Ex Parte Kennedy

Patent Trial and Appeal Board

Dec 29, 2016

14085281 (P.T.A.B. Dec. 29, 2016)

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.
14/085,281 11/20/2013 Michael R. Kennedy KDY1-50036US1 4706
86378 7590 01/03/2017
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EXAMINER
1801 East 9th Street BATTISTI, DEREK J
Suite 1200
Cleveland, OH 44114-3108 ART UNIT PAPER NUMBER
3782
NOTIFICATION DATE DELIVERY MODE
01/03/2017 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
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PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MICHAEL R. KENNEDY
Appeal 2016-008377
Application 14/085,2811
Technology Center 3700
Before ANTON W. FETTING, MICHAEL C. ASTORINO, and
PHILIP J. HOFFMANN, Administrative Patent Judges.
ASTORINO, Administrative Patent Judge.
DECISION ON APPEAL
The Appellant appeals under 35 U.S.C. § 134 from the Examiner’s
decision rejecting claims 1—3, 7—17, 19—22, 24, 26—29, 34, and 35. We have
jurisdiction over the appeal under 35 U.S.C. § 6(b).
We REVERSE.
1 According to the Appellant, “[t]he real party in interest is The Kennedy
Group Incorporated.” Appeal Br. 2.
Appeal 2016-008377
Application 14/085,281
STATEMENT OF THE CASE
Claimed Subject Matter
Claims 1,16, and 26 are the independent claims on appeal. Claim 1,
reproduced below, is illustrative of the subject matter on appeal.
1. A bag assembly comprising:
a shopping bag; and
a label comprising advertising indicia attached to a surface
of the bag with an adhesive, wherein removal of said label from
said surface leaves behind no recess and substantially no
adhesive or other residue on the bag.
Rejections2
Claims 1—3, 7—13, 15—17, 19-22, 26—29, 34, and 35 are rejected under
35 U.S.C. § 103(a) as unpatentable over Absher (US 5,298, 104, issued
Mar. 29, 1994), Lowry et al. (US 6,383,592 Bl, issued May 7, 2002)
(hereinafter “Lowry”), and Wilkinson et al. (US 8,261,477 Bl, issued
Sept. 11, 2012) (hereinafter “Wilkinson”).
Claim 14 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Absher, Lowry, Wilkinson, and Daniels et al. (US 6,843,601 B2, issued
Jan. 18, 2005) (hereinafter “Daniels”).
Claim 24 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Absher, Lowry, Wilkinson, and Dunsim et al. (US 4,479,838, issued
Oct. 30, 1984) (hereinafter “Dunsim”).
2 The Examiner entered a claim amendment (“Amendment ‘E’”), filed
Oct. 15, 2015, which cancels claims 30—33 and 36. See Advisory Action 1
(mailed Nov. 20, 2015); see also Amendment “E” 6. Accordingly, we
understand that the rejections of claims 30—33 and 36 in the Final Action,
mailed July 15, 2015, are considered withdrawn as moot.
2
Appeal 2016-008377
Application 14/085,281
ANALYSIS
The Appellant persuasively argues that “the [Ejxaminer’s reasoning
for substituting Lowry’s adhesive structure for Absher’s static-based
adhesion is to provide a feature to Absher’s labels that the reference itself
expressly says should not be there.” Appeal Br. 7 (emphasis omitted).
Notably, this reasoning is used for the rejection of independent claims 1,16,
and 26. Final Act. 2—3. Moreover, we have considered the Examiner’s
response to the Appellant’s argument and have determined that it is
unpersuasive.
The Appellant correctly points out that “Absher explains it is ‘a
primary objective of the invention to provide ... coupons to bags so that the
coupons are ... easily removable and do not stick to the hands, handbag,
wallet, or purse of the consumer.’” Id. at 5 (citing Absher, col. 2,11. 20-25).
The Appellant also correctly points out that Lowry’s removable sticker 16 is
designed to be reapplied to other items, for example, a child’s shirt. See
Appeal Br. 6 (citing Lowry, col. 3,11. 66—67). Accordingly, the Examiner’s
rejection, which is based on a substitution of Absher’s static-based adhesion
label 40 with Lowry’s label 16, lacks sound reasoning as the purpose of
Absher’s static-based adhesion label 40 is to not stick to items and the
purpose of Lowry’s label 16 is to stick to items similar to those described in
Absher. See also Appeal Br. 8; Reply Br. 6. Put simply, the labels of
Absher and Lowry are not substitutes as they have directly opposite
purposes.
Thus, we do not sustain the Examiner’s rejection of independent
claims 1,16, and 26, and dependent claims 2, 3, 7—13, 15, 17, 19-22, 27—29,
34, and 35 as unpatentable over Absher, Lowry, and Wilkinson. The
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Appeal 2016-008377
Application 14/085,281
remaining rejections based on Absher, Lowry, and Wilkinson in
combination with Daniels or Dunsim rely on the same errant reasoning
discussed above. As such, we do not sustain the rejections under 35 U.S.C.
§ 103(a) of: claim 14 as unpatentable over Absher, Lowry, Wilkinson, and
Daniels; and claim 24 as unpatentable over Absher, Lowry, Wilkinson, and
Dunsim.
DECISION
We REVERSE the Examiner’s decision rejecting claims 1—3, 7—17,
19-22, 24, 26-29, 34, and 35.
REVERSED
4