Ex Parte Hamilton

Patent Trial and Appeal Board

Apr 25, 2017

12831339 (P.T.A.B. Apr. 25, 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.
12/831,339 07/07/2010 Sheila Hamilton 713-2720 2250
22429 7590 04/27/2017
HAUPTMAN HAM, LLP
2318 Mill Road
Suite 1400
ALEXANDRIA, VA 22314
EXAMINER
LEE, DOUGLAS
ART UNIT PAPER NUMBER
1714
NOTIFICATION DATE DELIVERY MODE
04/27/2017 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):
docketing @ ipfirm. com
pair_lhhb @ firsttofile. com
EAnastasio @ IPFirm.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SHEILA HAMILTON
Appeal 2015-004173
Application 12/831,3391
Technology Center 1700
Heard: April 18, 2017
Before KAREN M. HASTINGS, JAMES C. HOUSEL, and
JULIA R. HEANEY, Administrative Patent Judges.
HOUSEL, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant appeals from the
Examiner’s decision finally rejecting claims 1—20.2 We have jurisdiction
over the appeal under 35 U.S.C. § 6(b).
We AFFIRM.3
1 An oral hearing was conducted April 18, 2017; a copy of the transcript of
the oral hearing will be made of record upon its availability.
2 According to Appellants, the real party in interest is ITW CS (UK)
Limited. Appeal Br. 2.
3 Our decision refers to the Specification (Spec.) filed July 7, 2010, the
Examiner’s Final Office Action dated March 14, 2014, Appellants’ Appeal
Brief (Appeal Br.) filed August 13, 2014, the Examiner’s Answer (Ans.)
Appeal 2015-004173
Application 12/831,339
STATEMENT OF THE CASE
The invention relates to an adhesive sheeted roll for use in contact
cleaning. Spec. 1:7—11. Appellant discloses that adhesive rolls have a
release coating on a non-adhesive side which prevents the adhesive from
permanently sticking, but provides some adhesion, to the non-adhesive side
when would up in a roll. Spec. 1:11—14. Appellant further discloses such
release coatings have included silicone which is environmentally
disadvantageous and can transfer to the surface of parts being cleaned.
Spec. 1:17—26. Therefore, Appellants disclose the invention provides an
improved adhesive sheeted roll containing no silicones for use in contact
cleaning. Spec. 2:7—8.
Claim 1, reproduced below from the Claims Appendix to the Appeal
Brief (paragraphing and indenting added), is illustrative of the subject matter
on appeal. The limitations at issue are italicized.
1. A sheeted roll for use in contact cleaning comprising:
a roll core;
at least one sheet of adhesive material removably
attached thereon;
wherein the at least one adhesive sheet comprises a film
having two sides, a first side of the film comprising adhesive on
the film and a second side of the film comprising an embossed
surface with the proviso that the adhesive on the first side of the
film and the film contain no silicones, and
further wherein the at least one sheet of adhesive material
comprises anti-static additives in the film.
Independent claim 20 similarly recites a sheeted roll having adhesive
sheets including a film with anti-static additives but no silicones in either the
dated December 15, 2014, and Appellants’ Reply Brief (Reply Br.) filed
February 17, 2015.
2
Appeal 2015-004173
Application 12/831,339
film or the adhesive.4 Independent claim 16 recites an apparatus including a
sheeted roll similar to that of claim 1. Independent claim 15 recites a
method of removing debris and/or contaminants from a contaminated
surface using a sheeted roll similar to that of claim 1.
Rejections
The Examiner maintains, and Appellants request our review of, the
following grounds of rejection under 35 U.S.C. § 103(a) (pre-AIA):
1. Claims 1,3, 6—10, and 15—18 as unpatentable over Saito5 in
view of Takeuchi6 and Nonaka,7 as evidenced by Kim;8
2. Claims 2, 4, 5, and 20 as unpatentable over Saito in view of
Takeuchi and Nonaka, as evidenced by Kim, and further in view of
Hamilton;9
4 We note claim 20 recites “the proviso that the adhesive on the first side of
the film and the film no silicones.” This is grammatically incorrect as the
verb is missing, e.g., “contain.” Appellant and the Examiner should address
this issue upon further prosecution in this application.
5 Saito et al., JP 2001-112703 A, published April 24, 2001 (hereinafter
“Saito”). The Examiner relies, without objection, on the English-language
machine translation of this document available through the Japan Patent
Office website.
6 Takeuchi et al., US 2007/0224378 Al, published September 27, 2007
(hereinafter “Takeuchi”).
