Ex Parte Umemoto et al

Patent Trial and Appeal Board

Mar 13, 2018

12921032 (P.T.A.B. Mar. 13, 2018)

United States Patent and Trademark Office
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
12/921,032 09/03/2010 Seiji Umemoto P22010US00 9649
38834 7590 03/15/2018
WESTERMAN, HATTORI, DANIELS & ADRIAN, LLP
8500 Leesburg Pike
SUITE 7500
Tysons, VA 22182
EXAMINER
WALSHON, SCOTT R
ART UNIT PAPER NUMBER
1788
NOTIFICATION DATE DELIVERY MODE
03/15/2018 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):
patentmail @ whda.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SEIJI UMEMOTO and MASAKUNI FUJITA
Appeal 2017-005817
Application 12/921,032
Technology Center 1700
Before MICHAEL P. COLAIANNI, GEORGE C. BEST, and
N. WHITNEY WILSON, Administrative Patent Judges.
WILSON, Administrative Patent Judge.
DECISION ON APPEAL
Appellants1 appeal under 35 U.S.C. § 134(a) from the Examiner’s
January 25, 2016 decision finally rejecting claims 1—7, 9, 22, 23, 25, 31, and
33—35 as unpatentable under 35 U.S.C. § 103(a). Claims 10—21, 24, and 26—
30 are withdrawn from consideration; these claims are directed to a non-
elected invention. We have jurisdiction over the appeal under 35 U.S.C.
§ 6(b).
We reverse.
1 Appellants identify the real party in interest as Nitto Denko Corp. (Appeal
Br. 2).
Appeal 2017-005817
Application 12/921,032
CLAIMED SUBJECT MATTER
Appellants’ invention is directed to a pressure-sensitive adhesive
composition said to have stable adhesive characteristics and amenable to
reductions in adhesive strength (Spec. 1:9-10; 5:33—35). Claim 1 is
representative and is reproduced below from Appendix A of the Brief
{emphasis added):
1. A pressure-sensitive adhesive composition, comprising:
a pressure sensitive adhesive base polymer; and
amphiphilic molecule particles,
wherein the amphiphilic molecule particles consist of
aggregated amphiphilic molecules,
wherein the amphiphilic molecules have at least one
hydrophilic group and at least one hydrophobic group in the
same molecule,
wherein the amphiphilic molecule particles are in the
pressure-sensitive adhesive base polymer,
wherein the base polymer is a (meth) acrylic-based
polymer, and
wherein the pressure sensitive adhesive base polymer has
a weight average molecular weight in the range of 1,000,000 to
3,000,000.
Br. 10 (App. A).
DISCUSSION
The only rejection on appeal is the rejection of claims 1—7, 9, 22, 23,
25, 31, and 33—35 under 35 U.S.C. § 103(a) as unpatentable over
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Application 12/921,032
Yamamoto2 in view of Yui.3 Appellants do not offer separate arguments in
support of any of the dependent claims; arguments are directed to limitations
recited in independent claim 1 {see generally Br. 3—9). Accordingly, our
discussion will focus on the rejection of claim 1.
Appellants do not dispute the Examiner’s finding that Yamamoto’s
pressure-sensitive adhesive sheet acrylic base polymer would have
inherently possessed a weight average molecular weight in a range that
substantially overlaps the claimed range {see generally Appeal Br. 3—7;
Final Act. 5). Rather, Appellants dispute the Examiner’s rationale for
modifying Yamamoto’s nonionic surfactant with Yui’s organic nanotubes
(Appeal Br. 7—9; Reply Br. 4).
The Examiner finds that Yamamoto does not specifically disclose
amphiphilic molecule particles {see generally Final Act. 4—5). However, the
Examiner finds that Yamamoto’s “adhesive includes a nonionic surfactant as
an emulsifying agent during emulsion polymerization” (id. at 5, citing
Yamamoto 4:58—5:6). The Examiner states that Yamamoto “does not
disclose using an amphiphilic molecule particle as the nonionic surfactant”
(Final Act. 5), and relies on Yui for this claim limitation.
The Examiner finds that Yui teaches nonionic organic compounds
which form organic nanotubes {id. at 6, citing Yui 1, 7—8). The Examiner
further finds that because Yui’s “organic nanotube comprises a hydrophobic
group and a hydrophilic group . . . [and t]he nanotubes interact with both
