Ex Parte Deiss

Patent Trial and Appeal Board

Sep 20, 2016

12728792 (P.T.A.B. Sep. 20, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
121728,792 03/22/2010
24314 7590 09/21/2016
JANSSON MUNGER MCKINLEY & KIRBY LTD,
601 Lake Avenue
3rd Floor
RACINE, WI 53403
Martin Deiss
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
KS-8392US 5999
EXAMINER
ADKINS, CHINESSA T
ART UNIT PAPER NUMBER
1788
MAILDATE DELIVERY MODE
09/21/2016 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
Exparte MARTIN DEISS
Appeal2015-002416
Application 12/728,792
Technology Center 1700
Before KAREN M. HASTINGS, N. WHITNEY WILSON, and
LILAN REN, Administrative Patent Judges.
HASTINGS, Administrative Patent Judge.
DECISION ON APPEAL
Appellant1 seeks our review under 35 U.S.C. § 134(a) of the
Examiner's decision rejecting claims 1-18 under 35 U.S.C. 103(a) as
unpatentable over at least the basic combination of Stromberg (WO
98/45565) in view of Bambara et al. (US Patent Application No.
2005/0159496 Al).2
We have jurisdiction over the appeal under 35 U.S.C. § 6(b).
We AFFIRM.
1 The real party in interest is stated to be !so-Chemie GmbH of Germany
(App. Br. 1 ).
2 While the Examiner applies additional prior art to dependent claims 10-12
and 17, 18, Appellant does not present any argument against these rejections
(App. Br. 8).
Appeal2015-002416
Application 12/728,792
Independent claim 1 is illustrative of the subject matter on appeal
(emphasis added):
1. A precompressed sealing tape for sealing a joint
compnsmg:
• an elastically re-expandable foam strip extending
farther in a longitudinal direction than in a
transverse direction, the foam strip comprising two
lateral surfaces and first and second transverse
surfaces which connect the two lateral surfaces to
each other,
• a wrapping, which at least partially surrounds the
foam strip, and
• a strip-shaped element, which is arranged in an
area of the first transverse surface of the foam
strip, the strip-shaped element being made of foam
and having a greater flexural strength than the
foam strip; wherein the sealing tape is wound up
into a roll.
ANALYSIS
Upon consideration of the evidence on this record and each of
Appellant's contentions, we find that the preponderance of evidence
supports the Examiner's conclusion that the subject matter of Appellant's
claim 1 is unpatentable over the applied prior art. We sustain the
Examiner's§ 103 rejections essentially for the reasons set out by the
Examiner in the Answer.
We add the following primarily for emphasis.
Appellant's principal arguments in the Appeal Brief are 1) that the
cited art does not teach "an insert made of foam and having a greater
flexural strength than the foam strip" as recited in claim 1, 2) that Bambara
cannot be properly combined with Stromberg so as to result in the claimed
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Application 12/728,792
invention because the flexural strength of Bambara' s core layer is so high
that the tape of Stromberg would not have the capability of being wound into
a roll, and 3) there is no reason to combine the references absent
impermissible hindsight because Bambara is non analogous art directed to a
stiff flat sheet and not to a sealing tape that can be wound up into a roll
(App. Br. 11-20). In the Reply Brief, Appellant reiterates these arguments,
and maintains that the rejection relies upon impermissible hindsight.
Appellant's arguments mainly address the references separately and
do not fully address the rejection and the inferences of these references that
are presented on this record for our review.
It has been established that "the [obviousness] analysis need not seek
out precise teachings directed to the specific subject matter of the challenged
claim, for a court can take account of the inferences and creative steps that a
person of ordinary skill in the art would employ." KSR Int'! Co. v. Teleflex
Inc., 550 U.S. 398, 418 (2007). Likewise, it is also well settled that a
reference stands for all of the specific teachings thereof as well as the
inferences one of ordinary skill in the art would have reasonably been
expected to draw therefrom. See In re Fritch, 972 F.2d 1260, 1264---65 (Fed.
Cir. 1992).
The sealing tape of claim 1 encompasses the sealing tape of
Stromberg except that Stromberg's stiffening insert is made of paper or
plastic, and not foam. Bambara exemplifies that one of ordinary skill in the
art would have known that foam can be made of different flexural strengths
(see, e.g., Bambara i-f 147 (explaining that different blends of polymers result
