3M INNOVATIVE PROPERTIES COMPANY

Patent Trials and Appeals Board

Oct 13, 2021

2021002692 (P.T.A.B. Oct. 13, 2021)

UNITED STATES PATENT AND TRADEMARK OFFICE
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
15/316,995 12/07/2016 Jan Heimink 75353US009 3678
32692 7590 10/13/2021
3M INNOVATIVE PROPERTIES COMPANY
PO BOX 33427
ST. PAUL, MN 55133-3427
EXAMINER
GOLDEN, CHINESSA T
ART UNIT PAPER NUMBER
1788
NOTIFICATION DATE DELIVERY MODE
10/13/2021 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 JAN HEIMINK, KERSTIN UNVERHAU, and JAN D. FORSTER

Appeal 2021-002692
Application 15/316,995
Technology Center 1700
Before LINDA M. GAUDETTE, N. WHITNEY WILSON, and
BRIAN D. RANGE, Administrative Patent Judges.
RANGE, Administrative Patent Judge.
DECISION ON APPEAL

Appeal 2021-002692
Application 15/316,995

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STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–4, 7–14, and 16. We have jurisdiction
under 35 U.S.C. § 6(b).
We AFFIRM. In particular, we sustain the Examiner’s rejection based
on 35 U.S.C. § 112 but do not sustain the Examiner’s rejection based on
35 U.S.C. § 103.
CLAIMED SUBJECT MATTER2
Appellant describes the invention as relating to a pressure sensitive
adhesive. Spec. 1:5–8. In particular, the Specification describes the adhesive
as “suitable for bonding to a substrate provided with an uneven surface” and
as including a polymeric foam layer. Id. at 3:27–32. Claim 1 is the only
independent claim on appeal. We reproduce claim 1 below while adding
emphases to certain key recitations:
1. A pressure sensitive adhesive (PSA) assembly
suitable for bonding to a substrate provided with an uneven
surface, wherein the pressure sensitive adhesive (PSA)
assembly comprises
a polymeric foam layer consisting essentially of a
polymeric base material and
a particulate filler material comprising a
thermoplastic material, and
wherein the polymeric foam layer has a complex
viscosity comprised between 2,000 Pa.s to 80,000 Pa.s, when

1 “Appellant” refers to “applicant” as defined in 37 C.F.R. § 1.42. Appellant
identifies the real party in interest as 3M Company. Appeal Br. 3.
2 In this Decision, we refer to the Final Office Action dated May 1, 2020
(“Final Act.”), the Appeal Brief filed September 30, 2020 (“Appeal Br.”),
the Examiner’s Answer dated January 13, 2021 (“Ans.”), and the Reply
Brief filed March 12, 2021 (“Reply Br.”).
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Application 15/316,995

3
measured at 120°C according to the test method described
in the experimental section under the heading “Complex
viscosity@ 120°C”;
wherein the polymeric base material consists essentially
of one or more polymers chosen from polyacrylates; and
wherein the thermoplastic material is selected from the
group consisting of polyolefins chosen from low density or
linear low density polyethylene, medium density polyethylene,
high density polyethylene, polypropylene, polybutylene, and
any polyolefin copolymers or terpolymers.

Appeal Br. 11 (Claims App.) (emphases added).

REFERENCES
The Examiner relies upon the prior art below in rejecting the claims
on appeal:
Name Reference Date
Omoto et al. (“Omoto”) US 3,399,098 Aug. 27, 1968
Blum et al. (“Blum”) US 2007/0148443 A1 June 28, 2007
Keite-Telgenbuscher et al.
(“Keite-Telgenbuscher”)
US 2008/0271845 A1 Nov. 6, 2008

REJECTIONS
The Examiner maintains the following rejections on appeal:
A. Claims 1–4, 7–14, and 16 under 35 U.S.C. § 112 as indefinite.
Ans. 3.
B. Claims 1–4, 7–14, and 16 under 35 U.S.C. § 103 as obvious
over Blum in view of Keite-Telgenbuscher and Omoto. Id. at 3–4.

