Ex Parte SPIES et al

Patent Trials and Appeals Board

May 17, 2016

12509948 - (D) (P.T.A.B. May. 17, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/509,948 0712712009
27388 7590 05/17/2016
Hildebrand, Christa
Norris McLaughlin & Marcus PA
875 Third Avenue, 8th Floor
New York, NY 10022
FIRST NAMED INVENTOR
Manfred SPIES
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.
101769-519 1039
EXAMINER
BRADFORD, ELIZABETH
ART UNIT PAPER NUMBER
1746
MAILDATE DELIVERY MODE
05/1712016 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MANFRED SPIES, PETER WEHRMANN,
BASIR BAQI, and ULRIKE SUTTER 1
Appeal2014-008283
Application 12/509,948
Technology Center 1700
Before MARK NAGUMO, CHRISTOPHER M. KAISER, and
LILAN REN, Administrative Patent Judges.
REN, Administrative Patent Judge.
DECISION ON APPEAL
Appellants timely appeal under 35 U.S.C. § 134(a) from a Rejection2
of claims 1--4 and 7-18.3 We have jurisdiction. 35 U.S.C. § 6(b). We
affirm.
1 The Real Party in Interest is identified as Tesa SE (Appeal Brief, filed 27
January 2014 ("Br."), 2.)
2 Office Action mailed 25 June 2013 ("Non-Final Rejection"; cited as
"NFR."). The Examiner has previously issued a non-final rejection dated 03
August 2011 and a final rejection dated 15 February 2012. (Br. 2.)
3 Claims 5 and 6 have been cancelled. (Br. 9.)
Appeal2014-008283
Application 12/509,948
OPINION
A. Introduction4
The subject matter on appeal relates to the production of adhesive
tapes, particularly "pressure-sensitive adhesive tapes with a high adhesive
coatweight." (Spec. 2, 1. 11; 3, 1. 19.) When producing the tape of interest,
adhesive coatings may be applied initially in the form of a solution to a
carrier material. (Id. at 1, 11. 10-11; 3, 11. 16-24.) Upon subsequently
"displac[ing] the water from the coating," solids are left on the resultant
product. (Id. at 3, 11. 16-24.) The '948 Specification purports to improve
"the drying of water-based adhesive and non-adhesive coatings" for the
production of pressure-sensitive adhesive tapes. (Id. 4, 11. 6-7.)
Representative Claim 1 reads:
A method of coating a web-form carrier material with an
aqueously dispersed composition comprising the steps of
applying the composition to the carrier material with an
applicator with a coatweight of greater than 15 0 g/m2 (dry),
wherein the dispersed composition has a viscosity between
0.001 Pa*s and 100 Pa*s, measured at room temperature and a
shear rate of 100 s-1, and the solids content of the dispersed
composition is in a range between 25% and 75% by weight, and
subsequently drying the coated carrier material in a suspension
drying unit.
(Claims App., Br. 9 (emphases added).)5
The Examiner maintains the following ground of rejection: 6
4 Application 12/509,948, Method of Coating Web-Form Carrier Materials
with High Coatweight, filed 27 July 2009, claims foreign priority to
102008036926.8 (Germany), filed 08 August 2008. We refer to the
'"948 Specification," which we cite as "Spec."
5 Claims 2--4 and 7-18 stand or fall with claim 1. (Br. 3.)
2
Appeal2014-008283
Application 12/509,948
A. Claims 1--4, 7, 9, 11, 12, and 18 stand rejected
under 35 U.S.C. § 103(a) in view of Satas,7 Su,8 and
Takahashi.9
A 1. Claim 8 (dependent from claim 1) stands rejected
under 35 U.S.C. 103(a) as being unpatentable over Satas,
Su, Takahashi, and Yuyama. 10
A2. Claims 10 and 15 (dependent from claim 1) stand
under 35 U.S.C. 103(a) as being unpatentable over Satas,
Su, Takahashi, and Skoultchi. 11
A3. Claims 13 and 14 (dependent from claim 1) stand
rejected under 35 U.S.C. 103(a) as being unpatentable
over Satas, Su, Takahashi, and Yoshikawa. 12
6 Examiner's .,A .. ns\ver mailed 20 l\1ay 2014 ("Ans.").
7 Donatas Satas, Handbook of Pressure Sensitive Adhesive Technology,
896-985, 3d ed. (1999) ("Satas").
8 Shiaonung Su et al., Repulpable Pressure-Sensitive Adhesive
Compositions, U.S. Patent 6,136,903, issued Oct. 24, 2000 ("Su").
9 Akiko Takahashi & Marni Ikeya, Aqueous Pressure-Sensitive Adhesive
Composition and Use Thereof, U.S. Patent Publication 2008/0033096 Al,
published Feb. 7, 2008 (filed 03 August 2007) ("Takahashi"). We note that
both Appellants and the Examiner refer to this reference as "Takashi."
10 Hajime Yuyama et al., Pressure-Sensitive Adhesive Emulsion
Composition and A Kraft Tape Using It, U.S. Patent 5,059,479, issued Oct.
22, 1991 ("Yuyama").
