Ex Parte Schliephacke et al

Board of Patent Appeals and Interferences

Jan 6, 2012

10830172 (B.P.A.I. Jan. 6, 2012)

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.
10/830,172 04/21/2004 Ralf Schliephacke 101769-254 (tesa AG
1635)
8156
27384 7590 01/06/2012
Briscoe, Kurt G.
Norris McLaughlin & Marcus, PA
875 Third Avenue, 8th Floor
New York, NY 10022
EXAMINER
SELLS, JAMES D
ART UNIT PAPER NUMBER
1745
MAIL DATE DELIVERY MODE
01/06/2012 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte RALF SCHLIEPHACKE, BRUCE EHLERS, and
MICHAEL SCHWERTFEGER
____________________

Appeal 2011-000214
Application 10/830,172
Technology Center 1700
____________________

Before FRED E. McKELVEY, KAREN M. HASTINGS, and
RAE LYNN P. GUEST, Administrative Patent Judges.

GUEST, Administrative Patent Judge.

DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134 from the Examiner’s
decision to reject claims 1-6. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
The Examiner rejected the sole independent claim 1 under 35 U.S.C.
§ 103(a) as unpatentable over Khatib (US 5,370,420; issued Dec. 6, 1994)
and Treleaven (US 6,413,345 B1; issued Jul. 2, 2002) (App. Br. 4; Ans. 3).
Appeal 2011-000214
Application 10/830,172

2
Upon consideration of the evidence relied upon by the Examiner, we
agree with Appellants that a prima facie case of obviousness has not been
established with respect to independent claim 1. The Examiner
correspondingly rejected the remaining dependent claims on appeal over
these references, either alone or further in view of other prior art of record,
applying the teachings of Khatib and Treleaven in the same way for the
independent and dependent claims. Accordingly, we cannot sustain any of
the Examiner’s rejections.
We provide the following for emphasis only. Two rationales are
offered for employing the saw-toothed shaped tear line taught by Treleaven
in the method of Khatib: 1) “as a matter of choice based on desired physical
properties (i.e., ease and effectiveness of use by the consumer) and
functionality of the labels being produced” and 2) as substitute cut lines
(Ans. 4 and 6-7). We find insufficient evidentiary support for either of these
rationales based on the evidence mentioned in the Answer. We are directed
to no particular physical properties or functionality improved in the method
of Khatib by the addition of the teachings of Treleaven, nor are we directed
to any evidence of substitutability of the die cut shape of the tear strip of
Treleaven for the straight edge cut of Khatib. See KSR Int’l Inc. v. Teleflex
Inc., 550 U.S. 398, 418 (2007) (obviousness must be supported by
articulated reasoning with some rational underpinning to support the legal
conclusion of obviousness). In the appeal before us, the evidentiary
underpinning is not sufficient to justify a conclusion of obviousness.
Given that a prima facie case has not been established, we find it
unnecessary to address the merits of Appellants’ evidence of unexpected
results.
Appeal 2011-000214
Application 10/830,172

3
DECISION
The decision of the Examiner is REVERSED.

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