Ex Parte Hannington

Patent Trial and Appeal Board

Sep 1, 2016

12029570 (P.T.A.B. Sep. 1, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/029,570 02/12/2008
81029 7590 09/06/2016
A very Dennison Corporation
Brian G. Bembenick
8080 Norton Parkway, 22D
Mentor, OH 44060
FIRST NAMED INVENTOR
Michael E. Hannington
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.
3187-US-Dl;
AD2008000199
CONFIRMATION NO.
9112
EXAMINER
NORDMEYER, PATRICIA L
ART UNIT PAPER NUMBER
1788
NOTIFICATION DATE DELIVERY MODE
09/06/2016 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address( es):
patentdocket@averydennison.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MICHAELE. HANNINGTON
Appeal2015-005579
Application 12/029,570
Technology Center 1700
Before ADRIENE LEPIANE HANLON, MARK NAGUMO, and
MICHAEL P. COLAIANNI, Administrative Patent Judges.
HANLON, Administrative Patent Judge.
DECISION ON APPEAL
A. STATEMENT OF THE CASE
The Appellant filed an appeal under 35 U.S.C. § 134 from an Examiner's
decision finally rejecting claims 1-26 and 28. We have jurisdiction under
35 U.S.C. § 6(b).
We REVERSE.
Independent claim 1 is reproduced below from the Claims Appendix of the
Appeal Brief dated December 23, 2014 ("Br."). The limitations at issue are
italicized.
Appeal2015-005579
Application 12/029,570
1. An adhesive article comprising:
a release liner comprising a release surface defining a plane, a
molding layer and a second surface;
a continuous layer of adhesive having a first surface, a second
surface, and end edges,
wherein the first surface of the adhesive is adhered to the
release surface of the release liner;
a first embossed pattern of non-adhesive material forms in the
release surface and the molding layer;
a second pattern of a non-adhesive material forms, the second
pattern different from the first pattern;
each of the first embossed pattern and the second pattern having
a first surface and a second surface, the first surfaces applied to the
release surface,
wherein the second pattern is applied over the second surface of
the first embossed pattern and the second pattern partially overlaps
the first embossed pattern; wherein a portion of the second pattern at
least partially fills in portions of the first embossed pattern, and
the first surface of at least a portion of the first embossed
pattern is below the plane and the second surface of at least a portion
of the second pattern is above the plane.
Br. Al.
Independent claim 24, the other independent claim on appeal, also recites an
adhesive article comprising, inter alia, "a first embossed pattern of non-adhesive
material" and "a second pattern of non-adhesive material ... wherein the second
pattern at least partially overlaps the first embossed pattern." Br. A5.
The claims on appeal stand rejected as follows:
(1) claims 1-26 under 35 U.S.C. § 102(b) as anticipated by Hannington 1
and
1 WO 01/81080 Al, published November 1, 2001 ("Hannington").
2
Appeal2015-005579
Application 12/029,570
(2) claim 28 under 35 U.S.C. § 103(a) as unpatentable over Hannington.
B. DISCUSSION
The Examiner finds Hannington discloses an adhesive article comprising,
inter alia, a first embossed pattern of non-adhesive material and a second pattern
of non-adhesive material, wherein the second pattern partially overlaps the first
embossed pattern. Ans. 2-3. 2 For support, the Examiner relies on Hannington
paragraph 30 which states, in relevant part:
The non-adhesive material is generally present in a pattern.
The pattern can be a plurality of dots, lines, or any geometric figure,
that provides a path for air egress from the adhesive article. . . . The
pattern may be a grid of intersecting lines, a weave pattern, a waffle
pattern, diagonal straight and curved lines, tiled geometric figures,
such as hexagons, rectangles, overlapping circles or triangles, or lines
in a cross hatch pattern.
Hannington i-f 30 (emphasis added).
Referring to the weave pattern or the grid of intersecting lines disclosed in
Hannington, the Examiner finds the "first line of the weave pattern or grid is a first
pattern and the second line at a 90 degree angle to the first line is the second
pattern." Ans. 3.
The Appellant argues that Hannington does not teach or suggest a second
pattern that at least partially overlaps a first embossed pattern as recited in claims 1
and 24. 3 For support, the Appellant relies on a previous Board decision4 entered in
2 Examiner's Answer dated February 27, 2015.
3 According to the Appellant's Specification, the term "overlap" requires contact.
See Spec. 23, 11. 24--26 (partially exposed second surface 11 Ob "is partially in
contact with the first surface 106a of pattern 106 where the two patterns overlap"
