Ex Parte Stevens et al

Board of Patent Appeals and Interferences

Mar 26, 2012

10838108 (B.P.A.I. Mar. 26, 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.
10/838,108 05/03/2004 Timothy A. Stevens P-4360/1P1C1 5746
7590 03/27/2012
Becton, Dickinson and Company
1 Becton Drive
Franklin Lakes, NJ 07417
EXAMINER
KOCH, GEORGE R
ART UNIT PAPER NUMBER
1745
MAIL DATE DELIVERY MODE
03/27/2012 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 TIMOTHY A. STEVENS, STEVEN R. SAVITZ,
ALEXANDER GELBMAN, NEIL A. MOORE, and JEFF
CAMPBELL
____________________

Appeal 2010-005336
Application 10/838,108
Technology Center 1700
____________________

Before BRADLEY R. GARRIS, CATHERINE Q. TIMM, and
MICHAEL P. COLAIANNI, Administrative Patent Judges.

TIMM, Administrative Patent Judge.

DECISION ON APPEAL
I. STATEMENT OF CASE
Appellants appeal under 35 U.S.C. § 134 from the Examiner’s
decision to reject claims 5-20. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
The claims are directed to a label system and a method for label
alignment and placement.
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Application 10/838,108

2
The Examiner maintains, and Appellants appeal, the following
rejections:
A. The rejection of claims 5-9 under 35 U.S.C. § 102(b) as
anticipated by Neeley ‘110;
B. The rejection of claims 13 and 18 under 35 U.S.C. § 102(b) as
anticipated by Neeley ‘575;
C. The rejection of claims 10 and 11 under 35 U.S.C. § 103(a) as
obvious over Neeley ‘110 in view of Batty;
D. The rejection of claim 12 under 35 U.S.C. § 103(a) as obvious
over Neeley ‘110 in view of Prange; and
E. The rejection of claims 13-20 under 35 U.S.C. § 103(a) as obvious
over Neeley ‘575 in view of Neeley ‘110.
Appellants focus their arguments on claims 5, 9, 13, and 18, the
independent claims. Where Appellants have argued the claims as a group,
we select a single claim as representative. While we have considered a
claim for each rejection and also considered claim 9 separately, the issues
arising are limited to three main issues:
1. For claims 5, 13, and 18, does the evidence as a whole support the
Examiner’s finding that Neeley ‘110 describes printing and aligning indicia
on a label as required by those claims;
2. For claim 9, does the evidence as a whole support the Examiner’s
finding that Neeley ‘110 describes a second label having bar code
information printed in a location required by that claim; and
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Application 10/838,108

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3. For claims 13 and 18, does the evidence as a whole support the
Examiner’s finding that Neeley ‘575 describes printing and aligning as
required by those claims?
We answer those questions in the affirmative for the reasons presented
below.
II. OPINION
A. ISSUE 1
Claims 5, 13, and 18 are directed to a method. As explained by the
Specification, the method ensures proper positioning of a bar code to be read
or scanned by automated laboratory analysis equipment (Spec. 1:18-21).
The laboratory analysis begins with the selection of a labeled specimen
container such as that shown in Figure 1, reproduced below:
App
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05336
/838,108
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Appeal 2010-005336
Application 10/838,108

5
container type (Spec. 11:10-11). For example, label bearing area 15, and
hence the label 20, are located at a distance h from the bottom of the
container (Spec. 11:11-13).
Either before or after collecting a sample in container 10, the operator
such as a phlebotomist, scans bar code 25 on container 10 to provide
information to a microprocessor for printing a second label (Spec. 11: 4-19).
This second label is shown at 40 in Figure 2. Figure 2 is reproduced below:

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05336
/838,108
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Application 10/838,108

