Ex Parte 8,033,935 B2 et al

Patent Trial and Appeal Board

Sep 30, 2016

95002381 (P.T.A.B. Sep. 30, 2016)

UNITED STATES PATENT AND TRADEMARK OFFICE
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.
95/002,381 09/14/2012 8,033,935 B2 L1006.10174US09 7418
97149 7590 09/30/2016
Maschoff Brennan
1389 Center Drive, Suite 300
Park City, UT 84098
EXAMINER
ENGLE, PATRICIA LYNN
ART UNIT PAPER NUMBER
3993
MAIL DATE DELIVERY MODE
09/30/2016 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 PATENT TRIAL AND APPEAL BOARD
________________

RUSSELL BRANDS LLC
Appellant, Third Party Requester

v.

Patent of LIFETIME PRODUCTS INC.
Respondent, Patent Owner
________________

Appeal 2015-006069
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Technology Center 3900
________________

Before STEVEN D.A. McCARTHY, KEN B. BARRETT and
BRETT C. MARTIN, Administrative Patent Judges.

McCARTHY, Administrative Patent Judge.

DECISION ON APPEAL

1 Issued October 11, 2011 to Larry Stevens (the “’935 patent”). The
’935 patent issued from Application 12/828,643, filed July 1, 2010.
Application 12/828,643 is a continuation of Application 09/228,325, filed
January 11, 1999. Page 5 of the “Third Party Requester’s Appeal Brief,”
dated October 29, 2014, identifies litigation and administrative proceedings
involving the ’935 patent, its parent and related patent US 8,038,550.
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STATEMENT OF THE CASE 1
The Appellant/Third Party Requester appeals from the Examiner’s 2
decision favorable to the patentability of amended claims 1–30 and new 3
claims 31–40. (“Notice of Appeal by Third Party Requester,” dated August 4
29, 2014 (“Notice of Appeal”)). We have jurisdiction over the appeal under 5
pre-AIA 35 U.S.C. § 134(c) and 35 U.S.C. § 315(b). 6
We AFFIRM. 7
The determinative issue in this appeal is whether the basketball 8
backboard assembly, recited in independent claims 1, 17, 24 and 31, would 9
have been obvious under pre-AIA 35 U.S.C. § 103(a).2 The Requester 10
alleged five grounds of rejection in its Notice of Appeal but only argues 11
three of those grounds in its briefs. (See, e.g., “Third Party Requester’s 12
Appeal Brief,” dated October 29, 2014 (“App. Br. Req’r”), at 7). 13
“One of the ways in which a patent’s subject matter can be proved 14
obvious is by noting that there existed at the time of invention a known 15
problem for which there was an obvious solution encompassed by the 16
patent’s claims.” KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 419–20 17
(2007). Each of the three grounds of rejection argued in the Requester’s 18
briefs rests on a primary reference describing a basketball backboard 19
assembly including an acrylic basketball backboard bonded to a basketball 20
backboard frame by a double-sided adhesive tape with a viscoelastic foam 21
core. The Patent Owner’s witnesses testify that the use of double-sided tape 22

2 Neither the Examiner nor either party appears to dispute that the
effective filing date for all claims is January 11, 1999, the filing date of
parent application US 09/228,325.
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was costly, time consuming and labor-intensive. The difference between the 1
prior art and the claimed subject matter lies in the use of a “non-tape 2
adhesive sandwiched between [a] frame bonding surface [of a basketball 3
backboard frame] and [a] backboard bonding surface [of a basketball 4
backboard] to contact and directly bond the basketball backboard frame” and 5
the basketball backboard, as recited in claims 1 and 31, rather than double-6
sided tape. 7
The Supreme Court instructs us that, “when a patent claims a structure 8
already known in the prior art that is altered by the mere substitution of one 9
element for another known in the field, the combination must do more than 10
yield a predictable result.” KSR Int’l at 416. Conversely, such a substitution 11
would not have been obvious unless the result of the substitution would have 12
been predictable. It is true that “obviousness cannot be avoided simply by a 13
showing of some degree of unpredictability in the art so long as there was a 14
reasonable probability of success.” Pfizer, Inc. v, Apotex, Inc., 480 F.3d 15
1348, 1364 (Fed. Cir. 2007). Nevertheless, in order for the Requester to 16
prove that the subject matter of claims 1, 17, 24 and 31 would have been 17
obvious, that is, that the substitution of a non-tape adhesive was an obvious 18
solution to the manufacturing problems associated with double-sided tape, 19
the Requester must prove that one of ordinary skill in the art had a 20
reasonable expectation of successfully identifying a non-tape adhesive 21
capable of forming a bond between a basketball backboard and a basketball 22
backboard frame having the same desirable properties provided by the 23
viscoelastic core of the prior art double-sided tape. 24
Claims 24 and 31 are independent: 25
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24. A basketball backboard assembly sized and 1
configured for playing the game of basketball, the basketball 2
backboard assembly comprising: 3
a basketball backboard frame with a frame bonding 4
surface; 5
a basketball backboard with a backboard bonding surface; 6
and 7
a non-tape adhesive sandwiched between the frame 8
bonding surface and the backboard bonding surface; 9
wherein the non-tape adhesive sandwiched directly bonds 10
the basketball backboard and the basketball backboard frame; 11
wherein the non-tape adhesive provides a bond of 12
sufficient strength and flexibility to allow the basketball 13
background assembly to be used in the game of basketball; and 14
wherein the non-tape adhesive provides sufficient 15
flexibility in the bond to dissipate impact energy from the 16
basketball backboard to the basketball backboard frame when a 17
basketball strikes the backboard when playing the game of 18
basketball. 19
(“Respondent’s Brief,” dated January 20, 2015 “Resp. Br. PO,” at 37). 20
31. A basketball backboard assembly sized and 21
configured for playing the game of basketball, the basketball 22
backboard assembly comprising: 23
a basketball backboard frame with a frame bonding 24
surface; 25
a basketball backboard with a backboard bonding surface; 26
and 27
a non-tape adhesive sandwiched between the frame 28
bonding surface and the backboard bonding surface to contact 29
and directly bond the basketball backboard frame and the 30
basketball backboard; 31
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wherein the non-tape adhesive provides a bond of 1
sufficient strength and flexibility to allow the basketball 2
backboard assembly to be used in the game of basketball; and 3
wherein the cured adhesive provides sufficient flexibility 4
in the bond to dissipate impact energy from the basketball 5
backboard to the basketball backboard frame when a basketball 6
strikes the backboard when playing the game of basketball. 7
(Resp. Br. PO 38). Independent claims 1 and 17 differ from claims 24 and 8
31 in that claims 1 and 17 recite that the basketball backboard is acrylic. 9
The Requester appeals from the Examiner’s withdrawal of three 10
grounds of rejection in the “Right of Appeal Notice,” mailed August 1, 2014 11
(“RAN”):3 12
Ground 1: Claims 1, 5–12, 17, 18, 24, 25, 31, 32 and 38–40 13
under § 103(a) as being unpatentable over the “Admitted Prior Art” 14
(“APA”),4 that is, column 1, lines 21–52 of the ʼ550 patent, in view of 15
“the knowledge of a Person Having Ordinary Skill in the Art;” 16
Ground 2: Claims 1–40 under § 103(a) as being unpatentable 17
over Hying (US 5,839,982, issued Nov. 24, 1998), McGinniss (US 18

