Ex parte Cummings

Board of Patent Appeals and Interferences

Oct 20, 2000

08290093 (B.P.A.I. Oct. 20, 2000)

1
The opinion in support of the decision being entered today was
not written for publication and is not binding precedent of
the Board.
Paper No. 27
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte PAUL M. CUMMINGS
__________
Appeal No. 1997-3243
Application 08/290,093
___________
ON BRIEF
___________
Before JOHN D. SMITH, OWENS, and KRATZ, Administrative Patent
Judges.
OWENS, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal from the examiner’s final rejection of
claims 10, 13-18 and 20. Claims 1-9 and 11, which are all of
the other claims remaining in the application, stand withdrawn
from consideration by the examiner as being directed toward a
Appeal No. 1997-3243
Application 08/290,093
2
nonelected invention.
THE INVENTION
Appellant’s claimed invention is directed toward a
product for forming mailers, which includes a paper web which
has a pressure sensitive adhesive applied to at least one of
its faces in a pattern for forming mailers. The web is wound
into a roll to form multiple plies under a specified tension
such that the magnitude of the tension and the weight of the
roll are insufficient for the adhesive on one roll ply to
adhere to an adjacent roll ply. Claim 10 is illustrative and
reads as follows:
10. A roll pressure seal product for forming mailers
comprising:
a roll formed of a paper web wound to form multiple
plies;
a pressure-sensitive adhesive applied to portions of at
least one face of said paper web and arranged in a
predetermined pattern for forming multi-ply mailers, said roll
being wound under a predetermined web tension between about
1.5 to 3.0 lbs/lineal inch and having a weight sufficient to
avoid adhesion of the pressure-sensitive adhesive between
adjacent roll plies at said face portions.
THE REFERENCES
Parrotta 4,376,151 Mar. 8,
1983
Appeal No. 1997-3243
Application 08/290,093
3
Sakai 4,918,128 Apr. 17,
1990
THE REJECTION
Claims 10, 13-18 and 20 stand rejected under 35 U.S.C.
§ 103 over Parrotta in view of Sakai.
OPINION
We have carefully considered all of the arguments
advanced by appellant and the examiner and agree with
appellant that the aforementioned rejection is not well
founded. Accordingly, we reverse this rejection.
During patent prosecution, claims are to be given their
broadest reasonable interpretation consistent with the
specification. See In re Zletz, 893 F.2d 319, 321, 13 USPQ2d
1320, 1322 (Fed. Cir. 1989); In re Sneed, 710 F.2d 1544, 1548,
218 USPQ 385, 388 (Fed. Cir. 1983); In re Herz, 537 F.2d 549,
551, 190 USPQ 461, 463 (CCPA 1976); In re Okuzawa, 537 F.2d
545, 548, 190 USPQ 464, 466 (CCPA 1976). In so interpreting
appellant’s claim 10, which is the sole independent claim, we
Appeal No. 1997-3243
Application 08/290,093
4
consider the claim to require that the pressure sensitive
adhesive is applied to the paper prior to the paper being
wound into a roll.
Parrotta discloses an adhesive product which includes a
substrate, an intermediate layer of a normally tacky pressure
sensitive adhesive, and a top layer of microspheres (col. 2,
lines 25-34). The microspheres cover the adhesive layer such
that the surface has substantially no tack when the
microsphere layer remains intact, but is tacky when sufficient
pressure is applied to the product to cause the microspheres
to be displaced into the adhesive layer, thereby exposing the
adhesive layer (col. 2, lines 34-37; col. 4, lines 3-16).
The examiner argues that Parrotta discloses at column 1,
lines 7-11, column 2, lines 17-21, column 5, lines 4-33, and
figure 2, a product like appellant’s claimed product except
for the predetermined web tension and the specific genus of
adhesives (answer, page 3). We do not find in the portions of
the reference relied upon by the examiner any indication that
the adhesive is applied to the substrate prior to the
substrate being wound into a roll as required by appellant’s
Appeal No. 1997-3243
Application 08/290,093
5
independent claim. Appellant argues (brief, page 6) that the
declaration of Jenkins (filed March 31, 1995, paper no. 15)
indicates that Parrotta applies his adhesive after the roll is
unwound. The examiner does not present any evidence that one
of ordinary skill in the art would have interpreted this
reference in a manner contrary to Jenkins’ interpretation.
The examiner argues that even if Parrotta applies his
adhesive after the roll is unwound, it is within the level of
ordinary skill in the art to apply adhesive to a web prior to
the web being wound into a roll (answer, pages 3-5). The
relevant inquiry, however, when determining whether it would
have been prima facie obvious to one of ordinary skill in the
art to modify the prior art so as to arrive at a claimed
invention, is not whether such a modification would have been
within the level of skill of one of ordinary skill in the art
but, rather, is whether the teachings from the prior art
itself would have fairly suggested the modification to such a
person. See In re Rinehart, 531 F.2d 1048, 1051, 189 USPQ
Appeal No. 1997-3243
Application 08/290,093
The examiner does not rely upon Sakai for any teaching1
which would remedy the above-discussed deficiency in Parrotta.
6
143, 147 (CCPA 1976). The mere fact that the prior art could
be modified as proposed by the examiner is not sufficient to
establish a prima facie case of obviousness. See In re
Fritch, 972 F.2d 1260, 1266, 23 USPQ2d 1780, 1783 (Fed. Cir.
1992). The examiner must explain why the prior art would have
suggested to one of ordinary skill in the art the desirability
of the modification. See Fritch, 972 F.2d at 1266, 23 USPQ2d
at 1783-84. The examiner has not provided such an
explanation. The examiner argues that adhesive tapes, wall
paper and label stock are commonly provided as an adhesive-
coated web in the form of a roll (answer, page 5), but does
not explain why an awareness of such products would have
fairly suggested, to one of ordinary skill in the art,
modifying Parrotta as proposed by the examiner.
For the above reasons, we find that the examiner has not
set forth a factual basis which is sufficient for supporting a
conclusion of prima facie obviousness of the invention recited
in any of appellant’s claims. Consequently, we reverse the1
Appeal No. 1997-3243
Application 08/290,093
7
examiner’s rejection. Because no prima facie case of
obviousness has been established, we need not address
appellant’s evidence of commercial success. See In re
Piasecki, 745 F.2d 1468, 1472, 223 USPQ 785, 788 (Fed. Cir.
1984); In re Rinehart, 531 F.2d 1048, 1052, 189 USPQ 143, 147
(CCPA 1976).
DECISION
The rejection of claims 10, 13-18 and 20 under 35 U.S.C.
§ 103 over Parrotta in view of Sakai is reversed.
REVERSED
Appeal No. 1997-3243
Application 08/290,093
8
JOHN D. SMITH )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
TERRY J. OWENS )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
PETER F. KRATZ )
Administrative Patent Judge )
TOJ:pgg
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