Ex Parte Tonniessen et al

Patent Trial and Appeal Board

Aug 30, 2016

12643549 (P.T.A.B. Aug. 30, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/643,549 12/21/2009 Roiger Tonniessen
423 7590 09/01/2016
HENKEL CORPORATION
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.
H 7662/PCT/US 4689
EXAMINER
One Henkel Way CHANG, VICTOR s
ROCKY HILL, CT 06067
ART UNIT PAPER NUMBER
1788
NOTIFICATION DATE DELIVERY MODE
09/01/2016 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):
rhpatentmail@henkel.com
trish.russo@henkel.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte HOLGER TONNIESSEN, ANNIE SEILER,
RAINER RAUBERGER, and RALF GRAUEL 1
Appeal2015-002901
Application 12/643,549
Technology Center 1700
Before MICHAEL P. COLAIANNI, WESLEY B. DERRICK, and
CHRISTOPHER C. KENNEDY, Administrative Patent Judges.
DERRICK, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134 from the Examiner's
rejections under 35 U.S.C. § 103 of claims 12, 14, 16-18, and 30-32 over
Otruba2 in view of Amberger3 and Heemann4 and claims 15, 19, 20, 21, 23,
27, and 29 in further view of Palasz. 5 We have jurisdiction pursuant to
35 U.S.C. § 6. We AFFIRM.
1 Appellants identify the real party in interest as Henkel AG & Co. KGaA.
Appeal Br. 1.
2 Otruba, US 5,922,422, issued July 13, 1999.
3 Amberger et al., US 6,680,097 Bl, issued January 20, 2004.
4 Heemann et al., US 2004/0159394 Al, published August 19, 2004.
5 Palasz et al., US 2006/0110596 Al, published May 25, 2006.
Appeal2015-002901
Application 12/643,549
CLAIMED SUBJECT MATTER
Appellants' claimed invention relates to adhesive labels. Spec.
Abstract. Independent claim 1 is directed to adhesive labels comprising a
pressure-sensitive hot melt adhesive crosslinkable by actinic radiation.
Independent claim 19 is directed to a water soluble pressure-sensitive
adhesive including a crosslinkable base polymer comprising an acrylic
polymer with a chemically bound photoinitiator.
Independent claim 12 is illustrative:
12. A label comprising:
a film consisting of cellophane, paper, perforated
oriented polypropylene or combinations thereof and coated with
a pressure-sensitive hot melt adhesive crosslinkable by actinic
radiation, the adhesive comprising
70 to 95 wt% of at least one radiation-crosslinkable base
polymer,
5 to 30 wt% of at least one resin selected from
hydroabietyl alcohol, hydroabietyl esters, esters of hydroabietyl
alcohol with aromatic carboxylic acids, esters of hydroabietyl
alcohol with terephthalic acid, esters of hydroabietyl alcohol
with phthalic acid, modified natural resins, resin acids from
gum resin, resin acids from tall oil resin, resin acids from wood
resin, fully saponified gum resin, alkyl esters of optionally
partially hydrogenated rosin, methyl esters of optionally
partially hydrogenated rosin, diethylene glycol esters of
optionally partially hydrogenated rosin, glycerol esters of
optionally partially hydrogenated rosin, pentaerythritol esters of
optionally partially hydrogenated rosin, acrylic acid
copolymers, styrene/acrylic acid copolymers, resins based on
functional hydrocarbon resins and derivatives thereof, and
0 to 30 wt% of auxiliary substances and additives, the
total of the components amounting to 100 wt%, which adhesive
is soluble or dispersible in aqueous solution under heat, wherein
the label is i) water-permeable with a water absorption (Cobb
value) of greater than 0.3 g/m2 per 20 sec, and/or ii) has
2
Appeal2015-002901
Application 12/643,549
perforations or cut-outs over less than 10% of the adhesively
bonded areas.
Appeal Br. (Claims Appendix) 18.
DISCUSSION6
Appellants proffer arguments as to the rejection of claim 12 over
Otruba in view of Amberger and Heemann and rely on these arguments as to
the rejection of all other claims. Br. 15-16. We, therefore, focus our
discussion on claim 12 in this opinion.7 37 C.F.R. § 41.37(c)(l)(iv).
