Ex Parte Stevens

Board of Patent Appeals and Interferences

Apr 27, 2010

09228325 (B.P.A.I. Apr. 27, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte LARRY STEVENS
____________

Appeal 2009-000274
Application 09/228,325
Technology Center 3700
____________

Decided: April 27, 2010
____________

Before JOHN C. KERINS, STEFAN STAICOVICI and
FRED A. SILVERBERG, Administrative Patent Judges.

KERINS, Administrative Patent Judge.
DECISION ON APPEAL
Appeal 2009-000274
Application 09/228,325

2
STATEMENT OF THE CASE
Larry Stevens (Appellant) seeks our review under 35 U.S.C. § 134 of
the final rejection of claims 1, 2, 5-18 and 44-53, which are the only claims
pending in the application. This is Appellant’s second appeal before the
Board of Patent Appeals and Interferences. In the first appeal (2002-0980,
Decision mailed March 27, 2003), the decision of the Examiner to reject
claims 1, 2, and 4-18 was reversed. We have jurisdiction under 35 U.S.C.
§ 6(b) (2002). An oral hearing was held on April 13, 2010, with Richard C.
Gilmore appearing on behalf of Appellant.

SUMMARY OF DECISION
We REVERSE.

THE INVENTION
Appellant’s invention is directed to a basketball backboard assembly
having a frame structure, a backboard, and either a catalyzed elastomeric or
silicone adhesive or a silicone-based adhesive sandwiched between and
connecting the frame and the backboard. Independent claim 1, reproduced
below, is illustrative of the claimed subject matter:
1. A basketball backboard assembly that is
sized and configured for playing the game of
basketball, the basketball backboard assembly
comprising:

a basketball backboard frame structure having a
bonding surface;

an acrylic basketball backboard having a bonding
surface; and

Appeal 2009-000274
Application 09/228,325

3
a catalyzed elastomeric adhesive sandwiched
between the frame bonding surface and the
backboard bonding surface, wherein the
elastomeric adhesive provides sufficient adhesion
and flexibility to the acrylic backboard and frame
structure bonding surface to be used in the game of
basketball.

THE REJECTIONS
The Examiner relies upon the following as evidence of
unpatentability:
Hankele US 3,809,401 May 7, 1974
Skedeleski US 4,792,316 Dec. 20, 1988
Skedeleski US 4,955,314 Sep. 11, 1990
Chung US 6,056,622 May 2, 2000
Appellant’s Admitted Prior Art that the use of double-sided adhesive
tape to attach backboards to a frame structure was known in the art.
(Spec., p. 2, ll. 3-8)(hereafter “AAPA”).
“Information About Specialty Materials for High Technology
Applications,” Dow Corning® Q3-6093 Silicone Adhesive, © Dow
Corning Corporation 1987. (hereafter “Dow Corning data sheet”).
Ichemco data sheet, Dow Corning® Silicone Pressure Sensitive
Adhesives, web page located at:
http://www.ichemco.it/ENG/tab/siliconepsa.asp (hereafter,
“Ichemco”).

The Examiner has rejected:
(i) claims 1, 2, 5, 6, 14, 15 and 44-53 under 35 U.S.C. § 103(a) as
being unpatentable over the AAPA in view of Chung, Hankele, Skedeleski
‘316, and Skedeleski ‘314, and further in view of the Dow Corning data
sheet;
(ii) claims 7-10 and 16-18 under 35 U.S.C. § 103(a) as being
unpatentable over the AAPA in view of Chung, Hankele, Skedeleski ‘316,
Appeal 2009-000274
Application 09/228,325

4
Skedeleski ‘314, the Dow Corning data sheet, and further in view of Official
Notice taken that the use of glass bead spacers is well known in the art;
(iii) claim 13 under 35 U.S.C. § 103(a) as being unpatentable over the
AAPA in view of Chung, Hankele, Skedeleski ‘316, Skedeleski ‘314, the
Dow Corning data sheet, and further in view of Official Notice taken that the
use of printed images on a backboard is well known in the art; and
(iv) claims 50-53 under 35 U.S.C. § 103(a) as being unpatentable over
the AAPA in view of Ichemco.

