Ex parte Mazza et al.

Board of Patent Appeals and Interferences

Feb 19, 1998

08068345 (B.P.A.I. Feb. 19, 1998)

Application for patent filed May 27, 1993. According to1
appellants this application is a division of Application 07/942,548
filed September 9, 1992.
1
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today
(1) was not written for publication in a law journal and
(2) is not binding precedent of the Board.
Paper No. 11
UNITED STATES PATENT AND TRADEMARK OFFICE
_______________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_______________
Ex parte RICHARD J. MAZZA, THOMAS KING, and JOY STONE
_______________
Appeal No. 95-1743
Application 08/068,3451
_______________
ON BRIEF
_______________
Before STONER, Chief Administrative Patent Judge, McKELVEY,
Senior Administrative Patent Judge, and OWENS, Administrative
Patent Judge.
Per Curiam
DECISION ON APPEAL
This appeal is from the refusal of the examiner to allow
claims 13 through 16 as amended subsequent to the first action on
2
the merits. These are all the claims in the application.
The subject matter on appeal relates to a method of making
an adhesive bandaging material which comprises applying the
adhesive material to a fabric previously coated with a release
coating. The method is said to result in a bandaging material
with reduced stiffness and improved hand and comfort in use. The
appealed subject matter is adequately illustrated by independent
claim 13, which states as follows:
13. A method of manufacturing an adhesive bandaging
material comprising the steps of:
forming a fabric having a back side and a face side;
applying a release agent to the back side of the fabric; and
applying an adhesive material to the release agent.
The references relied upon by the examiner are:
Hoey 3,618,754 Nov. 9, 1971
Edison et al. (Edison) 4,737,400 Apr. 12, 1988
Claims 13 and 15 stand rejected under 35 U.S.C. 102(b) as
anticipated by Hoey.
Claims 13 through 16 stand rejected under 35 U.S.C. 102(b)
as anticipated by Edison.
OPINION
We cannot sustain either of the two rejections under 35
Appeal No. 95-1743
Application 08/068,345
We note that the pages of the Examiner’s Answer (Paper2
No. 9) are not numbered. We would encourage examiners to number
the pages of their Office actions, including Examiner’s Answers.
We likewise note that appellants’ brief is single-spaced typing.
We would encourage appellants to submit briefs using typing that is
double-spaced.
3
U.S.C. 102(b) based on Hoey or Edison, respectively. Our reasons
are set forth below.
The Rejection based on Hoey
Appellants’ claim 13 requires that a release agent be
applied to a fabric backing and that an adhesive material be
applied to the release agent. The central issue with respect to
the rejection based on Hoey is the interpretation of Hoey’s
passage in column 4, lines 32-35, which states:
When this is done and a release coating is desired,
it may be applied to the preferably stretched
backing either before or after the application of
pressure-sensitive adhesive.
The examiner relies on this portion of the Hoey reference
(Paper No. 9, third page) to establish anticipation. Yet, the2
quoted-portion is at best nebulous. A review of the
specification of the instant application clearly shows that
appellants do not intend to have the adhesive material contact
the backing. For example, Figure 7 of appellants’ application
illustrates that release agent 20 intervenes between fabric
Appeal No. 95-1743
Application 08/068,345
4
backing 12 and adhesive 18. The same cannot be clearly stated
of the Hoey reference. The quoted-portion of Hoey admits of
numerous possibilities:
Appeal No. 95-1743
Application 08/068,345
5
(1) The adhesive bandaging material is formed by coating an
adhesive on the back side of the fabric (not appellants'
invention)
(2) The adhesive bandaging material is formed by coating a
release layer on the back side of stretched fabric followed by
coating the adhesive on the release layer (appellants' claim 13
invention).
(3) The adhesive bandaging material is formed by coating a
release layer on the back side of unstretched fabric followed by
coating the adhesive on the release layer (appellants' claim 13
invention).
(4) The adhesive bandaging material is formed by coating a
release layer on the face side of stretched fabric followed by
coating the adhesive on the back side of the fabric (not
appellants' invention).
(5) The adhesive bandaging material is formed by coating a
release layer on the face side of unstretched fabric followed by
coating the adhesive on the back side of the fabric (not
appellants' invention).
Appeal No. 95-1743
Application 08/068,345
6
If a prior art reference is subject to two plausible
interpretations, then the reference can be said to be ambiguous
and will not support an anticipation rejection. In re Hughes,
345 F.2d 184, 188, 145 USPQ 467, 471 (CCPA 1965). Putting aside
possibility (1), possibilities (2) and (3) (which are appellants'
claim 13 invention) and possibilities (4) and (5) (which are not
appellants' claim 13 invention) may be equally plausible. Hence,
it cannot be said the Hoey unambiguously describes possibilities
(2) and (3).
We have said "may be equally plausible." However, Hoey
further makes the following statement (col. 4, lines 35-37):
When the tape is to be rewound, however, a sheet of
facing material 76 from the roll 74 is interposed
