12137682 (P.T.A.B. Nov. 22, 2013)

Ex Parte Kaufman

Patent Trial and Appeal BoardNov 22, 2013

12137682 (P.T.A.B. Nov. 22, 2013)

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. 12/137,682 06/12/2008 Stacy R. Kaufman QSS-064 8017 52554 7590 11/25/2013 Southeast IP Group, LLC 13-B West Washington Street GREENVILLE, SC 29601 EXAMINER BATTULA, PRADEEP CHOUDARY ART UNIT PAPER NUMBER 3725 MAIL DATE DELIVERY MODE 11/25/2013 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 PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte STACY R. KAUFMAN ____________________ Appeal 2011-010709 Application 12/137,682 Technology Center 3700 ____________________ Before: STEFAN STAICOVICI, LYNNE H. BROWNE, and HYUN J. JUNG, Administrative Patent Judges. BROWNE, Administrative Patent Judge. DECISION ON APPEAL Appeal 2011-010709 Application 12/137,682 2 STATEMENT OF THE CASE Stacy R. Kaufman appeals under 35 U.S.C. § 134 from a rejection of claims 1-5. Appellant’s representative presented oral argument on November 19, 2013. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE and enter a NEW GROUND OF REJECTION pursuant to our authority under 37 C.F.R § 41.50(b)(2011). CLAIMED SUBJECT MATTER The claims are directed to label sheet for extended tab labels. Claims 1 and 5 are independent. Claim 1 is reproduced below: 1. A label sheet for making a pharmaceutical label for placement on a medicinal container, the label sheet comprising: a front printing face having an adhesive backing and a length that is substantially greater than a perimeter of the medicinal container, said adhesive backing covering substantially an entire area of a backside of the front printing face; a backing sheet liner covering said adhesive backing; said front printing face having a score formed therein defining a first portion and a second portion of said front printing face, said first portion having a length corresponding substantially to the perimeter of the container, said score defining a border between said first portion and said second portion, whereby said second portion projects from the container when said first portion is attached to the container; and said backing sheet liner having a liner score line formed therein corresponding to said score in said front face for removing said releasable backing liner from said first portion. Appeal 2011-010709 Application 12/137,682 3 PRIOR ART Monico US 6,021,942 Feb. 8, 2000 GROUND OF REJECTION Claims 1-5 stand rejected under 35 U.S.C §103(a) as being unpatentable over Monico. OPINION New Ground of Rejection 35 U.S.C. § 112, second paragraph reads as follows: The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention. We enter a new ground of rejection of claims 1-5 under 35 U.S.C. § 112, 2nd paragraph as failing to particularly point out and distinctly claim the subject matter which applicant regards as his invention. Independent claims 1 and 5 define the length of the front printing face of the label sheet as “substantially greater than a perimeter of the medicinal container.” Br. 17. Claims 1and 5 further define the front printing face as having a first portion which is defined as having a length “corresponding substantially to the perimeter of the container.” Id. Thus, the length of the front printing face and the length of the first portion cannot be determined until a particular medicinal container has been selected; however, a medicinal container is not claimed. Accordingly, the metes and bounds of these claims cannot be determined because the same label sheet may or may Appeal 2011-010709 Application 12/137,682 4 not read on the claims depending upon the size of the medicinal container selected. Thus, independent claims 1 and 5 are indefinite. Claims 2-4 depend from independent claim 1 and likewise are indefinite. Obviousness We do not reach the merits of the Examiner’s rejections under 35 U.S.C. § 103 at this time. Before a proper review of these rejections can be performed, the subject matter encompassed by the claims on appeal must be reasonably understood without resort to speculation. Since claims 1-5 fail to satisfy the requirements of the second paragraph of 35 U.S.C. § 112, we are constrained to reverse, pro forma, the rejections under 35 U.S.C. §103. See In re Steele, 305 F.2d 859, 862 (CCPA 1962) (A prior art rejection cannot be sustained if the hypothetical person of ordinary skill in the art would have to make speculative assumptions concerning the meaning of claim language.). DECISION We enter a NEW GROUND OF REJECTION of claims 1-5 under 35 U.S.C. § 112, 2nd paragraph as failing to particularly point out and distinctly claim the subject matter which applicant regards as his invention. We REVERSE the Examiner’s rejection of claims 1-5 under 35 U.S.C §103(a). This decision contains a new ground of rejection pursuant to 37 C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides “[a] new ground of rejection pursuant to this paragraph shall not be considered final for judicial review.” Appeal 2011-010709 Application 12/137,682 5 37 C.F.R. § 41.50(b) also provides that Appellants, WITHIN TWO MONTHS FROM THE DATE OF THE DECISION, must exercise one of the following two options with respect to the new ground of rejection to avoid termination of the appeal as to the rejected claims: (1) Reopen prosecution. Submit an appropriate amendment of the claims so rejected or new evidence relating to the claims so rejected, or both, and have the matter reconsidered by the Examiner, in which event the proceeding will be remanded to the Examiner. . . . (2) Request rehearing. Request that the proceeding be reheard under § 41.52 by the Board upon the same record. . . . REVERSED; 37 C.F.R. § 1.136(a)(1)(iv). rvb