7 Nonaka et al., US 2007/0104913 Al, published May 10, 2007 (hereinafter
“Nonaka”).
8 Kim et al., US 2006/0088670 Al, published April 27, 2006 (hereinafter
“Kim”).
9 Hamilton et al., WO 03/091138 A2, published November 6, 2003
(hereinafter “Hamilton”).
3
Appeal 2015-004173
Application 12/831,339
3. Claims 11 and 12 as unpatentable over Saito in view of
Takeuchi and Nonaka, as evidenced by and further in view of Kim;
and
4. Claims 13, 14, and 19 as unpatentable over Saito in view of
Takeuchi and Nonaka, as evidenced by Kim, and further in view of
Van Rheenen.10
ANALYSIS
Appellant does not argue the claims separately, but instead focuses on
the limitations of claim 1. Accordingly, the remaining claims stand or fall
with claim 1.
After review of the opposing positions articulated by Appellant and
the Examiner and the evidence of obviousness adduced by the Examiner in
light of the countervailing Declaration evidence proffered by Appellant, we
determine that the Appellant’s arguments and evidence are insufficient to
outweigh the evidence of obviousness marshalled by the Examiner. Thus,
Appellants have not identified reversible error in the Examiner’s
obviousness rejection. In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011).
Accordingly, we sustain the stated obviousness rejections for substantially
the fact findings and the reasons set forth by the Examiner in the Examiner’s
Answer. We offer the following for emphasis.
The Examiner finds Saito discloses a sheeted roll comprising a roll
core, at least one sheet of adhesive material removably attached thereon,
wherein the adhesive sheet comprises a film having two sides, a first side of
which comprising adhesive and a second side comprising an embossed
surface and the adhesive sheet contains no silicones. Ans. 2 (citing Saito
2, 4, and 5). The Examiner finds Saito explicitly teaches “that the electronic
10 Van Rheenen, US 5,679,732, issued October 21, 1997.
4
Appeal 2015-004173
Application 12/831,339
parts that are being cleaned should not contact silicone.” Id. The Examiner
finds that “[i]t is either inherent or reasonably expected that the adhesive
layer would also not contain silicone because the electronic parts are not to
contact silicone.” Ans. 2—3. To the extent such is not inherent, however, the
Examiner finds Takeuchi discloses an adhesive sheet similar to Saito,
wherein the adhesive can consist of a non-silicone compound, particularly
when used on electronic parts. Ans. 3. Therefore, the Examiner concludes it
would have been obvious to use a non-silicone adhesive layer in Saito as
taught in Takeuchi in order to avoid contacting the electronic parts being
cleaned with silicone. Id.
The Examiner acknowledges that Saito does not teach that the
adhesive layer contains an anti-static additive, but finds Nonaka discloses
including an anti-static additive in the release line disposed against an
adhesive sheet in order to reduce damage caused by static electricity. Ans.
3. The Examiner notes that Kim teaches that it was known in the art that
modem electronic parts are highly sensitive to damage by electrostatic
electricity which is addressed by including anti-static additives into
adhesives used thereon. Id.
Appellant argues that the Examiner has failed to establish that Saito’s
adhesive layer does not inherently contain silicone. Appeal Br. 24.
Appellant asserts that the 37 C.F.R. § 1.132 Declaration of the inventor, Ms.
Sheila Hamilton, filed September 25, 2012 (hereinafter, “Hamilton
Declaration”), shows that silicones were part of the products of the prior art,
such that it cannot be said that Saito’s adhesive layer inherently contains no
silicone. Id.', see also Reply Br. 2. Appellant further criticizes what they
perceive as equivocation in the Examiner’s stated position, i.e., Saito’s
5
Appeal 2015-004173
Application 12/831,339
adhesive layer not containing silicone “is either inherent or reasonably
expected.” Appeal Br. 24. As such, Appellant urges that the Examiner fails
to establish inherency. Id.
We disagree. In general, a limitation is inherent “if it is the ‘natural
result flowing from’ the explicit disclosure of the prior art.” Schering Corp.
v. Geneva Pharms., 339 F.3d 1373, 1379 (Fed. Cir. 2003) (quoting Eli Lilly
& Co. v. Barr Labs., Inc., 251 F.3d 955, 970 (Fed. Cir. 2001)). “Inherency .
. . may not be established by probabilities or possibilities. The mere fact that
a certain thing may result from a given set of circumstances is not
sufficient.” MEHL/Biophile Int’l Corp. v. Milgraum, 192 F.3d 1362, 1365
(Fed. Cir. 1999) (quoting In re Oelrich, 666 F.2d 578, 581 (CCPA 1981)).
