Ex Parte DeSanto et al

Patent Trial and Appeal Board

Aug 16, 2016

12869363 (P.T.A.B. Aug. 16, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/869,363 08/26/2010
279 7590 08/18/2016
Amy Lazzari
CLARK HILL PLC
150 NORTH MICHIGAN A VENUE
SUITE 2700
CHICAGO, IL 60601
FIRST NAMED INVENTOR
Ronald F. DeSanto JR.
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.
349931137377 /3 7722
EXAMINER
NUTTER, NATHAN M
ART UNIT PAPER NUMBER
1765
NOTIFICATION DATE DELIVERY MODE
08/18/2016 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):
IPDocket@clarkhill.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte RONALD F. DESANTO JR. and NORMA D. KAMMERER
Appeal 2015-001195
Application 12/869,363
Technology Center 1700
Before BRADLEY R. GARRIS, TERRY J. OWENS, and
MICHAEL G. McMANUS, Administrative Patent Judges.
McMANUS, Administrative Patent Judge.
DECISION ON APPEAL
The Examiner finally rejected claims 1, 2, 4, 7-26 and 32--46 of
Application 12/869,363 under 35 U.S.C. § 103(a) as obvious. Final Act.
(March 10, 2014). Appellants 1 seek reversal of these rejections pursuant to
35 U.S.C. § 134(a). We have jurisdiction under 35 U.S.C. § 6.
For the reasons set forth below, we AFFIRM.
BACKGROUND
The Application at issue describes a pressure sensitive adhesive that is
cured by ultraviolet light. A declaration submitted in the course of
1 The named inventors are identified as the real party in interest. Appeal
Br. 1.
Appeal 2015-001195
Application 12/869,363
prosecution indicates that the inventors found that the addition of silicone
acrylate to the adhesive composition improves the release properties of the
adhesive and permits it to be applied and removed multiple times.
Kammerer Deel. iJ 4( c ).
Claim 1 is representative of the claims at issue and is reproduced
below:
1. An ultraviolet (UV) pressure-sensitive adhesive
compnsmg:
a UV rosin-monomer blend comprising a semi-solid stabilized
rosin ester, a monofunctional aromatic acrylate, and a blend of
inhibitor compounds;
an acrylated urethane polyol;
a tripropylene glycol diacrylate;
a UV flexo photoinitiator;
a material that performs as a nonionic wetting agent and
molecular defoamer; and
a silicone acrylate.
Appeal Br. 24 (Claims App.).
REJECTIONS
On appeal, the Examiner maintains the following rejections:
1. Claims 1 and 4 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Curatolo2 taken in combination with Glennon.3 Final Act
2.
2 US 5,804,301, issued Sep. 8, 1998.
3 US 4,243,500, issued Jan. 6, 1981.
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Application 12/869,363
2. Claims 1, 2 and 4 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Lewandowski et al. 4 taken in combination with
Curatolo and Glennon. Final Act. 4.
3. Claims 1, 2, 4, 7-26 and 32-46 are rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Lewandowski et al. in combination with
Curatolo and Glennon, taken in view of Bordoloi et al. 5 and Hiatt. 6 Final
Act. 6.
DISCUSSION
The Appellants argued that the foregoing rejections are in error on
several bases.
Appellants Argue That Curatolo Is Not Analogous Art
The primary reference relied upon by the Examiner is Curatolo.
Appellants argue that Curatolo is not analogous art and a "person of skill in
the art vvould not look to Curatolo to learn about a pressure-sensitive
adhesive." Appeal Br. 7. Appellants assert that Curatolo is not analogous
because it relates to coatings while the application at issue claims an
adhesive. In furtherance of this view, Appellants advance three arguments.
First, that the claims are directed to an adhesive and that, properly construed,
the term "adhesive" requires a substance to have a tacky or sticky property.
Appeal Br. 4-7. The Appellants assert that Curatolo teaches a nonsticky
coating, not an adhesive, and is therefore nonanalogous art. Reply Br. 5.
