Ex parte Peterson

Board of Patent Appeals and Interferences

Apr 30, 1998

08187838 (B.P.A.I. Apr. 30, 1998)

Application for patent filed January 28, 1994.1
1
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today
(1) was not written for publication in a law journal and
(2) is not binding precedent of the Board.
Paper No. 21
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte DEAN D. PETERSON

_____________
Appeal No. 97-1440
Application 08/187,8381
______________
ON BRIEF
_______________
Before COHEN, MEISTER and FRANKFORT, Administrative Patent
Judges.
FRANKFORT, Administrative Patent Judge.
Appeal No. 97-1440
Application 08/187,838
2
DECISION ON APPEAL
This is a decision on appeal from the examiner's final
rejection of claims 1 through 3, 6, 9, 10, 13, 15 through 17 and
19. Dependent claim 18 has been objected to, but has also been
indicated to be allowable if rewritten in independent form
including all the limitations of the base claim and any inter-
vening claims. Claims 20 through 23 stand allowed. Claims 5, 8,
14, 24 and 25, the only other claims remaining in the
application, have been withdrawn from further consideration under
37 CFR § 1.142(b). Claims 4, 7, 11 and 12 have been canceled.
Appellant's invention relates to an identification
bracelet of the type traditionally used in areas such as hospital
patient admissions, where appropriate and/or desired information
relative to the patient must be printed on the bracelet. A copy
of representative claims 1, 6, 13 and 15 on appeal appears in the
Appendix to appellant's brief (Paper No. 16).
The prior art references of record relied upon by the
examiner in rejecting the appealed claims are:
De Woskin 4,314,415 Feb. 9, 1982
Ohno et al. (Ohno) 0,552,656 July 28, 1993
Appeal No. 97-1440
Application 08/187,838
3
(European Patent Application)
Claims 1 through 3, 6, 9, 10, 15 through 17 and 19
stand rejected under 35 U.S.C. § 102(a) as being anticipated by
Ohno.
Claim 13 stands rejected under 35 U.S.C. § 103 as being
unpatentable over Ohno in view of De Woskin.
Rather than attempt to reiterate the examiner's full
commentary with regard to the above-noted rejections and the
conflicting viewpoints advanced by the examiner and appellant
regarding the rejections, we make reference to the examiner's
answer (Paper No. 17, mailed December 5, 1996) for the examiner's
reasoning in support of the rejections, and to appellant's brief
(Paper No. 16, filed November 21, 1996) for appellant's arguments
thereagainst.
OPINION
In reaching our decision in this appeal, we have given
careful consideration to appellant's specification and claims, to
the applied prior art references, and to the respective positions
articulated by appellant and the examiner. As a consequence of
Appeal No. 97-1440
Application 08/187,838
4
our review, we have made the determination that neither of the
examiner's rejections will be sustained. Our reasoning in
support of this determination follows.
Looking first at the examiner's rejection under
§ 102(a), we note that independent claims 1 and 6 define the
identification bracelet therein as having a body portion formed
from a plurality of coextensive laminates that are "relatively
permanently bonded to each other over a majority of said body
portion." These claims also recite an "adhesive closure means"
which is said to include a "moveable cover means integrally
formed from, and constituting a portion of, one or more of said
laminates" (claim 1) or a "movable cover" (claim 6). The movable
cover portions of the bracelet laminates are selectively movable
from an initial position covering an adhesive means on the
bracelet to a subsequent position exposing the adhesive means so
that a first end portion of the bracelet may be attached to a
second end portion of the bracelet in an operative relationship
with a person or object to be identified. The terminology
requiring the laminates of the bracelet to be "relatively
permanently bonded" to each other except at the location of the
cover means also appears in independent claim 15.
Appeal No. 97-1440
Application 08/187,838
5
On page 8 of the brief, appellant seeks to distinguish
the identification bracelet of claims 1, 6 and 15 on appeal from
the identification tag of Ohno by pointing out that the release
paper (C), seen in Figures 1, 4 and 5 of Ohno as providing the
