Ex Parte Husemann et al

Patent Trial and Appeal Board

Mar 12, 2013

11917295 (P.T.A.B. Mar. 12, 2013)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
11/917,295 03/25/2008 Marc Husemann 101769-431 KGB 4826
27384 7590 03/13/2013
Briscoe, Kurt G.
Norris McLaughlin & Marcus, PA
875 Third Avenue, 8th Floor
New York, NY 10022
EXAMINER
SHAH, SAMIR
ART UNIT PAPER NUMBER
1787
MAIL DATE DELIVERY MODE
03/13/2013 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL
AND APPEAL BOARD
____________

Ex parte MARC HUSEMANN and REINHARD STORBECK
____________

Appeal 2012-001533
Application 11/917,295
Technology Center 1700
____________

Before BRADLEY R. GARRIS, RICHARD TORCZON, and
BEVERLY A. FRANKLIN, Administrative Patent Judges.

FRANKLIN, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2012-001533
Application 11/917,295

2
Appellants appeal under 35 U.S.C. § 134 from the Examiner’s
rejection of claims 1-12. We have jurisdiction under 35 U.S.C. § 6.

STATEMENT OF THE CASE
Claim 1 is representative of the subject matter on appeal and is set
forth below:
1. A pressure-sensitive adhesive tape
having a top side and a bottom side, having light-
reflecting properties on the top side and light-absorbing
properties on the bottom side,
additionally having a carrier film having a top side and a
bottom side,
the pressure-sensitive adhesive tape being furnished on
both sides of the carrier film with an outer pressure-sensitive
adhesive layer,
wherein
at least one metallically reflecting layer for effecting light
reflection, and at least one black-colored pressure-sensitive
adhesive layer for effecting light absorption, are each provided
between the outer pressure-sensitive adhesive layers, and at
least the outer pressure-sensitive adhesive layer on the top side
is transparent.
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Ho 5,468,532 Nov. 21, 1995
Yamakami 2004/0028895 A1 Feb. 12, 2004
Kishioka 2005/0202238 A1 Sept. 15, 2005
Miyano EP 1386950 A1 Feb. 4, 2004

Appeal 2012-001533
Application 11/917,295

3
THE REJECTIONS
1. Claims 1-4, 6-7, and 9-12 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Miyano in view of Kishioka.
2. Claims 5 and 8 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Miyano in view of Kishioka and further view of
Yamakami.
ISSUE
Did the Examiner err in determining that Miyano in view of Kishioka
suggests the claimed subject matter, and in particular, the aspect of claim 1
pertaining to a transparent outer pressure-sensitive layer on a black pressure-
sensitive adhesive?
We answer this question in the negative and AFFIRM.

ANALYSIS

As an initial matter, Appellants have not presented separate arguments
for all of the rejected claims. Rather, Appellants’ arguments are principally
directed to independent claim 1. Any claim not separately argued will stand
or fall with its respective independent claim. See 37 C.F.R.
§ 41.37(c)(1)(vii).
We adopt the Examiner’s findings pertinent to the issues raised by
Appellants. We therefore incorporate the Examiner’s position as set forth in
the Answer. We add the following for emphasis only.
It is the Examiner’s position that Miyano teaches the claimed subject
matter but fails to disclose a transparent pressure-sensitive layer (PSA layer)
Appeal 2012-001533
Application 11/917,295

4
wherein the transparent pressure-sensitive adhesive layer is the outer
pressure-sensitive adhesive layer on a black colored pressure-sensitive
adhesive layer. Ans. 4-5. The Examiner’s relies upon Kishioka for
disclosing a transparent double-sided pressure-sensitive adhesive tape
wherein the outer PSA layer is transparent (paragraphs 0008 and 0011). The
Examiner concludes that it would have been obvious to have used the
transparent pressure sensitive adhesive of Kishioka on the tape of Miyano to
protect the colored pressure-sensitive adhesive layer. Id. at 5. The
Examiner further explains his position by reiterating the finding made in the
Final Office Action that it was known in the prior art (as evidenced by Ho
used as a teaching reference) to use a transparent layer over a colored layer
to provide it with mar resistance.1 Therefore, it is the Examiner’s position
that one would have used a transparent layer, including a transparent PSA
layer, over the colored adhesive layer in Miyano, to protect it from marring.
Id. at 7.
Appellants argue that the use of a transparent PSA over the black PSA
layer of Miyano is redundant. That is, Appellants argue that there is nothing
gained by providing a further transparent layer, except to protect the black
PSA that is, itself, already a protective layer. Br. 9. Reply Br. 1-3.
However, this line of argument is unpersuasive because it does not address
the Examiner’s position (as discussed, supra) that it would have been
obvious to protect the black PSA layer from marring by covering it with a
transparent PSA. Also, Miyano discloses that the black layer has a function
(preventing light leakage, para. [0003]), indicating that the black layer has a

1 Appellants acknowledge the Examiner’s reliance on the Ho reference, and do not argue that such reliance
is procedurally improper (Reply Br. 2-3).
Appeal 2012-001533
Application 11/917,295

5
function beyond mere protection, warranting the cost of also giving it
protection. Appellants then refer to pages 25-29 of their Specification and
state that the data therein shows, unexpectedly, the complete absence of
pinholes and good light-absorbing and light-reflecting properties.
Appellants argue that the applied art does not teach such advantages. Br. 10.
We agree with the Examiner that this data is not convincing of
unobviousness for the reasons stated by the Examiner on page 9 of the
Answer.
In view of the above, we affirm Rejection 1. We also affirm
Rejection 2 based upon the same reasons in view of Appellants’ similar
arguments set forth on page 10 of the Brief.

CONCLUSIONS OF LAW AND DECISION
Each rejection 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

bar