Ex Parte Tanaka et al

Board of Patent Appeals and Interferences

May 21, 2002

08904868 (B.P.A.I. May. 21, 2002)

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withdrawn from consideration.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is not binding precedent of the Board.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