Ex Parte Fresnel

Patent Trial and Appeal Board

Jul 24, 2014

11552176 (P.T.A.B. Jul. 24, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte ERIC FRESNEL
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Appeal 2012-003726
Application 11/552,176
Technology Center 3700
____________

Before NEAL E. ABRAMS, EDWARD A. BROWN, and
JILL D. HILL, Administrative Patent Judges.

ABRAMS, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE

Eric Fresnel (Appellant) seeks our review under 35 U.S.C. § 134 from
the Examiner’s decision rejecting claims 1-20. We have jurisdiction over
the appeal under 35 U.S.C. § 6(b).
We REVERSE.
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Application 11/552,176

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THE INVENTION
The claimed invention is directed to a plastic heat-shrinkable cover for
wrapping at least one article.
Claim 1, reproduced below, is the sole independent claim and
illustrative of the subject matter on appeal.
1. A cover for wrapping at least one article, the cover
constituted by a sleeve of heat-shrinkable plastics material
suitable for closely surrounding at least a portion of the article
or a group of articles, wherein the sleeve is constituted by a first
wall having a first edge and a second edge and a second wall
having a first edge and a second edge, wherein said first edge of
said first wall is substantially in register with said first edge of
said second wall and said second edge of said first wall is
substantially in register with said second edge of said second
wall, wherein said walls are superposed by securing said first
edges to said second edges, wherein said first and second walls
are secured to one another by detachable adhesive means
generally covering the entire area of said first and second walls,
said walls having shrinkage characteristics that are essentially
identical so as to enable the sleeve to shrink uniformly onto the
article or the group of articles, and the second wall of the sleeve
further presents, through the entire thickness thereof, at least
one cut defining at least one part of a detachable circumferential
strip, said circumferential strip being printed so as to present a
pattern of printing that appears on each of its sides, said first
wall also presenting patterns of printing, in particular behind
the detachable circumferential strip so that the corresponding
pattern of printing appears after said detachable circumferential
strip has been detached.
THE PRIOR ART
The Examiner relies upon the following as evidence of
unpatentability:
Dubois US 4,173,659 Nov. 6, 1979
Napier
Tuszkiewicz
US 5,571,358
US 6,047,488
Nov. 5, 1996
Apr. 11, 2000
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Fresnel
Levine
Friedrich
US 6,322,864 B1
US 6,581,973 B2
US 2004/0118728 A1
Nov. 27, 2001
Jun. 24, 2003
Jun. 24, 2004

THE REJECTIONS
Claims 1-9, 12-17, 19, and 20 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over Napier, Tuszkiewicz and Fresnel.
Claim 10 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Napier, Tuszkiewicz, Fresnel and Levine.
Claim 11 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Napier, Tuszkiewicz, Fresnel and Friedrich.
Claim 18 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Napier, Tuszkiewicz, Fresnel and Dubois.