OPINION
Rejection A, indefiniteness. The Examiner rejects claim 1 and claims
depending from claim 1 as indefinite because claim 1 recites that the foam
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layer has a certain viscocity when measured according to “the test method
described in the experimental section. . . .” Ans. 3. Appellant argues that the
Examiner has not adequately identified why the claim is unclear. Appeal Br.
5–6. For the reasons explained below, Appellant’s argument does not
persuade us of harmful error.
With regard to indefiniteness, the Examiner has appropriately
identified a point of imprecision in the language of claim 1. Claim 1
effectively attempts to incorporate a test method that the Specification
explains as a claim limitation. In doing so, it is unclear how much of the
Specification is incorporated. The claim language is not as precise as the
subject matter permits and does not meet the requirements of § 112(a). See
In re Packard, 751 F.3d 1307, 1313 (Fed. Cir. 2014) (setting forth the
standard that the claim language must be “as precise as the subject matter
permits” and explaining that the USPTO plays an important role in ensuring
that patent claims are clear and unambiguous); accord Nautilus, Inc. v.
Biosig Instruments, Inc., 134 S. Ct. 2120, 2123 (2014) (“Section 112’s
definiteness requirement must take into account the inherent limitations of
language,” yet mandates clarity to the extent possible under the
circumstances).
The Examiner’s rejection gives Appellant an opportunity to bring the
necessary clarity to the claim language. See Packard, 751 F.3d at 1314
(affirming an indefiniteness rejection because Packard had been given the
opportunity to bring clarity to his claim language stating that “[i]n some
cases it is difficult enough for courts to construe claims when the
draftsperson has made every effort to be clear and concise, let alone when
the claims have readily observable ambiguities or incoherencies within
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them.”). 35 U.S.C. § 112 “puts the burden of precise claim drafting squarely
on the applicant.” In re Morris, 127 F.3d 1048, 1056 (Fed. Cir. 1997); see
also Halliburton Energy Servs. v. M-I LLC, 514 F.3d 1244, 1255 (Fed. Cir.
2008) ( “[T]he patent drafter is in the best position to resolve the ambiguity
in the patent claims, and it is highly desirable that patent examiners demand
that applicants do so in appropriate circumstances so that the patent can be
amended during prosecution rather than attempting to resolve the ambiguity
in litigation.”).
Claim 1 is also contrary to 35 U.S.C. § 112(b)’s requirement that the
patent’s claims “particularly point[] out and distinctly claim[] the subject
matter which the inventor or a joint inventor regards as the invention.”
Claim 1 improperly attempts to use the specification rather than the claims
to meet this 35 U.S.C. § 112(b) requirement. The decision in Ex Parte
Fressola, 27 U.S.P.Q.2d 1608, 1993 WL 311933 (BPAI March 2, 1993),
explains in detail why this kind of incorporation by reference is problematic.
Indeed, incorporation of the specification into the claims is only permitted,
at most, in limited circumstances “where there is no practical way to define
the invention in words and where it is more concise to incorporate by
reference rather than duplicating a drawing or table into the claim.” Id. at *2
(citation omitted); see also MPEP § 2173.05(s) (“Where possible, claims are
to be complete in themselves.”). Here, the record does not support that
incorporation by reference is necessary to adequately define claim 1.
We, therefore, sustain the Examiner’s rejection of claim 1, and the
claims dependent thereon, based on failure to comply with 35 U.S.C. § 112.
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Rejection B, obviousness.3 The Examiner rejects claims 1–4, 7–14,
and 16 as obvious over Blum in view of Keite-Telgenbuscher and Omoto.
Ans. 3–4. The Examiner has the initial burden of establishing a prima facie
case of obviousness under 35 U.S.C. § 103. In re Oetiker, 977 F.2d 1443,
1445 (Fed. Cir. 1992) (“[T]he examiner bears the initial burden, on review
of the prior art or on any other ground, of presenting a prima facie case of
unpatentability.”). To establish a prima facie case of obviousness, the
Examiner must show that each and every limitation of the claim is described
or suggested by the prior art or would have been obvious based on the
knowledge of those of ordinary skill in the art or the inferences and creative
steps a person of ordinary skill in the art would have employed. KSR Int’l
Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007); In re Fine, 837 F.2d 1071,
1074 (Fed. Cir. 1988).
To resolve the issues before us on appeal, we focus on the Examiner’s
findings and determinations that relate to the error Appellant identifies.
Because we decide this appeal based on a recitation recited by independent
claim 1, we focus our analysis on claim 1. This analysis is equally applicable
to each dependent claim.
The Examiner finds that Blum teaches a pressure sensitive adhesive
(PSA) sealing tape having an expanded polyacrylic foam layer. Ans. 4
(citing Blum). The Examiner finds that Blum teaches thermoplastic hollow
spheres filled with hydrocarbon gas that expand when heated to form the