"[T]he Examiner bears the initial burden, on review of the prior art or
on any other ground, of presenting a prim a facie case of unpatentability." In
re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992).
To prevail in an appeal to this Board, Appellant must adequately
explain or identify reversible error in the Examiner's rejection. See
37 C.F.R. § 41.37(c)(l)(iv) (2012); see also In re Jung, 637 F.3d 1356,
1365-66 (Fed. Cir. 2011) (explaining that even ifthe Examiner had failed to
make a prima facie case, it has long been the Board's practice to require an
Appellant to identify the alleged error in the examiner's rejection).
Having considered the record, we are unpersuaded by Appellants'
arguments that the Examiner erred reversibly in concluding that the claims
are unpatentable for obviousness. We add the following for emphasis.
6 We refer to the Non-Final Office Action mailed May 30, 2014, the Appeal
Brief filed October 15, 2014, and the Examiner's Answer mailed November
20, 2014.
7 We note that because claim 19 is directed to an adhesive, rather than a
label comprising a film and an adhesive, only some of Appellants'
arguments raised as to claim 12 are even applicable to claim 19 rejected over
Otruba in view of Amberger, Heemann, and Palasz.
3
Appeal2015-002901
Application 12/643,549
The Examiner relies on Otruba for its disclosure of a removable label
using varied adhesives having perforations facilitating water or solvent
access to the label's adhesive so that it can be more readily dissolved when
removing the label. Ans. 2 (citing Otruba Table 1, col. 1, 11. 62-67, col. 3,
1. 65 to col. 4, 1. 2, col. 4, 11. 9-18, 20--48). The Examiner relies on the
disclosed materials in Table 1 as representative of adhesives that can be
readily loosened and removed from a bottle, rather than limiting suitable
adhesives or combinations. Ans. 4, 9.
The Examiner relies on Amberger for its disclosure that useful
adhesives for removable labels for reusable bottles may be acrylate hot-melt
adhesives and/or acrylate UV or electron beam curing adhesives. Ans. 3
(citing Amberger Abstract, col. 3, 11. 53-56, col. 7, 11. 39-45). The
Examiner further relies on Amberger' s disclosure for teachings relevant to
what is known regarding formulation of water soluble adhesives to arrive at
suitable levels of water solubility. Ans. 5-6.
The Examiner relies on Heemann for its disclosure that a resin can be
included in amounts of 10 to 70% by weight in a hot melt adhesive
containing various poly-acrylates in amounts up to 70% by weight. Ans. 4
(citing Heemann ii 64). As highlighted by the Examiner, Heemann relates to
pressure-sensitive, water soluble or water dispersible hot melt adhesives for
labels removable by alkaline washing. Ans. 4 (citing Heemann Abstract,
ii 121). Resin included in Heemann' s adhesive provides additional tackiness
and compatibility of components, and can be selected from many different
4
Appeal2015-002901
Application 12/643,549
resins, including acrylic acid copolymers and other resins set forth in claim
12.8 Ans. 4-5 (citing Heemann iii! 6, 86-93).
Grounded on the teachings of the cited references, including those
highlighted above, the Examiner concludes that one of ordinary skill in the
art at the time of the invention would have found it obvious to arrive at the
claimed adhesive label through no more than selection of known materials
based on their suitability for the intended use and routine optimization to
obtain efficient label removability. Ans. 3-6.
With respect to the recitation of "Oto 30 wt% of auxiliary substances
and additives" and to "perforations or cut-outs over less than 10% of the
adhesively bonded areas" (claim 12), the Examiner maintains inclusion of
either the substances/additives and perforations/cut-outs are optional. Non-
Final Act. 5; Ans. 6.
While not a determination required to affirm the Examiner's rejection,
we further determine that the claim-setting forth that "the label is i) water-
permeable with a water absorption ... of greater than 0.3g/m2 per 20 sec,
and/or ii) has perforations or cut-outs over ... adhesively bonded areas"
(claim 12, emphasis added)-does not require the label to have the recited
rate of water absorption because this limitation is set forth in the alternative
to that relating to perforations/cut-outs.
