Ex Parte Eckstein

Patent Trial and Appeal Board

Jun 17, 2014

12223531 (P.T.A.B. Jun. 17, 2014)

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.
12/223,531 08/01/2008 Axel Eckstein 1703 1895US 9780
29894 7590 06/17/2014
DREISS, FUHLENDORF, STEIMLE & BECKER
POSTFACH 10 37 62
D-70032 STUTTGART,
GERMANY
EXAMINER
HICKS, VICTORIA J
ART UNIT PAPER NUMBER
3772
MAIL DATE DELIVERY MODE
06/17/2014 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 AXEL ECKSTEIN
____________

Appeal 2012-011417
Application 12/223,531
Technology Center 3700
____________

Before BIBHU R. MOHANTY, MICHAEL C. ASTORINO, and
JAMES A. WORTH, Administrative Patent Judges.

WORTH, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 15, 18-29, and 31 which constitute all the claims pending
in this application. 1, 2 We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 We refer to the Appeal Brief (filed Apr. 19, 2012, hereinafter “App. Br.”),
the Reply Brief (filed Aug. 2, 2012, hereinafter “Reply Br.”), the Final
Rejection (mailed Nov. 23, 2011), and the Answer (mailed June 5, 2012
hereinafter “Ans.”) for the respective positions of Appellant and the
Examiner.
2 The real party in interest identified by Appellant is Paul Hartmann AG of
Heidenheim, Germany. App. Br. 3.
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Application 12/223,531

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Introduction
Appellant’s disclosure relates to a polymer film and an application
system for handling of the polymer film. Spec. 1. The film can be used for
coverage of a wound, for coverage of an incision site for an operation, or for
fixing cannulas and catheters in place. Id.
Claim 31 is illustrative and reads as follows:
31. A film structure comprising:
a polymer film having a polymer film thickness, said
polymer film having a polymer film lower side and a polymer
film upper side separated from said polymer film lower side by
said polymer film thickness;
at least one support film having a support film thickness,
said at least one support film having a support film lower side
disposed on said polymer film upper side, said at least one
support film also having a support film upper side separated
from said support film lower side by said support film
thickness;
at least one gripping strip having a gripping strip
thickness, said at least one gripping strip having a gripping strip
lower side and a gripping strip upper side separated from said
gripping strip lower side by said gripping strip thickness;
a first adhesive area disposed between and connecting
together said gripping strip lower side and said support film
upper side, said first adhesive area thereby completely
remaining on said support film upper side in response to
removal of said at least one gripping strip, said first adhesive
area thereby being structured to permit direct adhesive
attachment of said at least one support film to a document file,
said at least one support film and said at least one gripping strip
thereby constituting parts of an application system disposed at
said upper side of said polymer film for facilitating handling of
the film structure.

App. Br., Claims App’x.

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Application 12/223,531

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Prior Art Relied Upon
Wick EP 0401949 A2 Dec. 12, 1990
Ward US 4,753,232 June 28, 1988
Schultz US 5,960,795 Oct. 5, 1999
Gilbert US 5,052,381 Oct. 1, 1991
Rejections On Appeal
The Examiner maintains, and the Appellant appeals, the following
rejections:
1) Claims 15, 18, 19, 24-28, and 31 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over Wick and Ward.
2) Claims 20-23 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Wick, Ward and Schultz.
3) Claim 29 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over Wick, Ward and Gilbert.
ANALYSIS
In the Examiner’s Answer, the Examiner withdrew the previous
grounds of rejection for independent claims 15 and 31 (Ans. 14) and issued
new grounds of rejection for these claims. Id. As such, the arguments in the
Appeal Brief are not responsive to the new grounds of rejection. We
therefore consider Appellant’s arguments as they are presented in the Reply
Brief, pages 4-19.
Independent claim 31
The Examiner finds that Wick contains all of the limitations of claim
31, except for the first adhesive area disposed between and connecting
together said at least one gripping strip lower side and said support film
upper side. Ans. 6-7. The Examiner finds that the end of the support film
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Application 12/223,531

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(32c) of Wick constitutes a gripping strip. Ans. 6. The Examiner finds that
Ward teaches a device at column 9, lines 33-48, and Figures 1 and 2 with a
first adhesive area (8) disposed between and connecting together said at least
one gripping strip (6) lower side and said support film (3) upper side. Ans.
6-7. The Examiner concludes that it would have been obvious to modify the
gripping strip of Wick in the manner described by Ward such that the
adhesive area (29b) extends along the length of the gripping strip to provide
a first adhesive area disposed between the gripping strip and the support
film. Ans. 7.
Appellant argues that Wick teaches away from the modification
suggested by the Examiner because Wick explicitly teaches that these end
areas (32c) and (32d) should remain free of adhesive. Reply Br. 8; see also
Wick, Fig. 5 (identifying (32d) as the end of layer (32a)). Appellant further
argues that the modification suggested by the Examiner is directly contrary
to the intended purpose of the Wick disclosure because adhesive would
prevent or impair straightforward removal of the support film. Id.
Although Wick describes embodiments that are free of adhesive on
the end portions 32c and 32d, Wick 6, ll. 2-5; 7, ll. 33-45, Wick describes
that there is an exception to this. Id. at 7, ll. 33. Specifically, Wick
describes that “a small amount of adhesive can be placed between the
overlapping portions 34’ of the carrier portions 32a’ and 32b’” in order to
create a seal. Id. at 10, ll. 51-52. The presence of the embodiment using
adhesive to effectuate a seal is thus evidence that the use of adhesive on the
overlapping ends is not inconsistent with the purpose of Wick, and there is
no teaching away from the use of adhesive for this purpose.
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Appellant further asserts that neither Wick nor Ward propose a
gripping strip structure which is attached to a support film by means of an
adhesive in such a manner that the adhesive remains on the support film
upper side in response to the removal of the gripping strip. Reply Br. 8. As
to Wick, Appellant observes that items (32a) and (32b) are a support film
that appears to be made from the same material, and argues that it is unclear
whether the adhesive force would allow the adhesive to remain on the upper
support surface of support film (32a). Id. at 10.
The Examiner finds that Figure 5 of Wick teaches that adhesive (29b)
remains on support film when support film is removed from the polymer
film layer. Ans. 6-7. We determine that the Examiner’s finding is supported
by a preponderance of the evidence, and we agree that adhesive remains on
the support film. Appellant argues that it is unclear how the adhesive will
behave when it is between two pieces of support film (as opposed to being
between support film and polymer film). Reply Br. 9-10. We find that
Appellant has not provided evidence that no adhesive will remain on the
support film upper surface after the two support layers are separated. We
therefore affirm the Examiner’s rejection of claim 31 under 35 U.S.C.
§ 103(a).
Independent claim 15 and its dependent claims
The Examiner’s rejection of claim 15 is similar to the rejection of
claim 31. The Examiner finds that Wick contains all of the elements of
claim 15, except for the first adhesive area connecting the gripping strip to
the support film and the second adhesive area connecting the cover means to
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Application 12/223,531

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the support film. Ans. 5. The Examiner concludes that in view of Ward,3 it
would have been obvious to modify Wick to extend the adhesive area (29b)
between support film (32a) and gripping strip (32c). Id. The Examiner
concludes that this modification would result in the portion of support film
(32a) below the gripping strip functioning as a cover means, and that a
second adhesive area (29b) would remain on the support film upper side in
response to removal of said cover means. Id.
Appellant argues that the extension of the adhesive region contradicts
the teachings of Wick, is inconsistent with the purpose of Wick, and further
that it is not clear from Wick that the adhesive (29b) would stay attached to
32a. Reply Br. 14-15. We disagree for the same reasons as for claim 31.
Appellant raises three further arguments with respect to claim 15.
Appellant argues that the Examiner erred by mapping the support film and
the cover means onto the same structure (32a). Reply Br. 18. Appellant’s
disagreement with the Examiner is that the cover means is continuous with
the support film on the same side of the device. Two different claim terms
can be satisfied by the same structure unless the claim requires that the
structures be different. Linear Technology Corp. v. International Trade
Comm'n, 566 F.3d 1049, 1054-55 (Fed. Cir. 2009). Appellant has not
identified such a requirement in the language of claim 15. Moreover, under
the broadest reasonable interpretation standard of claim construction
applicable to this review, it is permissible for the two claim terms to apply to
the same structure. See In re Baxter Intern., Inc., 678 F.3d at 1361.

3 The Examiner relies on the same description of Ward for claim 15 as for
claim 31, i.e., Ward, column 9, lines 33-48 and Figures 1 and 2. Ans. 5.
However, the Examiner identified the support film as layer (5) of Ward for
purposes of claim 15 and layer (3) of Ward for claim 31. Id. at 5, 7.
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Appellant further argues that the Examiner erred in identifying item
(32a) as the cover means because, according to Appellant, the claims require
that the cover means be situated above the second adhesive area. Reply Br.
18. According to Appellant, the cover means must be disposed above the
second adhesive area in order for the second adhesive area to remain on the
support film upper side when the cover means is removed. Ans. 18. With
the Examiner’s modification of Wick, the cover means would be below the
second adhesive area which would connect support film (32a) to the
gripping strip (32c). Id. at 5. Turning to the claim language, claim 15 does
not on its face contain a requirement that the cover means is “above” the
second adhesive area. Rather, as Appellant acknowledges, the requirement
in claim 15 is simply that the “second adhesive area completely remains on
said support film upper side in response to removal of said cover means.”
As discussed directly above, the cover means and the support film can be
satisfied by the same structure, i.e., layer (32a) can serve as a cover means as
well as support film. Both the cover means and the support film are
disposed on the second adhesive area. According to the Examiner, in Wick
as modified by Ward, there would be adhesive (29b) between layer (32a),
identified as the cover means, and layer (32c), identified as the gripping
strip. Id. The Examiner finds that adhesive does remain on the support film
upper layer, when layers (32a) and (32c) are separated. Id. The claim
requirements are thereby satisfied.
Finally, Appellant argues that for claim 15, the Examiner has
identified the support film with layer (5) of Ward, which in Figure 2 does
not directly contact the adhesive layer (8) because it is separated by layer
(7). Appellant argues that the only reasonable interpretation of the claim
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language “first adhesive area disposed between and connecting together said
gripping strip lower side and said support film upper side” is that the first
adhesive area directly contacts the support film. Reply Br. 16-17. We
disagree. Nothing in the claim language or specification precludes the
existence of other structures that are also connected together. The adhesive
would still be disposed between the gripping strip and the support film. The
claim requirement of the first adhesive area being disposed between and
connecting the gripping strip and the support film is therefore satisfied.
Thus, we are not persuaded by Appellant’s arguments that the
Examiner’s determination as to the combination of Wick and Ward would be
inconsistent with the language of claim 15. We therefore affirm the
Examiner’s rejection of claim 15 under 35 U.S.C. § 103(a).
Because Appellant only argues the Examiner’s rejections of claims
18-29 on the basis of his arguments relating to independent claim 15, we
affirm the Examiner’s rejections of claims 18-29 under 35 U.S.C. § 103(a).

CONCLUSION
On the record before us, we conclude that the Appellant has not
shown that the Examiner erred in rejecting claims 15, 18-29, and 31 under
35 U.S.C. § 103(a).

DECISION
The decision of the Examiner to reject claims 15, 18-29, and 31 is
affirmed.
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Application 12/223,531

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No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).

AFFIRMED

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