Ex Parte Ulli

Board of Patent Appeals and Interferences

Aug 28, 2007

09926694 (B.P.A.I. Aug. 28, 2007)

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not binding precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte ANDREAS ULLI
____________

Appeal 2007-2042
Application 09/926,694
Technology Center 1700
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Decided: August 28, 2007
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Before PETER F. KRATZ, CATHERINE Q. TIMM, and
JEFFREY T. SMITH, Administrative Patent Judges.

TIMM, Administrative Patent Judge.

DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s
decision rejecting claims 8-10, 13, and 14.1 We have jurisdiction under
35 U.S.C. § 6(b).

1 Claims 11 and 12, the only other claims pending in the Application, have
been withdrawn from consideration by the Examiner and, therefore, are not
subject to appeal.
Appeal 2007-2042
Application 09/926,694

We REVERSE.
I. BACKGROUND
The invention relates to an air-permeable, water impermeable
structure, and a three-layer sheet incorporating the air-permeable, water
impermeable structure. Claims 8 and 10 are illustrative of the subject matter
on appeal:
8. An air-permeable, water impermeable structure comprising

an air-permeable water impermeable substrate having a
first surface and a second surface opposite the first surface,

a first adhesive surface coating deposited in a
discontinuous pattern on the first surface of the substrate and

a second adhesive surface coating deposited in a
discontinuous pattern on the second surface of the substrate wherein

the discontinuous adhesive surface coating pattern of the
first surface of the substrate is at least partially aligned with the
discontinuous adhesive surface coating pattern of the second surface,
so that the substrate has areas which are coated on both surfaces and
areas which are uncoated on both surfaces.

10. A sheet formation containing

an air permeable, water impermeable substrate having a
first surface and a second surface opposite the first surface,

a first sheet of a material laminated to the first surface of
the substrate by a first adhesive coating on the first surface of the
substrate, and

a second sheet of a material laminated to the second
surface of the substrate by a second adhesive coating on said second
surface of the substrate,
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Application 09/926,694

wherein both the first and second adhesive surface
coatings are deposited in discontinuous patterns on both the first and
second surfaces of the substrate, and

the adhesive surface coating pattern of the first surface of
the substrate is at least partially aligned with the adhesive surface
coating pattern of the second surface of the substrate, so that the
substrate has areas which are coated on both the first and second
surfaces and areas which are uncoated on both the first and second
surfaces.

The Examiner relies on the following prior art references to show
unpatentability:
Groshens US 5,827,579 Oct. 27, 1998
Appellant’s admission in the second paragraph of page 1 of the
Specification.

The Examiner rejects the claims 8-10, 13, and 14 under 35 U.S.C.
§ 103(a) as being unpatentable over Appellant’s Admission in view of
Groshens.
II. DISCUSSION
The issue on appeal arising from the contentions of the Appellant and
the Examiner is: Does a preponderance of the evidence show that each and
every limitation of the claims is described or suggested by the prior art or
would have been obvious based on the knowledge of those of ordinary skill
in the art?
We answer this question in the negative.
The examiner bears the initial burden of presenting a prima facie case
of obviousness. In re Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444
(Fed. Cir. 1992). In order to establish a prima facie case of obviousness, the
examiner must show that each and every limitation of the claim is described
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Application 09/926,694

or suggested by the prior art or would have been obvious based on the
knowledge of those of ordinary skill in the art. In re Fine, 837 F.2d 1071,
1074, 5 USPQ2d 1596, 1598 (Fed. Cir. 1988)). “[R]ejections on
obviousness grounds cannot be sustained by mere conclusory statements;
instead, there must be some articulated reasoning with some rational
underpinning to support the legal conclusion of obviousness.” In re Kahn,
441 F.3d 977, 988, 78 USPQ2d 1329, 1336, quoted with approval in KSR
Int'l Co. v. Teleflex Inc., 127 S. Ct. 1727, 1741, 82 USPQ2d 1385, 1396
(2007).
The Examiner relies upon the following paragraph in the Specification
as articulating what was known in the art at the time of the invention:
For manufacturing multi-layered sheet formations it is known
on a substrate to deposit a point-like surface coating of an
adhesive. Subsequently the substrate is laminated with another
foil. The foil is via the adhesive points connected to the
substrate. Such sheet formations are for example applied as
breathing-active textiles for clothing.

(Specification 1:8-13).
The Examiner acknowledges that the above portion of the
Specification describes depositing the adhesive points or dots only on one
side of the substrate (Answer 3). Without relying on any evidence, the
Examiner states a belief that “it is clearly within the skill of the art to coat
the opposing opposite surface with a second pattern of adhesive dots” and a
belief that “the subsequent lamination of such a particular double sided
adhesive coated fabric to a sheet of a suitable material on each of the
article’s outer surfaces is also either clearly known or well within the
ordinary skill of the art.” (Answer 3-4.) The Examiner further relies upon
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Application 09/926,694

Groshens as disclosing “the concept of coating a suitable fabric or other
chosen layer on both opposing outer surfaces with a suitable adhesive dot
pattern on each outer surface.” (Answer 4).
The evidence does not support the findings of the Examiner.
First, the evidence does not support the finding that Groshens
discloses the concept of applying adhesive to both sides of a substrate.
Groshens is directed to an interlining intended to be bonded to another
textile sheet (col. 1, ll. 13-14). Groshens, like the prior art of Appellant’s
Admission, describes applying adhesive dots (first layer 5) to one side of a
substrate (base fabric 2) (col. 3, ll. 30-33). In order to address a problem
with the adhesive traversing the base fabric and producing “returns” (col. 1,
ll. 39-56), Groshens applies a second layer 7 that “acts as a barrier or a
shield with respect to the first layer 5, i.e., it keeps the return phenomenon . .
. from taking place.” (Col. 3, ll. 41-44). The secondary layer 7 is not
adhesive in nature. Therefore, Groshens describes applying adhesive to only
one side, not both sides of the base fabric. Moreover, what Groshens creates
is a fusible interlining intended to be bonded on one side only, not both
sides.
Second, the “belief” advanced by the Examiner is conclusory in
nature. There is no convincing articulated reasoning with a rational
underpinning to support the Examiner’s position.
Nor is there any evidence of a suggestion within the prior art for
applying adhesive on the alternate side and laminating to a second layer.
Groshens and the Admission relied upon by the Examiner are both directed
to a one-sided adhesive structure and one-sided laminate.
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Application 09/926,694

III. CONCLUSION
We determine that the Examiner has not established by a
preponderance of the evidence that each and every limitation of the claims is
described or suggested by the prior art or would have been obvious based on
the knowledge of those of ordinary skill in the art
IV. DECISION
The decision of the Examiner is reversed.

REVERSED

tf/ls

Shoemaker and Mattare, Ltd.
10 Post Office Road – Suite 110
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