Ex Parte Chen

Patent Trial and Appeal Board

Oct 20, 2017

13209404 (P.T.A.B. Oct. 20, 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.
13/209,404 08/14/2011 Albert CHEN UM-03 1125
26250 7590 10/24/2017
FRANCIS EDWARD MARINO
394 MEREDITH NECK ROAD
MEREDITH, NH 03253
EXAMINER
CHANG, VICTOR S
ART UNIT PAPER NUMBER
1788
NOTIFICATION DATE DELIVERY MODE
10/24/2017 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):
frank@marinopatents.com
patenter @ metroc ast. net
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ALBERT CHEN
Appeal 2016-003165
Application 13/209,404
Technology Center 1700
Before MICHAEL L. HOELTER, LYNNE H. BROWNE, and
LISA M. GUIJT, Administrative Patent Judges.
BROWNE, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Albert Chen (Appellant) appeals under 35 U.S.C. § 134 from the
rejection of claims 2—20. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
Appeal 2016-003165
Application 13/209,404
CLAIMED SUBJECT MATTER
The claims are directed to an adhesive pad. Spec. 12. Claims 12 and
17 are independent. Claim 12, reproduced below, is illustrative of the
claimed subject matter:
12. An adhesive pad comprising two distinct layers
permanently laminated together, wherein the layers comprise:
an adhesive back layer made of a first oil-impregnated
thermoplastic rubber;
an adhesive front layer made of a second oil-impregnated
thermoplastic rubber that is not identically composed to the first
oil-impregnated thermoplastic rubber;
wherein the adhesiveness of the front layer is less than the
adhesiveness of the back layer;
wherein each of the first and second oil-impregnated
thermoplastic rubbers comprises a naphthenic oil-impregnated
thermoplastic rubber from the group including styrene
thermoplastic elastomer, styrene-butadiene-styrene block
copolymer, and styrene-ethylene-butadiene-styrene block
copolymer, and wherein the adhesiveness of the front layer is less
than the adhesiveness of the back layer through a difference in
surface texture on the first and second thermoplastic rubbers.
The prior art relied upon by the Examiner in rejecting the claims on
REFERENCES
appeal is:
Sieverding US 4,833,193 May 23, 1989
US 5,609,954 Mar. 11, 1997
US 5,994,450 Nov. 30, 1999
US 6,129,550 Oct. 10,2000
US 2005/0019560 A1 Jan. 27, 2005
Aizawa
Pearce
Culberson
Hesse
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Application 13/209,404
REJECTIONS1’2
I. Claims 12 and 2—5 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Sieverding, Hesse, and Aizawa.
II. Claims 6—11 and 13—20 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over Sieverding, Hesse, Aizawa, and
Pearce.
III. Claims 6—11 and 13—20 stand rejected under 35 U.S.C. § 103(a)
as unpatentable over Sieverding, Hesse, Aizawa, Pearce, and
Culberson.
DISCUSSION
Rejection I
Appellant argues claims 2—5 and 12 together. See Appeal Br. 18—21.
We select claim 12 is the representative claim, and claims 2—5 stand or fall
with claim 12. See 37 C.F.R. § 41.37(c)(l)(iv).
The Examiner finds that Sieverding discloses all of the limitations of
claim 12, including a pressure sensitive adhesive (PSA) pad, except for the
PSA pad being “double sided and compris[ing] an intermediate backing
layer (intermediary layer) and . . . ha[ving] adhesive layers of different
adhesiveness,” and an “adhesive layer with reduced adhesiveness [that] is
1 We do not consider arguments pertaining to election/restriction
requirements or claim objections as these issues pertain to petitionable, not
appealable, matters and are not within the jurisdiction of the Board. See
MPEP §§ 1002 and 1201.
2 The rejection of claims 2—20 under 35 U.S.C. § 112, first paragraph, is
withdrawn. Ans. 9.
