Ex Parte Bries et al

Board of Patent Appeals and Interferences

Apr 29, 2010

09809805 (B.P.A.I. Apr. 29, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte JAMES L. BRIES and
MICHAEL D. HAMERSKI

Appeal 2009-015234
Application 09/809,805
Technology Center 1700
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Decided: April 29, 2010
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Before CHUNG K. PAK, CHARLES F. WARREN, and
JEFFREY T. SMITH, Administrative Patent Judges.

SMITH, Administrative Patent Judge.

DECISION ON APPEAL

Appellants appeal under 35 U.S.C. § 134 from the Examiner's final
rejection of claims 22, 23, 26, 27, and 30-32, all of the pending claims. We
have jurisdiction under 35 U.S.C. § 6(b). 1

1 In rendering this decision we have considered Appellants’ Brief dated
March 19, 2009.

Appeal 2009-015234
Application 09/809,805

2

STATEMENT OF THE CASE
Claim 22 is representative of the subject matter on appeal and is set
forth below: 2
22. A pressure-sensitive adhesive tape comprising a foam backing
and a first layer of pressure-sensitive adhesive composition coated
on at least one surface of said backing, said foam backing having a
density of about 2 to about 30 pounds per cubic foot, a thickness of
about 15 to about 125 mils, a Young’s modulus of less than 2,400
psi, and a lengthwise elongation at break of from about 50% to
about 1200%, said tape configured to be firmly bonded to a
substrate and thereafter being removable therefrom after being
stretched at an angle no greater than about 35° from the surface of
said substrate without said backing rupturing prior to the removal
of said tape from said substrate without leaving substantial
pressure-sensitive adhesive residue on said substrate.

THE REJECTIONS
Appellants request review of the following rejection
Claims 22, 23, 26, 27, and 30-32 stand rejected under 35 U.S.C. §
103(a) as unpatentable over Kreckel, CA 2,096,935 published Jul. 9, 1992.
In rejecting the subject matter on appeal the Examiner found that
Kreckel describes a stretch removable adhesive tape. According to the
Examiner, Kreckel “teaches the range of physical properties of a highly
expendable and substantially inelastic polymer film backing, and exemplifies
LDPE as having the most desirable plastic nature (inelastic extendibility) for
providing the required physical properties, CA ‘935 [Kreckel] is completely

2 The claim is reproduced from the appendix to the Appeal Brief.
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silent about the workable physical properties of the foam backing.” (Ans. 3).
The Examiner recognized that Kreckel is silent about, inter alia, the density
and the Young's modulus of a polymer foam backing. However, the
Examiner determined that it would be a matter of obvious routine
optimizations to arrive at the claimed density and Young's modulus. (Ans.
4).
Appellants contend that the Examiner has not adequately addressed
the limitations of independent claims 22, 23, and 30, particularly the claimed
density, Young's modulus, and a thickness for the backing foam material.
ISSUE
The dispositive issue is:
Did the Examiner provide sufficient factual evidence and evaluation
thereof to determine whether a person having ordinary skill in the art would
have had an apparent reason to arrive at the claimed density and Young's
modulus for the foam backing material as required by the independent
claims 22, 23, and 30?
We answer this question in the negative.
PRINCIPLES OF LAW
“Section 103 forbids issuance of a patent when ‘the differences
between the subject matter sought to be patented and the prior art are such
that the subject matter as a whole would have been obvious at the time the
invention was made to a person having ordinary skill in the art to which said
subject matter pertains.’” KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 406
(2007).
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Application 09/809,805

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While KSR explains that an obviousness “analysis need not seek out
precise [prior art] teachings,” it nonetheless did not dispense with the need
for evaluating the evidence to determine whether a person having ordinary
skill in the art would have had “an apparent reason to combine the known
elements in the fashion claimed.” Id. at 418.
Where the prior art suggests the outer limits of the range of suitable
values, and that the optimum resides within that range, and where there are
indications that the optimum should be sought within that range, the
determination of optimum values outside that range may not be obvious. In
re Sebek, 465 F.2d 904, 907 (CCPA 1972).
ANALYSIS
Appellants have repeatedly challenged the Examiner to provide the
rationale underpinning the obviousness conclusion. (Br. 7-13). Appellants
have argued that Kreckel teaches that a Young's modulus must be at least
2500 psi and therefore teach away from the claimed invention that requires a
Young's modulus of less than 2400 psi. (Br. 9-10; Kreckel, p. 3, ll. 19-31).
Nowhere does the Examiner provide any explanation or facts as to why one
of ordinary skill in the art would have been led to the claimed Young’s
modulus contrary to the teaching of Kreckel. See e.g., Sebek, 465 F.2d at
907.
Appellants have also argued that Kreckel is silent with respect to the
density parameters of the disclosed films. (Br. 10-11). The Examiner has
not provided sufficient facts to support the allegations of inherency with
respect to the claimed density parameters.
On this record, the Examiner has failed to provide a cogent reason for
making the specific modifications to Kreckel in order to arrive at the
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claimed invention. The Examiner's citation to generalized concepts without
more is insufficient to support an obviousness determination. For the
reasons set forth above and those set forth by Appellants in their Appeal
Brief, we reverse the stated rejection.
DECISION
The Examiner’s rejection of claims 22, 23, 26, 27, and 30-32 under 35
U.S.C. §103(a) is reversed.
REVERSED

PL Initial:
sld

3M Innovative Properties Company
P.O. Box 33427
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