3 For efficiency, we proceed with analysis of the Examiner’s obviousness
rejection because our analysis does not depend upon interpretation of the
viscosity recitation discussed above.
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expanded PSA foam layer. Id. The Examiner finds that Blum does not teach
“the filler thermoplastic is low density polyethylene (LDPE).” Id.
The Examiner finds that Omoto teaches a method of making a foamed
polyethylene sheet. Id. at 5 (citing Omoto). The Examiner finds that Omoto
teaches forming the sheet by heating expandable LDPE beads. Id. The
Examiner determines that it would have been obvious “to select []
expandable LDPE beads, as taught by Omoto, as the thermoplastic
expandable filler for making Blum’s PSA” because doing so is “selection of
a known material based on suitabability for its intended use.” Id. (emphasis
removed).4
Appellant argues that the cited references’ combined teachings would
not have resulted in a pressure sensitive adhesive having both a “polymeric
foam layer” and “particulate filler material” as claim 1 recites. Appeal Br. 7–
9. In particular, Appellate argues that both Blum and Omoto merely teach
heating hollow spheres (Blum) or polyethylene beads (Omoto) to form
foamed material. Id. at 7–8. Appellant’s argument persuades us of reversible
error.
Blum teaches that its small hollow spheres expand when heated to
produce the expanded pressure-sensitive adhesive tape. Blum ¶ 27. Omoto
similarly teaches that “foamed polyethylene . . . is obtained by impregnating
polyethylene with a foaming agent.” Omoto 2:7–10. Omoto teaches heating
the polyethylene beads to produce a foamed polyethylene sheet. See, e.g., id.

4 The Examiner relies on Keite-Telgenbuscher as teaching that viscosity is a
result-effective variable. Ans. 4. Because claim 1’s viscosity recitation is not
at issue on appeal with respect to the Examiner’s obviousness rejection, we
need not address this determination.
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at 4:69–5:16. Thus, the references teach that hollow spheres (Blum) or
polyethylene beads (Omoto) may form a foamed polymer composition. The
Examiner does not establish that either reference teaches a single pressure
sensitive adhesive that simultaneously comprises both a “polymeric foam
layer” and “particulate filler material comprising thermoplastic material” as
claim 1 recites. Appeal Br. 11 (Claims App.) (emphasis added).
In the Answer, the Examiner alleges that “the LDPE of Omoto may be
used in the hollow spheres of Blum.” It is unclear whether the Examiner
means (1) that LDPE may be used as the material forming the hollow
spheres of Blum or (2) that LDPE may physically be put in the hollow
spheres of Blum.5 In either event, this rationale does not adequately support
the obviousness rejection.
If the Examiner’s rejection intends to (1) use LDPE as the material
forming the hollow spheres of Blum, then the LDPE would merely be used
to form Blum’s foam material. This does not establish that it would have
been obvious to reach a pressure sensitive adhesive that has both a
“polymeric foam layer” and “particulate filler material comprising
thermoplastic material.” Rather, the evidence before us does not adequately
establish that the hollow spheres of Blum, after processing to form a
polymeric foam layer, would leave behind LDPE filler material in
particulate form. As such, the evidence does not support that the proposed
Blum-Omoto combination would result in a single pressure sensitive
adhesive having both a foam layer and LDPE particulate filler material.

5 The Examiner’s ambiguity also weighs against sustaining this rejection.
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If the Examiner’s rejection intends to (2) physically put LDPE inside
of the hollow spheres of Blum, the Examiner has not adequately explained
why a person of skill in the art would have made such a combination. Reply
Br. 2–3. Rather, Blum’s hollow spheres create foamed polymer in Blum’s
process and LDPE creates foamed polymer in Omato’s process. Id. The
Examiner has not explained why a person of skill in the art would seek to
mesh these processes in a way neither reference suggests by putting LDPE
inside of Blum’s hollow spheres. Moreover, even if a person of skill in the
art made this modification, the Examiner does not adequately establish that
the combined processes would result in a single pressure sensitive adhesive
that has both a “polymeric foam layer” and “particulate filler material
comprising thermoplastic material.” Reply Br. 3–4.
For the reasons above, we do not sustain the Examiner’s obviousness
rejection.
DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–4, 7–14,
16
112 Indefiniteness 1–4, 7–14,
16

1–4, 7–14,
16
103 Obviousness 1–4, 7–14,
16
Overall
Outcome
1–4, 7–14,
16

Appeal 2021-002692
Application 15/316,995

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TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).

AFFIRMED