Ex Parte Cheung et al

Patent Trial and Appeal Board

Jul 30, 2018

13617440 (P.T.A.B. Jul. 30, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/617,440
31217 7590
Henkel Corporation
One Henkel Way
Rocky Hill, CT 06067
09/14/2012
08/01/2018
FIRST NAMED INVENTOR
Chuiwah Alice Cheung
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.
PT031365 US 4879
EXAMINER
SANDERSON, LEE E
ART UNIT PAPER NUMBER
1782
NOTIFICATION DATE DELIVERY MODE
08/01/2018 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):
rhpatentmail@henkel.com
trish.russo@henkel.com
PTOL-90A (Rev. 04/07)
UNITED ST ATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CHUIW AH ALICE CHEUNG, P ATRICKJAMES HAYES, and
STEPHANE BELMUDES 1
Appeal 2017-010669
Application 13/617,440
Technology Center 1700
Before BRADLEY R. GARRIS, DONNA M. PRAISS, and
DEBRA L. DENNETT,Administrative Patent Judges.
GARRIS, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134, Appellants appeal from the Examiner's
rejection under 35 U.S.C. § 103(a) of claims 1, 5-9, 11, 12, and 14--16 as
unpatentable over Dubois (US 6,319,979 Bl, issued Nov. 20, 2001) in view
of Karjala (US 2010/0160497 Al, pub. June 24, 2010). We have
jurisdiction under35 U.S.C. § 6.
1 Henkel IP & Holding GmbH is identified as the real party in interest (App.
Br. 3).
Appeal 2017-010669
Application 13/617,440
We AFFIRM.
Appellants claim a hot melt adhesive comprising a metallocene
catalyzed polyethylene copolymer that is an ethylene-octene copolymer,
about 0. 5 ( claim 1) or 0.3 ( claim 9) to about 5 wt% of a functionalized
metallocene catalyzed polyether copolymer such as a maleic anhydride
functionalized metallocene catalyzed polyethylene copolymer that is co-
monomerized with, for example, octene monomer, as well as a wax, and a
tackifier, wherein the hot melt adhesive has a service temperature from
about -20°F to about 140°F (independent claim 1 and remaining independent
claim 9).
Appellants do not present separate arguments specifically directed to
the dependent claims under rejection (see App. Br. 7-13). Therefore, the
dependent claims will stand or fall with the parent independent claims of
which claim 1 is representative.
We sustain the Examiner's rejection for the reasons expressed in the
Final Office Action, the Answer, and below.
In rejecting claim 1, the Examiner finds that Dubois discloses a hot
melt adhesive comprising a metallocene catalyzed ethylene/1-octene
copolymer, a wax, and a tackifier as claimed in combination with up to 10
wt % of a maleated/ grafted polyethylene copolymer (Final Action 3 ( citing
Dubois, e.g., col. 20, 11. 37-50)). The Examiner additionally finds that
Dubois is silent regarding the maleated/grafted polyethylene copolymer
being metallocene catalyzed but that Karjala discloses a metallocene
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Application 13/617,440
catalyzed ethylene/1-octene copolymer functionalized by grafting with
maleic anhydride in order to improve the adhesiveness of hot melt adhesive
compositions (id. ( citing Karjala, e.g., ,r,r 33, 49, 133)).
The Examiner concludes that it would have been obvious to use the
maleic anhydride functionalized metallocene catalyzed ethylene/1-octene
copolymer taught by Karjala as the maleated/grafted polyethylene
copolymer of Dubois in order to increase the adhesiveness of Dubois' hot
melt adhesive compositions as taught by Karjala and that it would have been
obvious to provide this functionalized metallocene catalyzed ethylene/1-
octene copolymer in an amount of about 0. 5 to about 5 wt% as claimed in
view of Dubois disclosing the maleated/ grafted polyethylene copolymer is
present in an amount up to 10wt% (id. at4).
Consistent with the Examiner's above fmding, Appellants state that
"Dubois fails to teach or suggest adding a functionalized metallocene
catalyzed polyethylene copolymer in the adhesive" (App. Br. 9). Appellants
then argue that "[a]ccordingly, the [Examiner's rejection] runs afoul of the
'lead compound' analysis discussed in Takeda Chemical Industries, Ltd. v.
Alphapharm Pty., Ltd., 492 F.3d 1350 (Fed. Cir. 2007)" (id.).
Appellants' argument is unpersuasive because the Examiner's
rejection does not propose modifying a known lead compound of Dubois in
order to obtain a new claimed compound. Rather, as indicated previously,
the rejection proposes using Karjala's maleic anhydride functionalized
metallocene catalyzed ethylene/1-octene copolymer as the maleated/ grafted
polyethylene copolymer of Dubois (Final Action 4).
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Application 13/617,440
Further, Appellants contend that "persons of ordinary skill in the art
would not be motivated to look to Dubois to create an adhesive composition
