Ex Parte Thiele et al

Board of Patent Appeals and Interferences

Jun 30, 2009

10884575 (B.P.A.I. Jun. 30, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte JOHN L. THIELE
and STEVEN A. DARMER
____________

Appeal 2008-005085
Application 10/884,575
Technology Center 1700
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Decided:1 June 30, 2009
____________

Before JAMES T. MOORE and ALLEN R. MACDONALD, Vice Chief
Administrative Patent Judges, and ADRIENE LEPIANE HANLON,
CHUNG K. PAK, and KAREN M. HASTINGS, Administrative Patent
Judges.

PAK, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING
Appellants request rehearing of the panel Decision of March 17, 2009
(“Decision”) wherein the panel sustained the Examiner's rejections of claims
25 through 28 under 35 U.S.C. § 102(e) as anticipated by the disclosure of
McKay and claims 17 and 20 under 35 U.S.C. § 103(a) as unpatentable over

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, begins to run from the decided date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).

Appeal 2008-005085
Application 10/884,575

the combined disclosures of McKay and Cho, but reversed the Examiner’s
rejection of claims 1 through 16, 18, 19, 21 through 24, and 35 under 35
U.S.C. § 102(e) as anticipated by the disclosure of McKay.
Appellants’ request for rehearing is limited to the panel’s affirmance
of the Examiner’s rejection of claims 25 through 28 under 35 U.S.C. §
102(e) as anticipated by the disclosure of McKay. (See Request for
Rehearing 1-4). According to Appellants, the Board has overlooked several
of the features recited in claim 25, which are not taught by McKay. (Request
for Rehearing 1-3).
Claim 25 requires that its roll of contaminant removal tape has, inter
alia,
a set of discrete non-adhesive zones provided along the first
major surface of the tape, wherein respective ones of the non-
adhesive zones are registered with respective ones of the lines
of perforations such that with respect to each pair of adjacent
inner and outer sheets, the corresponding non-adhesive zone
defines a tab portion on the inner sheet and a release portion on
the outer sheet, the registration of the non-adhesive zones with
the lines of perforations characterized by, in wound form, the
trailing end of the outer sheet is covered and the leading end of
the outer sheet overlies the release portion of the outer sheet.
[Emphasis added.]
Claims 26 through 28 also include these features recited in claim 25
since they are dependent on claim 25 (Request for Rehearing 4). However,
as correctly pointed out by Appellants at page 13 of the Appeal Brief and
page 3 of the Request for Rehearing, McKay does not teach at least the
limitation “the leading end of the outer sheet overlies the release portion of
the outer sheet” in claims 25 through 28 within the meaning of 35 U.S.C. §
102(e).
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Appeal 2008-005085
Application 10/884,575

Accordingly, we grant Appellants’ request for rehearing to modify the
Decision to the extent that the Examiner’s § 102(e) rejection of claims 25
through 28 is reversed.
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).

GRANTED

tc

3M INNOVATIVE PROPERTIES COMPANY
P.O. BOX 33427
ST. PAUL, MN 55133-3427

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