4 US 5,747,551, issued May 5, 1998.
5 US 4,714,655, issued Dec. 22, 1987.
6 US 5,284,688, issued Feb. 8, 1994.
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Application 12/869,363
Second, in a similar vein, the Appellants argue that the coating of Curatolo
may concern adhesion, but only to the substrate to which it is applied not to
any second material. Appeal Br. 8-9. Appellants assert that the coating of
Curatolo is akin to paint - it adheres to the substrate but is not useful for
joining two surfaces together. Id. at 9-10. Curatolo teaches a composite
product with adhesive on one side of a substrate (such as paper) and coating
on the opposite side. Id. at 10-12. Appellants suggest that the Examiner
relies upon the teachings of Curatolo relating to coatings rather than
adhesives. Id. at 10-11. Third, Appellants assert that Curatolo is not
pertinent to the problem faced by the inventors of the application at issue
because the Applicants sought to find an improved repositionable adhesive.
Id. at 13. One of skill in the art, seeking to make such an adhesive would
not look to Curatolo as it does not teach a pressure-sensitive adhesive nor
prolonged tackiness. Id. at 14.
To be analogous art, a prior-art reference must (1) be reasonably
pertinent to the particular problem with which the inventor 1s mvolved or (2)
be from the same field of endeavor. See Innovention Toys, LLC v. MGA
Entm't, Inc., 637 F.3d 1314, 1321 (Fed. Cir. 2011).
Curatolo discusses certain prior art including United States Patent No.
5,418,016 to Cornforth et al. ("Cornforth"). Curatolo describes Cornforth as
teaching radiation-curable compositions which are "reported to be useful for
a range of applications including pigmented and unpigmented coatings,
printing inks, adhesives, etc." Curatolo, col. 2:28-31 (emphasis added).
The Curatolo reference further teaches a composite laminate where a
UV curable coating is applied to one side of a substrate, such as paper or a
polymeric film, and a pressure-sensitive adhesive is applied to the opposite
side. Curatolo, col. 12:60-13:56. Curatolo includes a general description of
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Application 12/869,363
pressure-sensitive adhesives. Id. at col. 13:34-52. It is of note that Curatola
is sufficiently versed in both UV curable coatings and pressure sensitive
adhesives to discuss both in the patent.
Glennon, in the References Cited portion, cites a prior art commercial
publication titled "'Thermoplastic Rubber Kraton', Kraton 1000 Polymers
for Adhesives, Sealants and Coatings, Shell Chemical Company, Polymers
Division, Jun. 1970." Glennon 1, References Cited. The description of the
Preferred Embodiments in Glennon draws little distinction between coatings
and adhesives:
The adhesive in its uncured state may be coated onto an
appropriate substrate in any convenient manner, as by knife
coating, spraying, or the like, and is then cured by subjection to
radiation of any of the discussed types.
Glennon, col. 7:28-3 l(emphasis added). Similarly, Lewandowski refers to
"the pertinent adhesive coating composition," Lewandowski, col. 6:9-10
(emphasis added), and Bordoloi states "the adhesive layer is cast as a
coatable emulsion," Bordoloi, 1:28-29. Indeed, one of the inventors
describes her occupational duties as involving "quality control and product
development of ultraviolet adhesives, coatings, and inks for the graphic art
industry." Kammerer Deel. iJ 3 (emphasis added). The foregoing, taken as a
whole, supports the Examiner's finding that "most adhesives, as known in
the art, are, in fact, coating compositions." Answer 9. Accordingly, we
adopt the Examiner's finding that Curatolo and the present application are in
the same field of endeavor.