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Application 13/209,404
both chemically and physically modified.” Final Act. 6. The Examiner
further finds that Hesse discloses “a double-sided pressure-sensitive
adhesive tape.” Id. (emphasis omitted). The Examiner finds, inter alia, that
Hesse’s “double-sided pressure-sensitive adhesive tape has sides which
differ in adhesive strengths for the adhesive bonding and also residue-free
and damage-free redetachment of articles [sic].” Id. at 6—7 (citing Hesse 1
1). The Examiner reasons that it would have been obvious to
modify Sieverding’s adhesive pad with a backing layer
(intermediary layer) and two adhesive layers with different
adhesive strengths, motivated by the desire to obtain the
advantages taught by Hesse. That is, to obtain a back adhesive
layer with a strong tack for attachment to an [adhered] (support
surface), and a front layer with a weaker tack for repeatedly
applying and peeling an item without leaving residue on the item.
Id. at 7. In addition, the Examiner takes Official Notice that ‘“providing a
textured adhesive layer with a reduced effective adhesive surface contact
area and therefore reduced adhesiveness is common and well known.’” Id.
Then the Examiner further reasons that it would have been obvious to
provide a common adhesiveness reduction pattern (texture) over
the adhesive layer which has been chemically modified with a
composition of reduced adhesiveness, motivated by the desire to
obtain an improved control over the required reduced
adhesiveness for the end uses (repeated attachment and
detachment of articles).
Id. at 7—8. The Examiner also cites Aizawa “as an evidentiary support for
the aforementioned common knowledge.”3 Id. The Examiner explains that
“Aizawa relates to a strippable (detachable) PSA, and teaches that the
strippable PSA can form a desired pattern (texture) according to the use
3 We understand the “aforementioned common knowledge” to be the subject
matter Officially Noticed on the previous page of the Final Action.
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Application 13/209,404
purpose with an adhesiveness-reduction or elimination treated portion and an
untreated portion.” Id. The Examiner further explains that “[t]he treated
portion can be formed by, for example, using a masking material or pressing
with a heated roll on which a pattern (texture) is formed.” Id. (citing Aizawa
4:28-34).
Appellant argues that “Sieverding specifically disparages the use of
the very materials, thin film pressure sensitive adhesives (PSAs), of
Aizawa.” Appeal Br. 18. Appellant further argues that in view of this
alleged disparagement, the proposed combination is improper because “such
a combination would render Seiverding’s pad unsatisfactory for its intended
purpose, based on Seiverding’s own admissions.” Id. at 20.
Appellant’s argument is not responsive to the rejection as articulated
by the Examiner. See Final Act. 5—7. The rejection does not propose
substituting Aizawa’s thin film pressure sensitive adhesive for Sieverding’s
adhesive. Rather, the rejection proposes applying Sieverding’s adhesive in
the same manner that Aizawa’s adhesive is applied. See id. at 7.
Furthermore, as the rejection does not propose substituting Aizawa’s film for
Sieverding’s film, Appellant’s argument that such a modification would
render Sieverding’s pad unsatisfactory for its intended use is inapposite.
Moreover, the portion of Sieverding quoted by Appellant (i.e.
Sieverding 1:32—64) discusses the disadvantages of all prior adhesives, both
thin and thick films. This discussion in the background of Sieverding is no
more disparaging of thin films than it is of thick films such as those used in
Sieverding itself. Thus, even if the rejection suggested substitution of
Aizawa’s adhesive for Sieverding’s adhesive, these remarks would not lead
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Application 13/209,404
one skilled in the art away from making such a modification. Accordingly,
Appellant does not apprise us of error.
In addition, Appellant argues that Aizawa’s “‘pattern’ in the form of a
masked or rolled-applied area of adhesive and non-adhesive zones” is not a
“surface texturing such as described and claimed in the present application
to reduce adhesiveness.” Appeal Br. 20-21.
The Specification does not define the claim term “texture.” See
generally Spec. In determining the ordinary and customary meaning of the
claim term as viewed by a person of ordinary skill in the art, it is appropriate
to consult a general dictionary definition of the word for guidance.”
Comaper Corp. v. Antec, Inc., 596 F.3d 1343, 1348 (Fed. Cir. 20\0)(citing
Phillips c. AWHCorp., 415 F.3d 1303, 1322—23 (Fed. Cir. 2005)(en banc)).
