Ex Parte Filiatrault et al

Board of Patent Appeals and Interferences

Jul 19, 2012

11676116 (B.P.A.I. Jul. 19, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte TIMOTHY D. FILIATRAULT, KEVIN M. LEWANDOWSKI,
KELLY S. ANDERSON, BABU N. GADDAM,
and EUGENE G. JOSEPH
____________

Appeal 2011-004754
Application 11/676,116
Technology Center 1700
___________

Before CHUNG K. PAK, TERRY J. OWENS, and
KAREN M. HASTINGS, Administrative Patent Judges.

HASTINGS, Administrative Patent Judge.

DECISION ON APPEAL

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Appellants seek our review under 35 U.S.C. § 134 of the Examiner’s
final decision rejecting claims 1 and 3-19. We have jurisdiction over the
appeal under 35 U.S.C. § 6(b).
We AFFIRM.
Claim 1 is illustrative of the subject matter on appeal:
1. A pressure-sensitive adhesive comprising:

(a) a polymer comprising:

(i) 90 to 99 parts by weight of an (meth)acrylic acid
ester of non-tertiary alcohol, said alcohol having from 1
to 14 carbon atoms,

(ii) 1 to 10 parts by weight of an acid functional
monomer;

(iii) 0 to 10 parts by weight of a second, non-acid
functional, polar monomer;

(iv) 0 to 5 parts vinyl monomer;

(v) optionally 0.01 to 1 part by weight of a
multifunctional acrylate;

(b) 0.001 to 1 part of a polyfunctional aziridine crosslinking
agent, based on 100 parts of polymer (a) and

(c) 1 to 8 parts by weight, relative to 100 parts of polymer
(a), of acicular silica nanoparticles having an average
particle diameter of 9-25 nm with a length of 40-300 nm.

The Examiner maintains the following rejections under 35 U.S.C.
§ 103(a):
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Claims 1, 3-14, 16, and 17 as unpatentable over the combined prior art
of Lu1, Jia2, and Watanabe3 (Ans. 3), and
Claims 5-19 as unpatentable over the combined prior art of Lu, Jia,
Watanabe, and Papsin4 (Ans. 4).

PRINCIPLES OF LAW
In assessing whether a claim to a combination of prior art elements
would have been obvious, the question to be asked is whether the
improvement of the claim is more than the predictable use of prior art
elements according to their established functions. KSR Int’l Co. v. Teleflex
Inc., 550 U.S. 398, 417 (2007). The analysis need not seek out precise
teachings directed to the specific subject matter of the claim, for it is proper
to take account of the inferences and creative steps that a person of ordinary
skill in the art would employ. Id. at 418.
“For obviousness under § 103, all that is required is a reasonable
expectation of success.” In re O’Farrell, 853 F.2d 894, 903-04 (Fed. Cir.
1988).
It is well established that, to render an invention obvious, the prior art
does not have to address the same problem addressed by a patent applicant.
KSR, 550 U.S. at 420; see also, In re Beattie, 974 F.2d 1309, 1312 (Fed. Cir.
1992) (“As long as some motivation or suggestion to combine the references

1 US 2006/0134362 A1, published Jun. 22, 2006. Note the assignee of this
application on appeal is the same as the assignee of Lu (that is, 3M
Company).
2 US 2004/0086446 A1, pub. May 6, 2004.
3 US 5,221,497, issued Jun. 22, 1993.
4 US 6,248,815 B1, issued Jun. 19, 2001.
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is provided by the prior art taken as a whole, the law does not require that
the references be combined for the reasons contemplated by the inventor.”).
ANALYSIS
We have thoroughly reviewed each of Appellants’ arguments for
patentability. However, we are in agreement with the Examiner that the
claimed subject matter would have been obvious to one of ordinary skill in
the art within the meaning of § 103 in view of the applied prior art.
Accordingly, we will sustain the Examiner’s rejection for essentially those
reasons expressed in the Answer, including the Response to Argument
section, and we add the following primarily for emphasis.
Appellants’ main argument that the Examiner “failed to give proper
consideration and weight to the rebuttal represented by the [Lu]
Declaration”5(Br. 6) is unavailing. The record amply reflects that the
Examiner considered the Lu Declaration, but gave more weight to prior art
documents since the Lu Declaration merely contains conclusory statements,
unsupported by any factual or objective evidence (e.g., Ans. 7). See, e.g.,
Velander v. Garner, 348 F.3d 1359, 1371 (Fed. Cir. 2003) (“In giving more
weight to prior publications than to subsequent conclusory statements by
experts, the Board acted well within [its] discretion.”).
Appellants’ mere assertion that the use of elongated silica particles
“could lead to anisotropic optical properties” in Lu (Br. 8, quoting the Lu
Declaration) is not persuasive of error, as Appellants have not directed us to
any credible objective evidence to support this, nor have they directed us to

5 Declaration of Lu and Thompson, filed June 23, 2010 under 37 C.F.R.
§ 132. Notably, the Appeal Brief Evidence Appendix states “None”.
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any evidence that this potentially undesirable result was known to one of
ordinary skill in the art.
Appellants’ argument that the references are not properly combinable
(e.g., Br. 11-12) fails to consider the prior art as a whole. It is well
established that ordinary creativity is presumed on the part of one of
ordinary skill in the art. See KSR, 550 U.S. at 421 (“[a] person of ordinary
skill is also a person of ordinary creativity, not an automaton.”). Appellants
have also not provided any persuasive technical reasoning or evidence that
an artisan would not have, using no more than ordinary creativity, used the
elongated silica particles of Jia and/or Watanabe for the spherical silica
particles in the pressure sensitive adhesive of Lu as a known alternative
source of a silica additive in order to improve flexural strength and/or
filming and coating properties as respectively taught in Jia and Watanabe
(Ans. 8-10; generally Br.). In this regard, the claimed invention merely uses
a well-known elongated particles of silica additive in place of spherical silica
particles to yield predictable results. See KSR, 550 U.S. at 415-16 (“The
combination of familiar elements according to known methods is likely to be
obvious when it does no more than yield predictable results.”).
With respect to the second ground of rejection, Appellants’ argument
that Papsin has no relevance to the compositions of Lu or Jia (Br. 14) is
unavailing for reasons pointed out by the Examiner (Ans. 14). An
improvement in the art is obvious if “it is likely the product not of
innovation but of ordinary skill and common sense.” KSR, 550 U.S. at 421
(2007). See also, Perfect Web Techs., Inc. v. InfoUSA, Inc., 587 F.3d 1324,
1329 (Fed. Cir. 2009) (“hold[ing] that while an analysis of obviousness
always depends on evidence that supports the required Graham factual
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findings, it also may include recourse to logic, judgment, and common sense
available to the person of ordinary skill that do not necessarily require
explication in any reference or expert opinion.”). Appellants have not
specifically rebutted the Examiner’s reasonable determination that Papsin’s
neutralization of free acid functional groups to improve storage stability
would have reasonably be expected to work in Lu’s adhesive composition
(Ans. 14, no Reply Brief has been filed).
Accordingly, upon consideration of the entire record, including the Lu
Declaration, the preponderance of the evidence supports the Examiner’s
rejections.
We sustain both of the § 103 rejections on appeal.

DECISION
The decision of the Examiner is affirmed.

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).

AFFIRMED

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