for extended service temperatures" (App. Br. 9).
Contrary to Appellants' apparent belief, the rejection is not improper
merely because the applied prior art is silent regarding the problem of
extended service temperatures addressed by Appellants. "Under the correct
analysis, any need or problem known in the field of endeavor at the time of
invention and addressed by the patent can provide a reason for combining
the elements in the manner claimed." KSR Int 'l Co. v. Teleflex Inc., 550
U.S. 398,420 (2007). Here, the Examiner's reason for combining Dubois
and Karjala is to enhance adhesion properties as taught by Karjala, and this
reason is premised on the need or problem addressed in these references
involving effective hot melt adhesives.
For analogous reasons, we perceive no convincing merit in
Appellants' argument that "it is not predictable that addition of [Karjala' s
maleic anhydride functionalized metallocene catalyzed ethylene/1-octene
copolymer] would indeed extend the service temperature ranges of from
about-20°F to about 140°F of the adhesive [as claimed]" (App. Br. 12).
With regard to this claimed service temperature range, we emphasize the
Examiner's point that the proposed combination of Dubois and Karjala
would have yielded a composition identical to, and therefore necessarily
possessing the same service temperature properties as, the claimed
composition (Ans. 8).
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Appeal 2017-010669
Application 13/617,440
Appellants state that Karjala's functionalized metallocene catalyzed
copolymer is present in an amount from 15 to 20 wt% in contrast to the
independent claim requirement of about 0. 5 ( claim 1) or 0. 3 ( claim 9) to
about 5 wt% (App. Br. 12).
Appellants' statement does not address the rejection under review. As
explained by the Examiner, Karjala is relied on only for its disclosure of
functionalized metallocene catalyzed copolymer, whereas Dubois is relied
on for its teaching of up to 10 wt% maleated/ grafted (i.e., functionalized)
copolymer(Dubois col. 20, 11. 39--41, 49-50) as suggestive of Appellants'
claimed amount (Ans. 6).
Appellants contend that Dubois' disclosure of" grafted and malleated
versions" ( col. 20, 11. 40--41) of homopolymers, copolymers, and
terpolymers of ethylene relates only to certain listed polymers which do not
include a maleic anhydride functionalized polyethylene copolymer co-
monomerized with propylene, butene, hexene, or octene monomers (App.
Br. 7-8). According to Appellants, "if Dubois had intended to include
propylene, butene, hexene and/or octene as comonomers to polyethylene,
then Dubois would have included them in the list" (Reply Br. 3).
However, we agree with the Examiner that Dubois' teaching of
grafted and maleated versions is not limited to specifically recited polymers
but instead is applicable to copolymers of ethylene generally (see Dubois
col. 20, 11. 39--41 ("copolymers ... of ethylene ... as well as grafted and
malleated versions")) including the ethylene/1-octene copolymer disclosed
by both Dubois and Karjala (see, e.g., Final Action 3, Ans. ,r bridging 6-7).
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In addition, we emphasize that Appellants provide no evidence in support of
their previously quoted statement that "Dubois would have included them in
the list" (Reply Br. 3).
Finally, Appellants state that functionalized ethylene interpolymers
have polar characteristics while the rest of the adhesive components have
non-polar characteristics (id.) and that "a skilled [person in the art] would
not be led to add a large quantity of polar, functionalized ethylene, into
mainly non-polar substance since it would lead to phase separation" (id. at 4
(citing Spec. ,r 20)).
Even accepting these statements as accurate, they are not relevant to
the Examiner's rejection. We acknowledge that Appellants' cited paragraph
20 of the Specification discloses using 0.5 wt% to 10 wt% offunctionalized
metallocene polyethylene copolymer while more than 10 wt% may lead to
phase separations. However, the Examiner does not propose using more
than 10 wt%. Instead, as explained earlier, the Examiner proposes using
from about O. 5 to about 5 wt% as required by claim 1 in view of Dubois'
disclosure ofusing upto 10 wt% (col. 20, 11. 49-50) (Final Action 4).
For the reasons stated above and given by the Examiner, Appellants
fail to show reversible error in the§ 103 rejection of the claims before us in
this appeal.
The decision of the Examiner is affrrmed.
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Appeal 2017-010669
Application 13/617,440
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED
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