entire lower laminate of the body portion of the luggage tag
therein, "does not have any portion permanently secured to the
tag at any location" (emphasis in original). Appellant contends
that the release paper (C) is not permanently bonded to the tag
of Ohno because, if it were, Ohno would be inoperative. The
examiner contends (answer, page 4) that the release paper (C) of
Ohno is considered to be "relatively permanently" bonded to the
confronting laminate therein because the terminology "relatively
permanently" is understood to mean "not absolutely permanently"
or more permanent relative to something else.
It is an essential prerequisite that the scope and
content of the claimed subject matter be fully understood prior
to the application of prior art thereto. Accordingly, we direct
our attention to appellant's independent claims 1, 6 and 15 to
derive an understanding of the scope and content thereof. More
particularly, we look to the specification, claims and arguments
Appeal No. 97-1440
Application 08/187,838
6
presented by appellant in an effort to understand the language
"relatively permanently bonded" as used in those claims.
On pages 4 and 5 of the specification, appellant
describes a prior art identification bracelet that was made of
paper and included a removable, coated backing paper (i.e., a
release paper as in Ohno). Like the release paper in Ohno, it is
noted that the backing paper of such prior art was the same width
and length as the primary layer of the bracelet so as to cover
all of the adhesive on the bracelet and prevent it from adhering
to the patient or object being identified. It is also indicated
that the backing paper "typically" included a movable or
removable cover portion, which was moved to expose a
corresponding underlying area of adhesive, so that the bracelet
could be secured, for example, around the wrist of a patient by
having the exposed adhesive pressed against the other end of the
bracelet after such bracelet was placed in a loop around the
patient's wrist. One of the drawbacks of such an identification
bracelet was indicated to be the fact that "none of the backing
paper is bonded to the primary paper layer of the bracelet"
(specification, page 5). It is further specifically noted that
Appeal No. 97-1440
Application 08/187,838
7
[w]hile this lack of bonding is necessary at
the locus of the cover portion to permit that
portion to be moved to expose the underlying
area of adhesive, it can cause problems with
respect to the remaining non-cover-portion of
the backing paper layer. For example, any or
all of the remaining backing paper layer may
be inadvertently removed while applying the
bracelet to a person. The remaining portions
of the backing layer may even be
intentionally and/or surreptitiously removed
subsequent to its proper application, such as
by the patient or other wearer, such as a
child or event-attendee fiddling with the
bracelet. Even without removal of the non-
cover portion of the backing paper, the
adhesive can become soft especially, for
example, when the bracelet has been warmed by
the wearer’s normal wrist temperature; in
this soft condition, the adhesive can ooze
from between the primary paper layer and the
remaining backing paper onto the sides of the
bracelet.
Any of the foregoing situations expose the
adhesive in an undesirable manner and cause
the bracelet to undesirably, messily and/or
uncomfortably adhere to the wearer or object
to be identified.
As indicated on page 6 of the specification, an object
of appellant's invention is to provide an improved identification
bracelet which can be utilized in "on-demand," on site printing
situations. The preferred embodiment of the invention is then
Appeal No. 97-1440
Application 08/187,838
8
described as having a body portion formed from a plurality of
laminates that are "relatively permanently bonded" to each other
over a majority of the body portion, and as including adhesive
closure means for attaching the first end of the bracelet to the
second end thereof in an operative relationship with a person or
an object to be identified. The adhesive closure means of the
bracelet is then described as including a movable cover means
integrally formed from, and constituting a portion of, one or
more of the laminates. The cover means is said to be provided
with a non-adhesive coating means such as a non-bonding coating