ISSUE
Whether the Examiner has adequately supported the conclusion that
the subject matter presented in the claims would have been obvious in view
of the admitted prior art teaching the attachment of a backboard to a
backboard frame using double-sided adhesive tape with a foam center, in
view of various teachings directed to the use of silicone adhesives?

PRINCIPLES OF LAW
A claim is unpatentable under 35 U.S.C. § 103(a) if “the differences
between the subject matter sought to be patented and the prior art are such
that the subject matter as a whole would have been obvious at the time the
invention was made to a person having ordinary skill in the art to which said
subject matter pertains.” The question of obviousness is resolved on the
basis of underlying factual determinations including (1) the scope and
content of the prior art, (2) any differences between the claimed subject
matter and the prior art, (3) the level of skill in the art, and (4) where in
evidence, so-called secondary considerations. Graham v. John Deere Co.,
Appeal 2009-000274
Application 09/228,325

5
383 U.S. 1, 17-18 (1966). See also KSR Int'l Co. v. Teleflex Inc., 550 U.S.
398, 407 (2007) (“While the sequence of these questions might be reordered
in any particular case, the [Graham] factors continue to define the inquiry
that controls.”).
While there must be some articulated reasoning with some rational
underpinning to support the legal conclusion of obviousness, “the analysis
need not seek out precise teachings directed to the specific subject matter of
the challenged claim, for a court can take account of the inferences and
creative steps that a person of ordinary skill in the art would employ.” KSR
Int’l., 550 U.S. at 418.
When 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. For the same reason, if 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.
Id. at 417.

ANALYSIS
Claims 1, 2, 5, 6, 14, 15 and 44-53--Obviousness--AAPA in view of
Chung, Hankele, Skedeleski ‘316, Skedeleski ‘314, and Dow Corning data
sheet
Appellant argues claims 1, 2, 5, 6, 14 and 15 as a group. Additional
arguments for claims 44 and 45; for claims 46 and 47; for claims 48 and 49;
for claims 50 and 51; and for claims 52 and 53, respectively, are presented
Appeal 2009-000274
Application 09/228,325

6
under separate headings in the Appeal Brief. Independent claim 1 will be
taken as representative of the group in which it is included.
Claim 1 differs from the AAPA in that it recites the use of a catalyzed
elastomeric adhesive, which can be a catalyzed silicone adhesive, in lieu of
the prior art use of a double-sided adhesive tape. The AAPA relied on by
the Examiner establishes that it was known in the art at the time of the
present invention to secure a basketball to a backboard using a double-sided
adhesive tape having a foam center. The Examiner, relying on the
disclosure of the use of silicone glue (Chung), epoxy or silicone adhesives
(Hankele), silicone adhesive (Skedeleski ‘316), and silicone adhesive having
a cushioning effect (Skedeleski ‘314), on various articles of sporting goods,
found that,
. . . those knowledgeable in the sporting goods
adhesion art were aware of silicon [sic, silicone]
adhesives and their suitability and advantages
when considering cost, cushioning and superior
adhesive qualities where sporting goods will be
used under severe conditions, such as outdoors.

(Answer 4)(emphasis added).
With the exception of the Skedeleski ‘316 patent making brief
mention of having a silicone adhesive fill a void between a surfboard tip and
a safety tip adhered thereto by the silicone adhesive so as to provide a
cushioning effect (Skedeleski ‘316, col. 2, ll. 59-63), there does not appear
to be any specific discussion of cost, cushioning or superior adhesive
qualities of any of the adhesives or glues disclosed in these references,
relative to any other types of adhesives or other means of attaching or
Appeal 2009-000274
Application 09/228,325

