Ex Parte Good et al

Board of Patent Appeals and Interferences

Aug 10, 2012

10613409 (B.P.A.I. Aug. 10, 2012)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
10/613,409 07/03/2003 David J. Good 3023.PKG 4461
7590 08/13/2012
Cynthia L. Foulke
NATIONAL STARCH AND CHEMICAL COMPANY
10 Finderne Avenue
Bridgewater, NJ 08807-0500
EXAMINER
SCHATZ, CHRISTOPHER T
ART UNIT PAPER NUMBER
1746
MAIL DATE DELIVERY MODE
08/13/2012 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
________________

Ex parte DAVID J. GOOD,
Justin A. Mehaffy, Dale L. Haner, Jagruti B. Patel,
Brian D. Morrison, and Fidelin N. Willybiro
________________

Appeal 2011-002550
Application 10/613,409
Technology Center 1700
________________

Before BRADLEY R. GARRIS, JEFFREY T. SMITH, and
MARK NAGUMO, Administrative Patent Judges.

NAGUMO, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2011-002550
Application 10/613,409

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A. Introduction1
David J. Good, Justin A. Mehaffy, Dale L. Haner, Jagruti B. Patel,
Brian D. Morrison, and Fidelin N. Willybiro (“Good”) timely appeal under
35 U.S.C. § 134(a) from the final rejection2 of claims 1-8, 10, 12, 13, 22,
and 25-29, which are all of the pending claims. We have jurisdiction.
35 U.S.C. § 6. We AFFIRM.
The subject matter on appeal relates to a hot melt adhesive that has an
application temperature of less than 250°F (121° C), rather than the
conventional application temperature of about 350°F (177° C). (Spec. 1,
3d para.) According to the 409 Specification, the term “application
temperature means the temperature to nearest 25°F increment, that the
adhesive viscosity falls between about 800cps and 1500cps.” (Id. at 8,
2d full para.) The practical significance of these values is explained by the
disclosure that “[t]ypical viscosities for case and carton sealing is desirable
[sic] less than 2,000 centipoise (cps) and the majority of commercially
employed hot melt application equipment favors a viscosity of below
about 1,500 cps.” (Id.) The relatively low application temperature is said to
reduce the danger of burns and the exposure to volatile fumes, and to lower
the costs of manufacture and use. (Id. at 1, 3d para.) The lower application

1 Application 10/613,409, Hot Melt Adhesive, filed 3 July 2003. The
specification is referred to as the “409 Specification,” and is cited as “Spec.”
The real party in interest is listed as Henkel Corporation, successor in
interest to National Starch and Chemical Investment Holding Corporation.
(Appeal Brief, filed 4 June 2010 (“Br.”), 1 [pages not numbered in
original.])
2 Office action mailed 5 January 2010 (“Final Rejection”).
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Application 10/613,409

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temperatures are also said to enable efficient and expeditious inline mixing
methods not previously feasible. (Id. at 3, 2d para.) Moreover, the inventive
hot melt adhesives have a bonded adhesive heat stress value3 that is
within 100°F of the application temperature. As a result, the disclosed
compositions are said to provide superior strength compared to prior art low
temperature hot melt adhesives. (Id. at 4, 4th para. through 5, l. 2.)
Representative claim 1 reads:
1. A low application temperature hot melt adhesive
having a viscosity between about 800 cps
and 1500 cps at an adhesive application temperature
below 250°F, and
wherein the bonded adhesive heat stress value and the
adhesive application temperature are separated
by 100°F or less.
(Br., Claims App. 1 (unnumbered; indentation and paragraphing added.)
The Examiner maintains the following grounds of rejection:4
A. Claims 1-5, 8, 10, 12, 13, 22, and 25-29 stand rejected under
35 U.S.C. § 103(a) in view of the teachings of Mehaffy.5

