Ex Parte Izutani et al

Board of Patent Appeals and Interferences

Apr 29, 2010

10131178 (B.P.A.I. Apr. 29, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte SEIJI IZUTANI, MICHIROU KAWANISHI,
and YUKIO ARIMITSU
____________

Appeal 2009-014940
Application 10/131,178
Technology Center 1700
____________

Decided: April 29, 2010
____________

Before EDWARD C. KIMLIN, BRADLEY R. GARRIS, and
JEFFREY T. SMITH, Administrative Patent Judges.

SMITH, Administrative Patent Judge.

DECISION ON APPEAL

Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
decision final rejection of claims 2, 3, 5, 6, and 13-17. Claims 7-12 have
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Application 10/131,178

2
been withdrawn from consideration. We have jurisdiction under 35 U.S.C. §
6(b).1
We AFFIRM.
STATEMENT OF THE CASE
Claim 5 is illustrative of the subject matter on appeal, and is
reproduced from the Claims Appendix to the Appeal Brief (“App. Br.”):
5. A method for thermally releasing an adherend, which comprises
the steps of:
cutting an adherend adhered to a thermally releasable pressure-
sensitive adhesive sheet, into a plurality of cut pieces, the pressure
sensitive adhesive sheet comprising a base material and a
thermally expandable layer containing thermo-expandable
microspheres, wherein the cutting is conducted without cutting the
base material; and
selectively releasing the cut pieces by partly heating the
plurality of cut pieces with a heating unit for partly heating the
pressure-sensitive adhesive sheet.

The Examiner relies on the following references in rejecting the
appealed subject matter:
Ebe US 5,187,007 Feb. 16, 1993
Kiuchi EP 1 033 393 A2 Jun. 9, 2000
Tsujimoto US 6,176,966 B1 Jan. 23, 2001

Admitted Prior Art (APA), Specification, page 1 line 13 to page 2, line 24

1 In rendering this decision we have considered Appellants’ Brief dated May
5, 2009, and Reply Brief dated August 7, 2009.

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THE REJECTIONS
Claims 2, 3, 5, 13, 14, and 17 stand rejected under 35 U.S.C. § 103(a)
as unpatentable over the APA in view of Tsujimoto and Ebe; and claims 6,
15, and 16 stand rejected under 35 U.S.C. § 103(a) as being unpatentable
over the APA in view of Tsujimoto and Ebe further in view of Kiuchi.2

PRINCIPLES OF LAW
In KSR, the Supreme Court explained, “[w]hen a work is available in
one field of endeavor, design incentives and other market forces can prompt
variations of it, either in the same field or a different one. If a person of
ordinary skill can implement a predictable variation, §103 likely bars its
patentability.” KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007). “A
person of ordinary skill is also a person of ordinary creativity, not an
automaton.” Id. at 421.
“[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.” KSR, 550 U.S. at 417.

2 Appellants have presented separate arguments for claims 14 and 16.
(Br. 14-18). Regarding the rejection of claims 6 and 15 Appellants rely on
the arguments presented regarding the patentability of claim 5. (Br. 16).
Consequently, we will limit our discussion to claims 5, 14, and 16. Any
claim not separately argued will stand or fall with rejected claims 5 or 6.

Appeal 2009-014940
Application 10/131,178

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ISSUE
The Examiner contends that the prior art suggests that it would have
been obvious to one of ordinary skill in the art to cut partially through the
adhesive layer of an adherend without cutting the base material thereof.
Appellants contend the applied combination of prior art does not
suggest the claimed cutting without cutting the base material.
The issue presented for review is as follows:
Has the Examiner erred in determining that a person having ordinary
skill in the art would have been led to perform a method for thermally
releasing an adherend, which comprises the steps of: cutting an adherend
adhered to a thermally releasable pressure-sensitive adhesive sheet without
cutting the base material as required by claim 1?
We answer this question in the negative. Therefore we affirm.
ANALYSIS
Appellants argue that the prior art does not suggest the claimed
cutting without cutting the base material. Appellants argue that the prior art
must suggest the modification. Appellants further argue the UV reactive
system of Ebe does not provide motivation for and teaches away from
modifying the thermally reactive system of the APA and Tsujimoto (Br. 8-
9).
The Examiner found that the APA describes pressure sensitive
adhesive sheets having a thermally expandable layer containing therein
thermo-expandable microspheres which have been used to temporarily hold
a plurality of adherends to the sheet and wherein upon application of heat to
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Application 10/131,178

