Ex Parte Igarashi et al

Patent Trial and Appeal Board

Sep 15, 2017

13939457 (P.T.A.B. Sep. 15, 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.
13/939,457 07/11/2013 Takeshi IGARASHI P43986 8667
7055 7590 09/19/2017
GREENBLUM & BERNSTEIN, P.L.C.
1950 ROLAND CLARKE PLACE
RESTON, VA 20191
EXAMINER
SHAH, SAMIR
ART UNIT PAPER NUMBER
1787
NOTIFICATION DATE DELIVERY MODE
09/19/2017 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):
gbpatent@gbpatent.com
greenblum.bernsteinplc@gmail.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte TAKESHI IGARASHI, TOSHITAKA SUZUKI,
NAO WAKAYAMA, and YOSHIKUNI HIRANO
Applicants: NITTO DENKO CORPORATION and KANSAI PAINT CO.,
LTD.
Appeal 2017-002967
Application 13/939,457
Technology Center 1700
Before GEORGE C. BEST, WHITNEY N. WILSON, and
JANE E. INGLESE, Administrative Patent Judges.
INGLESE, Administrative Patent Judge.
DECISION ON APPEAL
Appellants1 request our review under 35 U.S.C. § 134(a) of a final
rejection of claims 1—3, 5—9, 11—14, 16—19, 21, and 22. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.
1 The real parties in interest (NITTO DENKO CORPORATION and
KANSAI PAINT CO., LTD.) are the applicants, and thus the Appellants.
Appeal Brief filed August 5, 2016 (“App Br”), 3.
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Application 13/939,457
STATEMENT OF THE CASE
Appellants claim a paint film protection sheet comprising a support
substrate and a pressure-sensitive adhesive layer placed on the support
substrate. App. Br. 7. Claim 1 illustrates the subject matter on appeal and is
reproduced below:
1. A paint film protection sheet comprising a support
substrate and a pressure-sensitive adhesive layer placed on the
support substrate, wherein
the pressure-sensitive adhesive layer is constituted with a
pressure-sensitive adhesive comprising a non-crosslinked
rubber-based polymer as a base polymer, at least one tackifier
resin (TH) selected from the group consisting of rosin-based
resins, terpene-based resins, petroleum resins, phenol resins,
alkylphenol resins, xylene resins, alkyd resins, epoxy resins,
and hydrogenation products thereof, and having a softening
point of 120 °C or above, and a tackifier resin (TL) having a
softening point of 70 °C to below 120 °C,
the mass ratio (TL/TH) of the tackifier resin (TL) content
relative to the tackifier resin (Th) content has a value of 1.0 or
larger and 30 or less, and
the base polymer is at least one polymer selected from
the group consisting of a homopoly isobutylene, a copolymer of
isobutylene and normal butylene, and a copolymer of
isobutylene and isoprene.
App. Br. 21 (Claims Appendix)(emphasis added).
The Examiner sets forth the following rejections in the Final Office
Action entered March 14, 2016 (“Final Act.”), and maintains the rejections
in the Answer entered November 1, 2016 (“Ans.”):2
I. Claims 1—3, 5, 6, 8, 9, 11, 12, 14, 16, 17, 19, and 21 under
35 U.S.C. § 103(a) as unpatentable over Zhou (US 2005/0054779 Al;
2 The Examiner withdrew the rejection of claim 2 under 35 U.S.C. § 103(a)
as unpatentable over Tabata in view of Shoshi as evidenced by Muramatsu,
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published Mar. 10, 2005) in view of Tabata (US 2008/0020203 Al;
published Jan. 24, 2008), and Shoshi (US 2006/0177654 Al; published Aug.
10, 2006), as evidenced by Muramatsu (US 5,990,230; issued Nov. 23,
1999);
II. Claims 1, 3, 5, 6, 8, 9, 11, 12, 14, 16, 17, 19, and 21 under
35 U.S.C. § 103(a) as unpatentable over Tabata in view of Shoshi, as
evidenced by Muramatsu; and
III. Claims 1, 3, 5—9, 11—14, 16—19, 21, and 22 under 35 U.S.C.
§ 103(a) as unpatentable over Ikishima (US 2011/0020637 Al; published
Jan. 27, 2011) in view of Tabata and Shoshi, as evidenced by Muramatsu.
