Ex Parte Thiele et al

Board of Patent Appeals and Interferences

Mar 17, 2009

10884575 (B.P.A.I. Mar. 17, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte JOHN L. THIELE
and STEVEN A. DARMER
____________

Appeal 2008-5085
Application 10/884,575
Technology Center 1700
____________

Decided:1 March 17, 2009
____________

Before ADRIENE LEPIANE HANLON, CHUNG K. PAK, and
KAREN M. HASTINGS, Administrative Patent Judges.

Opinion for the Board filed by Administrative Patent Judge PAK.

Opinion Dissenting-in-part filed by Administrative Patent Judge
HASTINGS.

PAK, Administrative Patent Judge.

DECISION ON APPEAL

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, begins to run from the decided date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).
Appeal 2008-5085
Application 10/884,575

Appellants appeal under 35 U.S.C. § 134 from the Examiner’s
decision rejecting claims 1 through 28, and 35, all of the claims pending in
the above-identified application. We have jurisdiction under 35 U.S.C. § 6.
.
Statement of the Case
The subject matter on appeal is directed to a contaminant or lint
removal tape roll useful for a contaminant or lint tape roll assembly or
device (Spec. 1, ll. 5-16 and claims 1, 24, and 25). This contaminant or lint
removal tape roll is an improvement over a conventional contaminant or lint
removal tape roll having a continuous, non-adhesive strip along its side
edges which are said to be used as a visual recognition tool for peeling the
fully utilized outermost sheet of the tape roll from its leading end (Spec. 2-5
and 22). According to Appellants (Spec. 3, ll. 11-15 and 22, ll. 18-25):
[C]onsumers may perceive the continuous, non-adhesive edges
as constituting wasted cleaning surface area. Additionally, the
continous, non-adhesive side edges may negatively impact a
user’s ability to access and clean all desired surfaces. One such
instance is a surface at or near a wall or other corner.
…
The roll of contaminant removal tape of the present invention
provides a marked improvement over previous designs. Users
can easily find, lift and remove a used tape sheet from the roll
of contaminant removal tape. By limiting the surface area of
non-adhesive regions provided on the outermost wrap of
contaminant removal tape, an increased usable surface area is
provided as compared to conventional contaminant removal
tape rolls. Further, one of the side edges of the contaminant
removal tape can include exposed adhesive, thereby enhancing
the ability of the roll of contaminant removal tape of the present
invention to access and clean confined surfaces.

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The contaminant or lint removal tape roll of Appellants’ invention employs
discrete (not continuous) non-adhesive zones extending from the first side
edge of the tape (Spec. 4, ll. 8-21). A wide variety of shapes can be used to
define the non-adhesive zones (Spec. 9, ll. 1-6). Details of the appealed
subject matter are recited in representative claims 1, 24, 25, and 35
reproduced below:
1. A roll of contaminant removal tape, the tape including opposing
first and second longitudinal ends, opposing first and second side edges, and
opposing first and second major surfaces, the roll of tape comprising:

a backing layer having a first side and a second side;

an adhesive layer on the first side of the backing layer, wherein the
adhesive layer defines

a portion of the first major surface of the tape;

wherein the tape is wound into a roll;

a plurality of lines of perforations extending across at least most of
a width of the tape between the first and second side edges to
separate the tape into sheets each having a leading end and a
trailing end; and

a first set of discrete non-adhesive zones provided along the first
major surface of the tape, wherein each of the non-adhesive
zones of the first set of non-adhesive zones extends from the
first side edge to a non-adhesive zone perimeter edge opposite
the first side edge, wherein the perimeter edge is characterized
as being non-parallel relative to the first side edge.

