Ex Parte Abe et al

Patent Trial and Appeal Board

Nov 29, 2018

13521903 (P.T.A.B. Nov. 29, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/521,903 09/20/2012
32692 7590 12/03/2018
3M INNOVATIVE PROPERTIES COMPANY
PO BOX 33427
ST. PAUL, MN 55133-3427
FIRST NAMED INVENTOR
Hidetoshi Abe
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
65868US004 6326
EXAMINER
LOWREY, DANIEL D
ART UNIT PAPER NUMBER
1787
NOTIFICATION DATE DELIVERY MODE
12/03/2018 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
LegalUSDocketing@mmm.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte HIDETOSHI ABE, YORINOBU TAKAMATSU,
RONALD S. STEELMAN, NAOYUKI TORIUMI, and
MICHAEL P. DANIELS
Appeal2018-000840
Application 13/521,903
Technology Center 1700
Before TERRY J. OWENS, JENNIFERR. GUPTA, and
DEBRA L. DENNETT, Administrative Patent Judges.
DENNETT, Administrative Patent Judge.
DECISION ON APPEAL 1
STATEMENT OF THE CASE
Appellants2 appeal under 35 U.S.C. § 134(a) from a rejection of
claims 1-3 and 9-15. 3 We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.
1 In our Opinion, we refer to the Specification filed July 12, 2012 ("Spec.");
the Final Office Action mailed April 15, 2016 ("Final Act."); the Appeal
Brief filed May 9, 2017 ("Br."); and the Examiner's Answer mailed
August 22, 2017 ("Ans."). Appellants did not file a Reply Brief.
2 Appellants identify 3M Company and 3M Innovative Properties Company
as the real parties in interest. Br. 2.
3 Claims 5-7 stand withdrawn from consideration. Br. 2.
Appeal2018-000840
Application 13/521,903
The claims are directed to marking films. Such films may be used,
e.g., on the interior or exterior of buildings or vehicles, and as facing
materials for furniture. Spec. 1, 11. 6-8. Claim 1, reproduced below from
the Claims Appendix of the Appeal Brief with the disputed limitation
italicized, is illustrative of the claimed subject matter:
1. A marking film comprising:
a film layer comprising a polymer blend of a first
(meth)acrylic polymer having a glass transition temperature
between about 30 degrees C and about 180 degrees C and a
second (meth)acrylic polymer having a glass transition
temperature higher than -80 degrees C and less than 30
degrees C; and
an adhesive layer,
wherein one of the first and second (meth)acrylic
polymers comprises a carboxylic group and the other comprises
at least one ofN,N-dimethyl(meth)acrylamide, N,N-
diethyl( meth )acrylamide, N-isopropyl( meth )acrylamide, N-
octyl( meth )acrylamide, hydroxyethyl( meth )acrylamide, and
diacetone( meth )acrylamide; and
wherein the first (meth)acrylic polymer and the second
(meth)acrylic polymer are present in a mass ratio of less than
or equal to 5:2 and greater than 1:1 and each of the first
(meth)acrylic polymer and the second (meth)acrylic polymer
have a weight average molecular weight of at least 100,000.
REFERENCES
The Examiner relies on the following prior art in rejecting the claims
on appeal:
Xia et al. ("Xia")
Takamatsu et al.
("Takamatsu")
US 2004/0202879 Al
US 2006/0234076 Al
2
Oct. 14, 2004
Oct. 19, 2006
Appeal2018-000840
Application 13/521,903
REJECTIONS
The Examiner maintains and Appellants seek review of the following
rejections under pre-AIA 35 U.S.C. § 103(A): (1) claims 1-3, 9, 10, 12, and
13 over Xia; and (2) claims 1-3 and 9-15 over Xia further in view of
Takamatsu. Final Act. 2-10; Br. 5-7.
OPINION
Rejection of claims 1-3, 9, 10, 12, and 13 as obvious over Xia
We need only address claim 1, the sole independent claim.
The Examiner finds that claim 1 is obvious over Xia. Final Act. 2.
