Ex Parte McGee

Patent Trial and Appeal Board

Aug 28, 2017

13609467 (P.T.A.B. Aug. 28, 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.
AA0608 6272
EXAMINER
NORDMEYER, PATRICIA L
ART UNIT PAPER NUMBER
1788
MAIL DATE DELIVERY MODE
13/609,467 09/11/2012
91971 7590
Anissimoff & Associates
341 Talbot Street
Talbot Court, Suite 215
London, ON N6A 2R5
CANADA
Joseph P. McGee
08/28/2017 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 JOSEPH P. MCGEE
Appeal 2015-008129
Application 13/609,4671
Technology Center 1700
Before CHUNG K. PAK, N. WHITNEY WILSON, and
WESLEY B. DERRICK Administrative Patent Judges.
DERRICK, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134 from the Examiner’s
maintained rejection under 35 U.S.C. § 103(a) of claim 1 over Cohen2 in
view of Chambers.3 We have jurisdiction under 35 U.S.C. § 6.
We REVERSE.
1 Appellant identifies the real party in interest as Tabbed Tape-Strip Corp.
Appeal Brief filed May 8, 2015 (“Appeal Br.”), 2.
2 Cohen, US 2004/0071918 Al, published April 15, 2004.
3 Chambers, US 2,969,872, issued January 31, 1961.
Appeal 2015-008129
Application 13/609,467
THE INVENTION
The subject matter of the claims on appeal relates to double-sided tape
having a longitudinal tab in the release liner along the entire length of the
tape. Specification filed September 11, 2012 (“Spec.”), Abstract.
Claim 1—the sole claim on appeal—is reproduced below.
1. A roll of double-sided adhesive tape, comprising:
an elongate carrier strip, with a length and a width with a
pair of opposing edges, defining a pair of opposing planar faces
that are separated by a thickness that is substantially smaller
than either the length or width, a layer of pressure-sensitive
adhesive applied to each of the opposing faces, and a first
release liner strip in removable registration atop one of the
adhesive layers, and a second release liner in registration atop
the other adhesive layer,
at least one continuous loop between said opposing edges
formed in the first or second release liner strip on the
corresponding adhesive layer upon which it is in registration,
said loop defined by a portion of the release liner between the
opposing edges out of registration with the adhesive layer
before resuming registration.
DISCUSSION4
Having considered the Examiner’s rejection in light of Appellant’s
arguments, we are persuaded that the Examiner has failed to meet the Patent
Office’s burden of establishing the unpatentability of the claims on appeal.
For any ground of rejection, “the Examiner bears the initial burden ... of
4 In our discussion, we refer to the Specification, the Non-Final Office
Action issued May 9, 2014 (“Non-Final Act.”), the Appeal Brief, and the
Examiner’s Answer issued July 24, 2015 (“Ans.”).
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Appeal 2015-008129
Application 13/609,467
presenting a prima facie case of unpatentability.” In re Oetiker, 977 F.2d
1443, 1445 (Fed. Cir. 1992).
The Examiner relies on Cohen as disclosing an improved double­
sided adhesive tape having a release liner strip in removable registration atop
the adhesive layers. Ans. 2-3 (citing Cohen 25, 27, 31, Figs. 1, 3). The
Examiner maintains that the release liner strip forms a loop “defined by
bending a length of the release liner out of registration with the adhesive
layer before resuming the registration” (citing Fig. 1, #21), but that “Cohen
fails to disclose a roll of double-sided adhesive tape.” Ans. 3. Further, as to
the liner returning to registration with the adhesive as required by the claim,
the Examiner maintains that release liner in Cohen’s Figure 1 being folded
back upon itself following the fold meets the claim limitation because “the
release liner returns to run parallel to the adhesive surface.” Ans. 6.
The Examiner relies on Chambers as disclosing “an adhesive article
with a release liner . . . wound upon itself into a roll.” Ans. 3 (citing
Chambers col. 4,11. 4-11; Figs. 1-3). The Examiner further finds that the
relied on release liner includes a portion that forms “a flange that allows the
user to grasp the liner for removal from the adhesive article.” Ans. 3;
Chambers Figs. 1-3. The flange—characterized by the Examiner as a loop
cut at its apex (Ans. 3)—is formed by joining opposite end regions together
as depicted in, for example, Chambers’ Figure 3 (see also Chambers col. 3,
11. 3-10 ). Regardless, the Examiner makes explicit that she is relying on
Cohen’s Figure 1—in which the release film 12 is in register with the
adhesive through section 19, forms a loop 21 out of register, and then in
being folded over the first portion of release film 19 so that it lies parallel to,
albeit not in contact with, the adhesive returns to registration with the
3
Appeal 2015-008129
Application 13/609,467
adhesive in section 14—for the recited release liner structure (Ans. 5-6; see
Cohen 125; Fig. 1) and that “Chambers is only being used to show that it is
known to have an adhesive article with a release liner . . . wound upon itself
into a roll formation” (Ans. 6 (citing Chambers col. 4,11. 4-11; Figs. 1-2)).
Appellant contends, inter alia, that the relied on combination does not
provide the required structure because being in registration with the adhesive
layer—as set forth in claim 1—requires the release liner to contact the
adhesive layer and not merely to lie parallel to it as maintained by the
Examiner. See, e.g., Appeal Br. 12-13.
Whether the claim requires the release liner to contact the adhesive
layer to be in registration with the adhesive is dispositive of the appeal.
We begin our analysis by determining the meaning of the claims,
giving terms the broadest reasonable interpretation consistent with the
Specification as it would be interpreted by one of ordinary skill in the art.
See, e.g., In re Suitco Surface, Inc., 603 F.3d 1255, 1259-60 (Fed. Cir.
2010). In doing so, we turn first to the claim itself. See, e.g., Rapoport v.
Dement, 254 F.3d 1053, 1059 (Fed. Cir. 2001).
Having considered the language of the claim itself, as well as the
Specification, we determine the meaning of “release liner strip” in this
particular context to be a strip that directly contacts and covers the
corresponding adhesive layer. The claim recites that there is “[a]t least one
continuous loop between said opposing edges''’ (emphasis added)—referring
to the antecedent opposing edges of the carrier strip upon which the adhesive
layer is applied—and that this “loop [is] defined by a portion of the release
liner between the opposing edges out of registration with the adhesive layer
before resuming registration.” Claim 1. From the plain language of the
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Appeal 2015-008129
Application 13/609,467
claim, the recited release liner strip forms a loop that is out of registration,
i.e., not contacting the adhesive layer, bounded by portions of the release
liner strip that are in registration with (in contact with) the adhesive strip.
These requisite portions of the strip to form the recited structure—a structure
with at least two regions in registration with the adhesive strip, which bound
at least one region that is not in registration to form a loop—lies between the
edges of the carrier strip. It follows that the regions or portions of release
liner strip originally in registration and that which resumes in registration are
in contact with the adhesive layer. Such is the structure depicted in Figure 1
and further described throughout the Specification, including in paragraphs
4, 6, and 12.
Rather than addressing the limitations of the claim discussed above as
properly construed, the Examiner’s rejection is grounded on these being met
by Cohen’s structure in which the loop formed by the release liner being out
of registration lies at (or beyond) the edge of the carrier and the portion of
release liner on one side of the relied on loop to form the loop neither
contacts the adhesive layer nor otherwise returns to registration within the
edges.
On this record, accordingly, the Examiner has failed to establish a
prima facie case of obviousness.
DECISION
The Examiner’s decision rejecting claim 1 is REVERSED.
REVERSED
5