in different properties of the resultant foam)). Appellant has not shown
reversible error in the Examiner's determination that a person of ordinary
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Application 12/728,792
skill in the art would have, using no more than ordinary creativity, used a
foam of greater flexural strength than the foam sealing tape strip as an
alternative to a paper or plastic stiffening element of Stromberg (e.g., Ans.
11, 12). Appellant has not shown that foam as an alternative material to
paper or plastic has any criticality; indeed, Appellant's Specification states
that cardboard (paper) and rigid plastic materials are alternatives to the foam
insert (Spec. 7:16-19).
Even assuming, arguendo, that Appellant is correct that the foam core
of Bambara has a flexural modulus that is too high to be able to be wound
into a roll (and assuming Appellant is correct that the tubular extrusion of
Bambara does not refer to any such capability) (App. Br. 13; Reply Br. 9-
11 ), one of ordinary skill would have appreciated that a foam stiffener would
need to have an appropriate flexural strength to maintain Stromberg's stated
capability of the final sealing tape being able to be wound into a roll. It is
well established that the obviousness inquiry does not ask "whether the
references could be physically combined but whether the claimed inventions
are rendered obvious by the teachings of the prior art as a whole." In re
Etter, 756 F.2d 852, 859 (Fed. Cir. 1985) (en bane); see also In re Keller,
642 F.2d 413, 425 (CCPA 1981) (stating "[t]he test for obviousness is not
whether the features of a secondary reference may be bodily incorporated
into the structure of the primary reference"); In re Nievelt, 482 F.2d 965, 968
(CCP A 1973) ("Combining the teachings of references does not involve an
ability to combine their specific structures.").
To the extent that Appellant argues that Bambara is non analogous art,
we note that in KSR Int 'l Co., 550 U.S. at 419--420 the Supreme Court
observed that:
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Application 12/728,792
In determining whether the subject matter of a ... claim is
obvious, neither the particular motivation nor the avowed
purpose of the patentee controls. What matters is the objective
reach of the claim. If the claim extends to what is obvious, it is
... [unpatentable] under§ 103.
See also Wyers v. Master Lock Co., 616 F.3d 1231, 1238 (Fed. Cir.
2010) ("[t]he Supreme Court's decision in KSR . .. directs us to construe the
scope of analogous art broadly," stating that ''familiar items may have
obvious uses beyond their primary purposes, and a person of ordinary skill
often will be able to fit the teachings of multiple patents together like pieces
of a puzzle").
Here, Bambara can be seen to exemplify that a stiffening layer of a
foam is useful in a multilayer structure in a wide variety of applications
(e.g., Bambara i-f i-f 149-158). Appellant has not shown error in the
Examiner's determination that one of ordinary skill would have readily
appreciated that a stiffening material made of foam \'l/ould have had obvious
uses in other products, such as for a stiffening layer in the sealing tape of
Stromberg.
Appellant has not asserted that the proposed modification of
Stromberg to include a foam strip that would still enable the tape to be
wound up into a roll would have been beyond the capabilities of a person of
ordinary skill in the art. Absent such an assertion, we "take account of the
inferences and creative steps that a person of ordinary skill in the art would
employ," and find a person of ordinary skill in the art would have overcome
those difficulties within their level of skill. KSR Int 'l 550 U.S. at 418; see
also id. at 421 ("A person of ordinary skill is also a person of ordinary
creativity, not an automaton."); Ball Aerosol & Specialty Container, Inc. v.
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Application 12/728,792
Limited Brands, Inc., 555 F.3d 984, 993 (Fed. Cir. 2009) (under the flexible
inquiry set forth by the Supreme Court, the PTO must take account of the
"inferences and creative steps," as well as routine steps, that an ordinary
artisan would employ (emphasis omitted)).
Accordingly, we affirm the Examiner's prior art rejections of the
claims under 35 U.S.C. § 103(a) for the reasons given above and presented
by the Examiner.
DECISION
The Examiner's§ 103 rejections are affirmed.
TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l).
AFFIRMED
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