Ex Parte MoodyDownload PDFPatent Trial and Appeal BoardJul 31, 201714195078 (P.T.A.B. Jul. 31, 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. 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 2 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. 3 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. 4 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. 5 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 Copy with citationCopy as parenthetical citation