Ex Parte 8,038,550 et al

Patent Trial and Appeal Board

Sep 29, 2016

95002377 (P.T.A.B. Sep. 29, 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.
95/002,377 09/14/2012 8,038,550 L1006.10174US08 1740
97149 7590 09/29/2016
Maschoff Brennan
1389 Center Drive, Suite 300
Park City, UT 84098
EXAMINER
ENGLE, PATRICIA LYNN
ART UNIT PAPER NUMBER
3993
MAIL DATE DELIVERY MODE
09/29/2016 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
Third Party Requester and Appellant

v.

Patent of LIFETIME PRODUCTS INC.
Patent Owner and Respondent
________________

Appeal 2015-006303
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Patent US 8,038,550 B21
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 18, 2011 to Larry Stevens (the “’550 patent”). The
’550 patent issued from Application 12/828,660, filed July 1, 2010.
Application 12/828,660 is a continuation of Application 09/228,325, filed
January 11, 1999. (’550 patent (45), (75), (21), (22), (63)). Page 5 of the
“Third Party Requester’s Appeal Brief,” dated October 29, 2014, identifies
litigation and administrative proceedings involving the ’550 patent, its
parent and related patent US 8,033,935 B2.
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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 1–18 and new 3
claims 19–37. (See “Notice of Appeal by Third Party Requester,” dated 4
August 29, 2014). We have jurisdiction over the appeal under pre-AIA 35 5
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 method of 8
constructing a basketball backboard assembly, recited in independent claims 9
1 and 19, would have been obvious under pre-AIA 35 U.S.C. § 103(a).2 10
“One of the ways in which a patent’s subject matter can be proved obvious 11
is by noting that there existed at the time of invention a known problem for 12
which there was an obvious solution encompassed by the patent’s claims.” 13
KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 419–20 (2007). Each of the 14
three grounds of rejection argued in the Requester’s briefs rests on a primary 15
reference describing a basketball backboard assembly including an acrylic 16
basketball backboard bonded to a basketball backboard frame by a double-17
sided adhesive tape with a viscoelastic foam core. The Patent Owner’s 18
witnesses testify that the use of double-sided tape was costly, time 19
consuming and labor-intensive. The difference between the prior art and the 20
claimed subject matter lies in performing the steps of “sandwiching an 21
uncured adhesive between the basketball backboard frame and the acrylic 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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basketball backboard; and curing the adhesive to bond the basketball 1
backboard frame and the acrylic basketball backboard once the adhesive 2
cures,” as recited in claim 1, rather than applying double-sided tape to the 3
basketball backboard frame and pressing the acrylic basketball backboard 4
onto the frame, as described in column 1, lines 42–44 of the ʼ550 patent. 5
The Supreme Court instructs us that, “when a patent claims a structure 6
already known in the prior art that is altered by the mere substitution of one 7
element for another known in the field, the combination must do more than 8
yield a predictable result.” KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 416 9
(2007). Conversely, such a substitution would not have been obvious unless 10
the result of the substitution would have been predictable. It is true that 11
“obviousness cannot be avoided simply by a showing of some degree of 12
unpredictability in the art so long as there was a reasonable probability of 13
success.” Pfizer, Inc. v. Apotex, Inc., 480 F.3d 1348, 1364 (Fed. Cir. 2007). 14
Nevertheless, in order for the Requester to demonstrate that the subject 15
matter of claims 1 and 19 would have been obvious, the Requester must 16
prove that one of ordinary skill in the art had a reasonable expectation of 17
successfully identifying a curable adhesive capable of forming a bond 18
between an acrylic basketball backboard and a basketball backboard frame 19
having the same desirable properties provided by the viscoelastic core of the 20
prior art double-sided tape. 21
Claims 1 and 19 are independent: 22
1. A method of constructing a basketball backboard 23
assembly sized and configured for playing the game of 24
basketball, the method comprising: 25
providing a basketball backboard frame; 26
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providing an acrylic basketball backboard; and 1
connecting the acrylic basketball backboard to the 2
basketball backboard frame by: 3
sandwiching an uncured adhesive between the 4
basketball backboard frame and the acrylic basketball 5
backboard; and 6
curing the adhesive to bond the basketball 7
backboard frame and the acrylic basketball backboard 8
once the adhesive cures; 9
wherein the cured adhesive provides a bond of sufficient 10
strength and flexibility to allow the basketball backboard 11
assembly to be used in the game of basketball. 12
(Resp. Br. PO 23). 13
19. A method of constructing a basketball backboard 14
assembly sized and configured for playing the game of 15
basketball, the method comprising: 16
providing a basketball backboard frame; 17
providing an acrylic basketball backboard; and 18
connecting the acrylic basketball backboard to the 19
basketball backboard frame by sandwiching an uncured adhesive 20
between opposing surfaces of the basketball backboard frame 21
and the acrylic basketball backboard such that the adhesive 22
directly contacts the opposing surfaces; 23
curing the adhesive to bond the opposing surfaces of the 24
basketball backboard frame and the acrylic basketball 25
backboard, the cured adhesive directly contacting the basketball 26
backboard frame and the basketball backboard; 27
wherein the cured adhesive provides a bond of sufficient 28
strength and flexibility to allow the basketball backboard 29
assembly to be used in the game of basketball; and 30
wherein the cured adhesive provides sufficient flexibility 31
in the bond to dissipate impact energy from the basketball 32
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backboard to the basketball backboard frame when a basketball 1
strikes the backboard when playing the game of basketball. 2
(Resp. Br. PO 25). 3
In its briefs, the Requester argues that the Examiner erred by 4
withdrawing three grounds of rejection in the “Right of Appeal Notice,” 5
mailed July 30, 2014 (“RAN”):3 6
Ground 1: Claims 1, 5–10, 13, 14, 19, 21–24, 27 and 28 under 7
§ 103(a) as being unpatentable over the “Admitted Prior Art” 8
(“APA”),4 that is, column 1, lines 22–53 of the ʼ550 patent, in view of 9
“the knowledge of a Person Having Ordinary Skill in the Art;” 10
Ground 2: Claims 1–37 under § 103(a) as being unpatentable 11
over Hying (US 5,839,982, issued Nov. 24, 1998), McGinniss (US 12
4,607,082, issued Aug. 19, 1986) and “the knowledge of a Person 13
Having Ordinary Skill in the Art;” and 14
Ground 3: Claims 1–37 under § 103(a) as being unpatentable 15
over Hying in view of the APA, Toyomura (US 6,207,896 B1, issued 16

