Ex Parte Wang

Board of Patent Appeals and Interferences

Jun 16, 2010

10938949 (B.P.A.I. Jun. 16, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte CHUNG-CHIN WANG,

Appellant.
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Appeal 2010-001349
Application 10/938,949
Technology Center 1700
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Decided: June 16, 2010
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Before SALLY GARDNER LANE, RICHARD TORCZON, and
MICHAEL P. TIERNEY, Administrative Patent Judges.

LANE, Administrative Patent Judge.

DECISION ON APPEAL
I. STATEMENT OF THE CASE
The appeal, under 35 U.S.C. § 134, is from a Final Rejection of claims
1-20, the only pending claims. We affirm.
Appellant’s specification relates to fake-proof adhesive tape.
The Examiner relied on the following patents:

Appeal 2010-001349
Application 10/938,949

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Name Number Date
Pekko 3,631,617 January 4, 1972
Smits 5,015,318 May 14, 1991
Hoffer 5,633,058 May 27, 1997

The Examiner rejected claims 1, 4-10, and 12-18 under 35 U.S.C.
§ 103(a) over Hoffer and Pekko. Appellants argue for the separate
patentability of claims 6 and 15, 7 and 16, and 8 and 17. We focus on
claims 1, 6, 7, and 8 in our review. 37 C.F.R. § 41.37(c)(1)(vii). The
Examiner also rejected claims 2, 3, 11, 19, and 20 under 35 U.S.C. § 103(a)
over Hoffer, Pekko, and Smits.
II. ANALYSIS AND FINDINGS OF FACT
1. Appellant’s claim 1 recites1:
A fake-proof adhesive tape, comprising:
a substrate;
a first identification layer locally formed on a surface of
the substrate;
a second identification layer formed over the surface of
the substrate for completely covering the first identification
layer;
a first adhesive layer formed on a surface of the second
identification layer away from the first identification layer; and
a second adhesive layer formed on a surface of the first
adhesive layer away from the second identification layer;
wherein an adhesion between the second identification
layer and the first adhesive layer is weaker than an adhesion
between the first adhesive layer and the second adhesive layer,

1 Claim 1 has been reformatted by adding indentations. (See 37 C.F.R.
§ 1.75(h)).
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the adhesion between the second identification layer and
the first adhesive layer is weaker than an adhesion between the
second adhesive layer and a sealed article, and
the fake-proof adhesive tape is characterized by having at
least a reinforced portion locally formed between the substrate
and the first adhesive layer, so as to prevent separation of the
first identification layer from the second identification layer
when the fake-proof adhesive tape is torn for adhering to the
article to be sealed.

(App. Br. 6, Claims App’x).
2. Figure 2 of Appellant’s specification is reproduced below.

Figure 2 depicts a cross-sectional view of a tape adhered to a sealed article,
including a substrate (1), a first identification layer (2), a second
identification layer (3), a first adhesive layer (4), a second adhesive layer (5),
and a reinforced portion (6). (Spec. ¶¶ [0019] and [0021]).
3. Hoffer teaches a security tape, as depicted in Figure 4, which is
reproduced below.

Figure 4 depicts a cross-sectional view of the tape, (Hoffer col. 4, ll. 1-5),
with a backing sheet (12), a layer of print (serving as an “identification
layer”) (16), a patterned release layer (serving as second “identification
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Application 10/938,949

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layer”) (14), an adhesive layer (18), and locally reinforced portions that
causes the print layer (16) to adhere strongly to the backing sheet (12).
(Hoffer col. 4, ll. 35-59, and ll. 50-57).
4. Pekko teaches a security tape, which is depicted in Figure 3,
reproduced below.

