Ex Parte Luberski

Patent Trial and Appeal Board

Jul 23, 2018

13449213 (P.T.A.B. Jul. 23, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/391,569 10/09/2014
20995 7590 07/25/2018
KNOBBE MARTENS OLSON & BEAR LLP
2040 MAIN STREET
FOURTEENTH FLOOR
IRVINE, CA 92614
UNITED ST A TES OF AMERICA
FIRST NAMED INVENTOR
Koki Tamura
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.
HAR1.027APC 6473
EXAMINER
VALDEZ, DEVE E
ART UNIT PAPER NUMBER
1765
NOTIFICATION DATE DELIVERY MODE
07/25/2018 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):
j ayna.cartee@knobbe.com
efiling@knobbe.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Exparte KOKI TAMURA, HIROFUMI IMAI, TOSHIYUKI OGATA,
ATSUSHI KUBO, and TAKAHIRO YOSHIOKA
Appeal2018-005977
Application 14/391,569
Technology Center 1700
Before KAREN M. HASTINGS, MONTE T. SQUIRE, and
JEFFREY R. SNAY, Administrative Patent Judges.
SNAY, Administrative Patent Judge.
DECISION ON APPEAL 1
Appellant2 appeals under 35 U.S.C. § 134(a) from the Examiner's
decision rejecting claims 1, 7, 8, 20, 21, and 23. We have jurisdiction under
35 U.S.C. § 6(b).
We affirm.
1 We cite to the Specification ("Spec.") filed October 9, 2014; Final Office
Action ("Final Act.") dated January 11, 2017; Appellants' Appeal Brief
("App. Br.") dated August 31, 2017; Examiner's Answer ("Ans.") dated
March 22, 2018, and Appellant's Reply Brief ("Reply Br.") dated May 22,
2018.
2 Appellant is Tokyo Ohka Kogyo Co., Ltd., which also identified as the real
party in interest. App. Br. 3.
Appeal2018-005977
Application 14/391,569
BACKGROUND
The subject matter on appeal relates to an adhesive composition.
Spec. ,r 1. Claim I-the sole independent claim on appeal-is illustrative:
1. An adhesive composition, comprising:
a resin consisting of (i) a block copolymer or (ii) 35% by
weight or greater and less than 100% of the block copolymer
and 65% by weight or less of a random copolymer,
the block copolymer having a weight average molecular
weight in a range of 50,000 to 150,000,
wherein the block copolymer is a diblock copolymer, a
triblock copolymer, or a combination thereof, and includes a
styrene group, both terminals of a main chain of the triblock
copolymer are styrene groups, and
a styrene group content of the block copolymer is in a
range of 10% by weight to 65% by weight;
a solvent which includes a condensed polycyclic
hydrocarbon,
wherein an adhesive layer formed by using the adhesive
composition has a Young's modulus of 0.1 GP a or greater at
23°C, a storage modulus (G') of 1.5 x 105 Pa or less at 220°C,
and a loss factor (tan a) of 1.3 or less at 220°C; and
a thermal polymerization inhibitor.
App. Br. 12 (Claims Appendix) ( emphasis added to highlight a key claim
element in dispute).
REJECTIONS
I. Claims 1, 7, 8, 20, and 21 stand rejected under 35 U.S.C. § I03(a) as
unpatentable over Akagi, 3 Chin4 and Hanstein. 5
3 JP 2011-162747 A, published August 25, 2011 ("Akagi"), as translated.
4 US 5,118,762, issued June 2, 1992 ("Chin").
5 DT 26 09 362 Al, published September 8, 1977 ("Hanstein"), as
translated. We note that the Examiner and Appellant identify this reference
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Application 14/391,569
II. Claim 23 stands rejected under 35 U.S.C. § I03(a) as unpatentable
over Akagi, Chin, Hanstein, and Imai. 6
OPINION
Rejection I
With regard to Rejection I, Appellant argues the claims as a group.
App. Br. 6-11; Reply Br. 2-3. We select claim 1 as representative. Claims
7, 8, 20, and 21 stand or fall with claim 1.
Relevant to Appellant's arguments on appeal, the Examiner finds that
Akagi discloses an adhesive composition that comprises a styrene block
copolymer resin, wherein the resin is a styrene ethylene butadiene styrene
(SEBS) copolymer, a styrene ethylene propylene styrene (SEPS) copolymer,
or a styrene ethylene ethylene propylene (SEEPS) copolymer, having a
molecular weight and styrene content within the value ranges recited in
claim 1. Final Act. 3--4. The Examiner finds that the foregoing resins in
Akagi are the same as those which are claimed, and that the resulting
adhesive composition would reasonably have been expected to possess the
claimed physical properties. Id. at 4.
Appellant argues that Akagi additionally provides a tackifier which
contains petroleum-derived and/or terpene-derived resin. App. Br. 8 ( citing
Akagi ,r 14). Appellant argues that these additional resin components are
precluded by the phrase, "a resin consisting of," in claim 1. Id. at 8-9.
Appellant's argument is not persuasive. As the Examiner correctly
points out (Ans. 7), the claim is directed to an adhesive composition which
by its publication number. For consistency with our identification of the
other references, we identify this document by the first-named inventor.
6 US 2012/0083561 Al, published April 5, 2012 ("Imai").
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Application 14/391,569
