Ex Parte Hebert et al

Patent Trial and Appeal Board

Nov 28, 2018

14408188 (P.T.A.B. Nov. 28, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/408,188 12/15/2014
32692 7590 11/30/2018
3M INNOVATIVE PROPERTIES COMPANY
PO BOX 33427
ST. PAUL, MN 55133-3427
FIRST NAMED INVENTOR
Larry S. Hebert
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.
70044US010 2989
EXAMINER
HERNANDEZ-DIAZ, JOSE
ART UNIT PAPER NUMBER
1717
NOTIFICATION DATE DELIVERY MODE
11/30/2018 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 LARRY S. HEBERT and DMITRIY SALNIKOV
Appeal 2018-001591
Application 14/408, 188
Technology Center 1700
Before CATHERINE Q. TIMM, CHRISTOPHER C. KENNEDY, and
MERRELL C. CASHION, JR., Administrative Patent Judges.
TIMM, Administrative Patent Judge.
DECISION ON APPEAL 1
1 In explaining our Decision, we cite to the Specification of December 15,
2014 (Spec.), Final Office Action of January 26, 2017 (Final), Appeal Brief
of June 22, 2017 (Appeal Br.), Examiner's Answer of October 2, 2017
(Ans.), and Reply Brief of December 4, 2017 (Reply Br.).
Appeal 2018-001591
Application 14/408,188
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant2 appeals from the
Examiner's decision to reject claims 1-20. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.
The claims are directed to a method of providing an adhesive article,
embossing the adhesive article with a relief pattern, and substantially
reacting the second epoxy curative to cure the adhesive article. Claim 1.
The adhesive article to be embossed is formed from a mixture of a base
resin, a first epoxy curative, and a second epoxy curative. Id. The adhesive
article is formed when the first epoxy curative reacts rapidly with the epoxy
resin and this reaction results in an adhesive article that will retain an
embossed relief pattern. Spec. 2:23-28. The second epoxy curative remains
substantially unreacted, i.e., is a latent catalyst or curative until after the
embossing step at which time the second epoxy curative is activated to
provide a structural adhesive. Spec. 2:23-28.
According to the Specification, any suitable epoxy resin, any suitable
rapid-reacting curative, and any suitable latent curative may be used in the
method. Spec. 3: 12-15. The Specification includes examples in which two-
part reactive compositions (e.g., Tables 1-2, REC-2 and REC-3) are formed
into liner-supported films (Spec. 11, method B), subjected to a partial cure
cycle at 22.0°C, embossed between an aluminum tool and plate, and cured at
2 Appellant is the Applicant 3M Innovative Properties Company. According
to the Brief, the real party in interest is 3M Company and its affiliate, 3M
Innovative Properties Company. Appeal Br. 2.
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Application 14/408,188
a higher temperature (Spec. 12:16-28; 13:22-30 (cycle B cure at 121.1 °C);
see also, e.g., Table 3, Examples 1-9).
The method is said to form two polymer networks, a first polymer
network formed before an embossing step, and a second polymer network,
typically a thermosetting resin, after the embossing step. Claim 1; Spec.
2: 12-18. Claim 1. Claim 1, with the language at issue highlighted, is
illustrative:
1. A method comprising the steps of:
a) providing an adhesive article comprising:
i) a base resin comprising an epoxy resin;
ii) a first epoxy curative; and
iii) a second epoxy curative;
by reacting the base resin with the first epoxy curative to
form a first polymer network such that the first epoxy curative
is substantially reacted with epoxy resin in the article and the
second epoxy curative is substantially unreacted in the article;
b) embossing the adhesive article with a relief pattern;
and
c) curing the adhesive article to form a second polymer
network such that the second epoxy curative is substantially
reacted with epoxy in the article.
Appeal Br. 9 ( claims appendix) ( emphasis added).
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Application 14/408,188
The Examiner rejects claims 1-8 and 10-17 under 35 U.S.C. § I03(a)
as obvious over Kelley3 in view of Padilla-Acevedo 4. To reject claims 9 and
18-20, the Examiner adds Hebert5.
OPINION
The rejection over Kelley and Padilla-Acevedo
Appellant does not argue any claim apart from the others. Appeal Br.
5-7. Thus, we select claim 1 as representative for deciding the issues on
appeal.