3 The heat stress value is “the temperature at which a stressed bond fails.”
(Id. at 5, last para., through 6, 2d full para.) It may be measured by
determining whether the adhesive remains intact under a specified load for a
specified time at successively higher temperatures.
4 Examiner’s Answer, mailed 18 August 2010 (“Ans.”).
5 Justin A. Mehaffy and Ingrid Cole, Low Application Temperature Hot
Melt Adhesive, EP 0 934 990 A1 (1999) (assigned to National Starch and
Chemical Investment Holding Corporation, the predecessor to the present
real party in interest).
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B. Claims 6 and 7 stand rejected under 35 U.S.C. § 103(a) in
view of the combined teachings of Mehaffy and Baetzold.6
B. Discussion
Findings of fact throughout this Opinion are supported by a
preponderance of the evidence of record.
Initially, we find that Good has not expressly argued the separate
patentability of any claim. Accordingly, all claims stand or fall with
claim 1. 37 C.F.R. § 41.37(c)(vii) (2007).
Good argues that the Examiner erred in making the “assertion that if
the adhesives reported in Table I [of Mehaffy] were applied at 200°F, the
resultant difference between the application temperature and the heat stress
would be less than 100°F.” (Br. 3, § 7.1, 3d para.) Good proceeds to
demonstrate7 that application of the Arrhenius equation describing the
temperature dependence of the viscosity of most polymers results in an
expected ≈40% increase in viscosity with a decrease of 25°F. Applying that
equation to the data presented in Mehaffy Table I results in estimated
viscosities at 225°F (25°F less than the reported 250°F application
temperature), that are above the maximum 1500 cps permitted by claim 1.
(Br. 4.) Good concludes that “one skilled in the art would not look to

6 John P. Baetzold et al., Hot Melt Adhesive Comprising an Encapsulated
Ingredient, U.S. Patent 5,827,913 (1998).
7 Supported by an excerpt from the Plastics Technology Handbook, 4th ed.,
of record and presented in the Evidence Appendix to the Brief.
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Application 10/613,409

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Mehaffy to develop an adhesive that can be applied at temperature [sic]
below 250°F.” (Id. at 5, 3d full para.)
We do not understand the Examiner to have found that the particular
adhesives reported by Mehaffy in Table I can be applied at 200°F. Rather,
the Examiner (Ans. 4, 1st full para.) expressly relied on Mehaffy’s
description of the invention at paragraph [0030], which states that the
adhesives are:
characterized by a viscosity less than about 3000 cps at 135° C
[275°F]. They may be applied at temperatures of 200 to 300°F
to provide superior adhesive bonds even when exposed to a
wide variety of temperature conditions. . . . In addition, a bond
formed by two pieces of corrugated case substrate held together
by a ½” by 2” compressed bead can maintain a cantilever stress
load of 2 to 2.5 psi for 24 hours at a temperatures at or
above 115°F.
(Mehaffy 5 [0030]; emphasis added.) Moreover, the Examiner found—and
Good has not disputed—that Mehaffy discloses hot melt adhesive
compositions within the scope of appealed claim 1. (Office Action
mailed 9 June 2009 at 3, 2d para.; Ans. 4, 1st full para., citing Mehaffy
paras. [0009]-[0018] and [0029], and 5, citing various Mehaffy paras.)
While Good’s arguments might be persuasive of harmful error in a
rejection for anticipation by Mehaffy, the rejection before us is based on
obviousness. In such a situation, as our reviewing court has instructed,
“[a] reference must be evaluated for all it teaches and is not limited to its
specific embodiments.” In re Bode, 550 F.2d 656, 661 (CCPA 1977).
Indeed, Mehaffy states expressly that the examples are provided “for
illustrative purposes only.” (Mehaffy 5 [0035].) Mehaffy also repeatedly
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states that “[t]he adhesive compositions of the present invention can be
applied at lower temperatures of 200 to 300°F yet still provide exceptional
heat resistance.” (Mehaffy [0005]; [0008].) Moreover, Good has not
disputed the Examiner’s findings that the compositions suggested by
Mehafffy overlap those covered by the appealed claims.
Under these circumstances, the burden was fairly shifted to Good to
explain how the evidence of record shows that ordinary exploration of the
ranges of compositions taught by Mehaffy would not have yielded, without
undue experimentation, hot melt adhesives in which the heat stress value is
within 100°F of an application temperature less than 250°F. Cf. In re
Peterson, 315 F.3d 1325, 1329 (Fed. Cir. 2003) (“A prima facie case of
obviousness typically exists when the ranges of a claimed composition
overlap the ranges disclosed in the prior art.”) Particularly in light of the
common inventor, Mehaffy, it is difficult to see that that burden is
unreasonable.
Good’s remaining arguments do not relate to limitations recited in
claim 1. We are not persuaded that harmful error has been demonstrated in
the Examiner’s rejections.
C. Order
We AFFIRM the rejection of claims 1-5, 8, 10, 12, 13, 22, and 25-29
under 35 U.S.C. § 103(a) in view of the teachings of Mehaffy.
We AFFIRM the rejection of claims 6 and 7 under 35 U.S.C. § 103(a)
in view of the combined teachings of Mehaffy and Baetzold.
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No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED

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