Ex Parte Pitzen

Board of Patent Appeals and Interferences

Jun 11, 2007

10304730 (B.P.A.I. Jun. 11, 2007)

The opinion in support of the decision being entered today
is not binding precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte JAMES F. PITZEN
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Appeal 2007-2153
Application 10/304,730
Technology Center 1700
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Decided: June 11, 2007
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Before EDWARD C. KIMLIN, BRADLEY R. GARRIS, and
THOMAS A. WALTZ, Administrative Patent Judges.

KIMLIN, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal from the final rejection of claims 1-7 and 9.
Claim 1 is illustrative:
1. A laminate for use in decorating a receptor surface such as the
surface of a window, said laminate comprising:

an elongate strip of decorative sheet material having opposite
front and rear surfaces extending between a first longitudinally extending
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Application 10/304,730

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generally straight edge surface and an opposite second edge surface of the
decorative sheet material;

a layer of aggressive pressure sensitive adhesive on the rear
surface of said decorative sheet material, said layer of aggressive pressure
sensitive adhesive having a major surface opposite said decorative sheet
material;

a first release liner over and in contact with all of said major a
[sic] surface of said layer of aggressive pressure sensitive adhesive opposite
said decorative sheet material; and

an elongate flexible, temporary support tape comprising a
backing having opposite first and second surfaces extending between
opposite first and second longitudinally extending edge surfaces of the
backing, and a layer of repositionable pressure sensitive adhesive on said
second surface, a part of said layer of repositionable pressure sensitive
adhesive adjacent the second edge surface of said backing being adhered to a
part of the front surface of said decorative strip along said first generally
straight edge surface with said opposite second edge surface of the
decorative sheet material and a part of the front surface of said decorative
strip projecting past the second edge surface of the backing and being visible
along the laminate, and with a portion of said support tape projecting away
from the first edge surface of said decorative sheet material;

the layer of repositionable adhesive on the projecting portion of
the support tape being adherable to and repositionable along a receptor
surface with the first release liner on said decorative sheet material laying
along that receptor surface to afford precise positioning of the decorative
sheet material in a desired location along that receptor surface; and

said flexible backing being bendable along a longitudinally
extending bend line along the first edge of said decorative sheet material to
afford movement of the decorative sheet material away from the receptor
surface and thereby removal of the first release liner, and subsequent
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repositioning of said decorative sheet material with the layer of aggressive
pressure sensitive adhesive against the receptor surface to adhere the
decorative sheet material against the receptor surface in said desired
location, after which the temporary support tape can be peeled away from
both the receptor surface and the decorative sheet material.
The Examiner relies upon the following references as evidence of
obviousness:
Vomela US 3,294,611 Dec. 27, 1966
Mrozek US 3,761,344 Sep. 25, 1973
Martinez US 4,900,604 Feb. 13, 1990
Appellant’s claimed invention is directed to a laminate for decorating
a receptor surface, and a method for decorating the surface with the
laminate. The laminate comprises, inter alia, a strip of decorative sheet
material having a layer of aggressive pressure-sensitive adhesive on its rear
surface for bonding to the receptor surface, and a release liner over the
aggressive adhesive to allow alignment on the surface before attachment.
The laminate also comprises a flexible, temporary support tape having a
layer of repositionable pressure-sensitive adhesive which contacts the top
surface of the decorative sheet as well as the receptor surface. The
temporary support tape is bent along an edge of the decorative sheet to allow
the release liner to be removed before bonding the aggressive adhesive to the
receptor surface.
Appealed claims 1, 3-6, and 9 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over Martinez in view of Mrozek. Claims 2 and 7
stand rejected under 35 U.S.C. § 103(a) as being unpatentable over the stated
combination of references further in view of Vomela.
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We have thoroughly reviewed the respective positions advanced by
Appellant and the Examiner. In so doing, we find that the Examiner has not
established a prima facie case of obviousness for the claimed subject matter.
Accordingly, we will not sustain the Examiner’s rejections.
The fatal flaw in the Examiner’s rejections is that Martinez, as urged
by Appellant, fails to teach or suggest the use of an aggressive pressure-
sensitive adhesive on the rear surface of the decorative sheet material.
Martinez specifically teaches that pressure-sensitive adhesive layer 14,
which is coated on the rear surface of both the substrate 12 and the appliqué
10, is a reusable non-permanent adhesive. Hence, Martinez uses the same
adhesive for both the background substrate and the temporary overlay.
Appellant, on the other hand, claims two distinct adhesive layers for the
decorative sheet material and the temporary support tape. While Appellant’s
claims and Specification do not place quantitative values on the adhesive
strengths of the “aggressive pressure sensitive adhesive” and the
“repositionable pressure sensitive adhesive,” we are satisfied that the
claimed subject matter, when considered as a whole in light of the
Specification, requires that the two recited adhesives be distinct in nature
and exhibit different adhesive strengths. Consequently, since Martinez
teaches only one and the same adhesive for both the background substrate
and the overlays, the Examiner’s rejection must fall.
We also find merit in Appellant’s argument that it would appear that
no release liner would be used when the background substrate and overlays
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of Martinez are in contact. This follows from Martinez apparently adhering
the background substrate before positioning the appliqués.
The “secondary” references are not cited by the Examiner to remedy
the deficiencies of Martinez discussed above and, in fact, do not do so.
In conclusion, based on the foregoing, we are constrained to reverse
the Examiner’s rejections.
REVERSED

clj

3M Innovative Properties Company
P.O. Box 33427
St. Paul, MN 55133-3427