COMMISSIONER'S DECISION
Obviousness: Postage Meter Tape
The tape comprises an elongated print receptive tape strip transversely
scored and releasably attached by pressure sensitive adhesive to a carrier
band. The carrier band is wider than the strip. Spracket engaging drive
holes are provided in the margin of the band at spaced intervals and
coincident with the score lines. The prior art did not teach the subject
matter of this application, nor is it obvious from the art. An amended
claim was suggested to the applicant which would be acceptable.
Final Action: Reversed
***********************
This decision deals with a request for review by the Commissioner of
Patents of the Examiner's Final Action dated June 24, 1976, on appli-
cation 169,737 (Class 219-3), and is entitled "Postage Tape and Carrier
Strip with Marginal Registration Perforations." The Patent Appeal Board
conducted a Hearing on October 19, 1977, at which Mr. N. Hewitt repre-
sented the applicant.
The application is directed to a postage tape strip or hostage meter tape.
The tape comprises an elongated print receptive tape strip releasably
attached by pressure sensitive adhesive to a carrier band wider than the
print receptive tape strip so as to leave a margin of the band exposed.
The tape strip is transversely scored by weakened score lines. Sprocket
engaging drive holes are also provided in the margin at spaced intervals
and coincident faith the score lines. The arrangement is illustrated below
by Figure 1 of the drawings.
(See formula 1)
In the Final Action the examiner refused Claim 1 (the only claim) in view
of the following United States Patent:
3,501,365 Mar. 17, 1970 Marshall
Marshall discloses 3 pressure sensitive label strip mounted on a backing
strip in synchronous relation to feed apertures 30a on said backing strip.
Means (16) are provided for printing on the label strip. A pinned drive
roller (26) operates the tape. That invention is illustrated by the follow-
ing drawings, Figures 1 and 3, of that Patent:
<IMGS>
Claim 1 of that patent reads:
The combination of label material and supporting material disposed
in juxtaposed relation and a layer of adhesive material therebetween
releasably securing said label material and said supporting material
one to the other, a plurality of cut means each forming a line of
severance only through said supporting material, each of said lines
of severence constituting the side walls of a feed hole disposed
within the peripheral limits of said associated label material in
such a way that some of said supporting material forms an internal
portion lying within each of said lines of severance, said side walls
defined by said lines of severance constituting a defined feed sur-
face permitting the advancing of said label material and said sup-
porting material.
In the Final Action the examiner presented his position (in part) as follows:
...
The features of claim 1 not disclosed by the cited reference are:
(a) the production of a postage stamp in lieu of a label, and
(b) the alignment of the lines of weakness with the feed apertures.
The first difference is clearly obvious to implement by those skilled
in the art as they need only change the printing plates of Marshalls
device. The second difference (b) is not of significance to the
operation of the applicants device as synchronization can be achieved
just as simply without this restriction. In some cases, where both
carrier strip and carried strip are simultaneously detachable, this
feature assists in dispensation. With the applicants' system,
however, no advantage is gained by this co-incidence and, in fact, a
tiny unresolved problem is presented to readers of the application
with respect to scratching of fingers as at 16(a) upon sharp edges of
a folded aperture in the carrier strip.
BRIEF REBUTTAL OF APPLICANTS' ARGUMENTS
(1) Features not shown in Marshall or Modifications thereover required
to produce Applicants Device
The applicant cites several features of his tape and states that
Marshall does not show them. He then speculates as to how one skilled
in the art might shift the Marshall feature to produce an approxima-
tion to this system.
The point is that one need not start at the "Marshall composite tape"
to produce this approximation. One may more easily start, as Marshall
did, at the prior art state described by Marshall. When this is done,
one sees that the only significant difference between applicants' tape
and the prior art composite tape lies in the alignment of the feed
apertures with "lines-of-perforation".
(2) SYNCHRONIZATION Achieved by Aligned Apertures And Perforation
Lines
As pointed out to the Applicants' Agent at the interview with the
Examiner the detailed or specific type of alignment claimed by the
Applicant is not required to effect synchronization. One merely
requires feed holes of constant pitch and tape strip cut or perfor-
ated at a multiple of this pitch. Final adjustments are then effected
in the relative mounting of the printer, feed roll and, if required,
tear off plate. These adjustments are required for both types of
alignment so no effective result re "synchronization" may be claimed
by the applicant.
...
