Ex Parte Raming

Patent Trial and Appeal Board

Dec 31, 2013

10840739 (P.T.A.B. Dec. 31, 2013)

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.
10/840,739 05/07/2004 Bruce Raming 27194-RE-CNT1 9722
23589 7590 12/31/2013
Hovey Williams LLP
10801 Mastin Blvd., Suite 1000
Overland Park, KS 66210
EXAMINER
BATTULA, PRADEEP CHOUDARY
ART UNIT PAPER NUMBER
3725
MAIL DATE DELIVERY MODE
12/31/2013 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 BRUCE RAMING
____________________

Appeal 2013-009448
Application 10/840,739
Patent 6,186,554 B1
Technology Center 3700
____________________

Before EDWARD A. BROWN, CHARLES N. GREENHUT, and
FRANCES L. IPPOLITO, Administrative Patent Judges.

BROWN, Administrative Patent Judge.

DECISION ON APPEAL
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STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s
decision rejecting claims 46-55. We have jurisdiction under 35 U.S.C.
§ 6(b).
We AFFIRM and enter NEW GROUNDS OF REJECTION pursuant
to our authority under 37 C.F.R. § 41.50(b) (2013).

CLAIMED SUBJECT MATTER
Claim 46, reproduced below, is the sole independent claim and
illustrative of the claimed subject matter:1
46. A labeled package assembly to be shipped to
a recipient, said labeled package assembly
comprising:
a package containing at least one item to be
received by the recipient; and
a combination shipping and packing slip
label applied to the package, wherein opposite
sides of the label carry publicly displayed package
address indicia associated with the recipient and
hidden package contents indicia listing the at least
one item, respectively,
said label presenting a top face, an inner
face, and an outer edge,
said label further presenting a central portion
spaced inboard of the outer edge and a surrounding
margin defined between the outer edge and the
central portion,
said top face being provided with the
package address indicia,

1 Appellant’s application is a reissue application and the claim set listed in
the Claims Appendix includes underlining. Claims App’. Herein, we omit
all underlining of claim language that is quoted from the claim set.
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said package contents indicia being carried
on the inner face along the central portion so that
the central portion provides a packing slip,
said inner face having adhesive applied
thereto along at least a portion of the surrounding
margin, with the label and package cooperatively
concealing the package contents indicia as long as
the label is adhered to the package.

REJECTIONS
Appellant requests review of the following rejections:2
I. Claims 46-53 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Laurash (US 5,547,227; issued Aug. 20, 1996) and Egan
(US 4,544,590; issued Oct. 1, 1985). Ans. 5.
II. Claims 54 and 55 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Laurash, Egan, and Burke (US 5,716,668; issued Feb. 10,
1998).3 Ans. 10.

