Ex Parte Iwasaki et al

Patent Trials and Appeals Board

Mar 29, 2019

14400918 - (D) (P.T.A.B. Mar. 29, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
14/400,918 11/13/2014 Takeshi Iwasaki
38834 7590 04/02/2019
WESTERMAN, HATTORI, DANIELS & ADRIAN, LLP
8500 Leesburg Pike
SUITE 7500
Tysons, VA 22182
UNITED ST A TES OF AMERICA
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.
P24954USOO 5182
EXAMINER
CHANG, VICTORS
ART UNIT PAPER NUMBER
1788
NOTIFICATION DATE DELIVERY MODE
04/02/2019 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):
patentmail@whda.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Exparte TAKESHI IWASAKI, YUKI KOMATSUZAKI,
and HIDEAKI TAKEI
Appeal2018-005641
Application 14/400,918
Technology Center 1700
Before KAREN M. HASTINGS, JENNIFER R. GUPTA,
and MICHAEL G. McMANUS, Administrative Patent Judges.
McMANUS, Administrative Patent Judge.
DECISION ON APPEAL
The Examiner rejected claims 1--4 and 7-9 of Application 14/400,918
under 35 U.S.C. § 103. Non-Final Act. (Nov. 28, 2017) 3-7. Appellant 1
seeks reversal of these rejections pursuant to 35 U.S.C. § 134(a). We have
jurisdiction under 35 U.S.C. § 6(b ).
For the reasons set forth below, we AFFIRM.
1 The Appellant is the Applicant, DIC Corporation, which is also identified
as the real party in interest. Appeal Br. 2.
Appeal2018-005641
Application 14/400,918
BACKGROUND
The present Application generally relates to an adhesive tape having a
foam base material. Spec. ,r 1. The Specification teaches that adhesive tapes
may be used in various electronic devices for "fixing of various members
and modules." Id. ,r 2. In such a context, it is advantageous for an adhesive
tape to be thin, have good conformability, and favorable impact resistance.
Id. ,I,I 3--4.
The present claims relate to a tape having adhesive on both surfaces.
Claim 1 is illustrative of the subject matter on appeal and is reproduced
below:
1. An adhesive tape comprising an adhesive layer on both
surfaces of a foam base material,
wherein the foam base material is a foam base material
having a thickness of 3 00 µm or less and a maximum strength
for tearing apart the foam base in a thickness direction of 6 to
50 N/cm, and
the adhesive layer on one surface is an adhesive layer
having a thickness of 50 µm or less and a 180° peel adhesion
force of 0.5 to 4 N/20 mm at a peel rate of 300 mm/min, where
the adhesive tape, which is formed by disposing the adhesive
layer having a thickness of 25 µm on a PET base material
having a thickness of 25 µm, is press-bonded to a SUS sheet in
an environment at a temperature of 23 °C and a relative
humidity of 65%RH by using a 2-kg roller with the number of
press bonding cycles of one reciprocating motion and standing
is performed for 1 hour in an environment at a temperature of
23 °C and a relative humidity of 50%RH,
wherein the adhesive layer contains an acrylic copolymer
having a weight average molecular weight from 1,380,000 to
2,500,000, and
wherein the adhesive layer on the other surface of the
foam base material is an adhesive layer having a 180° peel
2
Appeal2018-005641
Application 14/400,918
adhesion force of 1 to 25 N/20 mm at a peel rate of 300
mm/min, where the adhesive tape, which is formed by
disposing the adhesive layer having a thickness of 25 µm on a
PET base material having a thickness of 25 µm, is press-bonded
to a SUS sheet in an environment at a temperature of 23 °C and
a relative humidity of 50%RH by using a 2-kg roller with the
number of press bonding cycles of one reciprocating motion
and standing is performed for 1 hour in an environment at a
temperature of 23 °C and a relative humidity of 50%RH, and
having an adhesion force higher than the adhesion force of the
adhesive layer on the other surface.
Appeal Br. 25-26 (Claims App.) ( emphasis added).
REJECTION
The Examiner maintains the following rejection2 :
Claims 1--4 and 7-9 are rejected under 35 U.S.C. § I03(a) (pre-
AIA) as obvious over Tateo et al. 3 in view of Leerkamp et al. 4 and
Ukei et al. 5 as evidenced by Nakayama et al. 6 Non-Final Act. 3-7.
DISCUSSION
The Examiner rejected claims 1--4 and 7-9 as obvious. Appellant
seeks review on several bases.
First, Appellant argues that the cited references do not teach an
"adhesive layer [that] contains an acrylic copolymer having a weight
2 Claims 1-7 were rejected for nonstatutory double patenting. Non-Final
Act. 7-9. This rejection was withdrawn by the Examiner in view of the
Applicant's filing of terminal disclaimers. Answer 13; Appeal Br. 23.
3 US 2008/0057301 Al, published Mar. 6, 2008 ("Tateo").
4 US 2004/0022046 Al, published Feb. 5, 2004 ("Leerkamp").
5 US 2009/0163626 Al, published June 25, 2009 ("Ukei").
6 US 2011/0300361 Al, published Dec. 8, 2011 ("Nakayama").
3
Appeal2018-005641
Application 14/400,918
average molecular weight from 1,380,000 to 2,500,000" as required by
claim 1. Appeal Br. 9-11.
