Ex Parte McGuire

Board of Patent Appeals and Interferences

Jan 26, 2012

11342085 (B.P.A.I. Jan. 26, 2012)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
11/342,085 01/27/2006 Kenneth Stephen McGuire 10292L 1824
27752 7590 01/26/2012
THE PROCTER & GAMBLE COMPANY
Global Legal Department - IP
Sycamore Building - 4th Floor
299 East Sixth Street
CINCINNATI, OH 45202
EXAMINER
HUANG, CHENG YUAN
ART UNIT PAPER NUMBER
1787
MAIL DATE DELIVERY MODE
01/26/2012 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
________________

Ex parte KENNETH STEPHEN MCGUIRE
________________

Appeal 2010-010047
Application 11/342,085
Technology Center 1700
________________

Before TERRY J. OWENS, CATHERINE Q. TIMM, and
BEVERLY A. FRANKLIN, Administrative Patent Judges.

OWENS, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
The Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1-11 and 13-20, which are all of the pending claims. We
have jurisdiction under 35 U.S.C. § 6(b).
The Invention
The Appellant claims a storage wrap material. Claim 1 is illustrative:

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1. An improved storage wrap material comprising:

(a) a sheet of non-porous material having a first side and a second side, said
first side comprising an active side exhibiting an adhesion peel force after
activation by a user which is greater than an adhesion peel force exhibited
prior to activation by a user and which is sufficient to form a continuous seal
against any target surface, wherein said active side exhibits an [sic, a] wet
seal adhesion peel force of at least about 20 gf per inch width after activation
by a user, wherein said active side comprises a plurality of three-
dimensional non-adherent protrusions extending outwardly from said sheet
of material and a pressure-sensitive adhesive surrounding said non-adherent
protrusions, said adhesive having a thickness less than the height of said
non-adherent protrusions before activation.

