Ex Parte Downs

Board of Patent Appeals and Interferences

Jan 27, 2010

10770139 (B.P.A.I. Jan. 27, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte JOHN P. DOWNS
____________

Appeal 2009-009496
Application 10/770,139
Technology Center 1700
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Decided: January 27, 2010
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Before CHUNG K.PAK, CHARLES F. WARREN and PETER F. KRATZ,
Administrative Patent Judges.

KRATZ, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on an appeal under 35 U.S.C. § 134 from the
Examiner’s final rejection of claims 1, 3, 5, 7, 9-14, 16, and 20. We have
jurisdiction pursuant to 35 U.S.C. § 6.

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Application 10/770,139

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Appellants’ claimed invention is directed to an adhesive dispensing
tape including a flexible carrier tape with a plurality of adhesive segments
disposed non-contiguously on a surface of the carrier tape.
Claim 1 is illustrative and reproduced below:
1. An adhesive dispensing tape comprising:

a flexible carrier tape having a transverse width defined by first and
second edges of said carrier tape and a longitudinal length comprising a
plurality of adjoining longitudinal segments extending along the entire
longitudinal length of said carrier tape, each of said longitudinal segments
extending the entire transverse width of said flexible carrier tape; and

a plurality of hot melt adhesive segments disposed non-contiguously
spaced apart and aligned in columns extending along said longitudinal
length of said carrier tape, wherein at least two separate ones of said
adhesive segments are disposed on said carrier tape within each of said
longitudinal segments and positioned aligned in side-by-side relation at
transversely separated locations between said first and said second edges of
said carrier tape to provide transversely extending margin between an outer
edge of an adhesive segment and an adjacent one of said first and second
edges of said carrier tape in each of said longitudinal segments that is at least
equal to the largest transverse extent of the adhesive segment; and

wherein each of said adhesive segments is individually exposable and
dispensable to an abutting planar surface when said carrier tape is
transversely flexed.

The Examiner relies on the following prior art reference as evidence
in rejecting the appealed claims:
Torrey 3,741,786 Jun. 26, 1973

Claims 1, 3, 5, 7, 9-14, 16, and 20 stand rejected under 35 U.S.C. §
103(a) as being unpatentable over Torrey.
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We affirm the stated rejection for substantially the reasons set forth in
the Examiner’s Answer, including the relevant substance of the Examiner’s
factual determinations with respect to the teachings of Torrey and the
Examiner’s rebuttal of Appellants’ arguments. We offer the following for
emphasis.
In deciding this appeal, we have considered independent claims 1, 7,
and 16 separately to the extent separately argued by Appellants (App. Br. 8-
19). In this regard, we note that pointing out what a particular claim covers
is not an argument for the separate patentability of that claim. The
dependent claims stand or fall together with the respective independent
claim from which they depend. Moreover, we note that the argued
functional limitation respecting the individual exposable and dispensable
characteristic of the dispensing tape adhesive segments is common to all of
the rejected and appealed claims and sets up the principal issue before us
with respect to all of the rejected claims as follows:

PRINCIPAL ISSUE
Have Appellants established reversible error in the Examiner’s
obviousness rejection by urging that the tape of Torrey does not teach or
suggest a tape with adhesive segments that are individually dispensable as
required by each of appealed claims 1, 7, and 16, because Torrey requires a
tape that includes adhesive segments that are disposed on a tape in a manner
that allows for dispensing of multiple discrete segments to a substrate at a
given time?