( emphasis added)).
4 Decision on Appeal in Appeal 2009-006928, dated July 13, 2010.
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Appeal2015-005579
Application 12/029,570
Application 10/596,659, the parent of the instant Application. 5 Br. 4; see Decision
3 (holding that "the Examiner does not direct us to any disclosure in Hannington
describing, within the meaning of 35 U.S.C. § 102,[6] a second pattern that partially
overlaps a first pattern as recited in the claims on appeal"). 7
The dispositive issue on appeal is: Did the Examiner reversibly err in
finding that the grid of intersecting lines or the weave pattern disclosed in
Hannington comprises a first pattern and a second pattern that partially overlaps
the first pattern as recited in claims 1 and 24?
To resolve the issue, we tum to the Appellant's Specification to determine
the meaning of the term "pattern" in the claims on appeal. See Vitronics Corp v.
Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996) ("[T]he specification is
always highly relevant to the claim construction analysis. Usually, it is dispositive;
it is the single best guide to the meaning of a disputed term.").
The Appellant discloses:
The [first and second] patterns, independently, can be a plurality of
dots, lines or bars, continuous or broken, etc. provided one partially
overlaps the other pattern. . . . The pattern may be a grid of
intersecting lines, a weave pattern, a waffle pattern, diagonal straight
and curved lines, tiled geometric figures, such as hexagons,
rectangles, overlapping circles or triangles, or lines in a cross hatch
pattern.
Spec. 14, 1. 27-15, 1. 8 (emphasis added).
5 Application 10/596,659, issued as US 7,910,187 on March 22, 2011.
6 A reference is anticipatory when it discloses each and every element of the
claimed invention, arranged or combined in the same way as in the claim. In re
Gleave, 560 F.3d 1331, 1334 (Fed. Cir. 2009).
7 The Hannington publication applied in the§§ 102(b) and 103(a) rejections on
appeal is the same Hannington publication at issue in Appeal 2009-006928.
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Appeal2015-005579
Application 12/029,570
Based on the Appellant's disclosure, we find that "a grid of intersecting
lines" and "a weave pattern" (and for that matter, the "overlapping circles or
triangles," the "waffle pattern," and the "cross hatch pattern") each comprises a
single pattern. Thus, one grid of intersecting lines or one weave pattern, for
example, corresponds to either the first pattern or the second pattern recited in
claims 1 and 24. The Examiner does not direct our attention to any disclosure in
the Appellant's Specification indicating that the Appellant intended to give a
broader meaning to the term "pattern."
To the extent that the Examiner's interpretation of the term "pattern" may be
based on the Appellant's disclosure that a pattern also includes a plurality of lines,
the Appellant discloses that a plurality of lines is a different pattern from the "grid
of intersecting lines" or the "weave pattern." See Spec. 30, 11. 10-13 (describing
the first pattern 106 in one embodiment of the invention as constituting "lines");
Appellant's Fig. 13 (depicting spaced apart, not intersecting, lines as an embossed
pattern 122).
In the rejection on appeal, the grid of intersecting lines or the weave pattern
disclosed in Hannington is said to correspond to the claimed first and second
patterns. However, based on our interpretation of the term "pattern," supra, we
find that a single grid of intersecting lines or a single weave pattern corresponds to
one pattern, not the first and second patterns, recited in claims 1 and 24. 8 The
Examiner does not find that Hannington describes a second pattern that partially
8 Likewise, we find that a single pattern of overlapping circles or triangles, a single
waffle pattern, or a single cross hatch pattern corresponds to one pattern recited in
claims 1 and 24. See Ans. 8-10 (finding that overlapping circles or triangles, a
waffle pattern, and a cross hatch pattern each comprise overlapping layers).
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Application 12/029,570
overlaps a grid of intersecting lines or a weave pattern as claimed. Therefore, we
cannot sustain the § 102(b) rejection of claims 1-26.
The Examiner's obviousness rejection of claim 28 does not cure the
deficiencies in Hannington described above. See Ans. 6 (finding that the "first line
of the weave pattern or grid is a first pattern and the second line at a 90 degree
angle to the first line is the second pattern"). Therefore, the§ 103(a) rejection of
claim 2 8 is not sustained.
C. DECISION
The Examiner's decision is reversed.
REVERSED
6