DISCUSSION
Upon consideration of the evidence relied upon in this appeal and
each of Appellants’ contentions,* * 3 we affirm the Examiner’s rejections of
and the rejection of claim 2 under 35 U.S.C. § 103(a) as unpatentable over
Ikishima in view of Tabata and Shoshi as evidenced by Muramatsu, in the
Answer. Ans. 2.
3 We do not consider the new arguments Appellants present at pages 2—3 of
their Reply Brief (filed December 29, 2016) because the arguments could
have been raised in the Appeal Brief, and Appellants do not show good
cause for why they did not do so. 37 C.F.R. § 41.37(c)(l)(iv); 37 C.F.R.
§ 41.41(b)(2) (arguments raised for the first time in the Reply Brief that
could have been raised in the Appeal Brief will not be considered by the
Board unless good cause is shown); see also Ex parte Borden, 93 USPQ2d
1473, 1474 (BPAI 2010) (Informative) (explaining that under the previous
rules, which are similar to the current rules, “the reply brief [is not] an
opportunity to make arguments that could have been made in the principal
brief on appeal to rebut the Examiner’s rejections, but were not.”); Optivus
Tech., Inc. v. Ion Beam Applications S.A., 469 F.3d 978, 989 (Fed. Cir.
2006) (argument raised for the first time in the reply brief that could have
been raised in the opening brief is waived).
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claims 1—3, 5, 7—9, 11—14, 16—19, 21, and 22 under 35 U.S.C. § 103(a), for
the reasons set forth in the Final Action, the Answer, and below, but reverse
the Examiner’s rejections of claim 6 for the reasons set forth in the Appeal
Brief and below.
Rejection I
Claims 1, 3, 5, 8, 9, 11, 12, 14, 16, 17, 19, and 21
Appellants argue claims 1, 3, 5, 8, 9, 11, 12, 14, 16, 17, 19, and 21 as
a group on the basis of claim 1, to which we limit our discussion. App. Br.
10-12; 37 C.F.R. § 41.37(c)(l)(iv) (2015).
Zhou discloses a hot-melt adhesive composition comprising, inter
alia, a base polymer, between about 0% and about 20% by weight of a high
softening point tackifier resin having a softening point of about 80°C or
greater, and between about 0% and about 40% by weight of a low softening
point additive having a softening point of below about 80-C. Zhou H 6, 59,
60. Zhou discloses that the low softening point additive imparts pressure
sensitivity to the adhesive. Zhou 159. Zhou discloses that suitable base
polymers include styrene-isoprene-styrene (SIS) multi-block copolymers.
Zhou H10, 56. Zhou further discloses that “[ojther suitable base polymers
include metallocene polyethylene/octane/polypropylene and/or butane,
hexane, polyisoprene, polybutadiene, or ethylene vinyl acetate copolymers,
as well as combinations of any of these or other polymers.” Zhou 1 56.
The Examiner finds that Zhou does not disclose a base polymer as
recited in claim 1, and the Examiner relies on Shoshi for this teaching. Final
Act. 3. Shoshi discloses numerous pressure-sensitive adhesives, including
synthetic rubber pressure-sensitive adhesives such as isobutylene-isoprene
rubber and styrene-isoprene block copolymer. Shoshi 153. The Examiner
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finds that Shoshi thus discloses “the equivalence and interchangeability” of
isobutylene-isoprene copolymers as recited in claim 1 and styrene-isoprene-
styrene (SIS) copolymers as disclosed in Zhou. Final Act. 3. The Examiner
finds that in view of this interchangeability, one of ordinary skill in the art
would have been led to replace the styrene-isoprene-styrene (SIS) copolymer
the base polymer in Zhou’s pressure-sensitive adhesive with an isobutene-
isoprene copolymer as disclosed in Shoshi. Final Act. 3; Ans. 4.
