Appeal No. 1998-1342
Application 08/460,204
A conclusion of obviousness must be based upon the subject matter of a claim
as a whole. 35 U.S.C. § 103(a). Where as here, the examiner’s conclusion of
obviousness is premised upon less than the subject matter as a whole of a given claim,
it is legally flawed and cannot be sustained.
The examiner’s rejection of claims 12 and 23 through 25 is reversed.
Claims 20 through 22
Claim 20 differs from the claims discussed above in that it does not require either
a single coating of release material and adhesive nor does it require a matrix material
and plurality of paper ties connecting each label to the matrix material. Rather, claim 20
reads on the assembly of linerless labels illustrated in Figure 1 of Bane with the single
exception that the Bane labels are quadrate in shape while claim 20 requires that the
labels be “substantially circular.”
We considered a similar issue in Appeal No. 1996-1211 which involved parent
application 08/173,083. In considering the patentability of method claims directed to
forming an assembly of linerless labels such as those now claimed in claim 20 on the
basis of Bane and Lane, we stated (slip opinion, paragraph bridging pages 5 -6):
Lane describes and illustrates precut stacked or shingled labels which
may be quadrate (Figs. 4 and 5) or non-quadrate (Figs. 6 and 7). Lane provides
evidence of a fact of which most would readily admit: prior to the present
invention, labels came in many sizes and shapes, including quadrate and non-
quadrate. The disclosure of Bane places no limit on the shape of the labels
which can be produced by using the teachings of that reference. We view the
illustration of quadrate labels in the figures of Bane as exemplary only and not
limiting in any sense. The precise shape of a label depends upon many factors,
both functional and aesthetic. In view of the evidence provided by Lane, we
agree with the examiner that one of ordinary skill in that art would have found it
obvious to use the method of Bane to produce non-quadrate labels.
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