COMMISSIONER'S DECISION
OBVIOUSNESS: Roll Label
The invention is for a roll of labels which are precut and preprinted
so they can be readily affixed to plastic or glass containers. This
application is a division of the labelling machine used therewith. It
was decided sufficient ingenuity was exhibited to allow the claims.
Rejection: Reversed
The Final Rejection of patent application 094,016, (Class 40/23) was re-
(erred to the Patent Appeal Board for consideration. There was a hearing
before the Board on February 18, 1976, at which Mr. O'Gorman made oral
submissions on behalf of the applicant. The inventor is Herbert LaMers,
and the title given to the application is "Labelling Apparatus."
The invention claimed in this application is a roll of labels adapted to
be used in the labelling machine protected by Canadian patent 860,753,
January 12, 1971. The application is a divisiea of the one which matured
into that patent, and the same inventor is common to both. During the
prosecution of the patent, the examiner held that the label roll was for
a different invention than the labelling machine, and applied Section 38
(though the report incorrectly referred to Section 36). The divisional
application resulted from that objection.
The labels and equipment are used in high speed packaging of a variety of
goods, such as plastic or glass containers for detergents, beverages and
foodstuffs. The labels are preprinted on the roll, and precut so that they
may be readily punched out from it when they are affixed to the containers.
Both edges of the roll contain sprocket holes used to feed the roll forward.
In the Final Action the examiner refused the application for lack of
patentable subject matter in view of certain prior art references, and
common general knowledge. The references cited are as follows:
Canadian Patent 414,033 July 20, 1943 Sherman
694,818 Sept 22, 1964 Mitzer
United States 2,259,358 Oct. 14, 1941 Templeton
French Patent 1,095,874 July 7, 1955 Burgner
In that action the examiner made the following objections:
Applicant by his amendment to the claims, which are directed to
a roll of paper, now includes therein apparatus limitations and
operational steps carried out by the apparatus. These limitations
are admitted by applicant's argument "the claimed subject matter
is defined and limited in part by the apparatus with which the
subject matter is used". However it is held that claims directed
to a supply of material such as a roll or strip of paper cannot
rely for novelty, and therefore invention, either on structural
features of a particular apparatus in which it is proposed to
use the paper or on details of some operating step carried out by
such an apparatus. To be patentable, such claims must not only
define structural features by which the strip or roll distinguishes
from all other previously known strips or rolls but such novel
structural features must be unobvious and ingenious to an extent
meriting the grant of monopoly privileges. Neither the supplying
of a precut strip to suit a modified cutterless labeler, nor
the common knowledge roll form of the supply can be seen to be
of any patentable significance. Claims 1 and 4 to 7 therefore stand
rejected. Furthermore claims 2 and 3 specifying U-shaped sprocket
holes and captive tabs add nothing of an inventive nature to
claim 1 and are also rejected.
It is maintained that applicant, by removing the cutting stage
from the sequential multi-operation machine of Sherman creates a
problem in that his modified device will not function with the uncut
supply strip of Sherman. This is the only "problem" solved by the
precut web defined. It is further maintained that the concept of
incorporating pre-cut in a Sherman type supply strip to suit a Sherman
type of device which has been modified by eliminating the cutter
therefrom lacks inventive ingenuity over Sherman. Whether the cutting
is carried out on the labeler as in Sherman or geographically separate
from the labeler as in the instant disclosure is an obvious optional
matter of choice. However having made the choice, it is not only
obvious but essential for the operation of the modified labeler that
the supply strip be precut. In these circumstances, where nothing unobvious
results, the precut supply strip is not per se unobvious or inventive.
Considering the structural limitations recited in the claims, as
opposed to the apparatus and operational limitations mentioned above,
the only features defined in claims 1 and 4 to 7 which are not taught
by Sherman is the end to end extent of the cuts and the "roll" form
of the supply. As stated above, the mere supplying of a pre-
cut strip to suit the modified cutterless labeler is of no
patentable merit. Furthermore the roll form of a label supply
is common general knowledge and its recitation adds nothing of
an inventive nature to these claims.
