Ex Parte Petersen et al

Patent Trial and Appeal Board

Jan 12, 2015

10557134 (P.T.A.B. Jan. 12, 2015)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte JOHANN F. PETERSEN and RALF G. OERTEL
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Appeal 2012-007257
Application 10/557,134
Technology Center 3700
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Before JEFFREY N. FREDMAN, CHRISTOPHER G. PAULRAJ, and
ROBERT A. POLLOCK, Administrative Patent Judges.

FREDMAN, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal1 under 35 U.S.C. § 134 involving claims to an
assembly. The Examiner rejected the claims as obvious. We have
jurisdiction under 35 U.S.C. § 6(b). We reverse.

1 Appellants identify the Real Parties in Interest as 3M Company
and its affiliate 3M Innovative Properties Company (see App. Br.
3).
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Application 10/557,134

2
Statement of the Case
Background
“The present invention relates to an assembly which is suitable for
releasably adhering to fibrous materials through a combination of a
mechanical and an adhesive bonding mechanism” (Spec. 1, ll. 5–7).
The Claims
Claims 1–6, 8, 12, 13, 15–25, and 29 are on appeal.2 Independent
claim 1 is representative and reads as follows:
1. An assembly comprising:
a substrate bearing an adhesive layer having an
extension in a machine direction and an extension in a cross-
direction; and
discrete portions of a backing, each discrete portion
having a first major surface bearing a plurality of male
fastening elements and a second major surface opposite to
said first major surface, and each discrete portion being
attached to the adhesive layer through its second major
surface
wherein a sum of a maximum density of the discrete
portions of the backing along the extension of the adhesive
layer in the cross-direction and a maximum density of the
discrete portions of the backing along the extension of the
adhesive layer in the machine direction is at least 0.8 cm-1,
and wherein the assembly can releasably adhere to a fibrous
material having a plurality of female fastening elements
through a combination of a mechanical and an adhesive
bonding mechanism.

2 Claims 26–28 stand withdrawn and claims 7, 9–11, and 14 are
cancelled (see App. Br. 3).
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The Issues
A. The Examiner rejected claims 1–6, 8, 12, 13, 15–17, 19–25, and 29
under 35 U.S.C. § 103(a) as being obvious over Hisada3 (Ans. 5–14).
B. The Examiner rejected claim 18 under 35 U.S.C. § 103(a) as being
obvious over Hisada and Goulait4 (Ans. 14).
A. 35 U.S.C. § 103(a) over Hisada
The Examiner finds that
Hisada discloses an assembly comprising a base panel
member 20 . . . that is a substrate bearing an adhesive layer
22, 22A . . . and a fastening panel elements 21 . . . that are
discrete portions of a backing comprising plurality of hock
elements . . . that are male fastening elements, wherein each
discrete portion is being attached to the adhesive layer 22,
22A . . . through its second major surface

(Ans. 5). The Examiner finds that Hisada “does not expressly disclose the
particular parameter of the maximum density of the discrete portions of the
backing along the extension of the adhesive defines the summary fastening
surface area and straightly affects the peel-off force, and therefore is the
matter of optimization as being result effective variable” (Ans. 6).
The Examiner finds it obvious to optimize “the particular parameter of
the maximum density of the discrete portions of the backing along the
extension of the adhesive in order to reach desired peel-off force” (Ans. 7).
The issue with respect to this rejection is: Does the evidence of record
support the Examiner’s conclusion that Hisada renders obvious an assembly
“wherein a sum of a maximum density of the discrete portions of the

3 Hisada et al., EP 0 755 665 B1, published Feb. 13, 2002.
4 Goulait et al., US 5,300,058, issued Apr. 5, 1994.
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backing along the extension of the adhesive layer in the cross-direction and a
maximum density of the discrete portions of the backing along the extension
of the adhesive layer in the machine direction is at least 0.8 cm-1” as required
by claim 1?
Findings of Fact
1. Figure 2 of Hisada is reproduced below:

“The tape fastener 10 of which the inner side is shown by Fig. 2 comprises a
soft base panel member 20 formed by a nonwoven fabric made of
thermoplastic synthetic fibers and fastening panel members 21 made of
plastic material” (Hisada, col. 3, ll. 4–9).
2. Hisada teaches that “[e]ach fastening panel member 21
comprises a plurality of hook elements of the tape fastener which are known
as the trade mark of Velcro or Magic Tape and made of nylon or other
suitable plastics” (Hisada, col. 3, ll. 37–41).
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3. Figure 3 of Hisada is reproduced below:

“Fig. 3 is a sectional view taken along a line III-III in Fig. 2” (Hisada, col. 3,
ll. 28–29).
4. Hisada teaches that “even if one of the spaced apart fastening
panel members 21 . . . is unintentionally disengaged from the fastening
region 11, the other one provided in the proximity of the base end 20C of the
base panel member 20 will not be affected by the disengaging force exerted
on the fastening panel member” (Hisada, col. 4, l. 58 to col. 5, l. 5).
5. Figure 1b of the Specification is reproduced below:

“Fig. 1 shows an embodiment of an assembly 40 of the present invention
employing discrete portions 2 of the backing 7 having various shapes”
(Spec. 14, ll. 21–22).
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Principles of Law
In In re Aller, 220 F.2d 454 . . . (1955), the court set
out the rule that the discovery of an optimum value of a
variable in a known process is normally obvious. We have
found exceptions to this rule . . . . This case, in which the
parameter optimized was not recognized to be a result-
effective variable, is another exception.

In re Antonie, 559 F.2d 618, 620 (CCPA 1977).
Analysis
Appellants contend that the “total mechanical fastening surface area is
not the same as the sum of maximum densities feature” (App. Br. 9).
Appellants explain that:
For example, if Fig. 1b showed only one discrete portion 2
in the center of the adhesive layer 6, the maximum number
of discrete portions 2 that could be touched by a dotted line
extending either in the MD or in the CD would be 1.
However, if that same discrete portion was divided into
three portions and spread across the adhesive layer, the total
mechanical fastening surface area would not change, but the
sum of maximum densities would increase. On the other
hand, if the discrete portions 2 shown in Fig. 1b were larger
but still spaced apart, the total fastening surface area would
be larger, but the sum of maximum densities would not
necessarily change.

(App. Br. 9.) Appellants contend that the “Examiner provides no evidence
that the cited art recognizes that the sum of maximum densities feature
affects the peel-off force” (App. Br. 8).
The Examiner responds that “since the particular parameter of the
maximum density of the discrete portions of the backing along the extension
of the adhesive straightly affects the peel-off force, it is the matter of
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optimization as being result effective variable” (Ans. 15). The Examiner
finds that “the maximum density of the discrete portions of the backing
along the extension of the adhesive straightly affects the peel-off force, and
therefore is the matter of optimization as being result effective variable”
(Ans. 15).
We find that Appellants have the better position. While the Examiner
is correct that there is a relationship, the Examiner has provided no evidence
teaching or suggesting the optimization of the “sum of a maximum density”
calculation, nor has the Examiner adequately explained why optimizing a
“peel-off force” calculation will also necessarily optimize the “sum of a
maximum density” calculation to result in a value of at least 0.8 cm-1 as
required by claim 1. By contrast, Appellants have clearly explained that the
same total area of adhesive may result in two different sum of maximum
densities depending upon the arrangement of the adhesive, suggesting that
“peel-off force” and “sum of a maximum density” calculations do not
necessarily yield identical results. Therefore, without a reason or other basis
to optimize the value of the “sum of a maximum density” to 0.8 cm-1 as
required by claim 1, the Examiner’s reliance on the optimization rationale is
not persuasive.
Conclusion of Law
The evidence of record does not support the Examiner’s conclusion
that Hisada renders obvious an assembly “wherein a sum of a maximum
density of the discrete portions of the backing along the extension of the
adhesive layer in the cross-direction and a maximum density of the discrete
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portions of the backing along the extension of the adhesive layer in the
machine direction is at least 0.8 cm-1” as required by claim 1.
B. 35 U.S.C. § 103(a) over Hisada and Goulait
This rejection relies upon the underlying obviousness rejection over
Hisada. Having reversed that rejection, we also necessarily reverse the
further obviousness rejection because Goulait is not relied upon to teach the
“sum of a maximum density” with a value at least 0.8 cm-1 as required by
claim 1.
SUMMARY
In summary, we reverse the rejection of claims 1–6, 8, 12, 13, 15–17,
19–25, and 29 under 35 U.S.C. § 103(a) as being obvious over Hisada.
We reverse the rejection of claim 18 under 35 U.S.C. § 103(a) as
being obvious over Hisada and Goulait.

REVERSED

cdc