10239257 (B.P.A.I. Oct. 29, 2010)

Ex Parte Wieck

Board of Patent Appeals and InterferencesOct 29, 2010

10239257 (B.P.A.I. Oct. 29, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE UNITED STATES DEPARTMENT OF COMMERCE United States Patent and Trademark Office Address: COMMISSIONER FOR PATENTS P.O. Box 1450 Alexandria, Virginia 22313-1450 www.uspto.gov APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 10/239,257 09/20/2002 Andreas Wieck 101769-173/tesa AG1557kgb 4018 27384 7590 10/29/2010 Briscoe, Kurt G. Norris McLaughlin & Marcus, PA 875 Third Avenue, 8th Floor New York, NY 10022 EXAMINER NORDMEYER, PATRICIA L ART UNIT PAPER NUMBER 1788 MAIL DATE DELIVERY MODE 10/29/2010 PAPER Please find below and/or attached an Office communication concerning this application or proceeding. The time period for reply, if any, is set in the attached communication. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES ____________ Ex parte ANDREAS WIECK ____________ Appeal 2009-013595 Application 10/239,257 Technology Center 1700 ____________ Before CATHERINE Q. TIMM, BEVERLY A. FRANKLIN, and KAREN M. HASTINGS, Administrative Patent Judges. FRANKLIN, Administrative Patent Judge. DECISION ON REQUEST FOR REHEARING1 1 The two-month time period for filing an appeal or commencing a civil action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing, as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE” (paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery mode) shown on the PTOL-90A cover letter attached to this decision. Appeal 2009-013595 Application 10/239,257 2 Appellant requests rehearing of our Decision of May 26, 2010. In that Decision, we sustained the rejections of record. We have reconsidered our decision of May 26, 2010, in light of Appellant’s comments in the Request for Rehearing (Req. Rhg.), and we modify our Decision in response to Appellant’s comments by adding our analysis herein, but are unconvinced of error in our decision to sustain the rejections of record. Appellant argues that the Board’s claim interpretation is in error and therefore the Board’s agreement with the Examiner’s obviousness determination is in error. Req. Rhg. 1-5. Appellant argues that claim 31 requires punching die cuts from a combination that consists of i) a lining material and ii) a double-sided adhesive tape applied to the said lining material, whereas Bilodeau punches die cuts from a combination that has other layers besides i) the lining and ii) a double-sided adhesive tape applied to said lining material. Req. Rhg. 3. Appellant argues that claim 31 excludes these other layers of Bilodeau’s structure. Req. Rhg. 3. In this light, we refer back to Appellant’s Brief, and also focus our attention upon the aspect of claim 31 pertaining to the phrase “a lining material comprising” found in line 4 of claim 31.2 2 In the Decision mailed on May 26, 2010, we focused on the word “comprising” found in line 2 of claim 31. Appeal 2009-013595 Application 10/239,257 3 In the Brief, Appellant made a comparison of a structure representative of Bilodeau’s invention with a structure encompassed by claim 31, reproduced below. Br. 7. Claim 31 Bilodeau We add that claim 31 also encompasses the following structure, such that a comparison can be made as follows (more detail is also provided for the Bilodeau structure). See next page. polymer-coated paper barrier layer adhesive release coating polymer-coated paper adhesive release coating polymer-coated paper Appeal 2009-013595 Application 10/239,257 4 Claim 31 Bilodeau As stated, supra, Appellant argues that the top 2 layers (polymer- coated paper and barrier layer) of Bilodeau, are excluded by claim 31 because claim 31 requires that the combination “consists of” a lining material and a double-sided adhesive tape. Br. 8. Req. Rhg. 3. However, as stated by the Examiner on page 6 of the Answer, claim 31 recites a lining material “comprising” which allows for other layers to be included in the lining material. Appellant argues that one cannot include the barrier layer and the polymer-coated paper because these layers are not layers of a lining material as defined by claim 31. See paragraph bridging pages 9-10 of the Brief. However, what is named as “a lining material” is a matter of choice within the context of the broadest reasonable interpretation and it is notable that all layers required by claim 31, i.e., the paper carrier, polymer coating, and polymer coating paper carrier adhesive (e.g., polymer coating); see page 2 of Specification, ll. 20-24. release coating polymer-coated paper (double sided adhesive tape) polymer coating paper carrier barrier layer adhesive (e.g., polymer coating); see col. 4, ll. 52-55, col. 8, ll. 40-44. release coating polymer-coated paper (col. 10, l. 36- col. 11. l. 22) Appeal 2009-013595 Application 10/239,257 5 antiadhesive layers, are taught by Bilodeau. The fact that Bilodeau includes further layers is of no moment because there is nothing indicating that those additional layers cannot be classified as part of a “lining material.” Moreover, we stand by our previous analysis of the claim scope in which we determined that “said method comprising” in lines 1-2 of claim 31, allows for additional steps. While the combination must consist of “a lining material” and “a double-sided adhesive tape”, nothing prevents an additional step of providing other layers. Step b) would still involve punching die cuts from an article including “said combination” even if other layers are present. Therefore, on the issue of whether the top 2 layers of Bilodeau (the barrier layer and the polymer-coated paper) are excluded by claim 31 because claim 31 requires that the combination “consists of”, we are not persuaded of error in our agreement with the Examiner’s conclusion that these layers are not excluded by claim 31.3 In view of the above, Appellant has not convinced us of error regarding our agreement with the Examiner’s determinations made in the Answer. 3 Appellant argues on page 5 of the Request for Rehearing that the Examiner’s position (that the additional 2 layers meet the claim limitation of the liner of claim 31) is incorrect, as explained on pages 2-4 of the Reply Brief, and that the Board did not address this sub-issue in the Decision. For the reasons stated herein, this “sub-issue” has been addressed. Appeal 2009-013595 Application 10/239,257 6 In conclusion, based on the foregoing, Appellant's Request is granted to the extent that we have reconsidered our Decision and modified it as described herein, but is denied with respect to making any change concerning the outcome. DENIED cam KURT G. BRISCOE NORRIS MCLAUGHLIN & MARCUS, PA 875 THIRD AVENUE, 8TH FLOOR NEW YORK, NY 10022