3 The Examiner mailed two “Actions Closing Prosecution” and two
“Right of Appeal Notices” in this proceeding. The Examiner mailed the first
“Action Closing Prosecution” on October 22, 2013; and the first “Right of
Appeal Notice” on January 16, 2014. In the first “Right of Appeal Notice,”
the Examiner maintained Grounds 1 and 3; and withdrew Ground 2. In the
wake of an appeal by the Patent Owner, the Examiner re-opened prosecution
and mailed a new “Action Closing Prosecution” on April 8, 2014. In the
second “Action Closing Prosecution,” the Examiner maintained Ground 1 as
applied to claims 1, 5–12, 17, 18, 24 and 25; and withdrew the rejections of
the remaining claims. The Examiner withdrew the remaining rejection in a
second “Right of Appeal Notice,” mailed August 1, 2014 (“RAN”).
4 The abbreviation “AAPA” is inappropriate in this proceeding. The
Respondent is a patent owner and not an applicant.
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4,607,082, issued Aug. 19, 1986) and the knowledge of a Person 1
Having Ordinary Skill in the Art; and 2
Ground 3: Claims 1–40 under § 103(a) as being unpatentable 3
over Hying in view of the APA, Toyomura (US 6,207,896 B1, issued 4
Mar. 27, 2001), Duchateau (US 4,422,893, issued Dec. 27, 1983) and 5
the knowledge of a Person Having Ordinary Skill in the Art. 6
(App. Br. Req’r 7; see generally “Request for Inter partes Reexamination of 7
U.S. Patent 8,033,935,” dated Sept. 14, 2012 (“Request”), at 10–20). The 8
Requester identified two additional grounds in its Notice of Appeal: Ground 9
B, proposing rejection of claims 31–40 under pre-AIA 35 U.S.C. § 314(a), 10
as enlarging the scope of the claims being examined; and Ground C, 11
proposing rejection of claims 31–40 under the first paragraph of pre-AIA 35 12
U.S.C. § 112, for lack of written description. These grounds were not 13
addressed in the briefs. They will not be discussed further in this opinion. 14
See 37 C.F.R. § 41.67(c)(1)(vii). 15
The record in this appeal includes the RAN;5 the Requester’s Appeal 16
Brief, including twenty numbered exhibits; the Patent Owner’s 17
“Respondent’s Brief,” including twenty exhibits; and the “Third Party 18
Requester’s Rebuttal Brief,” dated March 19, 2015 (“Reb. Br. Req’r”). An 19
oral hearing was held on November 19, 2015. Only issues and findings of 20
fact argued in the briefs have been considered. See 37 C.F.R. 21
§ 41.67(c)(1)(vii); In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011). 22

5 The official record does not appear to include an Examiner’s Answer.

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FINDINGS OF FACT 1
The record supports the following findings of fact (“FF”) by a 2
preponderance of the evidence. See Rambus Inc. v. Rea, 731 F.3d 1248, 3
1255 (Fed. Cir. 2013); Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1427 (Fed. 4
Cir. 1988). 5
6
The APA 7
1. The ʼ935 patent teaches that, “[a]s the game of basketball has 8
increased in popularity, a greater number of people have purchased 9
basketball systems for use at their homes.” (ʼ935 patent, col. 1, ll. 23–25). 10
The ʼ935 patent also teaches that “[c]lear acrylic backboards are becoming 11
increasingly popular because they resemble professional backboards.” (ʼ935 12
patent, col. 1, ll. 27–31). 13
2. The ʼ935 patent admits it was known that: 14
There are several problems which must be overcome to 15
successfully use an acrylic basketball backboard. First, the 16
backboard must be adequately bonded to a support frame. 17
Second, there must be sufficient flexibility in the bond to 18
dissipate the impact energy from the backboard to the frame. If 19
the bond between the backboard and frame is too rigid, then the 20
backboard can fracture. If the bond is too loose, then the 21
adhesion fails. 22
(ʼ935 patent, col. 1, ll. 30–39). 23
3. The ʼ935 patent teaches that a known solution to these 24
problems was the use of VHB high strength bonding tape, available from 25
3M Company, or NORTON foam tape, available from Saint-Gobain 26
Performance Plastics, to secure acrylic basketball backboards to basketball 27
backboard frames. (ʼ935 patent, col. 1, ll. 38–41). The Patent Owner’s 28
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expert, Dr. Dwight Hoffman, describes the 3M VHB tape as having “a foam 1
core with a high performance pressure-sensitive adhesive . . . on both sides.” 2
(“Declaration of Dr. Dwight Hoffman,” executed Feb. 7, 2013 (“Hoffman 3
Decl.”), reproduced in Exh. B to Resp. Br. PO, at para. 49).6 4
4. Dr. Hoffman further describes the foam core of the 3M VHB 5
tape as viscoelastic, “giv[ing] the foam energy absorbing and stress relaxing 6
properties which provides these tapes with their unique characteristics.” 7
(Id., quoting 3M Industrial Adhesives & Tape Div., 3M VHBTM Tapes (June 8
2011), App’x C to Hoffman Decl., at 1). 9
10
Hying 11
5. Hying describes a prior art basketball backboard assembly 12
including a backboard in the form of a planar acrylic sheet 3 bonded to a 13
welded steel frame 1 by a double-sided adhesive layer (that is, a double-14
sided adhesive tape) 5. (See Hying, col. 2, ll. 10–16; & Figs. 1 & 2).7 15

6 We infer, in the absence of evidence to the contrary, that the structure
of 3M VHB tape as of the effective filing date of the ʼ550 patent was the
same as that of tape later described in the appendices to the Hoffman Decl.
7 In the “Description of Related Art,” Hying describes the tape used to
bond the basketball backboard to the basketball backboard frame as a
“double-sided adhesive layer 5.” (Hying, col. 2, ll. 13–16). Later, when
contrasting its preferred structure with the prior art, Hying describes the
prior art backboards as being acrylic sheets bonded directly to the frame
structure “using double sided tapes or adhesives.” (Hying, col. 8, ll. 42–47.).
In light of the earlier reference to a “double-sided adhesive layer,” Hying’s
usage of the words “double sided tapes or adhesives” is consistent with an
intent to provide two terms (that is, “double sided tapes” or “double sided
adhesives”) capable of identifying the same structure.
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6. Larry Stevens, the named inventor on the ʼ935 patent, describes 1
double-sided tape backboards, such as those described in the APA and 2
Hying, as “the state of the art for assembling basketball backboards.” 3
(“Supplemental Declaration under 37 C.F.R. § 1.132 Traversing Grounds for 4
Rejection” (“Supp. Stevens Decl.”), reproduced in Exh. H to Resp. Br. PO, 5
at para. 9). 6
7. Nevertheless, Hying criticizes the use of double-sided tape to 7
secure backboards to support frames because the adhesive used in the 8
double-sided tape might not be strong enough to secure the backboards to 9
the frames for extended periods of time. (See Hying, col. 2, ll. 24–31).8 10
8. Hying also criticizes double-sided tape backboards such as that 11
depicted in Figures 1 and 2 of Hying for leaving the entire peripheral edges 12
of the backboards exposed. Hying teaches that the exposed peripheral edges 13
are subject to cracking when basketballs impact the backboards. The 14
reference additionally teaches that these cracks can propagate inwardly from 15
the edges of the backboards, causing the backboards to fail and perhaps 16
shatter, allowing broken pieces of the backboards to fall on the players. (See 17
Hying, col. 2, ll. 31–37). 18
9. Hying addresses these problems by teaching the use of extruded 19
channel members to mechanically secure the peripheral edges of an acrylic 20
basketball backboard. More specifically, Hying teaches engaging peripheral 21
edges of an acrylic basketball backboard 11 and frame members 23, 24 in 22

8 The cited passage criticizes the use of double-sided tape. The
Examiner correctly finds that Hying does not expressly discourage the use of
a non-tape adhesive to bond an acrylic basketball backboard to a basketball
backboard frame. (See RAN 5 & 6).
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parallel slots 60, 65 in the channel members 13. The slots 60, 65 are spaced 1
to provide a clearance “t” between the Backboard 11 and the frame members 2
23, 24. (See Hying, col. 7, ll. 31–44 & 56–63; col. 8, ll. 17–27; & Figs. 7 & 3
7A). Due to the geometry of the frame member 13 and the rigidity of the 4
material from which it is extruded: 5
The amount of inward flexure of the [basketball backboard 11] 6
is limited and controlled by the inner frame 26 to be 7
approximately equal to the amount of clearance space “t.” . . . 8
Thus, clearance space “t” allows the [basketball backboard] 11 9
to flex across its entire unsupported surface area when struck by 10
a basketball, thereby providing greater impact resistance as 11
compared to prior art backboards that bond acrylic sheets directly 12
to the frame structure using double sided tapes or adhesives.9 13
(Hying, col. 8, ll. 35–47). 14
10. Hying teaches mounting basketball backboards made from 15
either polycarbonate or acrylic plastic materials by securing the peripheral 16
edges of the backboards in the frame member channels. Hying also teaches 17
using the frame members to mount backboards fabricated from wood, 18
laminate material, tempered glass and metal. (See Hying, col. 3, ll. 26–32). 19
Hying only describes using double-sided tape to secure acrylic backboards. 20
(See Hying, col. 1, ll. 10–16). 21
22

