examiner has not
defined the basic and novel characteristics of the claim 24 invention and has
not explained why these characteristics are thought to be materially affected
by the layers or components recited in the rejected claims.
For these reasons, we cannot sustain the Examiner’s § 112,
2nd paragraph, rejection of claims 38 and 40-42.

The § 103 Rejections

The Examiner and Appellant agree that Jacoby discloses a pressure
sensitive label of microvoided low density polymer film wherein the
pressure sensitive adhesive is a water-based adhesive. The Examiner
concludes that it would have been obvious to affix the label of Jacoby to a
container, and Appellant does not argue otherwise.
Instead, Appellant disagrees with the Examiner’s determination that
“[t]he label taught by Jacoby . . . meets the functional limitation of claim 24
‘said dried water based adhesive being such that the polymer patch label
would feed from a label magazine or gripper’ because Jacoby . . . teaches all
structural and compositional limitations of the label” (Ans. 6).
Appellant argues that the apparatus recited in claim 24 is not capable
of feeding the pressure sensitive label of Jacoby regardless of whether the
adhesive is covered or not covered with a release liner (App. Br. 5-6; Reply
Appeal 2010-001371
Application 10/292,231

5
Br. 3-4). In this regard, Appellant correctly points out that the Examiner has
not cited any prior art which shows that the apparatus recited in claim 24 is
capable of performing the claim 24 function under consideration with a
pressure sensitive label of the type taught by Jacoby (Reply Br. 4).
Appellant’s argument is well taken. In support of this argument,
Appellant has rationally explained that Jacoby’s label with pressure sensitive
adhesive, in the absence of a release liner, could not be fed from the
apparatus recited in claim 24 because the uncovered adhesive would bind to
an adjacent label face. Even if the label of Jacoby were provided with a
release liner, the functional language of claim 24 still would not be satisfied
based on the record of this appeal. As correctly pointed out by Appellant,
the Examiner has provided this record with no evidence showing that the
prior art includes apparatus of the type recited in claim 24 which is capable
of removing release liner from Jacoby’s label.
For the above stated reasons, we cannot sustain the § 103 rejection of
claims 24-27, 35, and 37 as unpatentable over Jacoby.
The Examiner’s position regarding the functional language of
independent claim 28 corresponds to the position regarding the functional
language of independent claim 24 (Ans. 7) which is not convincing as
explained above. For this reason and because the Examiner does not rely on
Jannusch or Kelly to supply the previously discussed deficiencies of Jacoby,
we also cannot sustain the § 103 rejection of claims 28-34, 38-40, 45-47, and
52-56 as unpatentable over Jacoby in view of Jannusch or the § 103 rejection
of claims 41 and 42 as unpatentable over Jacoby in view of Kelly.

Appeal 2010-001371
Application 10/292,231

6
Conclusion
The decision of the Examiner is reversed.

REVERSED
bar

HEDMAN & COSTIGAN, P.C.
1230 AVENUE OF THE AMERICAS
7TH FLOOR
NEW YORK, NY 10020