between the adhesive and the backing.
Hoey still further indicates (col. 5, last line to col. 6,
line 6):
The preferred tapes of this invention, however, are
coated with a release coating which improves
unrollability. The coating may be among the well-known
release coatings applied to the uncoated backing fabric
preferably at dead stretch or to the back of the
adhesive coated fabric whether the fabric is faced or
unfaced, by using a reverse roll spreader.
Appeal No. 95-1743
Application 08/068,345
Claim 15 depends from claim 13. Since claim 15 is narrower3
than claim 13, it likewise cannot be anticipated by Hoey.
7
These last two quoted-portions of Hoey seemingly indicate
that the release layer facilitates unrolling by preventing the
adhesive from contacting fabric on both sides (the side to which
the adhesive is originally applied and the other side when the
adhesive-coated fabric is rolled). The adhesive of appellants’
adhesive bandaging material, made in accordance with appellants'
process, would contact both the side to which it was applied and
the opposite when the material is rolled (because the release
layer is between the adhesive and the fabric to which both the
adhesive and release layer are applied). See Figure 1 of
appellants' application. It may well be that the most plausible
interpretation of Hoey is that the release agent is applied to
one side of the fabric while the adhesive is applied to the other
side. If so, then Hoey manifestly does not anticipate
appellants' claim 13. Since the teachings of Hoey are less than3
clear, it cannot be relied upon as an anticipatory reference.
For the above reasons, we cannot sustain the examiner’s
rejection under 35 U.S.C. 102(b) of claims 13 and 15 as
anticipated by the Hoey.
Appeal No. 95-1743
Application 08/068,345
8
The Rejection based on Edison
The examiner relies on column 4, lines 27-48 and column 5,
lines 40-41 of the Edison to establish the anticipatory nature of
the reference. The examiner’s reliance on these portions of the
Edison reference is believed to be misplaced. These portions
clearly set forth a method in which the release coating is
applied to the face side of the fabric (col 4, lines 27-29,
34-36) and the adhesive is applied to the back side of the fabric
(col. 5, lines 21-23).
We have not overlooked the examiner's finding that "[t]he
adhesive apparently is absorbed through the fabric to the
opposite side thereof [footnote omitted]. Since release agent is
present on both sides of the web [when the web is rolled],
adhesive is applied to the release agent no matter which side the
adhesive is applied to" (Examiner's Answer, fifth page). The
basis for the examiner's finding that "release agent is present
on both sides of the web" is not entirely clear. Edison
describes applying release agent to one side of the web, not
both. The release agent is placed on the web while the web is in
a relaxed state (not a stretched state) (col. 4, line 22).
Moreover, after application of the release layer, the fabric is
dried (col. 4, lines 49-53). Given the relaxed state of the web,
Appeal No. 95-1743
Application 08/068,345
9
penetration of release agent through the web seems somewhat
unlikely.
Nor have we overlooked the examiner's finding that "at least
some release material is absorbed through the fabric is not
disputed" (Examiner's answer, fifth page, footnote 5). But, it
is plain that appellants dispute whether Edison describes the
claimed invention. In particular, appellants make quite a point
of noting that Edison applies the release agent to one side of
the web and the adhesive to the other side. Contrary to the
examiner's finding, we think it plain that the examiner's finding
is in dispute. Nor do we think this is a case where the
examiner's inherency finding is reasonable. Rather, we think the
examiner has engaged in considerable speculation to make the
finding that release agent penetrates the web.
Lastly, as a matter of claim interpretation (an issue of
law), we no not believe that the word "applying" in the phrase
"applying an adhesive material to the release agent" (claim 13)
means “applying adhesive to the release agent" when the web is
being rolled. Appellants apply the release agent via spray head
35 (Figure 3). Adhesive is applied to the web at first roller 41
(Figure 4) being placed evenly on conveyer belt 36 at blade 37
(also Figure 4). There is nothing in appellants' description of
Appeal No. 95-1743
Application 08/068,345
10
the invention which would suggest that appellants are "applying"
(within the meaning of claim 13) adhesive to a release layer in
the process of placing the web on core 11 (Figure 5).
Appeal No. 95-1743
Application 08/068,345
11
For the above reasons, we cannot sustain the examiner’s
rejection under 35 U.S.C. 102(b) of claims 13 through 16 as
anticipated by Edison.
SUMMARY
The decision of the examiner is reversed.
REVERSED
___________________________
BRUCE H. STONER, JR., Chief )
Administrative Patent Judge )
)
)
___________________________ ) BOARD OF PATENT
FRED E. McKELVEY, Senior )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
___________________________ )
TERRY J. OWENS )
Administrative Patent Judge )
Appeal No. 95-1743
Application 08/068,345
12
Ronald W. Alice, Esq.
American Home Products Corporation
Patent Department - 2B
One Campus Drive
Parsippany, New Jersey 07054