2 Appellant contends that, in the final Office Action dated October 17, 2012,
“Claims 46-53 were rejected under 35 U.S.C. § 103(a) as being unpatentable
over the Laurash et al. '227 patent in view of the Egan '590 patent and the
Burke et al. '688 patent.” App. Br. 9. However, we are unable to locate this
ground of rejection in the final Office Action.
3 The Examiner indicated “[s]ince all of the discussion of Burke were not
included in the Final Office Action, they are now included in the current
rejection. No other changes to the rejection have been made.” Ans. 4. We
note that additional discussion regarding Burke is included in the rejection of
claims 54 and 55 under 35 U.S.C. § 103(a) as unpatentable over Laurash,
Egan, and Burke, as set forth in the Examiner’s Answer. Id. at 10-15.
Accordingly, we understand that this rejection is designated as a New
Ground of Rejection. Id. at 4.
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ANALYSIS
Rejection I – Obviousness over Laurash and Egan
Claim 46
The Examiner found that Laurash discloses a labeled package
assembly comprising, inter alia, a package containing at least one item to be
received by a recipient, and a label capable of being used as a combination
shipping and packing slip applied to the package. Ans. 5 (citing Laurash,
col. 1, ll. 19-24; col. 5, ll. 8-14 and 56-57; col. 6, ll. 13-18). The Examiner
found that Laurash discloses postcards in the label, and stated “postcards are
extremely well known to have indicia bearing surfaces on both surfaces with
address indicia on at least one face.” Id. (citing Laurash, col. 5, l. 56 – col.
6, l. 2). The Examiner found that Laurash does not explicitly disclose “a
combination shipping and packing slip label wherein opposite sides of the
label carry publicly displayed package address indicia associated with the
recipient and hidden package contents indicia listing at least one item,” “said
package contents indicia being carried on the inner face of the label along
the central portion so that the central portion provides a packing slip,” and
“said inner face having adhesive applied thereto . . . with the label and
package cooperatively concealing the package contents indicia as long as the
label is adhered to the package,” as claimed. Id. at 5-6.
The Examiner found that Egan discloses a laminated member 47
including a membership card 57 having a strip 33 with indicia 43 on its front
face and indicia 29 on its back face. Ans. 6 (citing Egan, col. 8, ll. 4-14, 20-
21, and 24-25; figs. 12, 13). The Examiner also found that Egan teaches that
the laminated member “may be mailed to a user by application onto a
product and removed.” Id. (citing Egan, col. 8, ll. 29-34). The Examiner
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determined that the combination of Laurash and Egan teaches a dual-sided
label attached to a package. Id. at 15. The Examiner also determined that
having “address indicia on the front face and address [sic] indicia on the
back face” is within the scope of Egan. Id. at 6. The Examiner concluded
that it would have been obvious to one of ordinary skill in the art to provide
printing on the face ply portion coinciding with the central portion of
Laurash’s label to give the user of the product particular information, as
taught by Egan. Id. at 6.
While determining that the claimed subject matter would have been
obvious over Laurash and Egan, as discussed supra, the Examiner stated that
the combination of Laurash and Egan does not disclose the specific
arrangement and/or content of the indicia (i.e., address indicia on a front face
and package indicia on the back face). Ans. 7. The Examiner further stated
that “when the claimed printed matter is not functionally related to the
substrate it will not distinguish the invention from the prior art in terms of
patentability.” Id. (citing In re Gulack, 703 F.2d 1381 (Fed. Cir. 1983)).
According to the Examiner:
the substrate on the package comprising indicia on
the front face and back face is the same structure
claimed by Appellant and the sole difference is in
the content of the printed material. Thus, there is
no novel and unobvious functional relationship
between the printed matter (mailing indicia and
package indicia) and the substrate (label attached
to the package) which is required for patentability.
Id. (emphasis added).
Appellant contends that the Examiner erroneously determined that, in
the claimed labeled package assembly, only the label can be considered the
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substrate. Reply Br. 15. Rather, Appellant contends that the claimed
package (and its contents) plus the label should jointly be considered the
“substrate.” Id. at 16-17. Appellant contends that the Examiner’s approach
for identifying the “substrate” is not consistent with existing case law
including In re Miller, 418 F.2d 1392 (CCPA 1969). Id. at 16. Appellant
contends that the court in Miller interpreted the substrate “to include the
structure associated with the indicia-not a small arbitrarily defined part or
subcomponent of the structure (such as the label).” Id. at 16-17. These
contentions are not persuasive.
Miller involved a measuring device comprising a receptacle, indicia
“on” the receptacle, and a legend “on” or “attached to” the receptacle.
Miller, 418 F.2d at 1394.4 The court in Miller concluded “there is a new and
unobvious functional relationship between a measuring receptacle,
volumetric indicia thereon indicating volume in a certain ratio to actual
volume, and a legend indicating the ratio.” Miller, 418 F.2d at 1396. In
Miller, the “substrate” was the receptacle that the indicia and legend were
“on” or “attached to.”
Claim 46 recites that the top face of the label is “provided with the
package address indicia” and the “package contents indicia” are “carried on”
the inner face of the label. As such, the claimed package address indicia and
package contents indicia are both “on” the label. Claim 46 further recites
that label is “applied to” the package. Appellant has not provided any

