Ex Parte Kennedy

Patent Trial and Appeal Board

Sep 25, 2018

14085281 (P.T.A.B. Sep. 25, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/085,281 11/20/2013
86378 7590 09/27/2018
Pearne & Gordon LLP
1801 East 9th Street
Suite 1200
Cleveland, OH 44114-3108
UNITED ST A TES OF AMERICA
FIRST NAMED INVENTOR
Michael R. Kennedy
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.
KDY1-50036US1 4706
EXAMINER
BATTISTI, DEREK J
ART UNIT PAPER NUMBER
3782
NOTIFICATION DATE DELIVERY MODE
09/27/2018 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):
patdocket@pearne.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MICHAEL R. KENNEDY
Appeal 2018-004645
Application 14/085,281 1
Technology Center 3700
Before ANTON W. PETTING, MICHAEL C. ASTORINO, and
PHILIP J. HOFFMANN, Administrative Patent Judges.
ASTORINO, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), the Appellant appeals from the
Examiner's decision rejecting claims 1-3, 7-17, 19-22, 24, 26-29, 34, 35,
and 37.2 We have jurisdiction over the appeal under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.
1 According to the Appellant, "[ t ]he real party in interest is The Kennedy
Group Incorporated." Appeal Br. 2.
2 In the Related Appeals and Interferences section of the Appeal Brief, the
Appellant lists Application Serial Number and 14/667,270 and 14/085,317.
Appeal Br. 2. These related applications have been assigned appeal numbers
2018-005890 and 2018-004767, respectively, and are being decided
concurrently with the present appeal. Additionally, the present application
includes a previous appeal ( appeal number 2016-0083 77, decision mailed
January 3, 2017).
Appeal 2018-004645
Application 14/085,281
STATEMENT OF THE CASE
Claimed Subject Matter
Claims 1, 16, and 26 are the independent claims on appeal. Claims 1
and 16, reproduced below, are illustrative of the appealed subject matter.
1. A bag assembly comprising:
a shopping bag; and
a label comprising advertising indicia attached to a surface
of the bag with an adhesive,
wherein removal of said label from said surface leaves
behind no recess and substantially no adhesive or other residue
on the bag.
16. An advertising medium comprising:
a package; and
a coupon applied to the package, wherein the coupon is
removable from the package without leaving behind a recess or
substantially any residue, or substantially marring a surface of
the package.
Rejections
The grounds of rejection presented by the Examiner in the Final
Office Action are listed below.
I. Claims 1-3, 7-17, 19-22, 24, 26-29, 34, and 35 are rejected
under 35 U.S.C. § 112(a) or (pre-AIA) 35 U.S.C. § 112, first paragraph, as
failing to comply with the written description requirement.
II. Claims 1, 16, and 26 are rejected under 35 U.S.C. § 112(b) or
35 U.S.C. § 112 (pre-AIA), second paragraph, as indefinite.
III. Claims 1, 2, 9, 22, and 27-29 are rejected under (pre-AIA)
35 U.S.C. § I02(b) as anticipated by Warford (US 2008/0238083 Al, pub.
Oct. 2, 2008).
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Application 14/085,281
IV. Claims 3, 11, and 34 are rejected under (pre-AIA) 35 U.S.C.
§ I03(a) as unpatentable over Warford and Herbst et al. (US 2009/0295141
Al, pub. Dec. 3, 2009) ("Herbst").
V. Claims 7, 8, 10, 13, 14, 16, 17, 19--21, 26, and 35 are rejected
under (pre-AIA) 35 U.S.C. § I03(a) as unpatentable over Warford and
Absher (US 5,298,104, iss. Mar. 29, 1994). 3
VI. Claim 12 is rejected under (pre-AIA) 35 U.S.C. § I03(a) as
unpatentable over Warford, Herbst, and Dunsim et al. (US 4,479,838, iss.
Oct. 30, 1984) ("Dunsim").
VII. Claims 15 and 37 are rejected under (pre-AIA) 35 U.S.C.
§ I03(a) as unpatentable over Warford and Oxman (US 4,896,366, iss.
Jan. 23, 1990).
