Ex Parte Bartusiak et al

Patent Trial and Appeal Board

Oct 17, 2017

14234074 (P.T.A.B. Oct. 17, 2017)

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.
14/234,074 01/21/2014 Joseph T. Bartusiak 67823US013 1832
32692 7590 10/19/2017
3M INNOVATIVE PROPERTIES COMPANY
PO BOX 33427
ST. PAUL, MN 55133-3427
EXAMINER
DESAI, ANISH P
ART UNIT PAPER NUMBER
1788
NOTIFICATION DATE DELIVERY MODE
10/19/2017 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
LegalUSDocketing@mmm.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JOSEPH T. BARTUSIAK
and RAMESH C. KUMAR1
Appeal 2016-007972
Application 14/234,074
Technology Center 1700
Before BRADLEY R. GARRIS, KAREN M. HASTINGS, and
CHRISTOPHER L. OGDEN, Administrative Patent Judges.
GARRIS, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134, Appellants appeal from the Examiner’s
rejections under 35 U.S.C. § 103(a) of independent claim 1 as unpatentable
over Akima (JP 3514790; issued Mar. 31, 2004) in view of Shores
(US 5,356,706; issued Oct. 18, 1994) and Ukei (US 2005/0058829 Al;
published Mar. 17, 2005) as evidenced by Tate (HDPE BLENDING
TECHNOLOGY FOR ENHANCED LDPE FILM PROPERTIES, ANTEC
2000, Conference Proceedings Volume Ill-Special Areas) and of remaining
claims 2-4, 9, 11—14, and 22—25 as unpatentable over these references alone
1 3M Company and its affiliate 3M Innovative Properties Company of St.
Paul, Minnesota are identified as the real parties in interest. App. Br. 3.
Appeal 2016-007972
Application 14/234,074
or in combination with additional prior art. We have jurisdiction under 35
U.S.C. § 6.
We AFFIRM.
Appellants claim a hand-tearable masking tape comprising a
polyolefmic backing of low density polyethylene blended with high density
polyethylene at a weight ratio of from 20:80 to 40:60, wherein the tape is
transversely curvable (claim 1).
A copy of representative claim 1, taken from the Claims Appendix of
the Appeal Brief, appears below.
1. A hand-tearable masking tape, comprising:
a monolithic polyolefmic backing having a thickness and
comprising a longitudinal length and a longitudinal axis and a
transverse width and a transverse axis, and comprising a first
major side and an oppositely-facing second major side,
wherein a low adhesion backsize comprising a silicone-
containing material that includes a silicone-polyurea material or
a silicone-polyurea-polyurethane material is disposed on the
first major side of the backing and wherein a natural-rubber-
based pressure-sensitive adhesive is disposed on the second
major side of the backing;
wherein the second major side of the backing comprises a
microstructured hand-tear pattern comprising a multiplicity of
lines of weakness at least some of which comprise a long axis
that is oriented at least generally transversely to the backing;
wherein the lines of weakness comprise open-ended recesses
that do not completely penetrate through the thickness of the
backing from the second major side of the backing to the first
major side of the backing;
wherein the polyolefmic backing is a blend of low
density polyethylene and high density polyethylene at a weight
ratio of from 20:80 to 40:60 of low density polyethylene to high
density polyethylene;
and wherein the tape is transversely curvable.
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Appeal 2016-007972
Application 14/234,074
We will sustain the Examiner’s § 103 rejections for the reasons given
in the Final Action, the Answer, and below.
Appellants do not dispute that the Examiner has established a prima
facie case of obviousness for combining Akima, Shores, and Ukei as
proposed in the rejection of claim 1 (App. Br. 5—9). Furthermore,
Appellants present arguments specifically directed to the limitations of claim
1 only (id.). As a consequence, the other claims on appeal will stand or fall
with claim 1.
In contesting the claim 1 rejection, Appellants argue the Examiner has
failed to provide adequate reasoning for determining that the hypothetical
tape resulting from the combination of Akima, Shores, and Ukei would
intrinsically or inherently possess the “transversely curvable” feature
required by the claimed tape (App. Br. 6—7).
However, we find merit in the Examiner’s reasoning that the
hypothetical tape would necessarily possess the “transversely curvable”
capability of the claimed tape because these tapes are otherwise identical
(Final Action 8—9, Ans. 17—18). Appellants fail to explain, with any
reasonable specificity, why this capability would be possessed by the claim
1 tape but not the identical hypothetical tape. Based on the record before us,
the “transversely curvable” feature would be the natural result of combining
Akima, Shores, and Ukei in the manner proposed by the Examiner.
Appellants also argue that the Table 5 disclosure in their Specification
evinces unexpected results in the form of unexpectedly “exceptional”
handleability for their claimed tape having a low to high density
polyethylene weight ratio of from 20:80 to 40:60 (App. Br. 8).
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Appeal 2016-007972
Application 14/234,074
“[T]he burden of showing unexpected results rests on [the party] who
asserts them.” In re Klosak, 455 F.2d 1077, 1080 (CCPA 1972). See also In
re Piasecki, 745 F.2d 1468, 1472 (Fed. Cir. 1984) (“After aprima facie case
of obviousness has been established, the burden of going forward shifts to
the applicant.”). Moreover, Appellants’ showing of unexpected results must
be reasonably commensurate with the scope of claim 1. See In re Kao, 639
F.3d 1057, 1068 (Fed. Cir. 2011) (“Evidence of secondary considerations
must be reasonably commensurate with the scope of the claims.”).
We agree with the Examiner that the Table 5 showing fails to
establish unexpected results because it merely characterizes tapes having the
claimed weight ratio as “exceptional” rather than “fair” or “marginal” for
tapes outside this ratio without explaining the difference between these
characterizations (Ans. 19). For all we know based on this record, the
difference between “exceptional” and “fair” or “marginal” characterizations
has no statistical and practical significance as correctly indicated by the
Examiner (id.). Contrary to Appellants’ position (App. Br. 8, Reply Br. 3),
this deficiency is not remedied by the Specification statements that the
handleability of a tape having the claimed ratio was “unexpectedly”
enhanced or revealed (Spec. 9:25—27, 31:17—19). This is because, without
the above noted explication, such statements are conclusory and therefore
inadequate to establish unexpected results. See In re De Blauwe, 736 F.2d
699, 705 (Fed. Cir. 1984) (“ft is well settled that unexpected results must be
established by factual evidence. Mere argument or conclusory statements in
the specification does not suffice.”).
We also agree with the Examiner that Appellants’ Table 5 showing is
not reasonably commensurate in scope with claim 1 (Ans. 20—21). In this
regard, Appellants to not dispute the Examiner’s determination that the tapes
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Appeal 2016-007972
Application 14/234,074
assessed in this Table include bridging structures whereas the tapes of claim
1 are not so limited {id.).2 We are unpersuaded by Appellants’ contention
that, because the bridging structures are disclosed as optional and are
included in all of the Table 5 tapes, “the ordinary artisan would not expect
such rigid bridging structures to have caused the unexpected results” (App.
Br. 9, see also Reply Br. 3 4). Even assuming the differing handleability
results of Table 5 are caused by the tapes’ weight ratios rather than bridging
structures, it is possible that these differing results are exhibited only in the
presence of bridging structures and that the results for all the tapes would be
the same in the absence of such structures.
For the reasons stated above and given by the Examiner, the
arguments and evidence of record weigh most heavily in favor of an ultimate
conclusion that the subject matter of representative claim 1 would have been
obvious. We sustain, therefore, the § 103 rejections of the appealed claims.
The decision of the Examiner is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED
2 We also observe that the Table 5 tapes are specific to particular parameters
including compositions, densities, and thicknesses (Spec. 25—31) that are not
required by claim 1.
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