9 Hying’s reference to “double sided tapes or adhesives” does not imply
that non-tape adhesives were known alternatives to double sided tapes.
Earlier, Hying referred to a “double-sided adhesive layer 5” where the
context indicated that the reference was to double-sided tape. (See Hying,
col. 2, ll. 13–16). Here, the term “double sided tapes or adhesives” appears
consistent with the use of alternative terms, namely, “double sided tapes”
and “double sided adhesives,” for the same structure.
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The Problem with which the Named Inventor was Involved 1
11. Mr. Stevens, the named inventor on the ʼ935 patent, explains 2
why the double-sided tape was used to bond acrylic basketball backboards to 3
basketball backboard frames: 4
The double-sided tape was used because it adhered to the two 5
very different types of material used to construct the backboard 6
assembly—the acrylic used to make the backboard and the 7
powder-coated metal frame. The double-sided tape also had the 8
characteristics and properties required to make a basketball 9
backboard assembly that allowed it to be used to play the game 10
of basketball. For example, the double-sided tape allowed the 11
brittle acrylic backboard to be attached to the rigid metal frame. 12
In addition, the double-sided tape accommodated the differences 13
in the coefficients of thermal expansion of the different materials 14
that caused the materials to expand and contract at different rates 15
under temperature changes, which was very important because 16
basketball backboards are frequently used outdoors in all types 17
of environments. Further, the double-sided tape provided 18
cushioning between the backboard and frame to prevent the 19
backboard from cracking or shattering upon impact of a 20
basketball. The foam core of the double-sided tape provided 21
many of these required characteristics and properties. 22
(“Declaration under 37 C.F.R. § 1.132 Traversing Grounds for Rejection,” 23
executed by Larry Stevens on Feb. 1, 2013 (“Stevens Decl.”), reproduced in 24
Exh. I to Resp. Br. PO, at para. 7). Mr. Stevens’ testimony is consistent with 25
the teachings of Hyings and the APA. (See FF 2 & 5). Both the Patent 26
Owner and Mr. Stevens emphasize the role of the viscoelastic foam core of 27
the double-sided tape in satisfying the requirements of flexibility and of 28
accommodating different rates of thermal expansion by the bonded 29
materials. (See Stevens Decl., para. 7; Resp. Br. PO 7). 30
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12. One of ordinary skill in the art would have had reason to seek 1
an alternative to double-sided tape backboards. Both Mr. Stevens and 2
Richard Hendrickson, another of the Patent Owner’s witnesses, testify that 3
the use of double-sided tape to secure backboards to support frames was 4
expensive, time-consuming and labor-intensive. (See Stevens Decl., para. 8; 5
“Declaration under 37 C.F.R. § 1.132 Traversing Grounds for Rejection,” 6
executed by Richard Hendrickson on Feb. 8, 2013 (“Hendrickson Decl.”), 7
reproduced in Exh. P to Resp. Br. PO, at para. 5; see also “Declaration under 8
37 C.F.R. § 1.132 Traversing Grounds for Rejection,” executed by David C. 9
Winter on Jan. 10, 2013 (“Winter Decl.”), reproduced in Exh. 11 to App. Br. 10
Req’r, at para. 7; ʼ935 patent, col. 1, ll. 44–49). Because double-sided tape 11
backboards were “the state of the art for assembling basketball backboards” 12
as of the effective filing date of the ʼ935 patent (Supp. Stevens Decl., para. 13
9; see also “Declaration of Mr. Ronald White,” executed March 8, 2012, 14
reproduced in Exh. O to Resp. Br. PO, at para. 18), one reasonably may infer 15
that one of ordinary skill in the art would have been aware of these 16
manufacturing problems as of the effective date of the ʼ935 patent. (See 17
White Decl., para. 14; Resp. Br. PO 11). 18
13. Mr. Stevens sought to reduce the cost and labor-intensity of 19
manufacturing basketball backboard assemblies by finding alternative means 20
for securing basketball backboards to support frames. Alternatives 21
considered by Mr. Stevens included fasteners and non-tape adhesives. 22
(Stevens Decl., paras. 8 & 9). Ultimately, Mr. Stevens engaged in a series of 23
experiments in an effort to identify a suitable non-tape adhesive that would 24
provide sufficient adhesion, cushioning and impact resistance over a suitable 25
temperature range. (See generally Stevens Decl., paras. 11 & 12). 26
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McGinniss 1
14. McGinniss teaches that: 2
The use of structural adhesives has increased substantially in 3
recent years in the aircraft, housing and construction, automotive 4
and footwear industries, to name but a few large quantity users 5
of such adhesives. The trend to structural adhesive formulations 6
has been facilitated by the replacement of conventional metal and 7
ceramic materials by polymers and by the development of a new 8
generation of adhesives which are tough and can be applied 9
quickly without burdensome surface preparation. Unlike 10
conventional epoxy adhesive formulations which generally cure 11
slowly and required careful mixing and surface preparation 12
techniques, the second generation acrylic adhesives contain 13
catalysts and promoters which promote rapid, room-temperature 14
cure and obviate the need for meticulous surface preparation and 15
proportional mixing of components. Moreover, such second 16
generation acrylic adhesive formulations possess excellent 17
strength which is derived through special toughening 18
mechanisms. 19
(McGinniss, col. 1, ll. 14–32; see also id., col. 9, ll. 40–47). 20
15. McGinniss describes a family of structural adhesives10 21
containing specialized, toughened acrylic compounds. (McGinniss, col. 2, 22
ll. 6–8). The family includes adhesives comprising ethylenically unsaturated 23
(e.g., acrylic) functionality attached to a silicone rubber or the like. 24

