Ex Parte Hatton

Board of Patent Appeals and Interferences

Apr 29, 2004

09772409 (B.P.A.I. Apr. 29, 2004)

1Appellant submitted a minor amendment with the Brief that
corrected the dependency of claim 19 (Brief, page 2, Section III;
see the amendment dated Mar. 4, 2003, Paper No. 11 ½). This
amendment has been entered by the examiner (Answer, page 3,
¶(4)).
The opinion in support of the decision being entered today was not written
for publication and is not binding precedent of the Board.
Paper No. 16
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte RICHARD J. HATTON
____________
Appeal No. 2004-1053
Application No. 09/772,409
____________
ON BRIEF
____________
Before WARREN, WALTZ, and TIMM, Administrative Patent Judges.
WALTZ, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on an appeal from the primary examiner’s
final rejection of claims 1 through 29, which are the only claims
pending in this application.1 We have jurisdiction pursuant to 35
U.S.C. § 134.
According to appellant, the invention is directed to a hanging
device 20 comprising a strip 40 and a pressure sensitive adhesive
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Application No. 09/772,409
2
42, where the strip 40 has two end tab portions 44 and 46 and a
neck portion 48 connecting the two tab portions (Brief, page 5).
The adhesive layer 42 is located on the end tab portions 44 and 46
so that the strip 40 can be folded at the neck portion 48 and the
tab portions applied to opposite sides of the signage item (id.).
Appellant asserts that the invention provides a hanging device that
can be made with a shortened neck portion, without adhesive on the
neck portion, and/or without the use of foam adhesive (id.).
Appellant states that the claims do not stand or fall together
and lists various groups on page 10 of the Brief. To the extent
the groups of claims have been separately argued, we consider these
claims separately. See 37 CFR § 1.192(c)(7)(2000) and In re
McDaniel, 293 F.3d 1379, 1383, 63 USPQ2d 1462, 1465 (Fed. Cir.
2002). Representative independent claim 1 is reproduced below:
1. A hanging device for folded attachment to an item to be
suspended or tied down, said device comprising a strip and an
adhesive;
the strip comprising two outer tab portions and a neck portion
therebetween;
the adhesive being located on an inner surface of the tab
portions so that the strip can be folded at the neck portion and
the tab portions can be applied to opposite sides of the item; and
wherein the strip is made from a polymer and has thickness
between about 3 mil and about 20 mil.
Appeal No. 2004-1053
Application No. 09/772,409
2We note that the examiner erroneously stated this rejection
as based on section 102(b) in the final Office action, even
though section 103(a) is quoted before this rejection (Paper No.
9, page 2). However, we hold this error harmless as appellant
has correctly stated and argued this rejection as based on
section 103(a)(Brief, pages 10-11) and the examiner has correctly
stated the rejection on page 5 of the Answer.
3The final rejection of claim 12 over Conway in view of
Hatton has been withdrawn by the examiner (Answer, page 3).
3
The examiner has relied upon the following references as
evidence of obviousness:
Hatton 5,378,515 Jan. 03, 1995
Hamerski et al. (Hamerski) 6,120,867 Sep. 19, 2000
Claims 1, 6, 12 and 16-24 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over Hatton (Answer, page 5).2 Claims 2-
4, 7, 8, 10, 11, 13-15, 25, 27 and 28 stand rejected under 35
U.S.C. § 103(a) as unpatentable over Hatton (id.). Claims 5, 9,
26 and 29 stand rejected under 35 U.S.C. § 103(a) as unpatentable
over Hatton in view of Hamerski (Answer, page 7).3 We affirm all
of the examiner’s rejections on appeal essentially for the reasons
stated in the Answer and those reasons set forth below.
OPINION
A. The Rejections over Hatton alone
For purposes of judicial economy, we will discuss the first
two listed rejections together, since the same statutory basis
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Application No. 09/772,409
4
(section 103(a)) and reference (Hatton) is employed in each
separate rejection.
With regard to claim 1 on appeal, the examiner finds that
Hatton discloses a polymer strip with two tab portions, an adhesive
on the inner surfaces of the tab portions, and a neck portion
(Answer, page 5). The examiner recognizes that Hatton does not
specifically teach a polymer strip having a thickness between about
3 and about 20 mil (id.), although Hatton teaches that the use of
“thin sheets” was known in the art (Answer, page 8). However, the
