Ex Parte Inui et al

Patent Trial and Appeal Board

Oct 29, 2018

13641904 (P.T.A.B. Oct. 29, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/641,904 10/18/2012 Kunihiro Inui
38834 7590 10/31/2018
WESTERMAN, HATTORI, DANIELS & ADRIAN, LLP
8500 Leesburg Pike
SUITE 7500
Tysons, VA 22182
UNITED ST A TES OF AMERICA
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.
P23316USOO 5122
EXAMINER
FERRE, ALEXANDRE F
ART UNIT PAPER NUMBER
1788
NOTIFICATION DATE DELIVERY MODE
10/31/2018 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):
patentmail@whda.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte KUNIHIRO INUI, TOSHITSUGU HOSOKA WA,
TAKAAKI ISHII, MASAYUKI SATAKE, KENICHI OKADA,
TOSHITAKA TAKAHASHI, YOUSUKE MAKIHATA,
TAIKI SHIMOKURI, SHUSAKU GOTO, TAKEHARU KITAGAWA,
MINORU MIY AT AKE, TOMOHIRO MORI, and TAKASHI KAMIJO
Appeal2017-010498
Application 13/641,904 1
Technology Center 1700
Before JEFFREY T. SMITH, JEFFREY B. ROBERTSON,
and DEBRA L. DENNETT, Administrative Patent Judges.
SMITH, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134 from the final rejection of
claims 1---6, 8-14, 16 and 17. 2 We have jurisdiction under 35 U.S.C. § 6.
1 According to the Appeal Brief, the real party in interest is NITTO DENKO
CORPORATION. See Appeal Br. 2.
2 Claim 7 has been withdrawn from consideration. Final Act. 1.
Appeal2017-010498
Application 13/641,904
Appellants' invention relates generally to an aqueous dispersion-type
pressure-sensitive adhesive composition for an optical film including
emulsion particles of a core-shell structure. (Spec. ,r 15). The core-shell
structure emulsion particles contain a (meth)acryl-based copolymer (A) with
a low glass transition temperature and a (meth)acryl-based copolymer (B)
with a high glass transition temperature. Claim 1 illustrates the subject
matter on appeal and is reproduced from the Claims Appendix to the
principal Brief.
1. An aqueous dispersion-type pressure-sensitive adhesive
composition for an optical film, comprising emulsion particles
of a core-shell structure, wherein
the emulsion particles comprise:
a (meth)acryl-based copolymer (A) containing an alkyl
(meth)acrylate as a monomer unit and having a glass transition
temperature of -55°C to 0°C; and a (meth)acryl-based
copolymer (B) containing an alkyl (meth)acrylate as a monomer
unit and having a glass transition temperature of 70°C to
180°C·
'
wherein the glass transition temperature is calculated based on
monofunctional monomers for monomer units,
in a single emulsion particle, one of the (meth)acryl-based
copolymers (A) and (B) forms a core layer, and another of the
copolymers (A) and (B) forms a shell layer,
at least one of the (meth)acryl-based copolymers (A) and (B)
contains a carboxyl group-containing monomer as a monomer
unit,
a difference of the glass transition temperatures between the
(meth)acryl-based copolymers (A) and (B) is 50°C or more,
a ratio (A)/(B) by weight of the (meth)acryl-based copolymers
(A) and (B) is in the range of 50/50 to 90/10, and
the (meth) acryl-based copolymers (B) contains a alkyl
methacrylate as a monomer unit and the content of the alkyl
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Application 13/641,904
methacrylate is 60 to 99 .9% by weight of all monomer units in
the (meth) acryl-based copolymer (B).
Claims Appendix, App. Br. 10.
Appellants (see generally Appeal Br.) request review of the following
rejections:
I. Claims 1-2, 6, 8, 16 and 17 rejected under 35 U.S.C.
§ I03(a) as unpatentable over Tanaka (JP 2003-292922,
published Oct. 15, 2003), Koketsu (US 6,156,378, issued
Dec. 5, 2000) and Shinoda (JP 07-278517, published Oct.
24, 1995).
II. Claims 3-5, 9-12 and 14 rejected under 35 U.S.C. § I03(a)
as unpatentable over Tanaka, Koketsu and Shinoda further
in view of Okada (US 2006/0188712 Al, published Aug. 24,
2006).
III. Claim 13 rejected under 35 U.S.C. § I03(a) as unpatentable
over Tanaka, Koketsu and Shinoda, Okada further in view of
Sugino (US 2002/0015807 Al, published Feb. 7, 2002).
IV. Claims 1, 2, 6, 8-14 and 16 are rejected on the ground of
nonstatutory double patenting as being unpatentable over
claims 1-10 of Inui (US 9,029,468 B2, published May 12,
2015) in view of Tanaka and Koketsu.
V. Claims 3-5 are rejected on the ground of nonstatutory
double patenting as being unpatentable over claims 1-10 of
Inui in view of Tanaka and Koketsu further in view of
Okada.
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Appeal2017-010498
Application 13/641,904
Rejections 1-1113
OPINION
Upon consideration of the evidence in this appeal record in light of the
respective positions advanced by the Examiner and Appellants, we
determine that Appellants have identified reversible error in the Examiner's
rejection of independent claim 1. We add the following:
The complete statement of Rejections I-III appear in the Final action.
(Final Act. 7-14).
The dispositive issue on appeal is:
Did the Examiner err in determining that the combination of Tanaka
and Koketsu would have taught or suggested forming a core shell polymer
wherein the core comprises the (meth)acryl-based copolymers (B) contains
an alkyl methacrylate as a monomer unit and the content of the alkyl
methacrylate is 60 to 99 .9% by weight of all monomer units in the
(meth)acryl-based copolymer (B) as required by independent claim 1 ?4
Independent claim 1 is directed to an aqueous dispersion-type
pressure-sensitive adhesive comprising emulsion particles that comprise as a
core either (meth)acryl-based copolymers (A) or (B). The Examiner
