Ex Parte Miyake et al

Board of Patent Appeals and Interferences

Sep 22, 2010

11648426 (B.P.A.I. Sep. 22, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte KEVIN KEI MIYAKE and KATHERINE SUE RICE
____________

Appeal 2009-009569
Application 11/648,426
Technology Center 1700
____________

Before MICHAEL P. COLAIANNI, PETER F. KRATZ, and
JEFFREY T. SMITH, Administrative Patent Judges.

KRATZ, Administrative Patent Judge.

DECISION ON APPEAL1

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.

Appeal 2009-009569
Application 11/648,426

2
This is a decision on an appeal under 35 U.S.C. § 134 from the
Examiner’s final rejection of claims 1-18. We have jurisdiction pursuant to
35 U.S.C. § 6.
Appellants’ claimed invention is directed to a method of forming a
cold seal on a polymer film and a polymer said to be useful in forming cold
seals.
Claims 1 and 10 are illustrative and reproduced below:
1. A method for forming a cold seal on a polymer film;
said method comprising:

(a) applying to the polymer film a layer of a polymer
latex comprising a polymer having a first phase and a second
phase, where the first phase has a Tg from -60°C to -25°C, from
1% to 8% carboxylic acid monomer residues, and at least 50%
of residues of C4-C22 alkyl acrylates; and the second phase has a
Ts of at least 65°C and at least 1% less carboxylic acid
monomer residue than the first phase; wherein the first phase is
from 70% to 95% of the polymer; and
I
(b) forming a seal by contacting two polymer film
surfaces comprising a layer of polymer latex to form a seal
without heating.

10. A polymer having a first phase and a second phase,
where the first phase has a Tg from -55°C to -30°C, from 1% to
5% carboxylic acid monomer residues, and at least 50% of
residues of C4-C22 alkyl acrylates; and the second phase has a
Tg of at least 80°C and at least 1% less carboxylic acid
monomer residue than the first phase; wherein the first phase is
from 70% to 95% of the polymer, and the polymer is
substantially free of monomer residues having more than one
carboxyl group.

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Application 11/648,426

3
The Examiner relies on the following prior art references as evidence
in rejecting the appealed claims:
Dust 4,889,884 Dec. 26, 1989
McGee 5,567,773 Oct. 22, 1996

The Examiner maintains the following grounds of rejection:
Claims 1-18 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over McGee in view of Dust.2
The principal issue before us is:
Have Appellants indicated error in the Examiner’s determination that
the applied prior art would have suggested to one of ordinary skill in the art
Appellants’ polymer including a first phase and a second phase having glass
transition temperatures within the ranges specified in the appealed claims
and a relative amount of carboxylic acid monomer residue in the polymer
phases as claimed by Appellants and/or a method of forming a cold seal on a
film using same?
We answer this question in the negative and we affirm the stated
obviousness rejection. Our reasoning follows.
Appellants present some arguments that are common to all of the
appealed claims and argue several of the claims, or groups of such claims
separately; such as, claims 2-13 and 15-18 (App. Br. 10-14). Claim 14 is
argued together with claim 1 and stands or falls together therewith (App. Br.
11). Consequently, we consider the appealed claims separately to the extent
separately argued.

2 The rejection of claims 1-10 under 35 U.S.C. § 103(a) as being
unpatentable over McGee in view of Bardman has been withdrawn by the
Examiner (Ans. 2).