(5) Unexpected Result - Other Evidence of Invention
Where there is no professed "unexpected result" one looks elsewhere
for inventive features. An advance in the art is known to be one
such feature. The applicants' particular solution to his problem
wherein he unnecessarily uses a concatenated tape strip requiring
a tear-off knife plate and/or separator bar whereupon sharp edges are
depicted as being presented to an operator is not an advance in the
art. In fact one advantage shown by the prior art, of using a "carrier
tape" has been missed. As shown clearly by Marshall in 1970 (six years
ago) with such a composite strip no concatenation or "tear-off" facil-
ities are required. One simply replaces the perforating die with a
knife-type die.
Sometimes a long-felt-want or evidence of commercial success are
indicative of invention. The evidence presented by the applicant
does not support these as inventive features. Stamps that may be
easily and/or accidentally stripped from their packages preclude
any commercial success. The desires of "stamp-collectors", on
the other wand cannot take priority over the satisfied every day
public postage stamp user.
...
In response to the Final Action the application amended the claim and had
this to say (in part) as follows:
...
In applying the reference, the Examiner states that Marshall discloses
a pressure sensitive label strip mounted on a backing strip in syn-
chronious relation to feed apertures 30a on the backing strip and
means are provided for printing on to or otherwise working the label
strip. The Examiner refers to column 2, lines 3 to 5 which he submits
disclose the initial use of a label strip which may be cut to various
specifications and the Examiner also refers to column 2, lines 62 to
64 for discussing the use of a wide backing strip to facilitate the
use of a side thereof by a pinned drive roller operating on holes
punches therein. The Examiner takes the position that over this
alleged disclosure the differences defined in the claim are obvious
to those skilled in the art. Applicants submit that on a general
basis, Marshall fails to disclose as a finished product, an elongated
print receiving strip releasably carried by a backing strip and an inter-
posed layer of pressure sensitive adhesive. In general, the passages
to which the Examiner refers fail as an effective disclosure. In par-
ticular, the general inference of these disclosures of Marshall is
that many possible approaches to this problem have been made such as
those discussed in columns 1 and 2 as prior art and they are not desir-
able solutions from a practical and economical point of view. In
particular, Marshall aims at a deliberate spacing between each label
and thus the problem mentioned by the applicants in their previous argu-
ments, namely separating the pressure sensitive adhesive backed strip
at the score line is actually avoided in Marshall. However, the method
set forth by Marshall which avoids the separation of the pressure sen-
sitive adhesive backed strip at the score line involves cutting and
discard ing of parts of the strip and in practice, the disadvantage of
the wider backing strip does not amount to anything substantial when it
is realized that the extra backing strip so involved will compensate for
the complicated cutting away and discarding of the label material as in
Marshall. Thus, in particular, Marshall does not disclose a label strip
and it is submitted that the Examiner's statement as quoted above that
Marshall discloses a pressure sensitive label strip either in discussing
his invention or discussing the prior art is erroneous....
...
Applicants disagree with the Examiner's statement in sub-paragraph 3.
A tape composite is formed initially only of two integral strips,
namely a label stock strip and a strip of release material with a suit-
able adhesive therebetween. Further, to be useful in the prior art and
as acknowledged by Marshall, and in Marshall's invention, it is necessary
to separate the label stock strip into separate labels by the inconven-
ient and tedious method of cutting away waste material between the
labels. Thus, the useful tape composite of Marshall does not comprise
a label strip. Applicants totally disagree with the Examiner's statement
in sub-paragraph 4. There is no disclosure in Marshall of lines of
weakness. There is only disclosure of complete separation of the labels
both in Marshall's discussion of the prior art and his own invention. The
parts referred to by the Examiner to support his position clearly
support the opposite, namely the applicants' assertion as just set forth.
We have considered with care the many, varied and lengthy arguments of the
applicant and the examiner; the arguments appear however, to overshadow the
differences of the alleged invention over the cited art. The issue is
whether or not the applicant has made a patentable advance in the art.
We would firstly point out that we agree with the applicant when he states
that, "the roller 31 which cooperates with the holes 15 in the edge portion
of the composite tape of the present application is not a drive roller. The
drive roller is in fact the driven reel 22 which pulls the backing tape
continuously ...." There was some confusion on this in the Final Action.
At the Hearing Mr. Hewitt made a noble effort to maintain that he is concerned
with "a different field of technology" than that of Marshall, but it is clear
that both are concerned with problems in the dispensing field. The applicant
is interested in dispensing a postage tape strip, and Marshall in dispensing
labels. The arguments appear, in our view, to be weak.
