Ex Parte Cisowski et al

Patent Trial and Appeal Board

Sep 29, 2017

13564787 (P.T.A.B. Sep. 29, 2017)

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.
13/564,787 08/02/2012 Natacha Cisowski 70838-US-NP 3275
21898 7590 10/03/2017
ROHM AND HAAS COMPANY
c/o The Dow Chemical Company
P.O. Box 1967
2040 Dow Center
Midland, MI 48641
EXAMINER
KRUER, KEVIN R
ART UNIT PAPER NUMBER
3649
NOTIFICATION DATE DELIVERY MODE
10/03/2017 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):
FFUIMPC@dow.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte NATACHA CISOWSKI, WILLIAM B. GRIFFITH JR., and
ISABELLE UHL
Appeal 2016-005434
Application 13/564,787
Technology Center 3600
Before CHARLES N. GREENHUT, ANNETTE R. REIMERS, and
NATHAN A. ENGELS, Administrative Patent Judges.
REIMERS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Natacha Cisowski et al. (Appellants) appeal under 35 U.S.C. § 134(a)
from the Examiner’s decision to reject claims 1—4 under 35 U.S.C. § 103(a)
as unpatentable over Griffith (US 2002/0132966 Al, pub. Sept. 19, 2002)
and Ugolick (US 5,993,961, iss. Nov. 30, 1999). We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.
Appeal 2016-005434
Application 13/564,787
CLAIMED SUBJECT MATTER
The claimed subject matter “relates to a plasticized polyvinyl chloride
(‘PVC’) structure.” Spec. 1:3. Claims 1 and 2 are independent.
Claim 1 is illustrative of the claimed subject matter and recites:
1. A structure comprising:
a) a polyvinyl chloride(“PVC”) support, said support
comprising from 5% to 40% by weight, based on the weight of
PVC, DINCH (1,2-cyclohexane dicarboxylic acid di-isononyl
ester) plasticizer; said support having at least one surface and,
disposed thereon,
b) a crosslinked polymeric coating formed from a
composition comprising an emulsion polymer bearing at least
two reactive groups and a modifying compound bearing at least
two complementary groups, wherein at least two of said reactive
groups have formed a covalent bond with at least two of said
complementary groups; and disposed on said crosslinked
coating,
c) a substantially uncrosslinked pressure sensitive
adhesive.
ANALYSIS
Appellants do not offer arguments in favor of independent claim 2 or
dependent claims 3 and 4 separate from those presented for independent
claim 1. See Appeal Br. 5—7. We select claim 1 as the representative claim,
and claims 2-4 stand or fall with claim 1. 37 C.F.R. § 41.37(c)(l)(iv).
Appellants contend that neither Griffith nor Ugolick discloses “a PVC
support including a DINCH plasticizer,” as claimed. See Appeal Br. 5; see
also id. at 6—7; Reply Br. 2-A.
In response to Appellants’ argument, the Examiner correctly points
out that “the rejection relies upon [A]ppellant[s’] admission that DINCH
plasticizers have traditionally been utilized in PVC films in amounts of
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about 25% in order to improve the flexibility of said films.” See Ans. 4—5
(citing Spec. 1:20+); see also Final Act. 4 (The Examiner finds that “Griffith
does not teach the polyvinyl chloride support should comprise from 5% to
40% by weight DINCH (1,2-cyclohexane dicarboxylic acid di-isononyl
ester) plasticizer. However, [Appellants] admit[] that DINCH plasticizers
have traditionally been utilized in PVC films in amounts of about 25% in
order to improve the flexibility of said films.” The Examiner concludes that
it would have been obvious “to utilize 25% DINCH plasticizer in the PVC
film substrate taught in Griffith. The motivation for doing so would have
been [Appellants] admit[] DINCH plasticizers have been utilized in PVC
films in such amounts in order to improve flexibility.”). Appellants do not
apprise us of error in the Examiner’s findings.
Appellants contend that “Griffith lacks a coating that is selected to act
as an effective barrier coating.” Appeal Br. 5. Stated differently, according
to Appellants, “the barrier coat function is not disclosed in Griffith.” Id.
Here, the Examiner correctly points out that claim 1 “do[es] not require any
particular layer to be a barrier layer. Thus, [A]ppellant[s’] arguments are not
commensurate in scope with the pending claims.” Ans. 5. In re Self, 671
F.2d 1344, 1348 (CCPA 1982) (Limitations not appearing in the claims
cannot be relied upon for patentability). Further, the Examiner asserts that
the “primer [of Griffith] reads on the compositional limitations of the
claimed ‘aqueous crosslinkable polymeric coating’ layer.” Ans. 5.
Appellants do not apprise us of Examiner error.
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Appellants contend that “[t]here is no suggestion within Ugolick to
