Ex Parte Kimes

Patent Trials and Appeals Board

Apr 22, 2019

13408724 - (D) (P.T.A.B. Apr. 22, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/408,724 02/29/2012
127269 7590 04/24/2019
McCracken & Gillen LLC
1315 West 22nd Street, Suite 225
Oak Brook, IL 60523
FIRST NAMED INVENTOR
Angela Kimes
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
C7600/1003 6506
EXAMINER
KIM, SHINH
ART UNIT PAPER NUMBER
3636
NOTIFICATION DATE DELIVERY MODE
04/24/2019 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
following e-mail address(es):
docket@mfgip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ANGELA KIMES
Appeal2018-004877
Application 13/408,724
Technology Center 3600
Before DANIELS. SONG, JAMES P. CALVE, and
JEREMY M. PLENZLER, Administrative Patent Judges.
PLENZLER, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant seeks our review under 35 U.S.C. § 134 of the Examiner's
Decision rejecting claims 1-20 and 23--41. 1 We have jurisdiction under 35
U.S.C. § 6(b ).
We REVERSE.
1 Claims 21 and 22 are cancelled.
Appeal2018-004877
Application 13/408,724
CLAIMED SUBJECT MATTER
Claims 1 and 13 are independent, with claims 2-12, 14--20, and 23--41
depending therefrom. Claim 1 is reproduced below.
1. A method of preventing destruction of a baggage
identification tag and claim check combination comprising a
liner and a substrate and having a first end and a second end,
the method comprising:
providing a first cut extending through the liner and not
through the substrate;
providing a second cut extending through the liner and
not through the substrate, wherein the first and the second cuts
divide the liner into a first portion of the liner between the first
cut and the first end[,] a second portion of the liner between the
first cut and the second cut, and a third portion of the liner
between the second cut and the second end;
providing a third cut that extends through the substrate
and not through the liner to divide the substrate into a first
substrate portion and a second substrate portion, wherein the
first substrate portion forms the baggage claim check and the
second substrate portion forms the baggage identification tag;
and
providing instructions to remove the first portion of the
liner by peeling the first portion of the liner from the first cut in
a direction toward the first end away from the second portion;
wherein peeling the liner from the first cut toward either
the first end or the second end leaves the third portion of the
liner attached to the second portion of the substrate.
REJECTIONS
1. Claims 1--4, 8-13, 17-20, 23-27, 29-36, and 38--41 are rejected
under 35 U.S.C. § 103 as being unpatentable over Gwinn (US 3,228,129,
issued Jan. 11, 1966), Murphy (US 5,707,082, issued Jan. 13, 1998), and
Breen (US 4,817,310, issued Apr. 4, 1989).
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Appeal2018-004877
Application 13/408,724
2. Claims 5, 6, 14, 15, and 28 are rejected under 35 U.S.C. § 103 as
being unpatentable over Gwinn, Murphy, Breen, and Dawson (US
4,916,841, issued Apr. 17, 1990).
3. Claims 7 and 16 are rejected under 35 U.S.C. § 103 as being
unpatentable over Gwinn, Murphy, Breen, and Chamandy (US 7,579,059
B2, issued Aug. 25, 2009).
4. Claim 37 is rejected under 35 U.S.C. § 103 as being unpatentable
over Gwinn, Murphy, Breen, and Peterson (US 5,799,426, issued Sept. 1,
1998).
OPINION
Claim 1 is directed to "[a] method of preventing destruction of a
baggage identification tag and claim check combination comprising a liner
and a substrate and having a first end and a second end" and recites various
features of the liner, as well as specifying that "peeling the liner from the
first cut toward either the first end or the second end leaves the third portion
of the liner attached to the second portion of the substrate." Claim 13 is
directed to "[a] label" and recites "a substrate having a first side and a
second side," "a layer of adhesive coupled to the first side of the substrate"
and "a liner coupled to the adhesive layer over the first side of the substrate."
In the rejection of claims 1 and 13, the Examiner finds that Gwinn
teaches a "substrate" as required by claims 1 and 13, and also finds that
Gwinn teaches "a layer of adhesive coupled to ... the substrate" as required
by claim 13.2 Non-Final Act. 3, 6. The Examiner acknowledges that Gwinn
2 Claim 1 does not recite an "adhesive."
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Appeal2018-004877
Application 13/408,724
does not teach a "liner," but finds that Murphy teaches a "liner." Id. at 3--4,
6-7.
The Examiner reasons that "it would have been an obvious
modification ... to modify Gwinn as taught [by] Murphy to include
Murphy's liner" because "[s]uch a modification would provide a means to
manage the adhesive surface of the substrate by selectively protecting and
exposing the adhesive surface." Id. at 4; see also id. at 7 (providing same
modification and rationale with respect to claim 13).
Appellant disputes the Examiner's rationale, contending that "the
baggage tag disclosed by Gwinn et al. simply does not require a liner." Br.
6. Appellant explains that "Gwinn et al. is explicit that the adhesive coated
to underside of the body portion thereof adheres only to a like adhesive
when light pressure is applied." Id.
The Examiner does not dispute Appellant's contentions, and
acknowledges that "Gwinn does not disclose a release liner because the
adhesive disclosed does not require a release liner." Ans. 4. The Examiner
then appears to change the proposed combination, stating that "Murphy
discloses a luggage tag having a type of adhesive that requires the use of a
release liner to protect the adhesive, thereby selectively exposing the
adhesive when users secure the tag to the baggage" and the "Examiner cites
Murphy to disclose the teaching of a type of adhesive used on luggage tags
that have release liners." Id.
Based on the record before us, the Examiner has failed to provide
sufficient rationale to include a liner over Gwinn's adhesive. Indeed, as
noted above, the Examiner acknowledges there is no reason to use a liner
with Gwinn's adhesive. Ans. 4.
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Appeal2018-004877
Application 13/408,724
The additional explanation in the Answer noted above regarding
Murphy teaching different adhesives requiring a liner does not cure the
deficiency in the rejection. The Examiner does not provide any reason, let
alone sufficient rationale, as to why one skilled in the art would have
modified Gwinn's adhesive.
The rejections of the dependent claims do not cure the deficiencies
noted above. For at least the reasons set for above, we do not sustain the
Examiner's decision to reject claims 1-20 and 23--41.
DECISION
We REVERSE the Examiner's decision to reject claims 1-20 and 23-
41.
REVERSED
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