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McGee is directed to cold sealable cohesive polymers including a soft
polymer comprising a low glass transition temperature (Tg) phase, and hard
polymer comprising a high Tg phase, and methods of making a cold seal on a
polymer film using same (col. 1, ll. 30-55 and col. 4, l. 19.). According to
McGee, the polymer is useful as a substrate coating for sealing packages
containing foodstuff, such as candy, chocolates, and ice cream (col. 1, ll. 14-
21). McGee teaches that the soft polymer can have a Tg below room
temperature and the hard polymer has a Tg greater than the soft polymer Tg
(greater than about room temperature). In the detailed description of the
invention, McGee further teaches that a soft polymer with a Tg ranging from
about -25°C to about 15°C and a hard polymer with a Tg ranging from about
15°C to about 60°C may be employed in forming the final polymer (col. 2,
ll. 55-61 and col. 3, ll. 31-39).
Like Appellants’ polymer, McGee teaches that the polymer includes
alkyl acrylates, such as butyl acrylate (a C4 acrylate), in a major amount in
the soft phase and that the soft phase can be employed in amounts of 100
parts to 20-60 parts of hard polymer, a ratio that overlaps the claimed ratio
of the polymer phases as indisputably found by the Examiner (Ans. 3-4;
McGee, col. 2, ll. 28-41, and col. 6, ll. 1-5).
The Examiner has found without dispute that McGee discloses that
the soft polymer phase can include 0.5 to 4 weight percent residual acid
monomer, such as carboxylic acid monomer and the hard phase can include
from about 1-10 weight percent thereof (Ans. 3; McGee, col. 2, ll. 42-54 and
col. 3, ll. 27-30). McGee further discloses that the carboxylic acid makeup
of the soft phase can broadly run from about 0.1 to about 10 weight percent
(col. 2, ll. 42-54). McGee teaches or suggests that the soft polymer phase
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contributes to the self-sealing properties of the final polymer and the hard
polymer phase contributes to the blocking properties (col. 11, ll. 41-55).
Dust discloses a cold seal adhesive blend that includes a soft polymer
which gives the blend its pressure sensitive properties and a hard polymer
which gives the blend reduced tack (anti-blocking) properties (col. 2, ll. 20-
34). The soft polymer has a Tg of from -40 to -60°C and the hard polymer
has a Tg ranging from -25 to 5°C (Dust, col. 2, ll. 35-63). Dust teaches or
suggests that the soft polymer thereof contributes to pressure sensitive
properties (seal strength) and the hard polymer to low tack (anti-blocking
properties) (col. 2, ll. 21-26, col. 10, ll. 9-14).
Claims 1 and 14
Concerning representative claim 1, the Examiner recognizes that
McGee does not explicitly describe a hard phase polymer with a Tg
exclusively in the range of at least 65°C, a hard phase carboxylic acid
monomer residue content that is at least one weight percent less than the
carboxylic acid residue content of the soft phase, and a soft phase with a Tg
exclusively in the range of -60 to -25°C (Ans. 4).
However, in addition to the detailed description wherein an
overlapping or adjacent range of about -25 to about 15°C for the soft phase
and a non-overlapping but nearby range of about 15 to about 60°C for the
hard phase are taught by McGee, the Examiner points out that McGee
further and more generally instructs that the soft polymer can have a Tg
ranging below room temperature and the hard polymer can have a Tg that
ranges above room temperature (Ans. 4; McGee, col. 1, ll. 41-49, col. 2, ll.
55-56, and col. 3, ll. 31-35). Given these latter overlapping ranges of glass
transition temperatures more generically taught by McGee as was pointed to
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by the Examiner, we agree with the Examiner’s conclusion that McGee
would have suggested, to one of ordinary skill in the art, a polymer with soft
and hard glass transition temperatures within the claimed ranges.
After all, as stated by our reviewing court in In re Peterson, 315 F.3d
1325, 1329 (Fed. Cir. 2003):
In cases involving overlapping ranges, we and our predecessor
court have consistently held that even a slight overlap in range
establishes a prima facie case of obviousness.…We have also
held that a prima facie case of obviousness exists when the
claimed range and the prior art range do not overlap but are
close enough such that one skilled in the art would have
expected them to have the same properties…[Citations
omitted.]

