Ex Parte Abe et al

Patent Trials and Appeals Board

Apr 23, 2019

12664722 - (D) (P.T.A.B. Apr. 23, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/664,722 06/21/2010
32692 7590 04/25/2019
3M INNOVATIVE PROPERTIES COMPANY
PO BOX 33427
ST. PAUL, MN 55133-3427
FIRST NAMED INVENTOR
Hidetoshi Abe
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.
63159US005 4494
EXAMINER
DUCHENEAUX, FRANK D
ART UNIT PAPER NUMBER
1788
NOTIFICATION DATE DELIVERY MODE
04/25/2019 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 HIDETOSHI ABE, YORINOBU TAKAMATSU, and
MASAAKI FUR USA WA
Appeal 2018-003446
Application 12/664,722
Technology Center 1700
Before CATHERINE Q. TIMM, JAMES C. HOUSEL, and
MERRELL C. CASHION, JR., Administrative Patent Judges.
HOUSEL, Administrative Patent Judge.
DECISION ON APPEAL
Appellants1 appeal under 35 U.S.C. § 134(a) from the Examiner's
decision finally rejecting claims 1, 2, and 6-10.2 We have jurisdiction over
the appeal under 35 U.S.C. § 6(b ).
WeAFFIRM. 3
1 Appellants identify 3M Company and its affiliate, 3M Innovative
Properties Company, as the real parties in interest (Appeal Br. 2).
2 The Examiner has withdrawn pending claims 14 and 19 from
consideration. Final Office Action dated Dec. 16, 2016, p. 1. These claims
are not before us on appeal.
3 Our Decision refers to the Specification ("Spec.") filed Dec. 15, 2009,
Appellants' Supplemental Appeal Brief ("Appeal Br.") filed Oct. 12, 2017,
the Examiner's Answer ("Ans.") dated Dec. 15, 2017, and Appellants'
Reply Brief ("Reply Br.") filed Feb. 14, 2018.
Appeal 2018-003446
Application 12/664,722
STATEMENT OF THE CASE
The invention relates to a colored acrylic adhesive and a marking film
including the adhesive. Spec. 1 :5-6. Appellants disclose that the adhesive
is prepared by mixing a pigment or dye with an amino group-containing
(meth)acrylic polymer free of aromatic vinyl monomers, and mixing the
resulting coloring agent with a carboxylic group-containing (meth)acrylic
polymer. Id. at 2:31-34.
Claim 1, reproduced below from the Claims Appendix to the Appeal
Brief, is illustrative of the subject matter on appeal. The limitations at issue
are italicized.
1. An acrylic colored adhesive comprising:
a carboxylic group-containing (meth) acrylic polymer
that comprises between about 0.5 and about 10 parts by weight
of a carboxylic group-containing monoethylenic unsaturated
monomer;
a coloring agent comprising
(1) a Ti02 pigment; and
(2) an amino group-containing (meth) acrylic
polymer that is free of aromatic vinyl monomers and that
comprises between about 0.5 and about 10 parts by
weight of an amino group-containing monoethylenic
unsaturated monomer;
wherein the acrylic colored adhesive is obtained by a method
comprising the steps of
preparing a coloring agent by mixing the Ti02 pigment
and the amino group-containing (meth) acrylic polymer free of
aromatic vinyl monomers to make a coloring agent; and
mixing the resultant coloring agent and the
carboxylic group-containing (meth) acrylic polymer;
wherein the acrylic colored adhesive comprises 25 to 150 parts
by weight of Ti02 pigment with respect to 100 parts by weight of the
carboxylic group-containing (meth) acrylic polymer.
2
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Application 12/664,722
REJECTIONS
The Examiner maintains, and Appellants request review of, the
following grounds of rejection under 35 U.S.C. § 103(a):
1. Claims 1, 2, and 7-10 as unpatentable over Guerin4 in view of
Adair, 5 and in light ofMasuda6 and Kanner; 7 and
2. Claim 6 as unpatentable over Guerin in view of Adair, and
further in view of Xia. 8
ANALYSIS
We review the appealed rejections for error based upon the issues
identified by Appellants and in light of the arguments and evidence
produced thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010)
(precedential) cited with approval in In re Jung, 637 F.3d 1356, 1365 (Fed.
Cir. 2011) ("[I]t has long been the Board's practice to require an applicant to
identify the alleged error in the examiner's rejections.")). After considering
the evidence presented in this Appeal and each of Appellants' arguments, we
are not persuaded that Appellants identify reversible error. Thus, we affirm
the Examiner's rejections for the reasons expressed in the Final Office
Action and the Answer. We add the following primarily for emphasis.