Here, we note that Saito’s disclosed list of possible binders for the
adhesive layer does not include silicone (Saito 1 6 (“polyisobutylene,
polyvinyl ether, chlorinated rubber, crude rubber, a synthetic rubber, a
polyvinyl butyral, polyacrylic ester, cellulose ester, etc.”), nor does
Appellant establish that any one or more of these possible binders contain
silicone. In addition, as the Examiner finds, Saito discloses that the
electronic parts being cleaned by the cleaning roll should not contact
silicone. Saito Tflf 3—5. In this regard, Appellant at oral hearing asserted that
the Hamilton Declaration, paragraph 11, teaches that Saito’s binders would
be expected to contain silicone. However, a careful reading of the Hamilton
Declaration, including paragraph 11, reveals no such evidence or persuasive
technical reasoning for concluding that Saito’s binders, though silent
regarding the use of silicone as an additive therein, nonetheless would be
expected to contain silicone. Paragraph 11 of the Declaration merely
discusses an unknown “typical water-based adhesive,” and does not relate
6
Appeal 2015-004173
Application 12/831,339
this unidentified adhesive to any of Saito’s binders. Therefore, on this
record, we are satisfied that the Examiner has established that Saito’s
binders inherently do not contain binders.
We are mindful that Appellant believes that inherency requires, not
only that Saito does not teach silicone in the binders, but that Saito must
explicitly teach that silicone is not in the binders. Otherwise, according to
Appellant, one skilled in the art could include silicone in Saito’s binders
which would mean that Saito’s binders do not necessarily exclude silicone.
However, Appellant’s misapprehend the Examiner’s burden of establishing
inherency which merely requires that the Examiner establish a reasonable
expectation that silicone is not present in Saito’s binders. See In re
Schreiber, 128 F.3d 1473, 1478 (Fed. Cir. 1997); In re Hallman, 655 F.2d
212, 215 (CCPA 1981). Saito’s listing of binders without teaching silicone
therein is sufficient to provide this reasonable expectation. The burden of
proof thereby has been shifted to Appellant to show that Saito, in fact, would
have included silicone in the listed binders. As we stated earlier, the
Hamilton Declaration does not satisfy Appellant’s burden.
Notwithstanding the above, the Examiner alternatively relies on
Takeuchi’s teaching of non-silicone adhesives for use with electronics parts.
Appellant argues that it would not have been obvious to modify Saito to use
a non-silicone adhesive as taught by Takeuchi for several reasons. First,
Appellant argues that, contrary to the Examiner’s finding that Takeuchi’s
adhesive sheet is similar to Saito’s adhesive sheet, these two adhesive sheets
are dissimilar because Saito’s adhesive sheet functions to clean electronic
parts without adhering to the surface thereof, whereas Takeuchi’s adhesive
sheet functions to attach to the surface of electronic parts. Appeal Br. 10—
7
Appeal 2015-004173
Application 12/831,339
14. As such, Appellant urges that such adhesives cannot be considered to be
similar. Id.
Second, Appellant argues that substitution of Takeuchi’s adhesives in
Saito would render Saito unsuitable for its intended purpose. Appeal Br.
14—16. Appellant urges that Takeuchi’s adhesives are intended for attaching
to the surface of electronic parts whereas Saito’s adhesives are intended for
cleaning, without adhering to, the surface of electronic parts. Id. Appellant
contends, if Takeuchi’s adhesives are used in Saito, that electronic parts will
adhere to Saito’s cleaning roll and be crushed against other apparatus
components, such that production will be disrupted. Id.
Third, Appellant argues that Takeuchi teaches away from the
Examiner’s proposed modification to Saito. Appeal Br. 16—17. Similar to
Appellant’s first and second arguments, this third argument holds that
Takeuchi is bonding the adhesive sheet to electronic parts while Saito is
specifically designed to not adhere to such parts. Id. Appellant contends,
therefore, that Saito should not be combined with Takeuchi because
Takeuchi teaches away from temporary adhesive contact. Id.