Figure 3 depicts the layers of a security tape with an adhesive layer (14),
film (10), identification layers (16 and 26), mask layer (12), and sealed
article (18). (Pekko col. 4, ll. 5-12).
5. Pekko teaches that when the film (10) is removed, a portion of
the identification layer (16) is removed from the adhesive layer (14). (Pekko
col. 5, ll. 37-43).
6. Pekko teaches that the adhesive layer (14) has two adhesive
surfaces and may be a laminate of two adhesives. (Pekko col. 3, ll. 66-72).
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III. ISSUE
Would tape having the claimed layers and relative adhesions between
them have been obvious given the teachings of Hoffer and Pekko?
IV. ANALYSIS
Appellant’s claim 1 recites an adhesive tape that has two identification
layers, two adhesive layers, and a reinforced portion. (FF 1; App. Br. 6,
Claims App’x).
Hoffer teaches an adhesive tape with two identification layers, an
adhesive layer, and a reinforced portion. (FF 3; Hoffer col. 4, ll. 35-59, and
ll. 50-57). Hoffer also teaches that those of skill in the art knew that
adhesives could be formulated with specific adhesive strengths for particular
applications and that they had the skill to do so. (Hoffer col. 5, l. 63,
through col. 6, l. 4).
Pekko teaches a security tape with an adhesion layer having two
adhesive surfaces, which may be formed from a laminate of two adhesives.
(FF 6; Pekko col. 3, ll. 66-72). Pekko also teaches that the identification
layer (16) of the security tape can be torn off of the adhesive layer (14),
while the adhesive layer remains behind on the sealed article. (FF 4; Pekko
Fig. 3). Thus, Pekko teaches a security tape with two adhesive layers and
portions that adhere more weakly to the top of adhesion layer, than the two
surfaces of the adhesion layer adhere to each other. (FFs 4 and 5; Pekko
col. 5, ll. 37-43). Contrary to what Appellant argues (App. Br. 3-4), Pekko
teaches the features not expressly taught in Hoffer.
Those of skill in the art would have had a reason to use the claimed
relative adhesions in the tape of Hoffer to achieve the additional security
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features offered by Pekko, such as partial destruction of identification
information. See KSR Int’l Co., v. Teleflex, Inc., 550 U.S. 398, 416 (2007)
(“When a [claim is drawn to] a structure already known in the prior art that
is altered by the mere substitution of one element for another known in the
field, the combination must do more than yield a predictable result.”).
Dependent Claims
Claim 6 recites the tape of claim 1,
wherein the adhesion between the first identification layer and
the second identification layer is weaker than the adhesion
between the substrate and the first identification layer.

(App. Br. 7, Claims App’x). Claim 7 recites the tape of claim 1,
wherein an adhesion between the substrate and the second
identification layer is stronger than the adhesion between the
second identification layer and the first adhesive layer.

(Id.). Claim 8 recites the tape of claim 1,
wherein the adhesion between the first identification layer and
the second identification layer is weaker than the adhesion
between the second identification layer and the first adhesive
layer.

(Id.).
Appellant argues that the additional elements of claims 6, 7, and 8 are
not supported by Hoffer. (App. Br. 4). According to Appellant, Hoffer
teaches a tape with adhesion between layers 14 (first identification) and 16
(second identification) that is stronger than the adhesion between 12
(substrate) and 14 (first identification), in contrast to claims 6, 7, and 8.
(Id.). Appellant relies on Figure 5 of Hoffer, which is reproduced below.
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Figure 5 depicts the layers identified in Figure 4 (see FF 3), after the tape
has been removed from its initial application to a sealed article. (Hoffer col.
4, ll. 6-8). In addition to Figure 5, Hoffer also teaches that
[t]he layer of print 16 adheres relatively strongly to the backing
sheet 12, it may adhere less strongly to the adhesive layer 18,
and it adheres more strongly to the adhesive layer 18 than it
adheres to those portions of the backing sheet 12 where the
release layer 14 is present.

(Hoffer col. 4, ll. 53-57). The text of Hoffer does not indicate that the
adhesion between 14 and 16 is stronger than the adhesion between 12 and
14, as Appellant argues. Instead, Hoffer delineates other relative adhesions
between the layers. As discussed above, Hoffer also explains that those of
skill in the art would have been able to modify the strengths of adhesion
between the layers to achieve a desired arrangement. (See Hoffer col. 5,
l. 63, through col. 6, l. 4). Thus, it would have been obvious to have
arranged the layers and relative strengths of adhesion as taught in Hoffer and
Pekko to achieve additional security features, such as partial destruction of
identification information.
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Rejection under U.S.C. § 103(a) over Hoffer, Pekko, and Smits
The Examiner rejected claims 2, 3, 11, 19, and 20 under 35 U.S.C.
§ 103(a) over Hoffer, Pekko, and Smits. Smits teaches a tamper-evident
tape with a reinforced portion that is free between the first identification
layer and the second identification layer and facilitates peeling of the
substrate. (Smits col. 11, ll. 20-31, Fig. 3). The Examiner concluded that it
would have been obvious to incorporate the reinforced portion taught in
Smits to facilitate peeling of the substrate in the tapes of Hoffer and Pekko.
(Ans. 5-6).
Appellant did not provide a separate argument against the rejection of
these claims over the combination of Hoffer, Pekko, and Smits. For the
reasons set out above we are not persuaded that the Examiner erred in
making this rejection.
V. ORDER
Upon consideration of the record and for the reasons given,
the rejection of claims 1, 4-10, and 12-18 under 35 U.S.C.
§ 103(a) over Hoffer and Pekko is AFFIRMED; and
the rejection of claims 2, 3, 11, 19, and 20 under 35 U.S.C. § 103(a)
over Hoffer, Pekko, and Smits is AFFIRMED.

AFFIRMED
Appeal 2010-001349
Application 10/938,949

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