4 Appellant has reproduced Figures 2 and 3 from Miller, which show indicia
on a cup and spoon, respectively. App. Br. 14; Reply Br. 15 (see Miller, 418
F.2d at 1394).
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persuasive argument why the Examiner’s determination of the “substrate” of
the claimed labeled package assembly is inconsistent with Miller.
We are mindful that the Patent and Trademark Office (PTO) must
consider all claim limitations when determining patentability of an invention
over the prior art, and may not disregard claim limitations directed to printed
matter. See Gulack, 703 F.2d at 1384-85. However, the Examiner correctly
noted that the PTO need not give patentable weight to claimed printed
matter limitations absent a new and unobvious functional relationship
between the printed matter and its corresponding substrate. See id. at 1385.
Appellant contends that the claimed combination provides several
new and unobvious functional relationships between the indicia and the
substrate. App. Br. 13. According to Appellant, “perhaps the most
significant functional relationship claimed between indicia and substrate, [is]
the claimed package contents indicia lists the at least one item in the
package.” Id. at 14. Appellant contends other functional relationships exist
between the indicia and substrate; namely, “the claimed arrangement . . .
results in the label and package cooperating to automatically conceal the
package contents indicia,” and “the package address indicia, associated with
the package recipient and provided on the top face, is functionally associated
with the at least one item.” Id. at 14-15.
While the claimed “package address indicia” and “package contents
indicia” have a function in the labeled package assembly, Appellant cannot
rely on the indicia to distinguish the claim from the prior art unless “there
exists [a] new and unobvious functional relationship between the printed
matter and the substrate.” Gulack, 703 F.2d at 1386. We agree with the
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Examiner that Appellant has not demonstrated any “new and unobvious”
functional relationship between the substrate and the claimed indicia.
In this regard, none of the new and unobvious functional relationships
mentioned by Appellant noted supra appears to be between the label and
indicia. Nor has Appellant demonstrated a new and unobvious functional
relationship between the indicia and the substrate of the claimed labeled
package assembly, even if the substrate is considered to include the package,
the at least one item, and the label applied to the package, as Appellant
contends it should be. In both Miller and Gulack the printed matter was
interrelated with the substrate to an extent that the ultimate function of the
invention depended on the interaction.5 The Examiner indicated that the
content of the printed matter on the claimed label may offer convenience to a
recipient. Ans. 7. However, Appellant has not shown that the particular
indicia printed on the label changes the ultimate function of the package
assembly, which is to contain at least one item to be shipped to the recipient.
The claimed package assembly can still function to contain the same item(s),
and be shipped to the same recipient, regardless of the particular indicia on
the label, especially the indicia on the inner face. In other words, the
claimed package assembly can be used in the same way for the same
purpose with or without the particular claimed indicia. Thus, Appellants
contentions regarding the existence of “new and unobvious” functional
relationships between the substrate and the indicia in the claimed package
assembly are not persuasive.

5 In Gulack, digits were printed on a band, which provided a substrate for the
digits. The court determined that the band and digits were functionally
related. Gulack, 703 F.2d at 1386-87.
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Appellant’s additional contentions for the rejection of claim 46 also
rely on the content of the printed matter on the label. App. Br. 17-21; Reply
Br. 18-22.6 As discussed supra, the Examiner found that the combination of
Laurash and Egan includes a package, at least one item contained in the
package, and a dual-sided label with indicia on top and inner faces of the
label attached to the package. Appellant acknowledges that a combination
package and double-sided label is disclosed in the prior art. Reply Br. 13.
Laurash discloses labels applicable for uses including package shipment
(Laurash, col. 1, ll. 19-24) and securing the labels to packages (id. at col. 6,
ll. 13-18). Appellant’s contention that Laurash does not teach a package
containing at least one item to be received by a recipient is not persuasive.
App. Br. 17; Reply Br. 20. We agree with the Examiner that packages
which Laurash’s label are applied to would contain at least one item for
shipping to a recipient, consistent with the description of “package
shipment.” Ans. 5. Claim 46 does not recite any limitation for “the at least
one item.” Appellant also does not provide any persuasive reason why the
labels used for package shipment in Laurash would not typically include
address information of the recipient on an outer face of the label, where the
information is visible, or why providing address information at this location
of the label would have been beyond the ordinary level of skill in the art.
Indeed, Laurash discloses that “[m]ailing information or other indicia may
be applied on each element as desired.” Id. at Abs. Laurash further
discloses that package identification indicia 56 can be printed on the label