We turn now to a consideration of the application and the amended claim. That
claim reads as follows:
A postage meter composite tape comprising an elongate print receptive
tape strip releasably attached by pressure sensitive adhesive to a
carrier band, said strip being transversely scored by weakening score
lines at intervals equally spaced along the strip to define between
adjacent score lines segments defining print receptive areas to be
torn-off successively in turn after being printed upon at the printing
station of the meter to yield pressure sensitive adhesively backed
postage stamps, said band being wider than said strip to leave an
exposed margin of the band at one edge of the tape for accommodating
sprocket engaging drive holes longitudinally equally spaced at inter-
vals coincident with the score lines which holes are engageable by a
sprocket driven by said holes for effecting a printing operation on
the free end tape strip segment at the printing station and are so
spaced that at each advance of the composite tape the free end seg-
ments of the strip then at the printing station is advanced forwardly
beyond the bending station while still remaining attached to the strip
to be torn-off precisely at the score line rather than at the printing
station.
As mentioned above Marshall discloses a pressure sensitive label strip mounted
on a backing strip. Means (16) are provided for printing onto or otherwise
working the label strip. The initial use of the label strip is to be cut to
various specifications. A pinned drive roller operates on holes punched in
a backing stri of tape.
One difference over the cited art is in the drive means. The drive means is
in part the driven reel 22 which pulls the backing tape continuously through
the printing station 20 from the supply roll 11 and the drum 31 (see Figure 1,
supra). The drive means in the reference is performed by sprocket 26. The
reference does not teach the alignment of the lines of weakness with sprocket
engaging drive holes. A sprocket is driven by the sprocket engaging drive
holes purely as a synchronization device. The hinged disengagement from the
backing strip is also different from th a cited art. It also appears that
Marshall aims at a deliberate spacing betheen his labels, whereas the appli-
cant is concerned with an elongated print receiving strip releasably carried
by a backing strip with an interposed layer of pressure sensitive adhesive.
In other words,a feature of the present arrangement is that a composite strip
comprises an elongate print receptive tape having weakened score lines at
equal intervals, spaced longitudinally along the strip to define print re-
ceptive areas, which are torn-off after being printed upon at the printing
station of the meter. Marshall was also not concerned with detaching along
perforated lines.
The gap between the cited art and the present application when taken bit by
bit may appear indeed to be minimal. We must however, consider the combination
as a whole and its effect. The examiner stated at the Hearing that given the
problem the solution was obvious. We must remember that part of the invention
in any situation like this may be in recognizing that there is a problem and
in the idea or concept of solving that problem.
In view of the above considerations we are unwilling to suggest to the
Commissioner that the applicant has not made a patentable advance in the art.
We are not satisfied, however, with amended claim 1 as presented. Some of
the limitations relate to methods of using the tape. The claim should be
clearly addressed to a product. We feel that the environment in which the
tape is to be used should in this case be completely stated in the preamble;
i.e. "For use in a postage meter wherein tape driving means operate on the
backing strip beyond the dispensing station, and wherein synchronism between
a tear-off station and lines of weakness are maintained VIA a feedback system
incorporating an index sprocket, an enabling switch and a motorized feed
roll-drive; a composite tape comprising ..." The body of the claims should
then be amended to facilitate the above changes. The last line of the claim
should be corrected to read "... score line rather than at the printing station."
In summary, we are satisfied that the applicant has made a patentable advance
in the art. There can clearly be no argument about the novelty of the combin-
ation and we think that there is ingenuity in the invention. We recommend that
the decision in the Final Action to refuse the claim be affirmed, but that the
claim submitted after the Final Action be accepted when amended as suggested.
J.F. Hughes
Assistant Chairman
Patent Appeal Board, Canada
I have studied the prosecution of this application and I concur with the re-
commendations of the Patent Appeal Board. Accordingly, I will accept claim 1
when amended as discussed by the Board. The applicant has six months within
which to cancel the proposed amended claim and submit an appropriate amendment,
or to appeal my decision under the authority of Section 44 of the Patent Act.
J.H.A. Gari‚py
Commissioner of Patents
Dated at Hull, Quebec Agent for Applicant
this 18th day of November, 1977 Marks & Clerk
Box 957, Station B
Ottawa, Ontario