Ex Parte Tuma

Board of Patent Appeals and Interferences

Sep 26, 2006

10343154 (B.P.A.I. Sep. 26, 2006)

The opinion in support of the decision being entered today was not written
for publication and is not binding precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte JAN TUMA
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Appeal 2006-2308
Application 10/343,154
Technology Center 1700
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Decided: September 26, 2006
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Before WALTZ, TIMM, and GAUDETTE, Administrative Patent Judges.

GAUDETTE, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 from the Final Rejection
mailed October 21, 2005. Claims 11-25 are pending and on appeal. Claims
1-10 have been cancelled.
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REFERENCES RELIED ON BY THE EXAMINER

The Examiner relies upon the following references as evidence of
unpatentability:
Nestegard US 4,894,060 Jan. 16, 1990
Thomas US 5,116,563 May 26, 1992
Reed US 5,312,456 May 17, 1994
Hammer WO 98/20767 May 22, 1998
Tuma WO 00/25620 May 11, 2000
Hammer1 US 6,287,665 Sep. 11, 2001
Tuma2 US 6,669,884 Dec. 30, 2003
Tuma (as translated) WO 00/25620 May 2006
Hammer (as translated) WO 98/20767 May 2006

Claim 11, the sole independent claim on appeal, is illustrative of the
subject matter now on appeal and is reproduced below:
11. A process for producing an adhesive closing part with
laterally symmetrical interlocking structures integrally connected to a
backing, each interlocking structure having a stem part, a head part at
one end of the stem part, and a base part at an opposite end of the
stem part connecting the stem part to the backing, the process
comprising the steps of:
supplying moldable material to a shaping zone between a
pressure tool and a molding tool;

1 Hammer was subsequently published as US 6,287,665 to Hammer. The
U.S. Patent was relied upon as an English language equivalent of
WO 98/20767 during prosecution.

2 Tuma was subsequently published as US 6,669,884. The U.S. Patent was
relied upon as an English language equivalent of WO 00/25620 during
prosecution
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driving the pressure tool and the molding tool to form the
backing in the shaping zone and conveying the backing in a
transport direction; and
molding the moldable material in mold cavities in the molding
tool, each of the mold cavities having boundary walls opposite one
another extending in a lengthwise direction of the mold cavity
continuously along a convex path, each convex path having a
curvature in a form of a hyperboloid with a more pronounced portion
defined by decreased radii of curvature and by narrowing of spaces
between the boundary walls, each more pronounced portion being
closer to a head molding part of the cavity than to a base molding part
of the cavity, each cavity being rotationally symmetrical to form
rotationally symmetrical interlocking structures.

GROUNDS OF REJECTION
1. Claims 11,14-16, 18-20 and 22-25 stand rejected under 35 U.S.C.
§103 as unpatentable over Hammer in view of Thomas.
2. Claims 12 and 13 stand rejected under 35 U.S.C. §103 as
unpatentable over Hammer in view of Thomas when further considered in
view of Reed.
3. Claim 17 stands rejected under 35 U.S.C. §103 as unpatentable
over Hammer in view of Thomas when further considered in view of Tuma.
4. Claim 21 stands rejected under 35 U.S.C. §103 as unpatentable
over Hammer and Thomas in view of Nestegard.
We REVERSE as to all four grounds of rejection.
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BACKGROUND
The invention relates to a process for producing an adhesive closing
part with laterally symmetrical interlocking structures integrally connected
to a backing. Each interlocking structure has a stem part, a head part at one
end of the stem part, and a base part at an opposite end of the stem part
where the stem part is connected to the backing. The process involves
supplying moldable material to a shaping zone between a pressure tool and a
molding tool to form the backing. The molding tool contains mold cavities,
having a rotationally symmetrical hyperboloid shape. According to
Appellant, the shape of the mold cavities facilitates removal of the
interlocking structures from the mold cavities, even at very high production
rates. In addition, Appellant maintains that the interlocking structures
formed by the claimed process adhere well and can be joined easily to one
another, since the interlocking structures are properly formed and are not
damaged during removal from the mold cavities.
DISCUSSION
Claims 11, 14-16, 18-20 and 22-25 stand rejected under 35 U.S.C.
§103 as unpatentable over Hammer in view of Thomas. The Examiner relies
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on Hammer for the basic process of producing an adhesive closing part with
a laterally and rotationally symmetrical structure using a pressure tool and a
molding tool, where the molding tool has cavities with walls extending
along a convex path. The Examiner concedes that Hammer does not
disclose cavities having “a curvature in a form of a hyperboloid with a more
pronounced portion defined by decreased radii of curvature and by
narrowing of spaces between the boundary walls, each more pronounced
portion being closer to a head molding part of the cavity than to a base
molding part of the cavity.” (Answer 4). Accordingly, the Examiner relies
on Thomas for a teaching of the claimed hyperboloid shape. (Answer 5)
(citing embodiments shown in Fig. 6A to Fig. 9B, particularly Fig. 7A).3
According to the Examiner, Thomas “teaches that the length of the prong
may be varied according to the material the shank is designed to intercept
(9:62-10:24). Thomas also teaches the decreased radii of curvature and
narrowing of spaces between the boundary walls, each more pronounced