Appellants argue that it is well-known in the art4 that a styrene
domain in hot-melt adhesives “achieve [s] physical (not chemical)
crosslinking, which is critical to the room-temperature strength and heat-
resistance of these adhesives.” App. Br. 10-11. Appellants contend that
replacing Zhou’s styrene-containing base polymer with Shoshi’s
isobutylene-based rubber would remove the component of Zhou’s adhesive
responsible for this physical crosslinking. Id. Appellants assert that such a
substitution would, therefore, “thoroughly impair the hot-melt properties
such as solidification at normal temperature and melting at high
temperature,” thus rendering the Zhou’s adhesive composition useless for its
intended purpose. App. Br. 11. In support of these arguments, Appellants
rely on a Declaration of Takeshi Igarashi, which Appellants submitted to the
Patent and Trademark Office on January 5, 2016 (“the Igarashi
Declaration”). App. Br. 11. According to the Igarashi Declaration, “[i]f one
4 In support of this argument, Appellants rely on www.gluemachinery.com/
composition-technical-description-hot-melt-pressure-sensitiveadhesives/;
U.S. Patent No. 5,618,883; and
www.pstc.org/files/public/TECH33Papers/2010CainCynthia.pdf, which
Appellants submitted to the Patent and Trademark Office on June 24, 2015.
App. Br. 11.
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were to remove the styrene-containing copolymer from a hot-melt adhesive,
it would cease to perform as a hot-melt adhesive.” Igarashi Decl., 2.
However, as discussed above, Zhou discloses that suitable base
polymers for Zhou’s hot-melt adhesive include “metallocene
polyethylene/octane/polypropylene and/or butane, hexane, polyisoprene,
polybutadiene, or ethylene vinyl acetate copolymers,” none of which include
a styrene component. Zhou 156. Accordingly, Zhou explicitly discloses
that a styrene-containing copolymer need not be utilized as a base polymer
in Zhou’s hot-melt adhesive, which one of ordinary skill in the art would
have understood to implicitly indicate that a styrene-containing base
polymer is not required in adhesives that function as a hot-melt adhesives.
Appellants’ arguments, supporting references, and the statements in
the Igarashi Declaration do not address these disclosures in Zhou. Nor do
Appellants and the Declarant provide any objective evidence corroborating
the conclusory opinion provided in the Declaration that removing a styrene-
containing copolymer from a hot-melt adhesive as disclosed in Zhou would
cause the adhesive to stop functioning as a hot-melt adhesive. It follows that
we do not find the opinion proffered in the Igarashi Declaration persuasive,
and we accordingly view Appellants’ arguments and supporting evidence as
unpersuasive of reversible error. 37 C.F.R. § 42.65(a) (opinion testimony
that does not disclose underlying facts or data “is entitled to little or no
weight”); Velanderv. 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.”); Yorkey
v. Diab, 601 F.3d 1279, 1284 (Fed. Cir. 2010) (The Board has discretion to
give more weight to one item of evidence over another “unless no
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reasonable trier of fact could have done so”).
Appellants further argue that the composition disclosed in Shoshi is
not a hot-melt adhesive, but is simply a pressure-sensitive adhesive. App.
Br. 12. Appellants contend that the equivalence or interchangeability of the
polymers disclosed in Shoshi, therefore, “does not extend to hot-melt
adhesives.” Id.
However, as discussed above, Zhou discloses that a low softening
point additive imparts pressure sensitivity to the hot-melt adhesive described
in the reference. Therefore, both Zhou and Shoshi disclose pressure-
sensitive adhesives. In addition, as the Examiner correctly finds, one of
ordinary skill in the art would have understood that the isobutylene-isoprene
rubber and styrene-isoprene block copolymers disclosed in Shoshi would
function interchangeably as pressure-sensitive adhesives. Final Act. 3.
Accordingly, given this art-recognized interchangeability, one of ordinary
skill in the art would have expected that the isobutylene-isoprene rubber
pressure-sensitive adhesive disclosed in Shoshi could be successfully
substituted for the styrene-isoprene-styrene block copolymer base polymer
of Zhou’s pressure-sensitive adhesive composition. In re Kubin, 561 F.3d
1351, 1360 (Fed. Cir. 2009) (“[ojbviousness does not require absolute
predictability of success ... all that is required is a reasonable expectation of
success.”) (emphasis omitted, citing In re O’Farrell, 853 F.2d 894, 903-04
(Fed. Cir. 1988)); In reFout, 675 F.2d297, 301 (CCPA 1982) (“Express
suggestion to substitute one equivalent for another need not be present to
render such substitution obvious.”).