For Rejection 1, Appellants do not argue the claims separately, but
instead focuses on the limitations of claim 1. Appeal Br. 5-6, 7. We,
therefore, select claim 1 as representative and dependent claims 2 and 7-10
stand or fall with claim 1. 37 C.F.R. § 41.37(c)(l)(iv) (2016). We address
4 Guerin et al., US 4,045,517, issued Aug. 30, 1977 ("Guerin").
5 Adair et al., US 2007/0212506 Al, published Sept. 13, 2007 ("Adair").
6 Masuda et al., US 2001/0019766 Al, published Sept. 6, 2001 ("Masuda").
7 Kanner et al., US 7,070,051 B2, issued July 4, 2006 ("Kanner").
8 Xia et al., US 2006/024296 Al, published Nov. 2, 2006 ("Xia").
3
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Application 12/664,722
claim 6 separately because Appellants present a separate argument as to the
rejection of this claim. Appeal Br. 7.
Claim 1
The Examiner finds that Guerin discloses an acrylic colored adhesive
comprising a carboxylic group-containing (meth)acrylic polymer having
between about 0.5 and about 15 parts by weight of a carboxylic group-
containing monoethylenically unsaturated monomer, an amino group-
containing (meth)acrylic polymer free of aromatic vinyl monomers and
having between about 0.5 and about 15 parts by weight of an amino group-
containing monoethylenically unsaturated monomer, and a pigment. Ans.
2-3. Although the Examiner acknowledges that Guerin fails to teach that
the pigment is Ti02 or the amount of pigment, the Examiner finds Adair
teaches a pigmented adhesive layer may comprise Ti02, and that the amount
may be 0.5-25 wt.%, but may vary to provide reasonable opacity. Id. at 4.
Therefore, the Examiner concludes that it would have been obvious to have
used Ti02 as the pigment in Guerin in an amount up to 25 wt% to provide
the desired aesthetic effect as Adair suggests. Id.
Appellants do not dispute either the above findings or the resulting
obviousness conclusion. See, generally, Appeal Br. and Reply Br. Instead,
Appellants argue that the method recitation in claim I-that the amino
group-containing polymer is mixed with the Ti02 pigment before this
mixture is mixed with the carboxylic group-containing polymer-is not
disclosed in Guerin and that evidence of record establishes the criticality of
this method recitation. Appeal Br. 5. The Examiner acknowledges that
Guerin fails to teach this method recitation, but notes that claim 1 is a
product claim. Ans. 4. The Examiner also notes that a product claim is
unpatentable over a prior art product even though made by a different
4
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Application 12/664,722
process recited in the product claim when the claimed product is the same as
or obvious over the prior art product. Id., citing In re Thorpe, 777 F.2d 695,
698 (Fed. Cir. 1985). The Examiner further notes that the burden rests upon
Appellants to establish an unobvious difference between the claimed product
and the prior art product. Id. at 5, citing In re Marosi, 710 F.2d 798, 802
(Fed. Cir. 1983).
To establish that the method recitation of claim 1 is critical,
Appellants direct our attention to the examples in the Specification, Tables 4
and 5, and pages 19-23, as demonstrating that
products made as recited in claim 1 can achieve a very high
loading of Ti02 pigment with corresponding increase in hiding
power (i.e., a low value reported under 'hiding power'), with
good adhesion between film layer and adhesive layer, and with
some trade-off of the adhesion power of the highly loaded
adhesive.
Appeal Br. 5-6. Appellants contend that the comparative examples
demonstrate attempts to make a coloring agent by mixing Ti02
pigment directly in carboxylic group-containing (meth)acrylic
polymer fail due to insufficient solution stability even at low loadings.
Id. at 6. Appellants also argue that the cited references fail to enable
the presently claimed invention because none of these references
disclose the recited method limitation. Id.
Appellants' arguments do not persuade us of reversible error
because, as the Examiner finds (Ans. 9-13), Appellants' evidence
does not establish that the method limitation is critical in making the
adhesive, or otherwise produces a structural or functional difference,
in the resulting adhesive. Without repetition, we agree with the
Examiner's findings regarding the deficiencies in Appellants'
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Application 12/664,722
evidence and their argument that the method recitation of claim 1 is
critical. Importantly, Appellants' evidence not only fails to
demonstrate that the method recitation of claim 1 is critical, this
evidence actually contradicts Appellants' argument. See Ans. 10,
discussing Spec. Tables 2 and 3, Ex. 10. Appellants fail to rebut, or
otherwise address, the Examiner's findings. 9
Moreover, Comparative Examples 4-9 do not include an amino
group-containing (meth)acrylic polymer and, therefore, do not offer
any results that could be used to establish that the method recitation of
claim 1 is critical. In addition, Example 10 mixes the pigment with a
carboxylic group-containing polymer (Polymer 3) before mixing this
coloring agent with both amino group-containing polymer and
carboxylic group-containing polymer, while Example 11 mixes the
pigment with both amino group-containing polymer and carboxylic
group-containing polymer before mixing this coloring agent with a
carboxylic group-containing polymer. Thus, Examples 10 and 11 do
not utilize the same method as recited in claim 1, yet both these
examples yield results similar to the examples that follow claim l's
method recitation. As indicated above, these examples contradict
Appellants' argument that the method recitation is critical.
