Ex Parte Tobing et alDownload PDFPatent Trial and Appeal BoardMar 23, 201613239815 (P.T.A.B. Mar. 23, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 13/239,815 09/22/2011 Singa D. Tobing 22907 7590 03/25/2016 BANNER & WITCOFF, LTD. 1100 13th STREET, N.W. SUITE 1200 WASHINGTON, DC 20005-4051 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. 004756.00039 5279 EXAMINER HUANG, CHENG YUAN ART UNIT PAPER NUMBER 1787 NOTIFICATION DATE DELIVERY MODE 03/25/2016 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): eofficeaction@bannerwitcoff.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte SINGA D. TOBING, BARRY REESE and DONOVAN YOUNG Appeal2014-007144 Application 13/239,815 Technology Center 1700 Before JEFFREY T. SMITH, KAREN M. HASTINGS, and MICHAEL P. COLAIANNI, 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 a final rejection of claims 1-15. We have jurisdiction under 35 U.S.C. § 6. We REVERSE. Appellants' appealed invention is illustrated by independent claim 1, reproduced below: Appeal2014-007144 Application 13/239,815 1. A hybrid pressure sensitive adhesive composition compnsmg: an organic solvent phase comprising a first acrylic pressure sensitive adhesive dissolved in an organic solvent and an alcohol; and a water-based emulsion phase comprising an emulsified second acrylic pressure sensitive adhesive. Appellants (see Appeal Brief, generally) request review of the following rejections from the Examiner's Final Office Action: I. Claims 1-13 and 15 are rejected under 35 U.S.C. § 103(a) as unpatentable over Schmitt et al., (US 5,412,035, issued May 2, 1995, hereinafter "Schmitt"). II, Claim 14 rejected under 35 U.S.C. § 103(a) as unpatentable over Schmitt and Lamon et al., (US 6,565,969 Bl, issued May 20, 2003, hereinafter "Lamon"). OPINION We REVERSE. Rejection 1 1 After review of the respective positions provided by Appellants and the Examiner, we REVERSE the Examiner's prior art rejection of claims 1- 13 and 15 for the reasons presented by Appellants. We add the following. 1 We limit our discussion to independent claim 1. 2 Appeal2014-007144 Application 13/239,815 Independent claim 1 is directed to a hybrid pressure sensitive adhesive (PSA) comprising an organic solvent phase and a water-based emulsion phase. App. Br. 3; Spec. i-f 9. According to the Specification, a package comprising a metallized layer and an ink-coated polymeric layer uses a PSA to provide a resealable opening. Spec. i-f 5. When the package is open, the effectiveness of the PSA layer to reseal the package is impaired when the PSA lifts ink from the polymeric layer, resulting in ink-covered PSA layers being laid down on the surface of the metallized layer. Id. The Specification describes that the solvent-based polymer component of the adhesive layer adsorbs the ink faster than the emulsion-based polymer component when the hybrid PSA is applied to an ink-coated polymeric layer. Id. at 11. This results on the emulsion polymer staying on the top of the adhesive layer to contact the metallized layer while the solvent-based polymer binds to the ink of the ink- coated polymeric layer, thereby minimizing the transfer of ink onto the surface of the metalized layer when the package is opened. Id. The Examiner found Schmitt teaches a hybrid PSA composition comprising a solvent phase comprising a first acrylic PSA dissolved in an organic solvent, an alcohol; and an emulsion phase comprising an emulsified second acrylic PSA. Final Act. 2; Schmitt Abstract, col. 11, 11. 42-54, col. 13, 11. 4--11, col. 15, 11. 22-29, col. 21, 11. 28-32. While the Examiner found Schmitt failed to exemplify the presently claimed hybrid PSA composition, the Examiner determined it would have been obvious to one skilled in the art to arrive to the claimed invention from Schmitt's disclosure through routine experimentation because of the overlap between the claimed hybrid PSA composition and the hybrid PSA composition of Schmitt. Final Act. 2-3. 3 Appeal2014-007144 Application 13/239,815 Appellants argue Schmitt does not disclose PSA compositions involving a first PSA component in an organic solvent phase and a second PSA component in a water-based emulsion phase as claimed. App. Br. 4--5. According to Appellants, all of the possible PSA formulations described in Schmitt are either solvent-free or have a single continuous phase (solution, emulsion or dispersion as alternatives to one another). App. Br. 5---6; Schmitt col. 15, 11. 26-32. We agree with Appellants that the Examiner has not established a prima facie case of obviousness. The Examiner relies principally on Schmitt's disclosure of using a solvent or an aqueous medium in making the PSA solution, emulsion or dispersion (emphasis added). Final Act. 2; Ans. 3; Schmitt col. 15, 11. 22-29. However, the Examiner directs us to no portion of Schmitt that would have led one skilled in the art to make a hybrid PSA having an organic solvent phase and a water-based emulsion phase as required by the subject matter of independent claim 1 (emphasis added). App. Br. 4--7. In addition, the Examiner has not presented an adequate technical explanation to support the determination that one skilled in the art would expect Schimtt's PSA to comprise an organic solvent phase and a water-based emulsion phase. Given that Schmitt discloses mixing the ingredients forming the PSA using a solvent or an aqueous medium (Schmitt col. 15, 11. 22-29), the Examiner has not adequately explained that Schmitt's PSA composition would necessarily have the claimed organic solvent phase and a water-based emulsion phase. Under these circumstances, we cannot conclude that the Examiner has met the minimum threshold of establishing obviousness under 35 U.S.C. 4 Appeal2014-007144 Application 13/239,815 § 103(a). See Jn re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992); KSR Int'! Co. v. Teleflex, Inc., 550 U.S. 398, 418 (2007) (quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)). Accordingly, we reverse the Examiner's prior art rejection under 35 U.S.C. § 103(a). Rejection II The Examiner's prior art rejection of claim 14 under 35 U.S.C. § 103 (a) is premised on the teachings of Schmitt rendering the hybrid PSA of the subject matter of independent claim 1 obvious to one skilled in the art. Final Act. 4. As discussed above, such is not the case. The Examiner did not rely on the additionally cited secondary reference to overcome the previously noted deficiencies of Schmitt. Id. at 4--5. Accordingly, we also reverse the Examiner's prior art rejection of claim 14 for the reasons presented by Appellants and given above. ORDER The Examiner's prior art rejections under 35 U.S.C. § 103(a) are reversed. REVERSED 5 Copy with citationCopy as parenthetical citation