On this record, Appellant’s arguments are not persuasive. Each of
Appellant’s arguments is predicated on the same premise—that Takeuchi’s
adhesives are intended for attaching to the surface of electronic parts
whereas Saito’s adhesives are intended for cleaning, without adhering to, the
surface of electronic parts. However, we note that Takeuchi’s listed
preferred non-silicone adhesives overlaps with those of Saito. Compare
Takeuchi 132 (“non-silicone adhesive such as rubber, acryl, polyester, and
urethane”) and Saito 1 6 (“polyisobutylene, polyvinyl ether, chlorinated
8
Appeal 2015-004173
Application 12/831,339
rubber, crude rubber, a synthetic rubber, a polyvinyl butyral, polyacrylic
ester, cellulose ester, etc.”).
We also find no support for Appellant’s argument that Takeuchi
teaches away from the Examiner’s proposed modification to Saito to use a
non-silicone adhesive. When the prior art teaches away from a combination,
that combination is more likely to be nonobvious, KSR Int'l. Co. v. Teleflex
Inc., 550 U.S. 398, 417 (2007), but to teach away, a reference must
discourage one of ordinary skill in the art from following the path set out in
the reference, or lead that person in a direction divergent from the path that
was taken by the applicant. In re Gurley, 27 F.3d 551, 553 (Fed. Cir.
1994). Various types of teachings may support a finding of “teaching
away.” Id. These include known disadvantages in old devices that would
naturally discourage the search for new inventions, teachings leaving the
impression that the product would not have the property sought by the
applicant, and reference combinations that would produce a seemingly
inoperative device. Id. “Although a reference that teaches away is a
significant factor to be considered in determining unobviousness, the nature
of the teaching is highly relevant, and must be weighed in substance.” Id.
For instance, when there is nothing within the reference teaching that the
claimed element should not, or cannot, be used, and further cited prior art
teaches the propriety of employing the missing element, the teachings of
both reference must be weighed together. Para-Ordnance Mfg., Inc. v. SGS
Importers Int'l, Inc., 73 F.3d 1085, 1090 (Fed. Cir. 1995). Here, Appellant
fails to direct us to any teaching of Takeuchi that discourages the exclusion
of silicone from adhesives when used with electronic parts or suggests that
9
Appeal 2015-004173
Application 12/831,339
such exclusion would render Saito’s adhesives inoperable for their intended
purpose.
Further, though Appellant challenges the Examiner’s finding that it
was within the ordinary skill in the art to either adjust the strength of the
adhesive or choose the adhesive with the appropriate strength (compare
Reply Br. 8—9 with Ans. 14), the fact that the adhesives listed in each
reference overlap supports the Examiner’s finding.11 Clearly, if Saito uses a
rubber adhesive for temporary contact and cleaning and Takeuchi uses a
rubber adhesive for bonding, it is reasonable to expect appropriate
adjustment or proper selection based on adhesive strength to be within the
ordinary skill in the art.
Finally, we note that Appellant’s arguments presume that Takeuchi’s
adhesives would be physically substituted for those of Saito’s. Such a
presumption is inconsistent with the required analytical framework
surrounding an obviousness determination. “It is well established that a
determination of obviousness based on teachings from multiple references
does not require an actual, physical substitution of elements.” In re Mouttet,
686 F.3d 1322, 1332 (Fed. Cir. 2012) (citing In re Etter, 756 F.2d 852, 859
(Fed. Cir. 1985) (en banc)); see also In re Keller, 642 F.2d 413, 425 (CCPA
11 We note that Appellant urges that the Examiner failed to procedurally
establish this finding on the basis that this finding is tantamount to Official
Notice. We disagree, primarily because the record before us supports a
reasonable inference as outlined above that adjustment of and/or selection of
an adhesive to provide a desired adhesive strength was within the ordinary
skill in the art. Further, Appellant through the filing of a Reply Brief has
been accorded an opportunity to rebut the Examiner’s finding. As such, we
are not persuaded that the Examiner reversibly erred on this point, either
procedurally or factually.
10
Appeal 2015-004173
Application 12/831,339
1981) (“To justify combining reference teachings in support of a rejection it
is not necessary that a device shown in one reference can be physically
inserted into the device shown in the other.”). “Rather, the test is what the
combined teachings of the references would have suggested to those of
ordinary skill in the art.” Id.
Here, it is important not to lose sight of Saito’s teaching to avoid
contacting silicone to the surface of electronic parts, that Saito lists possible
adhesive binders none of which expressly include silicone, and Takeuchi
teaches that adhesives which overlap at least some of those listed in Saito are
silicone free, all of which are well supported by a preponderance of the
evidence. We can discern, based on Appellant’s arguments and evidence, no
error in the Examiner’s reasonable conclusion that it would have been
obvious to use a listed adhesive without silicone in Saito. See KSR Intern.