9 We note that Appellants fail to rebut, or otherwise address, the Examiner's
finding that Appellants' evidence is not commensurate in scope with the
entire recited range of loadings of Ti02 pigment, from 25 to 150 parts by
weight per 100 parts by weight of the carboxyl group-containing
(meth)acrylic polymer. See Ans. 10-11, finding only Ex. 8 has a loading of
Ti02 within the scope of claim 1. We also note that Examples 18 and 19
recite loadings at the upper end of the range recited in claim 1. See Spec.
Tables 4 and 5.
6
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Appellants' evidence fails to compare the asserted method
recitation to the closest prior art, Guerin, which includes both an
amino group-containing (meth)acrylic polymer and a carboxylic
group-containing polymer. In re Baxter Travenol Labs., 952 F.2d
388, 392 (Fed. Cir. 1991) ("[W]hen unexpected results are used as
evidence of nonobviousness, the results must be shown to be
unexpected compared with the closest prior art.").
Therefore, simply put, Appellants fail to establish that mixing the
amino group-containing polymer with the Ti02 before mixing in the
carboxylic-group-containing polymer produces a different product than
mixing the two polymers together either before or at the same time as
mixing in the pigment. In re Huang, 100 F.3d 135, 139 (Fed. Cir. 1996)
(The burden of establishing that unexpected results support a conclusion of
nonobviousness rests with the Appellants).
In the Reply Brief, Appellants shift from arguing that the method
recitation of claim 1 is critical to arguing that the amino group-containing
polymer with Ti02 is critical. See Reply Br. 2. This shift represents a new
argument that was not raised in the Appeal Brief. Under regulations
governing appeals to the Board, any new argument not timely presented in
the Appeal Brief will not be considered when filed in a Reply Brief, absent a
showing of good cause explaining why the argument could not have been
presented in the Appeal Brief. See 37 C.F.R. § 41.4l(b)(2); In re Hyatt, 211
F.3d 1367, 1373 (Fed. Cir. 2000) (noting that an argument not first raised in
the brief to the Board is waived on appeal); Ex parte Nakashima, 93
USPQ2d 1834 (BP AI 2010) (informative) ( explaining that arguments and
evidence not timely presented in the principal Brief will not be considered
when filed in a Reply Brief, absent a showing of good cause explaining why
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the argument could not have been presented in the Principal Brief); Ex parte
Borden, 93 USPQ2d 1473, 1477 (BPAI 2010) (informative) ("Properly
interpreted, the Rules do not require the Board to take up a belated argument
that has not been addressed by the Examiner, absent a showing of good
cause."). Appellants have provided this record with no such showing and,
therefore, this argument has been waived. 10
Accordingly, we sustain the Examiner's obviousness rejection of
claim 1, 2, and 7-10.
Claim 6
Claim 6 depends from claim 1 and further requires a crosslinker.
Although the Examiner acknowledges that Guerin fails to teach a
crosslinker, the Examiner finds that Xia teaches similar adhesive
compositions including a crosslinker to increase the adhesive's cohesive
strength. Ans. 5-6. The Examiner concludes that it would have been
obvious to include a crosslinker in Guerin' s composition to increase the
adhesive's cohesive strength as Xia teaches. Id. at 6.
Appellants argue that the combination of Guerin and Adair with Xia is
improper because "Xia explicitly teaches against the use of an optically
dense pigment such as Ti02." Appeal Br. 7. Appellants assert that Xia
teaches that additives may be added to the adhesive composition provided
they have no adverse effect on optical clarity. Id. Appellants contend this
"categorically eliminates and teaches away from the pigment required in the
present claims." Id.
10 We note that Appellants' argument fails to account for the fact that Guerin
teaches use of an amino group-containing polymer and, based on
Appellants' argument, would have been expected to be compatible with
Ti02 pigment.
8
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We disagree. It is well established that the obviousness inquiry does
not ask "whether the references could be physically combined but whether
the claimed inventions are rendered obvious by the teachings of the prior art
as a whole." In re Etter, 756 F.2d 852, 859 (Fed. Cir. 1985) (en bane); see
also In re Keller, 642 F.2d 413,425 (CCPA 1981) (stating "[t]he test for
obviousness is not whether the features of a secondary reference may be
bodily incorporated into the structure of the primary reference"); In re
Nievelt, 482 F.2d 965,968 (CCPA 1973) ("Combining the teachings of
references does not involve an ability to combine their specific structures.").
Here, as the Examiner states (Ans. 14), the rejection is not based upon a
bodily incorporation of Xia's adhesive composition into Guerin's or vice
versa. Instead, Xia was relied on for a teaching of a crosslinker that
increases an adhesive's cohesive strength. Appellants fail to identify
reversible error in this finding.
Accordingly, we sustain the Examiner's obviousness rejection of
claim 6.
DECISION
Upon consideration of the record, and for the reasons given above and
in the Examiner's Answer, the decision of the Examiner rejecting claims 1,
2, and 6-10 is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 3 7 C.F .R. § 1.13 6( a)( 1 ).
AFFIRMED
9