VIII. Claim 24 is rejected under (pre-AIA) 35 U.S.C. § I03(a) as
unpatentable over Warford, Absher, and Dunsim.
ANALYSIS
Rejection I. Written Description Requirement
Independent claims 1, 16, and 26, and dependent claims 2, 3, 7-15, 17, 19-
22, 24, 27-29, 34, and 35
The Examiner finds that independent claim 1 's recitation "wherein
removal of said label from said surface leaves behind no recess and
substantially no adhesive or other residue on the bag" and the similar
recitations of independent claims 16 and 26 fail to comply with the written
3 In the Answer, the Examiner explains that the Appellants are correct that
the rejection of independent claims 16 and 26 is based on Warford (alone)
rather than Warford and Absher. See Ans. 6; Appeal Br. 13.
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Application 14/085,281
description requirement. See Final Act. 2. The Examiner's position appears
to be that the Specification discloses some embodiments where adhesive
residue is left on a bag and, as such, the Specification is unclear. Id.
( quoting Spec. 7 ("In some cases, it is acceptable to leave some adhesive
residue on the bag 30.")); see Ans. 2-3. Additionally, the Examiner finds
that the Specification does not identify the material particular to the claimed
adhesive because the Specification describes the use of "any adhesive," "a
permanent adhesive," and an "ultra-removable adhesive." Final Act. 2-3
( citing Spec. 5).
The Appellant contends that the written description supports a
determination that the inventors had possession of the claimed subject
matter. See Appeal Br. 5. The Appellant points out a number of instances
where the Specification describes the claimed subject matter at issue. Id.
at4-5 (citing Spec. 4:29-5:1, 7:2-5, 9-10, 8:12-14, 22:17-20, 23, 29-31,
24:27-29). We agree with the Appellant.
Thus, we do not sustain the Examiner's rejection of claims 1-3, 7-17,
19-22, 24, 26-29, 34, and 35 under 35 U.S.C. § 112(a) or (pre-AIA) 35
U.S.C. § 112, first paragraph, as failing to comply with the written
description requirement for the reason discussed above.
Dependent claims 34 and 35
Dependent claim 34 recites "wherein following removal of said label
from said surface of said bag, said adhesive can still be used to reattach said
label." Appeal Br. 26. Dependent claim 35 includes a similar limitation. Id.
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Application 14/085,281
The Examiner finds that "removal of the label from the surface of the
bag wherein the adhesive can still be used to reattach the label was not
disclosed in the original specification." Final Act. 3; see Ans. 4.
The Appellant contends that the written description supports a
determination that the inventors had possession of the claimed subject matter
of claims 34 and 35. See Appeal Br. 6. The Appellant points out that the
written description requirement does not require verbatim support in the
Specification. Id. The Appellant contends that "[b ]ecause the adhesive on
the label could remain sticky, one of ordinary skill in the art would
understand Appellant to be in possession of a label/ coupon that could be
reattached." Id. (citing Spec. 7:5-8, 8:8-14, 29); see Reply Br. 4--5. We
agree with the Appellant.
Thus, we do not sustain the Examiner's rejection of claims 34 and 35
under 35 U.S.C. § 112(a) or (pre-AIA) 35 U.S.C. § 112, first paragraph, as
failing to comply with the written description requirement, for the reason
discussed above.
Rejection II. Indefiniteness
Independent claim 1 recite "wherein removal of said label from said
surface leaves behind no recess and substantially no adhesive or other
residue on the bag." Appeal Br. 23. Similarly, independent claim 16 recites
"wherein the coupon is removable from the package without leaving behind
a recess or substantially any residue, or substantially marring a surface of the
package." Id. at 24. Independent claim 26 includes similar limitation as
claim 1. Id. at 2 5.
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Application 14/085,281
The Examiner determines that "[t]he term 'substantially' in claims 1,
16 and 26 is a relative term which renders the claim[s] indefinite." Final
Act. 3. The Examiner's position is based on the following: the claims do
not define the term "substantially" (id.); the Specification defines that term
"substantially" as "a term of estimation" (id. at 12; Spec. 27:26); and the
Specification describes embodiments that reference multiple meanings of the
term "substantially" with regard the claimed adhesive (e.g., ultra-removable
or permanent adhesive) and does not specify a material for the adhesive (see
Final Act. 11-13; see also Ans. 2--4 ). In sum, the Examiner apparently
bases the rejection on the lack of clarity as to an amount of adhesive that
would definitively set the metes and bounds of the claim term
"substantially."
