Ex Parte Satrijo et al

Patent Trials and Appeals Board

Mar 27, 2019

13876615 - (D) (P.T.A.B. Mar. 27, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/876,615 03/28/2013
32692 7590 03/29/2019
3M INNOVATIVE PROPERTIES COMPANY
PO BOX 33427
ST. PAUL, MN 55133-3427
FIRST NAMED INVENTOR
Andrew Satrijo
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.
66969US004 7465
EXAMINER
REDDY, KARUNA P
ART UNIT PAPER NUMBER
1764
NOTIFICATION DATE DELIVERY MODE
03/29/2019 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):
LegalUSDocketing@mmm.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ANDREW SATRIJO, MEGAN P. LEHMANN,
NATHAN B. FONG, CRAIGE. HAMER,
JOHN R. JACOBSEN, and MARK F. ELLIS,
Appeal2018-006633
Application 13/876,615 1
Technology Center 1700
Before JEFFREY T. SMITH, MICHAEL G. McMANUS,
and MERRELL C. CASHION, JR., Administrative Patent Judges.
SMITH, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134(a) from the Examiner's Non-
Final2 rejection of claims 1-3 and 8-10, which constitute all the claims
pending in this application. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
1 According to Appellants, the real party in interest is 3M Company. (See
App. Br. 2).
2 September 5, 2017.
Appeal2018-006633
Application 13/876,615
The appealed invention relates to hot melt processable pressure
sensitive adhesives that contain relatively high levels of tackifying agents.
Independent claim 1 is representative of the appealed subject matter and
reproduced below (formatting added):
1. A method of preparing an adhesive comprising:
providing a hot melt mixing apparatus;
providing a hot melt processable elastomeric
(meth)acrylate random co-polymer contained within a
thermoplastic pouch, wherein the (meth)acrylate random co-
polymer comprises at least 10 wt% of the adhesive;
providing greater than 60 parts by weight per 100 parts
by weight of hot melt processable elastomeric (meth)acrylate
random co-polymer of at least one tackifying resin;
mixing the hot melt processable elastomeric
(meth)acrylate random co-polymer and the tackifying resin in
the hot melt mixing apparatus to form a hot melt blend; and
removing the hot melt blend from the hot melt mixing
apparatus to form a hot melt processable pressure sensitive
adhesive,
wherein the hot melt processable elastomeric
(meth)acrylate random co-polymer does not include a chain
transfer agent; and
wherein the hot melt processable elastomeric
(meth)acrylate random co-polymer comprises a copolymer of
(i) 90-95 parts by weight of an acrylate monomer selected from
iso-octyl acrylate, 2-ethyl-hexyl acrylate, or butyl acrylate, (ii)
5-10 parts by weight of acrylic acid or N,N-
dimethylacrylamide, (iii) a difunctional (meth)acrylate
branching agent, and (iv) a photosensitive crosslinking agent.
Claims Appendix to App. Br.
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Appeal2018-006633
Application 13/876,615
Appellants (see generally App. Br.) request review of the following
rejections:
I. Claims 1-3 and 8-10 rejected under 35 U.S.C. §I03(a) as
unpatentable over the combination of Eckstein (US
2005/0217789 Al; Oct. 6, 2005) in view of Zhou et al. (US
2005/0054780 Al; Mar. 10, 2005) ("Zhou").
II. Claims 1-3 and 8-10 rejected under 35 U.S.C. §I03(a) as
unpatentable over the combination of Eckstein in view of
Wada (US 2005/0209380 Al; Sept. 22, 2005).
The complete statement of the rejections on appeal appear in the Non-
Final Office Action. (Non-Final Act. 2-7).
OPINION
After consideration of the respective positions advanced by the
Examiner and Appellants in light of this appeal record, we affirm the
Examiner's rejections for the reasons set forth in the Answer to the Appeal
Brief and Non-Final Office Action appealed from, which we adopt as our
own. We highlight and address specific findings and arguments for
emphasis as follows.
Re} ection I3
The Examiner finds Eckstein discloses a method of preparing an
adhesive that comprises mixing the components required by the claimed
3 Appellants' arguments are principally directed to independent claim 1.
(App. Br. 5-7). Appellants do not present separate arguments that address
sufficiently the dependent claims. We select independent claim 1 as
representative of the rejected claims and limit our discussion thereto.
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Appeal2018-006633
Application 13/876,615
invention. (Non-Final Act. 2-5). The Examiner finds Eckstein discloses a
hot melt acrylic pressure sensitive adhesive comprising a pouch filled with a
PSA composition having 2-ethyl-hexyl acrylate, or butyl acrylate and 5 parts
by weight of acrylic acid. (Non-Final Act. 2). The Examiner finds Eckstein
discloses the use of crosslinking agents including multifunctional acrylates
such as 1,6-hexanedioldiacrylate and p-acryloxybenzophenone. (Non-Final
Act. 2; Eckstein ,r 45). The Examiner finds Zhou teaches adhesives
comprising mixtures of tackifiers having different properties, such as glass
transition temperatures. (Non-Final Act. 4). The Examiner finds Zhou
teaches high softening point tackifiers with high viscosity that provide
enhanced cohesive strength and low softening point additives that provide
instantaneous surface tackiness and pressure sensitive characteristics as well
as reduced melt viscosity. (Non-Final Act. 4--5). The Examiner concludes it
would have been obvious to use a combination of two tackifiers having
different properties in overlapping amounts greater than 60 parts by weight
per 100 parts by weight of elastomeric random copolymer, such as described
by Eckstein, to obtain the advantages described by Zhou. (Non-Final Act.
5).
Appellants argue there is no motivation to combine the teachings of
Eckstein (hot-melt pressure sensitive adhesive) and Zhou (hot-melt
adhesive) because they are directed to fundamentally different types of
adhesives used in fundamentally different ways. (App. Br. 6). Appellants
