Ex Parte Krawinkel

Board of Patent Appeals and Interferences

May 23, 2007

10628725 (B.P.A.I. May. 23, 2007)

The opinion in support of the decision being entered today was not written
for publication and is not binding precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte THORSTEN KRAWINKEL
____________

Appeal 2007-12241
Application 10/628,725
Technology Center 1700
____________

Decided: May 23, 2007
____________

Before CATHERINE Q. TIMM, JEFFREY T. SMITH, and LINDA M.
GAUDETTE, Administrative Patent Judges.

TIMM, Administrative Patent Judge.

DECISION ON APPEAL
Appellant takes this appeal under 35 U.S.C. § 134(a) from the
Examiner’s decision rejecting claims 1-17. We have jurisdiction under
35 U.S.C. § 6(b).

1 An oral hearing was held on May 9, 2007.
Appeal 2007-1224
Application 10/628,725

We REVERSE.
I. BACKGROUND
The invention relates to an adhesive (claim 1) and an at least one layer
pressure sensitive adhesive sheet strip including the adhesive of claim 1
(claim 13). The adhesive is comprised of end blocks of a vinylaromatic such
as styrene and at least one block composed of a conjugated diene (1,3 diene).
“In the preparation of block copolymers based on vinylaromatics, preferably
styrene and 1, 3-dienes, especially isoprene and butadiene, both 1,2-linked
and 1,4-linked dienes are incorporated into the diene block.” (Specification
7:3-5). “Since the 1,2-linked dienes contain a terminal double bond, while
the double bond in the case of the 1,4-linked dienes is in the main chain, a
selective hydrogenation of the terminal and hence more reactive double
bonds is possible.” (Specification 7:6-9). The claimed adhesive composition
is limited to block copolymers in which the fraction of 1,2-linked diene is
selectively hydrogenated. Claim 1 is illustrative of the subject matter on
appeal:
1. An adhesive for an at least one-layer pressure sensitive adhesive
sheet strip which is residuelessly and nondestructively redetachable by
extensive stretching substantially in the bond plane, said adhesive being
comprised of at least one block copolymer having one or two end blocks
composed of vinylaromatics, and

a block composed of a conjugated diene, wherein the fraction of 1,2-
linked diene is selectively hydrogenated.

The Examiner relies upon the following prior art as evidence of
unpatentability:
Lühmann US 6,004,665 Dec. 21, 1999

2
Appeal 2007-1224
Application 10/628,725

Butadiene Polymers, Concise Encyclopedia of Polymer Science and
Engineering 97-98 (Jacqueline I. Kroschwitz ed., 1990)(Concise
Encyclopedia)

The Examiner rejects claims 1-16 under 35 U.S.C. § 102(b) as
anticipated by or, in the alternative, under 35 U.S.C. § 103(a) as obvious
over Lühmann as evidenced by the Concise Encyclopedia.2 The Examiner
rejects claim 17 under 35 U.S.C. § 103(a) as unpatentable over Lühmann.

II. DISCUSSION
The key dispute in this appeal is a dispute over whether the fraction of
1,2-linked diene in the self-adhesive composition of Lühmann would
inherently be selectively hydrogenated as claimed. The Examiner finds this
claim limitation inherently met by the disclosure in Lühmann at column 3,
lines 42-64. Appellant contends that “insofar as Lühmann refers to his D
blocks as being selectively hydrogenated, this would clearly be understood
by those of ordinary skill in the art to mean that some D blocks are
hydrogenated, and some are not.” (Br. 4). This is different than what is
claimed according to Appellant because “as defined by the independent
claim, it is the 1,2 linked diene that is selectively hydrogenated (i.e., all the
dienes are not hydrogenated; only the 1,2 linked diene).” (Br. 4).

2 The Examiner failed to include the Concise Encyclopedia in the statement
of the rejection, but relied upon it in the body of the rejection and also listed
it in the “Evidence Relied Upon” section of the Answer. Appellant was
aware of the Examiner’s reliance on the reference (Hearing, May 9, 2007).
We have considered it and we include it in the statement of rejection to
properly reflect its use as evidence in the rejection.
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Appeal 2007-1224
Application 10/628,725

The relevant part of Lühmann relied upon by the Examiner to support
the inherency finding is as follows:
The self-adhesive compositions used are preferably those
based on block copolymers comprising polymer blocks formed
from vinylaromatic compounds (A blocks), preferably styrene,
and those formed by polymerization of 1,3-dienes (D blocks),
preferably butadiene and isoprene. Both homo- and copolymer
blocks can be used in accordance with the invention. Resulting
block copolymers may contain identical or different D blocks,
which can be partially, selectively or completely hydrogenated.