7
bonding objects to one another. As such, the Examiner’s finding stretches
beyond what those references actually evidence was known in the art.
The Examiner concludes, in view of the above finding, that it would
have been obvious to use a silicone adhesive to secure an acrylic backboard
to a backboard frame, in lieu of using a double-sided adhesive tape with a
foam center,
. . . in order to lower production costs and
manufacture a more durable backboard in order to
increase the player’s satisfaction with the product.
Also it would have been obvious . . . to have
sought and selected the most suitable adhesive
from among the equivalent silicone adhesives
available at the time of the invention including
Dow Q3-6093 by the routine optimization
expected by one of skill in the art . . .
(Id.).
This conclusion is not adequately supported by the evidence of record.
The AAPA does not, contrary to the apparent position taken by the
Examiner, evidence that it was generally known in the art that the use of a
double-sided adhesive tape resulted in a costly and time-consuming
production process. Appellant discusses that the use of the double-sided
tape is time and labor intensive, but not in the context that this was
considered to be a problem generally known in the art, rather that the
inventor herein regarded this as being a significant problem. (Spec., p. 2, ll.
9-17). Even if we accept the premise that a person of ordinary skill in the art
would generally be attuned to looking for ways to lower production or
manufacturing costs (see, e.g., Answer 10), the prior art of record does not
establish that the use of a silicone adhesive would necessarily or likely result
in lowered production costs when compared with the use of double-sided
Appeal 2009-000274
Application 09/228,325

8
adhesive tape. The Examiner has not identified, and we are unable to find,
anything in the cited patents, or in the Dow Corning data sheet, that
addresses the cost of using a silicone adhesive as compared with other
attachment or securement means, and, in particular, a double-sided adhesive
tape, whether for uses similar to Appellant’s or otherwise.
The Examiner also asserts, as seen in the above quote, that the use of a
silicone adhesive in lieu of double-sided adhesive tape would result in a
more durable backboard. Again, the prior art of record appears to be devoid
of any persuasive evidence that a person of ordinary skill in the art would
understand this to be the result of making such a substitution. Without
reaching the issue as to whether any of the Chung, Hankele, Skedeleski
‘316, and Skedeleski ‘314 patents do or do not constitute nonanalogous art,
we are not persuaded that any of the references evidence that the use of a
silicone adhesive would result in a durability greater than that obtained when
using double-sided adhesive tape. Similar to the cost aspect discussed
above, the prior art appears to lack a comparison of silicone adhesives to
other attachment means in terms of their effect on adherence of the two
elements joined by the adhesive, or in terms of the overall durability of the
finished product.
The Examiner further advocates that the subject matter of these claims
would have been obvious in view of at least two of the rationales identified
in the KSR case as being potential indicators of obviousness. First, the
Examiner asserts that the claims involve nothing more than a combination of
prior art elements according to known methods, with the obtention of a
predictable result. (Answer 9-10). Second, the claims are asserted to
Appeal 2009-000274
Application 09/228,325

9
involve the application of a known technique to a known device, again with
the obtention of predictable results. (Answer 10-11).
The Examiner posits, with respect to the former, that since Appellant
recognized a problem with the use of double-sided adhesive tape in attaching
backboards to frames, in the form of being time and labor intensive and thus
costly, then so must have others having ordinary skill in the art. This
assumes facts not in evidence. It has been recognized in patent
jurisprudence that it is often the recognition of a problem and the provision
of a solution to that problem that ultimately leads to a conclusion that an
invention is patentable. Here, we find no evidence that the problem was
recognized by persons other than Appellant.
The Examiner has further not pointed to any evidence in the prior art
that it would have been known in the art that the use of a silicone adhesive in
lieu of a double-sided adhesive tape would result in time, labor, and/or cost
savings. Additionally, we cannot accept the Examiner’s apparent position
(see, e.g., Answer 10) that persons of ordinary skill in the art would
somehow recognize double-sided adhesive tape as being one of “various
equivalent attachment means”, in a group that also include adhesives such as
a catalyzed silicone adhesive. Merely asserting that various attachment
means would be seen as being equivalent does not make it so.
The Examiner does note that the Dow Corning Q3-6093 silicone
adhesive is described in the Dow Corning data sheet as having a physical
form in its cured state of “flexible rubber”, and that Appellant notes at page
1 of the Specification that flexibility is required in the bond between the
backboard and support frame so that impact energy can be dissipated.
(Answer 10-11). The Dow Corning silicone adhesive, being a “flexible
Appeal 2009-000274
Application 09/228,325

