Ex Parte Moody

Patent Trial and Appeal Board

Jul 31, 2017

14195078 (P.T.A.B. Jul. 31, 2017)

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.
14/195,078 03/03/2014 Valarie Moody 8981-132503-US 9666
22242 7590 07/31/2017
FITCH EVEN TAB IN & FLANNERY, LLP
120 SOUTH LASALLE STREET
SUITE 1600
CHICAGO, IL 60603-3406
EXAMINER
VERAA, CHRISTOPHER
ART UNIT PAPER NUMBER
3638
MAIL DATE DELIVERY MODE
07/31/2017 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 VALARIE MOODY
Appeal 2016-007272
Application 14/195,0781
Technology Center 3600
Before JOHN A. EVANS, CARL L. SILVERMAN, and
NORMAN H. BEAMER, Administrative Patent Judges.
EVANS, Administrative Patent Judge.
DECISION ON APPEAL
Appellants seek our review under 35 U.S.C. § 134(a) of the
Examiner’s Final Rejection of Claims 1—4 and 6. App. Br. 8. We have
jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.2
1 The Appeal Brief identifies Reel Life DVD, LLC, as the real party in
interest. App. Br. 3.
2 Rather than reiterate the arguments of Appellants and the Examiner, we
refer to the Appeal Brief (filed Oct. 28, 2015, “App. Br.”), the Reply Brief
(filed July 15, 2016, “Reply Br.”), the Examiner’s Answer (mailed May 18,
2016, “Ans.”), the Final Action (mailed May 28, 2015, “Final Act.”), and the
Specification (filed Mar. 3, 2014, “Spec.”) for their respective details.
Appeal 2016-007272
Application 14/195,078
STATEMENT OF THE CASE
The Invention
The claim relates to an adhesive frame having a semi-permanent
adhesive layer disposed on a second side thereon. See Abstract.
An understanding of the invention can be derived from a reading of
Claim 1, the sole independent claim, which is reproduced below with some
formatting added:
1. An apparatus comprising:
a clear flexible sheet member;
a printed substrate ink layer disposed on a border of a first
side of the clear flexible sheet member;
a patterned removable-repositionable adhesive layer
disposed on a second side of the clear flexible sheet member, the
patterned removable-repositionable adhesive layer disposed
around a substantial portion of the border in a configuration to
not cover at least a middle portion of the clear flexible sheet
member;
a liner removably disposed across substantially all of the
second side of the clear flexible sheet member;
wherein the portion of the clear flexible sheet member not
covered in the patterned removable repositionable adhesive layer
is configured to provide a non-stick surface of the clear flexible
member configured to engage a visual medium and allow display
of the visual medium through the clear flexible sheet member
when the liner is removed and the patterned removable-
repositionable adhesive layer engages a mounting surface;
wherein the patterned removable-repositionable adhesive
layer consists of a removable repositionable water-based acrylic
adhesive filtered to remove clumps of adhesive and having a
consistency adequate to be smoothed by application of the liner
by in-line application to the patterned removable-repositionable
adhesive layer on the clear flexible sheet member to substantially
flatten the patterned removable-repositionable adhesive layer to
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Appeal 2016-007272
Application 14/195,078
an even coverage for even adhesion between the liner and the
clear flexible sheet member.
References
Morgan
Baker, et al.
Gustafson
Himes Jr., et al.
Valiulis
Bradford
US 3,442,041
US 3,540,966
US 5,364,671
US 5,650,009
US 6,519,885 B2
US 6,780,273 B1
May 6, 1969
Nov. 17, 1970
Nov. 15, 1994
July 22, 1997
Feb. 18,2003
Aug. 24, 2004
Rejections3
1. Claims 1, 3, and 6 stand rejected under 35 U.S.C. 103(a) as
unpatentable over Gustafson and Bradford. Final Act. 3^4.
2. Claim 2 stands rejected under 35 U.S.C. 103(a) as unpatentable over
Gustafson, Bradford, and Baker. Final Act. 4—5.
3. Claim 4 stands rejected under 35 U.S.C. 103(a) as unpatentable over
Gustafson, Bradford, and Valiulis. Final Act. 5.
4. Cla
ANALYSIS
We have reviewed the rejection of Claims 1— 4 and 6 in light of
Appellant’s arguments that the Examiner erred. We are persuaded of error.
Claims 1,3, and 6: Obviousness over Gustafson and Bradford
Claim 1 recites, inter alia, “wherein the patterned removable-