layer thereon, which layer confronts the adhesive means on the
bracelet prior to movement of the cover means away from the
adhesive means when desired. The non-adhesive, non-bonding
coating layer is said to help
insure that the cover will indeed remain
moveable from the adhesive, even after the
remaining portions of the laminates and
adhesive have been permanently bonded
together (specification, page 7).
Throughout the prosecution of this application
appellant has maintained that the release layer (C) of Ohno is
not a bracelet laminate permanently bonded to any of the parts
Appeal No. 97-1440
Application 08/187,838
9
thereof, since the release layer is specifically designed to be
readily removable from the adhesive on the Ohno device, and that
by contrast, the appellant's invention is directed to an
underlying laminate that is relatively permanently bonded to the
confronting laminate, except at the location of the cover
portion.
When we look to the totality of the disclosure and to
appellant's arguments in this case, we are of the opinion that
the only fair and reasonable interpretation of the claim language
"relatively permanently bonded" as used in independent claims 1,
6 and 15 on appeal is that -- relative to the movable cover
portion that is integrally formed with the lower laminate, the
remainder of the lower laminate of the claimed bracelet is
permanently bonded to the adjacent laminates over the majority of
the body portion of the bracelet so as not to be removable
therefrom.
Returning now to the examiner's prior art rejection
under 35 U.S.C. § 102(a) of appealed claims 1 through 3, 6, 9,
Appeal No. 97-1440
Application 08/187,838
10
10, 15 through 17 and 19, it is apparent to us that, for the
reasons advanced by appellant in the brief, the identification
tag of Ohno with its removable release layer (C) extending over
the entire lower side of the tag is not an anticipation of the
identification bracelet defined in appellant's above enumerated
claims on appeal. Although it is intended that only the cover
portion of the release layer (C) at (3a) be removed to expose
the adhesive (B) as seen in Figure 5 of Ohno, it is nonetheless
true that the remainder of the release layer (C) of the baggage
tag (3), and on the other parts of the tag (4) and (5) of Ohno,
is removable from the adjacent laminates which make up the body
portion of the tag therein and is therefore clearly not a
laminate of an identification tag or bracelet which is
permanently bonded to the adjacent coextensive laminates of the
bracelet over a majority of the body portion as required in
appellant's claims on appeal. Accordingly, the rejection of
claims 1 through 3, 6, 9, 10, 15 through 17 and 19 under 35
U.S.C. § 102(a) will not be sustained.
Independent claim 13 on appeal expressly requires the
body portion of the multiplicity of bracelets therein to be
Appeal No. 97-1440
Application 08/187,838
11
formed from coextensive laminates "permanently bonded together on
at least the major areas of said laminates," with the bracelets
including adhesive closure means integrally formed with said
laminates, and with said bracelets having a substantially uniform
thickness along the length thereof. For the same reasons as
indicated above, we again note that the release layer (C) of Ohno
is not one of the coextensive laminates of the identification tag
or bracelet therein which is "permanently bonded together" as
required in this claim. The examiner's reliance on De Woskin
for a teaching of identification devices formed in a roll (e.g.,
Fig. 14), does nothing to account for the above-noted deficiency
in Ohno. Thus, it follows that the examiner's rejection of
claim 13 under 35 U.S.C. § 103 will also not be sustained.
Based on the foregoing, the decision of the examiner
rejecting claims 1 through 3, 6, 9, 10, 15 through 17 and 19
under 35 U.S.C. § 102(a) as anticipated by Ohno, and claim 13
under 35 U.S.C. § 103 as being unpatentable over Ohno in view
of De Woskin, is reversed.
REVERSED
Appeal No. 97-1440
Application 08/187,838
12
IRWIN CHARLES COHEN )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
JAMES M. MEISTER ) APPEALS AND
Administrative Patent Judge ) INTERFERENCES
)
)
)
CHARLES E. FRANKFORT )
Administrative Patent Judge )
Appeal No. 97-1440
Application 08/187,838
13
Thomas P. Mahoney
660 Newport Center Drive
Suite 710
Newport Beach, CA 92660