Ex Parte Lammer

Board of Patent Appeals and Interferences

Mar 8, 2011

10343702 (B.P.A.I. Mar. 8, 2011)

UNITED STATES PATENT AND TRADEMARK OFFICE
_________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte HERFRIED LAMMER
__________

Appeal 2009-012240
Application 10/343,702
Technology Center 1700
___________

Before ADRIENE LEPIANE HANLON, MARK NAGUMO, and
MICHAEL P. COLAIANNI, Administrative Patent Judges.

HANLON, Administrative Patent Judge.

DECISION ON APPEAL1

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.
Appeal 2009-012240
Application 10/343,702

2
A. STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134 from an Examiner’s decision
rejecting claims 1-3, 5-7, 10, 12, 13, 15-17, 20, 32-35, 37-42, 44-49, and 51-
63.2 We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
The subject matter on appeal relates to a grip tape for sports
implements comprising a phase change material provided within
microspheres. The phase change material changes phase from a solid to a
liquid at approximately 32-38°C wherein heat is absorbed during
liquification and released during solidification. Claim 1, reproduced below,
is illustrative.
1. A grip tape for sports implements, said grip tape
comprising a phase change material provided within
microspheres configured to change phase from a solid to a
liquid at approximately 32-38ºC wherein heat is absorbed
during liquification and released during solidification.

App. Br., Claims Appendix.3
The only Examiner’s rejection before us on appeal is the rejection of
claims 1-3, 5-7, 10, 12, 13, 15-17, 20, 32-35, 37-42, 44-49, and 51-63 under
35 U.S.C. § 103(a) as unpatentable over Ohira4 in view of Pushaw,5 either
alone or further in view of Huang.6

2 Claim 50 was cancelled in an Amendment under 37 C.F.R. § 41.33 dated
August 9, 2007. The Examiner indicates that this amendment has been
entered. See Communication dated February 13, 2008; Examiner’s Answer
dated February 21, 2008 (“Ans.”), at 2.
3 Appeal Brief dated August 9, 2007.
4 EP 0 897 675 A1 published February 24, 1999.
5 US 5,851,338 issued December 22, 1998.
6 US 5,695,418 issued December 9, 1997.
Appeal 2009-012240
Application 10/343,702

3
B. ISSUE
The sole issue on appeal is whether the Examiner reversibly erred in
concluding that the dipole-containing polymers of Ohira and the
microcapsule-containing polymers of Pushaw are functionally equivalent
and substitution of one for the other would have been obvious.
C. DISCUSSION
Ohira discloses a grip tape consisting of a single layer of a tape
substrate wherein the substrate base material is a polymer. Ohira, paras.
[0288], [0290]. Ohira discloses that the grip tape provides “excellent impact
absorption.” Ohira, para. [0287].
Ohira Figures 1 and 2 are said to illustrate this impact absorption. In
particular, Ohira Figure 1 shows a “stable” arrangement of dipoles 12 in a
tape substrate 11 prior to the propagation of an impact. When an impact or
shock is applied on the substrate, the dipoles 12 are displaced into an
“unstable state” as illustrated in Ohira Figure 2. Ohira, para. [0292]. Ohira
discloses that a polymer having large internal dipole moments and a glass
transition point in the operating temperature region, i.e., between about
-20°C and about 40°C, may be used to maximize the damping effect. Ohira,
paras. [0294], [0296]. A moment activator may also be added to enhance
the dipole moment of the tape substrate. Ohira, paras. [0299]-[0300].
The Examiner finds that Ohira does not teach a grip tape comprising a
phase change material encapsulated within microspheres wherein the phase
change material changes from a solid to a liquid at approximately 32-38°C
Appeal 2009-012240
Application 10/343,702

4
as recited in claim 1. Ans. 3. However, the Examiner finds that Pushaw
discloses a phase change material as claimed.7 Ans. 3-4.
The invention disclosed in Pushaw relates to porous substrates treated
with microspheres containing phase change material dispersed in a binder.
Pushaw 1:23-26. In a preferred embodiment, microspheres containing a
phase change material are dispersed throughout an acrylic binder and
applied to a polyurethane foam. Pushaw 2:46-48. The disclosed phase
change materials are said to be capable of absorbing or releasing thermal
energy to reduce or eliminate heat transfer at the temperature stabilizing
range of the particular temperature stabilizing material. Pushaw 4:59-62.
The disclosed foam article is said to be useful as a shoe liner in athletic
shoes. Pushaw 7:21-22.
The Examiner contends:
Since [Ohira] teaches a thermal energy damping composition
(unconstrained or constrained) useful for making a grip tape,
and Pushaw teaches a functionally equivalent energy absorbing
composition useful for athletic articles, they are of the same
field of endeavor. It would have been obvious to one of
ordinary skill in the art to form a grip tape of [Ohira] with an
alternative phase change composition taught by Pushaw,
because the selection of a known material based on its
suitability for its intended use supported a prima facie
obviousness determination. See MPEP § 2144.07.

Ans. 4.
The Appellant argues that there is no apparent reason to combine the
teachings of the applied references. App. Br. 10. In particular, the
Appellant argues that the “[g]rip tape 11 of Ohira is tailored to convert

7 The Examiner relies on Huang as teaching a polyurethane layer bonded to
a felt layer. Ans. 4-5.
Appeal 2009-012240
Application 10/343,702

5
impact vibrations into heat using an electrical phenomenon associated with
dipoles 12, while permeated substrate 10 of Pushaw is tailored to absorb or
release thermal energy by a material's change of phase.” Reply Br. 4.8
The Examiner’s sole reason for modifying the grip tape of Ohira with
the phase change material of Pushaw is based on the “functional
equivalence” of the energy absorbing materials disclosed in Ohira and
Pushaw.9 However, the Examiner does not direct us to any evidence
establishing that the materials are functionally equivalent or that one of
ordinary skill in the art would have considered them to be functional
equivalents. In fact, the evidence of record appears to establish otherwise.
Without any credible evidence demonstrating that the materials of
Ohira and Pushaw are functionally equivalent, we reverse the § 103(a)
rejection on appeal. See In re Kahn, 441 F.3d 977, 987-88 (Fed. Cir. 2006)
(“rejections on obviousness grounds cannot be sustained by mere conclusory
statements; instead, there must be some articulated reasoning with some
rational underpinning to support the legal conclusion of obviousness”).
D. DECISION
The decision of the Examiner is reversed.

REVERSED

8 Reply Brief dated April 21, 2008.
9 The Examiner makes an additional statement relating to the obviousness of
the claimed grip tape. However, that statement relates to the obviousness of
encapsulating a phase change material. Ans. 4.
Appeal 2009-012240
Application 10/343,702

6

sld

FINNEGAN, HENDERSON, FARABOW,
GARRETT & DUNNER LLP
901 NEW YORK AVENUE, NW
WASHINGTON DC 20001-4413