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PRINCIPLES OF LAW
On appeal to this Board, Appellants must show that the Examiner
erred in finally rejecting the claims. Cf. In re Kahn, 441 F.3d 977, 985-86
(Fed. Cir. 2006); see also 37 C.F.R. § 41.37(c)(1)(vii).
A claimed invention is not patentable if the subject matter of the
claimed invention would have been obvious to a person having ordinary skill
in the art. 35 U.S.C. § 103(a); KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398,
406 (2007); Graham v. John Deere Co. of Kansas City, 383 U.S. 1, 13
(1966).
In considering the question of the obviousness of the claimed
invention in view of the prior art relied upon, we are guided by the basic
principle that the question under 35 U.S.C. § 103 is not merely what the
prior art expressly teach but what it would have suggested to one of ordinary
skill in the art at the time the invention was made. See Merck & Co. v.
Biocraft Labs., Inc., 874 F.2d 804, 807-08 (Fed. Cir. 1989) and In re Keller,
642 F.2d 413, 425 (CCPA 1981). That is, the question of obviousness
cannot be approached on the basis that an artisan having ordinary skill
would have known only what they read in the applied prior art, because such
artisan is presumed to know something about the art apart from what the
applied reference(s) disclose. See In re Jacoby, 309 F.2d 513, 516 (CCPA
1962).
Nor is it necessary that suggestion or motivation be found within the
four corners of the reference(s) themselves. “The obviousness analysis
cannot be confined by a formalistic conception of the words teaching,
suggestion, and motivation, or by overemphasis on the importance of . . . the
explicit content of issued patents.” KSR, 550 U.S. at 419. Indeed, a
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conclusion of obviousness may be made from common knowledge and
common sense of the person of ordinary skill in the art without any specific
hint or suggestion in a particular reference. See In re Bozek, 416 F.2d 1385,
1390 (CCPA 1969). After all, it is well settled that “[t]he person of ordinary
skill [in the art] is a hypothetical person who is presumed to be aware of all
the pertinent prior art.” Custom Accessories, Inc. v. Jeffrey-Allan Indus.,
Inc., 807 F.2d 955, 962-63 (Fed. Cir. 1986).
Whether a rejection is made under 35 U.S.C. § 103 as here, or under
§ 102, it is appropriate that when Appellants’ product and that of the prior
art appear to be identical or substantially identical the burden can be shifted
to Appellants to provide evidence that the prior art product does not
necessarily or inherently possess the relied upon characteristics of
Appellants’ claimed product. See In re Fitzgerald, 619 F.2d 67, 70 (CCPA
1980); In re Best, 562 F.2d 1252, 1255 (CCPA 1977); In re Fessmann, 489
F.2d 742, 745 (CCPA 1974). The reason is that the Patent and Trademark
Office is not able to manufacture and compare products. See Best, 562 F.2d
at 1255.
As our reviewing court stated in In re Schreiber, 128 F.3d 1473, 1478
(Fed. Cir. 1997):
A patent applicant is free to recite features of an
apparatus either structurally or functionally. See In re
Swinehart, 439 F.2d 210, 212, 169 USPQ 226, 228 (CCPA
1971) (“[T]here is nothing intrinsically wrong with [defining
something by what it does rather than what it is] in drafting
patent claims.”). Yet, choosing to define an element
functionally, i.e., by what it does, carries with it a risk. As our
predecessor court stated in Swinehart, 439 F.2d at 213, 169
USPQ at 228:
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where the Patent Office has reason to believe that a
functional limitation asserted to be critical for
establishing novelty in the claimed subject matter
may, in fact, be an inherent characteristic of the prior
art, it possesses the authority to require the applicant
to prove that the subject matter shown to be in the
prior art does not possess the characteristic relied on.

In other words, when an applicant presents a functionally recited
claim proviso merely calling for an intended use of a claimed product, which
possible use or capability does not reasonably appear to require any
substantive structural modification of a substantially corresponding product
that is taught/suggested by the applied prior art, such a clause could be
reasonably characterized as an intended use limitation and correctly
dispensed with as failing to impart a patentably distinct structural limitation
to the claimed subject matter, absent compelling argument/evidence
establishing the contrary. See, e.g., In re Schreiber, 128 F.3d at 1477-1478.
“During examination, ‘claims . . . are to be given their broadest
reasonable interpretation consistent with the specification, and . . . claim
language should be read in light of the specification as it would be
interpreted by one of ordinary skill in the art.’” In re Am. Acad. of Sci. Tech.
Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004).