water and oil at the interface of a water/oil phase,” such a material is an
2 Yamamoto et al., US 6,984,413 B2, issued Jan. 10, 2006.
3 Yui et al., JP 2004-256414, published Sept. 16, 2004. We follow the
Examiner and Appellants in relying upon and citing a translation that is of
record.
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Appeal 2017-005817
Application 12/921,032
emulsifier (Final Act. 6, citing Yui 5, 11). According to the Examiner,
Yui teaches that the organic nanotube material, which is “formed by self-
assembly of a lipid molecule,” is a surfactant (Final Act. 6, citing Yui Tflf 1,
10). Thus, the Examiner concludes that Yamamoto’s “nanotubes read on
amphiphilic molecule particles” (Final Act. 6). In sum, the Examiner finds
that “Yamamoto teaches including a nonionic surfactant and [Yui] describes
organic nanotubes which are nonionic surfactants” (id. ).
The Examiner determines, inter alia, that it would have been obvious
for the ordinary skilled artisan
to use the amphiphilic nanotubes of [Yui] as the emulsifier of
Yamamoto in order to form the claimed invention. One of
ordinary skill in the art would have been motivated to use such
amphiphilic nanotubes because [Yui] teaches that the organic
nanotube will quickly settle a water/oil interface at room
temperature [and t]his relates to its emulsifying ability.
(id., citing Yui 111).
Appellants argue, inter alia, that because Yui does not disclose “the
use of nanotubes as a surfactant at the water/oil interface^] . . . there is no
viable rationale whereby a skilled artisan would be prompted to apply” Yui’s
organic nanotube as a viable substitute for Yamamoto’s nonionic surfactant
(Appeal Br. 8; see also id. at 8—9). According to Appellants, Yui’s organic
nanotube is formed by self-assembly of nonionic surfactants, but the formed
organic nanotube has lost the surfactant function of its constituents (id. at 8,
citing Yui ff 10, 11).
Appellants’ arguments are persuasive.
It is well understood that “rejections on obviousness grounds cannot
be sustained by mere conclusory statements; instead, there must be some
articulated reasoning with some rational underpinning to support the legal
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Application 12/921,032
conclusion of obviousness.” KSRInt’l Co. v. Teleflex Inc., 550 U.S. 398,
418 (2007) (quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)). The
fact that a reference may be modified to reflect features of the claimed
invention does not make the modification, and hence the claimed invention,
obvious unless the prior art suggested the desirability of such modification.
In re Mills, 916 F.2d 680, 682 (Fed. Cir. 1990).
The Examiner has not provided adequate reasoning to explain why a
person of skill in the art would have modified Yamamoto’s nonionic
surfactant emulsifier in view of Yui’s organic nanotubes (see Final Act. 5—6;
Ans. 3—4). Furthermore, the Examiner’s findings do not establish that Yui’s
organic nanotubes retain the desired emulsifying properties of their nonionic
surfactant constituents (see generally Yui 10-13; Examples). In
particular, the Examiner’s reasoning does not explain how Yui’s nonionic
surfactants retain their surfactant function after these surfactants assemble
into an organic nanotube. Without such reasoning, the Examiner has not
established a prima facie case of obviousness.
Thus, Appellants’ arguments have identified reversible error in the
Examiner’s determination that Yamamoto in view of Yui renders claim 1
obvious.
Accordingly, we reverse the rejection of claims 1—7, 9, 22, 23, 25, 31,
and 33—35 for the reasons set forth above. 37 C.F.R. § 41.37(c)(l)(iv).
We express no opinion with respect to Appellants’ other arguments
urging reversal of the Examiner’s § 103(a) rejection.
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CONCLUSION
We REVERSE the rejection of claim 1—7, 9, 22, 23, 25, 31, and 33—
35 under 35 U.S.C. § 103(a) as obvious over Yamamoto in view of Yui.
REVERSED
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