HITACHI CHEMICAL COMPANY, LTD.

Patent Trials and Appeals Board

Apr 3, 2020

14403588 - (D) (P.T.A.B. Apr. 3, 2020)

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.
14/403,588 11/25/2014 Megumi Kodama 20374-134877 4159
42798 7590 04/03/2020
FITCH, EVEN, TABIN & FLANNERY, LLP
120 South LaSalle Street, Suite 2100
Chicago, IL 60603-3406
EXAMINER
NORDMEYER, PATRICIA L
ART UNIT PAPER NUMBER
1788
MAIL DATE DELIVERY MODE
04/03/2020 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 MEGUMI KODAMA, TAKAHIRO TOKUYASU,
and SHOUTA SUGAI
____________

Appeal 2019-001916
Application 14/403,588
Technology Center 1700
____________

Before JEFFREY T. SMITH, DONNA M. PRAISS, and
MERRELL C. CASHION, JR., Administrative Patent Judges.

CASHION, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from a Non-Final
Office Action, dated February 20, 2018, rejecting claims 1–7 and 9–11.
Appeal Br. 42. An oral hearing was held on March 17, 2020.3 We have
jurisdiction under 35 U.S.C. § 6(a).

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies the real party in interest as Hitachi
Chemical Company, Ltd. Appeal Br. 1.
2 We refer to the Appeal Brief filed August 20, 2018 as “Appeal Br.”
throughout our opinion.
3 A written transcript of the oral hearing will be entered into the record when
the transcript is made available.

Appeal 2019-001916
Application 14/403,588

2
We REVERSE.
The invention relates to a roll in which an adhesive tape is wound on
the winding core. Spec. ¶ 1. Claim 1 illustrates the invention and is
reproduced below from the Claims Appendix to the Appeal Brief:
1. A roll, comprising:

a winding core which has a cylindrical shape; and

an adhesive tape comprising a plurality of adhesive
layers provided on an elongated base film in a longitudinal
direction of the base film, adjacent adhesive layers in the
longitudinal direction of the base film being separated by a
separation distance, the adhesive tape being wound around the
winding core in multiple layers, the wound adhesive tape
having an inner tape layer and an outer tape layer adjacent to
each other in a radial direction of the winding core,

wherein an outer diameter of the winding core is of a
dimension such that the adhesive layer provided on the inner
tape layer and the adhesive layer provided on the outer tape
layer are offset by 55 mm or less in a circumferential direction
of the winding core.

Appellant requests review of the Examiner’s rejection of claims 1–7
and 9–11 under 35 U.S.C. § 103(a) as unpatentable over Furuya (JP 2007-
002 l73 A, published January 11, 2007, and relying on an English machine
translation dated May 11, 2017). Appeal Br. 4; Non-Final Action 2.4

4 We refer to the Examiner’s Non-Final Office Action dated February 20,
2018, hereinafter “Non-Final Action” or “Non-Final Act.,” for the
Examiner’s discussion of the prior art.
Appeal 2019-001916
Application 14/403,588

3
OPINION
After review of the respective positions Appellant presents in the
Appeal Brief and the Examiner presents in the Non-Final Office Action and
the Answer, we REVERSE the Examiner’s rejection of claims 1–7 and 9–11
under 35 U.S.C. § 103(a) for the reasons Appellant presents. We add the
following for emphasis.
Claim 15
Claim 1 recites a roll comprising a winding core and adhesive tape
wound around the winding core in multiple layers, the wound adhesive tape
having an inner tape layer and an outer tape layer adjacent to each other in a
radial direction of the winding core, wherein an outer diameter of the
winding core is of a dimension such that the adhesive layer provided on the
inner tape layer and the adhesive layer provided on the outer tape layer are
offset by 55 mm or less in a circumferential direction of the winding core.
We refer to the Examiner’s Non-Final Action for a complete
statement of the rejection. Non-Final Act. 3–7. Briefly, the Examiner finds
that Furuya discloses a roll comprising a winding core and adhesive tape
wound around the winding core that differs from the claimed invention in
that Furuya does not disclose the claimed winding configuration. Non-Final
Act. 3–4.
The Examiner determines that it would have been obvious for one
skilled in the art to calculate the outer diameter of the winding core using the
simple geometry equation of C=2πr in combination with Furuya’s thickness
of the layers of the adhesive tape and the spacing between the adjacent

5 We limit our discussion to independent claim 1.
Appeal 2019-001916
Application 14/403,588

4
adhesive layers to determine the desired diameter for the winding core that
will result in a circumferential offset of 55 mm or less between an inner
adhesive layer and an outer adhesive layer. Non-Final Act. 5–6.
Appellant argues that Furuya does not disclose any means for
controlling the outer diameter of the winding core to be of a dimension such
that the adhesive layer provided on the inner tape layer and the adhesive
layer provided on the outer tape layer are offset by 55 mm or less. Appeal
Br. 6. According to Appellant, absent impermissible hindsight, the
Examiner does not provide an adequate explanation of how one skilled in
the art would modify Furuya by using the equation C=2πr to arrive at the
claimed invention. Id. at 8–9.
We agree with Appellant that there is reversible error in the
Examiner’s determination of obviousness.
The Examiner bears the initial burden of presenting a prima facie case
of obviousness. In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992).
“[R]ejections on obviousness grounds cannot be sustained by mere
conclusory statements; instead, there must be some articulated reasoning
with some rational underpinning to support the legal conclusion of
obviousness.” In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006), quoted with
approval in KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). The
fact finder must be aware “of the distortion caused by hindsight bias and
must be cautious of arguments reliant upon ex post reasoning.” KSR, 550
U.S. at 421 (citing Graham v. John Deere Co., 383 U.S. 1, 36 (1966)
(“warning against a ‘temptation to read into the prior art the teachings of the
invention in issue’”)).
Appeal 2019-001916
Application 14/403,588

5
The Examiner’s rejection is based on an assumption that applying
simple geometric equations would lead one skilled in the art to the claimed
offset distance between an inner adhesive layer and an outer adhesive layer
wound around a common winding core. While the Examiner’s general
proposition appears possible, the Examiner does not explain adequately why
one skilled in the art would arrive at the claimed offset of 55 mm or less.
The Examiner has not provided an adequate technical explanation with the
requisite rational underpinning of why or how one skilled in the art, absent
impermissible hindsight, would have arrived at the claimed offset distance
from Furuya’s teachings. Thus, the Examiner has not made a prima facie
case of obviousness.
Accordingly, we reverse the Examiner’s prior art rejection of claims
1–7 and 9–11 under 35 U.S.C. § 103(a) for the reasons Appellant presents
and we give above.

CONCLUSION
In summary:

Claims
Rejected 35 U.S.C. § Reference/Basis Affirmed Reversed
1–7, 9–11 103(a) Furuya 1–7, 9–11

REVERSED