10 A “structural adhesive” is “an adhesive ‘whose strength is critical to
the success of the assembly. This term is usually reserved to describe
adhesives with high shear strength (in excess of 1,000 pounds per square
inch or psi). . . . Structural adhesives are usually expected to last the life of
the product to which they are applied.’” (Hoffman Decl., reproduced in
Exh. B to Resp. Br. PO, at para. 30, quoting E.M. Petrie, HANDBOOK OF
ADHESIVES & SEALANTS 3 (McGraw-Hill Cos. 2000), reproduced in Exh. 3
to App. Br. Req’r).
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(McGinniss, col. 10, ll. 46–59; see also id., col. 9, ll. 31–39). McGinniss 1
teaches providing the structural adhesive in a two-package system with a 2
peroxide curing agent and an activator so that the system cures rapidly when 3
the two packages are mixed. (McGinniss, col. 11, ll. 11–19). 4
16. McGinniss teaches that “such second generation adhesives are 5
toughened plastics which have been toughened by a variety of mechanisms.” 6
(McGinniss, col. 9, ll. 43–45). “Toughness” is a measure of the ability of a 7
polymer to absorb energy and, if necessary, plastically deform without 8
breaking. (See MCGRAW-HILL DICTIONARY OF SCI. & TECH. TERMS (4th 9
edition 1989)(“toughness”); see also E.M. Petrie, HANDBOOK OF ADHESIVES 10
& SEALANTS 330 (McGraw-Hill Cos. 2000) (“Petrie”), reproduced in part in 11
Exh. 3 to App. Br. Req’r). Hence, as the Requester correctly argues, 12
“McGinniss discloses a ‘curable’ silicone adhesive . . . that is both strong 13
and ‘toughened’ for flexibility.” (App. Br. Req’r 16). 14
15
Toyomura 16
17. Toyomura describes “conventionally known solar cell modules 17
formed by sealing a solar cell element with a resin on a reinforcing plate 18
such as a steel plate or a glass plate and covering them with a protective 19
film.” (Toyomura, col. 1, ll. 11–14). Waterproof terminal boxes adhered to 20
the back surfaces of the solar cell modules by means of “silicone sealants” 21
protected the output terminals of the modules. (Toyomura, col. 1, ll. 18–20). 22
One problem with these conventionally known solar cell modules was the 23
tendency of the terminal boxes to separate from the modules due to peeling 24
at the interfaces between the terminal boxes and the resins. (Toyomura, col. 25
1, ll. 22–26). Toyomura addressed this problem by altering the geometry of 26
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the corners of the terminal boxes. (Toyomura, col. 1, ll. 59–67; col. 2, l. 59 1
– col. 3, l. 4). 2
18. Toyomura teaches that a terminal box may be adhered to a solar 3
cell module using either a silicone sealant or a double-sided tape. Toyomura 4
suggests the choice of a silicone based adhesive or sealant “in view of 5
flexibility.” (Toyomura, col. 4, ll. 2 & 3). Toyomura does not appear to 6
explain why flexibility is a consideration in selecting the adhesive. 7
19. Toyomura further teaches that “[t]here is no specific limitation 8
on the adhesive double-coated tapes used . . . , but preferred tapes are those 9
having some thickness and being excellent in heat resistance, cold 10
resistance, adhesive strength, and durability. The preferred tapes are those 11
excellent in waterproof sealing and those having strong shear adhesion.” 12
(Toyomura, col. 4, ll. 43–48). Toyomura does not suggest that the double-13
sided tape have a flexible core; or that it possess energy absorbing and stress 14
relaxing properties. Neither does Toyomura appear to explain the reason 15
why the tapes should have “some thickness.” 16
20. For these reasons, Toyomura does not teach that a silicone 17
elastomeric adhesive, or other non-tape adhesive, is interchangeable with a 18
double-sided tape having a flexible core for the purpose of providing bond 19
strength as well as flexibility to accommodate impacts and differential 20
thermal expansion of the bonded parts. 21
21. The Examiner finds that Toyomura is non-analogous art. (See 22
RAN 9). Toyomura is not non-analogous art because it is reasonably 23
pertinent to the problem with which the named inventor, Mr. Stevens, was 24
involved. 25
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22. The problem with which the named inventor was involved, as 1
described both in the ʼ935 patent itself and Mr. Stevens’ testimony, was to 2
reduce the cost and labor-intensity of manufacturing basketball backboard 3
assemblies by finding an alternative to double-sided adhesive tape for 4
securing basketball backboards to support frames. (See FF 11–13; see also 5
ʼ935 patent, col. 1, ll. 22–53). The alternative had to provide sufficient 6
strength and flexibility to allow a brittle acrylic backboard to be attached to a 7
rigid frame. (See id.) 8
23. Toyomura addresses the problem of improving the adhesive 9
strength in a bond between a plastic terminal box and a solar cell module. 10
(Toyomura, col. 1, ll. 55–58). As part of the solution, Toyomura teaches 11
selecting a silicone based adhesive “in view of flexibility.” (Toyomura, col. 12
4, ll. 2 & 3). Toyomura also teaches that a silicone adhesive may be chosen 13
to provide a short curing time, thereby accelerating production. (Toyomura, 14
col. 4, ll. 4–8). These teachings imply that Toyomura is reasonably pertinent 15
to the problem with which the named inventor was involved. 16
17
Duchateau 18
24. Duchateau describes a technique for manufacturing large, heavy 19
mirrors comprising thin glass elements with reflective coatings secured to a 20
substantially rigid, unitary support. (See Duchateau, col. 1, ll. 21–29 & col. 21
6, ll. 25–34; & Figs. 4–6). 22
25. More specifically, Duchateau teaches laying the plurality of 23
glass elements 28 with reflective coatings on a form 30. Double-sided 24
adhesive tape 31 is applied along the joint lines of the glass elements 28 to 25
hold the elements in place; to mask the uncoated faces of the elements; and 26
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to temporarily bond the elements to the form 30. (See Duchateau, col. 6, ll. 1
36–42 & 47–50; & Fig. 7; see also id., col. 2, ll. 37–49). A layer 36 of 2
adhesive is applied to a base of the support 32. The support 32 then is 3
lowered onto the glass elements 28 to bond the elements to the support. (See 4
Duchateau, col. 6, ll. 44–47 & Fig. 7). 5
26. One type of adhesive suitable for forming the layer 36 is a two 6
component, silicone adhesive. (See Duchateau, col. 2, ll. 58–62 & col. 5, ll. 7
9–12). Preferably, the adhesive is weatherproof. (See Duchateau, col. 5, ll. 8
3 & 4). In addition, Duchateau teaches that, “for ease of application, such 9
adhesive [preferably] is a fluid adhesive, and in order to avoid problems 10
arising due to the escape of vapor from the adhesive as it sets, it is 11
particularly preferred to use an adhesive of the non-solvent type.” 12
(Duchateau, col. 5, ll. 4–9). 13
27. The Examiner correctly finds that Duchateau does not teach 14
substituting a non-tape adhesive for double-sided tape for any purpose, as 15
the Requester has argued. (See RAN 9; Request 65). Duchateau teaches 16
using double-sided tape to form a weak, temporary bond to hold the glass 17
elements in place on a form; and teaches using the curable adhesive to form 18
a permanent bond between the elements and a support. Duchateau does not 19
teach that the two types of adhesive are interchangeable—they are used for 20
different purposes. (See RAN 9). 21
28. The Examiner correctly finds that Duchateau is non-analogous 22
art. (See RAN 9). As the Patent Owner correctly points out, the field of 23
endeavor of the ʼ935 patent is the design and manufacture of basketball 24
backboards. (See Resp. Br. PO 20). This finding is supported by the 25
description of the problem addressed by the ʼ935 patent, which appears at 26
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column 1, lines 22–53 of the patent. As the Requester correctly points out 1
(see App. Br. Req’r 24), the ʼ935 patent says at one point that the “present 2
invention relates to a system and method for bonding an acrylic surface to a 3
frame.” (ʼ935 patent, col. 1, ll. 13 & 14). The patent also includes narrower 4
statements, such as “the present invention is directed to a system and method 5
for adhesively bonding an acrylic basketball backboard to a frame structure” 6
(ʼ550 patent, col. 1, ll. 14–17); and the “present invention relates to an 7
acrylic basketball backboard assembly and to a method of bonding an acrylic 8
basketball backboard to a frame structure” (id., col. 1, ll. 59–61 & col. 2, ll. 9
37–39). The patent discusses adhesives only in the context of bonding 10
acrylic basketball backboards to basketball backboard frames. Considering 11
the patent as a whole, the field of endeavor relates to the design and 12
manufacture of basketball backboard assemblies rather than to adhesives or 13
adhesive bonds in general. Adhesives are a solution to the problem that the 14
claimed subject matter addresses, not the field in which the problem arises. 15
29. Duchateau describes a method for manufacturing a large mirror 16
rather than a basketball backboard assembly. Duchateau is not within the 17
field of endeavor relating to the design and manufacture of basketball 18
backboard assemblies. 19
30. Neither is Duchateau reasonably pertinent to the particular 20
problem with which the named inventor was involved. As explained earlier, 21
the problem with which the named inventor was involved, as described both 22
in the ʼ935 patent itself and Mr. Stevens’ testimony, was to reduce the cost 23
and labor-intensity of manufacturing basketball backboard assemblies by 24
finding an alternative to double-sided adhesive tape for securing basketball 25
backboards to support frames. (See FF 11–13; see also ʼ935 patent, col. 1, 26
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ll. 21–52). The alternative had to provide sufficient strength and flexibility 1
to allow a brittle acrylic backboard to be attached to a rigid frame. (See id.) 2
Duchateau does not say anything of significance about either a reason for 3
flexibility in the bond between the glass elements and the support of the 4
mirror; or about the ability of any adhesive, such as a silicone adhesive, to 5
provide such flexibility. 6
31. The Requester has not shown that the structures of the 7
honeycomb mirrors described in Gray, 6.5-m MMT Mirror Support Load 8
Spreader Gluing: Summary of Problems, Investigations and Solutions 9
(bearing a revision date of July 21, 1995)(“Gray”), cited at pages 30 and 31 10
of the Requester’s Appeal Brief and reproduced in Exhibit 12 to that brief, 11
are so similar to the structure of Duchateau’s mirrors that the teachings of 12
Gray would have suggested to one of ordinary skill in the art that Duchateau 13
was relevant to the problem addressed by the claimed subject matter. Gray 14
describes adhering load spreaders to a mirror rather than adhering reflective 15
elements to a support. 16
17
Level of Ordinary Skill in the Art 18
32. The Patent Owner argues that the Examiner set the level of 19
ordinary skill in the art too high prior to re-opening prosecution in April 20
2014. (See Resp. Br. PO 8). The Patent Owner’s witness, Mr. Winter, 21
correctly identifies one of ordinary skill in the art as having had “a Bachelor 22
of Science in mechanical engineering or a Bachelor of Science in 23
manufacturing engineering with several years of experience in . . . the 24
basketball area.” (Winter Decl., reproduced in Exh. 11 to App. Br. Req’r, at 25
para. 4). 26
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33. Winter’s description of the educational background and 1
experience of one of ordinary skill in the art is consistent with the 2
backgrounds of those of the Patent Owner’s witnesses who testify to 3
experience with the design or manufacture of basketball backboard 4
assemblies, including Messrs. Stevens and Winter. (See Steven Decl., 5
reproduced in Exh. I to Resp. Br. PO, at paras. 1 & 3; Winter Decl., paras. 1 6
& 2). The description is also consistent with the education and experience 7
of the Requester’s witness, Mr. Ronald White. (See White Decl., 8
reproduced in Exh. O to Resp. Br. PO, at paras. 2 & 4). 9
34. Winter’s description of the educational background and 10
experience of one of ordinary skill in the art also is consistent with the 11
teachings of Hying. Hying addressed the problem of backboard failure due 12
to cracks propagating into the backboards from the peripheral edges by 13
mechanically inserting the peripheral edges of backboards into channels in 14
extruded plastic frame members (see FF 8 & 9) rather than by using 15
adhesives. 16
35. The Requester has not proven that one of ordinary skill in the 17
art would have had a high level of knowledge regarding the selection of 18
adhesives and the design of adhesive joints. In particular, the Requester has 19
not shown that an engineer holding a bachelor’s degree in mechanical or 20
manufacturing engineering would have had a high level of skill, experience 21
or training in the fields of chemistry, polymer science or adhesive science. 22
(See Winter Decl., para. 4). Although the named inventor, Mr. Stevens, had 23
prior knowledge and training in adhesive bonding technologies (see Stevens 24
Dec., para. 2), neither Mr. Winter nor Mr. White testifies to any prior 25
education or experience in the fields of polymer chemistry or adhesives. 26
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36. The Requester argues that J. Shigley et al., MECHANICAL 1
ENG’RING DESIGN (McGraw-Hill Cos., 6th edition 2001) (“Shigley”), 2
reproduced in part in Exhibit 4 to the Third Party Requester’s Appeal Brief, 3
provides evidence “showing that the mechanical performance of adhesives 4
[were] well known.” (App. Br. Req’r 9 & 10). Shigley, which was 5
published after the effective filing date of the ʼ935 patent, teaches that: 6
In spite of a number of attractive features associated with the use 7
of adhesives either alone or in combination with traditional 8
fastening methods, design methods have not been widely 9
incorporated into engineering design courses. In part this arises 10
because of some of the complications associated with the various 11
types of joints and the difficulty in establishing design 12
procedures that can be universally applied. 13
(Shigley 563). In other words, students studying mechanical and 14
manufacturing engineering were not taught the design of adhesive bonds 15
because of the unpredictable nature of such bonds. 16
37. The Requester also argues that the pages entitled 17
“Fundamentals of Engineering (FE) Exam Morning Session Specifications” 18
(effective October 1996) and “Fundamentals of Engineering (FE) Exam 19
Afternoon Session Specifications” (effective October 1996), reproduced in 20
Exhibit 5 to Third Party Requester’s Appeal Brief, provide evidence 21
“showing that the mechanical performance of adhesives [were] well 22
known.” (App. Br. Req’r 9 & 10). The documents themselves do not 23
support this argument. The first of the two pages does not list adhesives or 24
the design of adhesive bonds among the topics on which all the examinees 25
were to be tested. The second of the two pages does not list adhesives or the 26
design of adhesive bonds among the subjects on which examinees in the 27
mechanical engineering field were to be examined. 28
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38. In its Respondent’s Brief, the Patent Owner argues that: 1
Here, the common knowledge of a person of ordinary skill in the 2
art at the time of the invention included the special and unique 3
properties of the VHB double-sided tape with a foam core 4
allowed the backboard to be attached to the frame. The common 5
knowledge also included that elimination of the foam core would 6
have been expected to result in failure. 7
(Resp. Br. PO 11). The Patent Owner also argues that “here VHB double-8
sided tape was particularly selected for its working environment because the 9
foam core provided the required cushioning, flexibility, energy absorption, 10
impact resistance, etc.” (Id. at 10). To the extent that the Requester argues 11
that these statements are “admissions against interest” that one of ordinary 12
skill in the art could have chosen a non-tape adhesive capable of forming a 13
bond having the desirable characteristics of a bond formed using double-14
sided tape with a viscoelastic foam core (see Reb. Br. Req’r 6; see also id. 15
10), the argument is not persuasive. There is no evidence in the record as to 16
how the prior art VHB tape was identified as a candidate to bond acrylic 17
basketball backboards to basketball backboard frames. Given the overall 18
thrust of the Patent Owner’s argument, we do not interpret the Patent 19
Owner’s statements as an admission that one of ordinary skill in the art had 20
sufficient skill based on education and experience to select a suitable non-21
tape adhesive as a substitute for double-sided tape. 22
39. Neither the Requester’s polymer chemistry expert, Dr. Maureen 23
Reitman, nor the Patent Owner’s polymer chemistry expert, Dr. Hoffman, 24
testifies to any experience designing or manufacturing basketball backboard 25
assemblies prior to the effective filing date of the ʼ935 patent. (See 26
generally “Declaration of Dr. Maureen Reitman,” executed Sept. 14, 2012 27
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(“Reitman Decl.”), reproduced in Exh. 8 to App. Br. Req’r, at paras. 1–7; 1
Hoffman Decl., reproduced in Exh. B to Resp. Br. PO, at paras. 3–15). Dr. 2
Reitman’s successful career as a college basketball player in or around the 3
period from 1986–90 (See Supp. Reitman Decl., reproduced in Exh. K to 4
Resp. Br. PO, at paras. 3 & 4), does not imply experience in the field of 5
designing and manufacturing basketball backboard assemblies prior to the 6
effective filing date of the ʼ935 patent. For this reason, we discount Dr. 7
Reitman’s testimony that one of ordinary skill in the art might have had a 8
bachelor’s degree in chemistry, chemical engineering or polymer science. 9
(See Reitman Decl., para. 9). The backgrounds of Dr. Reitman and Dr. 10
Hoffman are not probative of the level of ordinary skill in the pertinent art. 11
40. Petrie, which was published in 2001, was not a printed 12
publication as of the effective filing date of the ʼ935 patent. Furthermore, 13
despite the Requester’s argument to the contrary (see App. Br. Req’r 9), the 14
teachings of Petrie, reproduced in Exhibit 3 to the Third Party Requester’s 15
Appeal Brief, are not probative of the level of ordinary skill in the pertinent 16
art. The teachings of Petrie have not been shown to reflect the knowledge of 17
one educated in mechanical or manufacturing engineering, having 18
experience in the design and manufacture of basketball backboard 19
assemblies. 20
41. Dr. Hoffman testifies that, “[a]s a general reference describing 21
the state of the relevant art of adhesive technology at approximately the time 22
of invention, I relied upon” Petrie. (Hoffman Decl., para. 17). This 23
testimony does not persuade us that one of ordinary skill in the art was 24
knowledgeable in adhesive technology, or that the field of endeavor was 25
adhesive technology, any more than the testimony of Dr. Reitman does. The 26
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Requester has not shown that the Patent Owner has vouched for this 1
testimony, or that the Patent Owner is required to do so. The testimony of 2
Mr. Winter as to the level of ordinary skill in the art is more persuasive than 3
the testimony of Dr. Hoffman. Mr. Winter credibly testifies to involvement 4
in the design and manufacture of basketball backboard assemblies prior to 5
the effective date of the ʼ935 patent. (See Winter Decl., paras. 2, 7 & 8). 6
Dr. Hoffman does not. 7
42. Even though one of ordinary skill in the art lacked a high level 8
of understanding concerning adhesives by virtue of education or experience, 9
one of ordinary skill in the art would have had reason to contemplate 10
whether a curable adhesive could be used to secure an acrylic basketball 11
backboard to a basketball backboard frame. For example, Mr. Stevens 12
admitted that other engineers had experimented before him with the use of 13
adhesives to secure basketball backboards to basketball backboard frames. 14
(See Stevens Decl., para. 9). 15
43. In addition, the Requester cites several prior art patents teaching 16
the use of adhesive layers for bonding various components of basketball 17
backboard assemblies to each other. (See App. Br. Req’r 9).11 For example, 18
Shaffer (US 4,478,415, issued Oct. 23, 1984) describes a composite 19
basketball backboard including a substrate 15 fabricated from a reconstituted 20
wood product covered on at least its front side by a polyacrylate shell 21