It is obvious that the notched knife of the cutting die 28 as
shown in Figure 6 of Sherman will produce the well known non-
continuous outline cut exactly as defined in the claims. Thus,
apart from the end to end extent of the cut portion and the roll
form of the strip, the Sherman patent shows all of the structural
details defined in claims 1, 4, 5, 6 and 7. The applicant in the
original disclosure teaches that "while a piston operated plunger
can be used...a variety of other types of apparatus can be used...
or a blast of air can be used to detach the label from the
surrounding web". Applicant's strip therefore is not designed
exclusively to suit a plunger as may be inferred from the wording
of claims 1 and 7. Further, the original disclosure merely
states that the strip is of plain paper and that the ends of the
cuts are spaced from each other to form brides 122 each of a
width W. There is no teaching either that the paper has one of its
surfaces especially "adapted for receiving adhesive" or that the
widths of the "bridging means" are predetermined or pre-selected
in any way to suit any special type of apparatus, as implied by
claims 1 and 7. These features therefore cannot be relied upon, either
individually or in conjunction with other features, to define
invention.
Neither the supply of a precut strip to suit a modified cutterless
labeler as noted above nor the common knowledge roll form of the
supply can be seen to be of any patentable significance.
In the response dated February 2, 1975 to the Final Action the applicant
stated (in part):
In claim 1, applicant does not specifically rely on the features
of the apparatus with which the label supply is used or upon
the operation of that apparatus. Quite to the contrary, the claim
is drawn to a label supply and to a specific bridging means which
holds the label within the web remnant. Those bridging means are
simply defined by reference to the resilient plunger of the apparatus
in which the label supply is intended for use, whether or not such a
resilient plunger is actually used. Thus, the claim does not include
features of the apparatus with which the web is used, as positive
elements but rather only defines the web in terms of the apparatus.
Applicant believes that this format is clearly proper.
Indeed, it goes directly to the heart of the invention which lies in
the particular specification of the label bridges which are defined
in relation to the nature of the article-applying plunger. In this
regard, it is critically important, not that a resilient plunger can
be used, but that the bridges have a certain width which is
specifically defined as that width which permits label detachment by
a resilient plunger. Reference to a resilient plunger is not
immaterial or inconsequential, but rather provides a basis for a
specific description of a positive element of the claim. The phrase
specifically defines the width of the label supporting bridges
in terms which go to the heart of the invention. The width of
the bridges is exactly that which will permit the labels to be
removed by a resilient plunger.
This is a case where the invention, to a large extent, lies in
defining the parameters of a structural component of the claimed
combination in terms of what it is capable of doing. The term
so defined is structural within these bounds and the aforementioned
phrase is believed to be of great patentable significance, in
combination with the other features of the claim. To this extent,
the phrase is not considered to be any different than the normally
used and patentably descriptive terms, such as "rotatably" or
"slidably" mounted, fox example.
and
A number of advantages of the specifically claimed label supply
have already been disclosed to the Patent Office. To reiterate,
however, it should be pointed out that insofar as die-cut labels
are concerned, the claimed subject matter supplies the possibility
of unlimited label shapes, an advantage not heretofore known with
respect to label supplies. A further advantage is that the claimed
label web permits the use of adhesive over the complete surface
of the labels. Since the prior webs were required to be sheared or
cut off by some mechanism at the removal station, adhesive out to
the extreme label edges was not practical due to the fact that it
would tend to bind or seize the cutting apparatus. Since no
cutting apparatus is required with applicant's label, due to the
concept of providing the bridges as claimed, overall adhesive applica-
tion to the extreme label edges can be practically utilized. There
are no cutting dies to foul.
Another important advantage of the claimed label supply is that it
Makes possible the elimination of any cutting equipment required in
the labeling operation itself. Such cutting equipment not only
increased the cost of labeling apparatus, but also required maintenance
and trained operators for the cutting operation. Since the label
supply as claimed is cut on a different apparatus, the label webs can
be stock piled and malfunctions in the cutting devices do not require
shutdown of the complete labeling operation. Certainly, these
are advantages of the complete labeling system, but they all stem
from one basic theory: the structure of the web.
and
The applicant submits that none of the prior art discloses or
suggest the need for a label supply structure as set forth in claim 1
or claim 7 and believes that the claimed subject matter cannot be
considered obvious, where the concept of both removing a label from
the web and applying it to an object with the same resilient plunger,
was unknow until the applicant's own disclosure. In the prior art,
there is no reason for, or suggestion of a label web in which the
labels are held by bridging means of a thickness selected to permit
removal of the labels from the web by a resilient plunger without
indiscriminate tearing of the label. The applicant therefore believes
that the Examiner's suggestion that the claimed structure is obvious
in view of Sherman, or any of the other references, can only be made
with hindsight, and with the benefit of the applicant's own disclosure.