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The second label 40 includes information relating to the patient and
the sample collected from the patient (Spec. 11:19-21). This information
may be encoded in bar code 45 and/or as alphanumeric indicia 43 (Spec.
11:21-24). The microprocessor processes the scanned information from the
first label (e.g., from scanned bar code 25) and uses the container size and
shape information encoded therein to determine where on the second label
40 to print the patient information encoded in, for instance, bar code 45
(Spec. 12:1-11). For instance, the information encoded in bar code 25 of the
first label may be used to determine that label bearing area 15 of container
10 is positioned at a distance h from the bottom of container 10. The
microprocessor then recognizes that bar code 45 should be printed at a
distance g from the bottom of the second label (Spec. 12:15 to 13:2).
After printing, the operator affixes the second label 40 onto the
container. The second label 40 includes an alignment area, such as the notch
50 shown in Figure 2, corresponding to the alignment symbology 30 of the
first label (Spec. 2:24 to 3:1). The second label is positioned over the first
label so that the alignment area 50 of the second label is aligned with the
alignment symbology 30 of the first label (Spec. 3:3-4).
Figure 3 shows the two labels after alignment. Figure 3 is reproduced
below:
App
App

the a
addi
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Fig. 3

Claims 5
bove desc
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05336
/838,108
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Application 10/838,108

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5. A method of positionally locating indicia [printed
matter: e.g., 43, 45, words] on a label [40] for aligned
placement of said indicia [printed matter] at a predetermined
location on a container [10] comprising:
providing a container [10] having identifying information
associated with and unique to said container [e.g., container size
and shape information], which identifying information defines a
fixed label bearing area [15] on said container;
printing said indicia [e.g., 43, 45, words] on said label
[40], wherein said indicia [e.g., 43, 45, words] is aligned on
said label [40] at a location determined by the fixed label
bearing area [15] of said container [10]; and
placing said label [40] on said label bearing area [15] so
as to position said indicia [e.g., 43, 45, words] at said
predetermined location on said container [10].
(Claims App. at Br. 25 (emphasis added).)
Claims 13 and 18 each include a step of printing indicia similar to that
of claim 5.
For Rejections A, C, D, and E, the Examiner relies upon Neeley ‘110
as describing the claimed printing step. The Examiner determines that the
language of claims 5, 13, and 18 is broad enough to encompass the method
of Neeley ‘110.
Appellants contend that Neeley ‘110 does not teach printing indicia on
a label where the indicia is aligned on the label at a location determined by
the fixed label bearing area of the container as required by claim 5 (Br. 12-
14; Reply Br. 2-4). With regard to claims 13 and 18, Appellants state that:
As described above, independent claim 13 recites, inter
alia, "providing a container with identification information and
a label bearing area" and "printing indicia on a label at a
location determined by said identification information ... said
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indicia is aligned on said label and determined by the label
bearing area". Similarly, independent claim 18 recites, inter
alia, "providing a specimen container with a label bearing area
or desired predetermined location and identification information
that defines the container" and "printing indicia from said
processing unit on a label at a location determined by said
identification information, and wherein said indicia is aligned
on said label at a location determined by the label bearing area".
Accordingly, as recited in both claims 13 and 18, identification
information provided on a container is utilized for defining a
selectively changeable location on a label that is appropriate for
printing.
(Br. 21 (emphasis added).)
The fundamental issue arising is one of claim interpretation. During