11 Although these prior art patents are not cited in any of the three
proposed grounds of rejection on appeal in this proceeding, we are required
to address these patents as evidence of the knowledge of one of ordinary
skill in the art. See Randall Mfg. v. Rea, 733 F.3d 1355, 1361 (Fed. Cir.
2013).
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member 20. (See Shaffer, col. 3, ll. 19–27, 38–42 & 50–54; & Figs. 3 & 4). 1
Shaffer teaches bonding the shell member 20 to the substrate 15 by means of 2
a synthetic resin glue. (See Shaffer, col. 3, l. 67 – col. 4, l. 4). Shaffer 3
teaches the use of an adhesive in fabricating a basketball backboard. It does 4
not teach bonding an acrylic basketball backboard to a basketball backboard 5
frame. Nevertheless, it indicates that one of ordinary skill in the art would 6
have had at least a general awareness of adhesives and knowledge that 7
adhesives were used for at least some purposes in constructing basketball 8
backboard assemblies. 9
44. Mahoney (US 4,377,283, issued Mar. 22, 1983) describes using 10
a combination of adhesive and mechanical fasteners to secure a heavy, 11
transparent, acrylic support or back-up plate 30 to a PLEXIGLAS (that is, an 12
acrylic) polymer basketball backboard 14. (See Mahoney, col. 2, ll. 34–37; 13
col. 2, l. 58 – col. 3, l. 3; col. 3, ll. 19–22; col. 4, ll. 20–33; & Fig. 2). 14
Mahoney’s support plate 30 reinforces the lower portion of the acrylic 15
basketball backboard 14 against shattering if a player grabs or becomes 16
hooked on a rim section 18. (See Mahoney, col. 2, ll. 38–49). ). Mahoney 17
does not teach bonding an acrylic basketball backboard to a basketball 18
backboard frame. Nevertheless, Mahoney, like Shaffer, indicates that one of 19
ordinary skill in the art would have had at least a general awareness of 20
adhesives and knowledge that adhesives were used for at least some 21
purposes in constructing basketball backboard assemblies. 22
45. The Requester at page 8 of its Appeal Brief urges us to adopt 23
the Examiner’s prior finding that: 24
Based on all the information from the Declaration of David 25
Winter, Dr. Maureen Reitman and [Shigley], . . . a person of 26
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ordinary skill in the basketball manufacturing design (as defined 1
by David C. Winter) would [have] work[ed] with a chemist, 2
material scientist or process engineer (as defined by Dr. Maureen 3
Reitman). Therefore, the definition of ordinary skill when 4
addressing the problem of adhering acrylic with metal would 5
[have] be[en] an interdisciplinary team with knowledge of 6
basketball and adhesives. 7
(“Right of Appeal Notice,” mailed January 16, 2014, at 19). The Examiner 8
did not repeat this finding in the “Action Closing Prosecution,” mailed April 9
8, 2014, or the RAN. 10
46. To the extent that one of ordinary skill in the art would have 11
had reason to contemplate whether a non-tape adhesive could be used to 12
secure an acrylic basketball backboard to a basketball backboard frame, he 13
or she would have had reason to consult “product information, data sheets 14
and/or technical service personnel from the suppliers of commercially 15
available adhesives to determine if any off-the-shelf adhesives could be 16
purchased that fit within the engineering and business parameters of a 17
design.” (Reitman Decl., para. 13). Mr. Stevens himself consulted a sales 18
representative for an adhesives company before he began his course of 19
experiments to discover if a suitable adhesive could be found. (See Stevens 20
Decl., para. 10). 21
47. On the other hand, there is no persuasive evidence that one or 22
more mechanical engineers ever worked in an interdisciplinary team with 23
one or more chemists, material scientists or polymer scientists to design a 24
basketball backboard assembly, or a process for manufacturing such an 25
assembly, prior to the effective filing date of the ʼ935 patent. The Examiner 26
quoted two passages from a mechanical engineering text as support for the 27
finding that one of ordinary skill in the art was an interdisciplinary team. 28
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(See “Right of Appeal Notice,” mailed December 9, 2013, at 23 & 24, 1
quoting Shigley, Exh. 4 to App. Br. Req’r, at 574 & 576). Although Shigley 2
in these passages, as well as in the introductory passage on page 563, hints 3
that some adhesive bonds might have been designed by interdisciplinary 4
design teams, the passages appear prescriptive rather than descriptive of the 5
extant state of the art. The passages do not demonstrate that such design 6
teams represented the level of ordinary skill in the art of designing and 7
manufacturing basketball backboard assemblies.12 8
48. One of ordinary skill in the art would have been aware, at least 9
in general terms, that non-tape adhesives and elastomeric adhesives, 10
including silicone elastomeric adhesives, were available for sale as of the 11
effective filing date of the ʼ935 patent. To the extent that one of ordinary 12
skill in the art did not acquire this information as a result of education or 13
experience, this knowledge could have been acquired by consulting product 14
information, data sheets or technical service personnel from the suppliers of 15
commercially available adhesives. 16
49. The evidence indicates that there were a large number of non-17
tape adhesive systems providing a spectrum of properties available on the 18
market as of the effective filing date of the ʼ935 patent; and that non-tape 19
adhesives capable of producing bonds similar to those produced by double-20
sided tape with a viscoelastic foam core in terms of strength, flexibility and 21