An ordinary and customary meaning of the term “texture” is “the visual or
tactile surface characteristics and appearance of something.” Merriam-
webster.com, http://www.merriam-webster.com/dictionary/texture. This
definition is consistent with the use of the term “texture” in the
Specification. See, e.g. Spec. 1 8. Aizawa’s pattern forms visual and tactile
surface characteristics, and thus constitutes a “texture” within the ordinary
and customary meaning of this term. Thus, Appellant’s argument is
unconvincing.
For these reasons, we find that Rejection I sets forth a prima facie case
of obviousness for claims 2—5 and 12 which Appellant does not persuasively
rebut.
Rejection II
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Claims 6—11 and 13—16
Appellant does not present separate arguments contesting the rejection
of claims 6—11 and 13—16 as unpatentable over Sieverding, Hesse, Aizawa,
and Pearce. See Appeal Br. 22. Rather, Appellant argues that “[t]his
combination is improper for at least the reasons stated above, which will not
be repeated here for brevity.” Id. As we find no deficiencies in the
combination as discussed supra, Appellant’s argument is unconvincing.
For this reason, we find that the Rejection II sets forth a prima facie
case of obviousness for claims 6—11 and 13—16.
Claims 17—20
Appellant alleges that “the Examiner fails to explain his reason for
including claims 17—20 in this cause of rejection.” Id. Appellant is correct.
Accordingly, we do not sustain the Examiner’s decision rejecting claims 17—
20 as unpatentable over Soeverding, Hesse, Aizawa, and Pearce.
For this reason we find Rejection II fails to set forth a prima facie case
of obviousness for claims 17—20.
Rejection III
Claims 6—11 and 13—16
Appellant does not present separate arguments contesting the rejection
of claims 6—11 and 13—16 as unpatentable over Sieverding, Hesse, Aizawa,
Pearce, and Culberson. See Appeal Br. 22. Rather, Appellant argues that
“[tjhis combination is improper for at least the reasons stated above, which
will not be repeated here for brevity.” Id. As we find no deficiencies in the
combination as discussed supra, Appellant’s argument is unconvincing.
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For this reason, we find that Rejection III sets forth a prima facie case
of obviousness for claims 6—11 and 13—16 which Appellant does not
persuasively rebut.
Claims 17—20
Appellant argues claims 17—20 together. Appeal Br. 22—24. We
select claim 17 as representative for this group of claims, and claims 18—20
stand or fall with claim 17.
Claim 17 requires “a location indicator on or viewable through the
front layer and indicating that an object should be adhered to the front layer
approximately centrally thereon.” Appeal Br. 32 (Claim App.). The
Examiner takes Official Notice that ‘“providing an area with a printed
outline intended for a specific function is a common practice.’” Final Act.
10. The Examiner provides Culberson “as an evidentiary support for the
aforementioned common practice: Culberson relates to a table mat having
emblems thereon indicative of locations for proper placement of articles.”
Id. (citing Culberson Fig.l; Abst.). Based on this evidence, the Examiner
reasons that it would have been obvious to “print a workable outline (closed
locating indicator) on the surf ace of the adhesive layer, motivated by the
desire to identity a workable area for attachment and detachment.” Id. In
addition, the Examiner notes that “[t]he selection of a known material based
on its suitability for its intended use supported a prima facie obviousness
determination.” Id. (citing MPEP § 2144.07).
Appellant argues that Sieverding’s colored adhesive is “not ‘a location
indicator on or viewable through the front layer and indicating that an object
should be adhered to the front layer approximately centrally thereon’.”
Appeal Br. 22. Appellant further argues that Culberson’s table mat
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Application 13/209,404
placement indicators “are not ‘indicating that an object should be adhered to
the front layer approximately centrally thereon’.” Id. at 23. Based on these
arguments Appellant questions, “[w]hat motivation could Seiverding have to
import the non-adhesive location indicators of Culberson’s table mats?” Id.
Appellant’s arguments attack the references separately, rather than
address their combined teachings. Nonobviousness cannot be established by
attacking the references individually when the rejection is predicated upon a
combination of prior art disclosures. See In re Merck & Co., 800 F.2d 1091,
1097, (Fed. Cir. 1986). Appellant does not explain why the combined
teachings of Sieverding, Hesse, and Culberson would not have suggested the
limitations at issue, and thus, Appellant does not address the Examiner’s
articulated reasoning at all. Accordingly, Appellant does not apprise us of
error.
