Ex Parte Doi et al

Board of Patent Appeals and Interferences

Sep 27, 2010

11108778 (B.P.A.I. Sep. 27, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte TOMOKO DOI, MASAKAZU TANIMOTO, YUKIO
ARIMITSU, DAISUKE SHIMOKAWA, and MICHIROU KAWANISHI
____________

Appeal 2009-012714
Application 11/108,778
Technology Center 1700
____________

Before EDWARD C. KIMLIN, BRADLEY R. GARRIS, and
PETER F. KRATZ, Administrative Patent Judges.

KRATZ, Administrative Patent Judge.

DECISION ON APPEAL1
This is a decision on an appeal under 35 U.S.C. § 134 from the
Examiner’s final rejection of claims 1-13. We have jurisdiction pursuant to
35 U.S.C. § 6(b).

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.

Appeal 2009-012714
Application 11/108,778

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Appellants’ claimed invention is directed to an apparatus and method
of releasing adherends from a pressure-sensitive adhesive sheet having a
heat expandable layer. The method employs pre-heating of the adhesive
sheet and selected area heating of the sheet to temperatures sufficient to
expand heat-expandable layers in the selected areas to reduce adhesive force
and release adherends. The apparatus requires corresponding pre-heat and
heating parts.
Claim 1 is illustrative and reproduced below:
1. A method of thermal adherend release, wherein part of adherends
adherent to a heat-peelable pressure-sensitive adhesive sheet having a heat-
expandable layer containing a foaming agent are selectively released from the
pressure-sensitive adhesive sheet,
wherein the method comprises pre-heating the entire heat-peelable
pressure-sensitive adhesive sheet in an atmosphere having a temperature of
50°C or higher at which the heat-expandable layer does not expand, and then
heating only selected areas of the pressure-sensitive adhesive sheet
containing adherends to be released, to a temperature sufficient to selectively
heat and expand the heat-expandable layer in said selected areas thus reducing
the adhesive force in said areas and thereby selectively releasing the adherends.

The Examiner relies on the following prior art references as evidence
in rejecting the appealed claims:
Izutani US 2002/0195199 A1 Dec. 26, 2001
Stanbery US 6,500,733 B1 Dec. 31, 2001

Claims 1-13 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Izutani in view of Stanbery.
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Application 11/108,778