(Lühmann, col. 3, ll. 42-50).
The relied upon portion of Lühmann does not adequately support the
Examiner’s finding that the fraction of 1,2-linked dienes in the block
copolymer would be inherently selectively hydrogenated as claimed in the
process of Lühmann. In general, a limitation is inherent if it is the “natural
result flowing from” the explicit disclosure of the prior art. Schering Corp.
v. Geneva Pharms., Inc., 339 F.3d 1373, 1379, 67 USPQ2d 1664, 1669 (Fed.
Cir. 2003). “Inherency ... may not be established by probabilities or
possibilities. The mere fact that a certain thing may result from a given set
of circumstances is not sufficient.” Mehl/Biophile Int'l. Corp. v. Milgraum,
192 F.3d 1362, 1365, 52 USPQ2d 1303, 1305 (Fed. Cir. 1999)(quoting In re
Oelrich, 666 F.2d 578, 581, 212 USPQ 323, 326 (CCPA 1981)).
We agree with the Examiner that polymerizing the 1,3 dienes
(butadiene and/or isoprene) will necessarily result in both 1,2-links and 1,4-
links in the D blocks of Lühmann’s block copolymers. In fact, Appellant’s
own Specification supports this finding when it states that “[i]n the
preparation of block copolymers based on vinylaromatics, preferably styrene
and 1,3-dienes, especially isoprene and butadiene, both 1,2-linked and 1,4-
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Appeal 2007-1224
Application 10/628,725

linked dienes are incorporated into the diene block.” (Specification 7:3-5).
The Concise Encyclopedia also supports the finding (Concise Encyclopedia,
second headed “Microstructure”). But Lühmann contains no specific
disclosure of selective hydrogenation of one type of linked diene within the
D block over another type of linked diene. All Lühmann states is that the D
blocks “can be partially, selectively or completely hydrogenated.”
(Lühmann, col. 3, ll. 48-50). While it is possible that one might, in
following the process of Lühmann, end up hydrogenating 1,2-links
selectively over 1,4-links, the Examiner has not established that such
necessarily occurs as a natural result flowing from following the process of
Lühmann. Appellant’s Specification states that “a selective hydrogenation
of the terminal and hence more reactive double bonds is possible”
(Specification 7:8-9 (emphasis added)), but, again, this is a merely
possibility, and it implies that one must select some particular conditions in
order for it to occur. The Examiner has neither identified the reaction
conditions that are necessary to selectively hydrogenate the 1,2-linked diene
of Lühmann nor provided evidence or technical reasoning showing that
those conditions are necessarily present in the process of Lühmann.
The Examiner has not established that the 1,2-linked diene of
Lühmann is selectively hydrogenated as required by all the claims.
The Examiner also notes that “even if other moieties besides the
fraction of 1,2-linked diene which is selectively hydrogenated are present in
the adhesive composition this fact is simply irrelevant in view of the fact that
all of his claims are opened ended.” (Answer 4). We agree that the claim is
open to the inclusion of other ingredients in the adhesive by virtue of the
transitional phrase “comprised of.” However, to the extent the Examiner is
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Appeal 2007-1224
Application 10/628,725

making a finding that hydrogenated 1,4-linked dienes within the diene block
are encompassed by the claims, we cannot agree. The claim specifically
requires that the fraction of 1,2-linked diene within the diene block be
selectively hydrogenated. In order for the term “selectively” to have
meaning, something else must not be selected. In the present context
(Specification 7:13-13 and 8:1-11), the 1,2-links are selected for
hydrogenation while the 1,4-links are not (see also Br. 4).
With respect to the rejection of claim 17, the Examiner relies upon
Lühmann in the same capacity as discussed above and, therefore, the
rejection fails for the same reasons as discussed above.

IV. DECISION
With regard to decision of the Examiner to reject claims 1-16 as
unpatentable under either 35 U.S.C. § 102(b) or § 103(a) and the Examiner’s
decision to reject claim 17 under 35 U.S.C. § 103(a), we REVERSE.
REVERSED

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