The Examiner finds that Xia discloses an adhesive composition that may be
layered on another adhesive as a multilayered film. Id. ( citing Xia ,r,r 9-11,
24). The adhesive composition comprises a high Tg polymer additive and a
pressure sensitive adhesive (PSA). Id. (citing Xia ,r,r 18-19). The Examiner
finds that at least Example 9 of Xia discloses a first (meth)acrylic polymer
comprising acrylic acid and a second (meth)acrylic polymer comprising
N,N-dimethylacrylamide. Id. at3 (citingXia,r,r 146,130,131,136,137,
Tables 1 and 2). The Examiner finds that the high Tg polymer additive and
the PSA have weight average molecular weights of greater than 100,000. Id.
(citing Xia ,r,r 41, 136, 137, Table 2). The Examiner finds that Xia does not
disclose that the multilayer article of Xia is a marking film.
Regarding relative amounts of high Tg polymer and PSA component,
Xia discloses:
[T]he PSA component and high Tg polymer can be included in
the adhesive composition in relative amounts that will provide a
desired combination of pressure sensitive adhesive properties,
adhesive bond properties, and optical clarity, with stability of
these properties and clarity over time during use. In general,
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Application 13/521,903
... less than about 50 parts by weight high Tg polymer based
on 100 parts by weight total PSA component and high Tg
polymer can provide a compatibilized adhesive composition
that will have acceptable optical clarity.
Xia ,r 86. Xia further discloses: "[a]t the low end, ... useful amounts can
be from at least about 5 parts by weight high Tg polymer based on 100 parts
by weight total high Tg polymer and PSA component." Id.
Based on the above disclosure, the Examiner finds that Xia teaches
that the mass ratio of high Tg polymer additive to PSA may be from 1: 1 to
5:95. Final Act. 4 (citing Xia ,r 86). The Examiner finds that there is only a
"slight" difference in the range of ratios claimed in claim 1 ( the first [high
Tg] polymer and the second [low Tg] polymer are present in a mass ratio of
less than or equal to 5: 2 and greater than 1: 1) and those disclosed in Xia. Id.
The Examiner concludes that one of ordinary skill in the art would have
found the "slight" difference is mass ratios to have been an obvious variant
of the claimed invention. Id. at 5.
Appellants argue that Xia teaches a composition having a minority of
high Tg component and a majority of PSA, but claim 1 requires the
composition to comprise a majority of high Tg component. Br. 6.
Appellants, therefore, argue that Xia does not teach or suggest the required
mass ratio.
Claim 1 recites: "wherein the first (meth)acrylic polymer [high Tg
polymer] and the second (meth)acrylic polymer [low Tg polymer] are
present in a mass ratio of less than or equal to 5 :2 and greater than 1: 1."
Br. 8 (Claims App'x) (emphasis added). In contrast, Xia discloses the ratio
of high Tg polymer to PSA is "less than about 50 parts by weight high Tg
polymer based on 100 parts by weight total PSA component and high Tg
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Application 13/521,903
polymer." Xia ,r 86 (emphasis added). Thus, Xia does not teach a ratio of
1: 1, as the Examiner finds, but rather, less than 1: 1.
The question, then, is whether the difference between the claimed
ratio and Xia's ratio, which neither overlap nor abut each other, are so minor
as to lead the skilled artisan to expect the claimed composition to have the
same properties as Xia's composition. See In re Brandt, 886 F.3d 1171,
1178 (Fed. Cir. 2018) (holding claims obvious where ranges abutted and
appellants conceded that there was no meaningful distinction between the
claimed range and prior art range). We are not persuaded that the evidence
is sufficient to support obviousness of claim 1 in this case.
First, Xia is unambiguous in teaching that a majority of low Tg
polymer is needed to obtain the desired properties. Xia ,r 86 ( disclosing that
a compatibilzed adhesive composition is obtained with a ratio (parts by
weight) of high Tg polymer:PSA polymer that is lower than 50:50, to as low
as 5:95). Claim 1 requires the ratio be greater than 1: 1 (greater than 50:50).
Second, Appellants contend that the opposite situation, i.e., a majority
of high Tg polymer and a minority of low Tg polymer, is required to obtain
a composition with high tensile strength without brittleness (loss of tensile
elongation). Br. 5. Appellants direct us to Table 3 of the Specification as
support for their position. Id. Although the data provided is not extensive,
Table 3 supports that polymer blends with a ratio of high Tg polymer to low
Tg polymer of 1: 1 or less have tensile strength of only 20% to 30% of that of
polymer blends with a ratio greater than 1: 1. Id. at Table 3.
