Ex Parte Goecke

Board of Patent Appeals and Interferences

Feb 19, 2009

10674108 (B.P.A.I. Feb. 19, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte THOMAS R. GOECKE
____________

Appeal 2008-4501
Application 10/674,108
Technology Center 1700
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Decided:1 February 19, 2009
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Before CATHERINE Q. TIMM, LINDA M. GAUDETTE, and
KAREN M. HASTINGS, Administrative Patent Judges.

GAUDETTE, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal from the final rejection of claims 1-7 and 9-12, the
only claims pending in the Application. (Appeal Brief, filed March 19,
2007, (“Br.”) 4 § III.) We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, begins to run from the decided date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).
Appeal 2008-4501
Application 10/674,108

Claim 1 is illustrative of the invention and is reproduced below:
1. An adhesive tape comprising:

a polymer layer having a Shore A Hardness of between about 92 and
100 and a substantially uniform thickness of between about 0.020" to
0.065"; and
a layer of adhesive attached to said polymer layer.

The Examiner relies on the following prior art references to show
unpatentability (Examiner’s Answer, mailed September 18, 2007, (“Ans.”) 3
§ (8)):
Oace US 2,559,990 Jul. 10, 1951
Guenther US 6,461,751 B1 Oct. 8, 2002
Hughart US 6,668,504 B2 Dec. 30, 2003

Appellant requests review of the following grounds of rejection (Br. 5
§ VI.):
1. claims 1-6 and 9-10 under 35 U.S.C. § 103(a) as unpatentable over
Oace in view of Hughart;
2. claim 12 under 35 U.S.C. § 103(a) as unpatentable over Oace in
view of Guenther; and
3. claims 7, 10, and 11 under 35 U.S.C. § 103(a) as unpatentable over
Oace in view of Hughart and Guenther (see Ans. 2, § (5) (correcting
Appellant’s statement of the grounds of rejection)).

ISSUE
Has Appellant shown that the Examiner reversibly erred in
determining that it would have been obvious to one of ordinary skill in the
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art at the time of the invention to have combined the applied prior art in the
manner claimed?
We answer this question in the negative as to each ground of rejection
for essentially the reasons stated in the Examiner’s Answer, which we
explain in further detail below.

FINDINGS OF FACT
1. The present invention relates to an adhesive tape which is said to have
superior ductility, strength, tear resistance, and abrasion resistance.
(Spec. 1:7-8.) The tape is for use, for example, as floor marking in
industrial and factory environments. (Spec. 1:10-11.) According to
the Specification, a disadvantage of prior art tapes is that they “lack[]
sufficient strength and hardness to prevent wearing, tearing, cracking
and breakage from heavy and repeated traffic.” (Spec. 1:11-13.)
Another disadvantage is that they have poor adhesive quality, and
tend to detach from repeated traffic (e.g., forklift trucks). (Spec. 1:14-
15.)
2. Oace claims “[a] pressure-sensitive adhesive insulating tape . . .
comprised of: a stretchable and elastic film backing having a
thickness of 4 to 20 mils and formed of a homogeneous mixture
primarily consisting of a stable blend of a film-forming polymer of
monomers including at least a major proportion of vinyl chloride. . .;
and a . . . pressure-sensitive rubber-resin type adhesive coating united
to the inner face of said film backing.” (Oace, claim 1.)
3. Hughart discloses the use of elastomeric strips for fastening a wall
panel to wall studs, thereby providing a sound-deadened wall. (See
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Application 10/674,108

Hughart, claim 1.) The elastomeric strips may be made “of an
elastomeric polymer, such as polyvinyl chloride having a hardness of
Durometer 92 Shore A.” (Hughart, col. 2, ll. 42-43.) According to
Hughart, “[a]ny suitable adhesive” may be used to adhere the
elastomeric strips to the wall panels. (Hughart, col. 2, ll. 43-45.)
4. Guenther discloses a closure tape for an absorbent article comprising
an essentially non-elastic backing material (Abstract) having a
thickness of 50-500 µm and made from a polymer material such as
polyvinyl chloride (col. 7, ll. 19-25). According to Guenther, the
backing material bears an adhesive layer (col. 7, l. 27) which is
preferably a pressure-sensitive adhesive, such as a rubber based
adhesive (col. 8, ll. 37-38), exhibiting a 90º peel adhesion from a
polyethylene surface of at least 3.5 N/cm (col. 8, ll. 11-16). The
pressure-sensitive adhesive preferably exhibits a high value of static
shear so that the tape does not inadvertently loosen. (See Guenther,
col. 8, ll. 22-29.) The thickness of the adhesive layer is preferably
between 20 and 100 µm. (Guenther, col. 8, ll. 50-52 and 63-65; col.
9, l. 66-col. 10, l. 1.)
5. Guenther discloses that “the adhesion behavior of the adhesive . . .
with respect to the target area [] is governed both by the nature of the
adhesive and the surface properties of the target area” (col. 10, ll. 25-
28). According to Guenther, “[w]hen using an appropriate release
surface . . . it is often possible to use aggressive pressure-sensitive
adhesives. . . . Alternatively, the pressure-sensitive adhesive . . . may
be partially detackified to render it less aggressive and removable
from the target area” (col. 10, ll. 36-43).
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Application 10/674,108

