Ex Parte Rosing

Patent Trials and Appeals Board

Apr 8, 2019

13940527 - (D) (P.T.A.B. Apr. 8, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/940,527 07/12/2013
24504 7590 04/10/2019
THOMAS I HORSTEMEYER, LLP
3200 WINDY HILL ROAD, SE
SUITE 1600E
ATLANTA, GA 30339
FIRST NAMED INVENTOR
Howard Rosing
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.
291802-1050 1062
EXAMINER
WALSHON, SCOTT R
ART UNIT PAPER NUMBER
1788
NOTIFICATION DATE DELIVERY MODE
04/10/2019 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):
uspatents@tkhr.com
ozzie. liggins@tkhr.com
docketing@thomashorstemeyer.com
PTOL-90A (Rev. 04/07)
UNITED ST ATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte HOW ARD ROSING
Appeal2018-003572
Application 13/940,527
Technology Center 1700
Before GEORGE C. BEST, DEBRAL. DENNETT, and
SHELDON M. McGEE, Administrative Patent Judges.
McGEE, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant 1 seeks our review of the
Examiner's decision to reject claims 1-5, 7-9, 12-15, 17-19, 21-26, 29, and
30. App. Br. 2.
We have jurisdiction. 35 U.S.C. §6.
We reverse.
1 Appellant is the Applicant, Global Biomedical Technologies, LLC, which
is identified as the real party in interest. App. Br. 2.
Appeal 2018-003572
Application 13/940,527
SUBJECT MATTER
The subject matter on appeal relates to a selectively-releasable
adhesive containing a base adhesive compound and an uncured releasing
compound blended therewith, as well as adhesive articles employing such
selectively-releasable adhesive. Claims 1, 13.
Independent claim 1 is illustrative of the claimed subject matter and is
copied below with the key limitation at issue in this appeal italicized:
1. A selectively-releasable adhesive comprising:
a base adhesive compound; and
a releasing compound that is blended with the base adhesive
compound, the releasing compound being capable of decreasing
the adhesive strength of the base adhesive compound when a
releasing agent is applied to the selectively-releasable adhesive,
wherein the releasing compound is an uncured prepolymer
formed from a multifunctional alcohol and a multifunctional
carboxylic acid.
App. Br. 28 ( emphasis added).
REJECTIONS
On appeal, the Examiner maintains the following rejections:
I. Claims 29 and 30 under 35 U.S.C. § 112, frrst paragraph for
lack of written description;
II. Claims 1-5, 7-9, 12-15, 17-21, 24--26, 29, and30 underthe
doctrine of obviousness-type double patenting over claims 1-
19 of US 7,745,562 B2 issued June 29, 2010, i.e. "Rosing
'562," in view of Therriault (US 5,352,516, issued October 4,
1994);
III. Claims 22 and 23 under the doctrine of obviousness-type
double patenting over claims 1-19 of Rosing '562 in view of
Therriault and Gusakov (US 5,848,966, issued December 15,
1998);
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Application 13/940,527
IV. Claims 1-5, 7-9, 12-15, 17-21, 24--26, 29, and30 underthe
doctrine of obviousness-type double patenting over claims 1-
14 ofUS 7,887,915 B2 issuedFebruazy 15, 2011, i.e. "Rosing
'915," in view of Therriault;
V. Claims 22 and 23 under the doctrine of obviousness-type
double patenting over claims 1-14 of Rosing '915 in view of
Therriault and Gusakov;
VI. Claims 1-5, 7-9, 12-15, 17-21, 24--26, 29, and 30 under 35
U.S.C. § 103(a) as beingunpatentable over Therriault in view
of Rosing '562; and
VII. Claims 22 and 23 under 35 U.S.C. § 103(a) as being
unpatentable over Therriault in view of Rosing '562 and
Gusakov.
Final 2-18; Ans. 3-19.
OPINION
Rejection!
The Examiner fmds that the specification as filed does not describe
the "releasing compound" as "water-insoluble." Final 3. Specifically, the
Examiner notes that"[ e ]ven if the preferred releasing compound described
in the application is water-insoluble, the claims ... allow for many water-
insoluble compounds other than the compounds disclosed." Id.