Consequently, the preponderance of the evidence relied-upon in this
appeal weighs in favor of the Examiner’s conclusion of obviousness, and we
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accordingly sustain the Examiner’s rejection of claims 1, 3, 5, 8, 9, 11, 12,
14, 16, 17, 19, and 21 under 35 U.S.C. § 103(a) as unpatentable over Zhou
in view of Tabata and Shoshi, as evidenced by Muramatsu.
Claim 2
Claim 2 depends from claim 1 and recites that the amount of the
tackifier resin (TH) is 0.05 parts by mass or greater relative to 100 parts by
mass of the base polymer, the amount of the tackifier resin (TL) is 0.05 parts
by mass or greater relative to 100 parts by mass of the base polymer, and the
total amount of the tackifier resin (TH) and the tackifier resin (Tl) is 1.0 part
by mass or less relative to 100 parts by mass of the base polymer.
Appellants argue that Tabata discloses a pressure-sensitive adhesive
that includes tackifiers in an amount of 30% to 70% by weight. App. Br.
12—13. Appellants contend that “if Zhou and Tabata could be combined, the
combination would need to be limited to the range of the total amount of
tackifier being 30—70%,” and would therefore not render claim 2 obvious.
App. Br. 13.
However, as the Examiner makes clear in the Answer, to meet the
limitations of claim 2, the Examiner relies on the amounts of the high
softening point tackifier resin and low softening point additive included in
Zhou’s pressure-sensitive adhesive (discussed above). Ans. 5. Because
Appellants do not dispute the Examiner’s factual findings regarding these
disclosures in Zhou in their Reply Brief, we sustain the Examiner’s rejection
of claim 2 under 35 U.S.C. § 103(a) as unpatentable over Zhou in view of
Tabata and Shoshi, as evidenced by Muramatsu.
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Claim 6
Claim 6 depends from claim 1 and recites that the tackifier resin (TL)
has an SP value of 8.5 or larger.
Appellants’ Specification explains that “the SP value of a compound
indicates the solubility of the compound,” and is calculated according to the
equation:
SP value (8) = (XAe/XAv)l/2
where Ae is the vaporization energy in calories of each atom or an atomic
group at 25 °C, and Av is the molar volume in cm3 of the atom or the atomic
group at the same temperature. Spec. 1 67.
The Examiner finds that Tabata discloses a pressure-sensitive, hot-
melt adhesive composition comprising a main polymer component, a
tackifier having a softening point of 70—90-C, and a tackifier having a
softening point of 120-C or more. Final Act. 3; Ans. 6—7; Tabata H 1, 33—
35, 57, 77—81. The Examiner finds Tabata discloses that including a
tackifier having a softening point of 70—90-C increases the tackiness of the
pressure-sensitive adhesive at normal and lower temperatures. Final Act. 3;
Ans. 6—7; Tabata 181. The Examiner relies on Tabata’s disclosure that
suitable tackifiers having a softening point of 70—90-C include an
aliphatic/aromatic copolymer petroleum resin, referred to as “T-480X.”
Final Act. 5; Tabata 1125. The Examiner finds that one of ordinary skill in
the art would have been led to include a tackifier having a softening point of
70-90-C as disclosed in Tabata in Zhou’s adhesive composition to improve
the tackiness of Zhou’s adhesive at normal and lower temperatures. Final
Act. 3,5. The Examiner finds that Muramatsu evidences that petroleum
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resin as disclosed in Tabata has an SP of 11 or lower. Final Act. 5 (citing
Muramatsu col. 2,11. 27—33).