24. A contaminant removal tape for use as a roll of contaminant
removal tape, the tape being defined by opposing first and second
longitudinal ends, opposing first and second side edges, and opposing first
and second major surfaces, the tape comprising:

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a backing layer having a first side and a second side an adhesive
layer on the first side of the backing layer, wherein the
adhesive layer defines a portion of the first major surface.

a plurality of lines of perforations extending across at least most
of the width of the tape between the first and second side
edges to separate the tape into sheets, wherein each sheet
is further defined by the opposing side edges of the tape;
and

non-adhesive zones formed on the first major surface each of the
sheets, the non-adhesive zones being limited to:

a first set of non-adhesive zones all of which extend from the first
side edge of the tape, and

a second set of non-adhesive zones all of which extend from the
second side edge of the tape.
25. A roll of contaminant removal tape, the tape including opposing
first and second longitudinal ends, opposing first and second side edges, and
opposing first and second major surfaces, the roll of tape comprising:
a backing layer having a first side and a second side;
an adhesive layer on the first side of the backing layer, wherein
the adhesive layer defines
a portion of the first major surface of the tape;
wherein the tape is wound into a roll;
a plurality of lines of perforations extending across at least most
of a width of the tape between the first and second side
edges to separate the tape into sheets with each line of
perforations defining a leading end of an inner sheet and
a trailing end of an outer sheet in wound form, wherein
the lines of perforations are arranged such that starting
from an inside of the roll, the sheets having progressively
increasing longitudinal lengths from the second
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longitudinal end to [sic.] of the tape to the first
longitudinal end of the tape, and
a set of discrete non-adhesive zones provided along the first major
surface of the tape, wherein respective ones of the non-adhesive
zones are registered with respective ones of the lines of
perforations such that with respect to each pair of adjacent inner
and outer sheets, the corresponding non-adhesive zone defines a
tab portion on the inner sheet and a release portion on the outer
sheet, the registration of the non-adhesive zones with the lines
of perforations characterized by, in wound form, the trailing
end of the outer sheet is covered and the leading end of the
outer sheet overlies the release portion of the outer sheet.
35. The roll of tape of claim 1, wherein in wound form, two
consecutive sheets define an outer sheet and an inner sheet relative to one
another such that the trailing end of the outer sheet is adjacent the leading
end of the inner sheet, and further wherein the non-adhesive zones include:
an outer sheet tab portion formed on the outer sheet and extending
from the leading end thereof;
an outer sheet release portion formed on the outer sheet and extending
from the trailing end thereof;
an inner sheet tab portion formed on the inner sheet and extending
from the leading end thereof; and
an inner sheet release portion formed on the outer sheet and extending
from the trailing end thereof;
wherein in wound form, the outer sheet is partially wrapped onto itself
and the outer sheet tab portion is wrapped beyond the inner
sheet tab portion and overlies the outer sheet release portion.
As evidence of unpatentability of the claimed subject matter, the
Examiner has proffered the following prior art references:
Cho 2002/0088070 A1 Jul. 11, 2002
McKay 2003/0154569 A1 Aug. 21, 2003
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The Examiner has rejected the claims on appeal as follows:

1) Claims 1 through 16, 18, 19, 21 through 28, and 35 under 35 U.S.C. §
102(e) as anticipated by the disclosure of McKay; and

2) Claims 17 and 20 under 35 U.S.C. § 103(a) as unpatentable over the
combined disclosures of McKay and Cho.

Appellants appeal from the Examiner’s decision rejecting the claims
on appeal.

ISSUES
Appellants separately argue the limitations of claims 1, 24, 25, and 35.
Appellants first contend that McKay does not describe the first set of non-
adhesive zones recited in claim 1. Claim 1 requires “each of the non-
adhesive zones of the first set of non-adhesive zones extends from the first
side edge to a non-adhesive zone perimeter edge opposite the first side edge,
wherein the perimeter edge is characterized as being non-parallel relative to
the first side edge.” Thus, the first dispositive issue raised by Appellants is:
Has the Examiner demonstrated that McKay describes the shape and
location of the first set of non-adhesive zones recited in claim 1 within the
meaning of 35 U.S.C. § 102(e)?
Secondly, Appellants contend that McKay does not describe two
consecutive sheets defining an outer sheet and an inner sheet with the outer
sheet being “partially wrapped onto itself and the outer sheet tab portion
…[being] wrapped beyond the inner sheet tab portion and overlies the outer
sheet release portion” recited in claim 35. Thus, the second dispositive issue
is: Has the Examiner demonstrated that McKay describes the outer sheet
“partially wrapped onto itself and the outer sheet tab portion …wrapped
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beyond the inner sheet tab portion and overl[ying] the outer sheet release
portion” recited in claim 35 within the meaning of 35 U.S.C. § 102(e)?
Thirdly, Appellants contend that McKay does not describe the two
sets of non-adhesive zones recited in claim 24. Thus, the third dispositive
issue is: Has the Examiner demonstrated that McKay describes the two sets
of non-adhesive zones recited in claim 24 within the meaning of 35 U.S.C.
§ 102(e)?
Finally, Appellants contend that McKay does not describe “a plurality
of lines of perforations extending across at least most of a width of the tape
between the first and second side edges to separate the tape into sheets with
each line of perforations defining a leading end of an inner sheet and a
trailing end of an outer sheet in wound form, wherein the lines of
perforations are arranged such that starting from an inside of the roll, the
sheets have progressively increasing longitudinal lengths from the second
longitudinal end to [sic.] of the tape to the first longitudinal end of the tape”
recited in claim 25. Thus, the last dispositive issue is: Has the Examiner
demonstrated that McKay necessarily describes sheets having progressively
increasing lengths within the meaning of 35 U.S.C. § 102(e)?