Appellant contends that the Examiner's rejection is in error because
"all of the releasing compounds identified ... in the original disclosure are
water-insoluble compounds," and because the skilled artisan would
appreciate that "multifunctional alcohols and multifunctional carboxylic
acids are water-insoluble materials."2 App. Br. 7.
2 The issue of whether claims 29 and 30 are improperly dependent under 35
U.S. C. § 112, 4th paragraph is not before us.
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Application 13/940,527
The Examiner responds that "even if it is generally known that
polymers of multifunctional alcohols and multifunctional carboxylic acids
are generally water insoluble, it is possible that some modified polymers are
indeed water soluble, or at least sparingly soluble." Ans. 18.
We agree with Appellant and reverse this rejection. It is well-settled
that the Examiner
"bears the initial burden ... of presenting a prima facie case of
unpatentability." In re Oetiker, 977 F.2d 1443, 1445, 24
USPQ2d 1443, 1444(Fed. Cir. 1992). Insofar as the written
description requirement is concerned, that burden is discharged
by "presenting evidence or reasons why persons skilled in the
art would not recognize in the disclosure a description of the
invention defmed by the claims." . . . If ... the specification
contains a description of the claimed invention, albeit not in
ipsis verb is (in the identical words), then the examiner ... , in
order to meet the burden of proof, must provide reasons why
one of ordinary skill in the art would not consider the
description sufficient.
In re Alton, 76 F.3d 1168, 1175 (Fed. Cir. 1996).
Here, the Examiner fails to provide such reasons. Rather, the
Examiner improperly focuses on the apparent lack of an ipsis verbis
recitation of the phrase "water-insoluble" in the Specification. Final 2-3;
Ans. 3--4, 18.
The Examiner's statement that claims 29 and 30 "allow for many
water-insoluble compounds other than the compounds disclosed" is not well-
taken. Final 3; Ans. 4. It is unclear how this is true because independent
claims 1 and 13-from which claims 29 and 30 depend-limit the releasing
compound to "an uncured prepolymer formed from a multifunctional alcohol
and a multifunctional carboxylic acid." App. Br. 28, 30. Under these
circumstances, we determine that the Examiner failed to establish that
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Application 13/940,527
Appellant did not have possession of the subject matter of claims 29 and 30
at the time the application was filed. It follows that we do not sustain the
Examiner's rejection under 35 U.S.C. § 112, frrst paragraph.
Rejections II-VII
In the obviousness-type double patenting rejections based on Rosing
'562 in view ofTherriault(Final 4--7) and Rosing '915 in view of Therriault
(id. at 8-12), the Examiner fmds that the copolymer recited in claim 10 of
Rosing '562 and claim 6 of Rosing '915 "does not exceed 4%, which
includes 0% and thus reads on an uncured prepolymer. " 3
In the obviousness rejections (id. at 13-18), the Examiner relies on
Rosing '562 's disclosure of a poly(glycerol-sebacate) ("PGS") polymer
disclosed in Table 2 that has a crosslink density of Oo/o--a polymer that has
undergone a cure time of 7 hours-to satisfy the "uncured prepolymer"
limitation of the claims. Id. at 13. Alternatively, the Examiner relies on
Rosing '562's disclosure of an uncuredPGS prepolymer. Id. at 14, 20-21;
Rosing '562, Fig. 3.
Therefore, the frrst issue we must determine for each of these
rejections is whether the Examiner's claim construction that the limitation
"uncured prepolymer" includes a polymeric mixture exhibiting a crosslink
density of between zero and 4o/o--regardless of whether such polymeric
mixture is identified as "cured" or has undergone some period of"curing"-
3 We observe that claim 10 ofRosing '562 and claim 6 ofRosing '915 each
recites "the copolymer has a crosslink density that does exceed 4 percent."
(emphasis added). Thus the Examiner's fmdings are erroneous and the
obviousness-type double patenting rejections are flawed for this additional
reason.