repositionable adhesive layer consists of a removable repositionable water-
3 The Rejection of Claim 1 as indefinite under 35 U.S.C. § 112, is not
maintained in the Examiner’s Answer. The Examiner maintains the
rejection of canceled Claim 5 the merits of which we decline to reach.
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Appeal 2016-007272
Application 14/195,078
based acrylic adhesive.” Appellant contends, with respect to the claimed
“removable-repositionable adhesive layer,” that the transition phrase
“consists of,” operates to exclude all other types of adhesive. App. Br. 8.
Appellant contends Gustafson’s adhesive is disclosed as comprising from 5—
20% of a permanent, pressure-sensitive adhesive and from 95—80% of a
repositionable, pressure-sensitive adhesive. Id. at 9. Appellant argues the
5—20% of a permanent, pressure-sensitive adhesive cannot be considered a
mere contaminant. Id.
The Examiner finds Gustafson’s permanent adhesive comprises at
least 5%, but finds “it would have been obvious ... to form the adhesive
layer from only the repositionable adhesive, since the repositionable
adhesive is still recognized as an adhesive . . . .” Ans. 2.
The inventor, Valarie Moody, filed a Declaration avowing:
The acrylic-based repositionable pressure sensitive
adhesive described by Gustafson, however, tends to flow or run
beyond the surface on which it is applied, and addition of the
permanent adhesive to the acrylic adhesive reduces the tendency
of the adhesive mixture to run. Without the permanent adhesive
added to the mixture, the acrylic-based repositionable pressure
sensitive adhesive described by Gustafson is not usable for the
intended purpose because it is likely to run into areas of the frame
not intended to have adhesive.
App. Br. 9-10 (citing Declaration of Inventor Valarie Moody filed January
20, 2015) (see Evidence Appendix).
The Examiner finds:
the water-based repositionable adhesive that comprises the
majority of Gustafson’s preferred mixture is essentially the same
as that recited in the claim. As such Gustafson’s repositionable
adhesive would read on the claim, but for the mixture with
permanent adhesive.
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Appeal 2016-007272
Application 14/195,078
Ans. 5. The Examiner cites Gustafson as teaching “[alternatively, other
adhesives that could provide the desired level of adhesive and removability
with respect to photographs and the type of surfaces indicated above could
be used.” Id. at 5 (quoting Gustafson, col. 3,11. 55—58).
Gustafson specifically discloses a mixture of a permanent and a
repositionable adhesive:
The mixture of those adhesives should comprise from 5 to 20
percent and preferably 15 percent of the permanent pressure
sensitive adhesive and from 95 to 80 percent and preferably 85
percent of the repositionable pressure sensitive adhesive.
Gustafson, col. 3,11. 43—47. Gustafson teaches that should there be an
acceptable alternative adhesive, that it may be substituted. However,
Gustafson does not teach any specific substitute. Nor does Gustafson teach
or suggest that such a suitable adhesive exists wherein a component of a
permanent adhesive is omitted. The Examiner has failed to cite suitable
prior art wherein a permanent adhesive is lacking. Bradford is not cited for
teachings related to the adhesive composition. See Ans. 4—7. Moreover, the
Examiner has failed to provide any evidence that an alternative adhesive,
lacking a permanent adhesive component, would “provide the desired level
of adhesive and removability with respect to photographs and the type of
surfaces indicated,” as required by the prior art. See Id. at 5.
Because we find the prior art fails to teach each claimed limitation, we
decline to sustain the rejection of Claims 1, 3, and 6.
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Appeal 2016-007272
Application 14/195,078
Claims 2 and 4and 5: Obviousness over Gustafson, Bradford,
Baker, and Valiulis
None of Baker or Valiulis is cited as teaching omission of a
permanent adhesive. See Ans. 4—'7. In view of the foregoing discussion, we
decline to sustain the rejection of Claims 2 and 4.
DECISION
The rejection of Claims 1— 4 and 6 under 35 U.S.C. 103(a) is REVERSED.
REVERSED
6