FINDINGS OF FACT
1. McKay, like Appellants, teaches that the use of a conventional
contaminant or lint removal tape roll having continuous, non-adhesive strips
along its side edges (the dry edges) is “unacceptable as they reduce the
quantity of adhesive surface area for cleaning.” (Compare McKay, p. 1,
para. [0002], with Appellants’ Spec. 3, ll. 11-15.)
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2. McKay teaches (p.1, paras. [0004] to [0009]) a lint removal device
comprising
[0005] a tape wound in a roll and formed of a substrate with
opposed side edges and first and second major opposed
surfaces;
[0006] an adhesive layer carried on one major surface of the
tape;
[0007] the tape wound into a roll with the adhesive surface
facing outwardly from the tape;
[0008] a separable edge extending at least partially through the
roll dividing the roll into a plurality of individual separable
sheets; and
[0009] a pull tab formed over a substantially non-adhesive
portion carried between the side edges on one of the first and
second surfaces of the substrate, the non-adhesive portion
disposed in registry with the separable edge to define the pull
tab at the separable edge of each sheet on the roll to facilitate
removal of an outermost sheet from the roll.

3. McKay teaches that its separable edge can be defined by
discontinuous or continuous slits or by a score line or series of perforations
(p. 3, paras. [0047] and [0052]).
4. McKay, like Appellants, teaches that its discrete (not continuous)
non-adhesive areas can take various configurations (various shapes),
including square, rectangular, polygonal, other polygonal, and circular
configurations (p. 2, para. [0040]).
5. McKay teaches one set of discrete “non-adhesive areas 32, while
depicted as being centered between the side edges 16 and 18 of the tape 12,
can be formed at any other position between the side edges 16 and 18
(emphasis added)” (pp. 2-3, para, [0043] and Figs. 1,2, and 6).
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6. McKay illustrates a lint removal tape roll having progressively
increasing diameters defined by individual sheets having progressively
increasing lengths (Figs. 1 and 2).
7. McKay only shows a lint removal tape roll having an outer sheet
which wraps an inner sheet, but does not wrap itself (Figs. 1 and 2).
8. Appellants acknowledge that a progressively perforated tape roll
having “a longitudinal spacing between the lines of perforations
progressively increas[ing] from an inside of the roll, such that the wound
sheets have progressively increasing lengths” was known (Spec. 1, ll. 24-
26).
9. According to Appellants, such known progressively perforated tape
roll is advantageous in that its “outermost sheet covers all of the lines of
perforations to reduce instances of the tape tearing in a downweb direction”
(Spec. 1, ll. 27-28).
10. Appellants do not dispute the Examiner’s finding at pages 7 and 8 of the
Answer that:
Cho teaches the first set of non-adhesive zones includes an
outermost non-adhesive zone extending from the leading end of
an outermost sheet, an innermost non-adhesive zone extending
from the trailing end of an innermost sheet and a plurality of
intermediate non-adhesive zones having identical shapes
disposed between the outermost and innermost non-adhesive
zones, each of the intermediate non-adhesive zones including a
release portion and a tab portion, and further wherein relative to
consecutive first and second sheets, the release portion extends
along the first sheet from the trailing end of the first sheet and
the tab portion extends along the second sheet from the leading
end of the second sheet (Figure 2, #31 and 3 la) for the purpose
of identifying, grasping and tearing along the perforated lines of
the flexible material (Page 1, Paragraph 0005). [See App. Br.
and Reply Br. in their entirety.]
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11. Appellants do not dispute the Examiner’s conclusion that it would
have been obvious to employ the non-adhesive zones in the manner taught
by Cho corresponding to those recited in claims 17 and 20 as the non-
adhesive zones of the lint removal tape roll taught by McKay. [Compare
Ans. 7-8 with App. Br. and Reply Br. in their entirety.]

