Ex Parte Chartrel et al

Patent Trials and Appeals Board

Jun 25, 2019

13977096 - (D) (P.T.A.B. Jun. 25, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/977,096 06/28/2013 Jean Francois Chartrel
23599 7590 06/27/2019
MILLEN, WHITE, ZELANO & BRANIGAN, P.C.
2200 CLARENDON BL VD.
SUITE 1400
ARLINGTON, VA 22201
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.
HIRSCH-0054 2563
EXAMINER
VAZQUEZ, ELAINE M
ART UNIT PAPER NUMBER
1788
NOTIFICATION DATE DELIVERY MODE
06/27/2019 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):
docketing@mwzb.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JEAN FRANCOIS CHARTREL, DAVID GOUBARD,
NICOLAS SAJOT, and JOHAN GERRIT JAN DEJONGE
Appeal2018-007067
Application 13/977 ,096
Technology Center 1700
Before JEFFREY T. SMITH, MICHAEL G. MCMANUS, and
MERRELL C. CASHION, JR., Administrative Patent Judges.
CASHION, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants 1 appeal under 35 U.S.C. § 134(a) from a final rejection of claims
52-55, 64, and 65. We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.
1 Bostik, S.A., La Plaine Saint Denis (FR) is identified as the real party in interest.
App. Br. 1.
Appeal2018-007067
Application 13/977 ,096
The invention is generally directed to a self-adhesive article comprising at
least a substrate and an adhesive layer wherein the coating weight of said adhesive
layer is between 600 and 1500 g/m2. Spec. 9. Independent claim 52 is illustrative
of the subject matter claimed and is reproduced below:
52. Self-adhesive article comprising at least a substrate and an
adhesive layer, wherein the coating weight of said adhesive layer is
between 600 and 1500 g/m2, wherein the adhesive layer was applied
in one step, said adhesive layer being a cured adhesive composition
comprising a silyl-containing polymer, a tackifying resin and a
catalyst, and
wherein the self-adhesive article is obtained by a process
compnsmg:
a) conditioning an adhesive composition comprising at least a
silyl-containing polymer, a tackifying resin and a catalyst, at a
temperature of between 20 and 160°C;
b) coating in a single step the adhesive composition onto:
b 1) at least a part of the substrate; or
b2) onto a non-sticking support;
c) submitting the article obtained at step b) to a temperature
between 20 and 200°C and to a humidity level characterized by
an atmosphere in which between 5 and 90% of the molecules
are water molecules to obtain the adhesive layer; and
if b2) is chosen, then
d) depositing the substrate onto the adhesive composition
before step c) or onto the adhesive layer after step c ),
wherein the self-adhesive article has adhesion to a surface
characterized by a shear resistance, determined at ambient
temperature and under 1 kg, of higher than 1 day.
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Appeal2018-007067
Application 13/977 ,096
Appellants request review of the following rejections from the Examiner's
Final Office Action:
I. Claims 52-55 rejected under pre-AIA 35 U.S.C. § I03(a) as
unpatentable over Fujimoto (EP 1715015 Al, published October 25,
2006) in view of Hagan (Hagan, J.W. and Kenneth C. Stueben,
"Pressure-Sensitive Adhesives" in Adhesives in manufacturing,
Gerald L. Schneberger, ed., Marcel Dekker, Inc., 1983) and Skeist
(Skeist, Irving, ed., "Handbook of Adhesives," Third Edition,
Chapman & Hall, 1990, pg 658). Final Act. 7; App. Br. 3.
II. Claims 52-55 and 64 rejected under pre-AIA 35 U.S.C. §
I03(a) as unpatentable over Poivet '699 (WO 2009/106699 A2,
published September 3, 2009, and relying on US 2011/0052912 Al to
Poivet, published March 3, 2011, as an English equivalent) in view of
Hagan and Skeist. Final Act. 9; App. Br. 3.
III. Claims 52, 53 and 64 rejected on the ground of nonstatutory
double patenting as unpatentable over claims 1-14 of Poivet '798 (US
8,535,798 B2, issued September 17, 2013) in view of Hagan and
Skeist. Final Act. 2; App. Br. 2.
IV. Claims 52, 53 and 65 rejected on the ground of nonstatutory
double patenting as unpatentable over claims 1-12 of Laferte (US
8,691,909 B2, issued April 8, 2014) in view of Hagan and Skeist.
Final Act. 4; App. Br. 2.
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Appeal2018-007067
Application 13/977 ,096
OPINI0N2
Rejections under 35 US.C. § 103 (Rejections I and 11) 3
After review of the respective positions that Appellants and the Examiner
present, we REVERSE the Examiner's prior art rejections of claims 52-55 and 64
under 35 U.S.C. § 103(a) for the reasons the Appellants provide in the Appeal and
Reply Briefs. We add the following for emphasis.
Independent claim 52 is directed to a self-adhesive article comprising at least
a substrate and an adhesive layer wherein the coating weight of said adhesive layer
is between 600 and 1500 g/m2.
The Examiner finds each of Fujimoto and Poivet '699 teach a self-adhesive
article comprising an adhesive layer that differs from the claimed self-adhesive
article in that these references do not teach an adhesive layer having a coating of
between 600 and 1500 g/m2 as claimed. Final Act. 7, 9-11; Fujimoto ,r,r 5, 38;
Poi vet '699 ,r,r 16-23. Appellants argue, and the Examiner does not dispute,
Fujimoto suggests a significantly lower coating weight of 100 g/m2 while Poi vet
'699 teaches a coating weight of 3 to 500 g/m2. App. Br. 16, 25-26; see generally
Ans.; Fujimoto ,r 53; Poivet '699 ,r 89. To address the missing feature, the
Examiner finds that Hagan teaches that tack is a function of thickness of the
adhesive with higher adhesive thickness contributing to higher levels of tack. Final
Act 7, 10; Hagan 354. The Examiner finds that Hagan's disclosure teaches the
coating weight of the adhesive layer as a result effective variable. Final Act. 7, 10.