The References
Hamilton (Hamilton ‘062) US 6,194,062 B1 Feb. 27, 2001
Feldstein US 2005/0215727 A1 Sep. 29, 2005
Hamilton (Hamilton ‘256) WO 97/25256 A1 Jul. 17, 1997
The Rejections
Claims 1-11 and 13-20 stand rejected under 35 U.S.C. § 102(b) over
Hamilton ‘256, under 35 U.S.C. § 103 over Hamilton ‘256 in view of
Feldstein, and under the judicially created doctrine of obviousness-type
double patenting over claims 1-7, 9, 10, 14, 17-21, and 23 of Hamilton ‘062
in view of Feldstein.
OPINION
We affirm the rejections.
Rejections under 35 U.S.C. §§ 102(b) and 103
Hamilton ‘256 discloses a storage wrap comprising a sheet of material
which can be nonporous and has a first side and a second side, the first side
comprising three-dimensional protrusions partially filled by a substance
which can be a pressure sensitive adhesive and which has a thickness less
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than the height of the protrusions (p. 9, ll. 27-30; p. 24, l. 35 – p. 25, l. 1;
p. 25, ll. 34-36; p. 26, l. 20-23). The active side exhibits an adhesion peel
force after activation by a user which is greater than an adhesion peel force
exhibited prior to activation by a user (p. 4, ll. 29-32). The adhesion peel
force preferably is from about 1 to about 2.5 ounces/inch width (about 28 to
about 71 gf/inch width) (p. 8, ll. 25-32).
The Appellant argues that Hamilton ‘256 “does not disclose a need to
satisfy a minimum wet seal or aged seal limitation” (Br. 4) and “does not
seek to solve a problem related to adherence to moist surfaces” (Reply
Br. 4).
The Appellant does not claim a storage wrap adhered to a moist
surface. The wet seal adhesion peel force is merely a measured property of
the Appellant’s storage wrap (Spec. 11:11 – 12:10). Because
Hamilton ‘256’s storage wrap comprises the same sheet materials as that of
the Appellant (Hamilton ‘256, p. 25, l. 32 – p. 26, l. 6; Spec. 10:20-31),
comprises the same adhesives as that of the Appellant (Hamilton ‘256, p. 25,
ll. 9-22, p. 26, ll. 22-25; Spec. 9:31 – 10:10, 10:34 – 11:3), has the same
protrusions as that of the Appellant (Hamilton ‘256, p. 26, ll. 7-19;
Spec. 8:30 – 9:7), is made by the same process as that of the Appellant
(Hamilton ‘256, p. 31, ll. 11-23; Spec. 15:7-19), and has the same preferred
adhesion peel force as that of the Appellant (Hamilton ‘256, p. 5, ll. 2-4;
Spec. 1:25-27), it appears that Hamilton ‘256’s storage wrap also has the
same wet seal adhesion peel force and aged seal adhesion peel force as that
of the Appellant. Moreover, like the Appellant’s adhesive, Hamilton ‘256’s
adhesive can form a permanent bond which is stronger than the storage wrap
material and, therefore, appears to have a wet seal adhesion peel force
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(Appellant’s claim 1) and an aged seal adhesion peel force (Appellant’s
claim 20) of at least about 20 gf/inch width (Hamilton ‘256, p. 7, ll. 29-24;
Spec. 4:20-23).
“[W]hen the PTO shows sound basis for believing that the products of
the applicant and the prior art are the same, the applicant has the burden of
showing that they are not.” In re Spada, 911 F.2d 705, 708 (Fed. Cir. 1990).
The Appellant has not carried that burden. Accordingly, we affirm the
rejection under 35 U.S.C. § 102(b). Because anticipation is the epitome of
obviousness, see In re May, 574 F.2d 1082, 1089 (CCPA 1978), In re
Skoner, 517 F.2d 947, 950 (CCPA 1975); In re Pearson, 494 F.2d 1399,
1402 (CCPA 1974), we also affirm the rejection under 35 U.S.C. § 103.1
Obviousness-type double patenting rejection
Hamilton ‘062 claims a storage wrap having an active side
1) exhibiting an adhesion peel force, after activation by a user, of at least
about 1 ounce per inch width (claim 5) or between about 1 and about
2.5 ounces per inch width, or 2) forming a permanent bond when activated
(claim 11). The disclosed storage wrap comprises the same sheet materials
as that of the Appellant (Hamilton ‘062, col. 20, ll. 13-28; Spec. 10:20-31),
comprises the same adhesives as that of the Appellant (Hamilton ‘062, col.
19, ll. 48-67; col. 20, ll. 47-57; Spec. 9:31 – 10:10, 10:34 – 11:3), has the
same protrusions as that of the Appellant (Hamilton ‘062, col. 20, ll. 29-46;
Spec. 8:30 – 9:7), is made by the same process as that of the Appellant
(Hamilton ‘062, col. 24, ll. 24-41; Spec. 15:7-19), and has the same

1 A discussion of Feldstein is not necessary to our decision.
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preferred adhesion peel force of about 1 to about 2.5 ounces per linear inch
as that of the Appellant (Hamilton ‘062, col. 4, ll. 12-15; Spec. 1:25-27).
The Appellant argues that “[t]he Examiner provides no adequate
motivation to provide a wrap material having a wet seal adhesion let alone a
particular wet seal adhesion” (Br. 6).
Because Hamilton ‘062’s and the Appellant’s storage wraps appear to
be the same materials and have the same preferred adhesion peel force, it
appears that they likewise have the same wet seal adhesion peel force and
aged seal adhesion peel force. Moreover, like the Appellant’s adhesive,
Hamilton ‘062’s adhesive can form a permanent bond which is stronger than
the storage wrap material and, therefore, appears to have a wet seal adhesion
peel force (Appellant’s claim 1) and an aged seal adhesion peel force
(Appellant’s claim 20) of at least about 20 gf/inch width (Hamilton ‘062,
col. 6, ll. 21-28; Spec. 4:20-23).2
Accordingly, we are not persuaded of reversible error in the
obviousness-type double patenting rejection.
DECISION/ORDER
The rejections of claims 1-11 and 13-20 under 35 U.S.C. § 102(b)
over Hamilton ‘256, under 35 U.S.C. § 103 over Hamilton ‘256 in view of
Feldstein, and under the judicially created doctrine of obviousness-type
double patenting over claims 1-7, 9, 10, 14, 17-21, and 23 of Hamilton ‘062
in view of Feldstein are affirmed.
It is ordered that the Examiner’s decision is affirmed.

2 A discussion of Feldstein is not necessary to our decision.
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No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED

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