PRINCIPLES OF LAW
Under 35 U.S.C. § 102(b), anticipation is established only if “each
and every element as set forth in the claim is found, either expressly or
inherently described, in a single prior art reference.” Verdegall Bros. Inc. v.
Union Oil Co., 814 F.2d 628, 631 (Fed. Cir. 1987). The prior art reference
must identify each and every element as set forth in the claim “with
sufficient specificity to constitute a description thereof within the purview of
35 U.S.C. § 102[(e)]”. In re Schaumann, 572 F.2d 312, 315 (CCPA 1978).
As stated in In re Arkley, 455 F.2d 586, 587-88 (CCPA 1972) states:
[F]or the instant rejection under 35 U.S.C. § 102(e) to
have been proper, the [prior art] reference must clearly and
unequivocally disclose the claimed compound or direct those
skilled in the art to the compound without any need for picking,
choosing, and combining various disclosures . . . Such picking
and choosing may be entirely proper in the making of a 103,
obviousness rejection, where the applicant must be afforded an
opportunity to rebut with objective evidence any inference of
obviousness . . ., but it has no place in the making of a 102,
anticipation rejection.

When an examiner relies upon a theory of inherency, there must be “a basis
in fact and/or technical reasoning to reasonably support the determination
that the allegedly inherent characteristic necessarily flows from the teachings
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of the applied prior art.” Ex parte Levy, 17 USPQ2d 1461, 1464 (BPAI
1990). As stated in In re Oelrich, 666 F.2d 578, 581 (CCPA 1981)
“Inherency…may not be established by probabilities or possibilities. The
mere fact that a certain thing may result from a given set of circumstances is
not sufficient.”
Under 35 U.S.C. § 103, the factual inquiry into obviousness requires a
determination of: (1) the scope and content of the prior art; (2) the
differences between the claimed subject matter and the prior art; (3) the level
of ordinary skill in the art; and (4) secondary considerations, if necessary.
Graham v. John Deere Co., 383 U.S. 1, 17-18 (1966). According to KSR
Int’l Co. v. Teleflex, Inc., 127 S. Ct. 1727, 1740-41 (2007):
[A]nalysis [of whether the subject matter of a claim would have
been obvious] need not seek out precise teachings directed to
the specific subject matter of the challenged claim, for a court
can take account of the inferences and creative steps that a
person of ordinary skill in the art would employ .

See also DyStar Textilfarben GmbH & Co. Deutschland KG v. C.H. Patrick
Co., 464 F.3d 1356, 1361 (Fed. Cir. 2006) (“The motivation need not be
found in the references sought to be combined, but may be found in any
number of sources, including common knowledge, the prior art as a whole,
or the nature of the problem itself.”); In re Bozek, 416 F.2d 1385, 1390
(CCPA 1969) (“Having established that this knowledge was in the art, the
examiner could then properly rely, as put forth by the solicitor, on a
conclusion of obviousness ‘from common knowledge and common sense of
the person of ordinary skill in the art without any specific hint or suggestion
in a particular reference.’”); In re Hoeschele, 406 F.2d 1403, 1406-07
(CCPA 1969) (“[I]t is proper to take into account not only specific teachings
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of the references but also the inferences which one skilled in the art would
reasonably be expected to draw therefrom . . . .”): In re Harza, 274 F.2d
669, 671 (CCPA 1960) (“It is well settled that the mere duplication of parts
has no patentable significance unless a new and unexpected result is
produced…”).
Moreover, as our reviewing court stated in In re Peterson, 315 F.3d
1325, 1329 (Fed. Cir. 2003):
In cases involving overlapping ranges, we and our
predecessor court have consistently held that even
a slight overlap in range establishes a prima facie
case of obviousness . . . . We have also held that
a prima facie case of obviousness exists when the
claimed range and the prior art range do not
overlap but are close enough such that one skilled
in the art would have expected them to have the
same properties. Titanium Metals Corp. v.
Banner, 778 F.2d 775, 783 (Fed. Cir. 1985).
[Emphasis added.]