The Examiner determines that, absent a showing of criticality, it would have been
2 A discussion of Skeist is unnecessary for disposition of this appeal because the
Examiner did not rely upon this reference to address the coating weight for an
adhesive layer. See Final Act. 3, 5---6, 8, 10.
3 We limit our discussion to independent claim 52.
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Appeal2018-007067
Application 13/977 ,096
obvious to one skilled in the art to optimize the coating weights taught by Fujimoto
and Poi vet '699 through routine experimentation to arrive at the claimed coating
weight based on Hagan's teachings. Final Act. 7, 10; Ans. 7-8, 13-14, 22-23.
Fujimoto Rejection
With respect to the rejection based on Fujimoto, Appellants argue that
Fujimoto suggests a coating weight (100 g/m2) significantly lower than the claimed
range ( 600 and 1500 g/m2) and that neither Fujimoto nor Hagan provides any
direction to one skilled in the art to arrive at the particular claimed range for the
coating weight. App. Br. 16-18; Fujimoto ,r 53.
We agree with Appellants that there is reversible error in the Examiner's
determination of obviousness. "[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'! Co. v. Teleflex Inc., 550 U.S. 398,418 (2007).
While the Examiner contends that Hagan teaches that tack is a function of
thickness (Final Act. 3; Ans. 14), the Examiner has not directed us to any portion
of Hagan that supports adequately the Examiner's assertion that the coating weight
of an adhesive layer is a result effective variable that could be optimized by one of
ordinary skill in the art. In re Antonie, 559 F.2d 618 (CCPA 1977) (a particular
parameter must first be recognized as a result-effective variable, i.e., a variable
which achieves a recognized result, before the determination of the optimum or
workable ranges of said variable might be characterized as routine
experimentation). In fact, as Appellants argue, Hagan does not disclose any
coating weight for adhesive layers and the only coating weight suggested by
Fujimoto is significantly less than the claimed range. App. Br. 16-17. The
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Appeal2018-007067
Application 13/977 ,096
Examiner has not provided an adequate technical explanation why one skilled in
the art would have arrived at the claimed coating weight range from the teachings
of Fujimoto and Hagan. Thus, the Examiner does not provide the requisite rational
underpinning explaining why a person of ordinary skill in the art would have
arrived at the claimed invention through routine optimization from the teachings of
the cited art.
Accordingly, we REVERSE the Examiner's prior art rejection of claims 52-
55 under 35 U.S.C. § 103(a), based on Fujimoto, for the reasons the Appellant
presents and we give above.
Poivet '699 Rejection
With respect to the rejection based on Poivet '699, Appellants argue that
Poi vet '699 specifically teaches a coating weight of 3 to 500 g/m2 and that the
reference fails to teach or suggest obtaining a product with the claimed higher
coating weights. App. Br. 25-26.
We agree with Appellants that there is reversible error in the Examiner's
determination of obviousness. Although Poi vet '699 discloses a coating weight
range having an upper range end point ( 500 g/m2) that is close to the lower range
end point ( 600 g/m2 ) of the claimed coating weight range, the Examiner does not
identify any teaching in Poi vet '699 that the disclosed range end points are
approximate or flexibly applied. See In re Patel, 566 Fed. Appx. 1005, 1010 (Fed.
Cir. 2014)("Where differences clearly exist and there is no evidence that they are
either not meaningful or one of skill in the art would know to discard the limits set
by the prior art, proximity alone is not enough to establish a prima facie case of
obviousness."). Thus, the Examiner does not explain adequately how one skilled
in the art would arrive at the claimed range from the teachings of Poi vet '699 and
Hagan.
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Appeal2018-007067
Application 13/977 ,096
Accordingly, we REVERSE the Examiner's prior art rejection of claims 52-
55 and 64 under 35 U.S.C. § I03(a) for the reasons presented by the Appellants
and given above.
Because the Examiner did not present a prima facie case of obviousness, we
do not reach Appellants' evidence of unexpected results.
Rejections based on the ground of nonstatutory double patenting
(Re} ections III and JV)
We refer to the Examiner's Final Action for a statement of rejections on the
grounds of nonstatutory double patenting (Rejections III and IV). Final Act. 2-5.
These rejections are based on the same reasoning the Examiner applies to the
rejections under 35 U.S.C. § I03(a) when discussing the reference to Hagan as
teaching that the coating weight of the adhesive layer is a result effective variable.
See Final Act. 2-5.
We have addressed this issue above and again agree with Appellants that the
Examiner has not provided an adequate technical explanation why one skilled in
the art would have arrived at the claimed coating weight range from the combined
teachings of Laferte or Poi vet '798, each with Hagan.
Accordingly, we REVERSE the Examiner's rejections based on the ground
of nonstatutory double patenting for the reasons the Appellants present and the
reasons we give above.
ORDER
The Examiner's prior art rejection (Rejections I and II) of claims 52-55, and
64 under 35 U.S.C. § I03(a) are reversed.
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Appeal2018-007067
Application 13/977 ,096
The Examiner's non statutory double patenting rejections (Rejections III and
IV) of claims 52-55, 64, and 65 are reversed.
REVERSED
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