11 Martin Skoultchi, Radiation-Cured Pressure Sensitive Adhesives, U.S.
Patent 5,391,602, issued Feb. 21, 1995 ("Skoultchi").
12 Takao Yoshikawa & Takaaki Moriyama, Pressure-Sensitive Adhesive
Having Excellent Heat-Resistance, Adhesive Sheet Using It, and Method for
Producing Those, U.S. Patent 5,462,977, issued Oct. 31, 1995
("Yoshikawa").
3
Appeal2014-008283
Application 12/509,948
A3. Claims 16 and 1 7 (dependent from claim 1) stand
rejected under 35 U.S.C. 103(a) as being unpatentable
over Satas, Su, Takahashi, and Skoultchi.
B. Discussion
Findings of fact throughout this Opinion are supported by a
preponderance of the evidence of record.
The Examiner finds that Satas discloses a process for using a "dryer"
to dry "pressure sensitive adhesives" with "heavy coatings [of] above 150
µm thick[.]" (NFR. 3--4 (citing Satas at 937, 938).) The Examiner finds that
the heavy coatings of above 150 µm thick taught in Satas correspond to "a
coatweight of greater than 150 g/m2" recited in claim 1. (NFR. 3--4.) The
Examiner finds that Takahashi discloses producing a pressure sensitive
adhesive sheet using an aqueous pressure sensitive adhesive layer of "about
2 µm to 150 µm." (NFR. 4 (citing Takahashi iJ 74).) The Examiner also
finds that Su discloses a "nressure-sensitive adhesive" havirn.! annroximatelv
_._ '-' _._ _._ el
50% to 52% of total solids and a viscosity of 3.1 Pa*s. (NFR. 4 (citing Su at
10, 11. 10-11; 16, 11. 50, 53).) Based on these teachings, the Examiner finds
that a skilled artisan would have found the claimed method to yield
predictable results. (NFR. 4.)
Appellants do not dispute the Examiner's finding that "suspension
drying units are known in the prior art." (Br. 4.) Appellants do not dispute
the Examiner's finding that Satas teaches that "[t]he drying rate of really
heavy coatings, above 150 µm thick, is very slow and techniques which
allow the deposition of 100% solid coating are preferred for such products."
(Satas at 937 (cited in NFR. 3); see also Br. 5-6.) The Examiner finds that
Satas also teaches that "[t]he early festoon dryers were slow, the heat
4
Appeal2014-008283
Application 12/509,948
transfer rate was slow and the drying was quite suitable for heavy coatings
requiring slow and gentle drying." (NFR. 3 and Ans. 5 (both citing Satas at
968 under section heading "Dryers"); see Br. 5-6.) Appellants, however,
argue that the Examiner erred in failing to recognize that "Satas does not
describe festoon dryers ... used in the adhesive industry." (Br. 4.)
Appellants argue that the Examiner erred in failing to understand the "heavy
coatings" described in Satas "in the context ... of the textile and paper
industry" which is not the adhesive industry to which the claims at issue are
directed. (Id.)
To the extent that the '948 Specification seeks to "remedy ... the
deficiencies" related to "the number and length of the drying tunnels [being]
inadequate to displace the water from the coating and to realize a filming
operation which is homogeneous over the coat thickness" (Spec. 3, 11. 23-24,
27-28), the plain language of claim 1 is not limited to adhesive coatings.
We decline to import into the claim limitations that are not recited. Phillips
v. AWH Corp., 415 F.3d 1303, 1316 (Fed. Cir. 2005). We accordingly are
not persuaded that the Examiner committed harmful error in this aspect of
the obviousness analysis.
Appellants do not dispute the Examiner's finding that the limitation of
"a coatweight of greater than 150 g/m2" "corresponds to a thickness[] of
greater than 150 µm" which is disclosed in Satas. (NFR. 3--4; see Br. 4.)
Appellants also do not dispute that "Su describe[ s] a 'liquid' adhesive" and
that "[ s ]uch aqueously dispersed composition[ s] are generally known in the
prior art." (Br. 6.) Appellants also do not dispute the Examiner's finding
that Takahashi teaches producing a pressure sensitive adhesive sheet using
an aqueous pressure sensitive adhesive layer of "about 2 µm to 150 µm."
5
Appeal2014-008283
Application 12/509,948
(NFR. 4; see Br. 4.) Appellants argue, however, that neither Satas nor Su
"provide[ s] a more or less liquid composition with a heavy coating of more
than 150 [g/m2]." (Id. at 4.) Appellants also argue that Su does not describe
the viscosity of the solution as measured at room temperature as claimed.
From the outset, "[ n ]on-obviousness cannot be established by
attacking references individually where the rejection is based upon the
teachings of a combination of references. . . . [The reference] must be read,
not in isolation, but for what it fairly teaches in combination with the prior
art as a whole." In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986).