examiner concludes that it would have been obvious to one of
ordinary skill in this art at the time the invention was made to
have made the strip of various polymers with varying thicknesses
(id.). We agree.
Appellant argues that the hanging devices in Hatton addressed
the “gravitational strain” by using relatively thick (e.g., about
23 mil) high density polyethylene strip material, and thus there
would be no motivation to decrease the thickness of the prior art
hanging device (Brief, page 11). This argument is not well taken
for several reasons. First, as noted by the examiner (Answer, page
8), Hatton does not disclose or suggest that the thickness of the
strip is about 23 mil. Accordingly, appellant’s argument is not
directed to any reference disclosure. Secondly, Hatton teaches
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that the prior art tabs are “typically made from thin sheets of
flexible plastic material” (col. 1, ll. 17-18) and gives examples
of “thin flexible sheets” (col. 4, l. 9). Even assuming arguendo
that Hatton discloses a strip material thickness of “about 23 mil,”
this thickness is sufficiently similar to the upper claimed range
of strip material thickness (“about 20 mil”) that one of ordinary
skill in this art would have expected similar results. See
Titanium Metals Corp. v. Banner, 778 F.2d 775, 781, 227 USPQ 773,
779 (Fed. Cir. 1985). Third, we note that even for thicknesses
less than “about 20 mil” (see claims 4, 8, 10 and 11), the
optimization of the thickness necessary to support the banner or
sign, in conjunction with the strength of the plastic, would have
been well within the ordinary skill in this art as a “result-
effective variable.” See In re Woodruff, 919 F.2d 1575, 1578, 16
USPQ2d 1934, 1936 (Fed. Cir. 1990). Furthermore, Hatton teaches
that any plastic material can be used as a strip material “provided
it has sufficient flexibility to be folded over ... and has
sufficient tensile strength to support the desired banner....”
Col. 4, ll. 4-8. Hatton also teaches that it is desirable to use
stronger plastic material in a tab (col. 1, ll. 45-51). Therefore
we agree with the examiner that the selection of the strip material
would also be well within the ordinary skill in this art, depending
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6
on the strength and flexibility desired (see claims 2, 3 and 7 on
appeal).
Appellant argues that claim 12 requires the inner surface of
the neck portion to be free from adhesive while Hatton requires the
adhesive be on the neck portion to allow adjacent portions of the
neck to “snap lock” together (Brief, page 12; Reply Brief, page 2).
This argument is not persuasive. As noted by the examiner (Answer,
pages 9-10), Hatton teaches that it was well known in the art to
have a neck portion without adhesive (see prior art Figure 5 and
col. 1, ll. 56-59 and 65-67), and only teaches “one embodiment”
where the neck is covered at least in part by adhesive to create
the “snap lock” feature (col. 5, ll. 5-20 and 42-49). Therefore we
agree with the examiner that it would have been well within the
ordinary skill in this art to use adhesive on part, all or none of
the neck portion of the hanging device, depending on the bond
desired, the strength of the tab portions, and the banner or sign
that must be supported.
Appellant argues that claim 13 recites that the length of the
neck portion is less than 40% of the length of the strip while the
Hatton patent specifically uses a “long neck” to counteract the
memory forces that otherwise cause the end portions to pull away
from the banner (Brief, paragraph bridging pages 12-13; Reply
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Application No. 09/772,409
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Brief, paragraph bridging pages 3-4). This argument is not
persuasive since, as noted by the examiner (Answer, page 11),
Hatton teaches that such a reduced length neck portion was known in
this art (see Figure 1). Therefore we agree with the examiner that
it would have been well within the ordinary skill in this art to
use any reduced length for the neck portion in Hatton as long as
the rope 40 (Figure 5) or string 182 (Figures 10-12) could go
through the folded neck portion and the neck has sufficient
strength to display the sign or banner. We note that with holes 29
or 166 (see Figures 1 and 7 of Hatton) used to display the sign or
banner (as per appellant’s Figures 2A and 6A-6D), the neck length
is immaterial.
With regard to claims 14, 15, 27 and 28, appellant argues that
neither the examiner nor the cited prior art has offered any
suggestion that the tab shape should be changed (Brief, page 13;