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 May 31, 2013. This first “Action Closing
Prosecution” rejected claims 1–37 based on all three grounds listed above.
In the first “Right of Appeal Notice,” mailed December 9, 2013, the
Examiner maintained Grounds 1 and 3, but 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 4, 2014. In the second
“Action Closing Prosecution,” the Examiner withdrew Grounds 1–3 and
provided a “Statement of Reason for Patentability and/or Confirmation.”
The Examiner maintained this position in a second a “Right of Appeal
Notice,” mailed July 30, 2014.
The Examiner’s Answer mailed March 23, 2015, incorporates the
RAN by reference.
4 The abbreviation “AAPA” is inappropriate in this proceeding. The
Respondent is a patent owner and not an applicant.
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Mar. 27, 2001), Duchateau (US 4,422,893, issued Dec. 27, 1983) and 1
“the knowledge of a Person Having Ordinary Skill in the Art.” 2
(“Third Party Requester’s Appeal Brief, dated October 29, 2014 (“App. Br. 3
Req’r”), at 7; see also “Request for Inter partes Reexamination of U.S. 4
Patent 8,038,550,” dated Sept. 14, 2012 (“Request”), at 10–21). 5
The record in this appeal includes the RAN; the Requester’s Appeal 6
Brief, including twelve numbered exhibits; the Patent Owner’s 7
“Respondent’s Brief,” dated January 20, 2015 (“Resp. Br. PO”), including 8
twenty-one exhibits; and the “Third Party Requester’s Rebuttal Brief,” dated 9
April 23, 2015 (“Reb. Br. Req’r”). An oral hearing was held on November 10
19, 2015. Only issues and findings of fact argued in the briefs have been 11
considered. See 37 C.F.R. § 41.67(c)(1)(vii); In re Jung, 637 F.3d 1356, 12
1365 (Fed. Cir. 2011). 13
14
FINDINGS OF FACT 15
The record supports the following findings of fact (“FF”) by a 16
preponderance of the evidence. See Rambus Inc. v. Rea, 731 F.3d 1248, 17
1255 (Fed. Cir. 2013); Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1427 (Fed. 18
Cir. 1988). 19
20
The APA 21
1. The ʼ550 patent teaches that, “[a]s the game of basketball has 22
increased in popularity, a greater number of people have purchased 23
basketball systems for use at their homes.” (‘550 patent, col. 1, ll. 22–24). 24
The ʼ550 patent also teaches that “[c]lear acrylic backboards are becoming 25
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increasingly popular because they resemble professional backboards.” (ʼ550 1
patent, col. 1, ll. 28–30). 2
2. The ʼ550 patent admits it was known that: 3
There are several problems which must be overcome to 4
successfully use an acrylic basketball backboard. First, the 5
backboard must be adequately bonded to a support frame. 6
Second, there must be sufficient flexibility in the bond to 7
dissipate the impact energy from the backboard to the frame. If 8
the bond between the backboard and frame is too rigid, then the 9
backboard can fracture. If the bond is too loose, then the 10
adhesion fails. 11
(ʼ550 patent, col. 1, ll. 31–38). 12
3. The ʼ550 patent teaches that a known solution to these 13
problems was the use of VHB high strength bonding tape, available from 14
3M Company, or NORTON foam tape, available from Saint-Gobain 15
Performance Plastics, to secure acrylic basketball backboards to basketball 16
backboard frames. (ʼ550 patent, col. 1, ll. 39–42; see also RAN 10–11). 17
The Patent Owner’s expert, Dr. Dwight Hoffman, describes the 3M VHB 18
tape as having “a foam core with a high performance pressure-sensitive 19
adhesive . . . on both sides.” (“Declaration of Dr. Dwight Hoffman,” 20
executed Feb. 7, 2013 (“Hoffman Decl.”), reproduced in Exh. B to Resp. Br. 21
PO, at para. 49).5 22
4. Dr. Hoffman further describes the foam core of the 3M VHB 23
tape as viscoelastic, “giv[ing] the foam energy absorbing and stress relaxing 24

5 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.
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properties which provides these tapes with their unique characteristics.” 1
(Id., quoting 3M Industrial Adhesives & Tape Div., 3M VHBTM Tapes (June 2
2011, App’x C to Hoffman Decl.) 3
4
Hying 5
5. Hying describes a prior art basketball backboard assembly 6
including a backboard in the form of a planar acrylic sheet 3 bonded to a 7
welded steel frame 1 by a double-sided adhesive layer (that is, a double-8
sided adhesive tape) 5. (See Hying, col. 2, ll. 10–16; & Figs. 1 & 2). 9
6. Larry Stevens, the named inventor on the ʼ550 patent, describes 10
double-sided tape backboards, such as those described in the APA and 11
Hying, as “the state of the art for assembling basketball backboards.” 12
(“Supplemental Declaration under 37 C.F.R. § 1.132 Traversing Grounds for 13
Rejection,” executed by Larry Stevens on July 26, 2013 (“Supp. Stevens 14
Decl.”), reproduced in Exh. U to Resp. Br. PO, at para. 9). 15
7. Nevertheless, Hying criticizes the use of double-sided tape to 16
secure backboards to support frames because the adhesive used in the 17
double-sided tape might not be strong enough to secure the backboards to 18
the frames for extended periods of time. (See Hying, col. 2, ll. 24–31).6 19
8. Hying also criticizes double-sided tape backboards such as that 20
depicted in Figures 1 and 2 of Hying for leaving the entire peripheral edges 21
of the backboards exposed. Hying teaches that the exposed peripheral edges 22

6 The cited passage criticizes the use of double-sided tape. The
Examiner correctly finds that Hying does not expressly discourage the use of
a curable adhesive to bond an acrylic basketball backboard to a basketball
backboard frame. (See RAN 5 & 6).
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are subject to cracking when basketballs impact the backboards. The 1
reference additionally teaches that these cracks can propagate inwardly from 2
the edges of the backboards, causing the backboards to fail and perhaps 3
shatter, allowing broken pieces of the backboards to fall on the players. (See 4
Hying, col. 2, ll. 31–37). 5
9. Hying addresses these problems by teaching the use of extruded 6
channel members to mechanically secure the peripheral edges of an acrylic 7
basketball backboard. More specifically, Hying teaches engaging peripheral 8
edges of an acrylic basketball backboard 11 and frame members 23, 24 in 9
parallel slots 60, 65 in the channel members 13. The slots 60, 65 are spaced 10
to provide a clearance “t” between the Backboard 11 and the frame members 11
23, 24. (See Hying, col. 7, ll. 31–44 & 56–63; col. 8, ll. 17–27; & Figs. 7 & 12
7A). Due to the geometry of the frame member 13 and the rigidity of the 13
material from which it is extruded: 14
The amount of inward flexure of the [basketball backboard 11] 15
is limited and controlled by the inner frame 26 to be 16
approximately equal to the amount of clearance space “t.” . . . 17
Thus, clearance space “t” allows the [basketball backboard] 11 18
to flex across its entire unsupported surface area when struck by 19
a basketball, thereby providing greater impact resistance as 20
compared to prior art backboards that bond acrylic sheets directly 21
to the frame structure using double sided tapes or adhesives.7 22