As a first matter, there is a dispute about the meaning of "polymer
network" as used in the claim. Compare Appeal Br. 5---6, and Reply Br. § 1,
with Final 4--5, and Ans. 13-14. The Examiner finds that Padilla-Acevado
teaches curing an epoxy composition using two cross-linking hardeners that
result in two distinct and separate chemical reactions, the first reaction
results in B-stage curing to form a first polymer network, and the second
reaction results in C-stage curing to form an infinite polymer network. Final
4--5. Appellant contends that because Padilla-Acevedo's first reaction does
not form an infinite polymer network, it is not a "first polymer network"
within the meaning of the claim.
We agree with the Examiner that "first polymer network" as used in
the claim does not require that the network be infinite. Final 4--5; Ans. 13-
14.
3 Kelley, US 5,942,330, issued August 24, 1999.
4 Padilla-Acevedo, US 2014/0186536 Al, published July 3, 2014.
5 Hebert, US 2010/0263898 Al, published October 21, 2010.
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According to Appellant, "a polymer network is well understood to be
equivalent to an infinite polymer network." Appeal Br. 6. To support this
interpretation of "polymer network," Appellant cites Handbook of Polymer
Synthesis, Characterization, and Processing, § 9.1 (1st ed., Enrique Saldivar-
Guerra and Eduardo Vivaldo-Lima ed., John Wiley & Sons, Inc. 2013),
which provides: "A polymer network can be envisioned as a polymer
molecule with an infinite molecular weight." Appeal Br. 6.
The Examiner responds that "first polymer network," under the
broadest reasonable interpretation, does not require that the polymer network
be an infinite polymer network. Ans. 13. As pointed out by the Examiner,
Appellant's Specification does not define "polymer network." Id. The only
use of the term is found on page 2 of the Specification, which discloses:
The present disclosure provides structured articles
comprising a high strength structural hybrid adhesive material.
In the structural hybrid, two polymer networks are formed
sequentially. The first network provides structural integrity to
the curable structural adhesive article. The second network,
typically a thermosetting resin, can be cured after the adhesive
article is formed into a structured article by embossing or any
other type of patterning. The resulting cured material can be an
interpenetrating polymeric network or a single-phase polymeric
network.
Spec. 2:12-18. The Specification describes the second network as a
thermosetting resin, but does not so describe the first network.
The Examiner discusses the details of the general thermoset cure
process as preceding from a liquid A-stage, partially cured B-stage, and fully
cured and gelled C-stage. Ans. 13, citing Ruan L. Lee, The Handbook of
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Dielectric Analysis and Cure Monitoring, 14--16 (2017). The mechanics of
this process is not in dispute. Reply Br. § 1.
Appellant's Specification details a mechanism that is substantially
similar to that of Padilla-Acevedo. Although Appellant's Specification does
not speak in terms of A-stage, B-stage, and C-stage, both Appellant's and
Padilla-Acevedo's methods use a combination of epoxy with two hardeners.
In Padilla-Acevedo, the first hardener reacts with epoxy at a low temperature
and the second hardener reacts with epoxy at higher temperature. Padilla-
Acevedo ,r 35. According to Padilla-Acevedo, "B-stage" "refers to a point
where a first reaction of a composition has taken place or for example when
a first reaction between an epoxide resin and at least one hardener is
complete." Padilla-Acevedo ,r 25. Curing is then continued to the C-stage
by reacting the epoxy with the second hardener. Padilla-Acevedo ,r 86.
According to Padilla-Acevedo, "C-stage" "refers to a point where all
reactions in a composition have reached completion. For example, at this
point most of the epoxides present in a curable composition are consumed."
Padilla-Acevedo ,r 28. Between the B-stage and C-stage lies the gel point.
According to Padilla-Acevedo, "[t]he gel point is defined as the point at
which a liquid formulation resin begins to exhibit elastic properties and
increased viscosity" and is "the point along the cure profile at which an
infinite network forms." Padilla-Acevedo ,r 3. At the gel point, further cure
can occur, but the resin will no longer flow. Id.
Appellant, like Padilla-Acevedo, discloses a composition including
epoxy resin and two hardeners. According to the Specification, there is
nothing special about the selection of the epoxy and hardeners. Any suitable
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epoxy resin is mixed with any suitable rapid-acting curative, and any
suitable latent curative, and the latent curative remains substantially
unreacted while the conditions of time and temperature are sufficient to
substantially react the rapid-curing curative with the epoxy resin. Spec.
