11084540 (B.P.A.I. Jul. 12, 2012)

Ex Parte Pemberton

Board of Patent Appeals and InterferencesJul 12, 2012

11084540 (B.P.A.I. Jul. 12, 2012)

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. 11/084,540 03/18/2005 Bonnie Pemberton 31960.0107 9418 7590 07/13/2012 George R. Schultz Schultz & Associates, P.C. One Lincoln Centre 5400 LBJ Freeway, Suite 1200 Dallas, TX 75240 EXAMINER NORDMEYER, PATRICIA L ART UNIT PAPER NUMBER 1788 MAIL DATE DELIVERY MODE 07/13/2012 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 BOARD OF PATENT APPEALS AND INTERFERENCES ________________ Ex parte BONNIE PEMBERTON ________________ Appeal 2010-011911 Application 11/084,540 Technology Center 1700 ________________ Before CHUNG K. PAK, TERRY J. OWENS, and PETER F. KRATZ, Administrative Patent Judges. OWENS, Administrative Patent Judge. DECISION ON APPEAL Appeal 2010-011911 Application 11/084,540 2 STATEMENT OF THE CASE The Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s rejection of claims 53, 54, 56-81, 91, and 95-110. Claims 1-52 and 82-90 have been withdrawn from consideration by the Examiner and claims 55 and 92-94 have been canceled. We have jurisdiction under 35 U.S.C. § 6(b). The Invention The Appellant claims a device for controlling pet behavior. Claim 53 is illustrative: 53. A device for controlling pet behavior comprising: a transfer sheet; a control sheet adjacent to the transfer sheet; a bisected release layer, adjacent to the control sheet, including a first release sheet and a second release sheet bisected by a linear axis; wherein the first release sheet runs parallel to and does not have an overlapping cross-sectional area with the second release sheet; wherein the second release sheet runs parallel to and does not have an overlapping cross-sectional area with the first release sheet; a first adhesive layer, between the transfer sheet and the control sheet, adhering to the control sheet; a second adhesive layer, between the control sheet and the bisected release sheet, adhering to the control sheet; and wherein the first release sheet and the second release sheet abut but do not overlap the linear axis. The References Geary US 2,911,756 Nov. 10, 1959 Greco US 3,517,450 Jun. 30, 1970 Sekula US 3,816,956 Jun. 18, 1974 Stubler US 4,424,642 Jan. 10, 1984 Hickey US 4,832,228 May 23, 1989 Corbo US 4,961,525 Oct. 9, 1990 Appeal 2010-011911 Application 11/084,540 3 Ittershagen US 5,168,831 Dec. 8, 1992 Wille US 5,209,973 May 11, 1993 Lucast US 5,613,942 Mar. 25, 1997 The Rejections The claims stand rejected under 35 U.S.C. § 103 as follows: claims 53, 56, 60, 62, 67, 68, 70-72, 91, 96, 100, 102, 107, 108, and 110 over Ittershagen in view of Greco and Sekula, claims 54 and 95 over Ittershagen in view of Greco, Sekula, and Hickey, claims 57, 58, 69, 97, 98, and 109 over Ittershagen in view of Greco, Sekula, and Geary, claims 63 and 103 over Ittershagen in view of Greco, Sekula, and Stubler, claims 64 and 104 over Ittershagen in view of Greco, Sekula, and Lucast, claims 59, 61, 65, 66, 99, 101, 105, and 106 over Ittershagen in view of Greco, Sekula, and Wille, claims 73, 75, and 80 over Ittershagen in view of Greco and Corbo, claim 74 over Ittershagen in view of Greco, Corbo, and Hickey, claim 76 over Ittershagen in view of Greco, Corbo, and Stubler, claim 77 over Ittershagen in view of Greco, Corbo, and Lucast, claims 78 and 79 over Ittershagen in view of Greco, Corbo, and Wille, and claim 81 over Ittershagen in view of Greco, Corbo, and Geary. OPINION We reverse the rejections. Ittershagen discloses a transparent sheet which is coated on one side with a pressure sensitive adhesive to removably adhere the sheet to a floor covering and is coated on the other side with a preferably stronger pressure sensitive adhesive which sticks to the paws of an animal stepping on it and requires a forceful and unpleasant effort for the