3M INNOVATIVE PROPERTIES COMPANY

Patent Trials and Appeals Board

Mar 8, 2022

2021000391 (P.T.A.B. Mar. 8, 2022)

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. 14/888,810 11/03/2015 Jan Heimink 71163US007 3570 32692 7590 03/08/2022 3M INNOVATIVE PROPERTIES COMPANY PO BOX 33427 ST. PAUL, MN 55133-3427 EXAMINER CHANG, VICTOR S ART UNIT PAPER NUMBER 1788 NOTIFICATION DATE DELIVERY MODE 03/08/2022 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, JAN D. FORSTER, JAN U. WIENEKE, FRANK KUESTER, SIEGFRIED R. GOEB, DOREEN ECKHARDT, REGINA SIKORA, RUCHI PANDEY, and SURESH S. IYER __________ Appeal 2021-000391 Application 14/888,810 Technology Center 1700 ___________ Before ADRIENE LEPIANE HANLON, JEFFREY B. ROBERTSON, and SHELDON M. McGEE, Administrative Patent Judges. HANLON, Administrative Patent Judge. DECISION ON APPEAL A. STATEMENT OF THE CASE The Appellant1 filed an appeal under 35 U.S.C. § 134(a) from an Examiner’s decision finally rejecting claims 1, 3, 5-8, 11-13, and 16. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 1 “Appellant” refers to “applicant” as defined in 37 C.F.R. § 1.42. The Appellant identifies the real parties in interest as 3M Company and its affiliate 3M Innovative Properties Company. Appeal Brief dated June 10, 2020 (“Appeal Br.”), at 2. Appeal 2021-000391 Application 14/888,810 2 Representative claim 1 is reproduced below from the Claims Appendix to the Appeal Brief. The limitations at issue are italicized. 1. A multilayer pressure sensitive adhesive assembly comprising: a first pressure sensitive adhesive layer comprising a hollow non-porous particulate filler material, wherein the surface of the hollow non-porous particulate filler material is provided with a hydrophobic surface modification by chemically reacting said non- porous particulate filler material with an alkyl silane or an alkoxy silane, wherein the hollow non-porous particulate filler material consists of hollow glass microspheres, and wherein the first pressure sensitive adhesive layer is a polymeric foam layer and having a thickness in a range of 100 to 6000 micrometers, the first pressure sensitive adhesive layer comprising a polymer base material comprised of a polar acrylate comonomer; and a second pressure sensitive adhesive layer adjacent to and separate from the first pressure sensitive adhesive layer, wherein the second pressure sensitive adhesive layer is an unfoamed skin layer that does not contain any hollow non-porous particulate filler material and has a thickness in a range of 20 to 250 micrometers. Appeal Br. 10. On appeal, the Examiner maintains the rejection of claims 1, 3, 5-8, 11-13, and 16 under 35 U.S.C. § 103 as unpatentable over Epple2 in view of Yamanaka,3 Zhang,4 and BAE.5,6 2 US 2004/0131846 A1, published July 8, 2004 (“Epple”). 3 US 2011/0151249 A1, published June 23, 2011 (“Yamanaka”). 4 US 6,635,735 B1, issued October 21, 2003 (“Zhang”). 5 US 2015/0368523 A1, published December 24, 2015 (“BAE”). 6 Claim 4 was also finally rejected under 35 U.S.C. § 103 based on the combination of Epple, Yamanaka, Zhang, and BAE. However, claim 4 was cancelled in an amendment dated December 2, 2019. See Appeal Br. 10 (identifying claim 4 as “Canceled”). The statement of the rejection has been corrected accordingly. Appeal 2021-000391 Application 14/888,810 3 B. DISCUSSION The Examiner finds Epple discloses a multilayer pressure sensitive adhesive tape, wherein the core layer comprises hollow glass microspheres dispersed in a rubber-based pressure sensitive adhesive polymer matrix. Final Act. 3.7 The Examiner finds Epple does not teach that the surface of the microspheres is modified with a hydrophobic surface treatment as recited in claim 1. Final Act. 3. The Examiner also does not find that Epple’s polymer base material comprises a polar acrylate comonomer as claimed. The Examiner relies on Yamanaka to show the combination, in a pressure sensitive adhesive layer, of hollow glass particles modified with a hydrophobic surface treatment and a base polymer that includes a polar group-containing monomer as claimed.8 Ans. 8;9 see Yamanaka ¶ 25 (disclosing that various copolymeric monomers, such as polar group-containing monomer and polyfunctional monomer, may be used as monomer components); Yamanaka ¶ 26 (examples of polar group-containing monomers include carboxyl group-containing monomers, such as (meth)acrylic acid);10 see also Spec. 12, ll. 22-26 (disclosing a polymer base material comprising a polar comonomer, preferably a polar acrylate, 7 Final Office Action dated January 10, 2020. 8 Yamanaka discloses that the amount of the polar group-containing monomer is less than or equal to 30 mass % based on the total mass of the monomer components for preparing the acrylic polymer. Yamanaka ¶ 27. Notably, the claims on appeal do not recite the amount of polar acrylate comonomer used to prepare the polymer base material. See Ans. 8. 9 Examiner’s Answer dated August 20, 2020. 