See also Hayes Int’l., Inc. v. Jessop Steel Co., 8 F.3d 1573, 1577 n.3 (Fed.
Cir. 1993) (When there is a minor difference between the claimed invention
and the prior art in a range or value of a particular variable, then a prima
facie rejection is properly established).
Moreover, the Examiner has reasonably found that the teachings of
McGee with respect to the ranges of amounts of acid monomer in the hard
and soft phases would have encompassed a selection of an amount of
residual acid monomer in the hard phase that is at least one percent less than
the amount in the soft phase, as claimed. After all, McGee teaches ranges of
acid monomer in each phase, as noted above, that embraces a selection of
amounts of acid monomer in the hard phase that is less than the acid
monomer employed in forming the soft phase. McGee does not require that
the residual acid monomer content in the hard phase must be greater or equal
to the amount of residual acid monomer in the soft phase, as seemingly
argued by Appellants.
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Against this backdrop, Appellants’ argument noting that the detailed
description hard phase glass transition temperature range of McGee (about
15°C to about 60°C) does not overlap with the claimed at least 65°C glass
transition temperature range is not persuasive of any error in the Examiner’s
obviousness determination because this argument does not take into account
the more generic teaching of McGee with respect to the usable glass
transition temperature ranges of the hard and soft polymer phases which
taught ranges overlap with the claimed ranges, as noted above.
In addition, we observe that Appellants do not argue that making
polymers with glass transition temperatures within the claimed ranges would
have been technically beyond the ordinary skill of the artisan at the time of
the invention with the teachings of the applied prior art, in hand. Indeed, as
the Examiner further explains, McGee is directed to a substantially similar
polymer compositions and polymer uses as Appellants claimed invention is
directed to and McGee teaches that that the glass transition temperature can
be adjusted by changing the amounts of monomer employed (Ans. 3, 4, 6,
and 12; McGee, col. 2, ll. 15-18, col. 8, ll. 48-65).
Similarly, Appellants’ argument that McGee does not teach or suggest
the relative acid monomer residue level is not persuasive of error in the
Examiner’s obviousness rejection (App. Br. 11). This is because the
teachings of the acid level ranges for the soft and hard polymer phases
furnished by McGee would have reasonably suggested that the amount of
acid in the hard phase could be more, less or equal to the amount of acid in
the soft phase and, therefore, include relative amounts of acid in the phases
as recited in representative claim 1. In this regard, the disclosure of McGee
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is not restricted to the Examples as seemingly focused on by Appellants, as
correctly pointed out by the Examiner (Ans. 13).
As for the separately argued claims 15-17 (App. Br. 10), we select
claim 15 as representative of this grouping, Claim 15 requires that the
second (hard) phase has no more than 1 percent carboxylic acid monomer
residues and has at least 1.5 weight percent less of that monomer residue
than the soft phase. As we noted above, however, the Examiner has
reasonably found that McGee teaches that the hard phase can have 1-10
weight percent carboxylic acid monomer residue and the acid monomer
residue content of the soft phase of McGee can be selected to be higher than
1 weight percent, such as 4 weight percent, based on the weight percent
rages for the acid monomer provided by McGee.
Further concerning this matter, we note that the teachings of McGee
are not limited to the exemplified polymers. In this regard, the disclosed
examples and particularly preferred embodiments do not constitute a
teaching away from a broader disclosure of less preferred embodiments. See
In re Susi, 440 F.2d 442, 446 (CCPA 1971). Moreover, the fact that a
reference “discloses a multitude of effective combinations does not render
any particular formulation less obvious.” Merck & Co., Inc. v. Biocraft
Labs., Inc., 874 F.2d 804, 808 (Fed. Cir. 1989) (citing In re Corkill, 771
F.2d 1496, 1500 (Fed. Cir. 1985) (“obviousness rejection of claims affirmed
in light of prior art teaching that ‛hydrated zeolites will work’ in detergent
formulations, even though ‛the inventors selected the zeolites of the claims
from among ‛thousands’ of compounds”’)).
In light of the above and the factual findings set forth in the
Examiner’s Answer, we agree with the Examiner that McGee, taken alone,
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furnishes sufficient evidence of a two-phase cold seal polymer similar to the
claimed polymer and inferentially suggests that the level of skill in the art is
such as to establish the obviousness of the claimed subject matter to one of
ordinary skill in the art (Ans. 14). Consequently, we need not further
discuss the additional teachings of Dust.
Claims 2-13, and 18
Concerning the separate arguments presented for claims 2-13 and 18,
we agree with the Examiner that the narrower ranges for the glass transition
temperature of the soft and/or hard polymer phases set forth in claims 2, 10,
6-13, and 18 and/or the greater difference in the residual acid content of the
hard and soft phases (claim 18) are reasonably suggested by McGee for
substantially the reasons set forth above and in the Answer. Moreover, we
disagree with Appellants’ contention that one of ordinary skill in the art
would have no expected likelihood of success in selecting glass transition
temperatures for the hard and soft phases within the ranges claimed. As
explained by the Examiner throughout the Answer, the glass transition
temperature of each of these phases is known to be result effective.
As noted above, McGee teaches that the soft polymer phase
contributes to sealing properties and the hard polymer phase to blocking
capabilities of the final polymer. Also, McGee generically teaches that an
appropriate hard phase Tg is above room temperature and the soft phase Tg is
below room temperature. Appellants’ claimed glass transition temperature
ranges overlap with these generic ranges of McGee. “What matters is the
objective reach of the claim. If the claim extends to what is obvious, it is
invalid under § 103.” KSR Int’l. Co. v. Teleflex, Inc., 550 U.S. 398, 419
(2007). To be non-obvious, the claimed subject matter must not encompass
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“the predictable use of prior art elements according to their established
functions.” Id. at 417.
It follows that McGee suggests, to one of ordinary skill in the art, the
claimed process and polymer, including the narrower glass transition
temperature ranges therein, which narrower ranges are encompassed by the
generic Tg ranges of McGee.
As a final point, we note that Appellants have not established any
criticality or unexpected results for a polymer with hard and soft phases
having glass transition temperature ranges and relative acid monomer
residue content, as claimed.
On this record, we determine that the evidence furnished by the
Examiner to establish the obviousness, within the meaning of § 103, of the
claimed subject matter outweighs the argument and evidence, and/or lack of
evidence marshaled by Appellants alleging non-obviousness of the claimed
subject matter over the applied prior art.
ORDER
The Examiner’s decision to reject claims1-18 under 35 U.S.C. §
103(a) as being unpatentable over McGee in view of Dust is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 CFR § 1.136(a).

AFFIRMED

Appeal 2009-009569
Application 11/648,426

11
kmm

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