Appellants contend the Examiner has failed to properly establish a
prima facie case because the Examiner relied on impermissible hindsight in
8 In the event of further prosecution, Appellants and the Examiner should
consider whether the recitation of "at least one resin selected from ... [a
group including] resins based on functional hydrocarbon resins and
derivatives thereof' (claim 12) supports any meaningful boundary to the
scope of the claim or renders the claim indefinite.
5
Appeal2015-002901
Application 12/643,549
combining Otruba and Amberger (Appeal Br. 7-12) and in combining
Heemann with Otruba and Amberger (Appeal Br. 13-14), and the Examiner
has failed to establish that water absorption value is a result effective
variable (Appeal Br. 14-15).
As to combining Otruba and Amberger, Appellants' arguments are
grounded on the position that the teachings of Otruba and Amberger are
limited to specific adhesives, labels, and solvents and their use as
particularly set forth. Appellants focus on Otruba's disclosure in Table 1 of
exemplary combinations (Appeal Br. 8-11, 13) and Amberger' s disclosure
of various "alternative classes of adhesives" (Appeal Br. 9-10). Appellants
also contend that Amberger does not identify an adhesive that is both hot
melt and radiation curable. Appeal Br. 10. Appellants argue that Otruba
and Amberger teach different ways of making a removable label and that the
combination of these is, therefore, not suggested. Appeal Br. 11 (citing
Kinetic Concepts, Inc. v. Smith & Nephew, Inc., 688 F.3d 1342, 1369 (Fed.
Cir. 2012)). Appellants also argue the labels of Otruba and Amberger are
functionally distinct. Appeal Br. 11-12.
Appellants further contend that the Examiner has failed to consider
Otruba and Amberger in their entirety, but has instead chosen parts to
support a rejection and ignored the rest and, thus, erred in relying on
impermissible hindsight to arrive at the claimed invention.
Appellants' arguments are not persuasive of reversible error.
Regarding Otruba and Amberger, the teachings of each are not limited
to the specific exemplary combinations, including those in Otruba' s Table 1.
Ans. 9-10. Nor does any cited reference need specifically identify an
adhesive that is both hot melt and radiation curable where Appellants fail to
6
Appeal2015-002901
Application 12/643,549
point to any evidence to establish that one skilled in the art would not have
reasonably inferred the existence of such where Amberger teaches acrylate
hot-melt adhesives and acrylate UV or electron beam curing adhesives. See,
e.g., In re Preda, 401F.2d825, 826 (CCPA 1968) ("[I]t is proper to take
into account not only specific teachings of the reference but also the
inferences which one skilled in the art would reasonably be expected to draw
therefrom."); see also In re Lamberti, 545 F.2d 747, 750 (CCPA 1976) (A
prior art reference is not limited to its preferred embodiments, but is
available for all that it discloses and suggests to one of ordinary skill in the
art.).
Further, we discern no reversible error where we are directed to no
particular level of cross-linking required of the "at least one radiation-
crosslinkable base polymer" (claim 12)-and the Specification states, inter
alia, that "only partial crosslinking of the polymer is involved" (Spec.
,-i 41 )-and where Appellants do not contend that acrylate base polymer
included in a hot-melt acrylate adhesive would not also cross-link (see
generally Appeal Br.).
Still further, we discern no reversible error where hot-melt acrylate
and cross-link curing acrylate resins adhesive are both taught for the same
purpose and use. Ans. 10-11; see, e.g., In re Kerkhoven, 626 F .2d 846, 850
(CCP A 1980) ("It is prima facie obvious to combine two compositions each
of which is taught by the prior art to be useful for the same purpose in order
to form a third composition which is to be used for the very same purpose .
. . . [T]he idea of combining them flows logically from their having been
individually taught in the prior art.").
7
Appeal2015-002901
Application 12/643,549
As to Appellants' arguments that the Examiner erred in combining the
teachings of Otruba and Amberger because they teach different ways of
making a removable label and the labels are functionally different, on this
record, we find them unpersuasive of reversible error. In arguing this
alleged distinction, Appellants draw a comparison between the facts of the
present case and those in Kinetics Concepts, 688 F.3d 1342. App. Br. 11. In
contrast to the facts in Kinetic Concepts, in which each reference was
complete in teaching a wound drainage method, Otruba' s recitation of
specific adhesives is not complete, but exemplary, such that a skilled worker
would have had good reason to combine Otruba's teachings with other
teachings about useful adhesives, including those of Amberger. Regarding
Appellants' arguments as to functional differences in the labels of Otruba
and Amberger, we are unpersuaded of error in the Examiner's combination
on this record, particularly where each adhesive's function is to readily
allow label removal. See, e.g., Ans. 11-12.