12 Because we reject the finding that “one of ordinary skill in the art”
was an interdisciplinary team as not supported by the evidence, we need not
address the Patent Owner’s argument suggesting that “one of ordinary skill
in the art” must be an individual as a matter of law. (See Resp. Br. PO 8;
Reb. Br. Req’r 10).
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capacity to accommodate differential thermal expansion were only a part of 1
that spectrum. (See, e.g., Supp. Reitman Decl., para. 10). Product 2
information and data sheets would have provided one of ordinary skill in the 3
art information regarding at least some of the commercially-available 4
adhesive systems (see FF 46), including two-package silicone elastic 5
systems. 6
50. On the other hand, the Requester has not proven that technical 7
service personnel could have directed one of ordinary skill in the art to a 8
curable adhesive having the same bond strength and flexibility properties as 9
double-sided adhesive tape with a viscoelastic core. Mr. Stevens testifies 10
that, when he began testing adhesives, he “spoke with a sales representative 11
for one of the adhesives companies used by [the Patent Owner] to ask about 12
potential adhesives. [He recalls the Patent Owner’s] representative from 3M 13
[told him] that [he] would never be able to replace the VHB® tape.” 14
(Stevens Decl., para. 10). The Requester has not cited to persuasive 15
evidence that a sales representative could have identified a curable adhesive 16
capable of reproducing the desirable properties provided by the viscoelastic 17
foam core of the double-sided tape used to bond acrylic basketball 18
backboards to basketball backboard frames. 19
20
ANALYSIS 21
Ground 1 22
The Requester argues that claims 1, 5–12, 17, 18, 24, 25, 31, 32 and 23
38–40 should be rejected under § 103(a) as being unpatentable over the APA 24
in view of “the knowledge of a Person of Ordinary Skill in the Art.” The 25
APA teaches that it was known to secure acrylic basketball backboards to 26
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basketball backboard frames using double-sided adhesive tape having a 1
viscoelastic foam core. (See FF 1 & 3). The APA also teaches that the use 2
of double-sided adhesive tape having a viscoelastic foam core had certain 3
advantages (see FF 2 & 11), but that one of ordinary skill in the art would 4
have had reason to seek an alternative which was less costly, time-5
consuming and labor-intensive (see FF 12). The Requester appears to have 6
summarized “the knowledge of a Person of Ordinary Skill in the Art” in the 7
Request: 8
Patent Owner states that “Suitable silicone adhesive has been 9
obtained from General Electric (D1-SEA 210) and from Dow 10
Corning (Q3-6093). The commercially available silicone 11
adhesive includes dimethylpolysiloxane as a primary 12
ingredient….” ʼ935 patent at 2:62–65. The ʼ935 patent also 13
states that “Various elastomeric adhesives were tested from the 14
following manufacturers: Ashland, Ciba-[Geigy], [DAP], 15
Devcon, Dow Corning, [Ellsworth], General Electric, [GOOP], 16
[HYSOL], H.B. Fuller, and Resin [Technology] Group.” ʼ935 17
patent at 4:65–5:1. Patent Owner is stating that commercial 18
adhesives were purchased from a manufacturer and subsequently 19
used for the intended purpose of the adhesive. To summarize, 20
the only portion of the claims of the ʼ935 patent that are not part 21
of the admitted prior art is the use of silicone or elastomeric 22
adhesives. However, these silicone or elastomeric adhesives 23
were merely purchased, and therefore are necessarily known in 24
the art. 25
(Request 12). 26
One of ordinary skill in the art would not have had a reasonable 27
expectation of successfully identifying a non-tape adhesive capable of 28
forming a bond between an acrylic basketball backboard and a basketball 29
backboard frame, having the same desirable properties provided by the 30
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viscoelastic core of the prior art double-sided tape.13 In order to have a 1
reasonable expectation that a non-tape adhesive might be substituted 2
successfully for the double-sided tape, one of ordinary skill in the art would 3
have required a reasonable degree of confidence that the adhesive could 4
reproduce the desirable properties of the viscoelastic foam core of the tape. 5
There was a “division of labor” in the prior art tape: The pressure-6
sensitive adhesive provided the ability to adhere to different materials as 7
well as a certain degree of bond strength. The foam core provided 8
flexibility and the capacity to accommodate differential thermal expansion 9
by the two bonded materials. (See FF 3, 4 & 11). In order to modify the 10
prior art method described by the APA or Hying so as to satisfy claim 1 or 11
claim 19, one of ordinary skill in the art would have had to identify a curable 12
adhesive system which, when solidified, would have combined all of these 13
properties in a single bond. The Requester has not proven that one of 14
ordinary skill in the art would have had a reasonable expectation that such an 15
adhesive system existed. 16
The Requester has shown that one of ordinary skill in the art would 17
have had reason to contemplate the possibility of using a non-tape adhesive 18
to bond an acrylic basketball backboard to a basketball backboard frame. 19
(See FF 42–44, 46 & 48). On the other hand, the Requester has not proven 20