ANALYSES
ANTICIPATION
Claims 1-16, 18, 19, and 21-23:
As indicated supra, McKay teaches a lint removal tape roll
corresponding to that claimed, except for specifically identifying its discrete
non-adhesive areas as those extending “from the first side edge to a non-
adhesive zone perimeter edge opposite the first side edge, wherein the
perimeter edge is characterized as being non-parallel relative to the first side
edge” as recited in claim 1. However, McKay teaches that its non-adhesive
areas can take any appropriate configurations (shapes), inclusive of the
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claimed shapes having a perimeter edge non-parallel to the first side edge of
the tape, and can be placed anywhere between the side edges of the tape,
inclusive of a range of possible locations2 including those which are very
close to either side edges, but do not touch the side edges as required by
claim 1. Thus, McKay may have suggested to one of ordinary skill in the art
to select appropriate shapes and locations, inclusive of those claimed, for the
non-adhesive areas on its lint removal tape roll3, but it does not teach
unequivocally or with sufficient specificity the location and shape of the
non-adhesive zones recited in claim 1 within the meaning of 35 U.S.C. §
102(e). Accordingly, we are constrained to reverse the Examiner’s decision
rejecting claims 1-16, 18, 19, and 21-23 as anticipated by the disclosure of
McKay. However, we want to emphasize that as pointed out by Arkley, 455
F.2d at 589:
We are simply reversing a rejection on the ground that the
claim on appeal is anticipated under § 102 . . . It may well be
that it is unpatentable because of obvious under § 103 . . . but
no such rejection is before us….

Claim 35:
As correctly argued by Appellants, McKay does not describe two
consecutive sheets defining an outer sheet and an inner sheet with the outer
sheet being “partially wrapped onto itself and the outer sheet tab portion
…[being] wrapped beyond the inner sheet tab portion and overlies the outer

2 A large number of possible locations are included between the side edges
of the tape since every small movement of a non-adhesive zone between the
side edges of the tape constitutes a location.
3 See Titanium Metals Corp. v. Banner, 778 F.2d at 783; see also Cho relied
upon by the Examiner in the § 103 rejection of claims 17 and 20.
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sheet release portion” recited in claim 35. McKay only shows a lint removal
tape roll having an outer sheet which wraps an inner sheet, but does not wrap
itself. Although it may well have been obvious to one of ordinary skill in
the art to employ such admittedly known features to the lint removal tape
roll taught by McKay, with a reasonable of expectation of successfully
obtaining a known advantage, no such obviousness rejection is before us.
Thus, we are again constrained to reverse the anticipation rejection of claim
35.

Claim 24:
As correctly argued by Appellants, McKay does not describe the two
sets of non-adhesive zones recited in claim 24. McKay describes only one
set of non-adhesive areas. Although it may well have been obvious to
duplicate this set of non-adhesive areas on the appropriate locations of the
lint removal tape roll taught by McKay,4 no such obviousness rejection is
before us. Thus, we are constrained to reverse the anticipation rejection of
claim 24 as well.

Claims 25-28:
There is no dispute that McKay teaches a lint removal tape roll
corresponding to that claimed, except for the sheets having progressively
increasing lengths recited in claim 25. However, as is apparent from Figures
1 and 2, McKay illustrates a lint removal tape roll having progressively
increasing diameters defined by individual sheets having progressively