examination, "claims . . . are to be given their broadest reasonable
interpretation consistent with the specification, and . . . claim language
should be read in light of the specification as it would be interpreted by one
of ordinary skill in the art." In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d
1359, 1364 (Fed. Cir. 2004).
To interpret the printing clauses of claims 5, 13, and 18, it is first
necessary to determine the meaning of “fixed label bearing area” as recited
in claim 5, and “label bearing area” as recited in claims 13 and 18.
As an initial matter, we note that the Specification does not make any
distinction between “fixed label bearing area” and “label bearing area” (see
Spec. 3:17-23). Rather “label bearing area” appears to be used as a
shorthand term for “fixed label bearing area” (id.).
The Specification designates the “label bearing area” as area 15
shown in Figure 1 (Spec. 8:1-2). The Specification states that first label 20
is affixed to the label bearing area 15, and reference numeral 15 in Figure 1
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uses a bracket to identify the label bearing area as the area of the container
containing the first label 20 (Spec. 8:1-2; Fig. 1).
Claim 5 defines the “fixed label bearing area” as that area on the
container defined by the identifying information associated with and unique
to the container (see the providing step of claim 5). The identifying
information associated with and unique to the container, according to the
Specification, is information about the size and shape of the container (Spec.
10:22 to 11:2).
The label bearing area is a function of the container type including the
size and shape of the container (Spec. 11:10-14). The label bearing area is
co-extensive with the size and shape of the label covering the label bearing
area. Claims 5, 13, and 18 encompass any indicia alignment determined by
the size and shape of the label. The claims are not limited to determining
position g on the basis of height h of the first label 20 from the bottom of the
container as recited in the Specification.
We note that in determining anticipation “the name of the game is the
claim.” In re Hiniker Co., 150 F.3d 1362, 1369 (Fed.Cir.1998). A claim
that is broad enough to sweep in the prior art will be anticipated by the prior
art. Id; see also Kalman v. Kimberly-Clark Corp., 713 F.2d 760, 772 (Fed.
Cir. 1983) (“The law of anticipation does not require that the reference
‘teach’ what the subject patent teaches. Assuming that a reference is
properly ‘prior art,’ it is only necessary that the claims under attack, as
construed by the court, ‘read on’ something disclosed in the reference, i.e.,
all limitations of the claim are found in the reference, or ‘fully met’ by it.”).
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Neeley ‘110 produces custom sized labels (Neeley ‘110, col. 1, ll. 5-
9). As found by the Examiner, the labels are sized based upon the size and
shape of the container (Ans. 10; see Neeley ‘110, col. 6, ll. 10-39; compare
Figs. 3-5 with Figs. 6 and 7). The information on the label is resized by
using smaller fonts to allow essential information to be printed on smaller
labels, which are to be placed on smaller containers having smaller label
bearing areas (Neeley ‘110, col. 6, ll. 56-57). Because the font size
repositions the indicia so it can fit on the smaller label, the location of the
indicia changes with the size and shape of the container and hence changes
based on the label bearing area. Therefore, the indicia “is aligned on the
label at a location determined by the fixed label bearing area of said
container” as claimed.
In the words of the Examiner, the dimensions of the label are
sufficient to define the location on the label in which the information is
printed (Ans. 11). This is because the label dimensions match the label
bearing area.
For claims 5, 13, and 18, we determine that the evidence as a whole
supports the Examiner’s finding that Neeley ‘110 describes printing and
aligning indicia on a label as required by those claims.
We, therefore, sustain the Examiner’s rejection of claims 5-8 as
anticipated by Neeley ‘110; and the Examiner’s rejection of claims 13-20 as
obvious over Neeley ‘575 in view of Neeley ‘110, the rejections in which
this issue arises.