In the Non-Final Action, the Examiner relies upon Ukei as teaching
such feature. The Examiner finds that Ukei teaches "a pressure sensitive
adhesive of acrylic copolymer .... The acrylic polymer [having] a weight
average molecular weight of 100,000 to 5,000,000, more preferably of
200,000 to 4,000,000, still more preferably of 300,000 to 3,000,000." Non-
Final Act. 4 ( citing Ukei ,r 63).
Appellant concedes that Ukei teaches a range of weight average
molecular weights that overlap the claimed range, but argues that Ukei' s
teachings, considered as a whole, would not lead one of ordinary skill in the
art to the claimed range. Id. at 11. Appellant notes that Ukei's examples
each have weight average molecular weights well below the claimed range.
Id. We do not find such argument persuasive.
"' [ A ]11 disclosures of the prior art, including unpreferred
embodiments, must be considered."' Merck & Co. v. Biocraft Labs., Inc.,
874 F.2d 804, 807 (Fed. Cir. 1989); see also In re Fracalossi, 681 F.2d 792,
794 n.1 (CCPA 1982) (Explaining that a prior art reference's disclosure is
not limited to its examples.). "A reference must be considered for
everything that it teaches, not simply the described invention or a preferred
embodiment." In re Applied Materials, Inc., 692 F.3d 1289, 1298 (Fed. Cir.
2012). Accordingly, we may not disregard Ukei's teaching of a range of
weight average molecular weights that overlaps the claimed range. Such
overlap establishes a prima facie case of obviousness. See In re Peterson,
315 F.3d 1325, 1330 (Fed. Cir. 2003) ("[A] prior art reference that discloses
4
Appeal2018-005641
Application 14/400,918
a range encompassing a somewhat narrower claimed range is sufficient to
establish a prima facie case of obviousness.").
Second, Appellant argues that the cited references do not teach that
the "adhesive layer contains an acrylic copolymer" as required by claim 1.
Appeal Br. 11-13. The Examiner finds that Tateo teaches that "[u]seful
adhesives for the adhesive tape include acrylic based adhesive." Non-Final
Act. 3. Specifically, Tateo teaches as follows:
In addition, an adhesive constituting an adhesive layer which is
layered on and integrated with one side or both sides of the
crosslinked polyolefin-based resin foam sheet is not particularly
limited as far as it has been conventionally used in an adhesive
tape, and examples thereof may include an acrylic-based
adhesive, a urethane-based adhesive, a rubber-based adhesive
and the like.
Tateo ,r 78 ( emphasis added). Appellant argues that such teaching is "too
generic and broad to render obvious the specific presently claimed
invention." Appeal Br. 12. Appellant further argues that the Examiner's
hypothetical combination requires "selective combination" without
adequate guidance from the references. Id.
We do not find such arguments persuasive. The Examiner correctly
determined that the cited portion of Tateo teaches that acrylic-based
adhesives are appropriate for use with foam sheet-based adhesive tape. That
Tateo teaches other suitable alternatives does not limit its teaching regarding
acrylic-based adhesives. See In re Susi, 440 F .2d 442, 445 (CCP A 1971)
(Obviousness rejection affirmed where the disclosure of the prior art was
"huge, but it undeniably include[ d] at least some of the compounds recited in
appellant's generic claims and it is of a class of chemicals to be used for the
same purpose as appellant's additives."); see also Merck, 874 F.2d at 807
5
Appeal2018-005641
Application 14/400,918
("That the [reference] discloses a multitude of effective combinations does
not render any particular formulation less obvious."). Further, we note that
the same portion ofUkei noted above teaches "[t]he acrylic polymer for use
in the present invention." Ukei ,r 63 ( emphasis added).
In view of the foregoing, we determine that Appellant has not shown
reversible error with regard to the "acrylic copolymer" limitation of claim 1.
Third, Appellant argues that it has demonstrated unexpected results.
Appeal Br. 15-19. When evidence of secondary considerations is submitted,
we begin anew and evaluate the rebuttal evidence along with the evidence
upon which the conclusion of obviousness was based. In re Rinehart, 531
F.2d 1048, 1052 (CCPA 1976). Rebuttal may take the form of"a
comparison of test data showing that the claimed compositions possess
unexpectedly improved properties ... that the prior art does not have, that
the prior art is so deficient that there is no motivation to make what might
otherwise appear to be obvious changes, or any other argument ... that is
pertinent." In re Dillon, 919 F.2d 688, 692-3 (Fed. Cir. 1990) (en bane)
( citations omitted).
Appellant may show that the claimed invention has an unexpected
property over the prior art "with evidence that the claimed invention exhibits
some superior property or advantage that a person of ordinary skill in the
relevant art would find surprising or unexpected." In re Mayne, 104 F.3d
1339, 1343 (Fed. Cir. 1997). An examination for unexpected results is a
factual, evidentiary inquiry. Id.