Appellant further argues that Culberson is non-analogous art. Appeal
Br. 23. In support of this argument, Appellant notes that “Culberson teaches
a non adhesive table mat, upon which articles will be placed, which have no
inclination to move from the table mat by the forces of gravity,” whereas the
Specification describes a location indicator designed “to ensure that articles
adhered to the pad properly within the location indicator do not contribute to
inadvertent ‘peeling’ of the pad from the surface to which it is adhered.” Id.
at 23—24 (quoting Spec. 123). Appellant asserts that “[sjuch a purpose is
irrelevant to such things as outlines on table mats, which are not adhered to
sub-surfaces and which do not have articles adhered to them.” Id. at 24.
“To quality as prior art for an obviousness analysis, a reference must
qualify as ‘analogous art,’ i.e., it must satisfy one of the following
conditions: (1) the reference must be from the same field of endeavor; or (2)
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Application 13/209,404
the reference must be reasonably pertinent to the particular problem with
which the inventor is involved.” K-TEC, Inc. v. Vita-Mix Corp., 696 F.3d
1364, 1375 (Fed. Cir. 2012) (citation omitted). In this case, one problem
with which the inventor is involved is the proper alignment of an object with
respect to a mat (i.e. pad) on which the item is to be placed. See Spec. 11
22—23. As Appellant points out, Culberson describes locations on a table
mat that solves this problem. See Appeal Br. 23—24; see also Culberson
1:63—2:7. Thus, Culberson pertains to a problem with which the inventor is
involved. Accordingly, Culberson qualifies as analogous art.
Appellant further alleges that the rejection is “hindsight driven.”
Appeal Br. 24. However, Appellant does not identify any knowledge relied
upon by the Examiner that was gleaned only from Appellant’s disclosure
and that was not otherwise within the level of ordinary skill at the time of the
invention, thereby obviating Appellant’s assertion of hindsight. See In re
McLaughlin, 443 F.2d 1392 (CCPA 1971).
For these reasons, we find that Rejection III sets forth a prima facie
case of obviousness for claims 17—20 which Appellant does not persuasively
rebut.
Secondary Considerations
As noted above, we have found the subject matter of the claims on
appeal to be prima facie obvious. Whenever obviousness is found with
respect to the subject matter on appeal, and Appellant furnishes evidence of
secondary considerations, it is our duty to reconsider the issue of
obviousness anew, carefully weighing the evidence for obviousness with
respect to the evidence against obviousness. See, e.g.. In re Eli Lily & Co.,
902 F.2d 943, 945 (Fed. Cir. 1990). We are also mindful that the objective
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evidence of nonobviousness in any given ease may be entitled to more or
less weight depending on its nature and its relationship with the merits of the
invention. See Stratoflex Inc. v. Aeroquip, 713 F.2d 1530, 1538 (Fed. Cir.
1983). To be given substantial weight in the determination of obviousness
or nonobviousness, evidence of secondary considerations must be relevant to
the subject matter as claimed, and therefore we must determine whether
there is a nexus between the merits of the claimed invention and the
evidence of secondary considerations. Ashland Oil, Inc. v. Delta Resins &
Refractories, Inc., 776 F.2d 281, 305 n.42 (Fed. Cir. 1985), cert, denied, 475
U.S. 1017 (1986).
Objective evidence which must be factually supported by an
appropriate affidavit or declaration to be of probati ve value includes
evidence of unexpected results, commercial success, solution of a long-felt
need, inoperability of the prior art, invention before the date of the reference,
and allegations that the author(s) of the prior art derived the disclosed
subject matter from the applicant. See, e.g., In re De Blauwe, 736 F.2d 699,
705 (Fed. Cir. 1984) (“It is well settled that unexpected results must be
established by factual evidence.” “[Ajppellants have not presented any
experimental data showing that prior heat-shrinkable articles split. Due to
the absence of tests comparing appellant’s heat shrinkable articles with those
of the closest prior art, we conclude that appellant's assertions of unexpected
results constitute mere argument.”) (emphasis added). See also In re
Lindner, 457 F.2d 506, 508 (CCPA 1972); Ex parte George, 21 USPQ2d
1058 (Bd. Pat. App. & Inter. 1991).