7 Hying’s reference to “double sided tapes or adhesives” does not imply
that curable 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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(Hying, col. 8, ll. 35–47). 1
2
The Problem with which the Named Inventor was Involved 3
10. Mr. Stevens, the named inventor on the ʼ550 patent, explains 4
why the double-sided tape was used to bond acrylic basketball backboards to 5
basketball backboard frames: 6
The double-sided tape was used because it adhered to the two 7
very different types of materials used to construct the backboard 8
assembly—the acrylic used to make the backboard and the 9
powder-coated metal frame. The double-sided tape also had the 10
characteristics and properties required to make a basketball 11
backboard assembly that allowed it to be used to play the game 12
of basketball. For example, the double-sided tape allowed the 13
brittle acrylic backboard to be attached to the rigid metal frame. 14
In addition, the double-sided tape accommodated the differences 15
in the coefficients of thermal expansion of the different materials 16
that caused the materials to expand and contract at different rates 17
under temperature changes, which was very important because 18
basketball backboards are frequently used outdoors in all types 19
of environments. Further, the double-sided tape provided 20
cushioning between the backboard and frame to prevent the 21
backboard from cracking or shattering upon impact of a 22
basketball. The foam core of the double-sided tape provided 23
many of these required characteristics and properties. 24
(“Declaration under 37 C.F.R. § 1.132 Traversing Grounds for Rejection,” 25
executed by Larry Stevens on Feb. 1, 2013 (“Stevens Decl.”), reproduced in 26
Exh. U to Resp. Br. PO, at para. 7). Mr. Stevens’s testimony is consistent 27
with the teachings of Hying and the APA. (See FF 2 & 5). Both the Patent 28
Owner and Mr. Stevens emphasize the role of the viscoelastic foam core of 29
the double-sided tape in satisfying the requirements of flexibility and of 30
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accommodating different rates of thermal expansion by the bonded 1
materials. (See Stevens Decl., para. 7; Resp. Br. PO 6 & 7). 2
11. One of ordinary skill in the art would have had reason to seek 3
an alternative to double-sided tape backboards. Both Mr. Stevens and 4
Richard Hendrickson, another of the Patent Owner’s witnesses, testify that 5
the use of double-sided tape to secure backboards to support frames was 6
expensive, time-consuming and labor-intensive. (See Stevens Decl., para. 8; 7
“Declaration under 37 C.F.R. § 1.132 Traversing Grounds for Rejection,” 8
executed by Richard Hendrickson on Feb. 8, 2013 (“Hendrickson Decl.”), 9
reproduced in Exh. I to Resp. Br. PO, at para. 5; see also “Declaration under 10
37 C.F.R. § 1.132 Traversing Grounds for Rejection,” executed by David C. 11
Winter on Jan. 10, 2013 (“Winter Decl.”), reproduced in Exh. U to Resp. Br. 12
PO, at para. 7; ʼ550 patent, col. 1, ll. 45–50). Because double-sided tape 13
backboards were “the state of the art for assembling basketball backboards” 14
as of the effective filing date of the ʼ550 patent (Supp. Stevens Decl., para. 15
9), one may infer that one of ordinary skill in the art would have been aware 16
of these manufacturing problems as of the effective date of the ʼ550 patent. 17
12. Mr. Stevens sought to reduce the cost and labor-intensity of 18
manufacturing basketball backboard assemblies by finding alternative means 19
for securing basketball backboards to support frames. Among the 20
alternatives considered by Mr. Stevens were fasteners and adhesives. 21
(Stevens Decl., paras. 8 & 9). Ultimately, Mr. Stevens engaged in a series of 22
experiments in an effort to identify a suitable curable adhesive that would 23
provide sufficient adhesion, cushioning and impact resistance over a suitable 24
temperature range. (See generally Stevens Decl., paras. 11 & 12). 25
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McGinniss 1
13. 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. at col. 9, ll. 40–47). 20
14. McGinniss describes a family of structural adhesives containing 21
specialized, toughened acrylic compounds. (McGinniss, col. 2, ll. 6–8).8 22
The family includes adhesives comprising ethylenically unsaturated (e.g., 23
acrylic) functionality attached to a silicone rubber or the like. (McGinniss, 24
col. 10, ll. 46–59; see also id. at col. 9, ll. 31–39). McGinniss teaches 25