As to Appellants' argument that the Examiner failed to consider
Otruba and Amberger in their entirety, we discern no reversible error on this
record where we find nothing cited by Appellants that reasonably leads the
skilled artisan away from the invention. Cf DyStar Textilfarben GmbH &
Co. Deutschland KG v. C.H. Patrick Co., 464 F.3d 1356, 1364 (Fed. Cir.
2006) ("We will not read into a reference a teaching away from a process
where no such language exists.").
As to combining Heemann with Otruba and Amberger, Appellants
further contend that the Examiner has failed to consider Heemann in its
entirety, that the tackifier resin relied on by the Examiner is used in
Heemann with different base polymers, and-reiterating a position regarding
8
Appeal2015-002901
Application 12/643,549
the combination of Otruba and Amberger-that there is no reason to
combine with Otruba and Amberger because both function similarly and are
independently effective in their operation. Appeal Br. 14.
On this record, we discern no persuasive merit in Appellants'
contentions as they are proffered without any cogent argument sufficient to
address the Examiner's detailed findings and conclusions (e.g., Ans. 4-5,
12-13), failing to even assert any import as to the difference in base
polymers used (Appeal Br. 14). Cf In re Lovin, 652 F.3d 1349, 1357 (Fed.
Cir. 2011) ("[W]e hold that the Board reasonably interpreted Rule 41.37 to
require more substantive arguments in an appeal brief than a mere recitation
of the claim elements and a naked assertion that the corresponding elements
were not found in the prior art. Because Lovin did not provide such
arguments, the Board did not err in refusing to separately address claims 2-
15, 17-24, and 31-34.").
It follows that we do not find Appellants' contentions that the
Examiner relied on impermissible hindsight (Appeal Br. 6-13) persuasive of
reversible error. If the Examiner has articulated a reason having rational
underpinnings for making a proposed modification or combination of prior
art teachings, then that articulated reasoning demonstrates the combination is
not based on hindsight. See In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)
(requiring "some articulated reasoning with some rational underpinning to
support the legal conclusion of obviousness") (cited with approval in KSR
Int'! v. Teleflex Inc., 550 U.S. 398, 418 (2007)).
As to Appellants' contention that the Examiner has failed to establish
that water absorption value is a result effective variable (Appeal Br. 14-15),
the argument is grounded on the contention that "none of the references
9
Appeal2015-002901
Application 12/643,549
discloses the water absorption of the label material to be a result effective
variable" (Appeal Br. 15).
On this record, we are unpersuaded the Examiner erred reversibly as
Appellants fail to squarely address the Examiner's reasoning that Amberger
teaches water absorption of the label material is a result effective variable.
Ans. 5-6, 13-14. We note further that Amberger discusses that "the water
permeability of paper is exploited" to allow an underlying adhesive to
quickly be contacted with washing liquid thereby allowing quicker removal
than thermoplastic films that lack the high permeability and so prevent
access of the washing liquid to the adhesive. Amberger col. 1, 11. 49-62.
Appellants fail to explain how such disclosure does not suffice to establish
the water absorption of the label material as a result effective variable. See,
e.g., In re Preda, 401 F .2d at 826.
Furthermore, as we note above, claim 12 does not require the label to
have the recited rate of water absorption because the limitation is set forth in
the alternative to that relating to perforations/cut-outs. Accordingly, even if
we had found Appellants' arguments persuasive of error in the determination
that water absorption of the label material was identified as a result effective
variable, the error would have been harmless as to the rejection of claim 12
because the claim does not require the limitation grounded on the property
being a result effective variable.
For these reasons, Appellants have not shown reversible error in the
Examiner's determination that one of ordinary skill in the art, armed with the
knowledge of the cited prior art, would have been led to the subject matter
recited in the appealed claims.
10
Appeal2015-002901
Application 12/643,549
CONCLUSION
The Examiner's rejections of the claims under 35 U.S.C. § 103(a) 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 )(1 ).
AFFIRMED
11