"comprises" a resin, wherein that resin consists of a specified block
copolymer or the block copolymer combined with a random copolymer. In
light of the above-noted claim language, the Examiner interprets the claim as
permitting additional components in the adhesive composition, including
Akagi's tackifier. Ans. 7. The Examiner's interpretation is consistent with
the express language of the claim and reasonable in light of the
Specification. See Spec. ,r 54 ("The adhesive composition may further
include another miscible substance ... For example, in the adhesive, various
additives commonly used to improve performance of the adhesive such as an
additive resin ... can be further used."). Thus, Appellant does not persuade
us that claim 1 precludes Akagi' s tackifier.
Appellant points to Table 2 of the Specification in which two
commercially identified block copolymers taught by Akagi-Kraton G-1726
and Kraton G-1652-were shown not to provide the claimed Young's
modulus, storage modulus, and loss factor values. App. Br. 7-8; Reply
Br. 2. Appellant also argues that the Examples shown in the Specification
that reportedly achieved the claimed values for these properties demonstrates
an unexpected result. App. Br. 9.
These arguments are not persuasive of reversible error. Although
Appellant's Table 2 of the Specification reports unsatisfactory Young's
modulus and storage modulus values obtained in adhesive layers formed
from compositions formulated with two commercially-identified
copolymers, Appellant does not persuasively explain how those examples
demonstrate that Akagi' s compositions would not have met the claimed
properties. For example, Akagi's composition includes a tackifier and
plasticizer that are not reported in the Examples in Table 2. Nor does
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Application 14/391,569
Appellant explain why the results shown for two commercial copolymers
necessarily would be indicative of properties that would have been obtained
for each of the block copolymers expressly identified in Akagi. See In re
Klosak, 455 F.2d 1077, 1080 (CCPA 1972) (noting that the burden of
analyzing and explaining data to support nonobviousness rests with
Appellant). Notably, Appellant does not dispute that Akagi provides an
adhesive composition containing the same styrene block copolymer resins as
are defined in claim 1. Compare Akagi ,r 20 (identifying SEBS, SEPS, and
SEEPS as suitable block copolymers), with claim 20 (reciting SEBS, SEPS,
and SEEPS). Thus, Appellant does not persuade us that Akagi's
composition, formulated with the claimed copolymer resin, would not have
yielded the claimed properties when used to form an adhesive layer.
Appellant's allegation of unexpected results also is unpersuasive. A
party asserting unexpected results as evidence of nonobviousness, however,
has the burden of proving that the results are unexpected. In re Geisler, 116
F.3d 1465, 1469-70 (Fed. Cir. 1997). Such burden requires Appellants to
proffer factual evidence that actually shows unexpected results relative to
the closest prior art, see In re Baxter Travenol Labs., 952 F.2d 388, 392
(Fed. Cir. 1991), and that is reasonably commensurate in scope with the
protection sought by claim 1 on appeal, In re Grasselli, 713 F.2d 731, 743
(Fed. Cir. 1983). "[I]t is not enough to show that results are obtained which
differ from those obtained in the prior art: that difference must be shown to
be an unexpected difference." In re Klosak, 455 F.2d 1077, 1080 (CCPA
1972). As noted, Appellant presents data in Table 2 of the Specification that
shows the claimed Young's modulus and storage modulus were not attained
with adhesive compositions formulated with Kraton G-1726 and Kraton G-
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Application 14/391,569
1652, notwithstanding that both these copolymers are characterized in the
Specification as being styrene block copolymers exhibiting the claimed
molecular weight and styrene content. Spec. ,r 91. Thus, Comparative
Examples 3 and 4 in Table 2 appear to represent adhesive compositions that
are within the scope of the claims but failed to achieve the purported
unexpected result. As such, we agree with the Examiner's determination
(Ans. 8-9) that Appellant has not identified evidence of unexpected results
commensurate in scope with the claims.
For the foregoing reasons, Appellant has not persuaded us of
reversible error in the Examiner's rejection of claim 1. Accordingly,
Rejection I is sustained.
Rejection II
Appellant does not present separate arguments against Rejection II,
other than to rely on the same arguments presented in connection with
Rejection I. Accordingly, Rejection II also is sustained.
DECISION
The Examiner's decision rejecting claims 1, 7, 8, 20, 21, and 23 is
affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED
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