10 The Examiner also finds, and the Appellant does not dispute, that BAE discloses a pressure sensitive adhesive composition comprising a copolymer of butyl acrylate and acrylic acid (i.e., a polar comonomer). Final Act. 4. Appeal 2021-000391 Application 14/888,810 4 more preferably selected from the group including acrylic acid and methacrylic acid). More specifically, Yamanaka discloses that the surface of the hollow particles may be subjected to various surface treatments, such as low surface tension treatment by silicone or fluorine compounds. Yamanaka ¶ 48; see Final Act. 3 (citing Yamanaka ¶¶ 48, 110). The Examiner finds, and the Appellant does not dispute, that the low surface tension treatment taught in Yamanaka is a hydrophobic treatment.11 Final Act. 3; Ans. 4. The Appellant argues that “the prior art fails to disclose any reason to dispose a hydrophobic filler into ‘a polymer base material comprised of a polar acrylate comonomer,’ as required by claim 1.” Appeal Br. 6; see also Appeal Br. 7 (arguing that none of the references “contain any reason one of ordinary skill would pair a hydrophobic surface treatment with ‘a polar acylate [sic] comonomer’”). To the contrary, Yamanaka teaches that combining hollow inorganic particles, including hydrophobic hollow glass particles, and a base polymer that includes a polar group-containing monomer, as claimed, results in a pressure- sensitive adhesive layer “hav[ing] high shear strength without impairing the usual adhesive force.” Yamanaka ¶ 41. In an attempt to distinguish the Appellant’s invention from the prior art, the Appellant argues that the conventional reason for surface treating a filler is to improve adhesion between the filler and the adhesive matrix. Appeal Br. 6. In contrast, the Appellant argues that the Appellant’s invention reduces adhesion 11 The Examiner also finds, and the Appellant does not dispute, that Zhang teaches using an organoalkoxysilane to render glass particles hydrophobic. Final Act. 4. Appeal 2021-000391 Application 14/888,810 5 between the filler and the precursor composition matrix, thereby improving peel performance. Appeal Br. 6 (citing Spec. 5, l. 33-6, l. 2). To the extent that Yamanaka does not expressly disclose that peel performance is also improved by the combination of hydrophobic hollow glass particles and a base polymer comprising a polar group-containing monomer, we find that the combination disclosed in Yamanaka, which is the same or substantially the same as the pairing recited in claim 1, inherently “improves” peel performance. See In re Papesch, 315 F.2d 381, 391 (CCPA 1963 (“a compound and all of its properties are inseparable”); see also Ans. 7 (citing Yamanaka ¶ 50). The Appellant also directs our attention to Evidence Appendices A and B to the Appeal Brief in an apparent attempt to show that the claimed invention exhibits unexpected results. Appeal Br. 6. Appendices A and B are said to “show 180° peel adhesion data on samples having varying amounts of silane-treated hollow glass microspheres dispersed in a non-polar triblock copolymer based PSA [pressure sensitive adhesive], similar to the styrenic triblock copolymer PSA used in Epple.” Appeal Br. 6 (emphasis added). The Appellant contends that Appendix B shows that “the peel adhesion was worsened by inclusion of the treated glass microspheres.” Appeal Br. 6. Table 16 in the Appellant’s Specification, on the other hand, is said to show “an enhancement in peel adhesion.” Appeal Br. 6 (emphasis omitted). Significantly, the Appellant has not shown that the results reported in Evidence Appendices A and B are disclosed in the Appellant’s Specification or are included in a previously filed Declaration under 37 C.F.R. § 1.132. Ans. 6-7. Therefore, the results reported in the Evidence Appendix amount to nothing more than attorney argument. See In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984) (“unexpected results must be established by factual evidence”). Moreover, the Appeal 2021-000391 Application 14/888,810 6 Appellant does not direct us to any evidence showing that any improvement reported in Table 16 would have been “unexpected.” See In re Freeman, 474 F.2d 1318, 1324 (CCPA 1973) (in order for a showing of “unexpected results” to be probative evidence of non-obviousness, an applicant must establish that the difference between the results of the claimed invention and the prior art would not have been expected by one skilled in the art at the time of invention). Finally, the Appellant must compare the claimed invention to the closest prior art. De Blauwe, 736 F.2d at 705. In this case, the Appellant has failed to explain why Formulations 1-4 in Evidence Appendices A and B, rather than the examples disclosed in Epple or Yamanaka, are the closest prior art. See Advisory Act. 212 (finding that there is no indication that the adhesive layer described in Appendices A and B has been EB (electron beam) cured as disclosed in Epple). On balance, the evidence of record weighs in favor of the Examiner’s conclusion of obviousness as to claim 1. The Appellant does not present arguments in support of the separate patentability of any of the remaining claims on appeal. Therefore, the obviousness rejection of claims 1, 3, 5-8, 11-13, and 16 is sustained. C. CONCLUSION The Examiner’s decision is affirmed. In summary: 12 Advisory Action dated March 20, 2020. Appeal 2021-000391 Application 14/888,810 7 Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1, 3, 5-8, 11-13, 16 103 Epple, Yamanaka, Zhang, BAE 1, 3, 5-8, 11- 13, 16 No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED