Ex Parte DeissDownload PDFPatent Trial and Appeal BoardJul 21, 201612728808 (P.T.A.B. Jul. 21, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 121728,808 03/22/2010 24314 7590 07/21/2016 JANSSON MUNGER MCKINLEY & KIRBY LTD, 601 Lake Avenue 3rd Floor RACINE, WI 53403 Martin Deiss 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 ATTORNEY DOCKET NO. CONFIRMATION NO. KS-8393US 6032 EXAMINER ADKINS, CHINESSA T ART UNIT PAPER NUMBER 1788 MAILDATE DELIVERY MODE 07/21/2016 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 PATENT TRIAL AND APPEAL BOARD Ex parte MARTIN DEISS Appeal2015-003422 Application 12/728,808 Technology Center 1700 Before CHUNG K. PAK, JEFFREY T. SMITH, and WESLEY B. DERRICK, Administrative Patent Judges. PAK, Administrative Patent Judge. DECISION ON APPEAL Appellant 1 appeals under 35 U.S.C. § 134(a) from the Examiner's decision finally rejecting claims 1 through 16. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. The subject matter on appeal is generally directed to a precompressed sealing tape for sealing a joint that comprises an elastically re-expandable foam strip, a wrapping, a stiff strip-shaped element having a greater flexural strength in the transverse direction than the re-expandable foam strip, and fastening means. (Spec. 2, 11. 23-30; 3, 11. 10-13.) A first section of the 1 Appellant identifies the Real Party in Interest as !so-Chemie GmbH (Appeal Brief filed October 6, 2014 ("App. Br.") at 1.) Appeal2015-003422 Application 12/728,808 wrapping is arranged between a first transverse surface of the foam strip and the stiff strip-shaped element. (Spec. 2, 1. 20-3, 1. 1.) The purpose of the stiff strip-shaped element having such greater flexural strength is to "absorb the force which proceeds from or is caused by the attempt of foam strip 2 to expand" such that "a deformation of flexible wrapping" is prevented or significantly minimized. (Spec. 6, 11. 19--25.) Details of the appealed subject matter are recited in representative claim 1, which is reproduced below from the Claims Appendix to the Appeal Brief: 1. A precompressed sealing tape for sealing a joint, compnsmg: an elastically re-expandable foam strip, extending farther in a longitudinal direction than in a transverse direction, which comprises two lateral surfaces and first and second transverse surfaces, which connect the two lateral surfaces to each other, a wrapping, which at least partially surrounds the foam strip, a stiff strip-shaped element defined as a strip-shaped element having a greater flexural strength in the transverse direction than the foam strip, wherein the stiff strip-shaped element is arranged in an area of the first transverse surface of the foam strip; fastening means for attaching the stiff strip-shaped element to a component to be installed in a building; wherein a first section of the wrapping is arranged between the first transverse surface of the foam strip and the stiff strip-shaped element, and wherein the fastening means is arranged in an area of the stiff strip-shaped element. Appellant seeks review of the following grounds of rejection maintained by the Examiner in the Answer entered on December 1, 2014 ("Ans."): 2 Appeal2015-003422 Application 12/728,808 Claims 1--4 and 8-16 under 35 U.S.C. § 103(a) as unpatentable over the disclosure of International Patent Application Publication WO 98/45565 published in the name of Stromberg on October 15, 1998 (hereinafter referred to as "Stromberg") in view of U.S. Patent 6,672,597 Bl issued in the name of Irrgeher et al. on January 6, 2004 (hereinafter referred to as "Irrgeher"), U.S. Patent Application Publication US 2005/0159496 Al published in the name of Bambara et al. on July 21, 2005 (hereinafter referred to as "Bambara"), and U.S. Patent 4,204,373 issued in the name of Davidson on May 27, 1980 (hereinafter referred to as "Davidson"). Claims 5-7 under 35 U.S.C. § 103(a) as unpatentable over the disclosure of Stromberg in view of Irrgeher, Bambara, Davidson, and a machine translation of EP 1959065 (hereinafter referred to as "065"). DISCUSSION Upon consideration of the evidence on this appeal record in light of the arguments advanced by the Examiner and Appellant, we concur with Appellant that the Examiner does not carry the burden of establishing a prima facie case of obviousness regarding the subject matter recited in claims 1-16 within the meaning of 35 U.S.C. § 103(a). Accordingly, we reverse the Examiner's§ 103(a) rejections of these claims for the reasons set 3 Appeal2015-003422 Application 12/728,808 forth in the Appeal Brief. We add the discussion below primarily for emphasis and completeness. 2 The Examiner has the burden of establishing a prima facie case of obviousness regarding the subject matter recited in the claims on appeal. In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992) ("[The] [patent] examiner bears the initial burden, on review of the prior art or on any other ground, of presenting a prima facie case of unpatentability."); see also In re Jung, 637 F.3d 1356, 1365---66 (Fed. Cir. 2011) (explaining that while "the applicant must identify to the Board what the examiner did wrong, ... the examiner retains the burden to show invalidity"). As explained by Appellant, the Examiner does not meet the burden of establishing prima facie obviousness because the Examiner fails to articulate an apparent reason or suggestion that would have prompted one of ordinary skill in the art to modify the applied prior art in such a way as to arrive at the claimed sealing tape. The Examiner finds that Stromberg discloses a sealing strip for sealing an air space between two construction parts that includes a cover 13 (wrapper) surrounding a compressible, elastic material 12, such as plastic foam (foam strip). (Final Act. 3; Stromberg 1, ,-r 1; 3, ,-r 1; Figs. 2-5.) The 2 For the purposes of this appeal, we select claim 1, the broadest claim on appeal, as representative, and decide the propriety of the rejections under 35 U.S.C. § 103(a) based on this claim alone. In the event of further prosecution or any issuance of claims 1 and 3 on appeal, we advise both the Examiner and Appellant to make the terms "a component" and "the structural component" in claims 1 and 3, respectively consistent with one another to provide a proper antecedent basis. 4 Appeal2015-003422 Application 12/728,808 Examiner finds that Stromberg discloses that the sealing strip further includes an insert 14 that functions to stiffen the plastic foam. (Final Act. 3; Stromberg 3, ,-r 12; Figs. 4--5.) The Examiner finds that the Stromberg's insert 14 corresponds to the stiff strip-shaped element recited in claim 1. (Final Act. 3.) The Examiner acknowledges that Stromberg fails to disclose that a first section of the cover 13 (wrapper) is arranged between a first transverse surface of the plastic foam 12 (foam strip) and the insert 14 (stiff strip- shaped element), and relies on Irrgeher to remedy this deficiency in Stromberg. (Final Act. 3--4.) The Examiner finds that Irrgeher discloses a compressible sealing strip for sealing a joint that includes a foam strip 2 enclosed by a wrapper 3 comprising a plastic sheet and a protective strip 19, which according to the Examiner, corresponds to the stiff strip-shaped element recited in claim 1. (Final Act. 4; Irrgeher col. 1, 11. 3-7, 25-28; col. 3, 11. 10-13; col. 4, 11. 57---61; Fig. 5.) The Examiner finds that Irrgeher discloses that the wrapper 3 is arranged between the foam strip 2 and the protective strip 19 that corresponds to the stiff strip-shaped element recited in claim 1. (Final Act. 4; Irrgeher col. 3, 1. 65---col. 4, 1. 3; col. 4, 11. 57-59; Fig. 5.) The Examiner then concludes that it would have been obvious to one of ordinary skill in the art at the time of the invention "to adhesively attach the plastics sheet between the first transverse surface of the foam strip and the strip-shaped element of Irrgeher [] in combination with the sealing 5 Appeal2015-003422 Application 12/728,808 strip of Stromberg in order to properly pos1t10n the foam strip when attempting to secure the sealing strip to an envisaged object." (Final Act. 5.) However, we agree with Appellant that the Examiner has not demonstrated that one of ordinary skill in the art would have been led to arrange the wrapping between the first transverse surface of the foam strip and the stiff strip-shape element having a greater flexural strength in the transverse direction than the foam strip, as recited in claim 1. As explained by Appellant, Irrgeher discloses that the protective strip 19 can be made of silicone-treated paper and covers an adhesive strip 11 used to secure the sealing strip to an object when the adhesive strip 11 is not in use. (Irrgeher col. 3, 1. 65---col. 4, 1. 3; col. 4, 11. 57---61; Fig. 5; App. Br. 13-14.) From this disclosure of Irrgeher, one of ordinary skill in the art would have reasonably inferred that the protective strip 19 of Irrgeher' s sealing strip acts as a release liner for the adhesive strip 11 and is peeled away from the adhesive strip 11 and discarded when the sealing strip is used to seal a joint. (See also App. Br. 14.) On this record, the Examiner does not demonstrate that Irrgeher's protective strip 19 has a greater flexural strength in the transverse direction than the foam strip of the sealing strip, or has a flexural strength comparable to Stromberg's insert 14 used for the purpose of foam stiffening, 3 to meet the stiff strip-shaped element recited in claim 1. (Final 3 The thickness and type of material used for the insert 14 taught by Stromber, unlike Irrgeher's protective strip, must be appropriate for stiffening a foam strip. 6 Appeal2015-003422 Application 12/728,808 Act. 3-5; Ans. 8-16.) Nor does the Examiner adequately explain, or provide any evidence to show, that Stromberg's insert 14 is interchangeable with or equivalent to Irrgeher' s protective strip 19 used for a purpose different from Stromberg's insert 14. (Id.) In other words, the Examiner does not establish that Irrgeher discloses or would have suggested arranging a wrapper between the foam strip and the stiff strip-shaped element recited in claim 1. (Id.) Specifically, the Examiner does not proffer sufficient evidence to show that one of ordinary skill in the art seeking to produce a sealing strip for a sealing joint would have positioned the cover 13 (wrapping) of Stromberg's sealing strip between the sealing strip's plastic foam 12 and stiffening insert 14, or any other stiffening strip-shaped element having a greater flexural strength in the transverse direction than the foam strip of the sealing strip, as recited in claim 1. (Id.) Further, on this record, we find the Examiner's conclusory rationale grounded on repositioning the strip-shaped element of Stromberg to that of Irrgeher's protective strip or modifying the protective strip of Irrgeher to have the strength of Stromberg's (see, e.g., Ans. 8-9) insufficient to establish a prima facie case of obviousness. "[O]bviousness concerns whether a skilled artisan not only could have made but would have been motivated to make the combination or modifications of prior art to arrive at the claimed invention." Belden Inc. v. Berk-TekLLC, 805 F.3d 1064, 1073 (Fed. Cir. 2015). Accordingly, on this record, we are constrained to reverse the Examiner's rejections of claims 1-16 under 35 U.S.C. § 103(a). 7 Appeal2015-003422 Application 12/728,808 ORDER In view of the reasons set forth in the Appeal Brief and above, the Examiner's§ 103(a) rejections of claims 1-16 are reversed. REVERSED 8 Copy with citationCopy as parenthetical citation