"It is the established rule that 'objective evidence of non-obviousness
must be commensurate in scope with the claims which the evidence is
offered to support."' Allergan, Inc. v. Apotex Inc., 754 F.3d 952, 965 (Fed.
6
Appeal2018-005641
Application 14/400,918
Cir. 2014) (quoting In re Tiffin, 448 F.2d 791,792 (CCPA 1971)). This is as
true for evidence of unexpected results as it is for any other type of objective
evidence of non-obviousness. See In re Peterson, 315 F.3d 1325, 1330 (Fed.
Cir. 2003) ("[T]he applicant's showing of unexpected results must be
commensurate in scope with the claimed range."); In re Clemens, 622 F.2d
1029, 1035 (CCPA 1980) ("In order to establish unexpected results fora
claimed invention, objective evidence of non-obviousness must be
commensurate in scope with the claims which the evidence is offered to
support.").
Here, Appellant relies upon declaratory evidence and the
Specification to show that "an adhesive tape according to the present
invention exhibited excellent impact resistance and adherend-conformability
and reworkability, as compared with the comparatives." Appeal Br. 15.
Appellant contends that "[ s ]pecifically, the Declaration shows that an acrylic
copolymer having a weight average molecular weight from 1,380,000 to
2,500,000, as per the present invention achieves unexpected results." Id.
The Declaration referred to describes two additional comparative examples.
See Declaration of Takeshi Iwasaki (Sept. 1, 2016) (hereafter "Iwasaki
Dec."). The two additional examples from the Declaration are stated to have
a weight average molecular weight of acrylic copolymer of 710,000 (Added
Comparative Example 1) and 1,050,000 (Added Comparative Example 2).
Id. ,r 2. The Specification additionally includes a number of Examples and
Comparative Examples of double-face adhesive tapes made from various
adhesive solutions (Adhesive Solutions A through G). Spec. ,r,r 112-146.
Testing results for these various compositions is shown in Tables 1-3. Id.
,r,r 158-160.
7
Appeal2018-005641
Application 14/400,918
The weight average molecular weight of acrylic copolymer for the
adhesive solutions described in the Specification ranges from 1,200,000
(Adhesive F) to 2,020,000 (Adhesive A). Id. ,r,r 112, 117. Thus, Appellant
has not cited to any evidence showing the properties of tapes having an
adhesive having an acrylic copolymer having a weight average molecular
weight for the upper bound of the claimed "1,380,000 to 2,500,000" range.
Accordingly, the upper limit of such claimed range has not been shown to be
critical or to delineate a range below which an unexpected effect is observed.
We additionally note that Example 1 7, a double-sided tape made
using Adhesive F, appears to have been made using an adhesive that falls
outside the claimed range of molecular weight yet to exhibit properties
described as favorable in the Specification. See Spec. ,r,r 117, 137, 159
(Table 2). This further undermines Appellant's assertion of criticality.
In view of the foregoing, Appellant has not shown error in the
Examiner's determination that the Declaration and Specification are
inadequate to show surprising or unexpected results for the claimed tapes
relative to the closest prior art.
Fourth, Appellant argues, as best understood, that the Examiner has
not shown that the references teach the claimed peel adhesion force. Appeal
Br. 19-20. Appellant argues that peel adhesion force has not been
recognized as a result-effective variable, therefore, "it cannot be alleged the
variable is a result of optimization." Id. at 19. The Examiner found that
Ukei teaches a relationship between weight average molecular weight and
peel adhesion force. Non-Final Act. 4. Specifically, the Examiner
determined as follows:
8
Appeal2018-005641
Application 14/400,918
Id.
the weight average molecular weight of the acrylic copolymer
is result effective to the peel adhesion force of the adhesive. It
would have been obvious to one of ordinary skill in the art to
likewise optimize the weight average molecular weight of
Tateo's acrylic adhesive layer, motivated by the desire to obtain
required peel adhesion force for the same utility (reworkability)
as the claimed invention.
Appellant has not squarely addressed the foregoing. Accordingly, we
determine that Appellant has not shown error in the Examiner's
determination regarding optimization to obtain the requisite peel adhesion
force.
In addition to the foregoing, Appellant includes brief assertions
regarding the dependent claims. Appeal Br. 20-23. To the extent Appellant
relies upon its arguments presented with regard to claim 1, such arguments
have not been found to be persuasive and, therefore, do not show error with
regard to dependent claims.
Patent Office rules 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 CPR§ 4I.37(c)(l)(iv).
Here, Appellant's arguments regarding dependent claims 2--4, 7, and 9
simply do not explain any allegation of error. Accordingly, Appellant has
not shown error with regard to such claims.
Appellant relies upon its earlier argument regarding peel adhesion
force with regard to dependent claim 8. Appeal Br. 22. As such argument
9
Appeal2018-005641
Application 14/400,918
has not been found to be persuasive, we determine that it does not show
error with regard to the rejection of claim 8.
CONCLUSION
For the reasons stated in the Non-Final Rejection, the Answer, and
above, the rejection of claims 1--4 and 7-9 as obvious over Tateo in view of
Leerkamp and Ukei as evidenced by Nakayama is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 3 7 C.F .R. § 1.13 6( a).
AFFIRMED
10