Co. v. Teleflex Inc., 550 U.S. 398, 401 (2007) (“[I]f a technique has been
used to improve one device, and a person of ordinary skill in the art would
recognize that it would improve similar devices in the same way, using the
technique is obvious unless its actual application is beyond his or her
skill.”).
Appellant next argues that Nonaka is non-analogous prior art. Appeal
Br. 17—23. Appellant urges that the Examiner’s finding that the field of
endeavor is the use of adhesives on electronic parts is “contrived.” Reply
Br. 10. Appellant notes that Nonaka describes a different “Field of the
Invention” than the Examiner’s stated field of endeavor. Id.', see also
Nonaka 13. Appellant further describes the field of endeavor encompassed
by the present claims as “contact cleaning” whereas Nonaka’s is described
as “labelling.” Appeal Br. 20. Appellant also argues that Nonaka is not
11
Appeal 2015-004173
Application 12/831,339
reasonably pertinent to the problem Appellant faced because Appellant was
entirely concerned with cleaning electronic components, in particular contact
cleaning, whereas Nonaka is exclusively concerned with adhering labels to
hard drives. Id. at 22.
Appellant’s argument that Nonaka is non-analogous prior art is not
persuasive of reversible error. A reference is analogous art if it is either in
the field of the applicant’s endeavor, or is reasonably pertinent to the
particular problem with which the inventor was concerned. In re Kahn, 441
F.3d 977, 987 (Fed. Cir. 2006). Focusing on the first of the two tests above,
the test for analogous art “requires the PTO to determine the appropriate
field of endeavor by reference to explanations of the invention’s subject
matter in the patent application, including the embodiments, function, and
structure of the claimed invention.” In re Bigio, 381 F.3d 1320, 1325 (Fed.
Cir. 2004). We thus consider all explanations of the inventors’ subject
matter while keeping in mind that prior art is analogous when it “is from the
same field of endeavor, regardless of the problem addressed.” In re Bigio,
381 F.3d at 1320 (emphasis added). Thus, “field of endeavor” should not be
defined narrowly based only upon the specific problem addressed.
Here, we note that Appellant narrowly defines the field of endeavor as
“contact cleaning,” while the Examiner broadly defines the field of endeavor
as “the use of adhesive on electronic parts.” Ans. 15. A preponderance of
the evidence, on this record, supports the Examiner’s broader definition of
the field of endeavor. The problem of silicone when used in adhesives is
recognized in both Saito and Takeuchi, even though Saito is used for contact
cleaning whereas Takeuchi is used for bonding. Like Saito and Takeuchi,
Appellant also describes the problem of silicone in adhesives for use with
12
Appeal 2015-004173
Application 12/831,339
electronic parts. Thus, we are satisfied that the most appropriate field of
endeavor in this case is the use of adhesives on electronic parts. That
Nonaka falls within this field of endeavor is not in dispute.
Notwithstanding a field of endeavor as defined above, we further note
that Nonaka is also reasonably pertinent to the particular problem with
which Appellant was concerned. “A reference is reasonably pertinent if,
even though it may be in a different field from that of the inventor’s
endeavor, it is one which, because of the matter with which it deals,
logically would have commended itself to an inventor’s attention in
considering his problem.” In re Clay, 966 F.2d 656, 659 (Fed. Cir. 1992).
Here, the particular problem being addressed is the potential damage
to electronic parts caused by electrostatic electricity. There is no dispute that
Appellant’s use of an anti-static additive is meant to address this problem.
Spec. 4:9—20. Given that Saito performs the same function as Appellant,
contact cleaning, there is no doubt that Saito would encounter the same
problem. Both Nonaka and Kim teach this same problem as well as the
solution of adding anti-static additives to compositions to reduce the risk
static electricity presents. We, therefore, have no doubt that Nonaka and
Kim are both reasonably pertinent to the particular problem with which
Appellant was concerned and, because each presents the solution of
including an anti-static additive, would logically have commended
themselves to the ordinary artisan.
Thus, a preponderance of the evidence supports that both Nonaka and
Kim are analogous prior art under either the first or second test.
13
Appeal 2015-004173
Application 12/831,339
DECISION
Upon consideration of the record, and for the reasons given above and
in the Answer, the decision of the Examiner rejecting claims 1—20 under 35
U.S.C. § 103(a) as unpatentable over Saito in view of Takeuchi and Nonaka,
as evidenced by Kim, alone or further in view of Hamilton, Kim, or Van
Rheenen, 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)(1).
AFFIRMED
14