4 See Harza, 274 F.2d at 671; see also Cho relied upon by the Examiner in
the § 103 rejection of claims 17 and 20.
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increasing lengths. Thus, we concur with the Examiner that McKay renders
the subject matter defined by claims 25 through 28 anticipated within the
meaning of 35 U.S.C. § 102(e). Accordingly, we affirm the Examiner’s
decision rejecting claims 25 through 28 under 35 U.S.C. § 102(e) as
anticipated by the disclosure of McKay.
OBVIOUSNESS
Claims 17 and 20:
Appellants do not dispute the Examiner’s determination that it would
have been obvious to employ the non-adhesive zones in the manner taught
by Cho corresponding to those recited in claims 17 and 20 as the non-
adhesive zones of the lint removal tape roll taught by McKay. Thus, we
summarily affirm this obviousness rejection of claims 17 and 20.
ORDER
In view of the foregoing, we reverse the Examiner’s decision rejecting
claims 1 through 16, 18, 19, 21 through 25, and 35 under 35 U.S.C. § 102(e)
as anticipated by the disclosure of McKay and affirm the Examiner’s
decision rejecting claims 25 through 28 under 35 U.S.C. § 102(e) as
anticipated by the disclosure of McKay and claims 17 and 20 under 35
U.S.C. § 103(a) as unpatentable over the combined disclosures of McKay
and Cho. The decision of the Examiner is affirmed-in-part.

AFFIRMED-IN-PART

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HASTINGS, Administrative Patent Judge, dissenting-in-part.
I agree with the conclusions of my colleagues as to the affirmance of
the Examiner’s § 102 rejection based on McKay with respect to claims 25-
28; and, as to the Examiner’s § 103 rejection based on McKay in view of
Cho for dependent claims 17 and 205. I also agree with the conclusions of
my colleagues as to the reversal of the § 102 rejection based on McKay with
respect to claims 35 and 24.
However, I must, respectfully, dissent from the findings and
conclusions as to the Examiner’s § 102 rejection based on McKay with
respect to claim 1 (as well as not separately argued claims 2-16, 18, 19, and
21-23).
In my view, the critical limitation of claim 1 that is in dispute is:
wherein each of the non-adhesive zones of the first set of non-
adhesive zones extends from the first side edge to a non-
adhesive zone perimeter edge opposite the first side edge
(Br. 16, Claims App; claim 1)
In my opinion, McKay does indeed describes the location of a first set
of discrete non-adhesive zones as recited in claim 1 within the meaning of
35 U.S.C. § 102(e). Furthermore, in my opinion, there is no need to pick
and choose among several unrelated disclosures in McKay as in In re Arkley,
455 F.2d 586, 587 (CCPA 1972), upon which the majority relies.
Anticipation is a question of fact. The inquiry as to whether a
reference anticipates a claim must focus on what subject matter is

5 Each of dependent claims 17 and 20 depend from claim 1. Accordingly,
claim 1 is necessarily also unpatentable over McKay and Cho.
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encompassed by the claim and what subject matter is described by the
reference. As set forth by the court in Kalman v. Kimberly-Clark Corp., 713
F.2d 760, 772 (Fed. Circ. 1983), it is only necessary for the claims to “ ‘read
on’ something disclosed in the reference, i.e., all limitations in the claim are
found in the reference, or ‘fully met’ by it.” Furthermore, it is well
established that, when the prior art discloses a genus, a species of that genus
may be anticipated when the species is part of a well delineated or limited
class. See, In re Schaumann, 572 F.2d 312, 315 (CCPA 1978). A small
genus can be a disclosure of each species within the genus. In re Petering,
301 F.2d 676, 682 (CCPA 1962); see also Bristol-Myers Squibb Co. v. Ben
Venue Labs, Inc., 246 F.3d 1368, 1380 (Fed. Cir. 2001)(“[T]he disclosure of
a small genus may anticipate the species of that genus even if the species are
not themselves recited.”). That is the case here, since McKay discloses a
small genus for the location of the non-adhesive zones described therein, as
explained below.
As found by the majority, McKay teaches a lint removal tape roll
corresponding to that claimed, except for specifically identifying its discrete
non-adhesive areas/zones as those extending “from the first side edge to a
non-adhesive zone perimeter edge opposite the first side edge, wherein the
perimeter edge is characterized as being non-parallel relative to the first side
edge” as recited in claim 1.
Appellants only dispute the Examiner’s finding that the location of the
non-adhesive areas/zones of McKay meets, or reads on, the claim language;
that is, Appellants contend that McKay does not describe that these zones
“extend from the first side edge” as recited in claim 1 (App. Br. 9; Reply Br.
2).
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Appellants’ Fig. 2 and Fig. 5 are reproduced below:

Appellants’ Fig. 2 and Fig. 5 depict an unwound lint removal roll
surface. Fig. 2 depicts polygonal discontinuous non-adhesive zone shapes
(e.g., a triangular tab portion and a rectangular release portion), whereas Fig.
5 depicts a semi-circle for the discontinuous non-adhesive zone shape. “[A]
wide variety of other shapes are equally acceptable” (see, Spec. 9: 3-6).
McKay’s Fig. 3 and Fig. 5 are reproduced below:

Fig. 3 and Fig. 5 of McKay depict two of the possible shapes
mentioned in McKay for the non-adhesive patches on the lint removal roll.
Fig. 3 also shows a tab portion with edge 42, whereas Fig. 5 depicts a
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discontinuous line 42 (McKay, p. 2, paras. [0039], [0040]; p. 3, para.
[0047]).
McKay explicitly describes polygonal shapes as well as a circular
shape for the non-adhesive patch (see, e.g., claims 5 and 6). As can be
clearly seen in Fig. 5, the shape may be oval. Again, it is not in dispute that
McKay, like Appellants, teaches that its discrete (not continuous) non-
adhesive areas can take various configurations (various shapes) (p. 2, para.
[0040]; see, e.g., Figs. 3, 5).
In addition, it is also not in dispute that McKay teaches that the
discrete “non-adhesive areas 32, while depicted as being centered between
the side edges 16 and 18 of the tape 12, can be formed at any other position
between the side edges 16 and 18” (pp. 2-3, para. [0043], emphasis added).
One of ordinary skill would have read these disclosures in context as
inclusive of an oval or circular shape extending from a side edge. There are
only three general locations within such a small genus on such a small and
simple lint removal roll - one side, the middle, and the other side (see, e.g.,
Figs. 3 and 5 above). One of ordinary skill in the art would have
immediately envisioned placing the circular shape (claim 6), which may be
an oval shape (depicted at Fig. 5), at either one side or the other side
position, versus in the middle position, since McKay describes that the non-
adhesive patch may be “at any other position between the side edges”.
McKay’s Fig. 5, marked up to illustrate two alternate locations for the
non-adhesive area 36 within the genus, is reproduced below:
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Appeal 2008-5085
Application 10/884,575

McKay’s Fig. 5 is marked up to depict the alternate locations for the
non-adhesive area (i.e., non-adhesive zone) 36 within the genus “any other
position between the side edges”.
Thus, in my view, this situation does not involve an impermissible
“picking, choosing, and combining various disclosures not directly related to
each other by the teachings of the cited reference” as stated in Arkley, 455 F.
2d at 587.
Moreover, in determining what a reference implicitly discloses, “it is
proper to take into account not only specific teachings of the reference but
also the inferences which one skilled in the art would reasonably be
expected to draw therefrom.” In re Preda, 401 F. 2d 825, 826 (CCPA
1968). In Preda, the reference itself recognized the possibility that the
claimed process could be performed at temperatures falling within the
claimed range (Id.). This recognition was sufficient to anticipate the claims,
even though it was not preferred (Id.). Thus, even assuming Appellants are
correct that McKay’s teachings would have discouraged one from placing
the non-adhesive patch such that it extends from the side edge (App. Br. 9),
the recognition that a non-adhesive zone could extend from the side edge is
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Appeal 2008-5085
Application 10/884,575

explicit in McKay, even though it is not preferred, as in the situation in
Preda. Accordingly, the knowledge that the non-adhesive zone may be
placed “extending from the side” as claimed was still readily apparent from
a consideration of McKay’s description by one skilled in the art.
My view is that McKay’s disclosure of such a small genus (anywhere
between the sides of a simple device, that is, a hand-held lint removal roll)
would have put every species within this genus, including non-adhesive
zones extending from the side, within the possession of the public.
Thus, I find that McKay reasonably describes the claimed location set
forth in the critical clause of claim 1 to one of ordinary skill in the art.
Accordingly, it is my opinion that the Appellants have not met their
burden of showing that the Examiner reversibly erred in finding McKay
anticipates claim 1.

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