Here, Appellants do not dispute the Examiner's finding that a skilled
artisan would have found the claimed method to yield predictable results
based on the combined teachings of Satas, Su, and Takahashi. (Ans. 10; see
Br. 4-5.) Appellants do not argue that the Examiner committed harmful
error in the articulated reasoning, namely, that a skilled artisan would have
had the knowledge to dry an aqueous pressure sensitive composition
(including their properties such as viscosities and solids content) disclosed in
Su and Takahashi using the drying techniques in Satas. (See Ans. 4; see also
Br. 4-5.) Appellants therefore have not pointed us to harmful errors in the
Examiner's findings based on the combined teachings of the references. See
KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (holding that "there
must be some articulated reasoning with some rational underpinning to
support the legal conclusion of obviousness").
With regard to the arguments related to the properties associated with
the required viscosity range measured at room temperature, "[ o ]bviousness
does not require absolute predictability of success." In re 0 'Farrell, 853
F.2d 894, 903-04 (Fed. Cir. 1988) (internal citations omitted). "Indeed, for
6
Appeal2014-008283
Application 12/509,948
many inventions that seem quite obvious, there is no absolute predictability
of success until the invention is reduced to practice. There is always at least
a possibility of unexpected results, that would then provide an objective
basis for showing that the invention, although apparently obvious, was in
law nonobvious. For obviousness under § 103, all that is required is a
reasonable expectation of success." Id. at 904 (internal citations omitted).
Appellants in this case have not argued that it is beyond a skilled artisan's
knowledge or ability to arrive at the claimed process based on the
undisputed teachings of the references. We are therefore not persuaded that
harmful error has been shown here. See KSR, 550 U.S. at 418 ("[T]he
analysis need not seek out precise teachings directed to the specific subject
matter of the challenged claim, for a court can take account of the inferences
and creative steps that a person of ordinary skill in the art would employ.").
Appellants additionally argue that Su should not have been combined
with Satas "to obviate claims 5-7." (Br. 5.) Appellants argue, without
evidence, that because Su describes a process using an applicator with a
coatweight of 20 +/-2 g/m2 to produce "'good results,"' then "'good results'
can not be expected at 150 g/m2" proving that "Su teaches away from
coatings having a higher coat weight." (Id.; Reply 2.)13
We find that claims 5 and 6 are indicated as having been cancelled in
the Appeal Brief. (Br. 2, 9.) Claims 5 and 6 are therefore not subject to
review. Claim 7 (dependent from claim 1) recites a narrower viscosity range
(between 0.1 Pa*s and 100 Pa*s) and a narrower solids content range
(between 50% and 70% by weight). Appellants provide no evidence
showing that Su "criticize[ s ], discredit[ s ], or otherwise discourage[ s] the
13 Reply Brief filed 21 July 2014 ("Reply").
7
Appeal2014-008283
Application 12/509,948
solution claimed" in claim 7 (or claim 1 ), and we are not persuaded that the
Examiner committed harmful error here. See In re Fulton, 391F.3d1195,
1201 (Fed. Cir. 2004); Johnston v. IVAC Corp., 885 F.2d 1574, 1581 (Fed.
Cir. 1989) ("Attorneys' argument is no substitute for evidence.").
To the extent that Appellants argue that claim 1 or claim 7 exhibits
unexpected results, Appellants have also not shown such results as supported
by evidence. "It is well settled that unexpected results must be established
by factual evidence. 'Mere argument or conclusory statements in the
specification does not suffice."' In re Geisler, 116 F.3d 1465, 1470 (Fed.
Cir. 1997) (quoting In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984)).
Appellants in this case have provided attorneys' arguments only and have
not shown any factual evidence in support of unexpected results based on
coatweight, viscosity, solids content, or other limitations of claim 1 or claim
7 (or other claims at issue).
Moreover, the '948 Specification seeks to "remedy ... the
deficiencies" related to the fact that "the number and length of the drying
tunnels are inadequate to displace the water from the coating and to realize a
filming operation which is homogeneous over the coat thickness." (Spec. 3,
11. 23-24, 27-28.) Appellants have not pointed to, and we have not found,
evidence in the '948 Specification supporting unexpected results related to
the claimed "coatweight of greater than 150 g/m2 (dry)" or other limitations
recited in claim 1 or claim 7 (or other claims at issue). No harmful error
therefore has been shown in this aspect of the obviousness analysis.
8
Appeal2014-008283
Application 12/509,948
In summary, given the detailed and specific findings of fact made by
the Examiner, which Appellants have not criticized for their accuracy, 14 we
are not persuaded of harmful error in the Examiner's well-stated findings of
fact and conclusions of law.
C. Order
It is ORDERED that the rejection of claims 1-4 and 7-18 is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § l.136(a).
AFFIRMED
14 Appellants do not dispute various factual findings of the Examiner. (See,
e.g., Br. 4-5; Reply 1-2.) For example, Appellants do not dispute the
finding that Satas provides an extensive discussion of drying techniques and
equipment for drying adhesives of "heavy coatings" including those with a
thickness of "greater than 150 µm" which corresponds to the thickness of
"greater than 150 g/m2" as claimed. (See Ans. 5-6.) Appellants do not
dispute the finding that Takahashi describes drying a "pressure-sensitive
adhesive" with a thickness of up to 150 µm. (See Ans. 10; NFR. 4.)
9