Rejection of claims 1-6 and 9-10 under 35 U.S.C. § 103(a) as unpatentable
over Oace in view of Hughart:

6. The Examiner relies on Oace for a disclosure of the invention as
claimed in independent claim 1, with the exception of an express
teaching that the backing film has a Shore A Hardness of 92-100.
The Examiner contends that
it would have been obvious to one having ordinary skill
in the art to utilize Hughart’s teaching of providing an
adhesive tape backing of polyvinyl chloride having a
Shore A Hardness of 92 in the invention of Oace with the
motivation to provide for hardness imparted for structural
strength to the tape.

(Ans. 3.)
7. Appellant does not dispute that Hughart discloses a polymer layer
having the Shore A hardness recited in claim 1. (See Br. 8-9.) Nor
does Appellant dispute the Examiner’s contention that it would have
been a matter of routine optimization to achieve a Shore A Hardness
of 93-97, as recited in dependent claim 9 (Ans. 4). (See App. Br. 10.)
However, Appellant argues that “as a whole, Hughart does not fairly
suggest a polymer layer having the Shore A Hardness limitation
missing from Oace” (Br. 8; see also, Br. 10 (relying on the same
arguments in traversing the rejections of claims 5, 6, and 9)), because
Hughart’s elastomeric strips are “not an adhesive tape but instead a
‘spacer’ that is adapted to provide air gaps between the studs and the
wall panel” (Br. 9). Appellants further argue that Hughart’s
elastomeric strips “appear to be about the thickness of the wall board”
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which is an order of magnitude greater than Appellants’ claimed
thickness. (Br. 9.)
8. With respect to dependent claim 2, Appellant concedes that Hughart
discloses attaching the outermost side of the elastomeric strips to a
wall panel. (App. Br. 9.) Appellant disputes the Examiner’s
contention that the “substrate” of appealed claim 2 reads on Hughart’s
wall panel (Ans. 3). (App. Br. 9.)
9. With respect to dependent claim 3, the Examiner finds that, in order to
bond to the adhesive layer, Oace’s backing would inherently possess
the claim 3 “textured surface.” (Ans. 4.) The Examiner also finds
that Hughart’s elastomeric strips include holes which provide a
textured surface as claimed. (Ans. 7.) Appellant argues that “[t]here
is no teaching of a ‘textured surface’ in either Oace or Hughart.” (Br.
9.)
Rejection of claim 12 under 35 U.S.C. § 103(a) as unpatentable over Oace
in view of Guenther and rejection of claims 7, 10, and 11 under 35 U.S.C. §
103(a) as unpatentable over Oace in view of Hughart and Guenther:

10. The Examiner maintains that Oace, as modified by Hughart, discloses
the invention as claimed in independent claim 11 with the exception
that the adhesive is a rubberized double-sided tape. (Ans. 6.) The
Examiner contends that “it would have been obvious to one having
ordinary skill in the art to utilize Guenther’s teaching of using a
double-sided rubberized pressure sensitive adhesive tape in the
invention of Oace with the motivation to provide for enhancing its
peel adhesion characteristics.” (Ans. 6.)
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11. The Examiner relies on Oace for a disclosure of the invention as
claimed in independent claim 12, with the exception of an express
teaching that the adhesive layer has a peel adhesion of greater than 2.0
lb/in width. (Ans. 5.) The Examiner contends that one of ordinary
skill in the art would have been motivated to provide Oace’s adhesive
layer with a peel adhesion of at least 3.5 N/cm (which includes
Appellant’s claimed range) based on the advantages disclosed by
Guenther.
12. Appellant does not refute the Examiner’s findings with respect to the
teachings of Guenther. (See Br. 10-12.) Rather, Appellant contends
that the Examiner’s proposed motivation for combining the applied
prior art is based on improper hindsight reasoning. (Br. 10 and 11.)
Appellant points out that Guenther’s backing layer is non-elastic and
rendered stretchable by incisions (or slits). (Br. 10.) Appellant
contends that use of this layer in Oace’s tape “would seriously
undermine” the desired elastic and insulating properties of Oace’s
tape. (Br. 11.)
13. Appellant further argues that the thickness of Guenther’s polymer
layer, which Appellant calculates as a maximum of “0.019685 inches”
(Br. 11 n.1), is less than the range of “between 0.020 and 0.065”
required by claims 7, 10, and 12 (Br. 11-12).
PRINCIPLES OF LAW
In making a patentability determination, analysis must begin with the
question, “what is the invention claimed?” since “[c]laim interpretation, . . .
will normally control the remainder of the decisional process.” Panduit
Corp. v. Dennison Mfg. Co., 810 F.2d 1561, 1567-68 (Fed. Cir. 1987); see
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also, In re Self, 671 F.2d 1344, 1348 (CCPA 1982) (“Many of appellant's
arguments fail from the outset because, . . . they are not based on limitations
appearing in the claims.”).
During examination, claims terms “must be given their broadest
reasonable construction consistent with the specification.” In re Icon Health
and Fitness, Inc., 496 F.3d 1374, 1379 (Fed. Cir. 2007).
Two factors are considered in determining whether prior art is
analogous: “(1) whether the art is from the same field of endeavor,
regardless of the problem addressed, and (2) if the reference is not within the
field of the inventor's endeavor, whether the reference still is reasonably
pertinent to the particular problem with which the inventor is involved.” In
re Clay, 966 F.2d 656, 658-59 (Fed. Cir. 1992) (citations omitted).
“Whether a reference in the prior art is ‘analogous’ is a fact question.” Id. at
658. A reference is considered analogous art if “even though it may be in a
different field from that of the inventor's endeavor, it is one which, because
of the matter with which it deals, logically would have commended itself to
an inventor's attention in considering his problem.” Id. at 659; see also, KSR
Int'l Co. v. Teleflex Inc., 550 U.S. 398, ----, 127 S. Ct. 1727, 1742 (2007)
(“[F]amiliar items may have obvious uses beyond their primary purposes.”);
In re Paulsen, 30 F.3d 1475, 1481-82 (Fed. Cir. 1994) (determining that
housings, hinges, latches, and springs found in items like a piano lid and
kitchen cabinet were reasonably pertinent to the development of a latch
system for personal computers); Icon, 496 F.3d at 1379-80 (determining that
springs used in a folding bed were reasonably pertinent to an inventor
developing a treadmill with a folding mechanism).
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When “the claimed and prior art products are identical or substantially
identical, or are produced by identical or substantially identical processes,
the PTO can require an applicant to prove that the prior art products do not
necessarily or inherently possess the characteristics of his claimed product.”
In re Best, 562 F.2d 1252, 1255-56 (CCPA 1977); see also In re Spada, 911
F.2d 705, 708 (Fed. Cir. 1990) (“[W]hen the PTO shows sound basis for
believing that the products of the applicant and the prior art are the same, the
applicant has the burden of showing that they are not.”).
ANALYSIS
Appellant first argues that Oace and Hughart are non-analogous art
because they relate to insulation and protection of electrical conductors and
to spacers separating wall boards from underlying wood studs. (Br. 8.)
Contrary to Appellant’s contention, we find that the Examiner properly
applied these references in rejecting the appealed claims since they are
“reasonably pertinent to the particular problem with which the inventor is
involved,” Clay, supra. In particular, both references are concerned with
maintaining adherence of a tape to a substrate under conditions in which the
tape may be subjected to forces or environmental conditions which reduce
the adhesive properties of a pressure sensitive adhesive.
With respect to Appellant’s remaining arguments, we are not
persuaded of reversible error on the part of the Examiner because Appellant
(1) has not addressed the facts and reasons relied on by the Examiner in
rejecting the claims and (2) relies on unclaimed features to distinguish over
the applied prior art.
With respect to Appellant’s failure to address the Examiner’s
contentions, we note that Appellant’s arguments focus on the differences
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between the claimed polymer layer and either Hughart’s or Guenther’s
backing materials. For example, Appellant contends that substitution of
Hughart’s backing material for Oace’s backing would not result in a polymer
layer having the claimed thickness. However, the Examiner’s rejections are
not based on a determination that it would have been obvious to have
substituted Oace’s backing with Hughart’s or Guenther’s backing materials
per se. Rather, the Examiner’s rejection is based on a determination that it
would have been obvious to have modified Oace’s backing in view of
Hughart or Guenther. Because Appellant did not address the Examiner’s
rationale for rejecting the claims, Appellant has not shown that the Examiner
reversibly erred.
With respect to claim 3, we note that Oace’s disclosure of a polymeric
backing having an adhesive secured thereto, the same structural elements
claimed by Appellant, gave the Examiner reason to believe that Oace’s
backing would inherently possess a textured surface as claimed in appealed
claim 3. Appellant thus had the burden to establish the contrary, but did not
provide evidence to refute the Examiner’s finding.
Appellant also argues that several inventive features are not disclosed
or suggested by the Examiner’s proposed combination of references.
However, Appellant has not identified reversible error in the Examiner’s
determination that the claims, as drafted, do not recite these argued features.
For example, Appellant has not identified any language in the Specification
or claims which warrants a narrow interpretation of the claim 2 term
“substrate” as excluding Hughart’s wall board.
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CONCLUSION
Appellant has not identified reversible error in the Examiner’s
obviousness determination. The decision of the Examiner rejecting claims
1-7 and 9-12 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)(1)(iv).

AFFIRMED

PL Initial:
sld

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