utilize a crosslinked barrier coating but rather the insistence that his pressure
sensitive adhesive properties must be maintained.” See Appeal Br. 6; see
also Reply Br. 4. Here, the Examiner correctly points out that “Ugolick was
never relied upon to teach the crosslinked barrier coating. Furthermore, the
rejection never took the position it would have been obvious to utilize a
crosslinked barrier coating in the laminate disclosed in Ugolick.” See Ans.
5—6; see also Final Act. 3, 5. Appellants do not apprise us of Examiner
error.
Appellants contend that “the functional performance of [Appellants’
structure was not taught or suggested by either Griffith in view of Ugolick
nor obvious over the art at the time of [Appellants’ invention.” See Reply
Br. 2; see also Appeal Br. 6—7. In particular, Appellants contend that “the
overall claimed structure [of the subject invention] provides [an] effective
and sought after reduction of plasticizer migration from the PVC substrate to
the adhesive” and that the “desired migration resistance [of the subject
invention] cannot be expected to be achieved without undue and
unmotivated experimentation based on Griffith in view of Ugolick.” See
Reply Br. 3; see also Appeal Br. 6—7.
As an initial matter, we note that claim 1 recites nothing about the
claimed structure providing an “effective and sought after reduction of
plasticizer migration from the PVC substrate to the adhesive.” See Appeal
Br. 8, Claims App.; In re Self, 671 F.2d at 1348. Although the claims are
interpreted in light of the Specification, limitations from the Specification
are not read into the claims. In re Van Geuns, 988 F.2d 1181, 1184 (Fed.
Cir. 1993). Appellants elected to define the claimed subject matter using
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Application 13/564,787
language that omits limitations found in the Specification and we will not
now import those limitations into the claims. The Federal Circuit has
“repeatedly held that the fact that the specification describes only a single
embodiment, standing alone, is insufficient to limit otherwise broad claim
languageHowmedica Osteonics Corp. v. Wright Med. Tech., Inc., 540
F.3d 1337, 1345 (Fed. Cir. 2008) (emphasis added).
Additionally, Appellants’ contention regarding the “desired migration
resistance [of the subject invention not being] expected to be achieved
without undue and unmotivated experimentation based on Griffith in view of
Ugolick” (see Appeal Br. 7; see also Reply Br. 3), amounts to unsupported
attorney argument, and thus, is entitled to little, if any, weight. See In re De
Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984) (Arguments and conclusions
unsupported by factual evidence carry no evidentiary weight); see also Ans.
6 (“[C]ounsel[s’] argument cannot take the place of evidence.”).
Appellants contend that the Examiner fails to provide a reason with
rational underpinnings to combine Griffith and Ugolick, and the Examiner
engages in impermissible hindsight in combining the references. See Appeal
Br. 7 ; see also Reply Br. 4.
In this case, the Examiner articulates adequate reasoning based on
rational underpinnings to explain why one of ordinary skill in the art would
have been led to combine the teachings of Griffith and Ugolick, namely, “to
apply the acrylic PSA barrier layer [as taught by Ugolick] between the
facestock and adhesive layer taught in Griffith in order to prevent migration
of mobile ingredients therebetween.” See Final Act. 3; see also Ans. 6
(“adding said layer [of Ugolick] to the laminate of Griffith was to prevent
migration of mobile ingredients between the various layers of the
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laminate.”). Appellants do not provide persuasive evidence or argument
apprising us of Examiner error. Moreover, the Examiner cites specific
teachings in the references themselves, not Appellants’ disclosure, in support
of the Examiner’s articulated reasoning for combining the references as
proposed in the rejection. See Final Act. 2—3.
In summary, and based on the record presented, we are not persuaded
the Examiner erred in rejecting independent claim 1 as unpatentable over
Griffith and Ugolick. Accordingly, we sustain the Examiner’s rejection of
claim 1 as unpatentable over Griffith and Ugolick. We further sustain the
Examiner’s rejection of claims 2-4, which fall with claim 1.
DECISION
We AFFIRM the Examiner’s decision to reject claims 1—4 as
unpatentable over Griffith and Ugolick.
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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