10
rubber” in cured form, seemingly would be understood by a person having
ordinary skill in the art as having some degree of elasticity, cushioning effect
and energy dissipation capability. There is, however, no indication as to
whether persons of ordinary skill in the art would recognize that it would
have sufficient cushioning and energy dissipative characteristics, or, for that
matter, sufficient adhesion characteristics and shear strength, for example, to
suggest its potential suitability for use in securing a backboard to a
backboard frame. There is further no indication that a “flexible rubber”
cured silicone adhesive would be regarded by persons of ordinary skill in the
art as an equivalent to a double-sided adhesive tape structure having a foam
center, nor that it would provide similar cushioning effects, as asserted by
the Examiner.
Finally, the Examiner’s equivocal assertion to the effect that if it is
known that a silicone adhesive works on a ball or on a surfboard to secure
two items, “the artisan would conclude it might work on securing a
backboard to its frame,” is especially telling. (Answer 9)(emphasis added).
This assertion has, as a corollary, that the silicone adhesive might not work,
and thus itself belies the conclusion that the use of silicone adhesive in lieu
of double-sided adhesive tape would yield a predictable result, as required
by the cited KSR obviousness rationale.
The Examiner’s latter contention, directed to the claimed invention
being a use of a known technique to a known device, appears to
metamorphize into an “obvious to try” contention. (Answer 11)(“Common
sense would indicate that one of ordinary skill in the art would be motivated
to try various adhesives that provide similar cushioning effects at a lower
cost.”). The Examiner here does not even go so far as to assert or conclude
Appeal 2009-000274
Application 09/228,325

11
that a predictable result would be obtained by applying the known technique
of using a silicone adhesive to a known basketball backboard and frame
device. Presumably, then, the Examiner is again asserting that the person of
ordinary skill in that art would conclude that this might work. This again
does not establish that there would be a predictable result in the eyes of
those skilled in the art.
The Examiner’s analysis also does not support that the invention
would fall into the category of being obvious because it is “obvious to try”,
which the court in KSR indicated might be applicable in certain cases. KSR,
550 U.S. at 421. The analysis presented presupposes that silicone adhesives,
as well as possibly other adhesives, have “similar cushioning effects” at a
“lower cost”, as compared with the prior art double-sided adhesive tape. As
we have found above, the record here contains neither persuasive evidence
that silicone or other adhesives have the alleged similar cushioning effects,
nor that the use of silicone or other adhesives would necessarily result in
reduced manufacturing or material costs.
We find ourselves ultimately in essentially the same position as was
the panel in the prior appeal in this application. The Examiner appears to
again be taking the position that, “it would have been obvious to try any
number of prior art adhesives until one possibly arrived at a successful result
where the prior art gives no indication of which parameters are critical and
no direction as to which of many possible choices is likely to be successful.”
(Decision 7). Even with the KSR court’s advising that rigid adherence to a
“teaching, suggestion, motivation” test is not necessary and is, indeed,
improper, we conclude that the Examiner has not succeeded in establishing
that the invention of claim 1 would have been obvious.
Appeal 2009-000274
Application 09/228,325