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the entire sheet all of the adherends are released simultaneously. (Ans. 4;
Spec. page 1, l. 13 to page 2, l. 24).
The Examiner found that Tsujimoto teaches the use of a pressure
sensitive adhesive sheet for holding a plurality of adherends and that upon
heating the adhesive sheet loosens its grip upon the adherends thereby
releasing them. (Ans. 4; Tsujimoto, col. 1, l. 68 to col. 2, l. 5). The
Examiner further found that Tsujimoto teaches the use of a heater in the
shape of each individual adherend which is positionable under portions of
the multiple adherend. (Ans. 4; Tsujimoto, col. 3, ll. 36-45). Tsujimoto
discloses the separate heating of only the portion of the dicing tape which
results in the removal of adherends one at a time without loosening the
remaining adherends. (Ans. 4-5; Tsujimoto, col. 7, l. 59 to col. 8, l. 7; FIG.
8).
The Examiner found that Ebe describes a method of removing a
plurality of adherends on a pressure sensitive adhesive sheet wherein an
adhered layer is diced to form individual adherends. The adhesive layer
including the base material is not cut. The Examiner recognized that Ebe
employs UV light to react with the adhesive for removal of the adherends.
(Ans. 4-5; Ebe, paragraph bridging cols. 2-3).
Relying on the above discussed prior art, the Examiner concluded that
a person having ordinary skill in the art would have been led to perform a
method for thermally releasing an adherend, which comprises the steps of:
cutting an adherend adhered to a thermally releasable pressure-sensitive
adhesive sheet without cutting the base material as required by claim 1.
(Ans. 4).
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We agree with the Examiner’s reasoning that a person of ordinary
skill in the art would have reasonably expected the technique for removing
adherends from a pressure sensitive adhesive sheet by cutting/dicing the
adherend without cutting the base layer of a pressure sensitive adhesive, the
technique described by Ebe, would have been suitable for thermally
releasable pressure sensitive adhesives. See KSR, 550 U.S. at 417.
Accordingly, Appellants have not persuasively argued that the facts
and reasons relied on by the Examiner are insufficient to establish a prima
facie case of obviousness as to claim 5 within the meaning of 35 U.S.C. §
103. We must now consider anew the issue of obviousness with due regard
for all evidence relevant to the ultimate conclusion. In re Rinehart, 531 F.2d
1048, 1052 (CCPA 1976).
Appellants rely on the examples of the Specification as evidence of
unexpected results.
Appellants have not discussed or explained why the data presented in
the Specification supports the non-obviousness of the claimed subject
matter. The burden is on Appellants to show why the comparative data
establishes unexpected results. See In re Klosak, 455 F.2d 1077, 1080
(CCPA 1972). Appellants have not explained why a person of ordinary skill
in the art would not have expected that heating only a portion of the
substrate to release selected adherend without heating the remaining portion
of the substrate would have allowed only the selected adherend to have been
released. Indeed, a person of ordinary skill in the art would have expected
that the adherend attached to the portion of the pressure sensitive adhesive
sheet that was not heated would have remained on the sheet.
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Appellants’ arguments (Br. 13-14) regarding improvements in
positional deviation are not commensurate in scope with the claimed
invention.
The argument presented by Appellants’ representative (Reply Br. 4),
that the comparative examples of the specification provide unexpected
superiority, is not persuasive. Appellants’ representative has not identified
portions of the Specification that indicate the claimed invention provides
superior results. Unsupported arguments of counsel cannot take the place of
evidence. See In re Pearson, 494 F.2d 1399, 1405 (CCPA 1974).
Based on the totality of the record, including due consideration of
Appellants’ evidence and arguments, we determine that the preponderance
of evidence weighs most heavily in favor of an obviousness determination
for the claimed subject matter. Accordingly, we affirm the Examiner’s
decision to maintain the obviousness rejection for the reasons stated in the
Answer and above.
Appellants’ arguments regarding the patentability of the subject
matter of claims 14 and 16 are not persuasive. (Br. 14-18). These
arguments are directed to the properties achieved from heating a pressure
sensitive adhesive sheet. Appellants have not disputed that the APA
describes pressure sensitive adhesives that comprise expandable
microspheres, which have been utilized by Appellants in the claimed
invention. Appellants have not explained why the characteristics of claims
14 to 16 would not have been obtained by the pressure sensitive adhesive of
the APA.
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CONCLUSION
The decision of the Examiner rejecting claims 2, 3, 5, 6, and 13-17 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)(v).

AFFIRMED

PL Initial:
sld

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