3:10-19. Thus, like Padilla-Acevedo, Appellant's method is conducted to
substantially react the first curative with the epoxy resin without
substantially reacting the second hardener with the epoxy. Padilla-Acevedo
discloses the first reaction step as a step of forming a B-stage prepreg that
will still flow, i.e., can be shaped.
Appellant also conducts the first reaction so that the adhesive article
can still be shaped. Specifically, Appellant embosses the adhesive article
after the first reaction. There is no explanation on how to conduct the
method to allow shaping after forming the first polymer network and form
an infinite network. See Spec., generally. An infinite network no longer
flows and cannot be shaped. See Handbook of Polymer Synthesis,
Characterization, and Processing, § 9.1 ("While noncrosslinked polymers
are in general thermoplastic, and they can be melted and casted, extruded, or
(injection) molded, highly crosslinked polymers become thermoset, and they
do not flow when heated."). Thus, interpreting "first polymer network" as
requiring an infinite polymer network would lead to an issue of non-
enablement. But, in any case, such a restrictive interpretation of network is
inconsistent with the overall context of the use of "network" in the
Specification, which uses "first network" to refer to a network that "provides
structural integrity to the curable structural adhesive article," and
differentiating it from the second network, which typically forms a
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thermosetting resin. Spec. 2: 12-18. The Specification indicates that only
the second network forms a thermosetting resin, i.e., a polymer with an
infinite network.
A preponderance of the evidence supports the Examiner's claim
interpretation.
Appellant further contends that "[t]here is also no teaching contained
in either Kelly or Padilla-Acevedo that would provide any reason for one of
ordinary skill in the art to modify the curing/ embossing steps of Kelley to
include the step of 'reacting the base resin with the first epoxy curative to
form a first polymer network such that ... [a] second epoxy curative is
substantially unreacted in the article."' Appeal Br. 6. Appellant contends
that forming a "first polymer network" provides unexpected advantages not
recognized by the references applied by the Examiner. Appeal Br. 6-7.
However, Appellant does not address the Examiner specific finding of a
suggestion to make the combination. Appeal Br. 6-7; Reply Br. § 2. Nor
does Appellant cite to persuasive objective evidence supporting a showing
of unexpected results. Appeal Br. 6-7; Reply Br.§ 2. Thus, Appellant has
not identified a reversible error in the Examiner's finding of a suggestion to
make the modification or in the ultimate conclusion of obviousness.
We sustain the Examiner's rejection over Kelley in view of Padilla-
Acevedo.
The Rejection adding Hebert
Turning to the rejection of claims 9 and 18-20 as obvious over
Kelley, Padilla-Acevedo, and further in view of Hebert, Appellant contends
"there is no reasonable basis for 'depositing an electrically conductive layer
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Application 14/408,188
onto at least a portion of the surface of the adhesive article embossed with a
relief pattern,' as required by claims 9 and 18-20" because the adhesive
layer of Hebert is not embossed. Appeal Br. 7-8 (bolding omitted).
Appellant has not persuaded us of a reversible error in the Examiner's
rejection. As acknowledged by Appellant, Hebert discloses embossing the
support layer. Hebert ,r 39. As correctly found by the Examiner, Hebert
teaches that the adhesive layer and the support layer may be one and the
same layer. Ans. 16, citing Hebert ,r,r 27, 34. Hebert thus suggests
patterning this combined adhesive and support layer by, for instance,
embossing, and then depositing an electrically conductive film onto the
adhesive support layer. Hebert ,r,r 34, 39.
In the Reply Brief, Appellant contends that nothing in the references
would have led the ordinary artisan to include a lightning strike film or other
electrical conductor onto the embossed surface of Kelley and the Examiner's
finding of suggestions for doing so fall short. Reply Br. § 3. Because this
argument was not presented in the Appeal Brief and no good cause has been
shown as to why it was not earlier presented, we decline to address it. 3 7
C.F.R. § 4I.41(b)(2).
CONCLUSION
In summary, we sustain the Examiner's rejection of claims 1-8 and
10-17 under 35 U.S.C. § 103(a) as obvious over Kelley in view of Padilla-
Acevedo and the Examiner's rejection of claims 9 and 18-20 under 35
U.S.C. § 103(a) as obvious over Kelley, Padilla-Acevedo, and further in
view of Hebert.
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DECISION
The Examiner's decision is affirmed.
TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal maybe extended under 37 C.F.R. § 1.136(a)(l).
AFFIRMED
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