Appeal No. 2003-0459
Application 08/727,328
applied reference directed to a biaxially stretched polypropylene tape, not only teaches much
smaller notches than that claimed, but also teaches notches useful for a purpose different from
that claimed (i.e., notches that can be used with a conventional serrated cutting edge or
equivalent cutting edge3).
Under these circumstances, we are constrained to agree with the appellants that the
examiner has not demonstrates that the optimization of prior art notches for the prior art purpose
would result in the claimed double-stick, biaxially stretched polypropylene carpet tape having a
series of continuous toothed notches having a particular height. See In re Shetty, 566 F.2d 81,
195 USPQ 753 (CCPA 1977); see also In re Sebek, 465 F.2d 904, 907, 175 USPQ 93, 95 (CCPA
1972) (“Where, as here, the prior art disclosure suggests the outer limits of the range of suitable
values, and that the optimum resides within that range, and where there are indications elsewhere
that in fact the optimum should be sought within that range, the determination of optimum
values outside that range may not be obvious.”). One of ordinary skill in the art interested in
using micro-notches of the type useful for Johnson’s purpose would not have been led to make
the claimed double-stick, biaxially stretched polypropylene carpet tape.
Moreover, the examiner’s further reliance on Darbo and Heinzelman does not remedy the
deficiencies indicated above. We initially observe that neither Darbo nor Heinzelman is directed
to a biaxially stretched polypropylene tape, much less the claimed double-stick biaxially
stretched polypropylene carpet tape. We also observe that Darbo and Heinzelman not only do
3 During the hearing dated July 15, 2003, the examiner acknowledged that the “conventional serrated cutting edge or
dispensing edge” disclosed in Johnson is a serrated cutting edge or equivalent cutting edge.
4
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