Ex Parte Deiss

Patent Trial and Appeal Board

Sep 21, 2016

12964362 (P.T.A.B. Sep. 21, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/964,362 12/09/2010
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-8915US 4611
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
Ex parte MARTIN DEISS
Appeal2015-003096
Application 12/964,362
Technology Center 1700
Before JEFFREY T. SMITH, JULIA HEANEY, and
AVEL YN M. ROSS, Administrative Patent Judges.
HEANEY, Administrative Patent Judge.
DECISION ON APPEAL
Appellant 1 seeks our review pursuant to 35 U.S.C. § 134(a) of a
decision of the Examiner to reject claims 1--4, 7-12, and 15 of Application
12/964,362. We have jurisdiction under 35 U.S.C. § 6(b ). We reverse.
BACKGROUND
The subject matter on appeal relates to a sealing tape for sealing a
joint, such as between a frame profile of a window or door and a building
wall. Spec. 1.
1 Appellant identifies the real part in interest as !so-Chemie GmbH of
Germany. Br. 1.
Appeal2015-003096
Application 12/964,362
Representative claim 1 is reproduced below from the Claims
Appendix of the Appeal Brief, with disputed limitations in italics:
1. A sealing tape for sealing a joint, comprising:
an elastically recoverable foam strip, and
a stiff strip-shaped element defined as a strip-shaped element
comprising a greater flexural strength than the foam strip, the stiff
strip-shaped element having a first side section and a second side
section, the strip shaped element arranged underneath the foam strip,
the stiff strip-shaped element including two predetermined fold
points, so that the first side section and the second side section of the
stiff strip-shaped element are bendable at the two predetermined fold
points in opposite directions.
REFERENCES
The Examiner relied upon the following prior art in rejecting the
claims on appeal:
Stromberg
Davidson
Bambara et al.
WO 98/45565
us 4,204,373
US 2005/0159496 Al
(hereinafter "Bambara")
Daniel et al. WO 2005/106176
(hereinafter "Daniel")
THE REJECTIONS
Oct. 15, 1998
May 27, 1980
Jul. 21, 2005
Nov. 10, 2005
1. Claims 1--4, 7-12, and 15 are rejected under 35 U.S.C. § 103(a) as
unpatentable over the combination of Stromberg and Davidson.
2. Claims 3, 4, and 7 are rejected under 35 U.S.C. § 103(a) as
unpatentable over the combination of Stromberg, Davidson, and
Bambara.
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Appeal2015-003096
Application 12/964,362
3. Claims 8-10 are rejected under 35 U.S.C. § 103(a) as unpatentable
over the combination of Stromberg, Davidson, and Daniel.
DISCUSSION
Appellant argues that the combination of Stromberg and Davidson
does not establish a prima facie case of obviousness because the
combination does not teach a "stiff strip-shaped element including two
predetermined fold points" as recited in claims 1 and 15. Br. 9. In
particular, Appellant argues "strip 50, 66 of Davidson does not have a
greater flexural strength than the foam strip and is therefore not a stiff strip-
shaped element as defined in independent claims 1 and 15." Id. at 10.
The Examiner finds that Stromberg teaches a foam strip having an
insert in the form of a plastic band or similar which stiffens the strip of foam
and "comprises greater flexural strength than the foam strip since it acts as a
reinforcement material vvithin the plastic foam." Ans. 7, citing Stromberg
3: 19-21, Fig. 4. As to Davidson, the Examiner finds that it teaches a
compressible material and a strip 50, 66 which comprises two predetermined
fold points and is bendable at two predetermined fold points in opposite
directions. Id. at 8, citing Davidson 3:63---68, 4: 1--4, 28--40, 5:21-27, Figs.
5-8. The Examiner further finds that Davidson's strip is similar in nature to
the insert 14 of Stromberg because "[b ]oth materials are made of a plastic."
Id., citing Davidson 4: 1--4, 5:20-27; Stromberg 3: 19-21. The Examiner
explains that "Davidson is relied upon for teaching a strip 50 and 66, which
corresponds to the bendable stiff strip-shaped element of Stromberg, which
has two predetermined fold points." Id. at 9, citing Davidson 4:28--40, 5:21-
27, Figs. 5-8.
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Appeal2015-003096
Application 12/964,362
The Examiner's finding that Davidson's strip 50, 66 is similar in
nature to Stromberg's insert 14 is based in speculation, and does not meet
the initial duty of supplying the requisite factual basis for the rejection. The
identification of both materials as "plastic" without further explanation is
insufficient. 2 See In re Warner, 379 F.2d 1011, 1016-17 (CCPA 1967) (the
Examiner has the initial duty of supplying the requisite factual basis and
may not, because of doubts that the invention is patentable, resort to
speculation, unfounded assumptions, or hindsight reconstruction to supply
deficiencies in the factual basis.) Simply that Stromberg and Davidson both
state that insert 14 and strip 50, 66, respectively, are "plastic" (Ans. 8) is not
sufficient evidence that a person of ordinary skill in the art would understand
that both materials are stiff, i.e., comprising a greater flexural strength than
the foam strip.
Accordingly, we conclude that the Examiner has not established a
prima facie case of obviousness with respect to claims 1 and 15. Because
we find reversible error in the findings concerning strip 50, 66 of Davidson,
we need not reach Appellant's additional arguments for reversal. Further,
we need not address the dependent claims subject to the additional
obviousness rejections, in which the above-noted deficiencies are not cured.
2 Two broad classes of plastics, thermosets and thermoplastics, can be made
from a wide range of organic polymers and have a broad range of stiffness.
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Appeal2015-003096
Application 12/964,362
SUMMARY
We reverse the rejection of claims 1--4, 7-12, and 15 as unpatentable
under 35 U.S.C. § 103(a).
REVERSED
Patent Owner:
JANNSON MUNGER McKINLEY & SHAPE LTD.
601 Lake A venue
3rd Floor
Racine, WI 53403
5