10561503 (B.P.A.I. May. 11, 2010)

Ex Parte Harai

Board of Patent Appeals and InterferencesMay 11, 2010

10561503 (B.P.A.I. May. 11, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES ____________ Ex parte SATOSHI HARAI ____________ Appeal 2009-003848 Application 10/561,503 Technology Center 1700 ____________ Decided: May 11, 2010 ____________ Before MICHAEL P. COLAIANNI, BEVERLY A. FRANKLIN, and KAREN M. HASTINGS, Administrative Patent Judges. HASTINGS, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellant seeks our review under 35 U.S.C. § 134 of the Examiner’s final decision rejecting claims 11, 13-16, and 21-26. We have jurisdiction over the appeal under 35 U.S.C. § 6(b). We REVERSE. Appeal 2009-003848 Application 10/561,503 2 Claim 21 is illustrative: 21. A double-sided pressure-sensitive sheet comprising, in the following order, a first pressure-sensitive adhesive layer, a first black layer, a flexible base layer, a second black layer, and a second pressure-sensitive adhesive layer, wherein said first pressure-sensitive adhesive layer and second pressure-sensitive adhesive layer are the outermost layers on either side of the double-sided pressure-sensitive sheet, and wherein the thickness of the double-sided pressure-sensitive sheet is no greater than 60 μm. Appellant appeals the following rejection: Claims 11, 13-16, and 21-26 under 35 U.S.C. § 102(b) as anticipated by JP '663 (JP 2002-23663 published Jan. 23, 2002) (as translated). ISSUE Did the Examiner err in finding that JP '663 describes first and second black layers arranged as recited in independent claims 21 and 22? We answer this question in the affirmative. PRINCIPLES OF LAW “[U]nless a reference discloses within the four corners of the document not only all of the limitations claimed but also all of the limitations arranged or combined in the same way as recited in the claim, it cannot be said to prove prior invention of the thing claimed and, thus, cannot anticipate under 35 U.S.C. § 102.” Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1371 (Fed. Cir. 2008) (emphasis added). In order to anticipate, a reference must identify something falling within the claimed subject matter with sufficient specificity to constitute a Appeal 2009-003848 Application 10/561,503 3 description thereof within the purview of § 102. In re Schaumann, 572 F.2d 312, 317 (CCPA 1978). ANALYSIS with Factual Findings Appellant argues that the Examiner has not shown how JP '663 identically discloses the first and second black layers as recited in the multi- layered double sided pressure sensitive sheet of either independent claim 21 or claim 22 (App. Br. 8-11). We agree. The Examiner’s repeated reliance on “(Page 5 of the translation, Paragraph 0011, lines 10-27)” for both the first and second black layers (Ans. 3, 4, 5), when that portion of the reference only broadly discloses that black or white pigment may be added to an adhesive layer or protective layer, does not satisfy the claim limitations at hand for at least the reasons explained by Appellant (App. Br. 8-11; Reply Br. 5). The Examiner’s further explanation that “additional layers may be present in the construction of the double sided adhesive, which allows the black layer and the adhesive layer being two distinct layers” (Ans. 5, emphasis added) only highlights that JP ‘663 does not describe the multi-layered structure therein with sufficient specificity to anticipate the claims. The Examiner in the present case has not based any rejection for our review on a theory that locating first and second black layers as claimed would have been obvious to a person having ordinary skill in the art at the time of Appellant's invention in view of the prior art, and thus we take no position on this issue in the present opinion. See, e.g., Ex Parte Frye, No. 2009-006013, 2010 WL 889747, *3 at *6 (BPAI) (Precedential) (“Our decision is limited to the finding before us for review.”). Appeal 2009-003848 Application 10/561,503 4 DECISION We reverse the Examiner’s § 102 rejection. ORDER REVERSED cam 3M INNOVATIVE PROPERTIES COMPANY P O BOX 33427 ST. PAUL, MN 55133-3427