13 The Requester asks us to characterize the recitations of --curing the
adhesive-- and --wherein the cured adhesive-- in independent claims 1 and
19 as “minor, non-substantive amendments.” (See App. Br. Req’r 12–14).
The Board is required to give effect to each word of a claim in addressing
obviousness under § 103(a). See In re Wilson, 424 F.2d 1382, 1385 (CCPA
1970).
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that one of ordinary skill in the art would have had a sufficient level of 1
education and experience regarding the selection of adhesives and the design 2
of adhesive joints to identify a non-tape adhesive system which, when 3
solidified, would have combined all of the desirable properties offered by 4
the combination of the adhesive layers and viscoelastic foam core of the 5
double-sided tape then prevalent. (See FF 35). Product information and 6
data sheets would have provided one of ordinary skill in the art information 7
regarding at least some of the commercially-available adhesive systems, 8
including two-package silicone elastic systems. (See FF 46). Nevertheless, 9
the Requester has not proven that the available product information and data 10
sheets would have provided one of ordinary skill in the art sufficient 11
information to identify an adhesive, or a class of adhesives, reasonably likely 12
to succeed in providing a bond combining all of the desirable properties 13
provided by double-sided tape to justify further experimentation. Neither 14
has the Requester proven that technical service personnel from a supplier 15
could have provided useful guidance toward identifying a suitable adhesive 16
reasonably likely to replicate the desired bond properties. (See FF 50). 17
The Requester argues that a product data sheet for LEXAN 9030 18
sheet, reproduced in Exhibit 6 to the Third Party Requester’s Appeal Brief, 19
is evidence that a silicone elastomeric adhesive such as D1-SEA 210 silicone 20
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adhesive14 was a known substitute for VHB adhesive tape. (See App. Br. 1
Req’r 10). LEXAN 9030 sheet is a polycarbonate sheet material. As the 2
Requester points out, polycarbonate was a known material for fabricating 3
basketball backboards. (See App. Br. Req’r 10, citing Hying, col. 3, ll. 26–4
28; see also FF 10). The product data sheet teaches that the “use of 5
adhesives and tape to bond Lexan 9030 sheet to other materials is now 6
universal and offers [a] technique that is one of the most efficient and 7
economical methods of joining components.” (Exh. 6 to App. Br. Req’r, 8
Bates No. RUSS00067869). A table entitled “Adhesive Selection Chart for 9
Lexan® polycarbonate sheet products” lists both SEA 210 silicone adhesive, 10
available from GE Silicones, and “VHB range” tape, available from 3M 11
Company, for joining LEXAN sheet to plastics, glass and metals. (Id.) 12
On the other hand, the Patent Owner correctly points out that the same 13
product data sheet teaches “[i]t is vitally important to select the adhesive or 14
tape carefully ensuring its capability with Lexan 9030 sheet being used and 15
[the] working environment.” (Resp. Br. PO 9 & 10, quoting Exh. 6 to App. 16
Br. Req’r, Bates No. RUSS00067869). The product data sheet does not 17
describe in detail in what sense D1-SEA 210 silicone adhesive and VHB 18
double-sided tape might serve as alternative means for bonding LEXAN 19
9030 sheet to other plastic, glass or metal materials. In particular, the 20