Third, we are provided with nothing more than a conclusory statement
that one of ordinary skill would have found the mass ratio in claim 1 to be an
obvious variant of the mass ratio disclosed in Xia. See Final Act. 5;
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Ans. 10-11. The Examiner presents no evidence or argument that Xia
teaches a ratio of 1: 1 or greater would be appropriate and have the properties
desired. See Brandt, 886 F.3d at 1777. Instead, the Examiner answers that
"'about 50' [as disclosed in Xia] includes numbers such as 51, 52, 54 etc."
and Xia's disclosure of "'less than about 50 parts by weight high Tg polymer
based on 100 parts by weight total PSA component and high Tg polymer'
may be reasonably interpreted as including ratios such as 5 3 :4 7." Ans. 11.
We find no support for the Examiner's conclusion that "less than about"
50:50 includes 53:47. See id. This appears to be speculation based on
hindsight.
When an examiner establishes a prima facie case of obviousness, the
burden shifts to the applicant to come forward with rebuttal evidence or
argument. In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992). Only then
must the applicant rebut the examiner's showing. See In re Mouttet, 686
F.3d 1322, 1330 (Fed. Cir. 2012). Where, as here, no prima facie showing is
made, the obviousness rejection cannot stand.
We do not sustain the rejection of claims 1-3, 9, 10, 12, and 13 over
Xia.
Rejection of claims 1-3 and 9-15 over Xia in view of Takamatsu
The Examiner makes the same findings regarding Xia for this
rejection as made for the rejection over Xia alone. See Final Act. 6-8. The
Examiner finds that Takamatsu discloses a (meth)acrylic film formed of a
blend of high Tg and low Tg (meth)acrylic polymers. Id. at 8. The
Examiner finds that Takamatsu discloses a ratio of high Tg (meth)acrylic
polymer to low Tg (meth)acrylic polymer up to 90: 10. Id. ( citing Takamatsu
,r,r 11, 61, 63). The Examiner determines that it would have been obvious to
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one of ordinary skill in the art at the time of the invention to adjust the high
Tg polymer to PSA ratios of Xia to the ranges of Takamatsu "in order to
gain the benefits of increased tensile strength while retaining sufficient
elongation characteristics at low temperature as taught by Takamatsu." Id.
at 8-9.
The Examiner's reasoning to combine references in the second
rejection is insufficiently supported by a rational underpinning. See In re
Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006). Xia concerns adhesive
compositions containing a mixture of PSA, a high Tg polymer, and a
crosslinker to form a compatibilized blend that is optically clear. Xia
Abstract. In contrast, Takamatsu relates to (meth)acrylic films that can be
used as a base material of an adhesive tape in interior and exterior materials
for buildings, facing materials for fittings, and interior and exterior materials
for vehicles because it has excellent elongation characteristics and high
tensile strength. Takamatsu ,r 1. One of ordinary skill in the art at the time
of the invention would have no motivation to look for ways to increase
tensile strength and retain elongation characteristics in Xia's optically clear
adhesive. The Examiner's conclusion says no more than that a skilled
artisan, once presented with the two references, would have understood that
they could be combined. See Personal Web Techs., LLC v. Apple, Inc., 848
F.3d 987, 993 (Fed. Cir. 2017). This fails to provide motivation to select Xia
and Takamatsu and combine them to arrive at the claimed invention. See
Belden Inc. v. Berk-Tek LLC, 805 F.3d 1064, 1073 (Fed. Cir. 2015)
("[O]bviousness concerns whether a skilled artisan not only could have
made but would have been motivated to make the combinations or
modifications of prior art to arrive at the claimed invention."). "[W]e
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cannot allow hindsight to be the thread that stitches together prior art patches
into something that is the claimed invention." Metalcraft of Mayville, Inc. v.
The Toro Co., 848 F.3d 1358, 1367 (Fed. Cir. 2017).
We do not sustain the rejection of claims 1-3 and 9-15 over Xia in
view of Takamatsu.
DECISION
The rejections of claims 1-3 and 9-15 are reversed.
REVERSED
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