8 A “structural adhesive” is “an adhesive ‘[w]hose 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)).
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providing the structural adhesive in a two-package system with a peroxide 1
curing agent and an activator so that the system cures rapidly when the two 2
packages are mixed. (McGinniss, col. 11, ll. 11–19). 3
15. McGinniss teaches that “such second generation adhesives are 4
toughened plastics which have been toughened by a variety of mechanisms.” 5
(McGinniss, col. 9, ll. 43–45). “Toughness” is a measure of the ability of a 6
polymer to absorb energy and, if necessary, plastically deform without 7
breaking. (See MCGRAW-HILL DICTIONARY OF SCI. & TECH. TERMS (4th 8
edition 1989) (“toughness”); see also E.M. Petrie, HANDBOOK OF 9
ADHESIVES & SEALANTS 330 (McGraw-Hill Cos. 2000) (“Petrie”), 10
reproduced in part in Exh. 3 to App. Br. Req’r). Hence, as the Requester 11
correctly argues, “McGinniss discloses a ‘curable’ silicone adhesive . . . that 12
is both strong and ‘toughened’ for flexibility.” (App. Br. Req’r 19). 13
14
Toyomura 15
16. Toyomura describes “conventionally known solar cell modules 16
formed by sealing a solar cell element with a resin on a reinforcing plate 17
such as a steel plate or a glass plate and covering them with a protective 18
film.” (Toyomura, col. 1, ll. 11–14). Waterproof terminal boxes adhered to 19
the back surfaces of the solar cell modules by means of “silicone sealants” 20
protected the output terminals of the modules. (Toyomura, col. 1, ll. 18–20). 21
One problem with these conventionally known solar cell modules was the 22
tendency of the terminal boxes to separate from the modules due to peeling 23
at the interfaces between the terminal boxes and the adhesives. (Toyomura, 24
col. 1, ll. 22–26). Toyomura addressed this problem by altering the 25
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geometry of the corners of the terminal boxes. (Toyomura, col. 1, ll. 59–67; 1
col. 2, l. 59 – col. 3, l. 4). 2
17. Toyomura teaches that the terminal box may be adhered to the 3
solar cell module using either a curable silicone sealant or a double-sided 4
tape. Toyomura suggests the choice of a silicone adhesive or sealant “in 5
view of flexibility.” (Toyomura, col. 4, ll. 2 & 3). Toyomura does not 6
appear to discuss why flexibility is a consideration in selecting the adhesive. 7
18. 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. 15
19. For these reasons, Toyomura does not teach that a silicone 16
adhesive, or other curable adhesive, is interchangeable with a double-sided 17
tape having a flexible core for the purpose of providing bond strength as 18
well as flexibility to accommodate impacts and differential thermal 19
expansion of the bonded parts. 20
20. The Examiner finds that Toyomura is non-analogous art. (See 21
RAN 7). Toyomura is not non-analogous art because it is reasonably 22
pertinent to the problem with which the named inventor, Mr. Stevens, was 23
involved. 24
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21. The problem with which the named inventor was involved, as 1
described both in the ʼ550 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 10–12; see also 5
ʼ550 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
22. 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 curable silicone adhesive, “in view of flexibility,” for use in 12
bonding and sealing a terminal box to a solar cell module. (Toyomura, col. 13
4, ll. 2 & 3). Toyomura also teaches that a silicone adhesive may be chosen 14
to provide a short curing time, thereby accelerating production. (Toyomura, 15
col. 4, ll. 4–8). These teachings imply that Toyomura is reasonably pertinent 16
to the problem with which the named inventor was involved. 17
18
Duchateau 19
23. Duchateau describes a technique for manufacturing large, heavy 20
mirrors comprising thin glass elements with reflective coatings secured to a 21
substantially rigid, unitary support. (See Duchateau, col. 1, ll. 21–29; col. 6, 22
ll. 25–34; & Figs. 4–6). 23
24. More specifically, Duchateau teaches laying the plurality of 24
glass elements 28 with reflective coatings on a form 30. Double-sided 25
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adhesive tape 31 is applied along the joint lines of the glass elements 28 to 1
hold the elements in place; to mask the uncoated faces of the elements; and 2
to temporarily bond the elements to the form 30. (See Duchateau, col. 6, ll. 3
36–42 & 47–50; & Fig. 7; see also id., col. 2, ll. 37–49). A layer 36 of 4
adhesive is applied to a base of the support 32. The support 32 then is 5
lowered onto the glass elements 28 to bond the elements to the support. (See 6
Duchateau, col. 6, ll. 44–47 & Fig. 7). 7
25. One type of adhesive suitable for forming the layer 36 is a two 8
component, silicone adhesive. (See Duchateau, col. 2, ll. 58–62 & col. 5, ll. 9
9–12). Typically, a two component adhesive is curable. (Cf. McGinniss, 10
col. 11, ll. 11–23 (describing the application and curing of a two package 11
adhesive system)). Preferably, the adhesive is weatherproof. (See 12
Duchateau, col. 5, ll. 3 & 4). In addition, Duchateau teaches that, “for ease 13
of application, such adhesive [preferably] is a fluid adhesive, and in order to 14
avoid problems arising due to the escape of vapor from the adhesive as it 15
sets, it is particularly preferred to use an adhesive of the non-solvent type.” 16
(Duchateau, col. 5, ll. 4–9). 17
26. The Examiner correctly finds that Duchateau does not teach 18
substituting a curable adhesive for double-sided tape for any purpose, as the 19
Requester had argued in the past. (See RAN 7; Request 44). Duchateau 20
teaches using double-sided tape to form a weak, temporary bond to hold the 21
glass elements in place on a form; and teaches using the curable adhesive to 22
form a permanent bond between the elements and a support. Duchateau 23
does not teach that the two types of adhesive are interchangeable—they are 24
used for different purposes. (See RAN 7). 25
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27. The Examiner correctly finds that Duchateau is non-analogous 1
art. (See RAN 7). As the Patent Owner correctly points out, the field of 2
endeavor of the ʼ550 patent is the design and manufacture of basketball 3
backboards. (See Resp. Br. PO 18). This finding is supported by the 4
description of the problem addressed by the ʼ550 patent, which appears at 5
column 1, lines 22–53 of the patent. As the Requester correctly points out 6
(see App. Br. Req’r 25), the ʼ550 patent says at one point that the “present 7
invention relates to a system and method for bonding an acrylic surface to a 8
frame.” (ʼ550 patent, col. 1, ll. 14 & 15). The patent also includes narrower 9
statements, such as “the present invention is directed to a system and method 10
for adhesively bonding an acrylic basketball backboard to a frame structure” 11
(ʼ550 patent, col. 1, ll. 15–18); and the “present invention relates to an 12
acrylic basketball backboard assembly and to a method of bonding an acrylic 13
basketball backboard to a frame structure” (id., col. 1, ll. 59–61 & col. 2, ll. 14
39–41). The patent discusses adhesives only in the context of bonding 15
acrylic basketball backboards to basketball backboard frames. Considering 16
the patent as a whole, the field of endeavor relates to the design and 17
manufacture of basketball backboard assemblies rather than to adhesives or 18
adhesive bonds in general. Adhesives are a solution to the problem that the 19
claimed subject matter addresses, not the field in which the problem arises. 20
28. Duchateau describes a method for manufacturing a large mirror 21
rather than a basketball backboard assembly. Duchateau is not within the 22
field of endeavor relating to the design and manufacture of basketball 23
backboard assemblies. 24
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29. Neither is Duchateau reasonably pertinent to the particular 1
problem with which the named inventor was involved. As explained earlier, 2
the problem with which the named inventor was involved, as described both 3
in the ʼ550 patent itself and Mr. Stevens’ testimony, was to reduce the cost 4
and labor-intensity of manufacturing basketball backboard assemblies by 5
finding an alternative to double-sided adhesive tape for securing basketball 6
backboards to support frames. (See FF 10–12; see also ʼ550 patent, col. 1, 7
ll. 22–53). The alternative had to provide sufficient strength and flexibility 8
to allow a brittle acrylic backboard to be attached to a rigid frame. (See id.) 9
Duchateau does not say anything of significance about either a need for 10
flexibility in the bond between the glass elements and the support of the 11
mirror; or about the ability of any adhesive, such as a silicone adhesive, to 12
provide such flexibility. 13
30. The Requester has not shown that the structures of the 14
honeycomb mirrors described in Gray, 6.5-m MMT Mirror Support Load 15
Spreader Gluing: Summary of Problems, Investigations and Solutions 16
(bearing a revision date of July 21, 1995) (“Gray”), cited at page 32 of the 17
Requester’s Appeal Brief and reproduced in Exhibit 12 to that Brief, are so 18
