Ex Parte Iida

Patent Trial and Appeal Board

Dec 20, 2012

10802868 (P.T.A.B. Dec. 20, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte HIROYUKI IIDA
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Appeal 2010-012295
Application 10/802,868
Technology Center 2600
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Before CARL W. WHITEHEAD, JR., ERIC S. FRAHM, and ANDREW J.
DILLON, Administrative Patent Judges.

FRAHM, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2009-013602
Application 10/301,713

2
STATEMENT OF THE CASE
Introduction
Appellant appeals under 35 U.S.C. § 134(a) from a final rejection of
claims 1, 2, 4, and 6-11. Claims 3 and 5 have been canceled. We have
jurisdiction under 35 U.S.C. § 6(b). We affirm.
Appellant’s Disclosed Invention
Appellant discloses a sliding member used for rotating recording
media such as discs and drive units thereof (Spec. 1:1-3). The sliding
member includes a slidable substrate 1, a barrier layer 3, and a pressure-
sensitive adhesive layer 2 (Fig. 1).
Exemplary Claim
An understanding of the invention can be derived from a reading of
exemplary claim 1, which is reproduced below with emphasis added:
1. A sliding member comprising a slidable substrate; a pressure-
sensitive adhesive layer provided on one side thereof; and a barrier layer,
wherein the slidable substrate is a porous form having a porosity of
20-70% and comprises an ultrahigh molecular weight polyethylene; and
wherein the barrier layer is provided between the slidable substrate
and the pressure-sensitive adhesive layer.

The Examiner’s Rejections
(1) The Examiner rejected claims 1, 2, 4, 6, 7, and 11 under 35 U.S.C.
§ 103(a) as being unpatentable over the combination of Nagai (JP 08-
031128) and Tsubouchi (JP 2002-166401). Ans. 3-8
(2) The Examiner rejected claims 8-10 under 35 U.S.C. § 103(a) as
being unpatentable over the combination of Nagai, Tsubouchi, and
Nakanishi (JP 08-034959). Ans. 8-9.
Appeal 2009-013602
Application 10/301,713

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Appellant’s Contentions1
(1) Appellant argues (App. Br. 8-12; Reply Br. 4-6) that the Examiner
erred in rejecting claim 1 over the combination of Nagai and Tsubouchi for
numerous reasons including but not limited to:
(a) Nagai fails to disclose a barrier layer (App. Br. 9);
(b) Nagai’s laminate structure of a member for optical disc protection
is different from the sliding member recited in claim 1 because Nagai uses a
double-coated pressure sensitive adhesive tape by applying the pressure
sensitive adhesive to both sides of the substrate (App. Br. 10);
(c) Tsubouchi fails to teach that all adhesive layers should be provided
with a barrier layer, or that all of the adhesive layers sink/impregnate a
porous substrate (Reply Br. 5); and
(d) there is no motivation to combine Tsubouchi with Nagai because
Nagai teaches the adhesive is applied to the separator and dried, Tsubouchi
is directed to a method of making plywood, and if the adhesive in Nagai is
dry, then there is no concern with adhesive infiltrating the pores of the sheet
or with a barrier layer for preventing adhesive from infiltrating pores of the
sheet (App. Br. 11).
(2) Appellant contends (App. Br. 12) that the Examiner erred in
rejecting claims 8-10 under the combination of Nagai, Tsubouchi, and

1 Separate patentability is not argued for claims 2, 4, 6, 7, and 11 in the
Appeal Brief (App. Br. 12), and Appellant argues claims 2, 4, 6, 7, and 11
based on the same reasons provided for claim 1 from which these claims
depend (App. Br. 12). Appellant also presents new arguments in the Reply
Brief for claim 6 (Reply Br. 5-6), however we do not consider these
arguments as they are untimely, were not necessitated by new grounds made
in the Examiner’s Answer, and could have been presented in the Appeal
Brief.
Appeal 2009-013602
Application 10/301,713

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Nakanishi:
(a) Nakanishi fails to cure the deficiencies of Nagai and Tsubouch
(App. Br. 12); and
(b) for the same reasons as provided for claim 1 regarding the
obviousness rejection over the combination of Nagai and Tsubouchi (App.
Br. 12).
Principal Issue on Appeal
Did the Examiner err in rejecting claims 1, 2, 4, and 6-11 as being
obvious because the base combination of Nagai and Tsubouchi fails to teach
or suggest the sliding member including a “pressure-sensitive adhesive
layer” and a “barrier layer,” as recited in claim 1?

ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellant’s
arguments (App. Br. 8-12; Reply Br. 4-6) that the Examiner has erred. We
disagree with Appellant’s conclusions. We adopt as our own (1) the
findings and reasons set forth by the Examiner in the action from which this
appeal is taken, and (2) the reasons set forth by the Examiner in the
Examiner’s Answer in response to Appellant’s Appeal Brief (see Ans. 3-16).
We concur with the conclusions reached by the Examiner, and highlight and
address specific findings and arguments for emphasis as follows.
We agree with the Examiner’s broad but reasonable interpretation of
claim 1 and the phrase “pressure-sensitive adhesive layer” as encompassing
either a double-sided pressure-sensitive adhesive (e.g., as disclosed in
Nagai) or a single-sided pressure-sensitive adhesive (Ans. 10). We agree
with the Examiner (Ans. 9-12) that while Nagai has double-sided pressure
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Application 10/301,713

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sensitive adhesives, as opposed to a single-sided pressure sensitive adhesive;
claim 1 does not preclude a double-sided pressure sensitive adhesive.
We agree with the Examiner (Ans. 4 and 13) that Tsubouchi discloses
a barrier layer 2 that prevents adhesive from infiltrating into a surface of a
porous substrate, and as such it would have been obvious to provide a barrier
layer between Nagai’s slidable substrate 1 and pressure-sensitive adhesive
layer 2.
We also agree with the Examiner’s articulated reasoning (Ans. 15)
regarding the motivation for combining Nagai and Tsubouchi, and that even
though Nagai’s coating liquid may dry, it still is adhesive and must remain
tacky to function for its intended purpose (Ans. 15).
Appellant’s argument (Reply Br. 5) that Tsubouchi fails to teach that
all adhesive layers should be provided with a barrier layer, or that all of the
adhesive layers sink/impregnate a porous substrate is not persuasive because
this argument is not commensurate in scope with the language of claim 1,
which merely recites one pressure-sensitive adhesive layer and one barrier
layer.
In view of the foregoing, we will sustain the Examiner’s rejection of
claims 1, 2, 4, 6, 7, 11 rejected under 35 U.S.C. § 103(a) over combination
of Nagai and Tsubouchi because (i) claim 1 does not preclude double-sided
pressure sensitive adhesives, and (ii) there is motivation to combine
Tsubouchi with Nagai.
We will also sustain the Examiner’s rejection of claims 8-10 rejected
under 35 U.S.C. § 103(a) over combination of Nagai, Tsubouchi, and
Nakanishi for the same reasons as given for claim 1, and because Appellant
has not addressed the merits of claims 8-10 in the briefs.
Appeal 2009-013602
Application 10/301,713

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CONCLUSIONS
(1) The Examiner did not err in rejecting claims 1, 2, 4, 6, 7, and 11 as
being unpatentable under 35 U.S.C. § 103(a) over the combination of Nagai
and Tsubouchi because the combination of references teach or suggest the
sliding member including a “pressure-sensitive adhesive layer” and a
“barrier layer,” as recited in claim 1.
(2) Appellant has not shown that the Examiner erred in rejecting
claims 8-10 over the combination of Nagai, Tsubouchi, and Nakanishi, or
that the combination of references fails to teach or suggest the limitations at
issue.

DECISION
The Examiner’s rejections of claims 1, 2, 4, and 6-11 are affirmed.
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)(iv).

AFFIRMED

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