However, as Appellants point out, Muramatsu does not mention the
particular aliphatic/aromatic copolymer petroleum resin disclosed in
Tabata—T-480X—relied on by the Examiner. App. Br. 13. In addition, the
general disclosure in column 2 of Muramatsu cited by Examiner states that
suitable polymer binders for use in stencil ink include, inter alia, petroleum
resins, alkyd resins, and polyester resins “having a solubility parameter of
11.0 or lower.” Muramatsu col. 2,11. 22—33. As Appellants point out,
Muramatsu’s Synthesis Examples 1 and 2 describe preparation of alkyd
polyols having a solubility parameter of 10.1, while Comparative Synthesis
Examples 1 and 2 describe preparation of polyester polyols having a
solubility parameter of 11.1. App. Br. 14; Muramatsu col. 13,1. 53—col. 14,
1. 50; col. 15,1. 65—col. 16,1. 33. Accordingly, one of ordinary skill in the
art reading the relied-upon disclosures in column 2 of Muramatsu in view of
Muramatsu’s Synthesis Examples and Comparative Synthesis Examples
would understand that suitable polymer binders for Muramatsu’s stencil ink
include polymers of the types listed in column 2 that also have a solubility
parameter of 11.0 or lower. Therefore, contrary to the Examiner’s findings,
column 2 of Muramatsu does not indicate that all petroleum resins have a
solubility parameter of 11.0 or lower, including T-480X as disclosed in
Tabata.
Moreover, even if one of ordinary skill in the art were to interpret
column 2 of Muramatsu as indicating that petroleum resins in general have a
solubility parameter of 11.0 or lower as the Examiner asserts, Muramatsu
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discloses calculating the solubility parameter of a polymer using Small’s
equation:
A=sXF/M
where s represents the density, F represents the cohesive energy constant,
and M represents the fundamental molecular weight. Muramatsu col. 2,
11. 46—56. Because this equation differs significantly from the equation set
forth in Appellants’ Specification for calculating the SP value (Spec. 1 67), it
is unclear whether the solubility parameter disclosed in Muramatsu is
actually the same parameter as the SP value described in Appellants’
Specification and recited in claim 6. Accordingly, the Examiner does not
provide a sufficient factual basis to establish that Muramatsu evidences that
the petroleum resin tackifier T-480X disclosed in Tabata has an SP value as
recited in claim 6.
In response to Appellants’ arguments, the Examiner relies on a new
evidentiary reference in the Answer, Hamada5, and finds that Hamada
“provides that petroleum resin has a SP value of 8 to 10.4.” Ans. 5—6;
Hamada Basic Abstract and Equivalent Abstracts. However, as Appellants
correctly argue, the relied-upon disclosures of Hamada, like Muramatsu, do
not mention T-480X. In addition, the Examiner does not identify any
disclosure in Hamada indicating how the solubility parameter discussed in
the reference was calculated. Therefore, it is unclear whether the solubility
parameter disclosed in Hamada is the same parameter as the SP value recited
in claim 6. Consequently, contrary to the Examiner’s assertions, Hamada
does not evidence that the T-480X petroleum resin tackifier disclosed in
Tabata has an SP value as recited in claim 6. Accordingly, the Examiner
5 Hamada (WO 2007/029783; published Mar 15, 2007).
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does not provide a sufficient factual basis to establish that Tabata discloses a
tackifier with a softening point of 70—90-C having an SP value of 8.5 or
larger as recited in claim 6. We therefore do not sustain the Examiner’s
rejection of claim 6 under 35 U.S.C. § 103(a) as unpatentable over Zhou in
view of Tabata and Shoshi, as evidenced by Muramatsu.
Rejection II
Claims 1, 3, 5, 8, 9, 11, 12, 14, 16, 17, 19, and 21
Appellants argue claims 1, 3, 5, 8, 9, 11, 12, 14, 16, 17, 19, and 21 as
a group on the basis of claim 1, to which we limit our discussion. App. Br.
14—15; 37 C.F.R. § 41.37(c)(l)(iv) (2015).
As discussed above, Tabata discloses a pressure-sensitive, hot-melt
adhesive composition comprising a main polymer component, a tackifier
having a softening point of 60—100-C, preferably 70—90-C, and a tackifier
having a softening point of 120-C or more. Tabata Tflf 1, 33—35, 57, 77—81.
Tabata discloses that the main polymer component of the adhesive can be
“any of natural rubber, synthetic rubber, acrylic, urethane, and silicon
adhesives conventionally known in the art.” Tabata 157. Tabata further
discloses that preferred synthetic rubber adhesives include a
styrene/isopropylene/styrene block copolymer (SIS). Id.
The Examiner finds that Tabata does not explicitly disclose a base
polymer as recited in claim 1, and the Examiner again relies on Shoshi’s
disclosure of “the equivalence and interchangeability” of isobutylene-
isoprene copolymers as recited in claim 1 and styrene/isopropylene/styrene
block copolymers (SIS) as disclosed in Tabata. Final Act. 6; Shoshi | 53.
The Examiner finds that in view of this interchangeability, one of ordinary
skill in the art would have been led to replace the
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styrene/isopropylene/styrene block copolymer (SIS) used as the main
polymer component in Tabata’s pressure-sensitive adhesive with an
isobutene-isoprene copolymer as disclosed in Shoshi. Final Act. 6; Ans. 7.
Similar to the arguments that Appellants provide for Rejection I,
Appellants argue that replacing Tabata’s styrene-containing main polymer
component with Shoshi’s isobutylene-based rubber would render Tabata’s
adhesive composition useless for its intended purpose. App. Br. 14—15.
Appellants rely on the same evidence in support of this argument that they
rely on in connection with their arguments for Rejection I, set forth above.
App. Br. 15.
However, as discussed above, Tabata discloses that the main polymer
component of Tabata’s pressure-sensitive adhesive can be any conventional
natural rubber, synthetic rubber, acrylic, urethane, or silicon adhesive. As
also discussed above, Tabata discloses that synthetic rubber adhesives
including a styrene component are merely preferred, and Tabata thus
indicates that inclusion of such styrene-containing polymers in Tabata’s
adhesive is not required. Therefore, Tabata implicitly indicates that a
styrene-containing main polymer component is not necessary for Tabata’s
adhesive to function as a hot-melt adhesive. Appellants’ arguments,
supporting references, and the statements in the Igarashi Declaration do not
address these disclosures in Tabata. Nor do Appellants and the Declarant
provide any objective evidence corroborating the conclusory opinion
provided in the Declaration that removing a styrene-containing copolymer
from a hot-melt adhesive as disclosed in Tabata would cause the adhesive to
stop functioning as a hot-melt adhesive. Consequently, Appellants’
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arguments and supporting evidence are unpersuasive of reversible error. 37
C.F.R. § 42.65(a); Velander, 348 F.3d at 1371; Yorkey, 601 F.3d at 1284.
Appellants further argue that “there is no basis for relying on Shoshi’s
disclosure of acceptable alternative polymers as being acceptable
alternatives within Tabata.” App. Br. 15.
However, as discussed above, Tabata and Shoshi both disclose
pressure-sensitive adhesives. In addition, as the Examiner correctly finds,
one of ordinary skill in the art would have understood that the isobutylene -
isoprene rubber and styrene-isoprene block copolymers disclosed in Shoshi
would function interchangeably as pressure-sensitive adhesives. Final Act.
6. Accordingly, given this interchangeability, one of ordinary skill in the art
would have expected that the isobutylene-isoprene rubber pressure-sensitive
adhesive disclosed in Shoshi could be successfully substituted for the
styrene/isopropylene/styrene block copolymer (SIS) main polymer
component of Tabata’s pressure-sensitive adhesive. Kubin, 561 F.3d at
1360; Fout, 675 F.2dat301.
Therefore, the preponderance of the evidence relied-upon in this
appeal weighs in favor of the Examiner’s conclusion of obviousness, and we
accordingly sustain the Examiner’s rejection of claims 1, 3, 5, 8, 9, 11, 12,
14, 16, 17, 19, and 21 under 35 U.S.C. § 103(a) as unpatentable over Tabata
in view of Shoshi, as evidenced by Muramatsu.
Claim 6
We reverse the Examiner’s rejection of claim 6 under 35 U.S.C.
§ 103(a) as unpatentable over Tabata in view of Shoshi, as evidenced by
Muramatsu because this rejection suffers from the same reversible error as
the Examiner’s rejection of claim 6 under 35 U.S.C. § 103(a) as
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unpatentable over Zhou in view of Tabata and Shoshi, as evidenced by
Muramatsu (Rejection I), discussed above. Final Act. 7.
Rejection III
Claims 1, 3, 5, 7—9, 11—14, 16—19, 21, and 22
Appellants argue claims 1,3,5, 7—9, 11—14, 16—19, 21, and 22 as a
group on the basis of claim 1, to which we limit our discussion. App. Br.
17-18; 37 C.F.R. § 41.37(c)(l)(iv) (2015).