3 “Thomas' figures show curvatures that encompass hyperboloid shapes, and
in the alternative, the drawings and text of the Thomas patent provide clear
suggestion and teaching that the particular curvature be changed and
optimized.” (Answer 12).
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portion being closer to a head molding part of the cavity than to the base
molding part of the cavity (Figs. 6-9).” (Answer 5). The Examiner
maintains that it would have been prima facie obvious to one of ordinary
skill in the art at the time of the invention to incorporate a hyperboloid-
shaped interlocking means as taught by Thomas in the method of Hammer,
because doing so would have provided enhanced shear strength at the base
of the fastener and decreased rigidity at the top of the fastener, allowing for
easier removal from the substrate. (Answer 5).
Appellant disagrees with the Examiner’s finding that Thomas
discloses the “hyperboloid shape” of the appealed claims. Answer 6.
Appellant notes that Thomas discloses “laterally or rotationally
asymmetrical” shapes (i.e., the two opposite sides of the cavities are not
mirror images of one another). According to Appellant, one of ordinary skill
in the art would not have considered using these asymmetrical shapes in the
Hammer method which is limited to rotationally symmetrical shapes.
(Appeal Br. 5). In particular, Appellant maintains that nothing in the
Hammer and Thomas patents indicates why the decreasing radii curvature
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and narrowing between the boundary walls should be employed within the
Hammer method. (Br. 6).
The Examiner, relying on Ex parte Pfeiffer 135 USPQ 31 (BPAI
1961), maintains that “to be entitled to weight in method claims, recited
structural limitations must affect the method in a manipulative sense and not
amount to mere claiming of a use of a particular structure.” According to
the Examiner, Appellant’s hyperboloid-shaped forming screen is a structural
article, the configuration of which is a matter of choice that would have been
obvious to a person of ordinary skill in the art. (Answer 9) (citing In re
Dailey, 357 F.2d 669, 149 USPQ 47 (CCPA 1966)). The Examiner submits
that the prior art clearly shows the method steps, and Appellant has not
provided evidence that shows that the particular shape of the article
materially affects the method. (Answer 12).
As pointed out by Appellant, in determining obviousness, all
limitations of a claim must be considered. There are no per se rules when
1565, 37 USPQ2d 1127 (Fed. Cir. 1995)). Appellant has explained that the
shape of the mold plainly affects the claimed method in a manipulative
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determining obviousness under 35 U.S.C. § 103.4 (In re Ochiai, 71 F.3d
sense, in particular, as to how the material is molded in the cavities and then
subsequently released from those cavities for use. We note that the
importance of the claimed shape in facilitating removal of the formed
adhesive closing part from the mold is clearly described in the Examiner has
failed to explain why one of ordinary skill in the art would have been
motivated to use a symmetrical hyperboloid-shape in Hammer’s method
given Thomas’ limited disclosure of asymmetrical shapes. See Thomas, col.

4 As stated in Ochiai, 71 F.3d at 1572, 37 USPQ2d at 1133:
The use of per se rules, while undoubtedly less laborious than a
searching comparison of the claimed invention - including all
its limitations - with the teachings of the prior art, flouts section
103 and the fundamental case law applying it. Per se rules that
eliminate the need for fact-specific analysis of claims and prior
art may be administratively convenient for PTO Examiners and
the Board. Indeed, they have been sanctioned by the Board as
well. But reliance on per se rules of obviousness is legally
incorrect and must cease. Any such administrative convenience
is simply inconsistent with section 103, which, according to
Graham [v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966)]
and its progeny, entitles an applicant to issuance of an
otherwise proper patent unless the PTO established that the
invention as claimed in the application is obvious over cited
prior art, based on the specific comparison of that prior art with
claim limitations.
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Specification.5 Moreover, we are in agreement with Appellant that the 9, ll.
28-36 (indicating a preference for orienting the shank “in an acute angular
relation” relative to the plane of the substrate).
Accordingly, we reverse the rejection of claims 11, 14-16, 18-20 and
22-25 under 35 U.S.C. § 103.
The remaining claims stand rejected under 35 U.S.C. § 103 as
unpatentable over Hammer in view of Thomas when further considered in
view of Reed (as to claims 12 and 13), Tuma (as to claim 17) and Nestegard
(as to claim 21). The Examiner relies on the combined teachings of Hammer
and Thomas as discussed in connection with the rejection of independent
claim 11, citing the additional references for a showing of features recited in

5 “The object of the invention is to further improve the known process such
that good ejection of the interlocking means after the shaping process is
achieved, even at very high production rates, and that the interlocking means
produced in this way leads to closing parts which adhere well and which can
be joined to one another.” (Spec., 3).
“This continuous transition along the convex path then leads essentially to
unimpeded mold removal process without the danger of the head parts
tearing off from their assigned stem part over sharp-edged shape
transitions.” (Spec., 4).

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dependent claims 12, 13, 17 and 21. Accordingly, we also reverse the
remaining three grounds of rejection for the reasons set forth above.
REVERSED

LMG/tf

Mark S. Bicks
Roylance, Abrams, Berdo & Goodman
Suite 600
1300 19th Street, N.W.
Washington, D.C. 20036