Ex Parte Kuo et alDownload PDFPatent Trial and Appeal BoardNov 21, 201713209255 (P.T.A.B. Nov. 21, 2017) Copy Citation 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. B-7117 626536-5 9727 EXAMINER NORDMEYER, PATRICIA L ART UNIT PAPER NUMBER 1788 MAIL DATE DELIVERY MODE 13/209,255 08/12/2011 Tsung-Tien Kuo 36716 7590 11/22/2017 LADAS & PARRY 5670 WILSHIRE BOULEVARD, SUITE 2100 LOS ANGELES, CA 90036-5679 11/22/2017 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 TSUNG-TIEN KUO, JEN-RONG LIU, TSUN-RUNG HSU, MING-YANG LI, and CHIH-WEI HSU Appeal 2017-003552 Application 13/209,255 Technology Center 1700 Before MICHAEL P. COLAIANNI, GEORGE C. BEST, and N. WHITNEY WILSON, Administrative Patent Judges. WILSON, Administrative Patent Judge. DECISION ON APPEAL Appellants1 appeal under 35 U.S.C. § 134(a) from the Examiner’s September 23, 2015 decision finally rejecting claims 1, 5—10, 12, and 14. We have jurisdiction over the appeal under 35 U.S.C. § 6(b). We reverse. 1 Appellants identify the real party in interest as Taiwan Hopax Chemicals Mfg. Co., Ltd. (Br. 3). Appeal 2017-003552 Application 13/209,255 CLAIMED SUBJECT MATTER Appellants’ invention is directed to a sticky note pad having a stack of note sheets, each of which is said to be unlikely to warp and deform when the note sheet is tom off. Spec. 1:7—11. Claim 14 is representative and is reproduced below from the Claims Appendix of the Brief (emphasis added): 14. A note pad, comprising: a stack of note sheets each of which is tearable from said note pad in a tearing direction and capable of reducing warpage, and each of which includes: a substrate having a writing face and a back face opposite to said writing face, said back face having a central re-adherable portion and a peripheral portion surrounding said central re-adherable portion; and a rounded loop-shaped adhesive layer formed on said central re-adherable portion of said back face to permit said substrate together with said rounded loop-shaped adhesive layer to be releasably attachable and to alleviate a warp problem of said note sheet when said note sheet is tom off from said stack of said note sheets, wherein the rounded loop-shaped adhesive layer has a predetermined surface area out of the surface area of said back face. Br. 34—35 (Claims App.). REJECTIONS (1) Claims 1, 6, 7, 9, 10, 12, and 14 are rejected under 35 U.S.C. § 102(b) as anticipated by Weder.2 (2) Claims 5 and 8 are rejected under 35 U.S.C. § 103(a) as unpatentable over Weder in view of Krish.3 2 Weder, US 2002/0023336 Al, published Feb. 28, 2002. 3 Krish et al., US 6,187,432 Bl, issued Feb. 13, 2001. 2 Appeal 2017-003552 Application 13/209,255 Appellants’ argument urging reversal of Rejection (1) are directed to whether Weder discloses limitations recited in independent claim 14 (see Br. 10-26), which are also found in independent claim 1. Accordingly, our discussion will focus on Rejection (1) of claim 14. DISCUSSION Rejection (1) It is well established that “[a] prior art reference anticipates a patent claim under 35 U.S.C. § 102(b) if it discloses every claim limitation.” In re Montgomery, 677 F.3d 1375, 1379 (Fed. Cir. 2012) (citing Verizon Servs. Corp. v. CoxFibernet Va., Inc., 602 F.3d 1325, 1336—37 (Fed. Cir. 2010)). The anticipatory reference, furthermore, must disclose the claimed invention “such that a skilled artisan could take its teachings in combination with his own knowledge of the particular art and be in possession of the invention.” In re Graves, 69 F.3d 1147, 1152 (Fed. Cir. 1995) (quoting In reLeGrice, 301 F.2d 929, 936 (CCPA 1962)). In this instance, Appellants argue, inter alia, that the Examiner has failed to show that Weder discloses each and every limitation of claim 14 (Br. 10). In particular, Appellants argue that “the Examiner does not directly address the characteristics of the ‘adhesive layer’ relating to ‘re-adherable’” and thus “the factual basis required for making this rejection has not been provided” (id. at 16). According to Appellants, “Weder describes the need to make sure that that his ‘bonding material’ does not stick one flower pot cover to . . . another” (id. at 17). Appellants thus conclude that one of ordinary skill in the art would glean from this disclosure “that Weder is 3 Appeal 2017-003552 Application 13/209,255 talking about bonding material that does not have the characteristic[] of. . . ‘re-adherable’” (id.). The Examiner finds that the disputed limitations in claim 14 read on Weder’s disclosure because the applied prior art discloses a central re- adherable portion with a rounded loop-shaped adhesive layer formed thereon (Ans. 4, citing Weder Figures 1 and 18; 1132). The Examiner further finds that “Weder clearly defines that the bonding material may be a variety of materials, which includes a pressure-sensitive adhesive or a cohesive.” (Ans. 11, citing Weder | 60). Appellants’ arguments (Br. 10, 16—17), are persuasive that the evidence of record does not support the Examiner’s findings that Weder’s adhesive layer, i.e., connecting bonding material 24, possesses the requisite “re-adherable” characteristic recited in claim 14 (see Weder Figure 1; Tflf 49, 60, and 61). Graves, 69 F.3d at 1152. Furthermore, the Examiner has neither made any findings that, nor explained how, Weder’s pressure- sensitive adhesive or cohesive possesses the requisite re-adherable property. See also Ex Parte Levy, 17 USPQ2d 1461, 1464 (BPAI 1990) (to properly rely on the doctrine of inherency in a rejection, “the Examiner must provide a basis in fact and/or technical reasoning to reasonably support the determination that the allegedly inherent characteristic necessarily flows from the teachings of the applied prior art.”). Because Weder does not disclose that connecting bonding material 24, pressure-sensitive adhesive, or cohesive are re-adherable, we find that the Examiner has erred in finding that Weder anticipates claim 14. Montgomery, 677 F.3d at 1379. Accordingly, we reverse the rejection of 4 Appeal 2017-003552 Application 13/209,255 claim 14 under 35 U.S.C. § 102(b) as anticipated by Weder. Claims 1, 6, 7, 9, 10, and 12 will stand with claim 14. 37 C.F.R. § 41.37(c)(l)(iv). Rejection (2) The Examiner’s findings in support of the obviousness rejection of dependent claims 5 and 8 do not address Weder’s deficiency with respect to independent claim 1 (see, e.g., Br. 10, 16—17; Ans. 4, 11). Accordingly, we reverse the rejection of claims 5 and 8 for the reasons set forth above. CONCLUSION We REVERSE the rejection of claims 1, 6, 7, 9, 10, 12, and 14 under 35 U.S.C. § 102(b) as anticipated by Weder. We REVERSE the rejection of claims 5 and 8 under 35 U.S.C. § 103(a) as obvious over Weder in view of Krish. REVERSED 5 Copy with citationCopy as parenthetical citation