provided prior art (Tanaka) that teaches (meth)acryl-based copolymers with
3 We limit our discussion to independent claim 1 which we select as
representative of the rejected claims.
4 A discussion of the Shinoda reference is unnecessary for disposition of this
appeal. The Examiner relied upon Shinoda for describing or suggesting
forming core layers having a Tg temperatures of 70°C to 180°C. Shinoda
was not relied upon for describing the content of the alkyl methacrylate
component in the (meth)acryl-based copolymer.
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Appeal2017-010498
Application 13/641,904
a lower Tg (equivalent to copolymer (A)) forming the shell component and
(meth)acryl-based copolymers having a higher Tg ( equivalent to copolymer
(B)) forming the core component. (Final Act. 8). The Examiner found
Tanaka fails to teach that the (B) copolymer comprises 60-99.9% by weight
of an alkyl methacrylate. (Final Act. 9). The Examiner found Koketsu
describes an aqueous emulsion resin comprising 45-97% by weight of alkyl
(meth)acrylate monomer with respect to the other monomer components.
(Final Act. 9). The Examiner found Koketsu discloses a composition having
alkyl methacrylate monomer content within 45-97% by weight that provides
optimal cohesive forces, adhesive strength and tack. (Final Act. 9; Koketsu
col 4, 11. 28-35). The Examiner concluded it would have been obvious to
modify the core structure of Tanaka based on Koketsu' s aqueous emulsion
resin which, like Tanaka's core structure, comprises (a) alkyl (meth)acrylate
monomer, (b) unsaturated carboxylic acid monomer and ( c) a radically
polymerizable cyclic structure containing monomer. (Final Act. 9). In other
words, the Examiner determined it would have been obvious to ensure that
the core composition (equivalent to copolymer (B)) has an alkyl
methacrylate content as described in Koketsu. The Examiner reasoned the
composition of Tanaka having alkyl methacrylate monomer content within
45-97% by weight would obtain optimal cohesive forces, adhesive strength
and tack. (Final Act. 9).
Appellants argue Koketsu does not overcome the deficiency of
Tanaka. Appellants argue Koketsu does not provide any reason to
incorporate a specific amount of an alkyl methacrylate to a core composition
because Koketsu only exemplifies a composition comprising 45 to 97 wt%
of a (meth)acrylate having 4 to 12 carbon atoms. (Appeal Br. 7).
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Application 13/641,904
Appellants argue it has not been established that it would have been obvious
to modify the core layer of the core-shell structure, as disclosed in Tanaka
with a single component of the three component resin of the aqueous resin
emulsion of Koketsu. (Reply Br. 4 ).
We agree with Appellants that there is insufficient reason or
motivation to modify the core-shell structure of Tanaka in view of only
component (a) of the resin component of the aqueous resin emulsion of
Koketsu. Koketsu disclose that the resin contained in the aqueous resin
emulsion preferably comprises
an alkyl (meth)acrylate monomer unit (a) having 4 to 12 carbon atoms
in the alkyl moiety, an a,B ethylenically unsaturated carboxylic acid
monomer unit (b ), and a radically polymerizable monomer unit ( c)
having a cyclic structure, other than the monomer units (a) and (b ), the
proportions of the monomer unit (a), the monomer unit (b ), and the
monomer unit ( c) are 45 to 97% by weight, 0 .1 to 10% by weight, and
2.9 to 30% by weight, respectively, with the total amount of those
units being 100% by weight. Koketsu, Col 3, 11. 49--55.
The Examiner has not explained why it would have been obvious to
modify the core structure of Tanaka based solely on Koketsu's aqueous
emulsion resin which is not described as a core of a core/shell structure. The
Examiner has not adequately explained why the properties of optimal
cohesive forces, adhesive strength and tack, that provide the stated
motivation for modifying Tanaka' core structure, would have been
expressed by the final composition when the modified core structure would
be subsequently covered by a shell structure. Thus, the cited prior art does
not establish that a skilled artisan at the time of the invention would have
had sufficient reason or motivation to consider the disclosure regarding
component (a) of the resin component of the aqueous resin emulsion of
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Application 13/641,904
Koketsu to be applicable to the core layer of the core-shell structure of
Tanaka.
Double Patenting
Rejections IV and V
The Examiner found Inui '486 fails to claim a core-shell emulsion
particle such as present in claim 1 and further fails to claim the component
(B) as comprising 60-99.9% alkyl methacrylate. (Final Act. 3). The
Examiner found Tanaka in view of Koketsu render obvious this feature of
the presently claimed invention.
We cannot sustain the double patenting rejections for the reasons set
forth above. Specifically, we determined above that Koketsu did not provide
sufficient evidence to support the Examiner's reasoning for modifying the
core structure of Tanaka. Consequently, the combination of Tanaka and
Koketsu is not sufficient for establishing the obviousness of including a core
shell emulsion particle in the aqueous emulsion resin required by the
claimed invention of Inui '486.
CONCLUSION
For the reasons stated above we do not sustain appealed Rejections I-
V of claims 1-6, 8-14, 16 and 17.
REVERSED
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