similar to the structure of Duchateau’s mirrors that the teachings of Gray 19
would have suggested to one of ordinary skill in the art that Duchateau was 20
relevant to the problem addressed by the claimed subject matter. Gray 21
describes adhering load spreaders to a mirror rather than adhering reflective 22
elements to a support. 23
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Level of Ordinary Skill in the Art 1
31. The Patent Owner argues that the Examiner set the level of 2
ordinary skill in the art too high prior to re-opening prosecution in April 3
2014. (See Resp. Br. PO 8 & 9). The Patent Owner’s witness, Mr. Winter, 4
correctly identifies one of ordinary skill in the art as having had “a Bachelor 5
of Science in mechanical engineering or a Bachelor of Science in 6
manufacturing engineering with several years of experience in . . . the 7
basketball area.” (Winter Decl., reproduced in Exh. U to Resp. Br. PO, at 8
para. 4). 9
32. Winter’s description of the educational background and 10
experience of one of ordinary skill in the art is consistent with the 11
backgrounds of those of the Patent Owner’s witnesses who testify to 12
experience with the design or manufacture of basketball backboard 13
assemblies, including Messrs. Stevens, Winters and Nye. (See Steven Decl., 14
reproduced in Exh. U to Resp. Br. PO, at paras. 1 & 3; Winter Decl., paras. 1 15
& 2; “Declaration under 37 C.F.R. § 1.132 Traversing Grounds for 16
Rejection,” executed by S. Curtis Nye on Jan. 10, 2013 (“Nye Decl.”), 17
reproduced in Exh. J to Resp. Br. PO, at para. 7). 18
33. Winter’s description of the educational background and 19
experience of one of ordinary skill in the art also is consistent with the 20
teachings of Hying. Hying addressed the problem of backboard failure due 21
to cracks propagating into the backboards from the peripheral edges by 22
mechanically securing the peripheral edges of an acrylic basketball 23
backboard (see FF 8 & 9) rather than through the use of adhesives. 24
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34. The Requester has not proven that one of ordinary skill in the 1
art would have had a high level of knowledge regarding the selection of 2
adhesives and the design of adhesive joints. In particular, the Requester has 3
not shown that an engineer holding a bachelor’s degree in mechanical or 4
manufacturing engineering would have had a high level of skill, experience 5
or training in the fields of chemistry, polymer science or adhesive science. 6
(See Winter Decl., para. 4). Although the named inventor, Mr. Stevens, had 7
prior knowledge and training in adhesive bonding technologies (see Stevens 8
Dec., para. 2), neither Mr. Winters, Mr. Nye nor Cliff Holstein, another of 9
the Patent Owner’s experts, testifies to any prior education or experience in 10
the fields of polymer chemistry or adhesives. 11
35. The Requester argues that J. Shigley et al., MECHANICAL 12
ENG’RING DESIGN (McGraw-Hill Cos., 6th edition 2001)(“Shigley”), 13
reproduced in part in Exh. 4 to App. Br. Req’r, provides evidence “showing 14
that the mechanical performance of adhesives [were] well known.” (App. 15
Br. Req’r 12 & 13). Shigley teaches that: 16
In spite of a number of attractive features associated with the use 17
of adhesives either alone or in combination with traditional 18
fastening methods, design methods have not been widely 19
incorporated into engineering design courses. In part this arises 20
because of some of the complications associated with the various 21
types of joints and the difficulty in establishing design 22
procedures that can be universally applied. 23
(Id. at 563). In other words, students studying mechanical and 24
manufacturing engineering were not taught the design of adhesive bonds 25
because of the unpredictable nature of such bonds. 26
36. The Requester also argues that the pages entitled 27
“Fundamentals of Engineering (FE) Exam Morning Session Specifications” 28
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(effective October 1996) and “Fundamentals of Engineering (FE) Exam 1
Afternoon Session Specifications” (effective October 1996), reproduced in 2
Exh. 5 to App. Br. Req’r, provide evidence “showing that the mechanical 3
performance of adhesives [were] well known.” (App. Br. Req’r 12 & 13). 4
The documents themselves do not support this argument. The first of the 5
two pages does not list adhesives or the design of adhesive bonds among the 6
topics on which all the examinees were to be tested. The second of the two 7
pages does not list adhesives or the design of adhesive bonds among the 8
subjects on which examinees in the mechanical engineering field were to be 9
examined. 10
37. In its Respondent Brief, the Patent Owner argues that, “in this 11
case, VHB double-sided tape was carefully selected because of its special 12
properties and unique characteristics that allowed it to be used in connection 13
with basketball backboards.” (Resp. Br. PO 10). The Patent Owner 14
continues on, arguing that, “here VHB double-sided tape was particularly 15
selected for its working environment because the foam core provided the 16
required cushioning, flexibility, energy absorption, impact resistance, etc. 17
between the backboard and the frame that allowed a basketball backboard 18
for playing the game of basketball to be constructed.” (Id.) The Requester 19
argues that at least the first of these statements is an admission that one of 20
ordinary skill in the art “was capable of selecting adhesives based on the 21
presence of” the qualities provided by the viscoelastic core of the VHB tape, 22
“(as had been done in selecting the prior art VHB tape).” (Reb. Br. Req’r 6; 23
see also id. 11). There is no evidence in the record as to how the prior art 24
VHB tape was identified as a candidate to bond acrylic basketball 25
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backboards to basketball backboard frames. Given the overall thrust of the 1
Patent Owner’s argument, we do not interpret these statements as an 2
admission that one of ordinary skill in the art had sufficient skill based on 3
education and experience to select a suitable curable adhesive as a substitute 4
for double-sided tape. 5
38. Neither the Requester’s polymer chemistry expert, Dr. Maureen 6
Reitman, nor the Patent Owner’s polymer chemistry expert, Dr. Hoffman, 7
testifies to any experience designing or manufacturing basketball backboard 8
assemblies prior to the effective filing date of the ʼ550 patent. (See 9
generally Reitman Decl., reproduced in Exh. 8 to App. Br. Req’r, at paras. 10
1–7; Hoffman Decl., reproduced in Exh. B to Resp. Br. PO, at paras. 3–15). 11
For this reason, we discount Dr. Reitman’s testimony that one of ordinary 12
skill in the art might have had a bachelor’s degree in chemistry, chemical 13
engineering or polymer science. (See Reitman Decl., para. 9). The 14
backgrounds of Dr. Reitman and Dr. Hoffman are not probative of the level 15
of ordinary skill in the pertinent art. Likewise, despite the Requester’s 16
argument to the contrary (see App. Br. Req’r 12), the teachings of Petrie, 17
reproduced in Exh. 3 to App. Br. Req’r, are not probative of the level of 18
ordinary skill in the pertinent art. Those teachings have not been shown to 19
reflect the knowledge of one educated in mechanical or manufacturing 20
engineering, having experience in the design and manufacture of basketball 21
backboard assemblies. 22
39. Dr. Hoffman testifies that, “[a]s a general reference describing 23
the state of the relevant art of adhesive technology at approximately the time 24
of invention, I relied upon” Petrie. (Hoffman Decl., para. 17). This 25
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testimony does not persuade us that one of ordinary skill in the art was 1
knowledgeable in adhesive technology, or that the field of endeavor was 2
adhesive technology, any more than the testimony of Dr. Reitman does. The 3
Requester has not shown that the Patent Owner has vouched for this 4
testimony, or that the Patent Owner is required to do so. The testimony of 5
Mr. Winter as to the level of ordinary skill in the art is more persuasive than 6
the testimony of Dr. Hoffman. Mr. Winter credibly testifies to involvement 7
in the design and manufacture of basketball backboard assemblies prior to 8
the effective date of the ʼ550 patent. (See Winter Decl., paras. 2, 7 & 8). 9
Dr. Hoffman does not. 10
40. Even though one of ordinary skill in the art lacked a high level 11
of understanding concerning adhesives by virtue of education or experience, 12
one of ordinary skill in the art would have had reason to contemplate 13
whether a curable adhesive could be used to secure an acrylic basketball 14
backboard to a basketball backboard frame. For example, Mr. Stevens 15
admits that other engineers had experimented before him with the use of 16
adhesives to secure basketball backboards to basketball backboard frames. 17
(See Stevens Decl., para. 9). 18
41. In addition, the Requester cites several prior art patents teaching 19
the use of adhesive layers for bonding various components of basketball 20
backboard assemblies to each other. (See App. Br. Req’r 12).9 For example, 21