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Application 13/209,404
Appellant presents evidence of commercial success in the Declaration
of the inventor Allen Chen dated May 16, 2014 (hereinafter the Declaration
or “Dec.”). In the Declaration Mr. Chen states that
According to reports from end-users and retail buyers, this
substantial commercial success is attributable in large part to the
specific construction of Stick UM!™. Specifically, that
construction has front and rear adhesive layers of differing
formulations, the front layer being less adhesive than the rear
layer so that items stuck to the front layer can be removed
without pulling the rear layer away from its supporting surface.
Dec. at 2. Accordingly, the Declaration alleges commercial success based
on limitations set forth in independent claim 12.4 Thus, Appellant has
established a nexus between the invention claimed in claim 12 and the
alleged commercial success.
As evidence of commercial success, Mr. Chen states that “Urn Brands
has manufactured and marketed Stick UM!™ since 2011, to this date having
sold approximately 500,000 units, resulting in approximately $800,000 of
gross sales.” Id. 1. Mr. Chen then describes the development process
including what he refers to as “inventive improvements” stating, “As a result
of these invention improvements, Stick UM!™ is the most functional such
adhesive pad in the market and has enjoyed remarkable commercial
success[] while selling beside numerous other adhesive pads which are
priced much lower.” Id.
Mr. Chen does not provide any other evidence of commercial success
beyond the number of units sold and gross sales numbers. Appellant’s sales
4 We note that independent claim 17 does not require front and rear adhesive
layers of differing formulations wherein the front layer being less adhesive
than the rear layer. See Appeal Br. 32 (Claims App.).
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evidence fails to show commercial success because there is no indication
whether the number of units sold represents a substantial quantity in the
relevant market or not. Ex parte Jella, 90 USPQ2d 1009, 1017 (BPAI 2008)
(precedential); see also In re Huang, 100 F.3d 135, 140 (Fed. Cir. 1996)
(“Although Huang’s affidavit certainly indicates that many units have been
sold, it provides no indication of whether this represents a substantial
quantity in this market.”); In re Baxter Travenol Labs., 952 F.2d 388, 392
(Fed. Cir. 1991) (“[Information solely on numbers of units sold is
insufficient to establish commercial success.”); Cable Elec. Prods., Inc. v.
Genmark, Inc., 770 F.2d 1015, 1026 (Fed. Cir. 1985) (finding that sales of 5
million units represent a minimal showing of commercial success because
“[wjithout further economic evidence ... it would be improper to infer that
the reported sales represent a substantial share of any definable market”),
overruled on other grounds in Midwest Indus., Inc. v. Karavan Trailers, Inc.,
175 F.3d 1356, 1358 (Fed. Cir. 1999).
Weighing Appellant’s evidence of commercial success, to the extent
that there is any evidence in support of commercial success, against the
prima facie case of obviousness set forth in Rejections I—III discussed supra,
we conclude that the prima facie case outweighs the evidence in support of
secondary considerations proffered by Appellant. For these reasons, we
sustain the Examiner decision rejecting claims 2—5 and 12 (Rejection I),
claims 6—11 and 13—16 (Rejection II), and claims 6—11 and 13—20
(Rejection III).
DECISION
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Application 13/209,404
The Examiner’s rejection of claims as 2—5 and 12 as unpatentable
over Sieverding, Hesse, & Aizawa is AFFIRMED.
The Examiner’s rejection of claims 6—11 and 13—16 as unpatentable
over Sieverding, Hesse, Aizawa, and Pearce is AFFIRMED.
The Examiner’s rejection of claims 17—20 as unpatentable over
Sieverding, Hesse, Aizawa, and Pearce is REVERSED.
The Examiner’s rejection of claims 6—11 and 13—20 as unpatentable
over Sieverding, Hesse, Aizawa, Pearce, and Culberson 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). See 37 C.F.R.
§ 1.136(a)(l)(iv).
AFFIRMED
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