Ex Parte Banta

Board of Patent Appeals and Interferences

Mar 14, 2012

11464045 (B.P.A.I. Mar. 14, 2012)

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.
11/464,045 08/11/2006 Mark K. Banta 2820-2 7967
616 7590 03/15/2012
THE MAXHAM FIRM
9330 SCRANTON ROAD, SUITE 350
SAN DIEGO, CA 92121
EXAMINER
PLUMMER, ELIZABETH A
ART UNIT PAPER NUMBER
3635
MAIL DATE DELIVERY MODE
03/15/2012 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 MARK K. BANTA
____________________

Appeal 2010-007456
Application 11/464,045
Technology Center 3600
____________________

Before: JENNIFER D. BAHR, LINDA E. HORNER, and
WILLIAM V. SAINDON, Administrative Patent Judges.

SAINDON, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2010-007456
Application 11/464,045
2
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134 from the Examiner’s
decision rejecting claims 1-21. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
Claim 1, reproduced below, is illustrative of the claimed subject
matter.
1. A sealing tape for wall surface seams, cracks, and defects, the tape
comprising:
a substrate having a surface; and
a mesh layer on the surface of the substrate, the mesh layer
further comprising an array of filaments which, together with the
substrate, define a plurality of inter-filament cavities exposed on
one side of the sealing tape to receive joint compound for
application to the wall surface spanning the seam, crack, or defect
with the mesh layer against the wall surface.

References
Wood
Stough
Pellett
US 5,640,820
US 6,226,946 B1
US 2002/0157573 A1
Jun. 24, 1997
May 8, 2001
Oct. 31, 2002

Rejections
I. Claims 1-4, 6, 7, 13, 16, 17, and 20 are rejected under 35 U.S.C. §
102(b) as anticipated by or, in the alternative, under § 103(a) as
obvious over Stough.
II. Claims 5, 8, 9, 14, 15, 18, 19, and 21 are rejected under § 103(a) as
unpatentable over Stough.
III. Claim 10 is rejected under § 103(a) as unpatentable over Stough and
Pellett.
IV. Claims 11 and 12 are rejected under § 103(a) as unpatentable over
Stough and Wood.

Appeal 2010-007456
Application 11/464,045
3
OPINION
Independent claim 1 requires a mesh layer that defines “a plurality of
… cavities exposed on one side of the sealing tape to receive joint
compound for application to the wall surface … with the mesh layer against
the wall surface.” Independent claim 16 requires a “pattern of protrusions”
that “form a plurality of cavities exposed on one side of the sealing tape to
receive joint compound for application … facing the wall surface.” The
Examiner rejects these claims in view of Stough under two theories: (1)
figure 2 of Stough depicts inter-filament cavities capable of receiving joint
compound because the mesh layer (web 32) appears significantly thicker
than the covering layer (base layer 30 with adhesive 28) (Ans. 3, 9-10, “any
type or degree of depression on the … surface can be considered to be a
cavity”); and (2) the omission of the adhesive layer would be obvious
because it would only result in the loss of the adhesive function (Ans. 4, 5
(citing In re Kuhle, 526 F.2d 553 (CCPA 1975); see also Ans. 10).
Regarding the Examiner’s first (anticipation) theory, Appellant argues
that drawings are not to scale. Reply Br. 7. Figure 2 of Stough does not
depict the finished tape product, let alone cavities on the tape. The
Examiner also points to figure 1, but figure 1 does not depict the tape with
any detail. As Appellant suggests, drawings do not define the precise
proportions or sizes of elements and may not be relied on to show as much if
the specification is silent as to the matter. See Hockerson-Halberstadt, Inc.
v. Avia Group Int’l, Inc., 222 F.3d 951, 956 (Fed. Cir. 2000) (patent owner’s
argument hinged on an inference drawn from certain figures about the
quantitative relationship between the respective widths of a groove and fins);
see also In re Wright, 569 F.2d 1124, 1127 (CCPA 1977) (“Absent any
written description in the specification of quantitative values, arguments
Appeal 2010-007456
Application 11/464,045
4
based on measurement of a drawing are of little value” (citation omitted)).
Just because figure 2 shows thick web fibers, it does not mean that Stough
describes tape wherein the fibers are thick enough such as to allow the base
layer 30 to form cavities by sticking to the top layer 32 between the web
fibers. Accordingly, the Examiner’s finding that the mesh layer of Stough
will form cavities in the paper covering (presumably, 30) cannot be
sustained.1
Regarding the Examiner’s second (obviousness) theory, Appellant
argues that it is improper “to simply rip off sheet 30 of Stough … because
that destroys the structure … of Stough.” Reply Br. 6. Appellant adds that
the top layer 34 of the tape in Stough is adhered to the base layer 30 with the
web 32 sandwiched in between. Reply Br. 7 (citing Stough, col. 3, ll. 12-
15). The Examiner states that removal of the adhesive layer 28 (and
presumably base layer 30, such as to directly expose the mesh layer 32)
“would only take away the self-adhesive property.” Ans. 10. However, as
Appellant argued, base layer 30 holds reinforcement web 32 in place, such
that removal of the base layer 30 also removes some portion of the web’s
support. Accordingly, removal of the adhesive layer is more than simply
removing a component so that the tape no longer has an adhesive function,
but is also a modification to the support structure of the web. The Examiner
does not provide any reason with rational underpinnings supporting this
proposed modification. Consequently, we cannot sustain the Examiner’s
conclusion that it would have been obvious to remove the adhesive layer.

1 Further, even if the mesh layer were sufficiently thick, such as to form
cavities in the paper/adhesive layer (30/28), it is not clear how the mesh
layer could be “against the wall surface” as required by claim 1, or whether
the presence of adhesive 28 would allow joint compound to be received by
those cavities, as required by claims 1 and 16.
Appeal 2010-007456
Application 11/464,045
5
In light of the above, we cannot sustain the Examiner’s rejection of
claims 1 and 16, as anticipated by or, in the alternative, as obvious over
Stough. Independent claim 21 requires “a mesh layer … to define a plurality
of cavities” and “a coating of joint compound on the surface and within said
plurality of cavities.” The Examiner’s rejection of independent claim 21 is
similar to that set forth with respect to claims 1 and 16. See Ans. 7-8. Thus,
for the same reasons, we cannot sustain the Examiner’s rejection of claim
21. The Examiner’s rejections of the claims that depend from independent
claims 1, 16, and 21 do not cure the underlying deficiencies identified above.

DECISION
For the above reasons, we reverse the Examiner’s decision regarding
claims 1-21.

REVERSED

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