12
The rejection of claim 1 as being unpatentable over the AAPA in view
of Chung, Hankele, Skedeleski ‘316, Skedeleski ‘314, and the Dow Corning
data sheet, will not be sustained. Similarly, the rejection of claims 2, 5, 6, 14
and 15 grouped with claim 1 will not be sustained. As claims 44-53 were
rejected on the same grounds which we have found to be insufficient in
establishing the obviousness of claim 1, and all recite the use of an adhesive
similar to that set forth in claim 11, the rejection of those claims will also not
be sustained.
Claims 7-10 and 16-18--Obviousness--AAPA in view of Chung, Hankele,
Skedeleski ‘316, and Skedeleski ‘314, the Dow Corning data sheet, and
Official Notice taken that the use of glass bead spacers is well known in the
art
Claims 7-10 depend from claim 1 and claims 16-18 depend from
claim 14. The deficiencies, discussed above, in the evidence and rationale in
support of a conclusion that claims 1 and 14 would have been obvious, are
not remedied by the taking of Official Notice that the use of glass bead
spacers is well known in the art. The rejection of claims 7-10 and 16-18
under 35 U.S.C. § 103(a) will thus not be sustained.
Claim 13--Obviousness--AAPA in view of Chung, Hankele, Skedeleski ‘316,
and Skedeleski ‘314, the Dow Corning data sheet, and Official Notice taken
that the use of printed images on a backboard is well known in the art
Claim 13 depends from claim 1. The deficiencies, discussed above, in
the evidence and rationale in support of a conclusion that claim 1 would
have been obvious, are not remedied by the taking of Official Notice that the

1 Claim 44 calls for the use of a “catalyzed silicone-based adhesive”, claims
46 and 48 (which, incidentally, appear to be identical in scope) call for the
use of a “catalyzed elastomeric adhesive”, and claims 50 and 52 call for the
use of a “silicone-based adhesive”. (Appeal Br., Claims Appendix).
Appeal 2009-000274
Application 09/228,325

13
use of printed images on a backboard is well known in the art. The rejection
of claim 13 under 35 U.S.C. § 103(a) will thus not be sustained.
Claims 50-53--Obviousness--AAPA in view of Ichemco
The Examiner relies on the Ichemco reference as disclosing silicone
adhesives. (Answer 7). From this, and the admitted prior art disclosing the
use of a double-sided adhesive tape to attach a backboard to a frame
structure, the Examiner concludes that,
[i]t would have been obvious to one of ordinary
skill in the art to have selected any one of several
equivalent adhesives, including the Ichemco
silicon adhesive base [sic] on cost and design
considerations. The mere selection of a well
known adhesive and following the vendor’s use
instruction does not constitute a novel and
patentable feature.
(Answer 7-8)(emphasis added).
This analysis and reasoning is flawed for much the same reasons as
are discussed above with respect to the rejection of claim 1. To the extent
that it is material to this analysis, neither the Ichemco reference nor the
AAPA, nor anything else referenced by the Examiner, establishes that
persons of ordinary skill in the art would regard the silicone adhesives
disclosed in Ichemco as being equivalent to a double-sided adhesive tape, let
alone a double-sided adhesive tape having a foam center. There is further no
persuasive evidence drawn from the prior art that the use of one of the
Ichemco silicone adhesives would result in cost reductions over the use of
the double-sided tape. Finally, the Examiner has not specified what “design
considerations” would actually be on the drawing board, were one of
ordinary skill in the art to consider doing away with the double-sided
adhesive tape in favor of some other attachment means.
Appeal 2009-000274
Application 09/228,325

14
The rejection of claims 50-53 under 35 U.S.C. § 103(a) over the
AAPA in view of Ichemco will not be sustained.

CONCLUSIONS
The Examiner has incorrectly concluded that the subject matter of
claims 1, 2, 5-18 and 44-53 would have been obvious in view of the
references cited in the foregoing discussions.

DECISION
The decision of the Examiner to reject claims 1, 2, 5-18 and 44-53 is
reversed.

REVERSED

mls

WORKMAN NYDEGGER
60 EAST SOUTH TEMPLE
1000 EAGLE GATE TOWER
SALT LAKE CITY, UTAH 84111