9 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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Shaffer (US 4,478,415, issued Oct. 23, 1984) describes a composite 1
basketball backboard including a substrate 15 fabricated from a reconstituted 2
wood product covered on at least its front side by a polyacrylate shell 3
member 20. (See Shaffer, col. 3, ll. 19–27, 38–42 & 50–54; & Figs. 3 & 4). 4
Shaffer teaches bonding the shell member 20 to the substrate 15 by means of 5
a synthetic resin glue. (See Shaffer, col. 3, l. 67 – col. 4, l. 4). Shaffer 6
teaches the use of an adhesive in fabricating a basketball backboard. It does 7
not teach bonding an acrylic basketball backboard to a basketball backboard 8
frame. Nevertheless, it indicates that one of ordinary skill in the art would 9
have had at least a general awareness of adhesives and knowledge that 10
adhesives were used for at least some purposes in constructing basketball 11
backboard assemblies. 12
42. Mahoney (US 4,377,283, issued Mar. 22, 1983) describes using 13
a combination of adhesive and mechanical fasteners to secure a heavy, 14
transparent, acrylic support or back-up plate 30 to a PLEXIGLAS (that is, an 15
acrylic) polymer basketball backboard 14. (See Mahoney, col. 2, ll. 34–37; 16
col. 2, l. 58 – col. 3, l. 3; col. 3, ll. 19–22; col. 4, ll. 20–33; & Fig. 2). 17
Mahoney’s support plate 30 reinforces the lower portion of the acrylic 18
basketball backboard 14 against shattering if a player grabs or becomes 19
hooked on a rim section 18. (See Mahoney, col. 2, ll. 38–49). Mahoney 20
does not teach bonding an acrylic basketball backboard to a basketball 21
backboard frame. Nevertheless, Mahoney, like Shaffer, indicates that one of 22
ordinary skill in the art would have had at least a general awareness of 23
adhesives and knowledge that adhesives were used for at least some 24
purposes in constructing basketball backboard assemblies. 25
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43. The Requester at page 11 of its Appeal Brief urges us to adopt 1
the Examiner’s prior finding that: 2
Based on all the information from the Declaration of David 3
Winter, Dr. Maureen Reitman and [Shigley], . . . a person of 4
ordinary skill in the basketball manufacturing design (as defined 5
by David C. Winter) would [have] work[ed] with a chemist, 6
material scientist or process engineer (as defined by Dr. Maureen 7
Reitman). Therefore, the definition of ordinary skill when 8
addressing the problem of adhering acrylic with metal would 9
[have] be[en] an interdisciplinary team with knowledge of 10
basketball and adhesives. 11
(“Right of Appeal Notice,” mailed December 9, 2013, at 24). The Examiner 12
did not repeat this finding in the RAN. 13
44. To the extent that one of ordinary skill in the art would have 14
had reason to contemplate whether a curable adhesive could be used to 15
secure an acrylic basketball backboard to a basketball backboard frame, he 16
or she would have had reason to consult “product information, data sheets 17
and/ or technical service personnel from the suppliers of commercially 18
available adhesives to determine if any off-the-shelf adhesives could be 19
purchased that fit within the engineering and business parameters of a 20
design.” (Reitman Decl., para. 13). Mr. Stevens himself consulted a sales 21
representative for an adhesives company before he began his course of 22
experiments to discover if a suitable adhesive could be found. (See Stevens 23
Decl., para. 10). 24
45. On the other hand, there is no persuasive evidence that one or 25
more mechanical engineers ever worked in an interdisciplinary team with 26
one or more chemists, material scientists or polymer scientists to design a 27
basketball backboard assembly, or a process for manufacturing such an 28
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assembly, prior to the effective filing date of the ʼ550 patent. The Examiner 1
quoted two passages from a mechanical engineering text as support for the 2
finding that one of ordinary skill in the art was an interdisciplinary team. 3
(See “Right of Appeal Notice,” mailed December 9, 2013, at 23 & 24, 4
quoting Shigley 574 & 576). Although Shigley in these passages, as well as 5
in the introductory passage on page 563 of Shigley, suggests that some 6
adhesive bonds might have been designed by interdisciplinary design teams, 7
Shigley does not demonstrate that such design teams represented the level of 8
ordinary skill in the art of designing and manufacturing basketball 9
backboard assemblies.10 10
46. One of ordinary skill in the art would have been aware, at least 11
in general terms, that curable adhesives, elastomeric adhesives and silicone 12
adhesives were available for sale as of the effective filing date of the ʼ550 13
patent. To the extent that one of ordinary skill in the art did not acquire this 14
information as a result of education or experience, this knowledge could 15
have been acquired by consulting product information, data sheets or 16
technical service personnel from the suppliers of commercially available 17
adhesives. 18
47. On the other hand, the Requester has not proven that technical 19
service personnel could have directed one of ordinary skill in the art to a 20
curable adhesive having the same bond strength and flexibility properties as 21