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Application 12/869,363
Appellants Argue That Curatolo Teaches Away
Appellants further argue that Curatolo teaches away from the use of
silicone acrylate. Appeal Br. 14-15. Appellants contend that one of skill in
the art consulting Curatolo "would be [led] down the wrong path, as the
person would use silicone acrylate as a flow and leveling additive, wetting
agent, or anti foaming agent" and therefore not use the wetting agent and
antifoaming agent "recited in the claims." Id. Appellants further contend
that a person of skill in the art who consulted Curatolo would be led to use
vinyl ethers which provide low viscosity properties. Id. at 15.
"A reference may be said to teach away when a person of ordinary
skill, upon reading the reference, would be discouraged from following the
path set out in the reference, or would be led in a direction divergent from
the path that was taken by the applicant." In re Gurley, 27 F.3d 551, 553
(Fed. Cir. 1994). Here, Curatolo teaches that "[e]xamples of flow and
leveling additives, wetting agents, and antifoaming agents include ... silicone
acrylates .... " Curatolo, col. 9: 34-39. The Examiner finds that the "use of
the silicone acrylate is shown at column 9 (lines 31-39) ... [and] meets the
claim recitations as to wetting agent, defoamer, slip additive and deaerator,
as it is disclosed by the reference." Final Act. 3. In the present application,
the claims each require "a material that performs as a nonionic wetting
agent and molecular defoamer" and "a silicone acrylate." Curatolo teaches
to use silicone acrylate as a wetting agent and defoamer. This would not
discourage one of skill in the art from the use of silicone acrylate or lead
them down some erroneous path either with regard to the required wetting
agent and defoamer or the silicone acrylate limitation. Use of silicone
acrylate may satisfy both claim limitations. See In re Kelley, 305 F.2d 909,
914 (CCPA 1962) (the same cylinder is both the "means for reducing said
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Application 12/869,363
actuating force" and the "power driven actuator"); Winbond Elecs. Corp. v.
Int'! Trade Comm'n, 4 F. App'x 832, 840 (Fed. Cir. 2001) ("the Commission
correctly discerned that a single structure, such as a decoder or a buffer, may
support two different claim limitations when such a reading is a reasonable
construction of the language of the claims." (internal citation omitted)).
Appellants further argue that Curatolo teaches away from the
composition as claimed because it promotes the use of vinyl ethers to
provide low viscosity and flexibility. Appeal Br. 15. In the Final Rejection,
the Examiner finds as follows:
The vinyl et[h ]ers are not shown to be required by the
reference, and the instant claims do not exclude their inclusion
by the recitation, "comprising." It is well-settled the term
"comprises" does not exclude the presence of other ingredients
than the one or ones recited, and that a claim reciting those
ingredients can properly be rejected on a reference disclosing
them and additional ingredients.
Final Act. 17. Appellants do not contest the Examiner's finding that the
vinyl ethers are not shown to be required by Curatolo. Nor do Appellants
contest Examiner's determination regarding the use of the well-known
transition term "comprising." Accordingly, the presence of an additional
component in the Curatolo reference does not amount to a "teaching away"
from such reference.
Motivation to Combine
Appellants additionally argue that there is no proper motivation to
combine the teachings of Curatolo and Glennon. Appeal Br. 16-18. First,
Appellants argue that Curatolo would lead one of skill in the art to use
silicone acrylate as a wetting agent and defoamer rather than a release agent
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Application 12/869,363
and thereby arrive at a composition that differs from the claims. In this
regard, the Appellants assert as follows:
If a person selects silicone acrylate as a wetting agent and
defoamer, based on Curatolo as the Examiner suggests, then
that person would not add Applicant's nonionic wetting agent
and molecular defoamer. Having been lead [sic] astray by
Curatolo, the person would not get the same properties as
Applicant's claimed adhesive.
Appeal Br. 1 7. That is, the Appellants argue that use of some wetting
agent/defoamer other than the one described as the preferred embodiment
may lead to an adhesive with different properties. The Appellants, however,
do not contest the Examiner's finding that Curatolo teaches the use of
silicone acrylate as wetting agent and defoamer. Final Act. 3. That the
resulting composition may vary somewhat from the preferred embodiment
does not exclude the composition as taught by Curatolo and Glennon from
the scope of the claims nor suggest an absence of motivation to combine.