DISCUSSION
Appellants argue that the Examiner erred in characterizing the
functional language of claims 1 and 7 “wherein each of said adhesive
segments is individually exposable and dispensable to an abutting planar
surface when the carrier tape is transversely flexed” and in similarly
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characterizing the corresponding language of claim 16, “wherein an
individual adhesive segment is individually exposable and dispensable to a
single substrate when the carrier tape is transversely flexed” as intended use
language that does not serve to patentably distinguish the claimed product
from the product taught/suggested by Torrey (App. Br. 9-11). We disagree.
Appellants disclose that their tape includes opposed first and second
release surfaces on a flexible carrier that can be rolled and includes spaced
adhesive segments on such a carrier release surface (Spec. para., 0006).
Torrey discloses a transfer tape that includes a flexible carrier material
made from a material such as polyester or paper, with opposing first and
second release surfaces having release coatings, such as silicone based
coatings with one surface having a greater release capability than the other,
and a plurality of pressure sensitive adhesive segments non-contiguously
(without overlap) applied to one of the carrier’s release surfaces for
providing spaced segments such that dispensing any portion of the adhesive
onto objects can occur (see, e.g., abst., col. 1, l. 58 - col. 2, l. 16, col. 2, ll.
23-38, col. 3, l. 1- col. 4, l. 39, col. 5, l. 35 - col. 6, l. 17, col. 6, ll. 27-37).
In this regard, Appellants do not persuasively dispute the Examiner’s
determination that:
Torrey relates to an adhesive dispensing tape (10)
comprising a flexible carrier tape (12) having a transverse
width, a row of adhesive segments (14) spaced apart along the
longitudinal length of the tape and transversely in side-by-side
relation, each segments being disposed between the two side
edges, and can be transferred by flexing the tape. The adhesive
is pressure sensitive adhesive (PSA) (col. 3, line 30) and
applied to the carrier in a hot melt form, hence it includes hot
melt adhesive. The carrier tape is provided with first and
second release surfaces such that the adhesive segments adhere
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less strongly to the second release surface when unwound from
a roll (col. 2, lines 8-12 and col. 3, lines 5-12). The adhesive
segments are centered along the transverse width of the tape to
form a longitudinally straight line as shown in figure-1. The
segments can be of any shape such as dots, bars, star, triangle,
etc. or any pattern without any criticality (col. 3, lines 57-68).
The dot shape would exhibit circular configuration. The
transverse position of each segment is distinct as shown by their
separate position along the tape length. In col. 6, lines 32-37,
Torrey teaches that any portion of the adhesive can be
transferred from the carrier tape to a substrate, thereby
indicating that each adhesive segment[s] is individually
exposable and dispensable. Further, figure-1 shows that the
each of the tape edge is at least equal to the adhesive segments.

Torrey does not explicitly provide wording stating a use or function of
a tape wherein each non-contiguous segment of adhesive on a carrier
material is separately dispensed to a desired object, via pressure application,
when the carrier material is transversely flexed.
However, concerning the argued claim proviso for individual
dispensability of the spaced pressure-sensitive adhesive segments via carrier
tape transverse flexing, we note that this functional/intended use capability
would have reasonably been expected to be possessed by the dispensing
tapes taught and/or suggested by Torrey given the common materials
employed by Torrey and those disclosed by Appellants; that is, the flexible
tape and non-contiguous adhesive segments disposed on a tape release
surface of Appellants (Spec. para., 0006), the spaced configuration of the
adhesive segments of Torrey, and the obviously flexible nature of the tape of
Torrey (it can be rolled too). Appellants have not established otherwise by
their non-substantiated arguments to the contrary that seemingly assert that
Torrey’s tape is only capable of releasing multiple adhesive segments to an
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object based on a restricted view of a disclosed utility/use for the tape
allegedly provided by Torrey. In this regard, Appellants have not provided
persuasive technical reasoning or even a rationale basis to establish that this
argued disclosed utility of the tape of Torrey would serve as a limitation on
the tape construction of Torrey that would serve to foreclose other functional
capabilities/uses of the tape constructions taught or suggested by Torrey,
such as the use/capability of the tape to expose and dispense one of the
discrete adhesive segments thereon at a time (see generally App. Br. and
Reply Br.). In this regard, we note that Appellants also disclose that their
tape can function to dispense more than one adhesive segment at a time and
we note that separately argued claims 1, 7, and 16 do not preclude other uses
of the claimed tape - including the dispensing of multiple adhesive segments
at a time to a surface from the tape product claimed therein (Spec. para.,
0014; claims 1, 7, and 16). In other words, Appellants have not shown,
much less identified, any structural difference between the claimed and prior
art adhesive segments dispensing tapes, which is responsible for the claimed
functionality. As implied by the Examiner, if a product taught or suggested
by the prior art seemingly corresponds to a claimed product in recited
structure such that the prior art product would reasonably appear to be
capable of performing a claimed functionality (use) of the claimed structure,
it follows that the recitation of such a functional (use) claim limitation does
not define further structure that patentably distinguishes over the applied
prior art (Ans. 6).
On this record, Appellants have not carried their burden to show that
the argued functional claim language defines a non-obvious structural
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feature of the claimed subject matter that the tapes made in accordance with
Torrey’s teachings and suggestions would not possess.
Appellants argue that Torrey fails to teach or suggest adhesive
segments being aligned in a side-by side fashion, in aligned columns, in
transversely separated locations, and/or with a margin extending from the
tape carrier tape outer edge to the adhesive segment as these features relate
to the requirements of claims 1, 7, and/or 16 (App. Br. 11-19). However, we
agree with the Examiner that Torrey provides ample teaching and suggestion
that would have led one of ordinary skill in the art to produce a tape having
non-contiguous/spaced adhesive segment arranged in columns and or side-
by-side fashion while being spaced from each other and the carrier tape edge
by a suitable distance for separate dispensing thereof, including distances
between segments equal to the traverse or longitudinal extent of an adhesive
segment, as variously called for in claims 1, 7, and 16 (Ans. 4-7).
In this regard, we note that Torrey makes it plain that the adhesive
segments can be formed in the shape of dots or other shapes, spaced form
each other, arranged in any desired pattern, including a regular or irregular
pattern, and separated from the carrier tape edge by a margin (see, e.g., col.
3, ll. 57-75, col. 5, l. 70 - col. 6, l. 31; col. 1, l. 58 - col. 2, l. 38; Figs. 1 and
4).
Consequently, we agree with the Examiner that it would have been
obvious for one of ordinary skill in the art to select a spaced pattern of
adhesive segments corresponding to the claims 1, 7, and/or 16 requirements
to yield an adhesive transfer tape that can dispense the non-contiguous
adhesive segments individually or in multiples of segments, as may be
desirable for a particular utility for the dispensed adhesive. After all, “[i]t is
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common sense 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.” KSR, 550
U.S. at 402. This is especially the case here, where the teachings required to
be fitted together are found in the same reference as options, where the
involved subject matter relates to known adhesives and known materials
used for films and adhesive carriers with respect to an adhesive transfer tape,
and where the art recognized alternatives for dispensing and uses of such
adhesive would have been intuitively obvious and predictable to an
ordinarily skilled artisan. Consequently, even if Torrey were not considered
to implicitly describe a tape that has an individual adhesive segment
dispensing capability as argued, a proposition with which we disagree, we
are satisfied that the adhesive segment shape and spacing alternatives taught
by Torrey would have led an ordinarily skilled artisan to the construction of
a transfer tape with adhesive segments spaced, as claimed, that permits
individual and multiple adhesive segment dispensing options. “The
combination of familiar elements according to known methods is likely to be
obvious when it does no more than yield predictable results.” KSR, 550 U.S.
398 at 416. The question to be asked is “whether the improvement is more
than the predictable use of prior art elements according to their established
functions.” KSR, 550 U.S. at 417.

CONCLUSION
Appellants have not established reversible error in the Examiner’s
obviousness rejection by urging that the tape of Torrey does not teach or
suggest a tape with adhesive segments that are individually dispensable as
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required by each of appealed claims 1, 7, and 16, because Torrey teaches or
suggests a transfer tape that includes non-contiguous adhesive segments that
are disposed on a tape in a manner that is suggestive of a tape, as claimed,
that would permit dispensing multiple or individual discrete adhesive
segments to a substrate at a particular time.

ORDER
The Examiner’s decision to reject claims 1, 3, 5, 7, 9-14, 16, and 20
under 35 U.S.C. § 103(a) as being unpatentable over Torrey is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED

PL Initial:
sld

REINHART BOERNER VAN DEUREN S.C.
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