10 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 &
9; Reb. Br. Req’r 11).
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double-sided adhesive tape with a viscoelastic core. Mr. Stevens testifies 1
that, when he began testing adhesives, he “spoke with a sales representative 2
for one of the adhesives companies used by [the Patent Owner] to ask about 3
potential adhesives. [He recalls the Patent Owner’s] representative from 3M 4
[told him] that [he] would never be able to replace the VHB® tape.” 5
(Stevens Decl., para. 10). The Requester has not cited to persuasive 6
evidence that a sales representative could have identified a curable adhesive 7
capable of reproducing the desirable properties provided by the viscoelastic 8
foam core of the double-sided tape used to bond acrylic basketball 9
backboards to basketball backboard frames. 10
11
ANALYSIS 12
Ground 1 13
The Requester argues that claims 1, 5–10, 13, 14, 19, 21–24, 27 and 14
28 should be rejected § 103(a) as being unpatentable over the APA in view 15
of “the knowledge of a Person Having Ordinary Skill in the Art.” The APA 16
teaches that it was known to secure acrylic basketball backboards to 17
basketball backboard frames using double-sided adhesive tape having a 18
viscoelastic foam core. (See FF 1 & 3). The APA also teaches that the use 19
of double-sided adhesive tape having a viscoelastic foam core had certain 20
advantages (see FF 2 & 10), but that one of ordinary skill in the art would 21
have had reason to seek an alternative which was less costly, time-22
consuming and labor-intensive (see FF 11). The Requester appears to have 23
summarized “the knowledge of a Person Having Ordinary Skill in the Art” 24
in the Request: 25
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Patent Owner states that “Suitable silicone adhesive has been 1
obtained from General Electric (D1-SEA 210) and from Dow 2
Corning (Q3-6093). The commercially available silicone 3
adhesive includes dimethylpolysiloxane as a primary ingredient. 4
. . .” ʼ550 patent at 2:64–67. The ʼ550 patent also states that 5
“Various elastomeric adhesives were tested from the following 6
manufacturers: Ashland, Ciba-[Geigy], [DAP], Devcon, Dow 7
Corning, [Ellsworth], General Electric, [GOOP], [HYSOL], 8
H.B. Fuller, and Resin [Technology] Group.” ̓ 550 patent at 5:1–9
4. Patent Owner is stating that commercial adhesives were 10
purchased from a manufacturer and subsequently used for the 11
intended purpose of the adhesive. To summarize, the only 12
portion of the claims of the ʼ550 patent that are not part of the 13
admitted prior art is the use of silicone or elastomeric adhesives. 14
However, these silicone or elastomeric adhesives were merely 15
purchased, and therefore are necessarily known in the art. 16
(Request 12–13; see also id., CC-A at second page (“[I]f a product is 17
commercially available, it necessarily is known in the art.”)). 18
One of ordinary skill in the art would not have had a reasonable 19
expectation of successfully identifying a curable adhesive11 capable of 20
forming a bond between an acrylic basketball backboard and a basketball 21
backboard frame, having the same desirable properties provided by the 22
viscoelastic core of the prior art double-sided tape. In order to have a 23
reasonable expectation that a curable adhesive might be substituted 24
successfully for the double-sided tape, one of ordinary skill in the art would 25

11 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 15–17).
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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have required a reasonable degree of confidence that the curable adhesive 1
could reproduce the desirable properties of the viscoelastic foam core of the 2
tape. 3
There was a “division of labor” in the prior art tape: The pressure-4
sensitive adhesive provided the ability to adhere to different materials as 5
well as a certain degree of bond strength. The foam core provided 6
flexibility and the capacity to accommodate differential thermal expansion 7
by the two bonded materials. (See FF 3, 4 & 10). In order to modify the 8
prior art method described by the APA or Hying so as to satisfy claim 1 or 9
claim 19, one of ordinary skill in the art would have had to identify a curable 10
adhesive system which, when solidified, would have combined all of these 11
properties in a single bond. The Requester has not proven that one of 12
ordinary skill in the art would have had a reasonable expectation that such an 13
adhesive system existed. 14
The Requester has shown that one of ordinary skill in the art would 15
have had reason to contemplate the possibility of using a curable adhesive to 16
bond an acrylic basketball backboard to a basketball backboard frame. (See 17
FF 40–42, 44 & 46). On the other hand, the Requester has not proven that 18
one of ordinary skill in the art would have had a sufficient level of education 19
and experience regarding the selection of adhesives and the design of 20
adhesive joints to identify a curable adhesive system which, when solidified, 21
would have combined all of the desirable properties offered by the 22
combination of the adhesive layers and viscoelastic foam core of the double-23
sided tape then prevalent. (See FF 34). Product information and data sheets 24
would have provided one of ordinary skill in the art information regarding at 25
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least some of the commercially-available adhesive systems, including two-1
package silicone elastic systems. (See FF 44). Nevertheless, the Requester 2
has not proven that the available product information and data sheets would 3
have provided one of ordinary skill in the art sufficient information to 4
identify an adhesive, or a class of adhesives, reasonably likely to succeed in 5
providing a bond combining all of the desirable properties provided by 6
double-sided tape to justify further experimentation. Neither has the 7
Requester proven that technical service personnel from a supplier could have 8
provided useful guidance toward identifying a suitable adhesive reasonably 9
likely to replicate the desired bond properties. (See FF 47). 10
The Requester argues that a product data sheet for LEXAN 9030 11
sheet, reproduced in Exhibit 6 to the Requester’s Appeal Brief, is evidence 12
that a silicone adhesive such as D1-SEA 210 silicone adhesive12 was a 13
known substitute for VHB adhesive tape. (See App. Br. Req’r 13). LEXAN 14
9030 sheet is a polycarbonate sheet material. As the Requester points out, 15
polycarbonate was a known material for fabricating basketball backboards. 16
(See App. Br. Req’r 13, citing Hying, col. 3, ll. 26–28). The product data 17
sheet teaches that the “use of adhesives and tape to bond Lexan 9030 sheet 18
to other materials is now universal and offers [a] technique that is one of the 19
most efficient and economical methods of joining components.” (Exh. 6 to 20
App. Br. Req’r, Bates No. RUSS00067869). A table entitled “Adhesive 21