In response, the Appellants explain that the term "substantially"
means "'substantially no adhesive' is understood as a meaning that a
negligible adhesive residue is left behind, if any." Reply Br. 4. "In other
words, for practical purposes there will be none, without requiring that there
be mathematically zero adhesive. This is simple to understand, and one of
ordinarily skill in the art certainly would." Id. We agree with the Appellant.
Thus, we do not sustain the Examiner's rejection of claims 1, 16,
and 26 under 35 U.S.C. § 112(b) or 35 U.S.C. § 112 (pre-AIA), second
paragraph, as indefinite.
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Rejections III-VIII. Anticipation and Obviousness
Independent claims 1 and 26, and dependent claims 2, 3, 7,-15, 27-29, 34,
and 37
The Examiner finds that Warford's bag corresponds to the "shopping
bag," as recited in independent claim 1, because Warford's bags are capable
of being shopping bags. See Final Act. 5, 13; Ans. 5. We disagree with the
Examiner's construction of the claim term "shopping bag" and, as a
consequence, we disagree with the Examiner's finding.
Although the Specification defines the term "bag," it does not define
the more specific term "shopping bag."4 An ordinary meaning of the term
"shopping bag" is "a large paper or plastic bag with handles, for carrying
purchases," or "a paper or plastic bag supplied by a store to a customer for
carrying away purchases."5 Similar to these definitions, the Appellant points
out that the term "'shopping bag' readily delimits the particular bags
commonly used by retailers-e.g., the ubiquitous thin plastic T-shirt bags and
brown paper bags that have been understood to be 'shopping bags' for
decades." Appeal Br. 9; see also Reply Br. 6; Spec. 1.
We find that the term "shopping bag," as recited in independent
claim 1, when properly construed, does not read on Warford's baggage (e.g.,
4 The Specification describes at page 4:
[I]f the term "bag" is used herein in referring to a type of
packaging material, it should be understood that the term "bag"
can mean any type of packaging material, including bags, sacks,
boxes, envelopes, or other packaging means known to those of
skill in the art now or in the future.
5 Shopping bag Definition, COLLINSDICTIONARY.COM,
https://www.collinsdictionary.com/us/dictionary/english/shopping-bag
(American def., Retail def.) (last visited Sept. 24, 2018).
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suitcase 71 la, backpack 71 lb, purse 71 lc, etc.). Warford ,r,r 15-17, 104,
Figs. lA---C; see also Appeal Br. 9-10; Reply Br. 5---6. Thus, we do not
sustain the Examiner's rejection of independent claim 1.
Similar to claim 1, independent claim 26 recites a "shopping bag."
Appeal Br. 25. In the Final Office Action, the Examiner rejected claim 26 as
unpatentable over Warford and Absher. See Final Act. 7-8. In the Answer,
the Examiner explains that the "[ A Jppellant is correct that Warford was not
modified by Absher as it pertains to claims 16 and 26, as Warford discloses
the claimed invention on its own." Ans. 6. The Examiner also explains,
"[i]n the final rejection these claims were placed under the wrong heading as
correctly understood by [ A Jppellant, and would not change any substantive
rejection or response by [A]ppellant." Id. Based on the foregoing, we
understand that the Examiner's finding that Warford's bag corresponds to
"shopping bag," as recited in independent claim 26, because Warford's bag
is capable of being a shopping bag. As discussed above, the claim term
"shopping bag," when properly construed, does not read on Warford's
baggage. Thus, we do not sustain the Examiner's rejection of independent
claim 26.
As best as we can understand the Examiner's rejections of claims 2, 3,
7-14, 27-29, and 34, we fail to see how the Examiner provides any finding
and/or reasoning, which are adequately supported, to cure the deficiency of
the Examiner's rejection of independent claims 1 and 26. Thus, we do not
sustain the Examiner's rejections of claims 2, 3, 7-14, 27-29, and 34.