14 The ʼ935 patent identifies D1-SEA 210 silicone adhesive as a
preferred non-tape adhesive for use in bonding an acrylic basketball
backboard to a basketball backboard frame. (See ʼ935 patent, col. 2, ll. 62 &
63). D1-SEA 210 silicone and its properties are described in more detail in a
data sheet reproduced in Exhibit 2 to the Third Party Requester’s Appeal
Brief.
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product data sheet does not suggest that D1-SEA 210 silicone adhesive 1
might provide a bond with flexibility or impact resistance equivalent to, or 2
interchangeable with, VHB tape with a viscoelastic foam core. Thus, in the 3
words of the Patent Owner, the product data sheet “provides no indication 4
that [a non-tape] adhesive would have the required special properties, or that 5
[a non-tape] adhesive could be used to bond a backboard and frame in the 6
working environment of a basketball backboard.” (Resp. Br. PO 10). The 7
product data sheet does not demonstrate that any non-tape adhesive was a 8
known substitute to double-sided tape with a viscoelastic foam core. 9
The Requester also argues that three decisions by the predecessor of 10
our reviewing court, In re Borregard, 439 F.2d 206, 208–09 (CCPA 1971); 11
In re Hill, 408 F.2d 754, 757 (CCPA 1969); and In re Field, 255 F.2d 409, 12
412 (CCPA 1958), compel us to find that the selection of a suitable adhesive 13
would have been a matter of mere design choice, even without the citation of 14
prior art as supporting evidence. (See App. Br. Req’r 10 & 11; Reb. Br. 15
Req’r 13). A review of these three decisions indicates that the applicable 16
language in each reflected the court’s adoption of a finding of fact rather 17
than a conclusion of law by the court. Findings of fact are dependent on the 18
totality of the record in a particular case. See, e.g., In re Chu, 66 F.3d 292, 19
298–99 (Fed. Cir. 1995); cf. Randall Mfg. v. Rea, 733 F.3d 1355, 1362–63 20
(Fed. Cir. 2013) (“In recognizing the role of common knowledge and 21
common sense, [our reviewing court has] emphasized the importance of a 22
factual foundation to support a party’s claim about what one of ordinary skill 23
in the art would have known.”)). Findings made on the record in one case 24
are not binding when confronted by a different record in a different case. 25
Here, the record indicates that the choice of a suitable adhesive was not a 26
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mere matter of design choice. One of ordinary skill in the art would not 1
have had a reasonable expectation of successfully identifying a non-tape 2
adhesive capable of forming a bond between an acrylic basketball backboard 3
and a basketball backboard frame, having the same desirable properties 4
provided by the viscoelastic core of the prior art double-sided tape. 5
The Requester argues that the Patent Owner’s arguments improperly 6
import into the limitations “wherein the non-tape adhesive provides a bond 7
of sufficient strength and flexibility to allow the basketball background 8
assembly to be used in the game of basketball;” and “wherein the non-tape 9
adhesive provides sufficient flexibility in the bond to dissipate impact 10
energy from the basketball backboard to the basketball backboard frame 11
when a basketball strikes the backboard when playing the game of 12
basketball,” as recited in claims 1, 17, 24 and 31, “the idea that a ‘sufficient’ 13
adhesive acts like VHB” tape. (Reb. Br. Req’r 12; see also App. Br. 21–23). 14
Ground 1 relies on the APA as a primary reference. Grounds 2 and 3 rely on 15
Hying. Both the APA and Hying teach basketball backboard assemblies 16
including acrylic backboards subject to impacts, bonded to basketball 17
backboard frames by double-sided VHB tape with viscoelastic foam cores. 18
The Requester’s obviousness arguments are predicated on the mere 19
substitution of a non-tape adhesive for the double-sided tape. In addressing 20
whether it would have been obvious to merely substitute a non-tape adhesive 21
for the double-sided tape, it is reasonable to take into account whether the 22
non-tape adhesive possesses the desirable properties of the tape for which 23
the adhesive is to be substituted. Because the Requester has not proven that 24
one of ordinary skill in the art would have had a reasonable expectation that 25
the substituted non-tape adhesive would possess the desirable properties, the 26
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Requester has not proven a factual underpinning for rejecting claims 1, 17, 1
24 and 31. 2
Therefore, we affirm the Examiner’s decision not to adopt Ground 1. 3
4
Ground 2 5
The Requester argues that claims 1–40 should be rejected under 6
§ 103(a) as being unpatentable over the teachings of Hying in view of the 7
teachings of McGinniss and “the knowledge of a Person of Ordinary Skill in 8
the Art.” Hying described securing an acrylic basketball backboard to a 9
basketball backboard frame using double-sided adhesive tape having a 10
viscoelastic foam core. (See FF 5). One of ordinary skill in the art would 11
have been aware that the use of double-sided adhesive tape having a 12
viscoelastic foam core had certain advantages. (See FF 2 & 11). On the 13
other hand, one of ordinary skill in the art would have had reason to seek an 14
alternative to double-sided tape that was less costly, time-consuming and 15
labor-intensive. (See FF 12). McGinniss described a family of structural 16
adhesives containing specialized, toughened acrylic compounds. (See FF 17
15). As the Requester correctly argues, “McGinniss discloses a ‘curable’ 18
silicone adhesive . . . that is both strong and ‘toughened’ for flexibility.” 19
(App. Br. Req’r 16; see also FF 16). 20
The Requester argues that “McGinniss discloses a ‘curable’ silicone 21
adhesive . . . that is both strong and ‘toughened’ for flexibility” (App. Br. 22
Req’r 16; see also Reb. Br. Req’r 16); and that one of ordinary skill in the 23
art merely could have substituted a silicone adhesive of the type described 24
by McGinniss for the double-sided tape used in the prior art (see id.). The 25
Requester argues that this would have been “no more than the predictable 26
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use of prior art elements according to their established functions.” (Id, citing 1
KSR Int’l Inc. v. Teleflex Corp., 550 U.S. 398, 417 (2007)). The Requester 2
does not cite any teachings of McGinniss as to the degree of flexibility 3
provided to bonds formed by the disclosed adhesives when those adhesives 4
are “toughened.” Neither has the Requester established that the loads 5
imposed on adhesive bonds in the only fields of use described in McGinniss, 6
namely, aircraft; housing and construction; automotive; and footwear, are 7
comparable to the loads imposed on adhesives used to bond acrylic 8
basketball backboards to basketball backboard frames as described in Hying. 9
As such, the Patent Owner is correct in arguing that the substitution that the 10
Requester proposes is not a “predictable use” of the adhesives described by 11
McGinniss. (See Resp. Br. PO 15). The Requester’s argument is not 12
persuasive. 13
Therefore, we affirm the Examiner’s decision not to adopt Ground 2. 14
15
Ground 3 16
The Requester argues that claims 1–40 should be rejected § 103(a) as 17
being unpatentable over Hying in view of the APA, Toyomura, Duchateau 18
and “the knowledge of a Person of Ordinary Skill in the Art.” As observed 19
above, Hying described securing an acrylic basketball backboard to a 20
basketball backboard frame using double-sided adhesive tape having a 21
viscoelastic foam core. (See FF 5). One of ordinary skill in the art would 22
have been aware that the use of double-sided adhesive tape having a 23
viscoelastic foam core had certain advantages. (See FF 2 & 11). On the 24
other hand, one of ordinary skill in the art would have had reason to seek an 25
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alternative to double-sided tape that was less costly, time-consuming and 1
labor-intensive. (See FF 12). 2
The Requester additionally argues that: 3
Toyomura teaches that double sided adhesive and silicone based 4
adhesives can be used interchangeably, and depending on the 5
use, a skilled artisan would [have] be[en] able to determine the 6
appropriate adhesive or double sided tape for a particular 7
application. Toyomura at 3:60–4:49. Further, Toyomura teaches 8
that a person of skill in the art would [have] know[n] why to 9
choose a silicon[e] adhesive because of its flexibility. Toyomura 10
at 4:1–3. . . . Finally, a specific adhesive that is mentioned by 11
Toyomura as meeting these preferences is “silicone one-part type 12
RTV rubber.” Toyomura 4:9–12. 13
(Request 18). In its Appeal Brief, the Requester points out that Toyomura 14
teaches the use of either double-sided adhesive tape or a non-tape adhesive 15
to bond a terminal box to a solar cell element; additionally points out that 16
Toyomura teaches selecting a silicone based adhesive for this purpose in 17
view of the adhesive’s flexibility; and argues that one of ordinary skill in the 18
art would have had reason to select a silicone based adhesive to bond an 19
acrylic basketball backboard to a basketball backboard frame in order to take 20
advantage of that flexibility. (See App. Br. Req’r 31; see also FF 17 & 18). 21
The Requester cites Duchateau based on its teaching regarding the 22
advantages of using fluid, solvent-free adhesives such as “twin pack” 23
silicone adhesives. (See App. Br. Req’r 31; Request 65 & App’x CC-C at 8; 24
see also FF 27). 25
We find that Duchateau is non-analogous art (see FF 31–34) but 26
Toyomura is not (see FF 22–24). See In re Bigio, 381 F.3d 1320, 1325 (Fed. 27
Cir. 2004) (setting out a two-part test for finding whether prior art is non-28
analogous). Even assuming that both references were within the scope of 29
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prior art applicable to claims 1, 17, 24 and 31, the combined teachings of 1
Hying, Toyomura and Duchateau do not suffice to prove that the subject 2
matter of those claims would have been obvious. 3
The teachings of Toyomura do not prove that one of ordinary skill in 4
the art would have recognized a silicone based adhesive as being 5
interchangeable with double-sided tape for the purpose of forming a bond 6
between a basketball backboard and a basketball backboard frame resistant 7
to basketball impacts such as those described by Hying. (Cf. FF 8 & 9 8
(discussing Hying’s teaching regarding the problem of impact resistance)). 9
Toyomura did not suggest that impact resistance was a significant criterion 10
in designing either a terminal box; or a bond between the terminal box and a 11
solar cell element. (See RAN 8 & 9; see also FF 17–20). Even assuming 12
that Toyomura’s terminal box was designed to withstand the impacts due to 13
environmental factors such as hail, the Requester has not proven that one of 14
ordinary skill in the art of designing and manufacturing basketball 15
backboard assemblies would have equated hail impacts with the impacts of 16
basketball on a basketball backboard. 17
Although Toyomura suggested that double-sided tape having strong 18
shear adhesion and “excellent . . . durability” might be used to bond the 19
terminal box to the solar cell element, Toyomura did not teach the use of 20
tape having a foam core or other structure providing a flexible bond. (See 21
FF 20, quoting Toyomura, col. 4, ll. 43–48). Likewise, although Toyomura 22
expressed a preference for using a silicone based adhesive to bond the 23
terminal box to the solar cell element “in view of flexibility” (see FF 19, 24
quoting Toyomura, col. 4, ll. 2 & 3), Toyomura does not appear to have 25
explained why flexibility was a desirable feature. As such, Toyomura did 26
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not indicate, even indirectly, the degree of flexibility that might be provided 1
by a preferred adhesive. Considering these deficiencies as a whole, 2
Toyomura would not have suggested to one of ordinary skill in the art that a 3
silicone adhesive was interchangeable with double-sided tape having a 4
viscoelastic foam core for purposes of bonding an acrylic basketball 5
backboard to a basketball backboard frame. (See FF 20). 6
Duchateau would not have remedied these deficiencies. The 7
Requester does not argue in the briefs that Duchateau independently teaches 8
the interchangeability of a silicone adhesive and double-sided tape with a 9
foam core for purposes of bonding an acrylic basketball backboard to a 10
support frame. (See App. Br. 31; see also FF 27). Duchateau’s teaching to 11
use a fluid, solvent-free adhesive such as a two component silicone adhesive 12
system would not have addressed the problem of reproducing the desirable 13
properties of double-sided tape with a viscoelastic foam core. The 14
Requester has not explained in a persuasive manner how common 15
knowledge of one of ordinary skill in the art might have remedied the 16
deficiencies of the combined teachings of Hying, Toyomura and Duchateau. 17
Therefore, we affirm the Examiner’s decision not to adopt Ground 3. 18
19
DECISION 20
We AFFIRM the Examiner’s decision not to adopt Grounds 1–3. As 21
such, we AFFIRM the Examiner’s decision favorable to the patentability of 22
claims 1–40. 23
In the event neither party files a request for rehearing within the time 24
provided in 37 C.F.R. § 41.79, and this decision becomes final and 25
appealable under 37 C.F.R. § 41.81, a party seeking judicial review must 26
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timely serve notice on the Director of the United States Patent and 1
Trademark Office. See 37 C.F.R. § 90.1 and 3 C.F.R. § 1.983. 2
3
AFFIRMED 4

THIRD PARTY REQUESTER:

BRADLEY ARANT BOULT CUMMINGS LLP
INTELLECTUAL PROPERTY DEPARTMENT
1819 FIFTH AVENUE NORTH
BIRMINGHAM, AL 35203-2104

PATENT OWNER:

MASCHOFF BRENNAN
1389 CENTER DRIVE, SUITE 300
PARK CITY, UT 84098