further argue Eckstein teaches the use of a difunctional (meth)acrylate
branching agent and a photosensitive crosslinking agent in the alternative
but not together. (App. Br. 6 citing Eckstein ,r 45)
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Appeal2018-006633
Application 13/876,615
Appellants' arguments lack persuasive merit. A person of ordinary
skill in the art would have reasonably expected that the teachings of Eckstein
and Zhou are relevant to one another due to the similarities of the polymers
employed in the described adhesives. Appellants have not directed us to
evidence that explains why the teachings of Eckstein and Zhou are
incompatible. Contrary to Appellants' arguments, a person of ordinary skill
in the art would have reasonably expected that the various cross-linking
agents described in Eckstein could have been utilized in combination. See In
re Kerkhoven, 626 F.2d 846, 850 (CCPA 1980). Appellants have not
directed us to any portion of Eckstein that discloses combinations of the
cross-linking agents that could not have been utilized.
Secondary Considerations4
When evidence of secondary considerations is submitted, we begin
anew and evaluate the rebuttal evidence along with the evidence upon which
the conclusion of prima facie obviousness was based. In re Rinehart, 531
F.2d 1048, 1052 (CCPA 1976).
Citing to Specification Example 3, Appellants argue they have
presented evidence of nonobviousness which demonstrates that a pressure
sensitive adhesive made by the method of claim 1 demonstrates high shear
strength. (App. Br. 7). According to Appellants, Specification Example 3
demonstrates that a pressure sensitive adhesive containing a high amount of
tackifier (e.g., 70 parts per 100 of the (meth)acrylate copolymer) can be
made by hot melt methods and yet still demonstrate high shear strength,
using the method of claim 1. (App. Br. 7). However, this evidence is
4 Appellants rely on the same evidence of unexpected results to overcome
both Rejections I and II. (App. Br. 7 and 9).
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Appeal2018-006633
Application 13/876,615
inconclusive because Appellants have not discussed or explained how the
differences in tackifying resins and cross-linking exhibited by the single
composition of Example 3 supports the nonobviousness of the claimed
invention. That is, Appellants have not demonstrated the data presented in
the Specification exhibits unexpected results that are reasonably
commensurate with the scope of protection sought by the claims on appeal.
In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997); In re Klosak, 455 F.2d
1077, 1080 (CCP A 1972) ("the burden of showing unexpected results rests
on he who asserts them"); see also In re Harris, 409 F.3d 1339, 1344 (Fed.
Cir. 2005) ("Even assuming that the results were unexpected, Harris needed
to show results covering the scope of the claimed range. Alternatively
Harris needed to narrow the claims."); In re Greenfield, 571 F.2d 1185, 1189
(CCP A 1978) ("Establishing that one ( or a small number of) species gives
unexpected results is inadequate proof, for 'it is the view of this court that
objective evidence of non-obviousness must be commensurate in scope with
the claims which the evidence is offered to support.'") ( quoting In re Tiffin,
448 F.2d 791, 792 (CCPA 1971)). We note that Appellants failed to address
the Examiner's criticism of the relied upon evidence in the responsive brief.
(Ans. 9-10; Reply Br. 4 and 6).
Rejection II5
As discussed above, the Examiner finds Eckstein discloses a method
of preparing an adhesive that comprises mixing the components required by
the claimed invention. The Examiner relied on Wada for the same reasons
5 Appellants' arguments for Rejection II are substantially the same as the
arguments presented in the previously addressed Rejection I. (App. Br. 8-
10). In addressing Rejection II, Appellants also rely on the same evidence of
unexpected results presented for Rejection I. (App. Br. 9).
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Application 13/876,615
Zhou was relied upon. Specifically, the Examiner finds Wada suggests that
tackifiers may be included in amounts greater than 60 parts by weight and
provides the motivation to use its tackifier in a pressure sensitive adhesives
containing acrylic polymers. (Ans. 10).
Appellants argue there is no motivation to combine the teachings of
Eckstein and Wada because they are directed to fundamentally different
types of adhesives used in fundamentally different methods of making
adhesives, and because Eckstein teaches away from use of solvent-borne
methods such as used in Wada. (App. Br. 8).
Appellants' arguments lacks persuasive merit. The Examiner cited
Wada for teaching tackifiers may be included in amounts greater than 60
parts by weight in a pressure sensitive adhesives containing acrylic
polymers. Appellants have not addressed the reasons Wada was cited by the
Examiner. A person of ordinary skill in the art would have reasonably
expected that the teachings of Eckstein and Wada are relevant to one another
due to the similarities of the polymers employed in the described adhesives.
Appellants have not directed us to evidence that explains why the teachings
of Wada teaching regarding tackifiers is incompatible with Eckstein.
With respect to the evidence of non-obviousness (Specification
Example 3), we maintain our previously stated determination that the
evidence is insufficient to overcome the Examiner's prima facie case of
obviousness for the reasons given above.
For the foregoing reasons and those presented by the Examiner, we
sustain the Examiner's obviousness determinations.
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Appeal2018-006633
Application 13/876,615
DECISION
The rejections under 35 U.S.C. § 103(a) of claims 1-3 and 8-10 are
affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED
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