It is notable that dependent claims 15 and 37 recite, "wherein the bag
is a plastic t-shirt bag." Appeal Br. 24, 26. The Appellant argues that the
Examiner's rejection of these claims fails to adequately explain why a
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skilled artisan modify Warford' s bag to be a T-shirt bag, as taught by
Oxman. Id. at 19-21; Reply Br. 10-11. The Appellant's argument is
persuasive. In this case, the Examiner's rejection appears to modify
Warford's baggage to be T-shirt bag, as taught by Oxman, without an
adequate explanation why one of ordinary skill in the art would do so. In the
Final Action, the Examiner's determines, "it would have been obvious for
the label of Warford to go on at-shirt bag, as disclosed by Oxman, in order
to label and indentify [sic identify] something about the bag." Final Act. 10.
In the Answer, the Examiner suggests that the bags as taught by Warford
and Oxman may be plastic, and reusing bags cuts down on waste. The
foregoing, however, fails to indicate why a skilled artisan would modify
Warford's baggage to beat-shirt bag, as taught by Oxman. Appeal Br. 20;
Reply Br. 11. Thus, we do not sustain the Examiner's rejection of
independent claim 15 and 37.
Independent claim 16, and dependent claims 17, 19-22, 24, and 35
Independent claim 16 recites, "[a]n advertising medium," which
includes "a coupon." Appeal Br. 25.
The Appellant argues that the Examiner errs in finding that Warford's
label, which may have product branding information (Ans. 6 (citing Warford
,r 45), corresponds to the claimed "coupon." See Appeal Br. 11-13; Reply
Br. 7-9. The Appellant's argument is not persuasive.
We note that the Specification describes, "[t]he terms coupon and
label are used throughout this application, but should be understood to mean
any type of advertising media or product, or communication member,
including labels, sample products, booklets, brochures, magnets, and the
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Application 14/085,281
like, as known by those of skill in the art." Spec. 4. Here, the Specification
equates the terms "coupon" and "label." Additionally, the Specification
describes that the indicia or media particular to a coupon or label may be
"[a]ny type of media may be present on the labels or coupons and need not
necessarily be advertising related in the regular sense." Id. at 22.
In view of the foregoing descriptions in the Specification, we agree
with the Examiner that Warford's label, which may include "product
branding information" and "logos" (Warford ,r 45), corresponds to the
claimed "coupon." See Ans. 6. Contra Reply Br. 8 ("Warford does mention
a 'product branding campaign' label as the [E]xaminer noted. However, this
is not a coupon.").
We have considered the remaining arguments advanced by the
Appellant in the Appeal Brief and the Reply Brief and have determined that
they are unpersuasive of Examiner error. Thus, we sustain the Examiner's
rejection of independent claim 16.
As for claims 17, 19-22, and 35, we do not understand the basis for
the Examiner's rejections of these claims, which depend directly or
indirectly from claim 16. Appeal Br. 24--26. The Examiner rejects many of
claims 17, 19-22, and 35, explicitly, by modifying Warford's teachings;
"i.e., Warford, as modified above." Final Act. 8-9. As best as we can
determine, "as modified above" refers to one or more of the modifications
associated with the Examiner's rejections of one or more of claims 7, 8, 10,
13, 16, 26, 17, 19, and 20. See Final Act. 7-9. Additionally, the Examiner
changes the basis for the rejection of independent claim 16 (Ans. 6), but fails
to clearly express how the rejections of claims 17, 19-22, and 35 have
changed. We also note that the Appellant has expressed difficultly in
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understanding the Examiner's rejection for some of claims 17, 19--22, 24,
and 35. See, e.g., Reply Br. 10 n.2. In this case, we decline to speculate on
the basis for Examiner's rejections of claims 17, 19-22, and 35. Thus, we
do not sustain the Examiner's rejections of claims 17, 19-22, and 35.
DECISION
We AFFIRM the Examiner's decision rejecting claim 16.
We REVERSE the Examiner's decision rejecting claims 1-3, 7-15,
17, 19--22, 24, 26-29, 34, 35, and 37.
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)(l )(iv).
AFFIRMED-IN-PART
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