animal to free itself from the adhesive’s grip (col. 2, ll. 13-20; col. 3, ll. 10-13). A non-sticky layer may Appeal 2010-011911 Application 11/084,540 4 be adhered to the sheet as a protective backing which is removed to expose the adhesive (col. 3, ll. 39-41, 48-50; col. 4, ll. 20-26). Ittershagen does not disclose that the non-sticky layer may be bisected. For that claim requirement the Examiner relies upon Greco (Ans. 5). Greco discloses an intravenous bottle recording label having on its reverse face a pressure sensitive adhesive (20) covered by a release sheet which is divided by a separation (21) into 1) a narrow marginal strip (22) corresponding to volumetric marks (15) on the front of the label, and 2) a portion (23) covering the remainder of the reverse face (col. 2, ll. 7-10; col. 3, ll. 34-46). The narrow marginal release sheet strip (22) is peeled from the reverse face exposing a narrow strip of pressure sensitive adhesive which is used to adhere the label to the bottle (col. 3, ll. 61-67). The remaining portion of the label stands out free of the bottle to serve as a flag to prevent oversight of regular checks on the procedure or patient (col. 3, l. 71 – col. 4, l. 2). After the intravenous solution in the bottle has been administered to a patient, the pressure sensitive adhesive (20) on the reverse side of the label is used to secure the label to the patient’s medical record (col. 4, ll. 28-34). The Examiner argues that it would have been obvious to one of ordinary skill in the art in view of Greco to use a bisected release sheet as Ittershagen’s non-sticky layer “to control the attachment of the adhesive to a surface as taught by Greco” (Ans. 6). As stated in KSR Int’l. Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007), “‘[R]ejections on obviousness grounds cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning Appeal 2010-011911 Application 11/084,540 5 with some rational underpinning to support the legal conclusion of obviousness’” (quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)). The Examiner’s reason for combining Ittershagen and Greco is merely a conclusory statement. The Examiner has not addressed the differences between the references and explained why, regardless of those differences, one of ordinary skill in the art would have been led by the references to make the modification proposed by the Examiner. Thus, the record indicates that the Examiner used impermissible hindsight in rejecting the Appellant’s claims. See In re Warner, 379 F.2d 1011, 1017 (CCPA 1967) (“A rejection based on section 103 clearly must rest on a factual basis, and these facts must be interpreted without hindsight reconstruction of the invention from the prior art”). Accordingly, we do not sustain the Examiner’s rejections. DECISION/ORDER The rejections under 35 U.S.C. § 103 of claims 53, 56, 60, 62, 67, 68, 70-72, 91, 96, 100, 102, 107, 108, and 110 over Ittershagen in view of Greco and Sekula, claims 54 and 95 over Ittershagen in view of Greco, Sekula, and Hickey, claims 57, 58, 69, 97, 98, and 109 over Ittershagen in view of Greco, Sekula, and Geary, claims 63 and 103 over Ittershagen in view of Greco, Sekula, and Stubler, claims 64 and 104 over Ittershagen in view of Greco, Sekula, and Lucast, claims 59, 61, 65, 66, 99, 101, 105, and 106 over Ittershagen in view of Greco, Sekula, and Wille, claims 73, 75, and 80 over Ittershagen in view of Greco and Corbo, claim 74 over Ittershagen in view of Greco, Corbo, and Hickey, claim 76 over Ittershagen in view of Greco, Corbo, and Stubler, claim 77 over Ittershagen in view of Greco, Corbo, and Lucast, claims 78 and 79 over Ittershagen in view of Greco, Corbo, and Appeal 2010-011911 Application 11/084,540 6 Wille, and claim 81 over Ittershagen in view of Greco, Corbo, and Geary are reversed. It is ordered that the Examiner’s decision is reversed. REVERSED sld