6 We note Appellant’s contentions regarding Burke, but do not find them to
be pertinent because, as Appellant acknowledges, Burke is not applied as a
reference in this ground of rejection. App. Br. 19-21; Reply Br. 22-25.
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(id. at col. 7, ll. 1-2) and transferred to the upper side of card portion 34 on
the bottom ply 20 (id. at col. 7, ll. 9-13). Such package identification indicia
on the bottom ply would appear to be “concealed” by the label and a
package that the label is applied to. Accordingly, Laurash appears to teach
hidden indicia that provide information about the package.
Egan teaches printing indicia on both sides of a label (Egan, col. 8, ll.
20-22), and applying the laminated member to a product (id. at col. 8, ll. 29-
34). When Egan’s laminated member having indicia printed on both sides is
applied to a product, the laminated member and product would appear to
conceal the indicia on the inner face. We agree with the Examiner that Egan
provides “hidden indicia.” Ans. 18.
Appellant’s contentions appear to analyze Laurash and Egan
separately. However, non-obviousness cannot be established by attacking
references individually where, as here, the rejection is based upon the
teachings of a combination of references. In re Keller, 642 F.2d 413, 425
(CCPA 1981). As discussed supra, the Examiner articulated reasoning why
one skilled in the art would have desired to combine the teachings of
Laurash and Egan to result in the package assembly comprising indicia, as
claimed. Ans. 6. See KSR v. Int’l. Co. v. Teleflex Inc., 550 U.S. 398, 418
(2007) (citing In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (“[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.”)). Appellant
does not sufficiently explain why the Examiner's reasoning is not based on
rational underpinnings.
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In view of the above, we sustain the rejection of claim 46. Because
our analysis differs from the Examiner’s, we designate our affirmance of the
rejection of claim 46 as a new ground of rejection pursuant to 37 C.F.R.
§ 41.50(b) (2013) to provide Appellant with an opportunity to react thereto.
Claims 47 and 48
In the Appeal Brief, Appellant uses separate headings for claims 47
and 48, but merely states limitations these claims recite and does not address
the Examiner’s specific findings. App. Br. 21-22. Merely reciting the
language of a claim and asserting that the cited prior art references do not
disclose each claim limitation is insufficient. See 37 C.F.R. § 41.37(c)(iv)
(2013) (“A statement which merely points out what a claim recites will not
be considered an argument for separate patentability of the claim.”); 7 see
also In re Lovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011) (“we hold that the
Board reasonably interpreted Rule 41.37 to require more substantive
arguments in an appeal brief than a mere recitation of the claim elements and
a naked assertion that the corresponding elements were not found in the
prior art.”).
In the Reply Brief, Appellant again provides separate headings for
claims 47 and 48 and, for each claim, presents additional argument not
raised in the Appeal Brief. Reply Br. 25-28. 37 C.F.R. § 41.41(b)(2) (2013)
states “[a]ny argument raised in the reply brief which was not raised in the
appeal brief, or is not responsive to an argument raised in the examiner’s
answer, including any designated new ground of rejection, will not be

7 The Notice of Appeal was filed on January 17, 2013. Accordingly, the
appeal is subject to the rule that became effective on January 23, 2012.
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considered by the Board for purposes of the present appeal, unless good
cause is shown.” Here, Appellant’s new argument presented in the Reply
Brief “is not responsive to an argument raised in the examiner’s answer,
including any designated new ground of rejection,” and because Appellant
has not shown “good cause,” we do not consider the new argument.
As Appellant has not apprised us of any error in the Examiner’s
findings or conclusions for the rejection of claim 47 or 48, we sustain the
rejection of these claims. Inasmuch as the rejection of claims 47 and 48 is
based in part on our rationale sustaining the rejection of claim 46, we also
designate our affirmance of the rejection of claims 47 and 48 as a new
ground of rejection pursuant to 37 C.F.R. § 41.50(b) (2013).
Claims 49-53
Appellant use separate headings for each of claims 49-53, but merely
states limitations for each claim and does not address the Examiner’s
specific findings. App. Br. 22-23; Reply Br. 28-30. We do not consider
Appellant’s statements as an argument for separate patentability of any one
of claims 49-53. See 37 C.F.R. § 41.37(c)(iv) (2013).
As Appellant has not apprised us of any error in the Examiner’s
findings or conclusions for the rejection of claims 49-53, we sustain the
rejections of these claims. Inasmuch as the rejection of claims 49-53 is
based in part on our rationale sustaining the rejection of claim 46, we also
designate our affirmance of the rejection of claims 49-53 as a new ground of
rejection pursuant to 37 C.F.R. § 41.50(b) (2013).

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Rejection II – Obviousness over Laurash, Egan, and Burke
Appellant uses separate headings for claims 54 and 55, but merely
states limitations recited in each claim. App. Br. 23-24; Reply Br. 30-31.
As Appellant has not apprised us of any error in the Examiner’s findings or
conclusions for the rejection of claim 54 or 55, we sustain this rejection.
Inasmuch as the rejection of claims 54 and 55 is based in part on our
rationale sustaining the rejection of claim 46, we also designate our
affirmance of the rejection of claims 54 and 55 as a new ground of rejection
pursuant to 37 C.F.R. § 41.50(b) (2013).
DECISION
The Examiner’s decision rejecting claims 46-55 is AFFIRMED.
This decision contains new grounds of rejection of claims 46-55
pursuant to 37 C.F.R. § 41.50(b), which provides that “[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review.” 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 grounds 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.…
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No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv) (2013).

AFFIRMED; 37 C.F.R. § 41.50(b)

Vsh