Ikishima discloses a pressure-sensitive adhesive tape comprising a
layer of pressure-sensitive adhesive on a base material layer. Ikishima
91; Fig. 2. Ikishima discloses that suitable pressure-sensitive adhesives
for use in the adhesive layer include a rubber-based pressure-sensitive
adhesive, an acrylic pressure-sensitive adhesive, a silicone-based pressure-
sensitive adhesive, and a thermoplastic pressure-sensitive adhesive.
Ikishima H 104, 105. Ikishima discloses that suitable thermoplastic
pressure-sensitive adhesives include a styrene-based block copolymer or an
acrylic thermoplastic resin, and Ikishima further discloses that suitable
styrene-based block copolymers include a styrene-isoprene-styrene
copolymer (SIS). Ikishima H 105, 106.
The Examiner finds that Ikishima does not explicitly disclose a
pressure-sensitive adhesive base polymer as recited in claim 1, and the
Examiner again relies on Shoshi’s disclosure of “the equivalence and
interchangeability” of isobutylene-isoprene copolymers as recited in claim 1
and styrene-isoprene-styrene copolymers (SIS) as disclosed in Ikishima.
Final Act. 9. The Examiner finds that in view of this interchangeability, one
of ordinary skill in the art would have been led to use the isobutene-isoprene
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copolymer disclosed in Shoshi in the pressure-sensitive adhesive disclosed
in Tkishima. Final Act. 9; Ans. 8.
Appellants argue that the Examiner determines “that it would be
obvious to add the isobutylene-isoprene rubber of Shoshi to the composition
oflkishima.” App. Br. 17. Appellants contend that this determination
“lacks any support in the relevant law” because “Appellants are unaware of
cases that universally hold that it is prima facie obvious to add one known
equivalent to another, with a reasonable expectation of success (without
some other basis for the addition).” Id.
However, the Examiner clarifies in the Answer that the rejection is
based on “interchange”6—or substitution—of the isobutene-isoprene
copolymer disclosed in Shoshi for the styrene-isoprene-styrene copolymer
(SIS) included in Ikishima’s pressure-sensitive adhesive, in view of Shoshi’s
disclosure of the equivalence of these copolymers as pressure-sensitive
adhesives. Ans. 8. Because Appellants do not dispute this proposed
substitution in their Reply Brief, Appellants’ arguments are unpersuasive of
reversible error in the Examiner’s rejection. See generally Reply Br.
We note further that even if the Examiner had proposed adding the
isobutene-isoprene copolymer pressure-sensitive adhesive disclosed in
Shoshi to Ikishima’s styrene-isoprene-styrene copolymer pressure-sensitive
adhesive, contrary to Appellants’ arguments, it is well-established that such
a combination of copolymers used for the same purpose is prima facie
obvious. In re Kerkhoven, 626 F.2d 846, 850 (CCPA 1980) (“It is prima
facie obvious to combine two compositions each of which is taught by the
6 “Interchange” is defined as “to put each of (two things) in the place of
the other.” https://www.merriam-webster.com/dictionary/interchange.
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Appeal 2017-002967
Application 13/939,457
prior art to be useful for the same purpose, in order to form a third
composition which is to be used for the very same purpose.”).
Therefore, we sustain the Examiner’s rejection of claims 1,3,5, 7—9,
11—14, 16—19, 21, and 22 under 35 U.S.C. § 103(a) as unpatentable over
Ikishima in view of Tabata and Shoshi, as evidenced by Muramatsu.
Claim 6
We reverse the Examiner’s rejection of claim 6 under 35 U.S.C.
§ 103(a) as unpatentable over Ikishima in view of Tabata and Shoshi, as
evidenced by Muramatsu because this rejection suffers from the same
reversible error as the Examiner’s rejection of claim 6 under 35 U.S.C.
§ 103(a) as unpatentable over Zhou in view of Tabata and Shoshi, as
evidenced by Muramatsu (Rejection I), discussed above. Final Act. 10—11.
DECISION
In view of the reasons set forth above and in the Final Action and the
Answer, we affirm the Examiner’s rejections of claims 1,3,5, 7—9, 11—14,
16—19, 21, and 22 under 35 U.S.C. § 103(a), but reverse the Examiner’s
rejections of claim 6 for the reasons set forth in the Appeal Brief and above.
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-IN-PART
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