OPINION
Claims 1-9, 12-17, 19, and 20
Obviousness – Napier, Tuszkiewicz and Fresnel
The Examiner finds all of the subject matter recited in claim 1 to be
disclosed by Napier, except for “the walls being superposed by securing the
first edges to the second edges, and the sleeve being made of heat-shrinkable
plastics material suitable for closely surrounding at least a portion of an
article or group of articles.” Ans. 6. However, it is the Examiner’s view that
Tuszkiewicz teaches a label made of plastic and having overlapping edges,
and it would have been obvious to one of ordinary skill in the art in view of
the teachings of Tuszkiewicz to “superpose the first edges of the device of
Napier to the second edges, for the predictable result of forming a label into
an annular shape extending tightly around a container and possibly also
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securing the label to a container.” Id. The Examiner also points out that
Fresnel teaches wrapping a container in a sleeve of heat-shrinkable plastics
material, and concludes that it would have been obvious in view of Fresnel
to construct the sleeve of Napier, as modified by Tuszkiewicz, of heat-
shrinkable plastics material because it would be “within the general skill of a
worker in the art to select a known material on the basis of suitability for the
intended use as a matter of obvious design choice.” Ans. 7. As an
alternative reason, the Examiner opines that it would have been obvious to
substitute heat-shrinkable plastics material for the label in Napier device on
the basis that it is the mere substitution of one element known in the field for
another to yield a predictable result. Id.
Appellant argues that there would be no motivation to modify the
Napier label by overlapping the ends, per the teaching of Tuszkiewicz,
because doing so would make it impossible to remove zip strip 39 to
separate upper ply 40 from lower ply 50, and thus to peel away the portion
of upper ply 40 that constitutes the label. App. Br. 12-15; Reply Br. 4.
Appellant also argues that “[a]bsent impermissible hindsight, one of
ordinary skill in the art would not consider replacing the paper/web stock
labels of Napier and Tuszkiewicz with a heat-shrinkable plastics material to
form a sleeve, as recited in claim 1, with a reasonable expectation of
success.” App. Br. 15-16. Appellant asserts that because there would have
been no motivation to combine the teachings of Napier, Tuszkiewicz and
Fresnel in the manner proposed by the Examiner, a prima facie case of
obviousness has not been established. App. Br. 15.
Napier discloses a container label 30 comprising inner and outer
superposed plies 40 and 50 made of “paper or other stock with appropriate
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textural and/or graphical elements.” Col. 2, ll. 41-42; Col. 3, l. 66. Plies 40
and 50 are attached together over their entire surfaces by an adhesive. Col.
3, ll. 53-54. Napier teaches that label 30 is “affixed” to the container (see,
for example, col. 4, l. 16 and col. 5, ll. 58-59) by means of an adhesive of
greater strength than the adhesive used to attach together the two plies, so
the upper ply can be separated from the lower ply without detaching the
lower ply from the container (col. 5, ll. 46-50), thus tightly disposing the
label about the container. However, Napier fails to explicitly disclose that
the plies “are superposed by securing said first edges to said second edges,”
as required by Appellant’s claim 1.
Tuszkiewicz discloses a label comprising a body 12 formed of a
single thickness of material, such as paper or plastic (col. 4, ll. 44-45), which
can be formed into an annular shape extending tightly around a container
(col 4, ll. 64-65). Tuszkiewicz teaches that adhesive 28 is applied to inner
face 22 adjacent to edge 18 “for securement [of the label] to container 26,
and then label 12 is wrapped around container 26” such that the other edge
(20), which also is provided with adhesive, overlaps and is attached to edge
18 “and possibly also secures to container 26 in front of edge 18.” Col. 4, ll.
57-65; Fig. 1.
The Examiner has concluded that the artisan would have been
motivated to modify the Napier label by overlapping the ends of the label
and securing them together because such would form the label into an
annular shape extending tightly around a container, and would secure the
label to the container. However, the Napier plies already are superposed,
secured to the container, and formed into an annular shape extending tightly
around the container. Moreover, Appellant has raised questions regarding
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the effect that overlapping the ends of the label would have upon operating
the tear strip to allow separation of the removable portion of the label from
the underlying portion. From our perspective, modifying the Napier label by
overlapping the ends is unnecessary, and would serve only to complicate the
construction, attachment and use of the Napier invention. Therefore, it is
our view that one of ordinary skill in the art would not have been motivated
to combine the teachings of Napier and Tuszkiewicz for this purpose.
For the teaching of making the Napier label of heat-shrinkable plastic,
the Examiner looks to Fresnel. In the statement of the rejection, the
Examiner concludes that in view of the teachings of Fresnel it would have
been obvious to construct the Napier device of heat-shrinkable plastics
because it is “within the general skill of a worker in the art to select a known
material on the basis of its suitability for the intended use as a matter of
obvious design choice.” Ans. 7. In the response to Appellant’s arguments,
the Examiner takes the position that this modification would have been
obvious because it is a “mere substitution of one element for another known
in the field” and does not “do more than yield a predictable result.” Id.
Napier states that the objective of the invention is to provide a multi-
ply label which, when affixed to the container, serves as a product label and
comprises a removable portion which can be imprinted with additional
information (col. 2, ll. 1-4). In furtherance of this objective, the multiple-ply
labels are formed in a single manufacturing process (col. 2, ll. 48-52), in
which both the upper ply and the lower ply are imprinted, formed, and then
adhered together by an adhesive that allows the removable portion of the
upper ply to be peeled away from the lower ply without affecting the
structural integrity of either ply (col. 4, ll. 48-52).
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The heat-shrinkable plastic sleeve 100 disclosed in Fresnel comprises
a single ply upon which a flap 103 has been formed to define a pocket into
which a sheet can be inserted. Col. 5, ll. 23-31. Flap 103 is attached to the
outside of sleeve 100 by means of heat sealing lines 102 and 105, and is
detached by a pull tongue 114. Id. at ll. 31-43. Fresnel notes that “[i]t is
possible to provide for the use of adhesive means instead of tear means,
however, it turns out that use of such adhesive means is difficult in practice.”
Col. 1, ll. 42-44. Fresenel teaches placing sleeve 100 over the container and
then heat-shrinking it into contact with the container. Col. 5, ll. 14-18.
Modifying Napier by heat-shrinking a tubular envelope about the
container rather than wrapping a label about the container and then affixing
it thereto with an adhesive would necessitate a change in the Napier method
and would result in a different product. The Examiner has not provided
evidence or persuasive argument in support of the conclusion the single ply
of heat-shrinkable material disclosed in Fresnel is suitable for replacing
Napier’s two plies attached together by an adhesive that allows the upper ply
to be peeled away from the lower ply, especially in view of Fresnel’s
teaching that such is not desirable. Nor has the Examiner provided support
for the conclusion in the alternative expression of the rejection that doing so
would yield a predictable result.
“[R]ejections on obviousness grounds cannot be sustained by mere
conclusory statements; instead, there must be some articulated reasoning
with some rational underpinning to support the legal conclusion of
obviousness.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007)
(quoting In re Kahn, 441 F.39 977, 988 (Fed. Cir. 2006). The Examiner’s
conclusions regarding combining the teachings of Napier and Fresnel fail to
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meet this test, and absent such support, it is our view that one of ordinary
skill in the art would not have been motivated to combine the teachings of
these references in the manner proposed by the Examiner.
The rejection of independent claim 1 and dependent claims 2-9, 12-
17, 19 and 20 is not sustained.
Claim 10
Obviousness – Napier, Tuszkiewicz, Fresnel and Levine
Claim 11
Obviousness – Napier, Tuszkiewicz, Fresnel and Friedrich
Claim 18
Obviousness – Napier, Tuszkiewicz, Fresnel and Dubois
Claims 10, 11 and 18 depend from claim 1. Levine, Friedrich and
Dibois do not overcome the deficiencies in the rejection of claim 1, and
therefore these three rejections also are not sustained.

DECISION
None of the rejections are sustained.
The decision of the Examiner is reversed.

REVERSED

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