The Appellants' second basis for contesting the motivation to
combine Curatolo and Glennon is that Glennon teaches a strong bond which
would not be useful to one seeking to make a pressure-sensitive adhesive.
"Since Glennon wants an aggressive bond, there is no good reason to add a
slip additive and deaerator to his adhesive." Appeal Br. 17-18. In response,
the Examiner notes that "[t]he title of the Glennon reference is 'Pressure
Sensitive Adhesives,' which is the subject matter of the instant claims.
Nothing on the record has been shown as to strength of bond, other than its
end use as a pressure sensitive adhesive." Answer 13. The Examiner further
notes that "It has been held to be prima facie obvious to combine
individually old ingredients for their known additive function." Id. at 14.
Here, Glennon's known additive function is adhesiveness. Id. Accordingly,
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Application 12/869,363
Appellants have not set forth a sufficient basis to disturb the Examiner's
finding that "the desire to produce a composition having adhesive qualities,"
Answer 13, provides a motivation to combine Curatolo and Glennon.
Appellants make a similar argument regarding the combination of
Curatolo, Glennon and Lewandowski. Appellant argues that Lewandoswki
teaches a composition capable of forming "an aggressive bond," and having
heat-resistant and moisture-resistant properties which would be of little use
to one making a repositionable adhesive for labels or dry peel cards, etc.
Appeal Br. 19-20. In response the Examiner states that "[t]he patent shows
these characteristics, but the disclosure thereof does not provide [a] basis for
patentability of the instant claims. Appellants' claims do not have to address
the same issues solved in Lewandowski et al. Nor do the references need to
address or recognize advantages desired in the [A ]ppellants' invention."
Answer 15. That is, a person of ordinary skill in the art must have a
motivation to combine, but such motivation need not arise from the same
problem or purpose that motivates the applicants. See KSR Int'! Co. v.
Teleflex Inc., 550 U.S. 398, 420 (2007) ("The first error of the Court of
Appeals in this case was to [hold] that courts and patent examiners should
look only to the problem the patentee was trying to solve .... 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.") The Examiner finds that
Lewandowski teaches to use "an acrylate functional polyurethane to achieve
good performance in a high temperature range from 13 0-140 °F and other
advantages." Final Act. 5. This is a sufficient basis to combine the
acrylated urethane of Lewandowski with the remaining elements taught by
Curatolo and Glennon.
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Application 12/869,363
The Rejection of claims 1, 2, 4, 7-26, and 32-46 Over
Lewandowski in Combination with Curatolo, Glennon,
Bordeloi, and Hiatt
The Appellants' brief includes a header asserting that the Examiner
erred in rejecting claims 1, 2, 4, 7 through 26, and 32 through 46 over
Lewandowski in combination with Curatolo, Glennon, Bordeloi, and Hiatt.
Appeal Br. 21. This portion of Appellants' brief, however, lacks any unique
argument. Rather, it incorporates argument from prior sections.
Accordingly, we sustain the determination of the Examiner in this regard for
the reasons set forth above.
Contentions Unsupported by Argument
The rules governing practice before the Patent Trial and Appeal Board
require that an appeal brief include the "arguments of appellant with respect
to each ground of rejection, and the basis therefor, with citations of the
statutes, regulations, authorities, and parts of the Record relied on. The
arguments shall explain why the examiner erred as to each ground of
rejection contested by appellant." 37 C.F.R. 41.37(c)(iv). Accordingly, any
assertions made in the brief but not supported as required by rule are
considered waived.
CONCLUSION
For the reasons discussed above, we affirm the Examiner's rejection of
claims 1, 2, 4, 7-26 and 32--46 of Application 12/869363 under 35 U.S.C.
§ 103(a) as obvious.
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Appeal 2015-001195
Application 12/869,363
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § l.136(a).
AFFIRMED
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