The Sherman Patent relates to an envelope and package addressing apparatus
which applies address labels to envelopes and small packages in a continu-
ing succession. A folded uncut web (or length of paper) with address labels
printed thereon is fed to a reciprocating cutter to score the label area of
the web. The next stage is a heating station where the legend bearing
label is stuck to the envelope, which moves with the web to the punch stage.
At this location a punch press is used to detach the label with its attached
envelope from the web. Claim 1 of this patent reads:
In a label applying apparatus, strip feeding means for ad-
vancing a legend bearing strip through successive step-by-step
movements, a unit supply magazine and a unit depository over
which the strip is advanced, a scoring die past which the strip is
advanced for outlining by weakened division lines succeeding
legend bearing portions of the strip to be detached therefrom,
an applicator in registry with the unit supply magazine operative
to adhesively attach an outlined legend bearing portion of the
strip to the uppermost unit in the magazine, and a detaching device in
registry with the unit depository and into registry with which the
attached legend bearing portion of the strip and the unit to which
it is attached is advanced by the advancement of the strip and
operative to detach from the supply strip the legend bearing portion
thereof attached to the unit.
The Metzner, Templeton and Burgmer patents disclose web feeding sprocket holes
which are arranged in longitudinal series at the longitudinal margins of
the web. Metzner and Burgmer have their sprocket holes formed of U-shaped
cuts in the web which form tabs or flaps within the cuts. These flaps are
pushed aside when engaged by the sprocket wheel but remain attached to the
web. Similarly Templeton uses a T-shaped cut to form his sprocket hole. Each
of these citations show a "captive tab" arrangement to overcome the problem
of loose paper confetti being displaced from the sprocket holes and clogging
up the equipment.
As mentioned previously, the applicant's label supply reel consists of a web with
precut labels therein, and spaced sprocket holes adjacent to the longitudinal
margins of the roll. The problem of clogging with confetti from the sprocket
holes is eliminated by using tabs or "U"-shaped cuts to form the holes.
Claim 1 reads:
A rolled, pre-printed, precut label supply including an elongated
web supporting labels therein, for use in apparatus adapted to
apply labels to products, said apparatus including means for estab-
lishing a tacky surface to one side of said labels, a reciprocating
resilient plunger means for engaging labels, for passing through
said web and detaching labels therefrom, for carrying labels toward
and applying labels to products, and thereafter withdrawing through
a web remnant, said resilient plunger means having a forward label
engaging face with a predetermined shape, and sprocket means for
transporting said web through said label applying apparatus, said
pre-printed, precut label supply comprising: an elongated single-ply
web in the form of a roll including a plurality of labels and a web
remnant to which said labels are attached, said labels being located
throughout said remnant from one end to the other of said web, said
labels being partially cut from said web remnant by a plurality of
cuts extending completely through said web, the ends of said cuts being spaced
apart to leave bridging means between said labels and said web remnant
thereby to releasably hold said labels in said remnant, said bridging
means having predetermined widths selected to permit the detachment of
said labels by said resilient plunger, transversely to said web remnant,
without indiscriminate tearing of the label, said labels having two
sides, each free from adhesive, one of which sides is adapted for re-
ceiving adhesive and another side which bears printed indicia, and
sprocket holes in said web remnant and extending therealong, said
sprocket holes disposed in said remnant to permit accurate registration
of said remnant and said labels with respect to said resilient plunger.
The question to be decided is whether the application is directed to a patent-
able advance in the art.
This application is a divisional of Patent No. 860,753, which issued with 19
claims for the apparatus to apply the labels. Operation of the apparatus re-
quires some form of label supply arrangement, and that is the basis for this
application.
In the Final Action the examiner maintained that by removing the cutting stage
from Sherman's device, the applicant in fact "creates a problem in that his
modified device will not function with the uncut strip of Sherman." Sherman
uses a folded web supply which has legends imprinted thereon. At the first
stage of his operation Sherman uses a reciprocating cutter to score the
legend-bearing area of the web. Next the web advances to the heating station
where the legend is attached to the envelope and then the web proceeds with
the envelope adhered to the label to the presser head which separates the
legend area from the web. Sherman was concerned with labelling envelopes or
small packages in which the web advances the labelled article through one
stage of machine operation. In order to perform this function Sherman
fastens the article to the web, and advances it to the punch station. In
our view there is no indication that Sherman envisaged the use of prepunched
supply reel or that he would apply the label to an article without moving
the article via the web to the next stage of operation.
At the hearing it was pointed out by the examining staff that in figure 5
of Sherman the label supply arrangement shown is nearly identical to the appli-
cant's. Figure 5 of Sherman is a perspective view of the web as it moves
through the apparatus. This figure shows the web starting with a legend
imprinted thereon (3), succeeded by a scored area (36) depicting what occurs
at the cutting station, and then followed by a representation of a detached
label adhered to the envelope below the advancing web (at 35). In looking for
similarity between Figure S of Sherman(which shows only one scored label)
and this application, we note that figure 5 of Sherman does not show a "rolled
precut label supply" such as that contemplated by the applicant. In Sherman
there is only one precut label at a time, and that immediately before it
is affixed to the envelope.
In developing his invention the applicant devised an apparatus for applying
labels, and in conjunction therewith a label supply. The apparatus required
a special label supply arrangement and the applicant developed a prepunched
label reel for that purpose. His arrangement did not have the web advance
with an article attached to it through one stage of the operation, such as occurs in
Sherman. Consequently he used a prepunched label supply wherein the prepunched
area represents a relatively large portion of the web, which means that the
web would not be strong enough to carry any article attached to it. Therefore
in order to fulfil his concept the applicant developed a novel prepunched reel label
supply to coact with his label applying apparatus.
The Final Action also made reference to Canadian Patents Nos. 761,791 to
Huffmann, and 728,557 to Sonenberger, which are of record in the prosecution
of this application. Huffmann describes data card production from a supply
web of continuous length. This web moves rapidly through a punching and
slitting machine using rotary-punch rolls. Sonberger relates to tabulating
cards which are adapted to be processed through high speed printers. Fabric-
ation of the card is from a pair of rolled webs which are unreeled and
fastened to each other to form layers of the tabulating card. In our view
neither of these references display a prepunched reel label supply as en-
visaged by the applicant.
Affidavits testifying to the commercial success of the invention were sub-
mitted by the applicant. They also purport to demonstrate that people skilled
in this art consider the invention to be unobvious. In reviewing these
affidavits we note that some of their statements relate to the labeling
system of La Mers, and we do not doubt but that the inventive concept as
a whole is patentable. It resulted in an important advance in the art,
sufficient to justify the grant of a patent to the labelling apparatus. We
observe that relevant jurisprudence indicates commercial success does not
necessarily demonstrate the presence of invention, but it may raise some
presumption of invention when a long-unsatisfied demand is met.
At the hearing we were given two further affidavits providing evidence of
some significance which was not available to the examiner when he made his
rejection. In one, Mr. Thomas Keuper, a labelling expert, in addition to
testifying to the commercial success of the LaMers invention, declares that
the label supply itself is an important factor in permitting accurate place-
ment of the labels on containers in high speed operations because of the way
they are supported by the web remnants. He states: "Highly accurate label
placement is insured by the label supply itself." Apparently rejections for
faulty labelling were reduced substantially. Mr. Keuper points too to
certain advantages in applying adhesive to this type of label. We quote:
"Overall adhesive application has not proved successful in other elongated webs of
indeterminate length, from which labels are required to be cut on the
labeling device after adhesive application to the label, since the adhesive on
the edge of the label area tends to seize the cutting die, and to form a
"stringy" glue mess in the apparatus." This serves to distinguish this
invention from Sherman's.
In his affidavit, Mr. Arthur R. Johnson, another expert, testifies that
the LaMers invention has improved the application of the adhesive, which
he attributes in part to the construction of the label web. He refers to
the fact that previously "it was always believed necessary to remove die-cut
labels from webs by cutting within the labeler, and it was not known that
labels could be removed in untorn condition without such cutting."
In assessing an invention it is important to avoid ex post facto analysis.