12 The ʼ550 patent identifies D1-SEA 210 silicone adhesive as a
preferred curable adhesive for use in bonding an acrylic basketball
backboard to a basketball backboard frame. (See ʼ550 patent, col. 2, ll. 64 &
65). D1-SEA 210 silicone and its properties are described in more detail in a
data sheet reproduced in Exhibit 2 to the Requester’s Appeal Brief.
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Selection Chart for Lexan® polycarbonate sheet products” lists both SEA 1
210 silicone adhesive, available from GE Silicones, and “VHB range” tape, 2
available from 3M Company, for joining LEXAN sheet to plastics, glass and 3
metals. (Id.) 4
On the other hand, the Patent Owner correctly points out that the same 5
product data sheet teaches “[i]t is vitally important to select the adhesive or 6
tape carefully ensuring its compatibility with Lexan 9030 sheet being used 7
and [the] working environment.” (Resp. Br. PO 9, quoting Exh. 6 to App. 8
Br. Req’r, Bates No. RUSS00067869). The product data sheet does not 9
describe in detail in what sense D1-SEA 210 silicone adhesive and VHB 10
double-sided tape might serve as alternative means for bonding LEXAN 11
9030 sheet to other plastic, glass or metal materials. In particular, the 12
product data sheet does not suggest that either VHB tape or D1-SEA 210 13
silicone adhesive might provide a bond with sufficient flexibility to provide 14
impact resistance or to accommodate differential thermal expansion. Thus, 15
in the words of the Patent Owner, the product data sheet “provides no 16
indication that an adhesive would have the required special properties and 17
unique characteristics, or that an adhesive could be used to bond a backboard 18
to a frame in the working environment of a basketball backboard.” (Resp. 19
Br. PO 10). The product data sheet does not demonstrate that any curable 20
adhesive was a known substitute to double-sided tape with a viscoelastic 21
foam core. 22
The Requester also argues that three decisions by the predecessor of 23
our reviewing court, In re Borregard, 439 F.2d 206, 208–09 (CCPA 1971); 24
In re Hill, 408 F.2d 754, 757 (CCPA 1969); and In re Field, 255 F.2d 409, 25
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412 (CCPA 1958), compel us to find that the selection of a suitable adhesive 1
would have been a matter of mere design choice, even without the citation of 2
prior art as supporting evidence. (See App. Br. Req’r 13 & 14; Reb. Br. 3
Req’r 13). A review of these three decisions indicates that the applicable 4
language in each reflected the court’s adoption of a finding of fact rather 5
than a conclusion of law by the court. Findings of fact are dependent on the 6
totality of the record in a particular case. See, e.g., In re Chu, 66 F.3d 292, 7
298–99 (Fed. Cir. 1995); cf. Randall Mfg. v. Rea, 733 F.3d 1355, 1362–63 8
(Fed. Cir. 2013) (“In recognizing the role of common knowledge and 9
common sense, [our reviewing court has] emphasized the importance of a 10
factual foundation to support a party’s claim about what one of ordinary skill 11
in the relevant art would have known.”)). Findings made on the record in 12
one case are not binding when confronted by a different record in a different 13
case. 14
Here, the record indicates that the choice of a suitable adhesive was 15
not a mere matter of design choice. One of ordinary skill in the art would 16
not have had a reasonable expectation of successfully identifying a curable 17
adhesive capable of forming a bond between an acrylic basketball backboard 18
and a basketball backboard frame, having the same desirable properties 19
provided by the viscoelastic core of the prior art double-sided tape. 20
The Requester argues that the limitation “wherein the cured adhesive 21
provides a bond of sufficient strength and flexibility to allow the basketball 22
backboard assembly to be used in the game of basketball,” as recited in 23
claims 1 and 19, should be construed broadly to include basketball games in 24
which the backboard need not withstand repeated impacts of significant 25
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force during a game. Based on this interpretation, the Requester argues that 1
one of ordinary skill in the art seeking a means for securing an acrylic 2
basketball backboard to a basketball backboard frame was not constrained to 3
choose an adhesive capable of providing the same advantages as the 4
viscoelastic foam core of the state-of-the-art double-sided tape. The 5
Requester argues that one of ordinary skill in the art would have had 6
sufficient skill to choose an adhesive having sufficient strength to bond an 7
acrylic backboard to a support frame for use in a less mechanically 8
demanding environment than that described in the APA and Hying. (See 9
App. Br. Req’r 8–11; Reb. Br. Req’r 9 & 10). 10
We need not construe the claim language to address the Requester’s 11
argument. The argument is not supported by the evidence in the record. 12
Ground 1 relies on the APA as a primary reference. Grounds 2 and 3 rely on 13
Hying. Both the APA and Hying teach the use of acrylic backboards for use 14
in mechanically demanding environments where the backboards are subject 15
to repeated impacts. The APA teaches that there existed a market demand 16
for acrylic backboard in basketball backboard assemblies for home use, 17
where “sufficient flexibility in the bond to dissipate the impact energy from 18
the backboard to the frame” was a design consideration. (FF 2, quoting ʼ550 19
patent, col. 1, ll. 31–38). Hying likewise teaches the potential for damage to 20
the backboard due to basketball impacts; and also teaches that the impact 21
resistance increases when the backboard is able to flex. (See FF 8 & 9, the 22
latter quoting Hying, col. 8, ll. 35–47). 23
The Requester has not proven a market demand for acrylic basketball 24
backboards for any other application. For example, Nunes (US 5,677,896, 25
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issued Oct. 14, 1997), cited by the Requester on page 10 of the Appeal Brief, 1
does not appear to identify the material used to fabricate the backboard. As 2
the Patent Owner points out, the Requester has not proven that there was a 3
market for basketball backboard assemblies for home use not designed to the 4
same standards as those described in the APA and Hying, for use in such 5
games as “H-O-R-S-E,” “3-on-3” or “Around the World.” (See Resp. Br. 6
PO 8; see also App. Br. Req’r 10). Regardless of the breadth with which we 7
might interpret the limitation “wherein the cured adhesive provides a bond 8
of sufficient strength and flexibility to allow the basketball backboard 9
assembly to be used in the game of basketball,” the Requester has not 10
proven a factual underpinning for rejecting claim 1 or claim 19. 11
Therefore, we affirm the Examiner’s decision not to adopt Ground 1. 12
13
Ground 2 14
The Requester argues that claims 1–37 should be rejected under 15
§ 103(a) as being unpatentable over the teachings of Hying in view of the 16
teachings of McGinniss and “the knowledge of a Person Having Ordinary 17
Skill in the Art.” Hying described securing an acrylic basketball backboard 18
to a basketball backboard frame using double-sided adhesive tape having a 19
viscoelastic foam core. (See FF 5). One of ordinary skill in the art would 20
have been aware that the use of double-sided adhesive tape having a 21
viscoelastic foam core had certain advantages. (See FF 2–4 & 10). On the 22
other hand, one of ordinary skill in the art would have had reason to seek an 23
alternative to double-sided tape that was less costly, time-consuming and 24
labor-intensive. (See FF 11). McGinniss described a family of structural 25
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adhesives containing specialized, toughened acrylic compounds. (See FF 1
13). As the Requester correctly argues, “McGinniss discloses a ‘curable’ 2
silicone adhesive . . . that is both strong and ‘toughened’ for flexibility.” 3
(App. Br. Req’r 19; see also FF 15). 4
The Requester originally argued that it would have been obvious to 5
modify the prior art method described by Hying to substitute a curable 6
adhesive for double-sided tape based on the teaching in McGinniss that the 7
“use of structural adhesives has increased substantially in recent years in the 8
aircraft, housing and construction, automotive and footwear industries, to 9
name but a few large quantity users of such adhesives” (see Request 28 & 10
29, quoting McGinniss, col. 1, ll. 14–17; id., App’x CC-B, fourth page; see 11
also FF 13). The Requester has not established that the types of impacts 12
experienced in the fields of aircraft; housing and construction; automotive; 13
and footwear are comparable to the types of impacts suffered by acrylic 14
basketball backboards as described in Hying or the APA. The Requester has 15
not shown persuasively that one of ordinary skill in the art of designing and 16
manufacturing basketball backboard assemblies would have recognized that 17
impact loads imposed on an automotive windshield or rear view mirror, for 18
example, are comparable to the impact loads imposed on a basketball 19
backboard assembly. It is only in hindsight (or by the exercise of inventive 20
skill) that one would make the leap to try an adhesive as a means to bond 21
backboards to support frames based on its use to bond automotive 22
windshields or rear view mirrors. The Requester does not appear to repeat 23
this argument in the briefs. (See generally App. Br. Req’r 18–24; Reb. Br. 24
Req’r 14–18). 25
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Instead, the Requester argues that “McGinniss discloses a ‘curable’ 1
silicone adhesive . . . that is both strong and ‘toughened’ for flexibility” 2
(App. Br. Req’r 19); and that one of ordinary skill in the art merely could 3
have substituted a silicone adhesive of the type described by McGinniss for 4
the double-sided tape used in the prior art (see id.). The Requester argues 5
that this would have been no “more than the predictable use of prior art 6
elements according to their established functions.” (Id, citing KSR Int’l at 7
417 (2007)). The Requester does not cite any teachings of McGinniss as to 8
the degree of flexibility provided to bonds formed by the disclosed adhesives 9
when those adhesives are “toughened.” Neither has the Requester 10
established that one of ordinary skill in the art would have recognized that 11
impact loads imposed on an automotive windshield or rear view mirror, for 12
example, are comparable to the impact loads imposed on a basketball 13
backboard assembly. As such, the Patent Owner is correct in arguing that 14
the substitution that the Requester proposes is neither a predictable use of 15
the adhesives described by McGinniss or in accordance with the adhesives’ 16
intended functions. (See Resp. Br. PO 12 & 13). In the Examiner’s words, 17
“neither McGinniss nor Hying discloses any rationale or motivation to 18
exchange a silicone adhesive for a tape adhesive with the expectation of 19
success for allowing the system to be used in the game of basketball.” 20
(RAN 12). The Requester’s argument is not persuasive. 21
Therefore, we affirm the Examiner’s decision not to adopt Ground 2. 22
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Ground 3 1
The Requester argues that claims 1–37 should be rejected under § 2
103(a) as being unpatentable over Hying in view of the APA, Toyomura, 3
Duchateau and “the knowledge of a Person Having Ordinary Skill in the 4
Art.” As observed above, Hying described securing an acrylic basketball 5
backboard to a basketball backboard frame using double-sided adhesive tape 6
having a viscoelastic foam core. (See FF 5). One of ordinary skill in the art 7
would have been aware that the use of double-sided adhesive tape having a 8
viscoelastic foam core had certain advantages. (See FF 2 & 10). On the 9
other hand, one of ordinary skill in the art would have had reason to seek an 10
alternative to double-sided tape that was less costly, time-consuming and 11
labor-intensive. (See FF 11). 12
The Requester additionally argues that: 13
Toyomura teaches that double sided adhesive and silicone based 14
adhesives can be used interchangeably, and depending on the 15
use, a skilled artisan would [have] be[en] able to determine the 16
appropriate adhesive or double sided tape for a particular 17
application. Toyomura at 3:60–4:49. Further, Toyomura teaches 18
that a person of skill in the art would [have] know[n] why to 19
choose a silicon[e] adhesive because of its flexibility. Toyomura 20
at 4:1–3. Finally, a specific adhesive that is mentioned by 21
Toyomura as meeting these preferences is “silicone one-part type 22
RTV rubber.” Toyomura 4:9–12. 23
(Request 43). In its Appeal Brief, the Requester points out that Toyomura 24
teaches the use of either double-sided adhesive tape or an adhesive to bond 25
and seal a terminal box to a solar cell element; additionally points out that 26
Toyomura teaches selecting a silicone based adhesive for this purpose in 27
view of the adhesive’s flexibility; and argues that one of ordinary skill in the 28
art would have had reason to select a silicone based adhesive to bond an 29
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acrylic basketball backboard to a basketball backboard frame in order to take 1
advantage of that flexibility. (See App. Br. Req’r 33; see also FF 16 & 17). 2
The Requester cites Duchateau based on its teaching regarding the 3
advantages of using fluid, solvent-free adhesives such as “twin pack” 4
silicone adhesives. (See App. Br. Req’r 33; Request 44; id., App’x CC-C, 5
sixth page; see also FF 25). 6
We find that Duchateau is non-analogous art (see FF 27–30) but 7
Toyomura is not (see FF 20–22). See In re Bigio, 381 F.3d 1320, 1325 (Fed. 8
Cir. 2004) (setting out a two-part test for finding whether prior art is non-9
analogous). Even assuming that both references were within the scope of 10
prior art applicable to claims 1 and 19, the combined teachings of Hying, 11
Toyomura and Duchateau do not suffice to prove that the subject matter of 12
those claims would have been obvious. 13
The teachings of Toyomura do not prove that one of ordinary skill in 14
the art would have recognized a silicone based adhesive as being 15
interchangeable with double-sided tape for the purpose of forming a bond 16
between an acrylic basketball backboard and a basketball backboard frame 17
resistant to basketball impacts such as those described by Hying. (Cf. FF 8 18
& 9 (discussing Hying’s teaching regarding the problem of impact 19
resistance)). Toyomura did not suggest that impact resistance was a 20
significant criterion in designing either a terminal box; or a bond between 21
the terminal box and a solar cell element. (See RAN 6– & 7; see also FF 22
16–18). Even assuming that Toyomura’s terminal box was designed to 23
withstand the impacts due to environmental factors such as hail, the 24
Requester has not proven that one of ordinary skill in the art of designing 25
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and manufacturing basketball backboard assemblies would have equated hail 1
impacts with the impacts of basketball on a basketball backboard. 2
Although Toyomura suggested that double-sided tape having strong 3
shear adhesion and “excellent . . . durability” might be used to bond the 4
terminal box to the solar cell element, Toyomura did not teach that the tape 5
have of foam core or other structure providing a flexible bond. (See FF 18). 6
Although Toyomura expressed a preference for using a silicone based 7
adhesive to bond the terminal box to the solar cell element “in view of 8
flexibility” (see FF 17), Toyomura does not appear to have explained why 9
flexibility was a desirable feature. As such, Toyomura did not indicate, even 10
indirectly, the degree of flexibility that might be provided by a preferred 11
adhesive, much less whether that degree of flexibility was comparable to 12
that provided by a viscoelastic foam. Considering these deficiencies as a 13
whole, Toyomura would not have suggested to one of ordinary skill in the 14
art that a silicone adhesive was interchangeable with double-sided tape 15
having a viscoelastic foam core for purposes of bonding an acrylic 16
basketball backboard to a basketball backboard frame. (See FF 19). 17
Duchateau would not have remedied these deficiencies. The 18
Requester does not argue in the briefs that Duchateau independently teaches 19
the interchangeability of a silicone adhesive and double-sided tape with a 20
foam core for purposes of bonding an acrylic basketball backboard to a 21
support frame. (See App. Br. Req’r 33; see also FF 28). Duchateau’s 22
teaching to use a fluid, solvent-free adhesive such as a two component 23
silicone adhesive system would not have addressed the problem of 24
reproducing the desirable properties of double-sided tape with a viscoelastic 25
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foam core. The Requester has not explained in a persuasive manner how 1
common knowledge of one of ordinary skill in the art might have remedied 2
the deficiencies of the combined teachings of Hying, Toyomura and 3
Duchateau. In the Examiner’s words, “[t]here is nothing in Toyomura or 4
Duchateau which would [have led] one of ordinary skill in the art to have a 5
reasonable expectation of success when looking at adhesives for a basketball 6
backboard assembly which would be subject to repeated impacts and 7
required to withstand significant forces.” (RAN 13). 8
Therefore, we affirm the Examiner’s decision not to adopt Ground 3. 9
10
DECISION 11
We AFFIRM the Examiner’s decision not to adopt Grounds 1–3. As 12
such, we AFFIRM the Examiner’s decision not to reject claims 1–37. 13
In the event neither party files a request for rehearing within the time 14
provided in 37 C.F.R. § 41.79, and this decision becomes final and 15
appealable under 37 C.F.R. § 41.81, a party seeking judicial review must 16
timely serve notice on the Director of the United States Patent and 17
Trademark Office. See 37 C.F.R. § 90.1 and 3 C.F.R. § 1.983. 18
19
AFFIRMED 20

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THIRD PARTY REQUESTER:

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

PATENT OWNER:

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