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Appellants present the same basic arguments with respect to all of the
appealed claims and generally argue the claims together as a group (App. Br.
10-14). Accordingly, we select claim 1 as the representative claim on which
we focus in deciding this appeal.
The principal issue in this appeal is:
Have Appellants indicated error in the Examiner’s determination that
preheating the heat-expandable adhesive sheet of Izutani would have been
an obvious addition, to one of ordinary skill in the art, to Izutani’s disclosed
method of heating selected areas of the adhesive sheet to a temperature that
results in selective expansion of and reduction of adhesive forces in the
adhesive sheet, and releasing adherends from the sheet, based on this appeal
record?
We answer this question in the negative and we affirm the stated
obviousness rejection.
“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) (citing 35 U.S.C. § 103).
Like Appellants’ claimed invention, Izutani is directed to method and
apparatus for thermally releasing adherends. Here, the Examiner has found,
without dispute, that Izutani discloses a method “for releasing adherends
from a heat peelable pressure-sensitive adhesive sheet having a heat
expandable layer containing a foaming agent” (Ans. 3; see generally App.
Br.). Izutani teaches the pressure-sensitive adhesive sheet can be heated by
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a variety of techniques so long as the heating is conducted to a temperature
where the layer expands to reduce adhesive strength and to separate
adherends (paras. 0008 - 0010, 003, 0038, 0042 – 0046, 0072). The
Examiner found that Izutani’s method includes “heating only selected areas
of the pressure-sensitive adhesive sheet to a temperature sufficient to
selectively heat and expand the heat expandable layer in the selected areas
thus reducing the adhesive forces in those areas, thereby selectively
releasing the adherends (paragraph 0010: Fig. 3)” (Ans. 4). Appellants do
not dispute these findings of the Examiner (see generally App. Br.).
The Examiner acknowledges that Izutani does not explicitly describe
Appellants’ claim 1 sheet preheating step (Ans. 4). That being said,
however, the Examiner takes the position that providing for a preheating
step, corresponding to the preheating step in Appellants’ representative
claim 1, in Izutani’s method (or correspondingly a preheating part in the
apparatus) would have been an obvious option to a person possessed of
ordinary skill in the relevant art having Izutani’s disclosure before him/her
(Ans. 4-7). The Examiner has basically found that preheating to a
temperature and in any atmosphere, as recited in the appealed claims,
including representative claim 1, would have been readily arrived at by one
of ordinary skill in the art exercising routine skill in determining workable
preheat temperatures and conditions (Ans. 5).
The Examiner adds Stanbery to the previously discussed prior art of
Izutani to evince that which is commonly known - heating an object to a
lower temperature (preheating) prior to heating to a desired final temperature
is a generally known processing option within the skill level of an artisan of
ordinary skill in the heating arts. In this regard, the Examiner has found that
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Stanbery discloses preheating a tool and substrate to an initial lower
temperature followed by rapid heating after they are contacted (Ans. 4).
While Stanbery is directed to a method for forming films, coatings,
layers, etc. and does not discuss preheating in association with separating
adherends from expandable pressure –sensitive adhesive sheets, as argued
(App. Br. 11), Stanbery is relevant to the general heating arts and represents
analogous prior art in this regard. Stanley evinces the well-known concept
of pre-heating objects to a lower temperature prior to a final heating. This is
a concept and practice that one of ordinary skill in the relevant arts related to
heating adhesive sheets to selectively release adherends would have been
readily familiar with. Certainly, Appellants have not established otherwise.
It is manifest that preheating would reasonably have been expected by
an ordinarily skilled artisan to shorten the subsequent heating time required
for heating an object to a final desired temperature from the preheat
temperature, including, with respect to Izutani, the time needed to selectively
heat portions of the pressure-sensitive adhesive sheet to a temperature at
which expansion of the expandable sheet occurs. In this regard, the
Examiner indicates a potential time savings would have been associated with
preheating the adhesive sheet of Izutani for separating multiple adherends
after preheating a sheet holding same (Ans. 4-5). Appellants have not
furnished a Reply Brief challenging the Examiner’s time saving
determination.
Against this backdrop, Appellants’ argument that the claimed subject
matter would not have been suggested by the applied prior art because
Izutani lacks a description of preheating and Stanbery is drawn to
assembling layers rather than teaching the claimed preheat temperature
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Application 11/108,778

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useful for Izutani’s method is without persuasive merit (App. Br. 10-13). In
this regard, the Examiner has not presented an anticipation rejection over
Izutani and a particular and explicit suggestion for preheating the adhesive
sheet of Izutani is not necessary to the Examiner’s obviousness assessment.
This is because the option of preheating in Izutani’s method and the
expected benefits thereof would have been recognized by and implicitly
suggested as an available alternative to an artisan of ordinary skill in the
relevant art familiar with heating methods and apparatus and the required
heating of the adhesive sheet of Izutani for reasons discussed above and in
the Answer.
After all, it is beyond dispute that preheating to a lower temperature is
a well–known option that can be employed when an object must be heated.
Appellants have not presented any substantiated argument indicating that
preheating, as claimed, would have been contraindicated in the adherend
separating method and apparatus of Izutani. “If the claim extends to what is
obvious, it is invalid under § 103.” KSR Int’l Co. v. Teleflex, Inc., 550 U.S.
398, 419 (2007). To be non-obvious, the claimed subject matter must not
encompass “the predictable use of prior art elements according to their
established functions.” Id. at 417.
Appellants have not established any unexpected results for the
claimed process or presented any other secondary evidence tending to
indicate the non-obviousness of the application of pre-heating, as claimed, to
the adhesive sheet of Izutani. Attorney argument cannot take the place of
evidence. See In re Pearson, 494 F.2d 1399, 1405 (CCPA 1974).
Upon consideration of the evidence and argument of record including
the differences between the subject matter of representative claim 1 and
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Application 11/108,778

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Izutani, we determine that the evidence and argument weighs in favor of the
obviousness of the claimed subject matter to one of ordinary skill in the art.

ORDER
The Examiner’s decision to reject claims1-13 under 35 U.S.C. §
103(a) as being unpatentable over Izutani in view of Stanbery 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

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