This has been stressed repeatedly, most recently by the Federal Court of
Canada in its decision of November 5, 1975, as yet unreported, in Pre-formed
Line Products and Slates Steel v. Payer and Co. In it we find:
As to the inventiveness, it is at times difficult to distinguish
between a true inventive step and a mere workshop improvement of
an invention. To constitute an invention, there must be a sub-
stantial step forward. On the other hand, great care must be taken
in examining an invention ex post facto to determine when there is
that element of inventiveness required, for a very great number of
extremely useful and truly ingenious inventions often appear to be
perfectly obvious and devoid of originality when examined after
they have been invented. Refer Appliance Service Co. Ltd. v. Sarco
Canada Ltd. (14 C. P. R. 2d, 59 at 69) , Farbwerke Hoechst AG.,
vormals Meister Lucius & Bruning v. Halocarbon (Ontario) Ltd. et al
(15 C.P.R. 2d, 105 at 124 & 125) where the authorities cited in
The King v. Uhlemann Optical Co., (1950 )Ex.C.R. 142 at 157 affirmed 1952
S.C.R. 143) are quoted.
The simplicity of a device is no proof that it was obvious and that
inventive ingenuity was not required to produce it and, if small
differences create large results, then the scintilla of inventiveness
required by law is in fact present. Refer O'Cedar of Canada Limited v.
Mallory Hardware Products Limited (1956 Ex. C.R. 299 at 317 and 318).
In this case we do not doubt but that from the art relied upon by the
examiner, there would have been little ingenuity in developing the label roll
claimed here once the new labelling system as a whole was known, and the need
for that roll appreciated. However the point is that the labelling system
was not known prior to the LaMers invention. The special label roll required
for the system is an integral part of the whole inventive concept, and
derives the necessary attribute of inventive ingenuity from that relationship.
To combine the applicant's own inventive concept with pieces of prior art to
hold the invention obvious is, we think, to practice the type of ex post facto
analysis which has received the disapprobation of the courts. It is easy
after a discovery to say that it is obvious. In many cases the merit in an
invention lies in recognizing that a problem exists, and if the merit of a
case lies in the concept itself, it is not diminished by the fact that the
practical application of the idea, when once it is conceived, offers little
difficulty. Reliable Plastics v. Louis Marx et al, 17 F.P.C. 184 at 198.)
Having considered these matters and the advantages flowing from this invention,
we are satisfied that the Commissioner ought not to refuse a patent, and that
the claims define a patentable invention.
In the Final Action, the examiner objected to inclusion in the claims of appara-
tus limitations. We agree with him that the apparatus limitations appearing
in claim 1 at lines 3 to 10 are immaterial to what is being claimed. The claim
is for a label supply and in this instance we do not see how a recitation of
the parts of the apparatus in which it is used help define the label supply.
In fact we believe they run counter to the requirements of Section 36 of the
Patent Act by making less distant and explicit what is the invention to be
protected. We understand from Mr. O'Gorman's remarks at the hearing that he
had no objection to delete that portion of claim 1 reading: "said apparatus
including means for ..... printed, precut label supply" inclusive, and we
believe this should be done in the interest of clarifying the claim. The
title, too, which is that used in the patent, is inappropriate for what is
claimed in this application.
Another objection made by the examiner at the hearing was that the claims
contain features not in the disclosure as originally filed. He referred, for
example, to such terms as "bridges," "resiliency of plunger" and paper
"adapted for receiving adhesive." These terms were accepted, however, on
April 4, 1974, when they were submitted, and entered into the application. One
of the most significant in serving to distinguish this invention - resiliency
of plunger - does have support in the original disclosure at Figure S, and
the bottom of page 8 (formerly page 9). The latter states: "The front plate
99 is covered by a layer 105 of elastomeric material such as soft rubber." Considering
that the labels are to be applied to curved surfaces, and to glass bottles,
we think it reasonable to infer that those reading this disclosure when it
was filed would recognize that various types of resilient materials coull
be used.
The Board therefore recommends that the rejection for obviousness be with-
drawn. If the claims are amended as indicated above, the application should
be allowed to proceed.
Gordon Asher
Chairman
Patent Appeal Board
I concur with the findings of the Patent Appeal Board. The rejection of
the claims for obviousness is withdrawn. The application is returned to the
examiner to require amendments as indicated above.
J.H.A. Gari‚py
Commissioner of Patents
Dated at Hull, Quebec
this 29th day of March, 1976
Agent for Applicant
Smart & Biggar
70 Gloucester St.
Ottawa, Ontario