Reply Brief, page 4). This argument is not persuasive. As noted
by the examiner (Answer, page 11), Hatton teaches various shapes
for the tab portions (for the prior art and the Hatton invention -
see Figures 1 and 6). Furthermore, Hatton teaches that the shapes
of the corner tabs should be arranged to manufacture a plurality of
tabs with a minimum of waste material (col. 4, ll. 37-55; Figure
9). Thus, absent a showing of criticality, we agree with the
Appeal No. 2004-1053
Application No. 09/772,409
4The examiner also finds that, with regard to claims 16 and
29, Hatton does not teach that adhesive is located on the outer
tab surface and applies Hamerski for a teaching of this feature
(Answer, page 7). Appellant does not present any specific,
substantive arguments regarding claim 29 (see the Brief and Reply
Brief in their entirety). Accordingly, we do not consider this
claim separately. See 37 CFR § 1.192(c)(7)(2000).
8
examiner that the shape of any individual tab strip would have been
well within the ordinary skill in this art.
For the foregoing reasons and those set forth in the Answer,
we determine that the examiner has established a prima facie case
of obviousness in view of the reference evidence. Based on the
totality of the record, including due consideration of appellant’s
arguments, we determine that the preponderance of evidence weighs
most heavily in favor of obviousness within the meaning of section
103(a). Accordingly, we affirm the examiner’s rejections under
35 U.S.C. § 103(a) over Hatton.
B. The Rejection over Hatton in view of Hamerski
The examiner makes the same findings as discussed above
regarding Hatton but recognizes that Hatton does not teach a non-
foam adhesive (Answer, page 7).4 The examiner finds that Hamerski
teaches a hanging device for folded attachment using a non-foam
adhesive as an alternative to the foam adhesive of Hatton (id.).
From these findings, the examiner concludes that it would have been
Appeal No. 2004-1053
Application No. 09/772,409
9
obvious for one of ordinary skill in this art to have used the
adhesive of Hamerski for the foam adhesive of Hatton with the
expectation of similar results (id.).
Appellant argues that the foam adhesive taught by Hatton
serves a very express objective, namely to absorb the shear stress
by deflection, and therefore one of ordinary skill in this art
would not have been motivated to replace the foam adhesive of
Hatton (Brief, page 14; Reply Brief, page 5). This argument is not
well taken since, as noted by the examiner (Answer, sentence
bridging pages 12-13), Hatton does not teach that memory forces are
such an issue in every application of the invention that a foam
adhesive must be employed. We note that Hatton teaches, in one
embodiment (Figures 6A and 8A), that a single adhesive layer 162
may be used and this adhesive is preferably a pressure-sensitive
adhesive (col. 3, ll. 54-64 and col. 4, ll. 13-17). We also note
that appellant discloses that the present invention provides a
hanging device comprising a strip and a pressure sensitive adhesive
(specification, page 3, ll. 25-26). Therefore we determine no
difference between the adhesive taught by Hatton and the adhesive
used in the claimed hanging device. Even assuming arguendo a
difference in adhesives, we agree with the examiner that the use of
a different adhesive to achieve the same result in a hanging device
Appeal No. 2004-1053
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would have been well within the ordinary skill in this art, as
taught by Hamerski.
For the foregoing reasons and those set forth in the Answer,
we determine that the examiner has established a prima facie case
of obviousness based on the reference evidence. Based on the
totality of the record, including due consideration of appellant’s
arguments, we determine that the preponderance of evidence weighs
most heavily in favor of obviousness within the meaning of section
103(a). Accordingly, the examiner’s rejection under section 103(a)
over Hatton in view of Hamerski is affirmed.
C. Conclusion
The decision of the examiner is affirmed.
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Application No. 09/772,409
11
No time period for taking any subsequent action in connection
with this appeal may be extended under 37 CFR § 1.136(a).
AFFIRMED

CHARLES R. WARREN )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
THOMAS A. WALTZ ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
CATHERINE TIMM )
Administrative Patent Judge )
TAW/jrg
Appeal No. 2004-1053
Application No. 09/772,409
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