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Appeal 2018-003572
Application 13/940,527
is reasonable. Based on the appeal record before us, we find that the
Examiner's construction is unreasonably broad when viewed in light of the
Specification.
The Specification indicates that "the term 'prepolymer' describes an
uncured polymeric mixture that exhibits little or no crosslinking. As a
result, OGS [ an example prepolymer] has a crosslink density significantly
less than 1 %. By way of example, the OGS has a crosslink density of O to
approximately 0.05%." Spec. 5:16-19 (emphasis added).
This description of "prepolymer," however, does not state that any
polymeric mixture having a crosslink density of "significantly less than 1 %"
is properly deemed a "prepolymer" regardless of whether it has undergone
some "curing." Such a construction reads the term "uncured" out of the
claim. In other words, the degree of crosslink density does not, on its own,
define what is or is not an "uncured prepolymer" as recited in independent
claims 1 and 13. Thus, the Examiner's reliance on embodiments in Rosing
'562 which purportedly have or include a crosslink density of zero, without
more, is insufficient to establish that Rosing' s polymer is "uncured" within
the meaning and scope of the claim.
The next issue we must determine is whether the Examiner
established that the skilled artisan would have been motivated to use Rosing
'562 's uncured prepolymer disclosed in Figure 3 (i.e., cure time at zero
hours) in Therriault's adhesive mixture. Final 14, 20-21; Ans. 21. We find
that the Examiner failed in this respect. Specifically, the Examiner fmds that
the "uncured P GS material exhibits adhesiveness ( as determined by the peel
strength of the resulting adhesive) when the material has been cured for 0
hours or longer." Ans. 21. While Rosing '562 does indicate that some small
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Application 13/940,527
degree of peel strength (i.e., <2N/100mm) is present at a cure time of zero
hours, the Examiner has not demonstrated that such a small degree of
adhesive strength would have been deemed sufficient by the skilled artisan
to use in Therriault's adhesive mixture. Indeed, Rosing '562 appears to
suggest otherwise. Considering Figure 6 of Rosing '562, we observe that
the peel strength 5 minutes 4 after application of a 70% ethanol solution is
well below 5N/100mm. Rosing '562, Fig. 6. The reference describes such
levels of adhesion post-solvent exposure as "dramatically reduce[ d] ... so
that it possesses very little adhesive strength." Rosing '562, 6:61---63
(emphasis added); see also id. at 6:65-7:2 (explaining how, after exposure to
a solvent such as ethanol, the adhesive or the bandage or article to which the
adhesive is applied "can be removed with very little force"); see also id. at
7:20-25 (noting that the "peel strength is dramatically reduced" after
exposure to a solvent).
Thus, while the Examiner is correct (Ans. 21) that "uncured PGS
material exhibits adhesiveness ( as determined by the peel strength of the
resulting adhesive) when the material has been cured for O hours," Rosing
'562 suggests that adhesive peel strengths of less than 2N/100mm, such as
that observed at cure time zero in Figure 3, would not provide sufficient
adhesive force for the skilled artisan to be motivated to include it in
Therriault's mixture. This low adhesive peel strength (i.e., <2N/100mm) for
uncured PGS undercuts the Examiner's obviousness rationale in the
4 Figure 6 of Rosing '562 appears to contain a typographical error. The time
period along the x-axis is stated in "hours" rather than in "minutes." Rosing
'562, 7:19-25; see also Rosing '915, Fig. 6 (indicating the time in
"minutes"). Rosing '915 issued from a continuation application of Rosing
'562.
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Application 13/940,527
rejection-namely that "PGS is suitable for obtaining good adhesion to
human skin." Final 14.
Thus, because the Examiner erroneously determines that the
polymeric mixtures disclosed in Table 2 and claim 10 ofRosing '562, and
claim 6 of Rosing '915 are "uncured prepolymers" as recited in each
independent claim on appeal, and because the Examiner has not established
that the skilled artisan would have been motivated to use an uncured
prepolymer as an adhesive, we do not sustain Rejections II-VII.
DECISION
Rejections I-VII are reversed.
REVERSED
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