Ex Parte Tanaka et alDownload PDFBoard of Patent Appeals and InterferencesMay 21, 200208904868 (B.P.A.I. May. 21, 2002) Copy Citation 1 Claim 3 to 6 and 13 to 16 are pending in the present application and have been withdrawn from consideration. Claim 7 has been amended and claims 10 and 12 were canceled in an amendment filed June 13, 2000. (Brief, p. 2.) The Examiner has indicated that the amendment has been entered. (Answer, p. 2.) The opinion in support of the decision being entered today was not written for publication and is not binding precedent of the Board. Paper No. 25 UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES ____________ Ex parte NAOMITU TANAKA, TATSUO KOYAMA and MASANORI SANO ____________ Appeal No. 2001-0731 Application No. 08/904,868 ____________ HEARD : May 8, 2002 ____________ Before GARRIS, JEFFREY T. SMITH and MOORE, Administrative Patent Judges. JEFFREY T. SMITH, Administrative Patent Judge. DECISION ON APPEAL Applicants appeal the decision of the Primary Examiner finally rejecting claims 1, 2, 7, 9 and 11.1 We have jurisdiction under 35 U.S.C. § 134. Appeal No. 2001-0731 Application No. 08/904,868 -2- BACKGROUND Appellants’ invention relates to a pressure sensitive cleaning article. The pressure sensitive cleaning article comprises a substrate, a pressure sensitive adhesive layer and a porous screen disposed on the pressure sensitive layer. Claims 1 and 7, which are representative of the claimed invention, appear below: 1. A pressure-sensitive cleaning sheet comprising a substrate, a pressure-sensitive adhesive layer formed on one or both sides of the substrate, and a porous screen disposed on the pressure-sensitive adhesive layer, wherein the cleaning sheet is substantially non-tacky when the cleaning sheet surface is kept in a non-pressed state, under which the porous screen is projecting from the surface of the pressure-sensitive adhesive layer; the cleaning sheet exhibiting tackiness when the cleaning sheet is kept in a pressed state, under which the pressure-sensitive adhesive layer appears on the sheet surface through the openings of the porous screen; and the cleaning sheet again becomes substantially non-tacky upon release from pressing. 7. A roll-form image-forming material having a cleaning part, the cleaning part comprising a pressure-sensitive adhesive layer having a porous screen disposed thereon, wherein the cleaning part is substantially non-tacky when the cleaning part surface is kept in a non-pressed state, under which the porous screen is projecting from the surface of the pressure-sensitive adhesive layer; Appeal No. 2001-0731 Application No. 08/904,868 2 This reference qualifies as prior art under 35 U.S.C. § 102(e). -3- the cleaning part exhibits tackiness when the cleaning part surface is kept in a pressed state, under which the pressure-sensitive adhesive layer appears on the cleaning part surface through the openings of the porous screen; and the cleaning part again becomes substantially non-tacky upon release from pressing. CITED PRIOR ART As evidence of unpatentability, the Examiner relies on the following references: Barough et al. (Barough) 3,889,310 Jun. 17, 1975 Gelardi et al. (Gelardi) 5,153,964 Oct. 13, 1992 Schneberger et al.2 (Schneberger) 5,736,470 Apr. 7, 1998 (Filed Jun. 25, 1996) Claims 1 and 2 are rejected as unpatentable under 35 U.S.C. § 103(a) as obvious over Schneberger and claims 7, 9 and 11 are rejected as unpatentable under 35 U.S.C. § 103(a) as obvious over the combination of Schneberger, Gelardi and Barough. (Answer, pp. 3 and 4.) DISCUSSION We have carefully reviewed the claims, specification and applied prior art, including all of the arguments advanced by both the Examiner and Appellants in support of their Appeal No. 2001-0731 Application No. 08/904,868 -4- respective positions. This review leads us to conclude that the Examiner’s § 103 rejections are not well founded. A fatal deficiency common to all of the rejections is the Examiner’s position that it would have been obvious to utilize the teachings of Schneberger to make pressure sensitive cleaning sheet with an adhesive that is substantially non-tacky upon release of pressure to allow the sheet to be repositioned. We do not believe the Schneberger reference would have suggested that the pressure sensitive adhesive sheet would have been substantially non-tacky upon release of pressure. The Examiner asserts the porous sheet, i.e., pore size, number of pores and arrangement of pores, can be selected depending on the nature of the adhesive used. It is true that Schneberger discloses that the characteristics of the porous layer can be varied depending on the adhesive. (Col. 3, l. 63 to col. 4, l. 4.) However, we do not perceive and the Examiner has not explained why the selection of a porous layer that would have rendered the pressure sensitive sheet substantially non-tacky upon release of pressure would have obvious to one of ordinary skill in the art. The mere fact that the prior art could be modified, to select a particular porous layer, would not have made the modification obvious unless the prior art suggested the desirability of the modification. In re Gordon, 733 F.2d 900, 902, 221 USPQ 1125, 1127 (Fed. Cir. 1984); In re Laskowski, 871 F.2d 115, 117, 10 USPQ2d 1397, 1398 Appeal No. 2001-0731 Application No. 08/904,868 -5- (Fed. Cir. 1989). The Examiner also asserts that Schneberger teaches the pressure sensitive sheets can be repositioned and that light pressure can be used. While Schneberger discloses the pressure sensitive sheet can be repositioned, Schneberger does not disclose pressure is applied to the sheet before the repositioning of the adhesive sheet. Further, Schneberger does not indicate that the sheet would have become substantially non-tacky upon release of pressure. On the record before us, it appears the Examiner has reached this conclusion based upon impermissible hindsight derived from Appellants’ own disclosure rather than some teaching, suggestion or incentive derived from Schneberger. The Examiner relies on Gelardi and Barough, in addition to Schneberger to reject claims 7, 9 and 11. However, Gelardi and Barough do not remedy the deficiency in the pressure sensitive adhesive layer having a porous screen described by Schneberger. CONCLUSION For the above stated reasons, we cannot sustain any of the § 103(a) rejections before us on this appeal. Appeal No. 2001-0731 Application No. 08/904,868 -6- REVERSED ) ) BRADLEY R. GARRIS ) Administrative Patent Judge ) ) ) ) BOARD OF PATENT JEFFREY T. SMITH ) APPEALS Administrative Patent Judge ) AND ) INTERFERENCES ) ) JAMES T. MOORE ) Administrative Patent Judge ) JTS/gjh Appeal No. 2001-0731 Application No. 08/904,868 -7- SUGHRUE, MION, ZINN, MACPEAK AND SEAS 2100 PENNSYLVANIA AVENUE N.W. WASHINGTON, DC 20037 Copy with citationCopy as parenthetical citation