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B. ISSUE 2
We now turn to the second issue, i.e., does the evidence as a whole
support the Examiner’s finding that Neeley ‘110 describes a second label
having bar code information printed in a location required by claim 9?
Claim 9 is directed to a label system comprising two labels, one at
least partially overlapping the other. The claim is structural in nature and
must be distinguished over the prior art based upon structural differences.
In re Schreiber, 128 F.3d 1473, 1478 (Fed. Cir. 1997).
Claim 9, with reference numerals added, reads as follows:
9. A label system for ensuring proper positioning of bar
code information [45] on a label [40], comprising:
a first label [20] comprising alignment symbology [30]
and printing position information [container type, size and
shape information]; and
a second label [40] comprising an alignment area [50]
corresponding to said alignment symbology [30] of said first
label [20];
wherein said second label [40] is positioned to at least
partially overlap said first label [20] using the alignment
symbology [30] of the first label [20]; and
wherein the bar code information [45] is printed on a
location of said second label that is defined, at least in part, by
the printing position information [container type, size, and
shape information] and said bar code information [45] is
aligned on said second label [40] at a location determined by
said alignment symbology [30].
(Claims App. at Br. 25-26.)
The Examiner finds that Neeley ‘110 describes a bar code 7 on the
first label that identifies the size of the label (Ans. 4). The Examiner further
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finds that because the information on the bar code 7 identifies the size of the
second label, it inherently affects the position of the bar code printed on the
second label (id.).
Appellants contend that Neeley ‘110 fails to disclose what is recited in
the last wherein clause of the claim (Br. 14-16; Reply Br. 4-5).
In terms of structure, the first part of the wherein clause requires that
the second label include bar code information printed thereon. We assume
that “bar code information” is simply the bar code itself. The location of the
bar code is said to be defined, at least in part, by the “printing position
information.” The “printing position information” is information encoded
on the first label (see first clause of claim 9). The Specification discloses a
bar code 25 on the first label as providing this printing position information
(Spec. 11:10-11). The “printing position information” encoded in bar code
25 identifies the container type and defines the location of the label bearing
area 15 unique to that container type (id.).
Neeley ‘110, as correctly found by the Examiner, includes a bar code
on the first label that identifies the container type and size of the label. The
size of the label defines the label bearing area. Neeley ‘110 uses the
information from the bar code on the first label to determine the size of the
label, which in turn defines the size of the font and, thus, the location of the
print location on the second label. Therefore, we agree with the Examiner
that Neeley ‘110 describes bar code information printed on a location of the
second label defined as claimed.
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The second part of the wherein clause requires the bar code
information be “aligned on second label at a location determined by said
alignment symbology.”
The Examiner finds that at least the position of the bottom edge of
Neeley’s first label, i.e., the preaffixed label, is “alignment symbology”
within the meaning of the claim (Ans. 4). This bottom edge of Neeley’s
label is placed so that the original bar code (bar code 7) is covered. This
occurs when the opposite edge of the label 34 of Neeley is placed so as to
abut the stopper 3. According to Neeley, this places the bar code 51 on the
second label in the proper place to be scanned (Neeley ‘110, col. 6, ll. 10-19;
Fig.5). This causes the bar code information 51 of Neeley to be aligned on
the second label (label 34) at a location determined by the bottom of the first
label (alignment symbology of first label) and the top abutting the stopper.
We agree with the Examiner that the claim language is broad enough
to encompass the label configuration of Neeley ‘110.
The evidence as a whole supports the Examiner’s finding that Neeley
‘110 describes a second label having bar code information printed in a
location required by that claim.
Claims 10-12 depend from claim 9. The Examiner added further
evidence to address the limitations of those claims. However, Appellants do
not advance any arguments over and above those raised with regard to claim
9 (Br. 19-20). Therefore, for the reasons presented above with respect to
claim 9, we sustain the rejection of claim 9 as anticipated by Neeley ‘110;
the rejection of claims 10 and 11 as obvious over Neeley ‘110 in view of
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Batty; and the rejection of claim 12 as obvious over Neeley ‘110 in view of
Prange.
C. ISSUE 3
The Examiner has further rejected claims 13 and 18 as anticipated by
Neeley ‘575.
Appellants contend that while Neeley ‘575 discloses identifying a
container type for printing certain information on a label, Neeley ‘575 does
not teach using that information for defining a print area on a label, or that
the indicia is aligned on the label at an area determined by the label bearing
area as required by claims 13 and 18. But as we explained above, the label
bearing area is merely the area to be covered by the label. In other words,
the label bearing area is defined by the information provided about the shape
and size of the container and aligning based upon the shape and size
information is synonymous with aligning with the label bearing area.
Neeley’s bar code 7 provides information about the size of the container to
the microprocessor (Neeley ‘575, col. 6, ll. 58-59) and the bar coded patient
accession number 51 on the second label is placed in the proper place for
scanning by the automatic laboratory specimen testing equipment (Neeley
‘575, col. 6, l. 66 to col. 7, l. 4). The claims are broad enough to encompass
the method of Neeley ‘575.
The evidence as a whole supports the Examiner’s finding that Neeley
‘575 describes printing and aligning as required by claims 13 and 18.
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We sustain the rejection of claims 13 and 18 as anticipated by Neeley
‘575.
CONCLUSION
We sustain the Examiner’s rejections.

DECISION
The Examiner’s decision is affirmed.
TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1).

AFFIRMED

cam